OPPOSITION No B 2 832 585

Heineken Entreprise, 2 rue des Martinets, 92500 Rueil-Malmaison, France (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Disber S.L., Ctra. Valencia-Ademuz, Km. 27, 46160 Llíria (Valencia), Spain (applicant), represented by J. López Patentes y Marcas, S.L., C/. San Vicente nº 83-3º-17, 46007 Valencia, Spain (professional representative).

On 17/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 832 585 is partially upheld, namely for the following contested goods:

Class 33: Rum; alcoholic beverages (except beer).

2. European Union trade mark application No 15 800 022 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 800 022 for the word mark ‘PELICAN & TERRENAS’. The opposition is based on French trade mark registration No 4 211 751 for the word mark ‘PELICAN’. 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.

a) The goods and services

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

Class 32: Beers.

The contested goods and services are the following:

Class 33: Rum; alcoholic beverages (except beer); preparations for making alcoholic beverages.

Class 35: Retailing and wholesaling of rum and alcoholic beverages (except beers); import and export services; online advertisements; business administration services for processing sales made on the internet; advertising; advertising, marketing and promotional services; business management.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 33

The contested rum; alcoholic beverages (except beer) are similar to the opponent´s beers. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, with the exception of rum, they can also originate from the same undertakings.

However, this is not the case for the contested preparations for making alcoholic beverages, which include extracts and essences for making alcoholic drinks and which are not similar to the opponent´s beers. It is unlikely that brewers would also be engaged in producing essences for making alcoholic beverages and vice versa. These products are sold in different sections of supermarkets and they target different consumers. They have different purposes, distribution channels and method of use. They are neither in competition nor complementary to each other. In addition, they also serve different needs.

Contested services in Class 35

The contested retailing and wholesaling of rum and alcoholic beverages (except beers) are not similar to the opponent´s beers. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity (to a low degree) between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are only similar.

The remaining contested services in this class, namely import and export services; online advertisements; business administration services for processing sales made on the internet; advertising (cited twice), marketing and promotional services; business management are all services that consist of providing others with assistance to reinforce a client’s position on the market or to help a business acquire, develop and expand market share, as well as to help a business solve their management and administration issues. All these services are dissimilar to the opponent’s beers in Class 32. They do not have any point in common. They have different natures and purposes, their manufacturers or providers and distribution channels are not the same and they are addressed to different consumers. Moreover, they are neither complementary, nor in competition. Specifically as regards the contested advertising services, the fact that the opponent’s beers may appear in advertisements is insufficient for finding similarity.

b) 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 similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

PELICAN	PELICAN & TERRENAS
Earlier trade mark	Contested sign

The relevant territory is France.

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 ‘PELICAN’ of the earlier mark and the contested sign will be understood as the French word ‘pélican’ (a large gregarious waterbird with a long bill, an extensible throat pouch for scooping up fish, and mainly white or gray plumage – information extracted from https://www.larousse.fr/dictionnaires/francais/p%c3%a9lican/59080?q=p%c3%a9lican#58718 on 16/12/2019) by the relevant public. As this meaning is not directly related to any of the goods, this element is distinctive.

The ampersand (‘&’) in the contested sign will be understood as a conjunction used to connect the two verbal elements ‘PELICAN’ and ‘TERRENAS’. Other than this connecting function, it does not in itself introduce any particular and distinctive concept.

The verbal element ‘TERRENAS’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, aurally and conceptually, the signs coincide in the initial and distinctive element ‘PELICAN’, which makes up the whole of the earlier mark. The signs differ in the additional elements ‘& TERRENAS’ of the contested sign, which have no counterparts in the earlier mark.

Given the considerations above on the semantic content conveyed by the marks, the level of distinctiveness of the elements and the focus of the consumer, the signs are 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.

d) 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.

e) Global assessment, other arguments and conclusion

Evaluating 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).

In the present case, the goods and services are directed at the public at large and have been found to be partly similar and partly dissimilar. The signs are visually, aurally and conceptually similar to an average degree, and the earlier mark has a normal level of inherent distinctiveness.

Given the coincidences in the signs there is a likelihood of confusion for the goods found to be similar. Likelihood of confusion 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 or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), since it fully includes the earlier mark with the addition of a second verbal element.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 4 211 751 .

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

Michal KRUK

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.