OPPOSITION No B 2 753 476

Tempting Brands Netherlands BV, De Smalle Zijde 3, 3909 LL Veenendaal, The Netherlands (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Slovenská Asociácia Route 66, Ul. Družby 322, 976 98 Podbrezová časť Lopej, Slovakia (applicant), represented by Advokátska Kancelária Patajová Pataj S.R.O., J. Chalupku 8, 974 01 Banská Bystrica, Slovakia (professional representative).

On 15/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 753 476 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 397 011 for the three-dimensional shape mark , namely against all the goods in Classes 32 and 33. However, the contested application has been partially rejected for goods in Class 33 pursuant to the final decision of the Office rendered on 04/09/2017 further to absolute grounds re-examination. Consequently, the contested goods are beers in Class 32.

The opposition is based on international trade mark registration No 1 269 032 designating the European Union for the figurative mark

.

The goods on which the opposition is based are alcoholic beverages (except beers), in Class 33.

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.

1. 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 earlier trade mark is a figurative mark. It consists of the word ‘ROUTE’ and the number ‘66’ depicted within a shield-shape frame which is divided in two parts by a horizontal line.

A part of the public, especially the English-speaking public, will perceive the earlier mark as a road sign from the famous highway, Route 66, in the USA. Another part of the public will understand the word ‘ROUTE’ (as this word exists also – with the same or similar meaning - in other languages, such as French, German or Dutch) and/or will associate the element ‘66’ with the number that it identifies. There is no relation between these elements and the goods on which the opposition is based, namely Alcoholic beverages (except beers) in Class 33, and therefore, its distinctiveness is normal.

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).

For this reason, the shield-shaped frame plays a secondary role within the earlier mark in relation to the elements ‘ROUTE’ and ‘66’ by which the public will refer to the sign. Moreover, taking into account that the goods on which the opposition is based are alcoholic beverages, the public is likely to perceive the earlier mark as a label to be placed on bottles. Given that labels of diverse shapes are common in this area of the market, the consumers will not consider this form of the label on its own as a distinctive feature of the earlier mark.

Furthermore, due to its size and position, the number 66 is the visually dominant element of the earlier mark as it is the most eye-catching.

Finally, the earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested mark is a shape mark representing four views of a three-dimensional shape of a transparent bottle with no verbal elements. The bottleneck is thin and without any type of closure; the body of the bottle has smooth rounded contours and is larger in the upper and lower parts and thinner in between. Contrary to the opponent’s arguments, the Opposition Division does not consider that the public will perceive this shape as a representation of a road sign. Although it will not be associated with any particular concept, apart from a representation of a bottle, this particular shape is not standard, or common, in relation to the relevant goods, which are beers in Class 32. However, the shape of a bottle is, in general, considered by consumers as having a functional character: its main purpose is to contain the beverage. Therefore, its distinctiveness is rather low.

Moreover, the contested mark contains a thin, hardly perceivable outline or engraving of a shield on the front and on the back of the bottle. In case it is noticed, is likely to be seen as a purely decorative element, or associated with a transparent label, or the area of the bottle where the label will be placed. Since labels of diverse shapes are common on the beer market, this element is not distinctive per se in relation to the relevant goods.

The shape of the bottle is the visually dominant element of the contested mark as it is the largest element and it overshadows the barely noticeable outline of the label.

The opponent argues that the applicant uses the contested sign with the verbal element ‘Route 66’ on the market. The Opposition Division notes that the assessment of likelihood of confusion is limited to the signs at issue, being the earlier mark in its registered form and the contested sign as applied for. Since the contested mark does not contain any verbal elements, the opponent’s arguments in this regard must be set aside.

Visually, the main difference between the marks is that the earlier mark is a figurative mark while the contested mark is a shape mark. The elements ‘ROUTE’ and ‘66’, which are the most significant and distinctive components of the earlier mark, are not present in the contested sign, which does not contain any verbal elements. Contrary to the opponent’s observations, the shape of the figurative element of the earlier mark is not visually similar to the shape of the bottle which is the most distinctive element of contested sign. None of the earlier mark’s contours match that of the bottle represented in the contested mark, the latter having much smoother, rounded contours as compared to the earlier mark, which has six sharp protruding points. Although the shield-shaped frame of the earlier mark has a similar appearance to the outline of a label, or engraving on the bottle of the contested sign, this coincidence is not relevant because - as stated above - these elements are not distinctive per se in relation to the relevant goods. Moreover, they are dominated by the shape of the bottle in the contested mark and by the verbal elements in the earlier mark.

Taking into account the foregoing, the distinctive and dominant elements of both marks, and in particular the fact that the consumer usually perceives a mark as a whole and does not proceed to analyse its various details, the signs are considered not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced as ‘ROUTE 66’. However, as the contested mark is a 3D shape mark without any verbal element, it is not subject to a phonetic assessment. Therefore, it is not possible to compare the signs aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The contested mark represents the concept of a bottle, while the earlier mark will be either perceived as a road sign of the famous highway Route 66 in the USA, or it will be associated with the meaning of the elements ROUTE and/or the number 66. As the signs will be associated with different meanings, they are conceptually dissimilar.

As no relevant coincidences have been found on any of the three levels of the comparison, the signs are considered to be dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cynthia DEN DEKKER

Zuzanna STOJKOWICZ

Nicole CLARKE

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.