OPPOSITION No B 3 054 547

Jose Antonio Rodríguez Fernández, c/ Jara núm. 23, 41410 Carmona, Spain (opponent), represented by Casas Asin, S.L., Av. San Francisco Javier, 9, Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018 Sevilla, Spain (professional representative)

a g a i n s t

Benergia Deutschland GmbH, Am Borsigturm 64, 13507 Berlin, Germany (applicant), represented by Till Claussen, Cantianstraße 23, 10437 Berlin, Germany (professional representative).

On 22/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 547 is partially upheld, namely for the following contested goods:

Class 32: Beer and brewery products.

2. European Union trade mark application No 17 889 402 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent originally filed an opposition against some of the goods and services of European Union trade mark application No 17 889 402 for the word mark ‘Bevemont’, namely against all the goods in Classes 32 and 33. The opposition is based on Spanish trade mark registration No 3 558 411 and European Union trade mark registration No 14 272 975, both for the figurative mark . 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 European Union trade mark registration No 14 272 975.

1. The goods and services

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

Class 25: Clothing; footwear; headgear.

Class 33: Alcoholic beverages (except beer).

Class 35: Wholesale services in relation to alcoholic beverages (except beer); retail services in relation to alcoholic beverages (except beer); wholesale services in relation to clothing; retail services in relation to headgear; wholesale services in relation to headgear; retail services in relation to footwear.

Pursuant to a limitation filed by the applicant deleting the goods in Class 33 from the list, the contested goods are the following:

Class 32: Beer and brewery products; soft drinks; preparations for making beverages.

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.

The contested beer and brewery products are similar to the opponent’s alcoholic beverages (except beer) as they have the same nature. They usually coincide in producer, relevant public and distribution channels.

The contested soft drinks; preparations for making beverages refer to non-alcoholic drinks and preparations. Taking into account the particular differences between the sectors of alcoholic and non-alcoholic beverages, it is unlikely that producers of alcoholic beverages would also be engaged in the production of non-alcoholic drinks or essences for making non-alcoholic beverages and vice versa. These products are sold in different sections of supermarkets and they target different consumers. Therefore, they are dissimilar in relation to the opponent’s goods in Class 33. These goods are also dissimilar in relation to all the opponent’s remaining goods and services since they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition.

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 similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	Bevemont
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.

The sign’s initial four letters ‘BERE-’ and ‘BEVE-’ might be perceived by the Italian-speaking part of the public with the meaning of ‘drink’. Since this meaning may affect the distinctiveness of the signs in relation to the relevant goods, the Opposition Division finds it appropriate to focus the comparison of the marks on the part of the public for which the signs do not convey any specific meaning, such as the Spanish-speaking part of the public, where the likelihood of confusion can be higher.

The sign’s verbal element ‘BEREMOT’ and ‘BEVEMONT’, respectively, have no meaning for the relevant public, therefore, they are distinctive.

The line underlining the element ‘BEREMOT’ in the earlier mark is of purely decorative nature and it is, therefore, non-distinctive. Conversely, the stylised depiction of a hippopotamus (hippo) is distinctive since its meaning is not directly related to the relevant goods in a clear way that could impair its distinctiveness.

Contrary to the opponent’s opinion, the earlier mark has no element that could be considered clearly more dominant than other elements. However, it must be recalled that 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).

Visually, the signs coincide in the sequence of letters ‘BE*EMO*T’. However, they differ in their respective third letters ‘R’ in the earlier mark and ‘V’ in the contested sign. The signs also differ in the contested sign’s seventh letter ‘N’ and in the figurative element of the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BE*EMO*T’. However, they differ in the sound of their respective third letters ‘R’ and ‘V’ and in the contested sign’s seventh letter ‘N’.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element consisting of a stylised hippo of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition 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).

The opponent submitted the following evidence:

• Three printouts displaying undated advertisement samples, including a screenshot from the opponent’s website, and three photos displaying the Cyrillic transliteration of the earlier sign’s verbal element ‘BEREMOT’, in relation to vodka. In particular, the signs shown are the following:

The few references to the earlier sign’s verbal element ‘BEREMOT’ are found in the informative text that accompanies the advertisement samples and the indication of the opponent’s website, www.beremot.com.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Most of the evidence does not refer to the opponent’s earlier trade mark for which reputation has been claimed, but to the Cyrillic transliteration of its verbal element ‘BEREMOT’. In addition, a comprehensive reading of the evidence submitted does not provide any clear and unambiguous data concerning, inter alia, the market share held by the mark; how intensive the use has been; how geographically widespread the mark is; and how long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the services as originating from the opponent; etc.

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

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 the present case, the goods and services have been found partly similar and partly dissimilar. They target the general public who will pay an average degree of attention.

The signs have been found visually similar to an average degree, aurally similar to an above average degree, while conceptually not similar. In essence, they coincide in the sequence of letters ‘BE*EMO*T’. In this regard, the differing letters of the signs have a limited differentiating impact, as they are somewhat hidden within the sequence of coinciding letters. Indeed, these differences occur in the middle of long words (i.e. seven v eight letters). Moreover, the conceptual difference between the signs is determined by a figurative element of the earlier mark which, as outlined above, is less relevant than its verbal component.

Furthermore, it should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the above average degree of phonetic similarity between the signs is particularly relevant in the present case (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Therefore, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to similar goods are likely to think that they come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the public for which the word elements of the signs do not convey any specific meaning, such as the Spanish-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 partly well founded on the basis of the opponent’s European Union trade mark registration No 14 272 975.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the Spanish trade mark registration No 3 558 411 for the figurative mark . Since this mark is identical to the one which has been compared and covers a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks on which the opposition is based has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

In particular, the submitted evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Aldo BLASI

Marianna KONDÁS

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.