OPPOSITION No B 2 547 134

JNJ Enterprises LLC, 69 Defco Park Road, North Haven, Connecticut 06473, United States of America (opponent), represented by Taylor Wessing, Isartorplatz 8, 80331 Munich, Germany (professional representative)

a g a i n s t

Albert Michler Distillery Int. Ltd, 44 Upper Belgrave Road, Bristol BS8 2XN, United Kingdom (applicant), represented by Lukáš Dlabáček, Bolzanova 5, 61800 Brno, Czech Republic (professional representative).

On 27/06/2016, the Opposition Division takes the following

DECISION:

Opposition No B 2 547 134 is upheld for all the contested goods, namely the following:

1. Class 33: Rum and gin.

2. European Union trade mark application No 13 892 823 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 of European Union trade mark application No 13 892 823, namely against all the goods in Class 33. The opposition is based on, inter alia, European Union trade mark registration No 12 335 261. The opponent invoked Article 8(1)(b) EUTMR.

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 first to examine the opposition in relation to the opponent’s European Union trade mark registration No 12 335 261.

1. The goods

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

Class 33: Alcoholic beverages.

The contested goods are the following:

Class 33: Rum and gin.

The contested rum and gin are included in the broad category of the opponent’s alcoholic beverages. 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 are directed at the public at large. The degree of attention is considered average.

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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of a black oval that contains, in its upper part, the word ‘MICHTER’S’, depicted in black, stylised, upper case letters that form an arch. Below the first letter, ‘M’, which is almost horizontal due to the curved way in which the word ‘MICHTER’S’ is depicted, is the word ‘EST’, with a black dot positioned on either side at half the height of its letters, The word ‘EST’ is depicted in standard, black, upper case letters, approximately one third of the size of the letters of the word ‘MICHTER’S’. Immediately below the word ‘EST’ is the number ‘1753’ at a similar size to the word ‘EST’. Furthermore, under the last letter, ‘S’, of the word ‘MICHTER’S’, which is also almost horizontal due to the curved way in which the word ‘MICHTER’S’ is depicted, are the standard, black, upper case letters ‘US’, followed by an asterisk and the number ‘1’. Finally, in the centre of the oval, there is a black-and-white, hexagonal-shaped figurative element, with a small, pipe-shaped element extending to its upper right and a cylindrical element, which ends in a small rounded tip, in its upper middle part. A pipe-shaped element that curves upwards is depicted halfway up the side of the cylindrical element.

The contested sign is a figurative mark. It contains the word ‘MICHLER’S’, depicted in standard, black, upper case letters and positioned in the top centre part of the sign. The first letter, ‘M’, and the last letter, ‘S’, are slightly larger than the other letters. Under the word ‘MICHLER’S’, there is a double circle; the external circle is grey and the internal circle is black. The words ‘ALBERT MICHLER’ are depicted at the top of the circle and the word ‘DISTILLERY’ is depicted at the bottom. Another internal circle separates these verbal elements from an image of a stylised, pot-shaped figurative element. This figurative element is divided into four irregular rectangles by intersecting lines. The top left rectangle is black and the top right rectangle is white with angular black lines that form points, whereas the bottom left rectangle is white with angular lines that form points, and the bottom right rectangle is half black and half grey, with irregular rectangular shapes within the grey part. At the top of this figurative element is the number ‘1863’. Under the abovementioned circular element, the word ‘EMPIRE’ is depicted at an oblique angle in black ‘shadow effect’ letters enclosed by two black lines. Under this word are the verbal elements ‘A.M.’ and, on the next line, ‘ALBERT MICHLER’, the letters of which are approximately half the size of the letters ‘A.M.’ These verbal elements are centred and are depicted in standard, black, upper case letters. The verbal elements ‘DISTILLERY & RUM WAREHOUSE’ and, on the next line, ‘SILESIA 1863’ are placed immediately below the verbal element ‘ALBERT MICHLER’; the letters of these verbal elements at the bottom of the sign are approximately one third of the size of the letters of the word ‘ALBERT MICHLER’. Finally, underneath the verbal element ‘SILESIA 1863’, there is a linear black decorative element.

The word ‘EST’ of the earlier sign is typically used to indicate the year in which something – a company for instance – was established. Therefore, it can be reasonably assumed that the relevant public will perceive the element ‘EST 1753’ as indicating that the opponent’s company was established in 1753. In addition, the verbal element ‘US’ will be understood as an abbreviation of ‘United States’. Consequently, these verbal elements will be perceived as describing aspects of the commercial origin of the goods, specifying the place and date of establishment. As a result, they are non-distinctive for all the goods in question. Moreover, it can be reasonably assumed that the figurative elements in the centre of the oval consisting of a hexagonal figurative element with a cylinder at the top will be associated with a pot still, which is a tool used to distil spirits, such as whisky or gin. Bearing in mind that the relevant goods are alcoholic beverages, this element is weak for all the relevant goods. Finally, the black oval outline that surrounds all the other elements of the mark is weak, as it is a basic decorative element.

In addition, of the verbal elements ‘DISTILLERY & RUM WAREHOUSE’ and ‘SILESIA 1863’ of the contested sign, the words ‘DISTILLERY’ and the number ‘1863’ in the double circle will also be perceived as describing aspects of the commercial origin of the goods, specifying the date of establishment, the place of production and the type of business in which the applicant’s company is engaged. Consequently, these elements are non-distinctive for all the goods in question.

The word ‘MICHTER’S’ and the depiction of a pot still are the dominant elements of the earlier mark, as they are the most eye-catching. Moreover, the elements ‘MICHLER’S’, ‘EMPIRE’, ‘A.M’ and ‘ALBERT MICHLER’ (positioned at the bottom of the mark) and the figurative element consisting of a double circle containing a stylised depiction of a pot-shaped element are the dominant elements of the contested sign, as they are the most eye-catching.

Visually, the signs coincide in the first four letters, ‘MICH’, and in the last three letters, ‘ER’S’, of the distinctive and co-dominant word ‘MICHTER’S’ of the earlier mark and the distinctive and co-dominant word ‘MICHLER’S’ of the contested sign. These words differ only in their fifth letters, namely ‘T’ in the earlier sign and ‘L’ in the contested sign. In addition, the verbal element ‘MICHTER’S’ of the earlier sign coincides in its first four letters, ‘MICH’, and last two letters, ‘ER’, with the contested sign’s co-dominant and distinctive verbal element ‘MICHLER’ (positioned at the bottom of the mark) and with its secondary element ‘MICHLER’ (inside the circle). These words differ in their fifth letters, namely ‘T’ in the earlier sign and ‘L’ in the contested sign, and in the last letter, ‘S’ (preceded by an apostrophe), of the word ‘MICHTER’S’.

It is worth noting that, in all these cases, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Conversely, the earlier sign differs visually from the contested sign in the non-distinctive secondary elements ‘EST 1753’, ‘US’ and the number ‘1’, separated from ‘US’ by an asterisk. In addition, the signs also differ in the dominant but weak figurative element of a pot still and in all the other graphical elements of the earlier sign, particularly the merely decorative oval element. Conversely, the contested sign differs from the earlier mark in the dominant figurative elements consisting of a double circle containing a stylised pot-shaped figurative element, the secondary element ‘ALBERT’, the non-distinctive and secondary element ‘DISTILLERY’, and the distinctive dominant elements ‘EMPIRE’, ‘A.M’ and ‘ALBERT’. Finally, the contested sign also differs in its secondary and non-distinctive elements ‘DISTILLERY & RUM WAREHOUSE’ and ‘SILESIA 1863’, and in all its other graphical elements.

In this context, it should be emphasised that 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).

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

Aurally, the pronunciation of the signs coincides in the sounds of the first four letters, ‘MICH’, and the last three letters, ‘ER’S’, of the distinctive and dominant word ‘MICHTER’S’ of the earlier sign and of the distinctive and co-dominant word ‘MICHLER’S’ of the contested sign. These words differ aurally only in the sound of their fifth letters, namely ‘T’ in the earlier sign and ‘L’ in the contested sign. In addition, the word ‘MICHTER’S’ of the earlier sign coincides aurally with the co-dominant and distinctive verbal element ‘MICHLER’ (at the bottom of the mark) and the secondary element ‘MICHLER’ (inside the circle) of the contested sign in the sound of the first four letters, ‘MICH’, and the last two letters, ‘ER’, of these words. These words differ in the sound of their fifth letters, namely ‘T’ in the earlier sign and ‘L’ in the contested sign, and in the last letter, ‘S’, of the word ‘MICHTER’S’ in the earlier sign.

Conversely, the earlier sign aurally differs in its non-distinctive and secondary elements ‘EST 1753’ and ‘US’, and in the secondary element ‘1’. In addition, the contested sign differs in its secondary element ‘ALBERT’ (contained in the double circle), in its non-distinctive and secondary element ‘DISTILLERY’, and also in the distinctive and dominant elements ‘EMPIRE’, ‘A.M’ and ‘ALBERT’. Finally, the contested sign also differs aurally in its secondary and non-distinctive elements ‘DISTILLERY & RUM WAREHOUSE’ and ‘SILESIA 1863’.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the verbal element ‘MICHTER’S’ of the earlier sign as a surname in the genitive case. In addition, the cylindrical and hexagonal figurative element will be associated with a pot still, which is a tool used to distil spirits such as whisky or gin. Finally, the verbal elements ‘EST 1753’ and ‘US’ will be perceived as referring to the date of establishment and the location of the opponent’s company, while all the other elements are meaningless.

The element ‘MICHLER’S’ of the contested sign will be understood as a surname in the genitive case, while the elements ‘ALBERT MICHLER’ will be understood as a first name and surname, and the letters ‘A.M.’ will be perceived as the initial letters of this first name and surname. In addition, the word ‘EMPIRE’ will be understood as ‘an aggregate of peoples and territories, often of great extent’, and the verbal elements ‘DISTILLERY & RUM WAREHOUSE’ will be understood as a reference to the nature of the applicant’s business, namely a distillery – that is, a place in which whisky or a similar strong alcoholic drink is made by a process of distilling – and a rum warehouse. Finally, the element ‘SILESIA 1863’ will be understood as the name of a historical region of central Europe, now located mostly in Poland, with small parts in the Czech Republic, Slovakia and Germany, and the date of the business’s establishment, that is, in 1863.

In conclusion, the earlier mark will be associated with a company owned by Michter, established in the USA in 1753, that deals with alcoholic distillation (due to the presence of the figurative element of a pot still). Conversely, the contested mark will be associated with a company owned by ‘MICHLER’ or ‘ALBERT MICHLER’ (with the initials ‘A.M.’), established in Silesia in 1863, that deals with the distillation of alcoholic drinks and has a rum warehouse. The word ‘EMPIRE’ may be perceived as referring to the vast size (economically or in terms of reach) of the ‘MICHLER’S’ company or as the brand name of a specific product sold by the ‘MICHLER’S’ enterprise.

As both signs convey the concept of distillation – the earlier mark through the weak but dominant element of a pot still and the contested sign through the non-distinctive and secondary element ‘DISTILLERY’ – the signs are conceptually similar to a low degree.

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 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

The marks under comparison are visually similar to an average degree, aurally highly similar and conceptually similar to a low degree. The goods are identical and the public’s degree of attention is average.

As explained above, the differences between the signs result mainly – but not exclusively – from weak, non-distinctive and secondary elements, such as the elements ‘EST 1753’, ‘US’ and ‘1’ (separated from ‘US’ by an asterisk) in the earlier sign and the elements ‘ALBERT’ and ‘DISTILLERY’ (in the double circle) and ‘DISTILLERY & RUM WAREHOUSE’ and ‘SILESIA 1863’ in the contested sign. Furthermore, the signs differ in all their figurative elements, such as the depiction of a pot still and the other decorative elements in the earlier mark and the dominant and distinctive double circle containing a stylised pot-shaped figurative element and the other decorative elements in the contested sign.

However, there are several similarities between the signs under comparison, deriving from dominant and distinctive components. The marks coincide visually and aurally in the first four letters, ‘MICH’, and the last three letters, ‘ER’S’, of the distinctive and co-dominant word ‘MICHTER’S’ of the earlier sign and the distinctive and co-dominant word ‘MICHLER’S’ of the contested sign, which differ only in their fifth letters, namely ‘T’ in the earlier sign and ‘L’ in the contested sign. In addition, the earlier sign’s verbal element ‘MICHTER’S’ coincides in the first four letters, ‘MICH’, and in the last two letters ‘ER’ with the contested sign’s co-dominant and distinctive verbal element ‘MICHLER’ (positioned at the bottom of the mark) and secondary element ‘MICHLER’ (inside the circle). These words differ in their fifth letters, namely ‘T’ in the earlier sign and ‘L’ in the contested sign, and in the last letter, ‘S’, preceded by an apostrophe, of the earlier sign’s word ‘MICHTER’S’.

The abovementioned similarities are particularly relevant. It can be reasonably assumed that the words ‘MICHTER’S’ of the earlier sign and ‘MICHLER’S’ and ‘MICHLER’ of the contested sign (except for the element ‘MICHLER’ inside the circle) are the elements on which consumers will tend to focus, as they are the distinctive and dominant elements of the signs.

In addition, an important factor for the assessment of likelihood of confusion is the nature of the goods at issue and the method of purchase commonly associated with them. Indeed, where goods are ordered orally, the aural perception of the sign may also be influenced by factors such as the likely presence of various other sounds perceived by the recipient of the order at the same time. Such considerations are relevant where the goods in question are normally ordered at sales points with an increased noise factor, such as bars or nightclubs. In such cases, attaching particular importance to the aural similarity between the signs at issue may be appropriate. These considerations came into play in the finding of likelihood of confusion between marks for certain goods in Class 33 (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Therefore, the Opposition Division deems that the differences between the signs –deriving mainly from the additional distinctive and dominant elements ‘EMPIRE’, ‘A.M’ and ‘ALBERT’ (at the bottom of the contested trade mark), but also the from the non-distinctive, weak and secondary elements, and all the figurative elements – do not outweigh the abovementioned similarities between the trade marks. This finding takes in to account the facts that the public’s degree of attention will not be high and that the goods are identical and purchased in the same way, often in noisy places in which the difference in a single letter or two letters will be easily missed. Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 12 335 261. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 12 335 261 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).

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

Andrea VALISA

Karin KUHL

Richard BIANCHI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.