OPPOSITION No B 3 074 489

Bottling Company - Gorna Bania Ltd, zh.k. Ovcha kupel 1, ul. Mesechinka No. 8, 1373 Sofia, Bulgaria (opponent), represented by Mario Christov, Complex Levski-G, bl. 7, vh.A, ap.23, 1836 Sofia, Bulgaria (professional representative)

a g a i n s t

Harboes Bryggeri A/S, Spegerborgvej 34, DK-4230, Skælskør, Denmark (applicant), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative).

On 23/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 074 489 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 976 020 namely, beers; mineral and aerated waters and other non-alcoholic beverages in Class 32. The opposition is based on, inter alia, European Union trade mark registration No 8 706 301 ‘Gorna Bania’ and is based on some of the goods and services for which it is registered, namely beers; aerated waters and other non-alcoholic drinks; drinks and fruit juices; syrups and other preparations for making beverages in Class 32. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 8 706 301.

a) The signs

Gorna Bania
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).

Part of the relevant public, such as for instance the Italian-speaking consumers, will perceive the earlier trade mark as meaningless, and therefore distinctive in relation to the relevant goods. Conversely, another part of the relevant public will give a meaning to the subject sign. For instance, the Bulgarian-speaking consumers will understand the expression ‘Gorna Bania’ as an area close to Sofia, famous for its water sources. Therefore, the distinctiveness of said elements is low as it can be perceived either as the area where the relevant goods are produced or rather that the relevant goods contains water from this area.

As far as the contested sign is concerned, the verbal element ‘GB’ will not convey a clear meaning for a substantial part of the relevant consumers, being therefore distinctive (see, by analogy, 18/01/2017, R 1347/2016-4, GB). The graphical stylization of the contested trade mark is, as a whole, rather fanciful and therefore distinctive.

Visually, the sole point of contact between the signs under comparison resides in the letters ‘G’ and ‘B’ which are the initials of the verbal elements ‘Gorna Bania’ in the earlier mark and forms the sole verbal element of the contested application.

This factor is, however, not sufficient for a finding of similarity. Indeed, since the alphabet is made up of a limited number of letters, it is inevitable that many words will share some letters, but they cannot, for that reason alone, be regarded as visually similar (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81).

In addition, the signs differ widely in their structure i.e. ten letters in the earlier trade mark and two letters in the contested sign and in the graphical elements and stylization of the applicant’s mark.

Taking into account that the average consumer normally perceives a sign as a whole without analysing its various details or comparing them side by side, it is not likely that any visual resemblance between the marks would be noted.

It follows from all the above that the overall visual impression of the signs is clearly dissimilar. Therefore, it is concluded that the signs are visually not similar.

Aurally, the sound produced respectively by the pronunciation of the letters ‘Gorna Bania’ and ‘GB’ is completely different, irrespective of the different pronunciation rules in different parts of the relevant territory.

Therefore, the mere fact that the signs contains the letters ‘G’ and ‘B’ is not sufficient for a finding of an aural similarity since the extensive pronunciation of the earlier mark do not resemble, anywhere near, that of the contested application. It must then be concluded that the signs are not aurally similar.

Conceptually, neither of the signs has a meaning for part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, part of the public will perceive only the earlier mark as meaningful whereas the other sign has no meaning. In this case, since one of the signs will not be associated with any meaning, the marks under comparison are not conceptually similar.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on the following earlier trade mark:

 European Union trade mark registration No 8 689 671 which is based on some of the goods and services for which it is registered, namely beers; aerated waters and other non-alcoholic drinks; drinks and fruit juices; syrups and other preparations for making beverages in Class 32.

The subject earlier right invoked by the opponent is also dissimilar to the contested mark. This is because it contains additional verbal and figurative elements that would imply even more visual, aural and conceptual differences that those found between the signs compared above. It follows that the above finding is valid, a fortiori, with respect to this earlier trademark and the opposition based on it must be rejected as well.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Riccardo RAPONI

Aldo BLASI

Sandra IBAÑEZ

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.