OPPOSITION No B 2 812 157

Paramount Pictures Corporation, 5555 Melrose Avenue, 90038-3197, Los Angeles, United States of America (opponent), represented by Maucher Jenkins, 26 Caxton Street, London, SW1H 0RJ, United Kingdom (professional representative)

a g a i n s t

Devans Modern Breweries Limited, Bohri, Talab Tillo, 180 002 Jammu, India (applicant), represented by Mewburn Ellis LLP, City Tower, 40 Basinghall Street, London, EC2V 5DE, United Kingdom (professional representative).

On 03/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 812 157 is upheld for all the contested goods.

2. European Union trade mark application No 15 770 423 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 15 770 423 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 9 848 763 for the figurative mark . 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 to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 848 763.

1. The goods

The goods on which the opposition is based are, inter alia, 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; energy drinks.

The contested goods are the following:

Class 32: Beer.

Beer 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 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).

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 to take into consideration the potential impact of the meaning of the verbal elements in the marks in relation to the contested goods for this part of the public.

Both signs are figurative marks containing the English word ‘godfather’, which refers to a man who presents a child at baptism and promises to take responsibility for their religious education or a man who is influential or pioneering in a (criminal) movement or organisation, a synonym for boss. The second meaning of the word also alludes to a famous American crime film directed by Francis Ford Coppola. In any case, the word does not relate to the relevant goods and is, therefore, distinctive.

The first element of the earlier mark, ‘The’, is the English definite article, which will be recognised as such by the relevant public and will be perceived as fulfilling the purpose of introducing the following word, ‘Godfather’, and not as an indicator of origin. This element is, therefore, of limited distinctiveness.

The words ‘The Godfather’ in the earlier mark are written in stylised bold black upper case letters. In the top right corner, there is a figurative element depicting a hand holding a cross, the ends of the four arms of which are connected by thin lines to the letters ‘father’. It resembles a puppeteer’s hand holding the control bar of a marionette. The figurative element has no connection to the relevant goods and is also distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The contested sign depicts a label with the dominant word ‘GODFATHER’ written in large black upper case letters on a strip-like bright background in a prominent position in the centre of the mark. Behind the strip, there is a figure of a man holding up a glass of beer. The additional words ‘SUPER STRONG HIGH POWER BEER’ are depicted around the dominant element ‘GODFATHER’ and the figurative element in much smaller white upper case letters against a dark background.

The additional word elements as well as the figurative elements in the contested sign have a lower than average degree of distinctiveness or play a clearly secondary role in the overall impression of the contested sign. These elements are descriptive of characteristics of the relevant goods (e.g. the laudatory words ‘SUPER STRONG’), allude or refer directly to them (e.g. the man holding up a glass of beer and the additional words ‘POWER BEER’) or are of a decorative nature (the lines, circles and backgrounds). Moreover, due to their small size and subordinate position, these elements are significantly less eye-catching.

Visually, the signs coincide in the word ‘godfather’. They differ in their additional word elements, namely ‘The’ in the earlier mark and ‘SUPER STRONG HIGH POWER BEER’ in the contested sign, as well as in their figurative elements, which have no counterparts in the other mark. However, the additional elements, although they will not go completely unnoticed, will have a clearly limited impact on the consumer as explained above. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛godfather’, present identically in both signs. The pronunciation differs in the sound of the verbal element ‛The’ of the earlier mark and the additional words ‘SUPER STRONG HIGH POWER BEER’ of the contested sign. Considering, however, that the differing word elements are less distinctive and may not even be pronounced at all (e.g. the laudatory expression ‘SUPER STRONG HIGH POWER BEER’), the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘godfather’, included in both signs, will be associated with the meanings explained above. To that extent, the signs are conceptually similar to at least an average degree. The additional elements in the signs, although they may also be associated with certain meanings, are rather unlikely to differentiate the signs conceptually, as these elements have a clearly limited impact on the overall impression of the signs.

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.

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. 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).

Such a global assessment of a likelihood of confusion 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).

Likelihood of confusion also covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings.

In the present case, the goods are identical and target the general public whose degree of attention is average. The earlier mark has a normal degree of distinctiveness. The signs are visually and conceptually similar to an average degree and aurally highly similar.

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Moreover, when a trade mark is composed of verbal and figurative elements, the principle has been established that the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is justified by the fact that consumers will more easily retain in their memory the verbal elements, and they will refer to the goods in question by their name, rather than by describing the figurative elements of the trade mark. This principle is fully applicable to the present case, as the word elements of the marks under comparison will undoubtedly play a more important role (vis-à-vis the figurative elements) for consumers when referring to the signs. Therefore, consumers are most likely to refer to the marks orally by reference to only their distinctive and independent verbal element ‘(the) godfather’.

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).

In the light of all the above considerations, it is concluded that, given the identical nature of the goods and the visual, aural and conceptual similarities between the signs at issue, there is a likelihood that a sizeable proportion of the relevant consumers, who will have to trust in their imperfect recollection of the trade marks and do not usually pay a high degree of attention when purchasing the goods in question, may be led to believe that the goods in question, which are identical, may come from the same undertaking, or if they do not confuse one trade mark with the other, certainly to believe that they come from the same undertaking or, as the case may be, from economically linked undertakings.

In its observations, the applicant argues that the word element ‘godfather’ commonly appears in trade marks in the UK and the EU and that consumers are used to differentiating between products offered under such marks.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘godfather’. Under these circumstances, the applicant’s claims must be set aside.

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.

As earlier European Union trade mark registration No 9 848 763 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 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

Ana MUÑIZ RODRIGUEZ

Arkadiusz GORNY

Cindy BAREL

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.