OPPOSITION No B 3 035 436

Contemporary Wines Sweden AB, c/o Hummingbirds Grev Turegatan 29A, 11438, Stockholm, Sweden (opponent), represented by Advokatfirman Edmarlaw AB, Tegnérgatan 23, 6 tr, 11140, Stockholm, Sweden (professional representative)

a g a i n s t

Manu De Cort, Boekhoutstraat 28, 1670, Pepingen, Belgium (applicant).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 035 436 is upheld for all the contested goods.

2. European Union trade mark application No 17 426 305 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 17 426 305 for the word mark ‘Perfect Day Gin’. The opposition is based on European Union trade mark registration No 15 312 341 for the word mark ‘A Perfect Day’. The opponent invoked Article 8(1)(a) and (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: Alcoholic beverages (except beer).

The contested goods are the following:

Class 33: Distilled beverages.

The contested distilled beverages are included in the broad category of the earlier alcoholic beverages (except beer). Therefore, they are 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

A Perfect Day	Perfect Day Gin
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.

Both signs are word marks. The common elements ‘Perfect Day’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. This part of the public will understand said words as referring to a period of time in the week – a day – excellent in all of its respects (information extracted on 15/11/2018 from https://www.collinsdictionary.com/dictionary/english/perfect and https://www.collinsdictionary.com/dictionary/english/day_1). Since they are not descriptive or in any other way weak for the relevant goods, these two words are considered distinctive in both signs.

The letter ‘A’ at the beginning of the earlier trade mark will be perceived as an indefinite article. It will be read together with the main words ‘Perfect Day’. Therefore, it does not introduce any particular and distinctive concept because the title written without an ‘A’ at its beginning would still have the same meaning.

The element ‘Gin’ of the contested sign will be associated with an ‘alcoholic drink obtained by distillation and rectification of the grain of malted barley, rye, or maize, flavoured with juniper berries’ (information extracted on 15/11/2018 from https://www.collinsdictionary.com/dictionary/english/gin). Bearing in mind that the relevant goods are alcoholic drinks, this part of the contested trade mark is descriptive and, therefore, non-distinctive.

Visually, the marks coincide in their distinctive elements ‘Perfect Day’. However, they differ in the letter ‘A’ of the earlier mark and the non-distinctive element ‘Gin’ of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of two words ‘P-E-R-F-E-C-T- D-A-Y’, present identically in both signs. The pronunciation differs only in the sound of the letter ‘A’ at the beginning of the earlier mark and the sound of the letters ‘G-I-N’, present in the contested mark, if pronounced.

Therefore, the signs are considered aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the meaning of an excellent 24 hour period of the week (a ‘perfect day’). The contested mark also contains the concept of ‘gin’, which is, however, descriptive and therefore does not influence the comparison.

Therefore, the signs are conceptually identical.

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

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 relevant goods have been considered identical and they target the public at large. The degree of attention paid by consumers is average and the earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally highly similar and conceptually identical. They only differ in the beginning and the ending of the two id and then conclude about their conceptual identity...te only on the distinctive elements or the conceptual meaning itsemarks respectively. These differences are not sufficient to outweigh the similarities between the signs.

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 this case, the coinciding elements ‘Perfect Day’ make it 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), i.e. gin.

Considering all the above, there is a likelihood of confusion on the part of the English-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 15 312 341. It follows that the contested trade mark must be rejected for all the contested goods.

Furthermore, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) EUTMR.

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

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Helen Louise MOSBACK

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.