OPPOSITION Nо B 3 073 258

 

Vias institute, coöperatieve vennootschap met beperkte aansprakelijkheid met een sociaal oogmerk, Haachtsesteenweg 1405, 1130 Brussel, Belgium and Vzw Belgian Brewers - Belgische Brouwers - Brasseurs Belges Asbl, Grote Markt 10, 1000 Brussel, Belgium (opponents), represented by BAP IP BV - Brantsandpatents, Charles de Kerchovelaan 17, 9000 Gent, Belgium (professional representative) 

 

a g a i n s t

 

Land Baden-Württemberg, vertreten durch Staatliches Weinbauinstitut Freiburg, Merzhauser Str. 119, 79100 Freiburg, Germany (applicant), represented by Kleiner Rechtsanwälte PartG mbB, Alexanderstr. 3, 70184 Stuttgart, Germany (professional representative).

On 20/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 073 258 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 948 522 is rejected in its entirety.

 

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

 

REASONS

 

The opponents filed an opposition against all the goods of European Union trade mark application No 17 948 522 ‘Bobbele’ (word mark). The opposition is based on European Union trade mark (EUTM) registration No 13 010 764, ‘BOB’ (word mark). The opposition was initially also based on Benelux trade mark registration No 616 534 ‘BOB’ (word mark), but in its observations of 11/12/2019 the opponents withdrew it from the opposition. The opponents invoked Article 8(1)(b) and 8(5) EUTMR.

 

PROOF OF USE

 

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponents must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponents cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

The opposition was originally based also on an earlier Benelux trade mark registration and the applicant requested the opponents to prove use only of this trade mark. Since the opponents withdrew this trade mark registration as a basis of the opposition, they were not under any obligation to provide proof of use.

Therefore, the opposition will continue on the basis of the other trade mark registration on which the opposition was originally (and still is) based, namely EUTM registration No 13 010 764, which is not subject of proof of use request.

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, inter alia, the following:

 

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

 

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers), in particular wine, sparkling wine, alcoholic mixed beverages; alcoholic beverages of fruit. 

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

 

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

Contested goods in Class 32

Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages are identically contained in both lists of goods.

Contested goods in Class 33

Alcoholic beverages (except beers), in particular wine, sparkling wine, alcoholic mixed beverages are identically contained in both lists of goods (considering what is the interpretation of the term ‘in particular’, above-detailed).

The contested alcoholic beverages of fruit are included in the broad category of the opponents’ 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 and the distinctiveness of the earlier mark

  

BOB	Bobbele
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.

 

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public for whom the coinciding part ‘BOB’ has a certain meaning.

The earlier mark is a word mark, ‘BOB’, which will most likely be perceived by the relevant public as a given male name that is relatively well-known in the English-speaking territories, in particular in the United Kingdom (information extracted from Forebears on 18/11/2020 at https://forebears.io/forenames/bob). In addition, as argued by the opponents, this perception may be increased by the fact that there were many famous people with this name, for example ‘Bob Marley’ or ‘Bob Dylan’.

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 opponents, the earlier mark has been extensively used and enjoys an enhanced scope of protection. The applicant claimed that the evidence submitted by the opponents to prove this claim was not submitted within the deadline provided by the Office. However, the issue of whether or not the evidence submitted by the opponents is acceptable and whether the Office should exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the evidence submitted on 11/12/2019 (after the relevant substantiation period) can remain open, because, for reasons of procedural economy, this evidence does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering that the earlier trade mark as a whole has no particular meaning for any of the goods in question from the perspective of the public in the relevant territory, its distinctiveness must be seen as normal.

The contested sign is also a word mark, ‘Bobbele’, which as a whole has no meaning; however, it cannot be excluded that a part of the relevant public will single out the word ‘Bob’ given that it is easily identifiable at the beginning of that sign, which will then have the same meaning as the earlier mark. While the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he/she will nevertheless, when perceiving a verbal sign, break it down into elements which, for him/her, suggest a concrete meaning or which resemble words known to him/her (10/02/2015, T-85/14, DINKOOL, EU:T:2015:82, § 46) and that even if only one of the elements making up that mark is familiar to him/her (02/06/2020, R 2019/2019-2, sandriver (fig.) / Sand et al., § 21; 22/05/2012, T-585/10, Penteo, EU:T:2012:251, § 72). Therefore, and considering that it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on the non-negligible part of the English-speaking public in the relevant territory that will single out ‘Bob’ in the contested sign and perceive its meaning, as mentioned above. In contrast, the component ‘bele’ of the contested sign will most likely be perceived as a meaningless and distinctive verbal element.

 

Visually and aurally, as the applicant points out, the verbal element of the earlier sign is made up of three letters, whereas the sign applied for is made up of seven. However, the word element of the signs at issue share their first letters (and sound), namely the verbal element ‘Bob’, while the contested sign differs in its additional letters ‘bele’ (and their sound) which have no counterpart in the earlier mark.

Importantly, the earlier sign ‘BOB’ is entirely reproduced in the later sign ‘Bobbele’. According to settled case-law, the fact that one mark is entirely incorporated in the other mark establishes a certain degree of similarity between them, both visual and aural (08/09/2010, T-152/08, Scorpionexo, EU:T:2010:357, § 66; 08/09/2010, T-369/09, Porto Alegre, EU:T:2010:362, § 26; 20/09/2011, T-1/09, Meta, EU:T:2011:495; 28/09/2011, T-356/10, Victory Red, EU:T:2011:543, § 26; 23/05/2007, T-342/05, Cor, EU:T:2007:152; 10/11/2011, T-313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011, T-434/10, Alpine Pro Sportswear Equipment, EU:T:2011:663, § 55; 26/01/2006, T-317/03, Variant, EU:T:2006:27, § 47).

Account must be taken of the fact that the word/component ‘BOB’ is the first part of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from top to bottom and 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. In this considerations, a role is also played by the fact that the verbal element ‘bele’, which consists of a sequence of four letters, is not much longer than the word ‘Bob’, which consists of a sequence of three letters (02/06/2020, R 2019/2019-2, sandriver (fig.) / Sand et al., § 23).

Therefore, the signs are visually similar to at least a low degree and, considering that the doubled letter ‘B’ in the middle would most likely not be very ‘audible’ from the aural perspective, aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs will be perceived as referring to the male name ‘Bob’, the signs are conceptually similar to at least 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.

 

 

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).

In the present case, the goods are identical and target the general public with an average degree of attentiveness.

The earlier mark enjoys a normal degree of distinctiveness.

The signs are visually similar to at least a low degree, and aurally and conceptually similar to at least an average degree. This is due to the fact that the earlier mark ‘BOB’ is entirely reproduced at the beginning of the contested sign where the customer pays more attention, to which the verbal element ‘bele’ has been added.

In cases where the goods are identical, such as in the present case, the conflicting signs must maintain a sufficient distance from each other (15/01/2020, R 246/2019‑2, Almea (fig.) / Mea et al., § 45). The differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them. 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).

In particular, the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs, which is at least average in the present case, is particularly relevant (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48).

 

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognize wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue.

These considerations come into play in the finding of likelihood of confusion given that the relevant public that will order identical goods orally in noisy establishments may pay much less attention to (or even completely not hear) the ending, ‘bele’, and focus mainly (or solely) on the contested sign’s beginning ‘Bob’, which has an identical meaning as the earlier mark. This fact will obviously contribute to reducing the impact of the differences between the contested sign and the earlier sign in the minds of the relevant consumers, who must trust in their imperfect recollection of the signs.

 

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In particular, the cited 05/04/2006, R 594/2004-4, FADOWN / Fa case dealt with dissimilar goods, which is the opposite of the present case, where the goods are identical. Moreover, the sign ‘FA’ consisted only in two letters, and the additional component ‘DOWN’ was double the length of it. It is also not comparable to the present case, in which the additional component ‘BELE’ has only one letter more than the common component ‘BOB’. In contrast, there are numerous Court cases in which similarity was confirmed where the relatively short earlier mark was entirely incorporated at the beginning of the longer contested sign, for example in 13/05/2016, T-62/15, MITOCHRON / mito (fig.) et al., EU:T:2016:304, § 33, where the Court confirmed visual similarity between the earlier figurative mark and the contested sign ‘MITOCHRON’. It follows that each case must be assessed on its own merits.

  

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public for whom the coinciding part ‘BOB’ has the meaning explained above. 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 well founded on the basis of the opponents’ EUTM registration No 13 010 764. It follows that the contested trade mark must be rejected for all the contested goods.

 

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponents. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. For the same reason, it is not necessary to assess whether or not the evidence submitted by the opponents to prove this claim is acceptable and whether the Office should exercise the discretion conferred on it by Article 95(2) EUTMR.

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. The applicant argued that the costs for the partial withdrawal of the opposition must be borne by the opponents. However, since the opposition could proceed and was fully successful on the basis of the European Union trade mark registration No 616 534, the applicant is considered the losing party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponents 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 opponents 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

 

 

Francesca DRAGOSTIN

Valeria ANCHINI

Jakub MROZOWSKI

 

 

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.