OPPOSITION No B 3 043 547

Duvel Moortgat N.V., Breendonkdorp, 58, 2870 Puurs, Belgium (opponent), represented by Christophe Dupont, 19, Duarrefstrooss, 9990 Weiswampach, Luxembourg (professional representative)

a g a i n s t

Centrum Wynajmu Nieruchomości Sp. z o.o., ul. Myśliborska 16, 59-400 Jawor, Poland (applicant), represented by Włodzimierz Januszkiewicz, E. Ciołka 12/328, 01/402 Warszawa, Poland (professional representative).

On 15/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 043 547 is upheld for all the contested goods, namely

Class 32: Isotonic beverages; Energy drinks; Beverages containing vitamins; Sports drinks; Nutritionally fortified beverages; Protein-enriched sports beverages.

2. European Union trade mark application No 17 362 617 is rejected for all the contested goods. It may proceed for the remaining services.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 362 617 (figurative mark ‘ ’), namely against all the goods in Class 32. The opposition is based on, inter alia, European Union trade mark registration No 3 415 726 (figurative mark ‘ ’). 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 European Union trade mark registration No 3 415 726.

a) The goods

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

Class 32: Beers, including porter and ale.

The contested goods are the following:

Class 32: Isotonic beverages; Energy drinks; Beverages containing vitamins; Sports drinks; Nutritionally fortified beverages; Protein-enriched sports beverages.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 32

The contested isotonic beverages; energy drinks; beverages containing vitamins; sports drinks; nutritionally fortified beverages; protein-enriched sports beverages are similar to a high degree to the earlier beers, including porter and ale because they have the same purpose, relevant public, distribution channels and producer. Furthermore, these goods are in competition.

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 highly similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element Duvel is meaningful in certain territories, for example in those countries where Dutch is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the public such as the Netherlands and Belgium.

The element ‘Duvel’ of the earlier mark will thus be understood as the Dutch word for ‘Devil’ by the relevant public. Moreover, the verbal element ‘DEVIL’ is considered to be a basic English word and will be understood as such by the relevant public.

Indeed, the earlier mark is composed of the verbal element, ‘DUVEL’, showcased in a bright red gothic font, and placed below an elaborate crest. These verbal and figurative elements are encased in a simple thin frame of the same red colour, which is considered to be a less distinctive element, as it is of a purely decorative nature. Due to its size and eye-catching colour, the verbal element ‘DUVEL’ is deemed to be the dominant element of the earlier mark. It is also distinctive considering the goods.

As regards the contested sign, it is a composite sign, containing two verbal elements, namely ‘devil’ written in a white gothic font, and below, the word ‘ENERGY’ written in smaller red uppercase letters. Additionally, it contains a figurative element depicting a devil with horns, positioned over a black background.

The figurative element of the contested sign and its verbal element ‘Devil’ overshadow the verbal element ‘Energy’ by virtue of their central position and size. In relation to the food and drink related goods, the word ‘Energy’ is non-distinctive as it indicates that the goods give an energy boost (31/03/2017, R 1978/2016-1, ENERGY HYBRID, § 23-28).

Visually, both of the signs have a similar composition of putting the verbal element(s) below a figurative element and are both encased in a box, one is white with red lining while the other is fully black. Their verbal elements coincide in all their consonants, namely ‘D*V*L’. The signs further coincide in the gothic stylisation of their dominant verbal element, while they differ in their vowels, namely ‘U’/’E’ and ‘E’/’I’, and the additional non-distinctive word 'Energy' of the contested sign, which has no counterpart in the earlier mark. They differ in respect of their aforementioned figurative elements, namely the representation of a crest and devil.

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).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters
/D/, /V/, /L/, present identically in both signs. The pronunciation differs in the sound of the second and fourth letters ‘U’/’E’ and ‘E’/’I’/ , and in the additional non-distinctive element ‘Energy’, which has no counterpart in the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal element of the earlier mark, ‘Duvel’, means ‘Devil’ in English. The relevant public, that is the Dutch-speaking public, will understand the English word ‘Devil’ of the contested sign. This public will also be likely to not take the verbal element ‘Energy’ into account, as it is a non-distinctive and non-dominant element.

Therefore, as both signs will be perceived by the relevant public as referring to the devil, the signs are conceptually highly 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 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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with all the goods for which it is registered, namely beers, including porter and ale. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 EXHIBIT 1: Screenshot from Wikipedia, dated 25 June 2018, in relation to the history of the ‘Duvel’ beer.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

It should indeed be borne in mind that the General Court has ruled to this effect in relation to extracts from Wikipedia and disregarded evidence from such source. This is because the information from collective encyclopaedias lacks certainty as their content may be amended at any time and, in certain cases, by any visitor, even anonymously (18/06/2013, T-338/12, K9 products, EU:T:2013:327, § 32; 10/02/2010, T-344/07, Homezone, EU:T:2010:35, § 46; 16/11/2011, T 500/10, DORMA, EU:T:2011:679, § 55).

The evidence provided does not contribute to assessing the sign’s degree of recognition in the mind of the relevant consumer. Without any further data such as market shares, money invested in advertising or other possible indicators of market recognition, the Wikipedia article certainly is not enough to show how the use of the mark has affected the awareness of the relevant public regarding the earlier sign with respect to the relevant goods; thus it cannot be concluded that the earlier mark has acquired enhanced distinctiveness.

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the contested goods are similar to a high degree. The relevant goods are directed at the public at large, whose degree of attention is considered to be average.

Moreover, the signs are visually and aurally similar to an average degree. As the signs are associated with the same concept, the signs are therefore considered to be conceptually highly similar.

Account is also taken that 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.

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).

In this case, consumers could assume there is a connection between these two marks, the contested being a variation of the earlier one, intended for use in other countries and/or export purposes as ‘devil’ is merely the English translation of the Dutch word ‘duvel’.

Considering all the above, there is a likelihood of confusion on the part of the Dutch-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 362 617. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right ‘Duvel’ 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

Lars HELBERT

Alexandra APOSTOLAKIS

Claudia MARTINI

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.