OPPOSITION No B 2 790 726

Wyborowa S.A., ul. Janikowska 23, 61-070 Poznań, Poland (opponent), represented by Marta Wojtkowiak, Plac Pilsudskiego 1, Gide 5. pietro, 00-078 Warszawa, Poland (professional representative)

a g a i n s t

Fundacja Rodziny Nissenbaumów, ul. Gibalskiego 21, 01190 Warszawa, Poland (applicant), represented by Dreszer & Partners sp. z o.o., Al. Niepodległości 188 B,

00-608 Warszawa, Poland (professional representative).

On 23/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 790 726 is upheld for all the contested goods.

2. European Union trade mark application No 15 666 209 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 and services of European Union trade mark application No 15 666 209 for the figurative mark , namely against all the goods in Class 33.

The opposition is based on European Union trade mark registration No 3 397 742 for the word mark ‘LUKSUSOWA’. 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 goods

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

Class 33: Alcoholic beverages; vodka.

The contested goods are the following:

Class 33: Vodka.

Vodka is identically contained in both lists of goods.

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 to be average.

3. The signs

LUKSUSOWA
Earlier trade mark	Contested sign

The relevant territory is 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.

Both signs consist of Polish words. Due to procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public for which the common element ‘LUKSUSOWA’ has an impact on the conceptual comparison of the signs.

The earlier mark is the word mark ‘LUKSUSOWA’.

The contested sign comprises the word element ‘Nowa’ in a slightly stylised font above the word ‘ŻYTNIA’, written in red and black, with the slightly smaller words ‘WÓDKA’ and ‘LUKSUSOWA’ in a black uppercase rather standard font below. Moreover, it contains a graphic representation of an ear of a cereal plant. The verbal element ‘NOWA’ and the figurative element are co-dominant (visually eye-catching), given their size and position within the sign. The word ‘ŻYTNIA’ is slightly bigger than the secondary expression, ‘WÓDKA LUKSUSOWA’, which is written in the smallest letters and is placed at the bottom of the sign.

The verbal elements ‘NOWA’, ‘ŻYTNIA’ and WÓDKA’ will be understood as ‘new’, ‘of rye’ and ‘vodka’ by the public under analysis. Bearing in mind that the relevant goods are vodka, the verbal elements are purely descriptive and therefore non-distinctive.

The meaning of the common element ‘LUKSUSOWA’ is ‘luxurious’, and its inherent distinctive character must be seen as weak for the public under analysis since it alludes to the quality of the goods, taking into account a laudatory connotation of the term, as correctly pointed out by the applicant.

As regards the graphic representation of an ear of a cereal plant in the contested sign, it will be perceived as an ear of rye (given the word ‘ŻYTNIA’ in the sign) and it merely indicates the main characteristics of the relevant goods, which will be expected to be made from fermented grains of rye. Therefore, it is non-distinctive.

In the contested sign, the verbal elements and the graphic representation are placed within a simple green frame with a black, thicker inner line which resembles a rather typical product label. The stylisation of the verbal terms and said figurative elements will be regarded as being merely decorative in nature.

Consequently, the verbal elements ‘NOWA’, ‘ŻYTNIA’, ‘WÓDKA’ and the figurative device are all non-distinctive and the verbal element ‘LUKSUSOWA’, albeit weak, is the most distinctive element of the contested sign.

Visually, the signs coincide in the (weak) word element ‘LUKSUSOWA, which constitutes the entire earlier mark as a single element and is the last of the verbal elements of the contested sign. They differ in the non-distinctive additional words, ‘Nowa’, ‘ŻYTNIA’ ‘WÓDKA’ in the contested sign. They also differ in the figurative elements and the stylisation of that sign, which have a limited impact on the perception of the sign for the reasons explained above.

Therefore, taking into account the fact that the marks coincide in the independent and the most distinctive element in the contested sign, ‘LUKSUSOWA’, which occupies, however, a secondary position within the sign dominated by the elements ‘Nowa’ and the representation of an ear of rye, it is considered that the marks are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the (weak) verbal element, ‘LUKSUSOWA’, present in both signs. The pronunciation differs in the sound of the non-distinctive words ‘Nowa’, ‘ŻYTNIA’ and ‘WÓDKA’ in the contested sign.

Consequently, taking into account the distinctiveness and dominance of the various elements composing the marks, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the reference to ‘luxurious(ness)’ will be perceived in both signs, while the differentiating elements in the contested mark are non-distinctive, the signs are at least similar to an average 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.

According to the opponent, the earlier trade mark ‘LUKSUSOWA’ has been intensively used for many years in the European Union, particularly in Poland, and outside the EU, for example in the United States, Canada or Israel. Therefore, in the view of the opponent, it enjoys a high distinctiveness as result of its long standing and intensive use in connection with the relevant goods for which it is registered, namely vodka. Moreover, the opponent argued that the brand is well known and enjoys a high reputation.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In its observations, the opponent explained that ‘LUKSUSOWA’ is one of the oldest vodka brands in Poland, created in 1928. The opponent also put forward that its long history was recognised by its inclusion in the exhibition of the Polish Vodka Museum, opened in Warsaw in June 2018.

The opponent has submitted, in particular, the following evidence to supports its claims:

• A survey conducted by the company Kantar Millward Brown, made on January 2017 among Polish consumers, and a partial English translation thereof, aiming, inter alia, to research alcohol brand awareness of a representative sample of adult inhabitants of Poland based on interviews. The research sample on which the analyses were conducted was a nationwide sample of adult Poles (age 18+) and the total analytical sample was 1915 respondents. The survey results come from two omnibus measurements performed on 10-14/07/2015 and 24-28/07/2015), namely, as argued by the opponent, before the time of filing of the contested EUTM on 18/07/2016. The survey shows that ‘Vodka Luksusowa’ was known by 19 % of the respondents (sample: 563 respondents who declare that they consume vodka at least once a month) when asked to spontaneously recall vodka brands (‘What brands of vodka do you know? Please name any brands you can think of.’) and by 85 % in a prompted recall survey (‘Which of the vodka brands presented below do you know or at least have heard of?’ with various vodka products shown.

• A Polish Senate resolution dated 07/07/2002 and justification by the Deputy Marshal of the Senate in Polish on the law on spirit beverages that explains the reasons for deleting the terms ‘Luksusowa’ and ‘Wyborowa’ from the law, and English translations thereof. The resolution and the justification connected thereto show that when Polish Parliament enacted a law on spirit beverages, the Senate decided to remove from the draft law the classification of vodkas including ‘Luksusowa’ and ‘Wyborowa’ (to refer to the quality of spirits it was made of) as it posed a risk that using this nomenclature would be contrary to European law and that, as resulted from the opinion expressed by the Patent Office, it could infringe the exclusive rights of holders of the trade marks.

• Printouts from Polish press publications and translations in English thereof on awards gained by Luksusowa, ‘Wyborowa Pernod Ricard Polska’ published in Poradnik Handlowca in January 2016, ‘Kolejny złoty medal dla Luksusowej’ published in Detal dzisiaj on 10/06/2010, ‘Luksusowa - najlepsza w historii polska wódka według Monde Selection’ published in Rynki alkoholowe in May 2010, ‘Srebrny medal Luksusowej’ published in Gazeta Lubuska on 25/08/2006, ‘Szósty medal’ published in Gazeta Lubuska on 26/05/2006, ‘Luksusowa na złoty medal’ published in Gazeta Wyborcza Zielona Góra Gorzów Wielkopolski on 22/06/2005. Most of the articles were published before the time of filing of the contested mark and refer to the earlier trade mark, such as ‘another gold medal for Luksusowa’, ‘Luksusowa – the best Polish vodka in history according to Monde Selection’, ‘Silver medal for Luksusowa’, ‘Luksusowa, the oldest of Poland’s potato vodkas’ etcetera.

• List of various awards, mostly international, received by the vodka commercialised under the trade mark ‘Luksusowa’.

Having examined the material listed above, the Opposition Division concludes that the distinctiveness of the earlier trade mark is enhanced through its use on the market and recognition among the relevant public under analysis. The abovementioned evidence (consisting mainly of a survey, a senate resolution from 2002 and a following justification by the Deputy Marshal of the Senate, as well as press articles published in various Polish newspapers) indicates that the earlier trade mark has been used for a substantial period and that the earlier trade mark, ‘LUKSUSOWA’, has been subject to long-standing and intensive use and it is known as an indication of vodka for the public under analysis.

The survey submitted by the opponent indicates that the earlier mark ‘LUKSUSOWA’ enjoys a certain degree of recognition among the relevant public, in particular since it show that 19 % of the respondents spontaneously mentioned ‘LUKSUSOWA’ as a vodka brand and that 85 % of the respondents did know or at least have heard of ‘LUKSUSOWA’ as a vodka brand. The research sample on which the analyses were conducted was a nationwide sample of adult Poles and is therefore relevant for the whole relevant territory under analysis. The press articles submitted, published by independent sources, also show that the brand has been awarded in various competitions that received media attention in Poland.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that earlier European Union trade mark registration No 3 397 742 for the word mark ‘LUKSUSOWA’ enjoys recognition among the relevant public under analysis in the European Union, namely the Polish-speaking part. Taking into account that the inherent distinctiveness of the earlier mark is low because the term ‘LUKSUSOWA’ alludes to the quality of the relevant goods, it has to be concluded that the earlier mark has acquired at least an average degree of distinctiveness with respect to the analysis under Article 8(1)(b) EUTMR for vodka in Class 33.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR).

It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion also implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods under comparison are identical and they target the general public, whose degree of attention in relation to these goods is deemed average.

Even if the earlier mark’s inherent distinctive character is considered weak, it has been shown above that the earlier mark enjoys recognition among the relevant public under analysis which leads to the conclusion that the earlier mark has acquired at least an average degree of distinctiveness in relation to the relevant goods, vodka.

The signs are conceptually similar at least to an average degree and visually and aurally similar to a low degree on account of the coinciding verbal element ‘LUKSUSOWA’, constituting the earlier mark in its entirety and which, despite its weakness, is the most distinctive element of the contested sign.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, the relevant consumers under analysis may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier mark, provided under the earlier mark ‘LUKSUSOWA’.

Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, in relation to identical goods for the relevant public under analysis, namely the Polish-speaking part.

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 3 397 742.

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

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

Katarzyna ZANIECKA	Martin INGESSON	Zuzanna STOJKOWICZ

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.