OPPOSITION No B 3 034 348

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Mr. Alba International Trading Company Limited, Unit 4b Gateway Business Park, Beancross Road, Grangemouth FK3 8WX, United Kingdom (applicant), represented by Harper Macleod LLP, The Ca’d’oro, 45 Gordon Street, Glasgow G1 3PE, United Kingdom (professional representative).

On 12/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 034 348 is partially upheld, namely for the following contested goods:

Class 33: Scotch whisky; scotch whisky based drinks produced in Scotland.

2. European Union trade mark application No 17 065 715 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 065 715 (figurative mark ‘ ’), namely against all the goods in Classes 29, 30 and 33. The opposition is based on German trade mark registration No 778 352 (word mark ‘Herzog Alba’). 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.

a) The goods

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

Class 33: Wines, sparkling wines.

During the present proceedings, the applicant requested a limitation to the list of goods in Class 33. The contested goods, after the limitation, are the following:

Class 29: Meats; fish, seafood and molluscs.

Class 30: Confectionery; chocolate; salts, seasonings, flavourings and condiments; pastries, cakes, tarts and biscuits (cookies).

Class 33: Scotch whisky; scotch whisky based drinks produced in Scotland.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested goods in Class 29 are dissimilar to all of the opponent’s goods, namely wines, sparkling wines. These goods have a different purpose, and also different distribution channels, end users and producers. Furthermore, the goods are not in competition and not necessarily complementary.

Contested goods in Class 30

The contested goods in Class 30 are dissimilar to all of the opponent’s goods, namely wines, sparkling wines, because, contrary to the opponent’s arguments, they have nothing relevant in common. They are of a different nature. They are of a different purpose. They do not follow the same method of use. They are neither complementary nor in competition. They do not share the same distribution channels, do not target the same end users and are produced by different companies.

Contested goods in Class 33

The contested goods scotch whisky and scotch whisky based drinks produced in Scotland are similar to the opponent’s wines. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings.

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 similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Herzog Alba
Earlier 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 word mark consists of the verbal elements ‘Herzog’ and ‘Alba’, while the contested sign is composed of the slightly stylised verbal elements ‘MR.’ and ‘ALBA’ seemingly written on a graph paper-like background.

The structure of the signs corresponds to the usual structure of a name. This also results from the meaning of the first words of the signs, namely ‘MR.’ in the contested sign, a basic English abbreviation of ‘Mister’ that will be understood as a male title, and ‘Herzog’ in the earlier mark, a German title meaning ‘duke’. In addition, as the element ‘ALBA’ does not have a meaning in German, both signs will be perceived by the relevant public as referring to the name of a male person whose surname is ‘ALBA’.

It must be noted in this regard that a surname may also serve as a trade mark distinguishing and indicating the origin of goods or services (16/09/2004, C‑404/02, Nichols, EU:C:2004:538, § 30). Particularly so in the present case, where ‘ALBA’ does not exist as a surname in Germany, and thus, will be considered unusual. Given that the prefix ‘MR.’ merely refers to a male title, the more distinctive component of the word combination constituting the earlier mark will be the word ‘ALBA’ (07/03/2016, R 1039/2015‑2, M'Cooky / MR. COOK (fig.)).

Therefore, ‘ALBA’ is considered distinctive. It applies equally to the earlier mark ‘Herzog Alba’, as ‘Herzog’ is also a title.

The elements ‘MR.’ and ‘Herzog’ are then considered to be somewhat subordinate and play a supporting role with respect to the element ‘ALBA’. This is because they merely help to define this element, aiming to emphasise the following word. Bearing in mind the relevant goods, both elements are considered to be distinctive, albeit less distinctive than the verbal element they each support, namely ‘ALBA’ (07/03/2016, R 1039/2015‑2, M'Cooky / MR. COOK (fig.), § 38).

Both signs have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the same structure composed of two words. They also coincide in the word ‘ALBA’ in its entirety, which has the same position in both signs and is the most distinctive part of each sign. They differ in their first elements, namely ‘Herzog’ and ‘Mr.’, whose distinctiveness is limited due to their supporting role. They differ further in non-distinctive elements, namely the slight stylisation of the contested sign andits additional background, which has no counterpart in the earlier mark.

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

Aurally, the element ‘Mr.’ will be pronounced ‘Mister’ by the relevant public, who understands this basic English word. The signs have the same number of syllables, so that they will be pronounced with the same length and rhythm. Moreover, they share the verbal element ‘ALBA’ in the second position, which accounts for two syllables out of four. The only aural difference results from the first word in each of the signs, ‘Herzog’ and ‘Mister’, both of limited distinctiveness.

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

Conceptually, it has already been observed that both signs would be perceived, as a whole, as the name of a male person whose surname is ‘ALBA’. As the signs will be associated with an almost identical meaning, which only differs in the loftiness of the title, the signs are conceptually at least similar to a high degree.

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 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.

e) Global assessment, other arguments and conclusion

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.

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).

The goods were found to be partly similar and partly dissimilar. The relevant public, that is the public at large, displays an average degree of attention.

The signs are visually and aurally similar to an average degree, to the extent that they coincide in their second and distinctive element ‘ALBA’. As their identical structure of a title preceding the same male name leads to a similar meaning, the signs are conceptually at least similar to a high degree.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Account is further 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).

It should also be borne in mind that part of the contested goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48). As the most distinctive element of both marks, the coinciding verbal element ‘ALBA’ will be more likely to have a lasting impression on the consumer than the figurative elements of the contested sign.

Consequently, there is a likelihood of confusion because the differences between the signs are confined to non‑distinctive or secondary elements and aspects. In addition, said secondary elements (i.e. ‘Herzog’ and ‘Mr.’) enhance the possibility for the consumer to assume the relevant goods come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

Alexandra APOSTOLAKIS

Martin EBERL

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.