OPPOSITION No B 2 964 057

Geo G. Sandeman Sons & Co., Limited, 400 Capability Green, Luton, Bedfordshire LU1 3AE, United Kingdom (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Chucca Island S.L., Carrer Méndez Núnez 13, 07590 Cala Ratjada, Illes Balears, Spain (applicant), represented by Schulze Horn & Partner GBR, Vossgasse 3, 48143 Münster, Germany (professional representative).

On 07/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 964 057 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 16 682 619 .The opposition is based on European Union trade mark registration No 1 626 720 ‘SANDEMAN’. 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.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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

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

Class 33: Alcoholic beverages.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

Beer is never in Class 33, so the goods are de facto 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 degree of attention is considered to be average.

c) The signs

SANDEMAN
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 contested sign is figurative, and it is composed of a complex figurative device and the verbal element ‘sensenmann’, although due to the relatively high stylisation (curved disposition and diminishing size) it might be difficult to appreciate some of its final letters. As regards the figurative elements, some can be easily identified, such as a glass filled with green liquid, a green stick coming out of the inside of the glass that, in combination with the verbal element, displayed in an arched design forming the blade, might resemble a scythe. On top of the glass, there are some other elements more difficult to perceive due to a somewhat blurry representation or light colour; these are a skull, a skeleton hand holding the aforementioned stick/scythe, foam or smoke on top of the glass/liquid as well as two green-blueish devices and a green container holding what appears to be fire.

The verbal element ‘sensenmann’ of the contested sign will be understood by the German-speaking part of the public as ‘human skeleton (embodying death) with a scythe’ (information extracted from Duden dictionary on 06/06/2019 at https://www.duden.de/suchen/dudenonline/sensenmann - 30/05/2019). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. For the non-German-speaking part of the public, it will be perceived as family name or alternatively as a completely fanciful word. In any of those cases as it has no relation whatsoever with the relevant goods, it is distinctive.

The composition of figurative elements of the contested trade mark formed by the glass with green liquid and the other devices on top, overshadows the verbal element of the mark by virtue of its central position and size. Therefore it is visually dominant in the contested trade mark. The glass filled with green liquid is non-distinctive as it denotes a representation of the relevant goods or their characteristics (colour). The rest of figurative elements of the sign have no meaning for the relevant goods, and are distinctive.

The earlier mark is the word ‘SANDEMAN’. It will be perceived by part of the public as a family name. It has no meaning for the relevant goods and is, therefore, distinctive. For the rest of the public, it will be meanings and, therefore, distinctive too.

Visually, the signs differ in the dominant figurative composition only present in the contested sign. Despite the fact that the glass filled with green liquid is non‑distinctive, it forms part of a larger device, distinctive as a whole, and visually dominates the overall impression of the contested sign. The signs have some letters in common with the earlier mark, namely S*N*E*MAN*. The coincidence in the sequences ‘MAN’ vs. ‘MANN’ is the most relevant, but it is placed at the end where the public pays less attention. Moreover, due to their stylisation, these letters are less legible in the contested sign. The beginnings of the signs ‘SENSEN’ and ‘SANDE’, even with some letters in common, make an overall different impression. The signs also differ in the high stylisation of the verbal element of the contested sign.

The opponent argues that due to the coincidences in lengths and letters, they signs are very similar. However the General Court has held that the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same or a very similar number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Contrary to the opponent’s argument, the figurative elements of the contested sign do have an influence in the visual similarity of the signs. The Opposition Division recognises 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). However, in the present case, the figurative elements are clearly visible in the contested sign with a naked eye to the extent that they dominate the overall impression, and second, some of them have a normal degree of distinctiveness.

Considering the above, the signs are visually similar to a very low degree.

Aurally, reference is made to the commonalities described above. Irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides mainly in the third syllable ‘MAN’ and ‘mann’ and in the sound of three coinciding letters of the first two syllables. The pronunciation differs mainly in the sound of the first syllable (different vowel) and second syllable (different length and consonants).

Whilst it is admittedly true that the signs contain the same number of syllables, it does not mean that the aural similarity between the signs is high. Even for the part of the public for which the rhythms of the signs will be similar, for example where the public puts the emphasis on the last syllable in both signs, the different vowel in the first syllable and the different leading and ending consonants in the second syllable will be clearly audible, resulting in a memorable difference between the signs.

Therefore, the degree of aural similarity between the signs is considered low.

Conceptually, a part of the public will perceive the earlier mark as an invented word, thus with no meaning, therefore, although they will perceive the meanings of the verbal and/or figurative elements of the contested sign as explained above, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the other part of the public perceiving the earlier mark as a surname, taking into account the concepts conveyed by the verbal and/or figurative elements of the contested sign, as the signs will be associated with a dissimilar meaning, they are conceptually not similar.

For the sake of completeness, the Opposition Division notes that the mere fact that both the earlier mark and the verbal element of the contested sign may be perceived by part of the relevant public as surnames is on its own neutral for comparison purposes and cannot lead to any conceptual similarity when the surnames are clearly different (12/09/2011, R 1429/2010‑4, VANGRACK / VAN GRAF).

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 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 it is internationally renowned in the alcoholic drinks sector and that is the owner of registrations for the trade mark ‘SANDEMAN’ all over the world. However, no evidence was submitted during the substantiation period that expired on 04/05/2018 to support the 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.

e) Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods. They are directed at the public at large, whose degree of attention is considered average in relation to the goods at issue. The earlier mark is endowed with an average degree of inherent distinctiveness, which affords it a normal scope of protection.

As demonstrated in detail in section c) of this decision, there are important differences between the signs that will not go unnoticed by the relevant public. In particular, there is only a low degree of aural similarity and a very low degree of visual similarity between the signs. Conceptually, the signs convey different meanings and are not similar for a part of the public, whilst for others the meanings of the verbal and/or the figurative elements of the contested sign will still help them in differencing it from the meaningless earlier mark.

It is considered that, despite the fact that the public must often rely on the imperfect recollection of trade marks, the differences established between the signs in the present case are enough to outweigh the similarities between them originating from the letters they have in common. Following from the above, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered to be reasonably well informed and reasonably observant and circumspect, might believe that the goods, even if identical, come from the same undertaking or economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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

Zuzanna STOJKOWICZ

Fabián GARCIA QUINTO

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.