OPPOSITION No B 2 906 439

Ace of Spades Holdings, LLC, 1411 Broadway, 39th Floor, 10018 New York, United States of America (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Gerhard Ernst Krupp, Hildegardstraße 4a, 80539 München and Elmar Borrmann, Wiesenweg 9, 6370 Reith, Austria (applicants), represented by Rechtsanwälte Lintl, Renger Partnerschaft MBB, Nymphenburger Str. 20a, 80335 München, Germany (professional representative).

On 31/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 906 439 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 255 821 for the shape mark . The opposition is based on European Union trade mark registrations No 12 019 683 for the shape mark , No 6 538 987 for the shape mark and No 12 013 801 for the position mark . The opponent invoked Articles 8(1)(b) and 8(5) 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.

1. The signs

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).

The earlier mark 1) consists of a shape of a rounded, greenish, transparent, bottle becoming slimmer towards the neck. In the middle of the neck, there is an embossed adorning figurative element/label in the form of an ace of spades. The bottle is sealed at the top by a cork which is covered with black foil. Earlier mark 2) consists of the same shape of a bottle as earlier mark 1), but in a shiny gold colour. The bottle is also sealed at the top by a cork which is covered with black foil. Furthermore, regarding this bottle, in the middle there is an embossed figurative element also in the form of an ace of spades with a fanciful letter ‘A’ inside; the same element is also depicted on the neck of the bottle. At the bottom, there is an embossed label featuring several verbal elements of which a part is illegible and another part can be read as: ‘Champagne’, ‘750 ML’, ‘12% ALC VOL’ ‘BRUT’ and ‘ARMAND DE BRIGNAC’. Earlier mark 3) is a position mark. It consists of an adorning golden front, back and neck labels, as well as the central depiction of an ace of spades on a bottle, which also appears in the neck part of the bottle. The broken lines illustrating the outline of the bottle serve to show the position of the sign and do not form part of the trade mark.

The contested sign consists of a shape of a rounded, shiny, golden bottle becoming slimmer towards the neck. At the bottom, there is an embossed decorative figurative element/label inside of which there are some illegible verbal elements and some that can be read as: ‘JEAN CALL’, ‘Champagne’, ‘BRUT’ and ‘PRESTIGE’. Above and below this label, there is an interconnected pattern of adornments with the letters ‘JC’ appearing at the top, surrounded by an intricate leaf-like design. A similar adornment appears on the neck of the bottle, also with the letters ‘JC’ inside. The bottle is sealed with a cork covered with black foil.

The distinctiveness of the marks’ elements will be assessed in relation to the following goods:

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

European Union trade mark registration No 12 019 683:

Class 33: Alcoholic beverages (except beers), in particular wines, sparkling wines and champagnes.

European Union trade mark registration No 6 538 987:

Class 33: Wines with registered designation of origin Champagne.

European Union trade mark registration No 12 013 801:

Class 33: Alcoholic beverages (except beers), in particular wines, sparkling wines and champagnes.

The contested goods are the following:

Class 33: Wine of French origin, namely Champagne; in accordance with the specifications of the protected geographical indication "Champagne".

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about the origin due to similarities that pertain solely to non-distinctive or weak elements.

The shape of the bottles, in the earlier marks (except for earlier mark 3, where the bottle shape does not form part of the trade mark), and the contested sign, is commonly used in the alcoholic beverages sector and there is nothing in its representation that would render it different from other bottles used for these products. The same applies with respect to the uppermost part, namely the cork covered with black foil, which does not depart significantly from the norms and customs of the sector either, since it is well-known that caps of many bottles are covered by a paper or foil which may be in different colours. Furthermore, the same applies also regarding the different colours of the bottles. The Opposition Division agrees with the applicants where they point out the following: ‘the champagne bottle design itself is born as much out of style as it is necessity. The thick glass with its gently sloping shoulders and a deep punt … are necessary as the pressure inside the bottle is 80-90psi, which is 3 times the pressure inside an average car tyre. Regularly a champagne bottle has a foil cover which covers the neck of the bottle and the cork arrangement.’

Even though some of the bottles appear in different colours, such as in greenish and shiny gold, nowadays it is not uncommon that these kinds of bottles come in different shades and it is clear that these different colours will not help consumers to identify the origin of the goods. Furthermore, the use of the colours could also refer to distinguish different kinds of products, such as the bottles under Nos 1) and 2) could refer, for example, to white wine or normal sparkling wine, but also the colour in the contested sign, could refer to normal (sparkling) wine. Therefore, the shape of the bottles, together with the part that closes the bottle and the colours, are to be considered non-distinctive for the relevant goods in Class 33 and these elements will have very little impact, if any, on the overall impression. In this regard, the Opposition Division does not concur at all with the opponent that the shape of the bottle and the colours are distinctive. Furthermore, as regards earlier mark 2) the words ‘Champagne’, ‘750 ML’, ‘12% ALC VOL’ and ‘BRUT’ refer to the nature and some characteristics of the goods and these elements are not distinctive either. The most distinctive elements of the earlier marks are the embossed, adorning, figurative element/label in the form of an ace of spades, with or without a fanciful letter ‘A’ inside, and in case of earlier mark 2), also the words ‘ARMAND DE BRIGNAC’.

Moreover, as regards earlier mark 3), which is a position mark, there is not even a coincidence in the non-distinctive shape of a bottle. This is because even though this mark resembles a bottle at first glance, it should be noted that it is a position mark and protection, therefore, extends to the positioning of the various symbols or labels on the bottle, while the shape is there merely for indicative purposes.

As regards the contested sign, the verbal elements ‘JC’ on the neck of the mark and at the bottom part, both placed inside of a device in the form of a fanciful interconnected pattern of adornments, and the words ‘JEAN CALL’, are all normally distinctive for the contested sign, whereas the words ‘Champagne’, ‘BRUT’ (‘very dry’ see Collins English Dictionary online) and ‘PRESTIGE’ (‘high status or reputation achieved through success’ (see Collins English Dictionary online)) are non-distinctive, since they refer to the nature or some other characteristics of the goods.

To conclude, the form of a shape of a bottle, being covered in a (shiny) colour and a black coloured cap is not distinctive since, taken as a whole, it consists of a combination of presentational features that are typical of the packaging of the goods in question. This packaging is not markedly different from various basic forms of packaging commonly used in trade for the goods at issue, but is simply a variation thereof. Sparkling wine bottles often have an elegant shape, shiny, golden coloured labels or packaging and coloured caps. The packaging in question cannot be sufficiently distinguished from other forms of packaging commonly used for sparkling wine and the like and will not enable the relevant public immediately and with certainty to distinguish the goods from those of another commercial origin (by analogy, 24/02/2016, T-411/14, Shape of a bottle (3D.), EU:T:2016:94, § 37, 38; 20/10/2011, C-344/10 P & C-345/10 P, Botella esmerilada II, EU:C:2011:680, § 46; 17/06/2016, R 2578/2015-1, Shape of bottles (3D), § 16; 27/07/2012, R 1913/2011-1, Form einer Flasche (3D Marke), § 14); 29/04/2004, T-399/02, Botella Corona, EU:T:2004:120, § 25).

Visually, the signs only coincide in irrelevant aspects. All of the marks, except for the position mark, consist of rather basic bottle shapes depicted in different colours and sealed by a cork covered with black foil. Nevertheless, as mentioned above, these similarities are due to elements that are non-distinctive and, therefore, will not help consumers to identify the origin of the goods. The signs also coincide in a similar colour as regards the earlier mark mentioned under No 2). However, the use of this colour is not distinctive either.

As regards earlier mark 3), which is a position mark, it is hard to see any coincidences at all at a visual level, since this mark does not even include the shape of a bottle.

Furthermore, the marks differ in their verbal elements ‘JC’ (mentioned twice) and ‘JEAN CALL’ that are normally distinctive in the contested sign and not shared by the earlier marks and in the verbal elements ‘ARMAND DE BRIGNAC’ of earlier mark 2), which are also normally distinctive. With respect to the remaining earlier marks and the contested sign, they differ in the figurative elements, which are, in particular, the ones in the form of an ace of spades (with or without the letter ‘A’) and in the contested sign, a totally different interconnected pattern of adornments. The contested sign creates a unique visual impression that is very different from the impression created by the earlier marks.

Therefore, taking all the aforementioned into account, the signs are visually not similar, because the coincidences occur in non-distinctive elements.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the earlier marks 1) and 3) are, respectively, a shape mark and a position mark, the same principle applies and they will be perceived as purely figurative marks and, therefore, it is not possible to compare the marks aurally, as the contested sign is not a purely figurative mark.

With respect to earlier mark 2), even though a letter ‘A’ appears inside of the ace of spades, it is so fanciful that it will probably not be pronounced. When pronouncing this earlier mark, it will be as being /AR-MAND/ /DE/ /BRIG-NAC/ versus /JEAN/ /CALL/ of the contested sign, as these are the only distinctive elements of the marks. In this case, since the signs do not aurally coincide in any element, as both marks will be pronounced, but differently, it is concluded that the signs are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The shape of the bottle, the colour, the cork, included in all the signs (except for earlier mark 3), and the elements ‘Champagne’, ‘750 ML’, ‘12% ALC VOL’ and ‘BRUT’ (earlier mark 2) and ‘Champagne’, ‘BRUT’ and ‘PRESTIGE’ of the contested sign, will be associated by the relevant public as referring to these concepts as such. These concepts can, however, not help the public to identify the origin of the goods. Therefore, even the concepts that the marks have in common will have no impact on the comparison. Nevertheless, the earlier marks will refer to the concept of an ace of spades and regarding earlier mark 2), this in combination with the first and last name ‘ARMAND DE BRIGNAC’, while the contested sign is perceived as referring to the first and last name ‘JEAN CALL’; these names refer to entirely different persons. For all these reasons, the marks are conceptually dissimilar.

As the signs merely coincide in non-distinctive elements and give an entirely different overall impression, they are considered dissimilar overall.

2. Conclusion

The signs are visually not similar, it is not possible to compare them aurally or they are aurally dissimilar, as well as they are conceptually dissimilar, and they give, as a whole, a different overall impression and only coincide in non-distinctive elements.

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as well known and thus enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks, it is unnecessary to examine the evidence submitted by the opponent in this respect, since that would not alter the outcome reached above.

The opponent, in its observations of 22/08/2018, refers to a judgment of the General Court and a Board of Appeal decision, to support its arguments. As far as the Board of Appeal decision is concerned it must be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The judgment of the General Court and the Board of Appeal decision relate to the following marks: versus , (16/01/2018, T-398/16, Starbucks Coffee (figurative)/Coffee Rocks (figurative) and versus (14/03/2017, R 448/2016-2, BLACKWATER (figurative)/Device of a Paw Print (figurative)).

The previous cases referred to by the opponent are not relevant to the present proceedings for the following reasons: regarding T-398/16, taken as a whole, the marks in conflict have the same general appearance, both are two circular devices consisting of two parts with a figurative element in the centre. Furthermore, that central element is surrounded by a broad band which is marked off by some circles. The two word elements in that band also have the same structure, the same typeface, the first is placed at the top and the second is placed at the bottom. There are also two figurative elements, one placed at the right-hand side and the other at the left-hand side. These marks are much more similar, since they convey a similar visual appearance, while in the present case the marks only coincide in non-distinctive elements and the most distinctive elements are totally different. With respect to R 448/2016-2, the marks are also much more similar and one has to bear in mind that the figurative element in the form of a paw print is normally distinctive for the relevant goods and services in that case, while in the present case, as pointed out before, the similarities occur in non-distinctive elements. For all the aforementioned reasons, the Opposition Divisions finds that the marks are not comparable with the case at hand.

Given that the opposition is not successful under Article 8(1)(b) EUTMR, it is necessary to examine the other ground on which the opposition is based, namely Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claims reputation in the European Union for European Union trade mark registrations No 12 019 683 for the shape mark for goods in Class 33, No 6 538 987 for the shape mark for goods in Class 33 and No 12 013 801 for the position mark for goods in Class 33.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicants establish due cause for the use of the contested trade mark.

In the present case, the applicants did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs are visually not similar, it is not possible to compare them aurally or they are aurally dissimilar, as well as they are conceptually dissimilar, and they give, as a whole, a different overall impression and only coincide in non-distinctive elements.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C 552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

Given that the opposition is not well founded under Article 8(5) EUTMR, it is unnecessary to examine the evidence filed by the opponent to prove reputation, as the outcome would be the same and the opposition has to 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 applicants 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 applicants are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Richard BIANCHI

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.