OPPOSITION No B 2 887 811

Bottling Company - Gorna Bania Ltd, zh.k. Ovcha kupel 1, ul. Mesechinka No. 8, 1373, Sofia, Bulgaria (opponent), represented by Mario Christov, Complex Levski-G, bl. 7, vh.A, ap.23, 1836, Sofia, Bulgaria (professional representative)

a g a i n s t

Sobrass Participations Sàrl, 2 boulevard J.F. Kennedy, 4930 Bascharage, Luxembourg (applicant), represented by Office Freylinger S.A., 234 route d'Arlon, B.P. 48 8001 Strassen, Luxembourg (professional representative).

On 15/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 887 811 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 148 207 for the figurative trade mark , namely against all the goods and services in Classes 32, 35 and 43. The opposition is based on the following earlier rights:

 European Union trade mark registration No 6 007 173 for the figurative trade mark ,

 European Union trade mark registration No 9 873 498 for the figurative trade mark ,

 European Union trade mark registration No 9 923 202 for the figurative trade mark ,

 Bulgarian trade mark registration No 45 567 ‘BBB’,

 Bulgarian trade mark registration No 83 556 ‘BBB’,

 Bulgarian trade mark registration No 74 073 ‘BB’

 Bulgarian trade mark registration No 74 316 ‘BB’

 European Union trade mark registration No 8 411 746

 European Union trade mark registration No 8 411 662

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION of the earlier Bulgarian trade marks

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier national trade marks on which the opposition is based.

On 12/05/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 24/09/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier national trade marks.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these national earlier marks.

PROOF OF USE of EUTMs No 6 007 173 and No 9 873 498

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely the European Union trade marks No 6 007 173 and No 9 873 498.

The request was filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 12/12/2017 the opponent was given two months to file the requested proof of use.

The opponent did not submit any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR as far as it is based on these earlier rights.

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 and services on which the opposition is based are the following:

EUTM No 9 923 202

Class 32: Beers; Mineral and aerated waters and other non-alcoholic drinks; Drinks and fruit juices; Syrups and other preparations for making beverages.

Class 35: Advertising; Business management; Business administration; Administration.

Class 43: Services for providing food and drink; Temporary accommodation.

EUTM No 8 411 746

Class 32: Aerated waters and other non-alcoholic drinks; drinks and fruit juices; syrups and other preparations for making beverages.

EUTM No 8 411 662

Class 29: Meat, fish, poultry and game products; meat extract; dried and prepared nuts and fruits; eggs, milk and milk products; edible fats and oils.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; treacle; yeast, baking-powder; salt, mustard; vinegar, sauces, condiments; infusions, not medicinal; confectionery ices.

Class 32: Beers; aerated waters and other non-alcoholic drinks; drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods and services are the following:

Class 32: Beers; Beer-type drinks; Non-alcoholic beers; Low-alcohol or reduced-alcohol beers; Hops (Extracts of -) for making beer; Extracts of hops for making non-alcoholic beverages; Ginger ale; Beer wort; Malt beer; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks, fruit juices; Syrups and other preparations for making beverages; Essences for making beverages.

Class 35: Advertising; Business management; Business administration; Office functions; Import-export of beverages and beers; Dissemination of advertising matter; Direct mail advertising; Publication of publicity texts; Publicity columns preparation; Demonstration of goods; Commercial or industrial management assistance; Procurement services for others [purchasing goods and services for other businesses]; Administrative management in connection with the sale and distribution of beverages and beers; Assistance for the wholesaling of beverages and beers; Retailing of beverages and beers; Presentation of goods on all communications media for retail; services rendered by a franchisor, namely business assistance for commercial or industrial operation or management, Consultancy relating to the management of establishments as franchises, Support in the marketing of goods within a franchising system; Business management assistance in the field of franchising; Business administration of licences for using goods and services.

Class 43: Restaurant services offering beer tasting; Bars, restaurants, hotels, cafés; Information about bars, cafés, restaurants, hotels and catering offering beer tastings; Restaurants and breweries licensed to serve beverages for consumption on site; Hire of pavilions; Rental of portable buildings; Temporary room hire; Drink dispensing machines (rental of); Rental of bar equipment; Rental of catering equipment; Rental of beverage fountains; Event facilities and temporary office and meeting facilities; Rental of chairs, tables, table linen, glassware; Providing banquet and social function facilities for special occasions; Hiring of rooms for social functions.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

1)

2) 3)
Earlier trade marks	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).

All signs are figurative black and white signs. The earlier sign No 1) is composed of a row of three letters ‘B’ each slightly larger than the last in black with white borders. On the right hand side the much smaller word ‘PLUS’ is placed vertically. The earlier marks No 2 and 3 are composed of two white bold capital stylised letters ‘BB’ (next to each other in the earlier mark No1 and back-to-back in the earlier mark No 2). inserted in a black/grey oval label with a white outline and three leaves at the top.

In contrast, the contested sign is composed of a shield divided in four parts. Two quarters are white and two are black resembling a chessboard. Each quarter contains a black or a white upper-case letter ‘B’.

The element ‘BBB’ of the earlier mark No 1 and ‘BB’ of the earlier marks No 3 will be seen as meaningless verbal element. As such they have no meaning for the relevant public in relation to the goods and services in question and are, therefore, distinctive.

The four letters ‘B’ of the contested sign and the letter ‘B’ of the earlier sign No 2 will each be associated with the concept of the single letter ‘B’ by the relevant public. As this letter has no specific meaning in relation to the relevant goods and services, it is distinctive.

The element ‘PLUS’ of the earlier sign No 1 will be will be perceived by the vast majority of the relevant public as a purely laudatory, promotional addition and is devoid of any distinctive character per se (15/11/2007, T-38/04, Sunplus, EU:T:2007:341, § 42; 03/03/2010, T-321/07, A+, EU:T:2010:64, § 41, 42).

The three leaves that appear in the earlier marks No 2 and 3 are commonplace elements in trade that indicate that the given goods have a plant origin or that they are organic. Bearing in mind that the relevant goods are foodstuffs and beverages, this element is weak for these goods.

The shield with the chessboard of the contested sign will be perceived as such by the relevant public. As it has rather decorative function, however with no connection to the goods and services, it is considered weak.

As regards the label present in the earlier signs No 2 and 3 it is considered that it has rather a decorative nature. Therefore, the verbal elements are more distinctive than the figurative elements.

The contested sign and the earlier signs No 2 and 3 have no element that could be considered clearly more dominant than other elements.

The element ‘BBB’ in the earlier sign No 1 is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the letter ‘B’ which is however presented in a completely different manner and a different number of times in the signs. In the earlier signs it is placed 2 or 3 times in a row and in the contested sign it appears four times within different quarters of a shield. Therefore, whilst both marks share the same letter “B”, this limited visual similarity is outweighed by the significant differences in the overall presentation of the signs as a whole, in terms of their different composition and structure. The differentiating element ‘PLUS’ of the earlier sign No 1 has minimal, if any, impact on the comparison of the signs as it is non-distinctive, as explained above.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. This is particularly relevant in the present case as all signs are composed of short verbal elements.

Therefore, the signs are visually only remotely similar.

Aurally, due to the way the signs are presented it is hardly possible to make an aural comparison as it is doubtful how and if the signs will be pronounced. The earlier sign No 1 will be most probably pronounced, irrespective of the different pronunciation rules in different parts of the relevant territory, as ‘BBB Plus’ and the signs No 2 and 3 as ‘BB’. On the other hand, the contested sign, due to the arrangement of the letters ‘B’, can be referred to as ‘B’ or ‘BBBB’ or not pronounced at all. In any event the contested sign is unlikely to be pronounced as ‘BBB’ or ‘BB’. The pronunciation differs also in the sound of the word ‘PLUS’ present in the earlier sign No 1 which however has a minimal, if any, impact on the aural comparison.

Therefore, the signs are similar to a low degree.

Conceptually, although the marks coincide in the presence of the letter B, they are not conceptually similar since in the earlier marks they form an incomprehensible verbal unit whereas in the contested sign they are represented separately and individually. The figurative elements of the signs will be associated with the meanings explained above.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a non‑distinctive and weak elements, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

In the present case the goods and services are assumed to be identical and they target the public at large and business customers. The level of attention will vary from average to high. The earlier marks have a normal level of distinctiveness.

The signs are visually remotely similar, aurally similar to a low degree and conceptually not similar.

A likelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of the same single letter or a combination of letters not recognisable as a word, are stylised in sufficiently different ways or contain sufficiently different figurative elements, such that their different overall graphic depictions eclipse their coinciding verbal element. This is the situation in the present case, since the graphic depiction of the contested sign is very different from that of the earlier marks.

The possible aural similarity of the signs is not sufficient to lead to likelihood of confusion. On the contrary, the phonetic similarity has very little impact, as it is based exclusively on the sound of the letter ‘B’, repeated a different number of times.

The signs differ significantly in their respective representations, described above, and the fact that the verbal elements of the signs are short makes these differences all the more obvious, even if these elements are weak.

In view of the foregoing and taking into account all the relevant circumstances of the case, in particular the important and rather striking differences from the visual point of view, the Opposition Division considers that the similarities between the marks are not sufficiently relevant to find that the public, even with an average degree of attentiveness, might believe that even identical goods or services come from the same undertaking or, as the case may be, from undertakings which are economically linked. Therefore there is no likelihood of confusion between them.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Helen Louise MOSBACK

Katarzyna ZANIECKA

Anna BAKALARZ

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.