OPPOSITION Nо B 3 061 084

 

Austin, Nichols & Co., Incorporated, 250 Park Avenue, 17th floor, 10177 New York, United States of America (opponent), represented by Eve-Marie Wilmann-Courteau, 5 Cours Paul Ricard, 75008 Paris, France (employee representative) 

 

a g a i n s t

 

Eduard Orloff, Rainstrasse 51, 8706 Meilen, Switzerland (applicant), represented by Tesla, 250, Rue Saint Jacques, 75005 Paris, France (professional representative).

On 30/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 061 084 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 894 402 is rejected in its entirety.

 

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

 

REASONS

 

On 03/08/2018, the opponent filed an opposition against all the goods of European Union trade mark application No 17 894 402 ‘ORLOFF, NO SLOGAN JUST VODKA’ (word mark), namely against all the goods in Class 33. The opposition is based on French trade mark registration No 93 450 479, ‘ ’ (word mark). 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 beers)

The contested goods are the following:

Class 33: Vodka.

The contested vodka is included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

 

 

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 considered to be average.

 

 

c) The signs

 

	ORLOFF, NO SLOGAN JUST VODKA
Earlier trade mark	Contested sign

 

The relevant territory is France.

 

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 as well as the element ‘ORLOFF’ of the contested sign have no meaning for the relevant public and they are, therefore, distinctive.

 

The elements ‘NO SLOGAN JUST VODKA’ of the contested sign are very basic English words that have corresponding words in French, namely ‘no slogan juste vodka’. These will be understood by the relevant public with the following meanings: ‘NO’ as a negative determiner, ‘SLOGAN’ makes reference to a short easily remembered phrase, especially one used to advertise an idea or a product, ‘JUST’ as ‘only’ and ‘VODKA’ as a type of alcoholic beverage. This phrase is a promotional message for a specific alcoholic beverage ORLOFF vodka. Bearing in mind that the relevant goods are alcoholic beverages, this element has a very low distinctive character, if any.

 

Visually, the signs coincide in ‘ORLOFF’. Despite the fact that the second letter ‘R’ in the earlier mark is inverted in a mirrored fashion, it is clearly recognizable as the letter ‘R’ and will be perceived as such by the relevant public. However, the signs differ in the additional phrase ‘NO SLOGAN JUST VODKA’ at the end of the contested sign which is separated by a coma from the element ‘ORLOFF’. This differing phrase has very little distinctiveness as explained above. Consequently, the initial part of the contested mark is highly similar to the earlier mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

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

 

Aurally, the pronunciation of the signs coincides in the two initial syllables ‛OR-LOF’, present identically in both signs. The pronunciation differs in the syllables ‛NO-SLO-GAN- JUST-VOD-KA’ of the contested mark, which have no counterparts in the earlier sign, in case these are pronounced. In this regard, it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. Consequently, the Opposition Division considers it is very unlikely that consumers will pronounce these very weak elements of the sign.

 

Therefore, the signs are aurally similar to a high degree, if not identical.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the contested sign. Although the contested sign has a meaning, it is not sufficient to establish any relevant conceptual difference, as the meaningful element cannot indicate the commercial origin of the goods. The attention of the relevant public will be attracted by the additional, distinctive, verbal elements, which have no meaning. Therefore, 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.

 

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.

e) 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 the signs are visually similar to an average degree and aurally similar to a high degree because the earlier mark is fully included as the first and most distinctive element of the contested sign, where it plays a clear independent role. The conceptual differences are confined to the promotional phrase in the contested sign that is considered to have a very limited distinctiveness, if any, because it has a laudatory meaning that is understood by the relevant public and that makes clear reference to the goods at issue. Therefore, it cannot influence the assessment of the similarity of the signs, as explained above. The earlier mark has a normal degree of distinctiveness. Given the type of goods, the average consumer’s degree of attention is considered average.

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 such circumstances it is very likely that the contested sign will be shortened to ‘ORLOFF’ when oral reference is made to the mark when ordering the goods, not only because of its length but also because of the laudatory meaning of the remaining parts of the contested sign.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public because the main differences between the signs are confined to hardly distinctive elements and aspects. Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 93 450 479. 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, 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

 

Begoña URIARTE VALIENTE

Claudia SCHLIE

Fernando AZCONA DELGADO

 

 

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.