OPPOSITION Nо B 2 852 443

 

Szczecińska Fabryka Wódek "starka" Sp. z o.o., Jagiellońska 63/64, 70-382 Szczecin, Poland (opponent), represented by Kancelaria Prawnicza Piotr Korolko, ul. Żurawia 45, 00-680 Warszawa, Poland (professional representative) 

 

a g a i n s t

 

UAB "MV Group Asset Management", Aukštaičių G. 7, 11341 Vilnius, Lithuania (applicant), represented by AAA Law, A. Gostauto 40b, 03163 Vilnius, Lithuania (professional representative).

On 18/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 852 443 is upheld for all the contested goods.

 

2.	European Union trade mark application No 16 134 314 is rejected in its entirety.

 

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

 

REASONS

 

On 23/02/2017, the opponent filed an opposition against all the goods of European Union trade mark application No 16 134 314 (figurative mark). The opposition is based on ,inter alia, EUTM registration No 11 603 933, (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 EUTM registration No 11 603 933, , which is not subject to a proof of use requirement or to revocation proceedings.

a) The goods

 

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

 

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

 

Class 33: Alcoholic beverages (except beer); Bitters.

Alcoholic beverages (except beer) are identically contained in both lists of goods.

The contested bitters are included within the broader category of the opponent’s alcoholic beverages (except beer). Therefore, they are identical.

 

 

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 are directed at the public at large.

The opponent argued that the relevant public is likely to pay a considerable degree of attention when buying the goods at hand. However, as follows from case-law, firstly, alcoholic beverages (except beers) are for everyday consumption and are normally widely distributed, ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafés and, secondly, the consumer of alcohol is a member of the general public, who will demonstrate an average degree of attention when purchasing such goods (see, to that effect, 19/01/2017, T 701/15, LUBELSCA (fig.), § 22 and the case-law cited therein). Therefore, contrary to the said submissions of the opponent, the degree of attention is average.

c) 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word ‘STARKA’, common to both signs, is non distinctive for a part of the relevant public such as the Swedish-speaking part of the relevant public as it merely refers to the strength of the goods in question. For another part of the relevant public, such as the Spanish- and English-speaking parts, the said common word is meaningless and so normally distinctive of the said goods. Given that the non-distinctiveness of a common element may attenuate or even negate the risk of confusion, the Opposition Division shall focus its comparison on a part of the public for which it is normally distinctive, such as the Spanish- and English-speaking public, such as in Spain, Ireland and Malta.

The earlier mark consists of the slightly stylized word ‘STARKA’ above which is depicted a stylized letter ‘S’ albeit with the lower end truncated. As stated above, for the public under analysis, the word ‘STARKA’ is meaningless and so normally distinctive of the goods in question. Although it is true that the stylized letter ‘S’, which bears no reference to the goods and so is normally distinctive thereof, is much larger than any of the letters of the word element, it will be perceived as being the first letter of the word element, given that the general consumer is well accustomed to such marketing practices. The slight stylization of the word element will be regarded as being primarily decorative in nature and so not play a trade mark role in the perception of the earlier mark.

The contested sign is in the form of a label comprising a number of different verbal and figurative elements. At the top thereof are the stylised words ‘Stumbro’ and ‘STARKA’, placed one above the other, the latter being larger and in bolder type face so as to be more readily legible. In the lower half of the sign there appears the device of a bird, such as a stork, anthropomorphically presenting drinks in the manner of a waiter. All of the said elements are depicted against a black rectangular shape, rather in the manner of a bottle label.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there are numerous elements, such as a crest-type device in the upper centre and lower left hand corner that are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

As explained above, the word ‘STARKA’ is meaningless and so normally distinctive of the relevant goods for the public under analysis. The word ‘Strumbro’ is meaningless for the said public and so normally distinctive but its impact is reduced given its relatively small size and given that it is not readily legible. As a result, the said public is likely to place much more emphasis on the word ‘STARKA’ in the perception of the sign.

The device of the bird, acting as a beverage waiter, bears no reference to the relevant goods and so is normally distinctive. That said, however, 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).

The said background label shape, along with the stylization of the verbal elements of the contested sign, will be regarded as being primarily decorative in nature and so will not play a substantial trade mark role in the perception of this sign.

The Opposition Division considers that the stylized letter ‘S’ constitutes the dominant element of the earlier mark (i.e. in the sense of being visually outstanding), while the stylized word ‘STARKA’ and the device of the bird are co-dominant elements of the contested sign.

Visually, the signs coincide in the word ‘STARKA’ differing in the additional stylized letter ‘S’ of the earlier mark, the word ‘Strumbro’ and the figurative/stylized elements of the contested sign. Taking into account the impact/dominance of the aforesaid elements as set out above, the Opposition Division considers that the signs are visually similar to a below average degree.

Aurally, the signs coincide in the word ‘STARKA’ being the only sounded element of the earlier mark given that the letter ‘S’ thereof will not be sounded due to its perception as the first letter of the said word. For the majority of the public under analysis, the word ‘Strumbro’ is not likely to be sounded for the reasons set out above and for this part of the said public, it follows that the signs are phonetically identical. For the rest of the said public, for which the word ‘Strumbro’ is sounded, the signs are similar to an average degree.

Conceptually, although the verbal elements of the trade marks do not have any meaning for the public under analysis, the contested sign evokes a concept through its figurative element, namely a bird. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 claimed that the earlier trade mark enjoys high inherent distinctive character but it did not claim that the earlier mark enjoys enhanced distinctiveness through use.

As regards the opponent’s claim of high distinctiveness of the earlier mark, it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. A mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

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 the goods in question from the perspective of the public under analysis. 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).

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.

For the public under analysis, the signs have been found to be aurally either identical or at least similar, visually similar to a below average degree, and not conceptually similar due to the concept of the figurative bird element of the contested sign, with all the verbal elements of the signs being meaningless.

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). In the instant case, the signs have been found to be phonetically identical for the majority of the public under analysis.

Taking all the factors into account, including in particular the identity of the goods, the Opposition Division considers that the similarities between the signs due to the coincidence in the distinctive word ‘STARKA’, being the only word element of the earlier mark and a co-dominant element of the contested sign, for the reasons explained at section c) above, are not outweighed by the differences between the signs which have less impact in the perception of the signs at issue.

In its submissions, the applicant argues that the word ‘STARKA’ is non distinctive or very lowly distinctive, referring in particular to the refusal by the Office of an application for registration of the said word mark, the subject of EUTM application No 16 408 544. However, the said refusal was based on the meaning of the word ‘STARKA’ for the Polish and Swedish-speaking parts of the relevant public and so it is not relevant to the current assessment which has as its focus the Spanish- and English-speaking part of the relevant public such as in Spain, Ireland, and Malta.

In its observations, the applicant argues also that the signs at issue co-exist on the register and in the marketplace.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T 31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, and, in particular, in the absence of any evidence provided by the applicant to show coexistence on the market in Spain, Ireland or Malta - being the public under analysis for the instant assessment - this argument of the applicant must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and 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.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 11 603 933 . It follows that the contested trade mark must be rejected for all the contested goods.

As the said earlier right 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, 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

 

 

Anna ZIOLKOWSKA

Kieran HENEGHAN

Sofía SACRISTÁN MARTÍNEZ

 

 

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.