CANCELLATION No C 40 846 (INVALIDITY) 

 

Brooklyn Craft Works, LLC, Florida 1200 West Avenue Unit 507, Miami, Florida 33139 United States of America (applicant), represented by Baylos, C/ José Lázaro Galdiano, 6, 28036 Madrid, Spain (professional representative)

 

a g a i n s t

 

Palmera Group S.A., Trust Company Complex, Ajeltake Road, Ajeltake Island, Majuro, Majuro MH 96960, Marshall Islands (EUTM proprietor), represented by Stobbs, Widenmayerstr. 34, 80538 München, Germany (professional representative).

On 16/04/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 18 003 012 is declared invalid in its entirety.
3.	The EUTM proprietor bears the costs, fixed at EUR 1080.

REASONS

 

On 21/01/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 003 012 ‘BROOKLYN IRISH’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM. The application is based on European Union registration No 10 030 559 . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that, given the coincidence in the signs of the distinctive term ‘BROOKLYN’ and that the rest of the elements are less distinctive, the signs are similar. This fact, coupled with the similarity of the goods will give raise to confusion among the relevant consumers, who are the average public with an average degree of attentiveness towards the goods. Furthermore, the earlier mark enjoys an enhanced distinctiveness through its use in Europe.

 

The EUTM proprietor argues that, due to the lack of distinctiveness of ‘BROOKLYN’, the different elements of the signs will be enough for consumers to distinguish between them, in spite of the similarity of the goods. It also requests proof of the use of the earlier mark and, in its observations in relation to it, it states that the applicant has indeed proved the use of the mark, but for less goods than those covered by the mark.

PROOF OF USE

 

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based, namely, European Union trade mark registration No 10 030 559.

 

The request has been filed in due time and is admissible given that the earlier trade mark was registered on 19/10/2011, that is, more than five years prior to the date of the application for a declaration of invalidity (21/01/2020). 

 

As mentioned above, the application for a declaration of invalidity was filed on 21/01/2020. The date of filing of the contested mark is 20/12/2018. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 21/01/2015 until 20/01/2020 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 20/12/2013 to 19/12/2018 inclusive. The two periods overlap partially.

 

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely alcoholic beverages (except beers) in Class 33.

 

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

 

On 09/06/2020, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 14/08/2020 to submit evidence of use of the earlier trade mark. 

 

Together with its notice of invalidity, on 21/01/2020 the applicant filed documents to prove the enhanced distinctiveness of its mark (enclosure 2), which will be also taken into account; such documents are:

 Website http://www.brooklyngin.com/about/ with information relating the history of the trademark, produced since 2010 by the brewer Warwick Valley, the first in New York to get a license after the Dry Law in 1900.

 Presence of the trademark in the international press, such as GC and The New York Times.

 Presence of the BROOKLYN GIN in social media, with over 17 000 followers and more than 1 000 pictures posted from 2010; pictures on Pinterest also mentioning the international award received by the New York World Wine & Spirits Competition in 2015; with over 6000 followers in Twitter and over 23 000 in Instagram.

 Samples of distribution in the European Union: Spain, France, Italy, Germany and the United Kingdom.

Within its due date to prove the use of the mark (14/08/2020), the applicant filed the following documents:

 Annex 1-A: Over 100 invoices addressed to different territories of the European Union (such as Croatia, Italy, Spain, Sweden and the United Kingdom), between 2015 and 2020. The goods are identified with denominations such as ‘BKN-GIN-750 - Brooklyn Gin 6/750 40% 102.00’, inter alia.

 Annex 1-B: A Chart summarizing the data contained in the invoices of annex 1- A.

 Annex 2: Affidavit issued by the co-founder and manager of Brooklyn Craft Works, LLC (Brooklyn), the invalidity applicant, declaring that the company Park Street ‘is the distributor and importer into the EU of the products manufactured by BROOKLYN, including, but not limited to BROOKLYN GIN, product identified with the earlier trademark’.

 Annex 3: Extracts obtained from the tool Wayback Machine from the website http://www.brooklyngin.com showing the use of the earlier trademark over the years.

 Annex 4: Further extracts from the official social media profiles (Facebook, Twitter, Instagram, etc.).

 Annex 5: Extracts from social media, showing comments and publications posted by customers (Facebook, Twitter, Instagram, etc.).

 Annex 6: Extracts from the international press and websites of European online distributors mentioning the earlier trademark and its awards.

 Annex 7: Extracts from the e-marketplace Amazon, including reviews from different consumers from Germany, Italy and the United Kingdom.

Assessment of the evidence of use

In relation to the use by a third party the applicant explains that Park Street Imports, located in Miami (United States of America), is the distributor and importer into the European Union of the products manufactured by the applicant, including, but not limited to BROOKLYN GIN, product identified with the earlier trademark. This issue is attested to by the affidavit found in Annex 2, and it must be recalled that according to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor will be deemed to constitute use by the proprietor.

The applicant has submitted, inter alia, evidence relating to the United Kingdom (UK) with a view to demonstrating use of the earlier EUTM. On 01/02/2020, the UK withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. Therefore, use in the UK prior to the end of the transition period constituted use ‘in the EU’. Consequently, the evidence relating to the UK and to a period prior to 01/01/2021 is relevant with a view to maintaining rights in the EU and will be taken into account.

The evidence of use is dated within the relevant period. It is true that it does not cover the whole of the two periods, but as these periods overlap, the evidence concerns a good part of it (2015-2020); in this regard it must be recalled that the provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52) but rather within the relevant periods of use

The documents show that the place of use is the European Union as just the invoices cover a number of Member States and the rest of them also refer to them.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. The sign seen on the bottles of the images sent by the applicant appears exactly as it was registered: . Therefore, the requirement of nature of use has been met.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, on the whole, provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The mark has been used consistently for five years in different territories, it has been publicised broadly, and the accounting documents show important sales figures.

 

In relation to the goods, the earlier mark is registered for alcoholic beverages (except beers) in Class 33. However, as the EUTM proprietor rightly observes, the evidence does not show genuine use of the trade mark for all the goods.

 

According to Article 64(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

 

According to case-law, when applying the abovementioned provision the following should be considered:

 

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories’ (14/07/2005, T-126/03, Aladin, EU:T:2005:288).

 

In the present case, the evidence proves use only for gin. These goods can be considered to form an objective subcategory of alcoholic beverages. Therefore, the Cancellation Division considers that the evidence shows genuine use of the trade mark only for alcoholic beverages, (except beers), namely gin in Class 33.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH 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 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.

The goods on which the application is based, and in relation to which genuine use has been proved, are the following: 

 

Class 33: Alcoholic beverages (except beers), namely gin.

 

The contested goods are the following: 

 

Class 33: Whiskey complying with the specifications of the protected geographical indication ‘Irish Whiskey/Uisce Beatha Eireannach/Irish whisky’.

The goods are similar. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for a wider 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 area of supermarkets, even if among them some distinction according to, for example, their respective subcategory can also be made. Furthermore, these goods may originate from the same undertakings.

 

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  similar are directed at the public at large, whose degree of attention towards them will be, on the whole, average.

 

c) The signs

 

	BROOKLYN IRISH
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, bearing in mind 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 proceedings for a declaration of invalidity against any 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 declare the contested trade mark invalid.

In the case at issue the terms contained in the signs belong to the English language and hence, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The EUTM proprietor claims that the common element, ‘BROOKLYN’, has a weak distinctive character and is associated with alcoholic products originating from the area of Brooklyn in New York. To support this claim, the proprietor filed the following documents:

 Annex A: an article from Observer dated 12/01/2015 called “New York’s First Distillery Since Prohibition Keeps the Liquor History Brewing”;

 Annex B: an article from Salt dated 30/01/2017 called “A Sip of History: The Hidden Wine Cellars Under The Brooklyn Bridge”;

 Annex C: an article from Smithsonian Magazine dated 18/11/2014 called “The Whiskey Wars That Left Brooklyn in Ruins”;

 Annex D: print outs from the site https://www.bigonion.com/tour/brooklyn-distilled/ relating to a guided tour exploring the deep impact of distilling and brewing on the history of Brooklyn, the historic liquor-making capital of New York City and 18^th century America, entitled “Brooklyn Distilled Walking Tour _ Big Onion”;

 Annex E: a picture of the back label for BROOKLYN IRISH branded Whiskey.

The articles contained in annexes A to D originate from publications in the United States of America, they do not offer any information regarding the degree to which Europeans link the term ‘BROOKLYN’ with the relevant goods and, at any rate, it seems that ‘BROOKLYN’ as a place where alcoholic beverages were produced in mass lays in a quite distant past. The proprietor contends that annex E (a short explanation that appears in the label found at the back of BROOKLYN IRISH branded Whiskey) ‘tells the story behind the brand and the influence Irish Immigrants had on the United States in particular, the development of Old Irish Town in New York and the distilling of Whiskey there by Irish Immigrants (…)’; that might be the case but this document does not support the proprietor’s claim either and, consequently, the proprietor’s contention that the term shared by the signs is weak must be dismissed.

As a clarification it must be added that with its last observations (23/12/2020) the proprietor filed further documents that were forwarded to the applicant but no date for it to comment on them was set. The Cancellation Division finds that it is unnecessary to re-open the proceedings as the documents cannot prove either the owner’s claim in relation to the lack of distinctiveness of ‘BROOKLYN’ for the goods at issue nor the contention that the term is common for brands relating to alcoholic beverages and the marks could co-exist in the market.

The documents are:

 Annex F – Details of use of the brand ‘BROOKLYN REPUBLIC VODKA’ taken from the website at http://www.brooklynrepublicvodka.com/ plus an Excel Schedule listing BROOKLYN formative marks registered in the EU and details of Carlsberg’s use of BROOKLYN for branded beer;

 Annex G – Details of relevant webpages taken from the article accessible at the link for https://www.foodrepublic.com/2015/11/17/6-excellent-distilleries-in-brooklyn-new-yorks-capital-of-small-batch-spirits/;

 Annex H – Details from Wikipedia relating to the nature of Gin and of Irish Whiskey;

 Annex I - decision of 05/03/2018, R 1453/2017-2 relating to decision of B 2 562 380 Super B vs Nordbrand.

Annex F only mentions that the product (‘vodka’) is handcrafted in Brooklyn, New York, and the excel table filed shows that there are other alcoholic beverages such as beers that also have the term ‘BROOKLYN’ in them, but in relation to the link between the word and the origin of the goods, it refers to the ‘late 1800’s’; annex G just mentions some boutique distilleries found in the borough, and Annex H does not even mention the borough.

Consequently, none of the claims of the EUTM proprietor has been proved and they must be dismissed.

The contested sign is a word mark and, as such, it lacks elements that can be considered more dominant (visually eye-catching) than others.

The earlier mark is a complex sign in which the terms ‘BROOKLYN’, the shape of the crown and ‘GIN’ are, on account of their size, the dominant elements.

Aside from ‘BROOKLYN’ all the expressions in the earlier mark are descriptive for the goods at issue: ‘HANDCRAFTED’ means ‘made using the hands rather than a machine’ (retrieved on 09/04/2021 from Cambridge Dictionary https://dictionary.cambridge.org/dictionary/english/handcrafted), ‘SMALL BATCH’ refers to a select number of barrels that are mixed together to create a desired taste, and ‘gin’ directly names the goods. As for the crown, where it appears in a trade mark context it is not particularly distinctive (24/10/2019, Case T-498/18, EU:T:2019:763, § 86) given the association the symbol has with royalty, superiority and thus prestige; furthermore, none of the rest of the figurative elements (the colour, the small stars under the terms ‘SMALL’ an ‘BATCH’ and the oval background where all the elements appear) are distinctive. Consequently, the most distinctive element of the earlier mark is ‘BROOKLYN’.

The EUTM proprietor contends that the contested trade mark ‘Brooklyn Irish’ denotes as a whole ‘the actual name given to Irish Immigrants that came to New York from Ireland and settled in Old Irish Town (now Brooklyn) in the 1800’s’; that might be the case, but the proprietor has not proved that this is a well-known fact not only in the United States of America, but also in the relevant territory. This being the situation, it is feasible to think that, even if the place it occupies in the expression is not the usual one, and the expression is not grammatically correct, ‘IRISH’ will be perceived by the public as an adjective that is qualifying the noun ‘BROOKLYN’, and hence, the latter is more distinctive. As for ‘BROOKLYN’, it will be understood by the public (at least by a very relevant part of it) as a borough in the city of New York.

Taking into account that the marks share ‘BROOKLYN’, which is one of the most dominant elements in the earlier mark and the most distinctive/relevant term in both signs, visually the mark is similar to an average degree, whereas aurally and conceptually they are similar to a high degree.

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.

 

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim 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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of some non-distinctive or weak elements in the mark as stated above in section c) of this decision.

e) 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 (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs are visually similar to an average degree and aurally and conceptually to a high degree. The degree of distinctiveness of the earlier mark is average on the whole and the public is the general one with an average degree of attentiveness towards the goods, which are similar. Considering all this, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 declare the contested trade mark invalid.

 

Therefore, the application is well founded on the basis of the applicant’s European Union registration No 10 030 559. It follows that the contested trade mark must be declared invalid for all the contested goods.

Since the cancellation application 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 earlier mark due to its extensive use as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

In its observations the EUTM proprietor refers to a number of decisions from the Opposition Division and the Boards of Appeal, and to a judgment, that it considers analogous. In the first place it must be sated that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities and that this practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Furthermore, the decisions and the judgment mentioned are indeed not analogous:

1. 20/12/2016 B2584459, INSPIRED BY ICELAND (fig.) / ICELAND et al., where the earlier trade mark was only distinctive to a minimum degree.

2. 08/08/2018 R 305/2018-5, ‘DON SIMON TRIO/TRIO’, where it is obvious that in the first mark the more distinctive element is not the common one.

3. 08/05/2014, C-591/12 P, Bimbo, EU:C:2014:305 where the Court decided that when a common element has not an independent distinctive role, likelihood of confusion cannot be found on the part of the public and that, even though it plays said independent role, it remains necessary to carry out a global assessment.

4. 05/03/2018, R 1453/2017-2 Nordgold/NORDPOL, where it was considered that the marks were sufficiently distant from each other as to not cause confusion, even if ‘Nordpol’ was to be perceived ‘North Pole’, given that such geographical mention was not related to the goods.

5. T‑385/09 ANN TAYLOR LOFT, ECR I‑0000, § 35, where the earlier mark did not include the most distinctive element of the contested sign.

Therefore, the proprietor’s claim is dismissed.

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

Carmen SÁNCHEZ PALOMARES

María Belén IBARRA DE DIEGO

Ana MUÑIZ RODRÍGUEZ

 

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.