OPPOSITION No B 3 077 739

James McAteer, 2 Beechlodge Park Warrenpoint, BT343NA, Newry, Northern Ireland (opponent)

a g a i n s t

Glens of Antrim Potatoes Limited, 118 Middlepark Road, Cushendall, Ballymena BT44 0SH, United Kingdom (applicant), represented by Forde Campbell LLC, 1-3 Lombard Street, Belfast BT1 1RB, United Kingdom (professional representative).

On 28/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 739 is partially upheld, namely for the following contested goods:

Class 33: Spirits; spirits and liquors; spirits [beverages]; whiskey [whisky]; gin; vodka; schnapps; alcoholic beverages, except beer; cider.

2. European Union trade mark application No 18 015 201 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 015 201 for the word mark ‘shindigs’. The opposition is based on European Union trade mark registration No 13 757 851 for the word mark ‘SHINDIG’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

The opponent requested to keep the observations and evidence submitted on 16/10/2019 and 01/05/2020 confidential vis-à-vis third parties by ticking the ‘confidential tick-box’ when using the electronic communication platform, yet the observations contain no explanation nor indication of any special interest nor any attempt to justify the confidential nature of the submission. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. Therefore, since the Office is not able to discern the reasons why this request might be justified, it does not consider these submissions confidential.

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 and services

The goods and services on which the opposition is based are the following:

Class 16: Business cards; notebooks; writing pads; memo pads; pens, pencils; pen and pencil holders or cases; drawing rulers; document files (stationery); printed certificates and diplomas; instructional and teaching materials (except apparatus).

Class 18: Bags; backpacks; rucksacks; sports bags; shopping bags; tote bags; beach bags; handbags; travel bags; leather bags; luggage; cases; belt bags; hip bags; wallets; purses; umbrellas; beach umbrellas; parasols; leather shoulder belts; leather; imitations of leather.

Class 21: Household or kitchen utensils and containers; glassware, porcelain and earthenware not included in other classes; ornamental glass; crystal (glassware); drinking glasses; beverage glassware; glasses, drinking vessels and barware; drinks containers; containers for beverages; mugs; cups; cup holders; beverage coolers (containers); portable beverage coolers.

Class 25: Clothing; footwear; headgear; leisure clothing; shirts; T-shirts; polo shirts; sweaters; jerseys; knitwear; pullovers; sweatshirts; hooded sweatshirts; vests; trousers; pants; shorts; articles of underclothing; hosiery; sleepwear; swimwear; tracksuits; sportswear; sports clothing; sports shirts; sports vests; sports jerseys; sports footwear; coats; jackets; rainwear; ponchos; outerclothing; headwear; hats; caps; sun hats; baseball caps; golf caps; sports caps; gloves; belts (clothing); ties; scarves; shawls; bandanas; headbands; wristbands; socks; sports socks; shoes; shoes for casual wear; sandals; flip flops.

Class 32: Non-alcoholic beverages; energy drinks; isotonic drinks; isotonic beverages; sports drinks; sports drinks containing electrolytes; whey beverages; water; mineral water; bottled water; aerated waters; fruit beverages; fruit juices; syrups and other preparations for making beverages; beer; malt beer; non-alcoholic beer.

Class 41: Organisation, production and conducting of sporting events; sporting activities; organising of sports, sporting activities and sports events; organising of sporting events, competitions and tournaments; providing sports facilities; provision of information relating to sports, sporting activities and sporting events; personal appearances by sports celebrities; personal appearances by music celebrities; providing motivational and educational speakers; publishing; publishing of books, magazines, periodicals, journals, newsletters, guides, guide books, brochures, manuals, event programmes, handbooks, reports and directories; publishing of electronic publications; providing online electronic publications; electronic publications (not downloadable); writing of texts, other than publicity texts; education; providing of training; training services; training courses; sports training; providing sports training facilities; conducting courses, seminars and workshops; organisation of seminars and conferences; arranging and conducting of commercial, trade and business conferences; information and advisory services relating to the aforesaid services.

The contested goods are the following:

Class 29: Potato crisps; potato crisps in the form of snack foods; crisps (potato -); vegetable crisps.

Class 30: Corn-based savoury snacks; puffed corn snacks; popcorn.

Class 33: Spirits; spirits and liquors; spirits [beverages]; whiskey [whisky]; gin; vodka; schnapps; alcoholic beverages, except beer; cider.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Classes 29 and 30

The contested potato crisps; potato crisps in the form of snack foods; crisps (potato -); vegetable crisps in Class 29 and the contested goods corn-based savoury snacks; puffed corn snacks; popcorn in Class 30 are foodstuffs processed by various methods such as thinly cut potatoes or vegetables, deep fried or corn toasted with oil or butter in a closed pot where the corn kernel expands and puffs up when heated. All of these goods are considered different from the opponent’s non-alcoholic beverages in Classes 32, in which the opponent particularly relied on his observations.

In addition, these goods are also dissimilar to the remaining opponent’s goods used as the basis of the opposition namely, paper, cardboard and certain goods made of those materials and office requisites in Class 16, leather, imitations of leather and certain goods made of those materials in Class 18, apparatus for household and kitchen use, as well as glassware and certain goods made of porcelain, ceramic, earthenware, terra-cotta or glass in Class 21, clothing, footwear, headwear in Class 25 as well as to the opponent’s services of training; entertainment; sporting and cultural activities in Class 41. This is because, contrary to the opponent’s submissions, these goods satisfy different needs of consumers and have very different distribution channels. While the opponent’s goods are available in specialised beverage sections of supermarkets (i.e. non-alcoholic drinks sections) and in stationery and clothing shops etc, the abovementioned contested goods are foodstuffs that will be found in designated sections in grocery stores, supermarkets etc. The opponent argues that his goods in Class 32 and these contested goods often originate from the same undertakings or economically linked undertakings. Additionally, in support of his arguments on 01/05/2020 the opponent submitted appendix 5 and 6. In this context it must be mentioned that even if multinational companies may under the umbrella of one company manufacture a wide range of products belonging to different industries, this does not reflect common trade customs, according to which these types of goods have different producers, each belonging to a specific industry. It is evident that non-alcoholic beverages and snacks foods such as popcorn or crisp are produced by different manufacturing methods, which require different (technical) know-how and different manufacturing sites or infrastructure for their production. Consequently, it is evident that these goods have different producers.

On the other hand, even if the conflicting goods are often consumed together, complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience (e.g. bread and butter). Therefore, this means that they are not essential for each other (16/12/2013, R 634/2013-4, ST LAB (fig.) / ST et al., § 20). Even if, as alleged by the opponent, some alcoholic drinks can flavour crisps and popcorns this is not an extensive trend. In any case, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even if they fall under the general category of foodstuffs (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36), which moreover it is not the case as the conflicting goods fall in different categories, namely foodstuffs and beverages. Since they satisfy different needs, including different nutritional needs, they are not in competition with each other. Therefore, taking into account all the above, they are considered dissimilar.

Contested goods in Class 33

The opponent’s beer is, contrary to the applicant’s arguments, similar to the contested spirits; spirits and liquors; spirits [beverages]; whiskey [whisky]; gin; vodka; schnapps; alcoholic beverages, except beer; cider. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general 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 section of supermarkets, although they can also be distinguished to some extent by subcategory. Beers and alcoholic beverages can be mixed and consumed together, for instance in cocktails as evidenced by the opponent. Furthermore, they can 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.

The degree of attention is average.

c) The signs

SHINDIG	shindigs
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 earlier mark and contested sign are both word marks, ‘SHINDIG’ and ‘shindigs’ respectively. The protection of a word mark concerns the word as such. In this case it is clear that it is irrelevant, for the purposes of the comparison of the marks, if the earlier mark is written in upper-case letters and the other in lower-case letters as both signs are written in a manner that do not depart from the usual way of capitalising letters.

Both the earlier mark ‘SHINDIG’ and the contested sign ‘shindigs’ (i.e. the plural form of shindig) will be understood by the English-speaking public as a reference to large, noisy, enjoyable party or parties (information extracted from Collins dictionary on 20/05/2020 at https://www.collinsdictionary.com/dictionary/english/shindig). In general, these words are meaningless for the remaining part of the public and therefore, distinctive to a normal degree as so are for the English-speaking part of the public for which these words are sufficiently unusual and striking not to be perceived as descriptor of the goods in question.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the pronunciation and string of letters ’SHINDIG’, present identically in both signs. The coinciding letters constitute the earlier mark in its entirety and almost all the letters of the contested sign except for its last one, which is generally the less noticeable letter since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads 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. The signs differ in the sound and appearance of the last letter ‛S’ of the contested mark, which has no counterpart in the earlier sign. Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for a 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 for this part of the public.

However, for the English-speaking part of the public, that perceives a meaning in the signs, reference is made to the previous assertions concerning the semantic content conveyed by them. The signs will be basically associated with a the same concept of a large, noisy and enjoyable party, although the contested sign because of its plural form it refers to more than one party of this kind. Consequently, for this part of public the signs are conceptually highly similar, if not identical.

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 did explicitly claim that its mark is particularly distinctive due to its unusual character. It should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich EU:C:2013:317, § 71).

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

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).

As set out above, the goods are partly similar and partly dissimilar. The degree of attentiveness of the target public is average. The inherent distinctiveness of the earlier mark is normal. Moreover, the signs are visually and aurally similar to a high degree, and also conceptually (albeit only for the English-speaking a part of the public) they are highly similar, if not identical. For another part of the public neither of the signs conveys a semantic content that may help consumers to differentiate between them.

Bearing in mind 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), it is likely that in the present case, they confuse the contested sign ‘shindigs’ with the earlier mark ‘SHINDIG’ in the context of similar goods. This is especially so given that the signs differ only in the additional letter ‘S’ positioned at the end of the contested sign where it is less noticeable and the degree of attentiveness by consumers at the time of purchase is average. Consequently, they will easily overlook the only difference of the final letter between the signs.

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

It follows from the above that the contested trade mark must be rejected for the goods found to be 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.

For the sake of completeness, it must be mentioned that the opposition must fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and goods are obviously not identical.

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

Anna ZIOŁKOWSKA

María del Carmen COBOS PALOMO

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.