OPPOSITION No B 3 051 009

Nordbrand Nordhausen GmbH, Bahnhofstr. 25, 99734, Nordhausen/Harz, Germany (opponent), represented by Lucia Schwab, Rotkäppchen-Mumm Sektkellereien GmbH, Matheus-Müller-Platz 1, 65343, Eltville am Rhein, Germany (employee representative)

a g a i n s t

Super B S.L., C/ Francisco Redondo García 10, 45600 Talavera De La Reina (Toledo), Spain (applicant), represented by Balder Ip Law S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative).

On 28/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 009 is upheld for all the contested goods.

2. European Union trade mark application No 17 865 909 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 865 909 ‘BRASILLA’. The opposition is based on German trade mark registration No 302 015 058 143 . 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

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: Alcoholic beverages (except beer).

The goods are identical in both lists.

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 average.

c) The signs

	BRASILLA
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 complex figurative mark. It contains an image of a coffee cup and a word ‘Brasilia’ next to it. On the topmost part, in much smaller and hardly visible letters is a word KAFFEELIKÖR and small indications of serving sizes together with alcohol content common on labels of beverages (25% vol and 6x0.5l), all of them being descriptive of the product’s characteristics (describing the contents as coffee liqueur) and thus non-distinctive. The same applies to the banal label like square background.

The cup of coffee is clearly understood as indicating (visually) the taste of the beverage (which is separately also indicated above with the words KAFFEELIKÖR). Contrary to the arguments of the applicant, this element is of weak character therefore, considering the goods.

The word element ‘Brasilia’ is clearly recognized as reference to the country (Brazil). Since Brazil is known for production of coffee, which is the ingredient or at least a flavour of various alcoholic beverages such as coffee-liqueurs which are included in the broad category of alcoholic beverages, this term is considered weak.

The fact that one of the elements of a complex mark has only a weak distinctive character does not necessarily imply that that element cannot constitute the dominant element of that complex mark provided, for example, its position in the sign or its size may make an impression on consumers and be remembered by them (13/07/2004, T-115/02, ‘a’ in a black ellipse, EU:T:2004:234, § 20; 13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 54).

In the present case, the element ‘Brasilia’ together with the coffee cup of the earlier mark are dominant in the earlier mark, by virtue of the large size and visually eye-catching manner of representation in outstanding colours that contrast with the other elements, and also the central position that they occupy in the signs (19/09/2013, R 1951/2012-4 - ‘Colombiana la nuestra’ / ‘Más Kolombiana... y qué más’, § 23) contrary to the arguments of the applicant.

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).

The contested sign is a word mark BRASILLA. This word as such has no meaning, however, it can not be denied that it alludes to Brazil or Brasilia, the distinctiveness of which has been described above.

However, due to the earlier sign’s dominant word BRASILIA and the contested mark BRASILLA being nearly identical, their degree of distinctiveness is the same, irrespective of whether their meanings will be perceived or not by different parts of the public, and therefore have no impact on the comparison.

Visually, the signs coincide in the letter sequence BRASIL_A, considering that in the case of word marks, it is the word that is protected and not its written form. The coinciding letters are part of the dominant element of the earlier mark.

The signs differ in the sevenths letters I/L of BRASILIA/BRASILLA and in all other elements as described above. Nevertheless, the fact remains that the elements wherein the similarities reside, BRASILIA/BRASILLA, are prominently written in the middle of the earlier mark and form the only element of the contested sign. Even though the distinctiveness of these words is limited, these are the elements that will be mentally registered by the public when encountering the signs

Considering all the above, the degree of visual similarity between the signs is at least average.

Aurally, the pronunciation of the signs coincides in the letters BRASIL_A and differs in the letters I/L of the dominant word element of the earlier mark and of the contested mark. The pronunciation differs in all other elements of the earlier mark, all found non-distinctive.

Even so, the fact remains that when encountering the signs at issue the public will definitely pronounce the elements BRASILIA/BRASILLA, encountering only very minor differences, while it is likely to omit some or all of the other elements of the earlier mark which, albeit pronounceable, are clearly secondary.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the signs will be associated with concepts related to BRAZIL, notwithstanding their weak distinctiveness. The remaining elements in the earlier mark are found non-distinctive and do not influence the conceptual comparison between the signs. Therefore, the degree of conceptual similarity between the signs is deemed average.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

However, the earlier mark is considered to have at least a minimum degree of inherent distinctiveness contrary to the arguments of the applicant. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

e) Global assessment, other arguments and conclusion

The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarities of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

Moreover, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the services covered. Accordingly, a low degree of similarity between those goods may be offset by a high degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). The goods have been found identical and are directed at public at large whose degree of attention in relation to such purchases is average. The similarities and differences of the marks have been established above.

Account has also to be 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). 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). In the present case, it is considered that the potentially high degree of aural similarity between the signs is sufficient to counteract the degree of similarity found on the visual level.

It should be noted that although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Even in cases involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular of similarity between the signs and between the goods and services covered (see judgement of 13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

It is thus considered that, despite the low distinctive character of the earlier mark the similarities between the signs established above are sufficient to cause at least part of the relevant public to believe that the conflicting goods, which are identical, come from the same undertaking or economically linked undertakings. In such context, the Opposition Division considers that a likelihood of confusion between the marks in presence cannot be safely excluded.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element BRASILIA. In support of its argument the applicant refers to a few trade mark registrations in Germany and European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the list of marks filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include BRASILIA. Under these circumstances, the applicant’s claims must be set aside.

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 registration No 302 015 058 143. 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Solveiga BIEZA

Erkki Münter

Ferenc GAZDA

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.