OPPOSITION No B 3 069 660

Rives Pitman S.A., Aurora 4, 11500 Puerto de Santa María (Cádiz), Spain (opponent), represented by Rodolfo de la Torre S.L., C/ San Pablo, nº15-3º, 41001 Sevilla, Spain (professional representative)

a g a i n s t

Mike Naseband, Neusserstrasse 40, 40219 Düsseldorf, Germany (applicant).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 660 is partially upheld, namely for the following contested goods:

Class 32: Beer; shandy; beer-based cocktails; craft beers; saison beer; lagers; black beer [toasted-malt beer]; beers enriched with minerals; low alcohol beer; beer-based beverages; coffee-flavored beer; barley wine [beer]; beer and brewery products; flavored beers.

Class 33: All the goods applied for in this class except for fruit extracts, alcoholic.

2. European Union trade mark application No 17 939 020 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 filed an opposition against some of the goods and services of European Union trade mark application No 17 939 020 for the word mark ‘Bottle of Love’, namely against all the goods in Classes 32 and 33. The opposition is based on, inter alia, Spanish trade mark registration No 682 050 for the word mark ‘LOVE LICOR’. 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.

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 Spanish trade mark registration No 682 050 for the word mark ‘LOVE LICOR’, since it is the sign closest to the contested sign.

1. The goods

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

Class 33: Liqueurs.

The contested goods are the following:

Class 32: Beer; beer wort; imitation beer; shandy; beer-based cocktails; craft beers; saison beer; non-alcoholic beer; lagers; black beer [toasted-malt beer]; extracts of hops for making beer; non-alcoholic beer flavored beverages; beers enriched with minerals; low alcohol beer; beer-based beverages; coffee-flavored beer; barley wine [beer]; beer and brewery products; flavored beers; waters; watermelon juice; aerated water; quinine water; flavoured waters; still water; waters [beverages]; aerated water [soda water]; fruit flavoured waters; bottled drinking water; nutritionally fortified water; mineral enriched water [beverages]; juices; aerated juices; aloe juice beverages; aloe vera juices; mixed fruit juice; red ginseng juice beverages; squashes [non-alcoholic beverages]; colas [soft drinks]; lemonades; syrups for lemonade; syrups for making soft drinks; energy drinks containing caffeine; cola; cola drinks; fruit-based soft drinks flavored with tea; water-based beverages containing tea extracts; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages; non-alcoholic fruit juice beverages; cordials; alcohol free wine; non-alcoholic fruit extracts; cocktails, non-alcoholic; non-alcoholic fruit cocktails; non-alcoholic fruit punch; non-alcoholic grape juice beverages; non-alcoholic punch; non-alcoholic vegetable juice drinks; non-alcoholic malt drinks; fruit nectars, non-alcoholic; soft drinks; non-alcoholic honey-based beverages; aperitifs, non-alcoholic; cider, non-alcoholic; carbonated non-alcoholic drinks; non-alcoholic beverages containing vegetable juices; non-alcoholic sparkling fruit juice drinks; smoothies; essences for making non-alcoholic drinks, not in the nature of essential oils; powders used in the preparation of soft drinks; non-alcoholic fruit extracts used in the preparation of beverages; non-alcoholic cinnamon punch with dried persimmon (sujeonggwa); vitamin fortified non-alcoholic beverages; non-alcoholic soda beverages flavoured with tea; non-alcoholic flavored carbonated beverages; non-carbonated soft drinks; non-alcoholic beverages flavoured with tea; non-alcoholic cocktail bases; non-alcoholic beverages containing fruit juices; aloe vera drinks, non-alcoholic; kvass [non-alcoholic beverage]; sarsaparilla [non-alcoholic beverage]; non-alcoholic rice punch (sikhye).

Class 33: Wine; wine punch; wine-based drinks; beverages containing wine [spritzers]; low-alcoholic wine; alcoholic wines; prepared wine cocktails; acanthopanax wine (ogapiju); cooking brandy; wine-based aperitifs; cooking wine; fortified wines; wines of protected appellation of origin; black raspberry wine (bokbunjaju); wines of protected geographical indication; Japanese sweet grape wine containing extracts of ginseng and cinchona bark; mulled wines; gin; ginseng liquor; red ginseng liquor; vodka; rose wines; red wine; sparkling red wines; white wine; sparkling white wines; alcoholic carbonated beverages, except beer; pre-mixed alcoholic beverages, other than beer-based; alcoholic beverages (except beer); brandy; digesters [liqueurs and spirits]; alcoholic energy drinks; bitters; pre-mixed alcoholic beverages; alcoholic jellies; fruit extracts, alcoholic.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 32

The contested beer; shandy; beer-based cocktails; craft beers; saison beer; lagers; black beer [toasted-malt beer]; beers enriched with minerals; low alcohol beer; beer-based beverages; coffee-flavored beer; barley wine [beer]; beer and brewery products; flavored beers are all types of alcoholic beers and brewery products. Although their production processes are different from those of the opponent’s liqueurs, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings. Therefore, these goods are similar.

On the contrary, the contested beer wort; imitation beer; non-alcoholic beer; extracts of hops for making beer; non-alcoholic beer flavored beverages; waters; watermelon juice; aerated water; quinine water; flavoured waters; still water; waters [beverages]; aerated water [soda water]; fruit flavoured waters; bottled drinking water; nutritionally fortified water; mineral enriched water [beverages]; juices; aerated juices; aloe juice beverages; aloe vera juices; mixed fruit juice; red ginseng juice beverages; squashes [non-alcoholic beverages]; colas [soft drinks]; lemonades; syrups for lemonade; syrups for making soft drinks; energy drinks containing caffeine; cola; cola drinks; fruit-based soft drinks flavored with tea; water-based beverages containing tea extracts; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages; non-alcoholic fruit juice beverages; cordials; alcohol free wine; non-alcoholic fruit extracts; cocktails, non-alcoholic; non-alcoholic fruit cocktails; non-alcoholic fruit punch; non-alcoholic grape juice beverages; non-alcoholic punch; non-alcoholic vegetable juice drinks; non-alcoholic malt drinks; fruit nectars, non-alcoholic; soft drinks; non-alcoholic honey-based beverages; aperitifs, non-alcoholic; cider, non-alcoholic; carbonated non-alcoholic drinks; non-alcoholic beverages containing vegetable juices; non-alcoholic sparkling fruit juice drinks; smoothies; essences for making non-alcoholic drinks, not in the nature of essential oils; powders used in the preparation of soft drinks; non-alcoholic fruit extracts used in the preparation of beverages; non-alcoholic cinnamon punch with dried persimmon (sujeonggwa); vitamin fortified non-alcoholic beverages; non-alcoholic soda beverages flavoured with tea; non-alcoholic flavored carbonated beverages; non-carbonated soft drinks; non-alcoholic beverages flavoured with tea; non-alcoholic cocktail bases; non-alcoholic beverages containing fruit juices; aloe vera drinks, non-alcoholic; kvass [non-alcoholic beverage]; sarsaparilla [non-alcoholic beverage]; non-alcoholic rice punch (sikhye) are non-alcoholic beverages and preparations for making beverages. As such, and contrary to the opponent’s views, they are not sufficiently close to the opponent’s liqueurs to render the goods similar.

The fact that all the goods belong to the beverages industry is indeed insufficient to find any similarity. There are significant differences between them, stemming from their different nature (alcoholic versus non-alcoholic, as far as the beverages are concerned) which, contrary to the opponent’s understanding, is a relevant factor that influences also the goods’ different purposes. Therefore, taking into account the differences between the sectors of alcoholic and non-alcoholic beverages, it is unlikely that producers of alcoholic beverages, like the opponent’s liqueurs, would also be engaged in the production of these non-alcoholic beverages and essences for making beverages and vice versa. These goods are sold in different sections of supermarkets and they target different consumers. They are not complementary nor are they in competition. Consequently, these goods are dissimilar (04/10/2018, T-150/17, FLÜGEL, EU:T:2018:641, § 80–84; 18/06/2008, T‑175/06, MEZZOPANE, EU:T:2008:212, § 79–91).

Contested goods in Class 33

The contested ginseng liquor; red ginseng liquor; digesters [liqueurs and spirits] are included in, or overlap with, the opponent’s liqueurs. Therefore, they are identical.

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s liqueurs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested wine; wine punch; wine-based drinks; beverages containing wine [spritzers]; low-alcoholic wine; alcoholic wines; prepared wine cocktails; acanthopanax wine (ogapiju); cooking brandy; wine-based aperitifs; cooking wine; fortified wines; wines of protected appellation of origin; black raspberry wine (bokbunjaju); wines of protected geographical indication; Japanese sweet grape wine containing extracts of ginseng and cinchona bark; mulled wines; gin; vodka; rose wines; red wine; sparkling red wines; white wine; sparkling white wines; alcoholic carbonated beverages, except beer; pre-mixed alcoholic beverages, other than beer-based; brandy; alcoholic energy drinks; bitters; pre-mixed alcoholic beverages are different types of wines and other alcoholic drinks. As such they have several relevant factors in common with the opponent’s liqueurs. These goods have the same nature, method of use and distribution channels, targeting as well the same public. In addition, some of them (e.g. wines) can be in competition with the opponent’s goods. Therefore, they are similar.

The contested alcoholic jellies are edible beverages made of a mixture of jelly and alcoholic beverages such as vodka or rum. These goods can therefore be in competition with the opponent’s liqueurs and target the same public. Furthermore, they can be produced by the same undertakings, sharing also distribution channels. Therefore, these goods are similar.

Finally, the contested fruit extracts, alcoholic are dissimilar to the opponent’s liqueurs. The have different natures and methods of use. While these goods may be consumed in the same places and on the same occasions and may satisfy the same need (and only after mixing it), for example, enjoyment of a drink after a meal, the fact remains that they do not belong to the same family of alcoholic beverages and that the consumer perceives them as two distinct products. They are not complementary, in the sense of one being essential or important for the use of the other, nor are they in competition. These goods are not normally displayed in the same shelves in the areas of supermarkets and other outlets selling drinks. Their relevant public and producers are also usually different.

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 or similar are directed at the public at large. The degree of attention is average.

3. The signs and the distinctiveness of the earlier mark

LOVE LICOR	Bottle of Love
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both signs are word marks. Therefore for the purposes of the comparison it is irrelevant whether they are written in upper- or lower-case letters, or in a combination thereof, since it is the word as such that is protected and not its written form.

The coinciding element ‘LOVE’ is a very basic and widely spread English word, which will be understood in the relevant territory referring to ‘a very strong feeling of affection’ or even to the verb ‘to (very much) like’ (see Collins English Dictionary at www.collinsdictionary.com/dictionary/english/love). Since it is not descriptive, allusive or otherwise weak for the relevant goods in Classes 32 and 33, it is distinctive.

The second element ‘LICOR’ of the earlier mark is, on the contrary, descriptive of the nature of the goods, and therefore, non-distinctive.

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. Taking into account the previous analysis, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark.

The rest of the contested sign’s elements, that is ‘BOTTLE OF’ are English words too. In relation to the goods at issue, ‘BOTTLE’ would be descriptive as the opponent contends, only if it were to be understood by the relevant public. However, given that this word cannot be deemed as a basic English word and that the Spanish equivalent ‘botella’ is not that close, the Opposition Division considers it unlikely that the majority of the Spanish public will grasp its meaning, being therefore distinctive. The English preposition ‘of’ will also be meaningless for the relevant public and it will, therefore, be distinctive as well. That said, the structure of the contested sign suggests an expression of English origin in relation to the familiar word ‘LOVE’, which means that the attention of the public will focus on the part of the sign that is also distinctive and meaningful to them, ‘LOVE’.

Visually and aurally, the signs coincide in the element ‘LOVE’ and its sound, which is the only distinctive element in the earlier mark. They differ in the non-distinctive element ‘LICOR’ of the earlier mark (which due to its descriptive nature it is likely not to be pronounced) and the contested sign’s distinctive elements ‘Bottle of’ and their respective sounds.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the contested sign as a whole does not have any clear meaning for the public in the relevant territory, the distinctive element ‘LOVE’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, 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 (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods are partly identical or similar and partly dissimilar to the goods on which the opposition is based. Those goods found identical or similar target the general public, whose degree of attention is average. 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).

The earlier mark is deemed to have an average degree of distinctiveness. The signs are visually, aurally and conceptually similar to an average degree, on account of the fact that they coincide in the only distinctive element ‘LOVE’ of the earlier mark, which also plays an independent distinctive role in the contested sign.

Therefore, in the present case, it is considered that the commonalities between the signs, for the contested goods considered identical or similar to those of the opponent, are enough to outweigh the dissimilarities between the signs, and may induce consumers to believe that the conflicting goods 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 on the part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 682 050.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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 Spanish trade mark registration No 938 317 for the figurative mark .

This trade mark covers the same scope of goods. Therefore the outcome cannot be different with respect to goods for which the opposition has already been rejected. Consequently, no likelihood of confusion exists with respect to those 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. 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. Therefore, each party has to bear its own costs.

The Opposition Division

Saida CRABBE

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

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.