OPPOSITION No B 2 702 945

Jack Daniel's Properties, Inc., 4040 Civic Center Drive, Suite 528, 94903, San Rafael, United States of America (opponent), represented by Kulikowska & Kulikowski Sp.K., ul. Nowogrodzka 47A, 00-695, Warsaw, Poland (professional representative)

a g a i n s t

Akwawit Spółka Akcyjna, ul. Monopolowa 4, 51-501, Wrocław, Poland (applicant).

On 06/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 702 945 is upheld for all the contested goods.

2. European Union trade mark application No 15 050 511 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 050 511 . The opposition is based on, inter alia, European Union trade mark registration No 154 211 for the word mark ‘JACK DANIEL'S’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 the trade marks on which the opposition is based, inter alia, European Union trade mark registration No 154 211 ‘JACK DANIEL'S’.

The date of filing of the contested application is 28/01/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 28/01/2011 to 27/01/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 20/02/2019, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 25/04/2019 to submit evidence of use of the earlier trade mark. This deadline was extended until 25/06/2019. On 25/06/2019, within the deadline given by the Office, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

 Annex 2: Spreadsheet from www.theiwsr.com (International Wines and Spirits Record), according to the opponent’s explanations a drink market analytics website, showing volume of sales and retail value of different varieties of ‘Jack Daniel’s’ in each year between 2011 and 2017, inter alia, in the United Kingdom, Germany, France, Poland, Spain, Italy, Belgium and Luxembourg, Czech Republic, Romania, the Netherlands. For example, of ‘Jack Daniel’s Tennessee Whisky’ alone in the United Kingdom about a million 9-litre cases were sold in each year of the relevant period, for 300-600 million USD, in Germany half a million cases were sold each year for 140–190 million USD, in Poland, 166– 372 thousand cases for 47-105 million USD.

 Annexes 3-4: Over 40 invoices for the years 2011 – 2016 issued to clients in various towns in Germany for the sale of alcoholic products, inter alia ‘Jack Daniels’, ‘Jack Daniels & Cola’, ‘Jack Daniels & Ginger’, ‘JD Single Barrel’ (several products appear in the same invoice). The amounts were crossed out for confidentiality reasons. The number of 1 litre or 0.70 litre bottles sold range from 50 – 1000 per invoice. The quantities sold for 0,33L cans (for example, for ‘Jack Daniels & Ginger’ and ‘Jack Daniels & Cola’) range between 500 and 1000 per invoice.

 Annexes 5-6: Several pages of promotional material in German, undated or dated in 2011 - 2016, depicting whisky in different packaging, such as:

 Annex 7: 15 invoices in Polish for the years 2011 – 2015 issued to clients in various towns in Poland for the sale of alcoholic products, inter alia ‘Jack Daniel’s Whisky 0.5L/1L/3.0L 40%’, ‘Jack Daniel’s & Cola’, ‘Jack Daniel’s & Ginger’. The amounts were crossed out for confidentiality reasons. The number of boxes sold range between 10 and 70 per invoice.

 Annex 8: 7 Invoices in Polish issued by ‘Focus Media Group’ about promotional material linked to ‘Jack Daniel’s’.

 Annexes 9-11: Several pages of promotional material in Polish, undated or dated in 2011 - 2016, depicting whisky in different packaging, such as the ones shown above.

 Annex 12: Promotional material in English;

 Annex 13: Invoices in English, issued to the United Kingdom, according to the opponent’s explanations related to different campaigns of ‘Jack Daniel’s’.

 Annex 14: Newspaper clippings from English-language newspapers such as ‘METRO’, ‘Daily Mail’, ‘Mail Online’, ‘Scottish Daily Mail’, ‘The Evening Telegraph’, etc. with enclosed circulation/readership figures ranging from hundreds of thousands to millions, including promotional articles related to ‘Jack Daniel’s’ whisky products.

 Annexes 15-17: Images of ‘Jack Daniel’s’ products and store displays in Lithuania, Denmark, Finland and Sweden, Belgium, the Netherlands and Austria

The invoices and promotional material show that the place of use is, at least, Germany, Poland and the United Kingdom. Article 15(1) EUTMR must be interpreted with the meaning that the territorial borders of the Member States should be disregarded when assessing whether a EUTM has been put to ‘genuine use’ in the European Union (19/12/2012, C‑149/11, ‘Leno Merken’, § 44). Therefore, the evidence relates to the relevant territory of the European Union.

All of the evidence is dated within the relevant period.

The invoices together with the www.theiwsr.com spreadsheets, included in Annex 2, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used in accordance with its function and as registered (additions referring to the flavouring of the drink, such as ‘& Cola/Ginger’ or its alcohol content, i.e.: ‘40%’ are acceptable since they do not alter the distinctive character of the earlier mark.).

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

The opponent’s earlier sign is registered for alcoholic beverages (except beers) in Class 33 and for beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages in Class 32. However, the evidence relates exclusively to whisky. The Office is of the view that the term ‘Alcoholic beverages (except beers)’ is sufficiently broad for it to be possible to identify within it various sub-categories (e.g. whisky) capable of being viewed independently (14/07/2005, T 126/03, Aladin, EU:T:2005:288).

Consequently, the evidence shows genuine use of the trade mark only for the following goods:

Class 33: Whisky.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 28/01/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, and for which use was proven, namely:

Class 33: Whisky.

The opposition is directed against the following goods:

Class 33: Alcoholic beverages (except beer) in conformity with the specification 'Scotch Whisky'.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 11/10/2018 the opponent submitted the following evidence:

Annex 1: Witness Statement of the President of the opponent’s company which summarises the reputation of the earlier trade mark on the basis of the following exhibits:

Exhibits 1-3 and 7-8: English-language book excerpts about the history of the Jack Daniel Distillery, dating back to 1800’s (the birth of Jack Daniel), from the opponent’s website, Wikipedia, and explanations of ‘Jack on the Rocks’ and ‘Jack and Ginger’ from www.urbandictionary.com;

Exhibit 4: A list of several registrations in the EUIPO Register including ‘JACK’, ‘GENTLEMAN JACK’, ‘JACK DANIEL’S’;

Exhibits 5 and 6: Samples of print advertisements of ‘Jack Daniel’s Whisky’ which depict the single term ‘JACK’ separately, such as:

Exhibit 9: Spreadsheet from www.theiwsr.com (International Wines and Spirits Record), already listed above with the evidence of use as Annex 2, showing significant volume of sales and retail value of different varieties of ‘Jack Daniel’s’ in each year between 2011 and 2017, inter alia, in Germany, Poland and the United Kingdom.

Exhibit 10: Spreadsheet from www.theiwsr.com showing the market share of Jack Daniel’s whisky in the United Kingdom, Germany, France, Poland, Spain, Italy, Belgium and Luxembourg, Czech Republic, Romania, Netherlands. By 2017 the ‘JACK DANIEL’S’ line accounted for 14.8% of market share for whisky in terms of retail value (10.8% of market share in terms of sales volume) which constituted a 4% market share in terms of retail value of the entire spirits market in those territories (2.1% in terms of sales volume);

Exhibits 11-18: Examples of billboard advertisements and merchandising in the United Kingdom and Germany; promotional images, list of medals awarded at whisky tastings, list of movies with product placement of the opponent’s brand.

Exhibit 19: Article from www.thespiritbusiness.com dated 2017 about Jack Daniel’s being named the most valuable global spirit brand on the Interbrand Best Global Brands 2017 list;

Exhibit 20: Superbrands list 2009/2010 ranking Jack Daniel’s as No. 76 of 500 global brands;

Exhibit 21: The Publican’s top 200 Brand Report 2009. The report, prepared by the company Nielsen on the basis of surveying the United Kingdom public, placed Jack Daniel’s in the top 10 brands for drinks.

Exhibit 22: ‘The Power 100. The World’s Most Powerful Spirits & Wine Brands, 2014.’ List prepared by Intangible Business, an independent brand valuation and strategy consultancy. Jack Daniel’s is in 4^th place (the second most powerful whisky brand).

Exhibits 23-34 and 36-41: Impact magazine publications dated each year in 2007-2017. Each year, Jack Daniel’s Whisky was ranked 5^th in the ‘Top 100 Premium Spirits Brands Worldwide’, and 1^st in the ‘World’s Top 10 Bourbon brands’. One article explains ‘a decade ago, Jack Daniel’s was largely an afterthought in the U.K. market. After years of aggressively building the brand by reinforcing its American imagery and small-town heritage, Brown-Forman has turned the brand into a UK phenomenon’.

Exhibit 35 The world’s top performing spirits brands 2011 edition prepared by International Wine & Spirit Research based in the United Kingdom. Jack Daniel’s is in 4^th place. According to the report “The UK in particular has been a major success story for Jack Daniel’s, rising by 4.4% to 1.02m nine-litre cases in 2010 over 2009. Griffins says: “We just broke 1m cases. It has been a long steady climb. We have done a good job of marketing Jack Daniel’s there. We are benefitting from strong growth in the off-trade there. With the growth in the off-trade and decline in the on-trade, we have done very well in the former. The venue shift has actually benefitted Jack Daniel’s.” “Jack Daniel’s has also enjoyed remarkable success with its RTD extensions. The brand has also entered the flavoured whisky market with the introduction of a honey-flavoured variant earlier this year. Jack Daniel’s has an innovation rating of 3.10, which places it roughly in the middle of the top 10.”

Exhibit 42: Article from management.fortune.conn.com about the marketing strategy behind ‘Jack Daniel’s’ success;

Annexes 2-4bis: Excerpts from Polish-language books about whisky and ‘Jack Daniel’s’;

Annexes 5-6bis: Polish-language articles from hurtidetal.pl and money.pl dated in 2008 and 2007, which according to the opponent’s (certified) translation places Jack Daniel’s among the most often quoted brands and the most often consumer whisky in Poland;

Annex 7bis: Polish-language article about the ‘2015 Favourite Brand’ national consumer research, which placed ‘Jack Daniel’s’ in first place in the ‘Whisky brand’ category in Poland;

Annex 8bis: ‘Sales of whisky in Poland’ prepared by ‘WealthSolutions’ and IWSR based in Poland, presenting ‘Jack Daniel’s’ as the most frequently chosen among American whisky and the third most popular whisky brand in Poland;

Annex 9bis: ‘Jack Daniel’s’ Poland BrandTrack scorecard, undated;

Annex 10bis: Declarations from ‘Nielsen Polska’ dated 2018 regarding the market share of Jack Daniel’s in the whisky category in the Polish market in 2016-2017, notably 10,5% volume share (4^th place) and 15,7% value share (3^rd place). Jack Daniel’s was confirmed as the number 1 brand in premium whisky and American whisky category in Poland.

Annex 11bis: Report on consumer behaviour and habits in the alcoholic beverages market in Poland prepared by ‘INDICATOR’ in 2013, based on a sample of 1000 adult Polish consumers of alcoholic beverages. In brandy/cognac category ‘Jack Daniel’s’ had the highest awareness rate: 42% prompted and 25% spontaneous.

Annex 12bis: Study prepared by ‘IPSOS’ ‘Usage and attitudes for spirits in Poland -Whisky’ in 2013. ‘Jack Daniel’s’ had the highest awareness rate: 92% prompted. 52% spontaneous and 25% top of mind.

Annex 13bis: Qualitative research report prepared by ‘Dom Badawczy Maison’ in 2011 based on focus group interviews. The ‘Jack Daniel’s’ brand was regarded as ‘one of the best known and visible whisky brands’.

Annex 14bis: Compilation of advertising material from September 2015 onwards to show the opponent’s marketing focusing on use of the single element ‘Jack’ in the UK and in Poland, through slogans such as ‘THIRSTY FOR JACK?’, ‘JACK. THE WHISKEY OF LEGENDS’, ‘JACK ON FIRE’, ‘LET’S CELEBRATE JACK’S BIRTHDAY’

Annexes 15-17: marketing of ‘Jack Daniel’s’ products in Poland and worldwide;

Annexes 17-20; Screenshots from websites in English and Polish marketing alcoholic beverages with the term ‘strong’, dictionary entries for English meanings;

Annex 21: Report prepared by ‘Kantar Millward Brown’ about associations with ‘JACK STRONG’ in the Polish market (sample size: 200). 63% of the respondents associated the term with ‘Whisky/bourbon’, of them 55% associated it with only one brand and 60% of them with ‘Jack Daniel’s’, even when the option ‘JACK STRONG’ itself was also among the possible responses;

The opponent also filed a DVD with pictures of use of the earlier trade mark in various countries of the EU, inter alia the United Kingdom, Germany, Poland.

The opponent demonstrated significant sales volumes and values for the United Kingdom. Even though the market share information was only submitted for several EU Member States combined, it still contains useful information when cross referenced with other items of evidence. The spreadsheets from www.theiwsr.com are broken down by country and make it clear that sales volumes of whisky are by far the highest in the United Kingdom among all the EU Member States. Therefore, the market share of 14.8% for whisky in terms of retail value applies, at the very least, to the United Kingdom. In the saturated market of whisky such a market share is quite significant.

The opponent submitted top mark listings prepared by independent organisations, most of them putting the mark in the top 10 in the spirits sector. The opponent mainly presented global lists and results. Nevertheless, references to the United Kingdom in the Impact magazines, in the Publican’s top 200 Brand Report 2009 and in the report prepared by the International Wine & Spirit Research make it possible to draw solid conclusions on the established prevalence of the opponent’s mark not only globally, but also specifically in the United Kingdom.

Moreover, several studies prepared by independent sources and reports prepared by ‘Nielsen Polska’ confirm the market share and importance of the opponent’s brand in the Polish market. On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation at least in Poland and the United Kingdom, which is considered to be sufficient to show reputation of the earlier mark in the relevant territory.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, market share, market research and survey results and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public, in relation to whisky.

b) The signs

JACK DANIEL’S
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 element ‘Jack’ in both signs will be understood as a male first name, relatively common in English-speaking countries. ‘Daniel’s’ of the earlier mark will be understood as a surname. Part of the public, especially those who speak English, will perceive the apostrophe and the letter ‘s’ to indicate the possessive form.

None of these elements have a relation to the goods and therefore they are distinctive.

‘Strong’ in the contested mark will be seen as a surname following the first name ‘Jack’. ‘Jack Strong’ will thus be seen as a name of a person, especially due to the figure of a man in a suit placed on the bottle behind this term. None of these elements have a relation to the goods and are therefore distinctive. They are also the most eye-catching, thus dominant elements of the contested mark.

At the same time the term ‘Strong’ may also be perceived by at least part of the relevant public, particularly those understanding English, as a term commonly used in the alcoholic beverages market to denote alcohol content, to specify the strength of beer, liquor, etc.

The term ‘SCOTCH WHISKY’ in the contested mark will be understood throughout the relevant territory as referring to a type of alcoholic drink. It is a non-distinctive element directly referring to the kind of goods covered by the contested mark, ‘Alcoholic beverages (except beer) in conformity with the specification 'Scotch Whisky’. Part of the relevant public, as explained above, may perceive ‘Strong’ as an indication of the flavour/strength of ‘SCOTCH WHISKY’, which may even lower the distinctive character of the term ‘Strong’ in relation to the alcoholic beverages in conflict.

The term ‘AGED 3 YEARS’ will be understood in the relevant territory as a term relating to the process of preparation of the goods in question. This term, as well as the bottle shape of the contested mark are thus non-distinctive, as they contain indications to the characteristics of the goods in question.

The element ‘Jack Strong’ appears once again on the neck of the bottle, on a decorative stripe, together with the smaller non-distinctive ‘SCOTCH WHISKY AGED 3 YEARS’. A small, handwritten signature ‘J.STRONG’ is placed above the word ‘STRONG’ on the label of the bottle; however, this element is secondary as it will be seen as a smaller, initialised signature version of the dominant verbal element ‘JACK STRONG.’

The bottom of the bottle contains, on a decorative stripe, some non-distinctive indications to filling weight, alcohol content, a bar code, ‘aged 3 years’. The contested mark’s colours and typefaces are decorative features.

Visually, the signs coincide in ‘JACK’ and differ in the earlier mark’s term ‘Daniel’s’ and in the contested mark’s term ‘Strong’, and the other secondary or non-distinctive elements of the contested sign. The signs also differ in the distinctive figure of a man in a suit.

Therefore, the signs are visually similar to a low degree.

Aurally, the signs coincide in ‘JACK’ and differ in the earlier mark’s term ‘Daniel’s’ and in the contested mark’s term ‘Strong’. The contested mark’s other differing terms are non-distinctive or secondary and will likely be omitted in pronunciation.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. There is a certain degree of conceptual similarity between the marks at issue, as they both contain the first name ‘Jack’ (T-346/04, ARTHUR ET FELICIE, § 84 and 51, 03/06/2015, T-559/13, ‘GIOVANNI GALLI’, ECLI:EU:T:2015:353, § 88). Taking into consideration that that ‘Jack’ is a rather common first name in part of the relevant territory, the degree of conceptual similarity is low.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods:

Class 33: Alcoholic beverages (except beer) in conformity with the specification 'Scotch Whisky'.

As seen above, the earlier trade mark was found to have a reputation for:

Class 33: Whisky.

The goods at hand are identical (as whisky is also covered by the broader category of the applicant’s list) or otherwise very closely related as they belong to the same market sector of alcoholic beverages. Alcoholic beverages usually coincide in producers and it is not uncommon that they are promoted or sold together, or for example that they appear side-by side on menu cards, and therefore relevant sections of the public for the goods are the same or at least overlap. The conflicting goods are consequently close enough that consumers would be likely to establish a mental link between the marks.

The signs are similar on account of coinciding in the common element ‘JACK’. The earlier mark is reputed.

It could in principle be argued that ‘JACK’ is a relatively common name in English-speaking countries, and both signs have additional, differing elements, in particular ‘DANIEL’S’ and ‘STRONG’. However, the degree of reputation that has been proven for the earlier mark is significant enough to offset any issues about whether or not ‘JACK’ is an otherwise common name, or the two marks denote two different persons.

Due consideration should also be given to the opponent’s marketing efforts focusing on use of the single element ‘Jack’. The opponent also submitted an (albeit small) study according to which a significant part of the relevant public in Poland associated ‘Jack Strong’ with ‘Jack Daniel’s’.

Finally, the double meaning of ‘strong’ must also be taken into account, at least as far as part of the public is concerned, who will grasp ‘strong’ as a reference relating to the strength of a drink, irrespective of whether or not it will also be seen at the same time as a surname, and as a result will rather focus on the coinciding element, ‘JACK’.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that through use of a similar trade mark, establishing in this way a link with the opponent’s mark, there would be an unfair transfer of the qualities that the public associates with the opponent’s mark, on to the mark of the applicant.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

 ‘Through use of a similar trade mark, irrespective for the intention of the applicant, it is very likely that the designation ‘JACK’ included in the contested application, having strong and positive associations for the public, is attractive to the applicant in terms of promotion of its own whisky under a highly similar brand. Designating the goods with a characteristic word element ‘JACK’ will undoubtedly produce associations with the reputable brand.‘

 ‘Imitation of reputable trade marks results in that someone else’s reputation and positive inclinations of the customers are exploited in order to promote one’s own brand, to position it within a particular group of signs that are perceived as signs identifying goods that are attractive to have better economic results without incurring at the same time considerable express to promote and advertise it.’

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The contested sign reproduces the first element ‘JACK’ of the earlier mark. The earlier mark has been found to be reputed for whisky, which is also covered by the broader category of the applicant’s list. In relation to alcoholic beverages, given the characteristics of the drinks industry, a brand extension from the earlier mark would be natural.

It is therefore likely that the contested mark would unduly benefit from the positive image transmitted by the earlier mark through intensive and reputed use of the word ‘Jack Daniel’s’ in the relevant territory. Customers, also guided by the distinctive male figure displayed on the bottle of the contested mark, would recognise the two marks referring to two different persons, although a part of the public would also grasp the double meaning of the contested mark’s ‘STRONG’ relating to the products’ alcohol content. In any event, due to the coinciding element ‘JACK’ and in view of the strength of the earlier mark’s reputation, the earlier mark is still likely to be evoked in the minds of the consumers. Consumers could feel attracted by the contested mark due to the high degree of reputation achieved by the earlier mark and this would facilitate the marketing of the goods offered under the contested sign. In this way, the applicant may unduly benefit from the reputation of the earlier mark.

Considering all the above, the image of the ‘Jack Daniel’s’ brand would be transferred to the contested mark and may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark and the investments undertaken by the opponent to achieve that reputation.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds, namely Article 8(1)(b) EUTMR, and the remaining earlier rights on which the opposition was based, including the evidence of use submitted in relation to some of these earlier marks.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Aldo BLASI

Marianna KONDAS

Cristina SENERIO LLOVET

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.