OPPOSITION No B 3 054 617

Pernod Ricard Italia S.P.A., Viale Monza, 265, 20126 Milano, Italy (opponent), represented by Eve-Marie Wilmann-Courteau, 12 Place des Etats-Unis, 75016 Paris, France (professional representative)

a g a i n s t

Brulie B.V., Carnegieplein 5, 2517 KJ 's-Gravenhage, Netherlands (applicant), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, Netherlands (professional representative).

On 25/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 617 is partly upheld, namely for all contested goods in Class 32 (in its entirety) and for the services procurement services for others (purchasing goods and services for other businesses) relating to the (online) purchase and sale of beverages and preparations for making beverages in Class 35.

2. European Union trade mark application No 17 782 509 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the - remaining - goods of European Union trade mark application No 17 782 509 (word mark:
‘BOREO’), namely against all the goods and services in Classes 32 and 35 (after applicant´s limitation in its letter of 28/01/2019). The opposition is based on Italian trade mark registration No 1 625 737 (word mark: ‘BOERO’). 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 and services

The goods in Class 32 on which the opposition is based are the following:

Non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods and services in Classes 32 and 35 are the following:

Class 32: Mineral and aerated waters and other non-alcoholic beverages and fruit juices; Syrups and other preparations for making beverages.

Class 35: Advertising and business matters; procurement services for others (purchasing goods and services for other businesses) relating to the (online) purchase and sale of beverages and preparations for making beverages; arranging of commercial transactions, for others, via online shops.

Contested goods

Non-alcoholic beverages; fruit juices; other preparations for making beverages are identically contained in both lists of goods (including synonyms).

The contested mineral and aerated waters are included in the broad category of the opponent’s non-alcoholic drinks. Therefore, they are identical.

The contested syrups are included in the broad category of the opponent’s other preparations for making beverages. Therefore, they are identical.

Contested services

The contested procurement services for others (purchasing goods and services for other businesses) relating to the (online) purchase and sale of beverages and preparations for making beverages 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. Therefore, these contested services are similar to a low degree to the opponent’s goods.

The remaining contested advertising and business matters; arranging of commercial transactions, for others, via online shops have different natures and purposes from the opponent’s goods. Furthermore, these contested services are neither complementary to nor in competition with the opponent’s goods. Their distribution channels and methods of use are also different. Consumers would not assume that these goods and services come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

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 and the services found to be similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of average is between average and low, because the goods are cheap goods for daily consumption.

c) The signs

BOERO	BOREO
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

As both signs are word marks, they are protected in all different typefaces. They have no meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs are composed of the same five letters. The only difference between these words is the inversion of the letters ‘ER’ in the contested sign (RE) in its middle part. The beginning and ending of the marks (BO-/-O) as well as the vowel structure (o-e-o) are identical. Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are identical. The contested services are partly similar to a low degree and partly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those services.

Taking into account the high degree of visual and aural similarity, the neutral outcome of conceptual similarity, the average degree of distinctiveness of the earlier trade mark, the not more than average degree of attention of the public and the identity and similarity of the goods and services, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This also applies even more so for the public with a low degree of attention. This also applies for the services, which are only similar to a low degree because of the high degree of visual and aural similarity.

The applicant has not filed any observations. Therefore, its arguments cannot be examined.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Therefore, the opposition is partly well founded under Article 8(1)(b) 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Swetlana BRAUN

Peter QUAY

Gonzalo BILBAO TEJADA

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.