OPPOSITION No B 2 522 657

IP Brand Management Sp. z.o.o. Sp. k., ul. Pulawska 336, 02-819 Warszawa, Poland (opponent), represented by WTS Rzecznicy Patentowi - Witek, Sniezko i Partnerzy, ul. Tamka 34/25, 00-355 Warszawa, Poland (professional representative)

a g a i n s t

Alfatron BV, Societá a Responsabilitá Limitata, Amsterdamseweg 102b, 6814GH Arnhem, the Netherlands (applicant), represented by Canella Camaiora Società Tra Avvocati S.T.P., Via Carlo Giuseppe Merlo 3, 20122 Milano, Italy (professional representative).

On 10/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 522 657 is upheld for all the contested goods, namely:

Class 32: Beer; waters; non-alcoholic beverages; syrups for beverages.

Class 33: Spirits [beverages]; wine.

2. European Union trade mark application No 13 689 401 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 689 401 , namely against all the goods in Classes 32 and 33. The opposition is based on, inter alia, European Union trade mark registration No 9 131 211 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of, inter alia, European Union trade mark registration No 9 131 211.

In the present case the contested trade mark was published on 13/02/2015. However, earlier trade mark No 9 131 211 was registered on 08/05/2014. Therefore, the request for proof of use is inadmissible insofar as based on this earlier mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 131 211.

1. The goods

The goods on which the opposition is based are the following:

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 32: Beer; Waters; Non-alcoholic beverages; Syrups for beverages.

Class 33: Spirits [beverages]; Wine.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 32

The contested beer is similar to the opponent’s alcoholic beverages (except beers) in Class 33. These goods have the same nature, distribution channels, relevant public and they may be manufactured by the same kind of undertakings.

The contested waters; non-alcoholic beverages are similar to a low degree to the opponent’s alcoholic beverages (except beers) in Class 33. These goods have the same method of use, are in competition, have the same distribution channels and target the same relevant public.

The contested syrups for beverages are similar to a low degree to the opponent’s alcoholic beverages (except beers) in Class 33. These goods have the same method of use and distribution channels and target the same relevant public.

Contested goods in Class 33

The contested spirits [beverages]; wine are included in the broad category of the opponent’s alcoholic beverages (except beers) in Class 33. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar (to various degrees) are directed at the public at large with an average level of attention.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The elements ‘Rosé’ and ‘Italian Style’ are understood in certain territories, for example, in those countries where English is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark consisting of the words ‘CIN’ and ‘CIN’ joined together with the symbol ‘&’. These elements are written in white capital letters and are placed inside of a black rectangular frame. Underneath appears the word ‘Rosé’, written diagonally in a slightly stylised typeface. At the bottom part, in a very small italic typeface, appear the words ‘Italian Style’, repeated three times. These words are placed inside of a grey rectangular frame. All these elements are placed inside of a square.

The contested sign is a figurative mark consisting of a label with four rectangular frames, two in white, one in red and one in black. In all these frames the elements ‘ITAL’ and ‘CINCIN’ are written, either in white, red or black capitals, and placed one element under the other. Above all these verbal elements appears a top part of a bottle, also either in white, red or black and underneath a bold line, in green or white.

The elements ‘CIN&CIN’ and ‘Rosé’ of the earlier mark are clearly more dominant than the other elements, as they are the most eye-catching compared to the words ‘Italian Style’, written three times at the bottom part, due to their size and position in the mark.

With respect to the earlier mark the word ‘Rosé’ will be understood as referring to ‘wine which is pink in colour’ (see Collins English Dictionary online). This word is non-distinctive for the relevant goods, since it refers to their nature and kind. Furthermore, the words at the bottom part of the earlier mark are not only less dominant, but they are also weak, since they are composed of a laudatory expression indicating, for example, that they comply with certain Italian conditions and standards as regards their ingredients or way of production. The figurative elements in the form of rectangular frames are of a decorative nature and have less impact on the overall impression. The words ‘CIN&CIN’ do not have any meaning for the English-speaking public and are normally distinctive for the goods at stake. Even though, as pointed out by the applicant, the words ‘CINCIN’ could evoke a certain association with the English word ‘Cheers’ for a part of the public and, therefore, may be weak elements for alcoholic beverages, the Opposition Division is of the opinion that there still exists a significant part of the English-speaking public for which these terms are meaningless.

As regards the contested sign, it is composed of the verbal elements ‘ITAL’ and ‘CINCIN’, repeated four times. The element ‘ITAL’ is likely to be associated by a majority of the English-speaking public with the word ‘italy’, since it is very similar to it, especially in combination with the Italian flag colours that are also present in the sign. This being the case, this word is weak, since it could refer to the country of origin of the relevant goods. This sign also contains less distinctive figurative elements of a purely decorative nature, namely regarding the ones in the form of a label with coloured frames. Furthermore, the figurative elements in the form of a top of a bottle, placed in each of the frames, are also weak for the contested goods, since they will be perceived as referring to beverages. The public will not pay as much attention to these weak elements. The element ‘CINCIN’ has a normal degree of distinctiveness for the relevant goods, as outlined in the previous paragraph.

Visually, the signs coincide in the sequence of letters ‘C-I-N-*-C-I-N’, with the only difference that they are separated by the symbol ‘&’ in the earlier mark and in the contested sign they appear four times, once in each of the frames. In the earlier mark it forms also the dominant and most distinctive verbal element and in the contested sign the most distinctive one, for a significant part of the public. Furthermore, the element ‘ITAL’ also appears in the earlier mark, forming the first letters of the less dominant elements ‘Italian Style’. On the other hand, the marks differ in the symbol ‘&’ of the earlier mark and in all the remaining elements as pointed out above.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is even more applicable in the case at hand with respect to the frames of the signs and also regarding the top part of a bottle in the contested sign, since these elements are more of a decorative nature and/or weak, as pointed out above.

Regarding the slightly fancy typeface in which the verbal elements of the marks are written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seems to embellish.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the elements /CIN*CIN/, present identically in both signs. The marks differ in the sound of the symbol ‘&’, pronounced ‘and’ and in the pronunciation of the word ‘ITAL’ of the contested sign. As the word ‘Rosé’ is non-distinctive and the words ‘Italian Style’ are written in such a small lettering, the Opposition Division is of the opinion that these are most likely not to be pronounced. The marks are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. The element(s) ‘Rosé’ and ‘Italian Style’ of the earlier mark are understood, as well as for a major part of the public the element ‘ITAL’, together with the Italian flag colours, are understood in the contested sign. All the concepts present in the signs are either non-distinctive (Rosé) or weak (Italian Style, ITAL, top part of a bottle). Therefore, they have little impact on the conceptual comparison. It can be concluded that the marks are not conceptually similar for a significant part of the relevant public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of a significant part of the English-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive and weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings.

The goods at issue have been found to be identical and similar (to various degrees), while the level of attention is average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks have been found visually and aurally similar to an average degree and the marks are, from a conceptual level, not similar.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these goods.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 131 211. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, European Union trade mark registration No 9 131 211, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

The applicant also refers to two previous decisions of the Office to support its arguments. However, it must be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The applicant refers to two previous decisions of the Office to support its arguments of no likelihood of confusion, namely versus ‘ ’ (B 2 463 084) and versus (B 2 384 959).

The previous cases referred to by the applicant are not that relevant to the present proceedings for the following reasons: Regarding B 2 463 084, the common element ‘METAL’ is descriptive for the relevant goods in Class 6 and the consumers would focus on the other elements, which are entirely different, and there is no likelihood of confusion. Regarding B 2 384 959, in this case the marks are figurative marks and are only composed of two characters (very short marks in that sense); in case of the earlier mark these are clearly the letters ‘AM’, while the first character in the contested sign is not clearly any letter, but rather just a figurative element. The marks also differ in their figurative elements, such as the oval versus the line and in their typeface. For all the aforementioned reasons, the Opposition Division finds that the marks are not comparable with the case at hand and the applicant’s arguments in this regard have to be set aside.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin MITURA

Chantal VAN RIEL

Vít MAHELKA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.