OPPOSITION No B 2 915 455

Central Hisumer, S.L., Carretera Hurchillo, No 10, 03300 Orihuela (Alicante), Spain (opponent), represented by Doñaque & Asociados, S.L., Conde de Xiquena, 9, piso 1, pta. D, 28004 Madrid, Spain (professional representative)

a g a i n s t

Black Death International AG, Büelstrasse 1, 8966 Oberwil-Lieli, Switzerland (applicant), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, G5 8PL Glasgow, United Kingdom (professional representative).

On 29/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 915 455 is upheld for all the contested goods.

2. European Union trade mark application No 16 418 717 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 of European Union trade mark application No 16 418 717 ‘BLACK DEATH’ (word mark). The opposition is based on, inter alia, Spanish trade mark registration No 2 010 183 (figurative mark), Spanish trade mark registration No 1 925 915   (figurative mark) and Spanish trade mark registration No 1 920 070 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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 has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 several earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 010 183, Spanish trade mark registration No 1 925 915 and Spanish trade mark registration No 1 920 070.

a) The goods

Preliminary remark

The goods are not identically described in the list in the notice of Opposition and in the translation of the Spanish trade mark certificates. The Opposition Division will refer to the goods as listed in the notice of opposition.

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

1) Spanish trade mark registration No 2 010 183

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

2) Spanish trade mark registration No 1 925 915

Class 25: Clothing; footwear and headgear.

3) Spanish trade mark registration No 1 920 070

Class 33: Vodka.

The contested goods are the following:

Class 25: Clothing, footwear and headgear.

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

Class 33: Alcoholic beverages; spirits; vodka.

Contested goods in Class 25

Clothing, footwear and headgear are identically contained in the applicant’s list and in the opponent’s trade mark registration No 1 925 915.

Contested goods in Class 32

Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages are identically contained in the applicant’s list and in the list of the opponent’s trade mark registration No 2 010 183.

Contested goods in Class 33

Vodka is identically contained in the applicant’s list and in the list of the opponent’s trade mark registration No 1 920 070.

The contested alcoholic beverages; spirits include, as broader categories, the opponent’s vodka of trade mark registration No 1 920 070. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 with an average degree of attention.

c) The signs

1) 2) 3)	BLACK DEATH
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 marks are figurative marks, consisting of an identical silver-coloured grinning skull, under a black top hat with silver-coloured stripes on a black rectangular background with a white border. Above the skull are the stylised capitalised letters ‘Black Death’ in silver. Furthermore, the earlier marks 2) and 3) have the word ‘VODKA’ added below the skull, in rather standard upper case silver coloured letters. At the bottom of the marks 2) and 3) are some negligible elements that, due to their size, blurriness and position are likely to be disregarded by the relevant public and therefore, they will not be taken into consideration.

The contested sign is a word mark, ‘BLACK DEATH’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

The verbal element ‘Black Death’ of both the earlier marks and the contested mark does not consist of basic English words and is not likely to be understood by the Spanish-speaking public. Therefore, this verbal element is distinctive.

The verbal element ‘VODKA’ will be understood by the public as a drink with high alcoholic content. Bearing in mind that some of the relevant goods are vodka, namely in earlier mark No 3), in this earlier mark this element is non-distinctive in this mark as only describing the goods. However, in the earlier mark No 2) it is distinctive, as it is not descriptive or otherwise weak for the relevant goods.

The skulls with hats will be perceived as such by the relevant public. As not being descriptive or otherwise weak for the relevant goods, they are distinctive in all the earlier marks.

The dark rectangular backgrounds with white borders of the earlier marks are less distinctive figurative elements of a purely decorative nature.

The earlier marks have no elements that could be considered clearly more dominant than other elements.

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).

Visually, the opposing signs coincide in the distinctive verbal element ‘Black Death’, which constitutes the entire contested sign. They differ in the figurative element of all the earlier marks, a skull with a hat, in the additional verbal element ‘VODKA’ of the earlier mark 2), where it is distinctive, and 3), where it is non-distinctive, and in the stylisation of all the earlier marks, including the colours.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Black Death’, present identically in the opposite signs. This element is distinctive and constitutes the entire contested sign and is the only element that will be pronounced in the earlier sign 1). The pronunciation differs in the sound of the letters ‛VODKA’ as regards the earlier sign 2) where it is distinctive, and 3), where it is non-distinctive.

Therefore, the earlier sign 1) and the contested sign are aurally identical, and the signs 2) and 3) and the contested sign are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the figurative elements of all the earlier marks and the verbal element “VODKA” of the earlier marks 2) and 3) as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 marks 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 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 element in earlier mark 3), namely the element ‘VODKA’ and weak elements in all earlier marks (the less distinctive backgrounds), as stated above in section c) of this decision.

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.

In the present case, the goods are identical. The relevant public is the public at large with an average degree of attention.

The signs are visually similar to an average degree, earlier mark 1) and the contested sign aurally identical and earlier marks 2) and 3) and the contested sign aurally similar to an average degree. The signs are conceptually not similar. The distinctiveness of the earlier marks is normal.

Taking into account all the circumstances of the case, the difference between the marks is not sufficient to counterbalance the similarities between them. The relevant public could be mistaken regarding the origin of the goods that are identical.

Bearing in mind that the contested sign is fully included as an independently distinctive element in the earlier marks, it is even conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of these earlier marks, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The opponent has argued that the earlier trade marks, all characterised by the presence of the same word component, ‘Black Death’, constitute a ‘family of marks’ or ‘marks in a series’. However, considering the outcome of this case, this claim is not necessary to assess. Also, the applicant has argued that the opponent registered its mark in bad faith. However, since these marks are national marks, this falls outside the competency of the Office and is irrelevant to the present opposition proceedings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registrations No 2 010 183, No 1 925 915 and No 1 920 070. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier rights, Spanish trade mark registrations No 2 010 183, No 1 925 915 and No 1 920 070 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Elena NICOLÁS GÓMEZ

Lena FRANKENBERG GLANTZ

Judit NÉMETH

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.