OPPOSITION No B 3 102 780

Hyben Holding A/S, Aage Bergs Vej 43, 8240 Risskov, Denmark (opponent), represented by Otello Lawfirm, Dalgasgade 25, 8., 7400 Herning, Denmark (professional representative)

a g a i n s t

Royal Estates&Buildings, Valea Cascadelor nr. 21, parter, cam. 1, sector 6, Bucuresti, Romania (applicant).

On 09/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 780 is upheld for all the contested goods.

2. European Union trade mark application No 17 939 408 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 939 408 (fig.). The opposition is based on, inter alia, Danish trade mark registration No VR 2013 00737 for the word mark ‘Dracula’. 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 Danish trade mark registration No VR 2013 00737.

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).

Alcoholic beverages (except beer) are identically contained in both lists of goods.

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 whose degree of attention is average.

c) The signs

Dracula
Earlier trade mark	Contested sign

The relevant territory is Denmark.

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 element ‘DRACULA’ present in both signs will be associated with a fictional character of the famous vampire. As it has no clear relation with the goods at issue, it is considered distinctive.

The word ‘RED’ of the contested sign will be understood as the colour per se by the relevant public as it is a basic English word. As it can describe the colour of the goods, this element is also considered non-distinctive.

The element ‘VODKA’ of the contested sign will be associated with a clear distilled alcoholic beverage. Bearing in mind that the relevant goods are alcoholic beverages, this element is non-distinctive for these goods as it merely describes their kind.

The element ‘DRACULA’ in the contested sign is the dominant element as it is the most eye-catching due to its position and size.

The figurative element of the contested sign in the form of a red label and a circle will be perceived as a purely decorative elements.

Visually, the signs coincide in the distinctive element ‘DRACULA’ which constitutes the whole earlier mark and dominates the impression of the contested sign. However, they differ in the non-distinctive elements ‘RED’ and ‘VODKA’ and the graphic representation of the contested sign especially in the stylisation of the word ‘DRACULA’ and the fact that it is depicted vertically. The signs also differ in colours as the contested sign is depicted in red, grey and white. 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).

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

Aurally, consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 75). Therefore, taking into account the much smaller size and the position of the verbal element ‘VODKA’, the contested sign is likely to be pronounced simply as ‘RED DRACULA’ or even ‘DRACULA’, as the element ‘RED’, although positioned at the top, is also of much smaller size.

Therefore, the signs are aurally highly similar or identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, on account of the common distinctive element ‘DRACULA’, and since the additional concepts of 'RED' and 'VODKA' in the contested sign are non-distinctive, the signs are conceptually at least highly similar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

The goods are identical and they target the public at large with an average level of attention.

The signs are visually similar to an average degree, aurally identical or highly similar and conceptually at least highly similar. The earlier mark has an average degree of inherent distinctiveness.

In view of the foregoing, and particularly because the similarities between the marks result from the element ‘DRACULA’, which dominates the overall impression of the contested sign and is the only element of the earlier mark, where it is also distinctive, the Opposition Division is of the opinion that the similarities between the signs cannot be outweighed by their differences, and that the relevant public would believe that the identical goods come from the same undertaking or from economically linked undertakings.

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 Danish trade mark registration No VR 2013 00737. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, namely Danish trade mark registration No VR 2013 00737 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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.

The Opposition Division

Anna ZIÓŁKOWSKA

Katarzyna ZANIECKA

Kieran HENEGHAN

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.