OPPOSITION No B 3 052 108

Lütticke & Tschrischnitz Gastronomie-Getränke GmbH, Am Fuchsberg 1, 41468 Neuss, Germany (opponent), represented by Schmitt Teworte-Vey Simon & Schumacher Partnerschaft von Rechtsanwälten mbB, Im Klapperhof 3-5, 50670 Köln, Germany (professional representative)

a g a i n s t

S.C. Intermark S.R.L., Lucian Blaga street, nr. 8, 415600 Stei, Romania (applicant), represented by Răzvan Dincă, str. Popa Tatu, nr. 49, 1^st District, 010803 București, Romania (professional representative).

On 07/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 108 is upheld for all the contested goods.

2. European Union trade mark application No 17 765 108 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 17 765 108, , namely against all the goods in Class 32. The opposition is based on German trade mark registration No 39 758 398, . 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.

1. The goods

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

Class 32: Beers.

The contested goods are the following:

Class 32: Beer.

Beer is identically contained in both lists of goods.

2. 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.

3. The signs

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 mark is a figurative mark consisting of a slightly stylised verbal element, ‘Bürger’.

The contested sign contains two verbal elements, ‘SIEBENBURGEN’ and ‘Bürger’. The latter is depicted in white and centred on a red banner with a depiction of a hop plant underneath. Above this, the verbal element ‘SIEBENBURGEN’ is written in upper-case letters and placed on a golden banner. At the top of the sign is a red crest with black and gold borders containing the depiction of a small castle.

The coinciding element, ‘Bürger’, means ‘citizen’ in German (Information extracted from Pons online dictionary on 18/07/2019, at https://en.pons.com/translate?q=B%C3%BCrger&l=deen&in=ac_de&lf=de&qnac=b%C3%BCrger). The term does not describe any characteristics of the relevant goods. Therefore, it is considered to be of average distinctiveness.

The verbal element ‘SIEBENBURGEN’ will be associated with Transylvania (as ‘Siebenbürgen’ means ‘Transylvania’ in German). As it can describe the geographic origin of the goods, this term is considered to have a low, if any, degree of distinctiveness.

The figurative stylisation of the contested sign is purely decorative and therefore, at most, weakly distinctive. The hop plant and castle do not add much to the sign in terms of distinctiveness, as the former merely alludes to the goods and the latter is a symbol commonly used on beer labels and solely creates an allusion to the opponent’s long tradition of brewing.

The applicant claimed that the dominant elements of the contested sign are the figurative element of the castle contained in the crest, and the verbal element ‘SIEBENBURGEN’, because they are placed at the top of the sign. However, the Opposition Division finds that as the element ‘Bürger’ in the contested sign is the only element depicted in a visible, light colour (white), and as it is centred and much bigger in size than the remaining elements, it must be considered the dominant, most eye-catching element.

Visually, the signs coincide in ‘Bürger’, forming the entire verbal element of the earlier mark and fully included in the contested mark as its dominant element. They differ in the additional first element ‘Siebenburgen’ of the contested sign (which is distinctive to a low degree) and the stylisations of both marks.

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

Aurally, the pronunciation of the signs coincides in the syllables ‛BÜR-GER’, present identically in both signs and forming the entire earlier mark and the dominant element of the contested sign. The pronunciation differs in the word ‘SIEBENBURGEN’ in the contested mark, which, however, is considered to be at most distinctive to a low degree.

Therefore, the signs are aurally similar to a higher than average degree.

Furthermore, complex marks are usually abbreviated to something easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75). Therefore, it is likely that at least part of the public will pronounce only the element ‘BÜRGER’ in the contested mark. This is because ‘SIEBENBURGEN’ is depicted in a much smaller font and attracts much less attention than the dominant element. In this case, the signs will be aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both marks refer to a citizen in the relevant language, and as the contested sign contains additional concepts that are distinctive to a low degree (i.e. the ones related to ‘SIEBENBURGEN’, the castle and the hop plant, as described above), 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.

4. 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.

5. 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 goods are identical and target the general public. The degree of attention is average and the distinctiveness of the earlier mark must be seen as normal.

The signs are visually similar to an at least average degree, aurally similar to a higher than average degree (or even identical for a part of the public) and conceptually highly similar. This is because they coincide in the verbal element ‘Bürger’, which is the entire earlier mark and the dominant element of the contested sign.

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).

Moreover, it should be borne in mind that the relevant 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 signs are more similar aurally than visually, the degree of aural similarity must be kept in mind in this overall assessment — particularly for the part of the public that will pronounce only the element ‘BÜRGER’ in the contested sign, and for whom the signs are aurally identical.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark application No 39 758 398. It follows that the contested trade mark must be rejected for all the contested goods.

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

Marta Maria CHYLIŃSKA

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.