OPPOSITION No B 2 926 882

Destylarnia Sobieski S.A., ul. Skarszewska 1, 83-200, Starogard Gdański, Poland (opponent), represented by Robert Rozbicki, Grzybowska 16/22 lok. 214, 00-132, Warszawa, Poland (professional representative)

a g a i n s t

Amidel Polska, Karpacka 11, 43-316, Bielsko-Biała, Poland (applicant), represented by Piotr Bożyk, Polmos Bielsko-Biała SA ul. Gotarda 9, 02-683, Warszawa, Poland (professional representative).

On 15/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 926 882 is upheld for all the contested goods.

2. European Union trade mark application No 16 552 218 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 552 218 .

The opposition is based on, inter alia, international trade mark registration No 755 690 ‘KRUPNIK’ designating, inter alia, Germany.

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 international trade mark registration No 755 690 ‘KRUPNIK’ designating Germany.

1. The goods

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

Class 33: Alcoholic products (beverages) made with vodka, honey and spices.

The contested goods are the following:

Class 33: Liqueurs.

The contested liqueurs are alcoholic beverages made from a distilled spirit that are usually flavoured with additional ingredients such as fruits or spices. As such, they either overlap with or are contained in the opponent’s alcoholic products (beverages) made with vodka, honey and spices. Therefore, the goods in conflict are identical.

2. 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 degree of attention is considered to be average.

3. The signs

KRUPNIK
Earlier international trade mark	Contested sign

The relevant territory is Germany.

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 contains the word ‘KRUPNIK’ which is meaningless in the relevant territories. Therefore, it has average distinctiveness.

The contested mark is comprised of a representation of a bottle shape with the words ‘KRUPNIK SARMACKI’ both at the bottle’s neck, in very small fonts, and on the label. The bottleneck is of golden and black colours, and it also contains a red line. All these elements are also reproduced in the label part with an additional device element resembling a coat of arms placed above the word ‘KRUPNIK’. The other word, ‘SARMACKI’ is white uppercase letters placed against a black background. The label itself is light yellow with a golden frame around it. At the lower part of the bottle there is a stripe of golden and black colours. None of the word elements have any meaning in the relevant territories and they are, therefore, distinctive. With regard to the remaining figurative and colour elements, these essentially serve decorative purposes and are widely used on bottles. Therefore, these elements lack any particular distinctiveness and so does the actual shape of the sign since the relevant goods are typically sold in bottles of this shape and there is nothing fancy or unusual in it.

Of the many elements of the contested sign, it is the central, label, part that would visually stand out, and consumer’s attention would be focused, in particular, on the words ‘KRUPNIK SARMACKI’ and the device above them. The remaining elements have secondary visual role either because of their position or size.

Visually, the signs coincide in the word ‘KRUPNIK’ which is the earlier mark’s only element. The signs differ in contested sign’s additional verbal, figurative and device elements of which the differing figurative elements have a visual impact, however, this impact is very limited due to their lack of distinctiveness in relation to the goods. It must be recalled that 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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This particularly applies to the present case where the figurative elements are non-distinctive. It follows that the signs’ most relevant parts comprise the word ‘KRUPNIK’ in the earlier mark and the words ‘KRUPNIK SARMACKI’ in the contested sign. While the second, differing word is represented in a somewhat larger font in the contested sign, the fact remains that the whole of the earlier mark is nearly identically reproduced in the contested sign, in a visually important position. Based on all these findings, it must be concluded that the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KRUPNIK’ which is their initial words. The pronunciation differs in the sound of the letters ‛SARMACKI’ in the contested sign. Since it is the coinciding words that will be pronounced first, this will have a much larger impact on the aural impression produced by the marks than the contested sign’s second word. Therefore, it must be concluded that the signs are similar to an average degree.

Conceptually, as explained above, the signs consist either of meaningless words or non-distinctive figurative and colour elements. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 while the signs are aurally similar to an average degree and visually to a low degree. It should be borne in mind that the relevant goods are alcoholic beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, it is to be emphasized that the earlier mark is entirely included in the contested mark where it retains an independent and distinctive role and, moreover, it will be pronounced first.

Bearing in mind the foregoing, it is considered that the combination of the similarities between the signs and the identity of the goods may lead consumers to believe that the goods in question come from the same or related undertakings. In fact, consumers might even perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

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 international trade mark registration No 755 690 designating Germany. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier international trade mark registration No 755 690 designating Germany 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 designations of the opponent’s international trade mark registration No 755 690 or any of the remaining 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

Michaela SIMANDLOVA

Ferenc GAZDA

Erkki MÜNTER

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.