OPPOSITION No B 2 851 122

Fifth Generation, Inc., 12101 Moore Road, 78719 Austin, Texas, United States of America (opponent), represented by Barker Brettell Sweden AB, Östermalmsgatan 87B, 114 59 Stockholm, Sweden (professional representative)

a g a i n s t

Titomirov Vodka LLC, 2601 Captains Way, 33477 Jupiter Florida, United States of America (applicant), represented by Cabinet Guiu – Jurispatent, 10, rue Paul Thénard, 21000 Dijon, France (professional representative).

On 22/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 851 122 is upheld for all the contested goods.

2. European Union trade mark application No 16 076 507 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 (in Class 33) of European Union trade mark application No 16 076 507 (word mark: ‘TITOMIROV ALKALINE’). The opposition is based on European Union trade mark registration No 13 430 624 (word mark: ‘TITO'S VODKA’). 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

The goods in Class 33 on which the opposition is based are the following:

Distilled spirits.

The contested goods in Class 33 are the following:

Alcoholic mixed beverages except beers; prepared alcoholic cocktail; Vodka; pre-mixed alcoholic beverages, other than beer-based.

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.

The contested vodka is included in the broad category of the opponent’s distilled spirits. Therefore, they are identical.

The remaining contested alcoholic mixed beverages except beers; prepared alcoholic cocktail; pre-mixed alcoholic beverages, other than beer-based have the same nature, method of use, distribution channels and public as the opponent´s goods. Furthermore, they are in competition with each other. Therefore, they are at least similar.

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 identical or at least similar are directed at the public at large. The degree of attention is average.

c) The signs

TITO'S VODKA	TITOMIROV ALKALINE
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 relevant public is the English speaking public as the elements vodka and alkaline are English words and, therefore, understood and not distinctive (see below) for the public so that the similarity between the signs will be higher. According to the Decision of the Board of Appeal between the same parties of 01/02/2021,
R 746/2020-2, ‘Titomirov vodka naturally alkaline/Tito's vodka’, the focus will be on the English-speaking part of the European Union, i.e. Ireland and Malta. The remaining EU public will be taken into account only if necessary, see paragraph (p.) 23.

Both signs are word marks, which are protected in all typefaces.

The element ‘VODKA’ of the earlier trade mark will be understood by the relevant public as a strong, clear, alcoholic drink. Bearing in mind that the relevant goods are alcoholic beverages, this element is non-distinctive for these goods.

The elements ‘TITO’S’ and ‘TITOMIROV’ do not have any meaning for the relevant English-speaking public. Although some Irish or Maltese consumers may see them as foreign names or surnames, these are not common in the English-speaking part of the European Union. Thus, the majority will view them as fully fanciful elements. They are fully distinctive in relation to the relevant goods (see p. 32 of the above cited Decision).

The element ‘ALKALINE’ present in the contested sign refer to the main ingredient of the goods in question, namely water. It is well-known that alkaline water has a higher pH level than regular drinking water and therefore it is supposed to provide greater hydration than regular water. Therefore, when used in relation to ‘vodka’, ‘ALKALINE’ immediately informs the relevant public that the product at issue is made using alkaline water. The element ‘ALKALINE’ is descriptive and non-distinctive for the relevant goods’ (see p. 34 of the above cited Decision).

Visually, the signs share the identical beginning ‘TITO’. The only distinctive elements are ‘TITO’S’ and ‘TITOMIROV’. In light of the above, the coincidence in the element ‘TITO’ creates similarity between the signs. This similarity is further strengthened by the fact that it concerns the beginning of both signs. It follows that the identical beginning ‘TITO’ is likely to have a strong visual impact on the consumers. The above similarity is unlikely to be fully neutralised by the differences between the signs. In particular, the letters ‘****MIROV’ of the contested sign are likely to have a lesser impact on the consumers than the common beginning ‘TITO’. In addition, the word ‘ALKALINE’ present only in the contested sign are descriptive for the relevant goods. In follows that the letters ‘****MIROV’ and the word ‘ALKALINE’ present only in the contested sign are unlikely to fully divert the relevant public’s attention from the same element ‘TITO’. In light of the above, the conflicting signs are visually similar to at least an average degree (see p. 35-48 of the above cited Decision).

Aurally, the conflicting signs coincide in the pronunciation of the word ‘TITO**(***)’. The abbreviation of brand names is particularly common for long alcoholic drink names because alcohol is often consumed in pubs, clubs and bars which are noisy environments and so the names are shortened to make ordering easier. It follows that the consumers are likely to abbreviate the conflicting signs to ‘TITO’S’ and ‘TITOMIROV’, respectively. It cannot also be excluded that, taking into account the noisy environments where the signs are to be pronounced, only the first part of the respective words ‘TITO’S’ and ‘TITOMIROV’ will be heard. In such a case, the signs would sound identical, i.e. as ‘TITO’. Therefore, the phonetic similarity of the conflicting signs is higher than average (see p. 49-54 of the above cited Decision).

Conceptually, the majority of the English-speaking consumers will view the distinctive elements of the conflicting signs, ‘TITO’S’ and ‘TITOMIROV’, as fully fanciful and meaningless. For this part of the public, a conceptual comparison is not possible and remains neutral. Some (few) consumers may perceive the words ‘TITO’S’ and ‘TITOMIROV’ as names or surnames. However, also for these consumers the conceptual comparison is neutral. This is due to the fact that conceptual similarity cannot result from the mere fact that both trade marks contain a name or surname (see p. 55 and 56 of the above cited Decision).

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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. Therefore, the distinctiveness of the earlier mark must be seen as normal, see p. 60 of the above cited Decision, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account, that the signs are visually similar to at least an average degree, that the phonetic similarity of the conflicting signs is higher than average, the neutral outcome of the conceptual comparison, the normal degree of distinctiveness of the earlier trade mark, the not more than average degree of attention of the public and the identical or at least similar goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, and, therefore, the opposition is upheld.

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.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opposition is well founded under Article 8(1)(b) EUTMR.

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, 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

Claudia MARTINI

Peter QUAY

Astrid WÄBER

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.