OPPOSITION No B 3 077 202

Pernod Ricard Italia S.p.A., Viale Monza, 265, 20126 Milano, Italy (opponent), represented by Eve-Marie Wilmann-Courteau, 12 Place des Etats-Unis, 75016 Paris, France (employee representative)

a g a i n s t

Bolero Holding GmbH, Clemens-Schultz-Straße 3, 20359 Hamburg, Germany (applicant), represented by 24IP Law Group Sonnenberg Fortmann, Herzogspitalstr. 10 a, 80331 München, Germany (professional representative).

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

DECISION:

1. Opposition No B 3 077 202 is partially upheld, namely for the following contested goods:

Class 32: Beer; Shandy; Beer-based beverages; Non-alcoholic beer flavored beverages; Beer and brewery products.

2. European Union trade mark application No 17 978 505 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 17 978 505 for the word mark ‘Bolero’, namely against all the goods in Classes 32 and 33. The opposition is based on Italian trade mark registration No 1 625 737 for the word mark ‘BOERO’. 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 32: Non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 32: Beer; Shandy; Beer-based beverages; Non-alcoholic beer flavored beverages; Beer and brewery products.

Class 33: Alcoholic beverages (except beer); pre-mixed alcoholic beverages; spirits and liquors; cocktails; gin; cachaca; rum; liqueurs; brandy; whisky; vodka; spirits [beverages]; alcoholic punches; alcopops; alcoholic cocktail mixes; alcoholic cocktails containing milk; alcoholic cocktails in the form of chilled gelatins; prepared alcoholic cocktails.

Contested goods in Class 32

The contested non-alcoholic beer flavored beverages fall into the opponent’s broader category of non-alcoholic drinks. They are, therefore, identical.

The contested beer; shandy; beer-based beverages; beer and brewery products are highly similar to non-alcoholic drinks as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

Contested goods in Class 33

The contested goods in Class 33 mainly include alcoholised beverages, spirits and liqueurs whereas the opponent’s goods in Class 32 protect non-alcoholic drinks. The fact that all these 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. Taking into account the differences between the sectors of alcoholic and non-alcoholic beverages, it is unlikely that producers of alcoholic beverages, like the contested liqueurs, would also be engaged in the production of the opponent’s non-alcoholic drinks and preparations 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, FLOGEL, EU:T:2018:641, § 80-84; 18/06/2008, T-175/06, MEZZOPANE, EU:T:2008:212, § 79-91).

The Opposition Division acknowledges the information provided by the opponent through Annex 3 showing that ‘BOERO’ products are syrups aimed to be used for making cocktails. Said argument, however, cannot be received by the Opposition Division. In fact, according to settled case-law, although a very large number of alcoholic and non-alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as premixed alcoholic drinks, to consider that those goods should, for that reason alone, be described as similar, when they are not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers, would put a large number of goods which can be described as ‘drinks’ into one and the same category for the purposes of the application of Article 8(1) EUTMR. Thus, it cannot be considered that alcoholic drinks and non-alcoholic drinks are similar merely because they can be mixed, consumed or marketed together, given that the nature, intended purpose and use of those goods differ, based on the presence of, or absence of, alcohol in their composition. Furthermore, it must be held that the undertakings which market alcoholic drinks premixed with a non-alcoholic ingredient do not sell that ingredient separately and under the same or a similar mark as the premixed alcoholic drink at issue (04/10/2018, T-150/17, Flugel, EU:T:2018:641, § 80-81).

As for the cases referred to by the opponent in order to support a similarity between the conflicting goods, they cannot be applied to the present proceedings. Indeed, in the case mentioned by the opponent (decision of 20/10/2018, in appeal proceedings R 885/2018‑2 and judgment of 05/10/2011, T‑421/10, Rosalia de Castro, EU:T:2011:565) the goods compared were beers in Class 32 against liqueurs in Class 33. In the present proceedings, however, the opponent based the opposition on part of the goods protected under the earlier trade mark, namely on part of the goods designated in Class 32: non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. Therefore, the goods in Class 32 on which the opponent based the opposition do not include beers.

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 or highly similar are directed at the public at large that will display an average degree of attention.

c) The signs

BOERO	Bolero
Earlier trade mark	Contested sign

The relevant territory is Italy.

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. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are depicted in upper or lower case letters, or in a combination thereof.

The verbal element ‘BOERO’ of the earlier mark lacks any meaning and is, therefore, distinctive to an average degree.

Although, it cannot be completely ruled out that part of the public associates ‘BOLERO’ with a Spanish typical dance or with the Maurice Ravel’s orchestral piece, for the vast majority of the relevant public ‘BOLERO’ is meaningless and therefore distinctive to an average degree.

Visually and aurally, the signs coincide in the sequence of letters (and their pronunciation) ‘BO*ERO’ present identically in both marks and constituting the entire earlier mark’s verbal element. However, they differ in the third letter and sound ‘L’ of the contested mark with no counterpart in the earlier mark.

Taking into account that the signs only differ in a letter placed in the middle of the contested sign (where it is less noticeable than the beginning of the signs), it may be concluded that the signs are visually and aurally similar to a high degree.

Conceptually, for the part of the public for which neither of the signs has a meaning, a conceptual comparison is not possible, and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the public in the relevant territory that will perceive the meaning of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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

In the present case, the goods have been found to be partly identical, partly highly similar and partly dissimilar and they target the public at large that will display an average degree of attention when purchasing them.

The signs are visually and aurally similar to a high degree while conceptually, the comparison remains either neutral or the signs are not similar, depending on the perception of the term ‘BOLERO’ by the relevant public.

The earlier mark enjoys an average degree of distinctive character.

The visual and aural similarities are so overwhelming that the risk of confusion cannot be safely excluded, especially if we take into account 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration No 1 625 737.

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.

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. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Vít MAHELKA

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.