OPPOSITION No B 3 047 300

CGL Restaurant Holdings Limited, 16 Kirby Street, London, EC1N 8TS, United Kingdom (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham, B16 8QQ, United Kingdom (professional representative)

a g a i n s t

Jose Maria Aycart Valdes, Edif. Parking Escalinata Avd. Virgen del Carmen s/n 11201, Algeciras, Spain (applicant), represented by Consiangar S.L., Calle Albasanz

72-1º 1, 28037 Madrid, Spain (professional representative).

On 18/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 300 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 507 724 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 and services of European Union trade mark application No 17 507 724 for the figurative mark . The opposition is based on, inter alia, United Kingdom trade mark registration No 3 230 105 for the word mark ‘BLUEBIRD’, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) 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 United Kingdom trade mark registration No 3 230 105.

a) The goods and services

The goods on which the opposition is based are, inter alia, the following:

Class 32: Beers.

The contested goods and services are the following:

Class 32: Beer.

Class 35: Retailing, wholesaling and sale via global computer networks of beers.

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 beer is synonymous with the opponent’s beers. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same applies, by and large, to wholesale and sale via global computer networks of particular goods. Therefore, the contested retailing, wholesaling and sale via global computer networks of beers are similar to a low degree to the opponent’s beers.

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 and services found to be identical or similar to a low degree are directed at the public at large displaying an average degree of attention.

c) The signs

BLUEBIRD
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 trade mark is a word mark composed of the single word ‘BLUEBIRD’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier sign is depicted in upper or lower case characters, or in a combination thereof.

The contested trade mark is a figurative mark composed of the words ‘BLUE BIRD’ in dark blue uppercase letters. The stylisation of these words is largely decorative and inherently distinctive to a low degree at most. Above the verbal element is the large stylised depiction of a bird in shades of blue.

The words ‘BLUEBIRD’ and ‘BLUE BIRD’ of the signs in conflict are likely to be associated by the relevant public with the same meaning as the English noun ‘bluebird’, namely (1) ‘any North American songbird of the genus Sialia, having a blue or partly blue plumage: subfamily Turdinae (thrushes)’ or (2) ‘any of various other birds having a blue plumage’ (information extracted from Collins Dictionary on 12/12/2018 at www.collinsdictionary.com/dictionary/english/bluebird). Furthermore, the depiction of a bird in the contested sign is likely to be associated with the same meaning, first because it has physical characteristics resembling those of a bluebird and second because this concept is reinforced by the words ‘BLUE BIRD’, which appear immediately beneath the depiction of a bird, so that consumers will more easily understand one because of the other (17/04/2008, T‑389/03, Pelikan (Representation of a pelican), EU:T:2008:114, § 91). As this concept has no descriptive, allusive or otherwise weak meaning in relation to the relevant goods and services, it is inherently distinctive to an average degree.

As follows from case-law, where a sign consists of both figurative and word elements, it does not automatically follow that the word element must always be considered to be dominant. In the case of a composite mark, the figurative element may rank equally with the word element (12/11/2015, T‑450/13, Wisent / Żubrówka Bison Brand Vodka et al., EU:T:2015:841 § 74 and the case-law cited therein). In the present case, the depiction of a bird in the contested sign, as a result of its shape, its size, its colour and its position, is easily perceptible visually and clearly helps to establish the image of the contested mark that the relevant public will retain in their minds. Consequently, the contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the earlier sign, ‘BLUEBIRD’, is entirely reproduced in the only verbal element of the contested sign, ‘BLUE BIRD’. The contested sign differs in the fact that the words ‘BLUE’ and ‘BIRD’ are written with a space between them, while in the earlier sign they are joined together. It differs also in the stylisation of its verbal elements, which, however, is distinctive to a low degree at most and, in any case, is less relevant in view of the verbal nature of the earlier sign, which may be stylised in various ways. The contested sign also differs in the large stylised depiction of a bird, which will not be overlooked by the public and which has no counterpart in the earlier sign. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the words ‘BLUEBIRD’ and ‘BLUE BIRD’, which will be pronounced in the same way, despite the space between the two verbal elements of the contested sign. The purely figurative elements of the contested sign, including the stylisation of its verbal elements, are not subject to an aural assessment. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs as a whole will evoke the same concept, that of a bluebird, they 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 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 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).

In the present case, the contested goods are identical and the contested services are similar to a low degree to the opponent’s goods. The signs are visually highly similar, and they are aurally and conceptually identical. The earlier mark has a normal degree of distinctiveness for the relevant public, which is composed of the public at large displaying an average degree of attention.

The earlier mark, ‘BLUEBIRD’, is entirely reproduced in the contested sign’s only verbal element, ‘BLUE BIRD’. The contested sign differs from the earlier sign in the fact that the words ‘BLUE’ and ‘BIRD’ are written with a space between them, while in the earlier sign they are joined together. 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). Therefore, the abovementioned difference may easily be overlooked by the relevant public, especially considering that these words will be pronounced identically and will be associated with the same meaning.

The contested sign differs slightly in the stylisation of its verbal elements which, however, is distinctive to a low degree at most and is less relevant in view of the verbal nature of the earlier sign, as explained above. Moreover, the contested sign differs in a large depiction of a bird; although this figurative element will not be overlooked by the relevant public, considering its size, position and peculiar stylisation, it does not differentiate the signs to a degree that could exclude likelihood of confusion. It should be recalled that, conceptually, this figurative element evokes the same concept as the word ‘BLUEBIRD’ of the earlier sign. Therefore, the overall impression created by the signs is that they are highly similar to each other.

It should also be noted that a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the strong overall similarity between the signs, including the aural and conceptual identity between them, offsets the fact that the contested services are similar to only a low degree to the opponent’s goods.

Moreover, 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.

Taking into account the above factors, the Opposition Division considers that there is a likelihood of confusion for the relevant public in the United Kingdom, namely the public at large displaying an average degree of attention. Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 230 105. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right United Kingdom trade mark registration No 3 230 105 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

Likewise, 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 ground of the opposition, namely Article 8(5) 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, he 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

Liliya YORDANOVA

Jakub MROZOWSKI

Gueorgui IVANOV

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.