OPPOSITION No B 3 118 834

Pivovar HOLBA, a.s., Pivovarská ul. 261, 788 33 Hanušovice, Czech Republic (opponent), represented by Halaxová & Halaxová, Tetrapat, Jinonická 80, 158 00 Praha, Czech Republic (professional representative)

a g a i n s t

Waren des täglichen Bedarfs GmbH, Dunckerstr. 59B, 10439 Berlin, Germany (applicant), represented by Nimrod Rechtsanwälte GbR, Emser Str. 9, 10719 Berlin, Germany (professional representative).

On 29/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 118 834 is partially upheld, namely for the following contested services:

Class 41: Organisation of events for entertainment purposes.

2. European Union trade mark application No 18 085 420 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

On 10/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 085 420 ‘No name just taste’ (word mark). The opposition is based on European Union trade mark registration No 6 512 412 ‘NONAME’ (word mark). 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 and services

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

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

Class 33: Alcoholic beverages (except beers).

Class 43: Services for providing food and drink - fast food, vending machines, snack bars; accommodation, catering, gastronomy, restaurants, hospitality.

The contested goods and services are the following:

Class 25: Clothing; headgear; footwear.

Class 41: Organisation of events for cultural, entertainment and sporting purposes.

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 Class 25

The contested clothing; headgear; footwear have nothing in common with any of the opponent’s goods in Classes 32 and 33. The contested goods are used to cover parts of the human body, protect them against the elements and/or as fashion items, whereas the opponent’s goods in Class 32 comprise different kinds of beers and non-alcoholic beverages and preparations for making beverages, and those in Class 33 are alcoholic beverages (except beers). There is a clear difference in the natures and purposes of these goods, they are not produced by the same manufacturers nor found in the same sections or shelves in supermarkets or other retail outlets. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar. The abovementioned contested goods are also dissimilar to all the opponent’s services in Class 43, since they do not have any relevant points of contact that could justify finding a level of similarity between them. The opponent’s services comprise mainly the provision of food and drinks and temporary accommodation. These services have no connection to the contested goods on account of the vast difference between the natures, purposes and the usual producers or providers. Furthermore, the goods and services are neither complementary nor in competition.

It follows that the contested clothing; headgear; footwear are dissimilar to all the opponent’s goods and services in Classes 32, 33 and 43.

Contested services in Class 41

The contested organisation of events for entertainment purposes has a relevant connection to the opponent’s alcoholic beverages (except beers) in Class 33. Alcoholic beverages as a broader category include wines. It is common in the market for wine producers and distributors to organise wine-tasting events for entertainment purposes. It is also common practice for winemakers to sell wine to the public after such wine-tasting events. Due to the fact that wine is indispensable for the organisation of the wine-tasting events, there is such a close connection between the goods on the one hand and the services on the other hand, that the relevant public may believe that they are offered by the same or economically linked undertakings. Since the goods and services under comparison are complementary, can be offered through the same distribution channels and target the same consumers, as well as share the usual producers/providers, they are similar.

However, the contested organisation of events for cultural and sporting purposes is dissimilar to the opponent’s goods in Classes 32 and 33. The contested organisation of events for cultural purposes includes the organisation of all kinds of cultural events (e.g. events organised by art galleries, museums, theatres), and the provision of facilities therefor. The contested organisation of events for sporting purposes includes sporting competitions and other related events, and the provision of facilities therefor. These services have no connection to any of the opponent’s goods. Clearly different by natures and purposes, the contested services are provided by different undertakings from those operating in the beverage industry. The mere fact that these goods and services are purchased by the public at large does not lead to the finding of a similarity between them, in view of the different needs that the goods and services satisfy. Furthermore, the goods and services are neither complementary nor in competition. The abovementioned contested services are also dissimilar to all the opponent’s services in Class 43, since they have no relevant connection to any of the opponent’s services on account of the vast difference between the natures, purposes and usual providers. Furthermore, they are neither complementary nor in competition.

Therefore, the contested organisation of events for cultural and sporting purposes is dissimilar to all of the opponent’s goods and services in Classes 32, 33 and 43.

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 and services found to be similar are directed at the public at large.

The relevant public’s degree of attention is considered average.

c) The signs

NONAME	No name just taste
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.

The verbal elements of both signs are meaningful for the English-speaking consumers in the relevant territory. This part of the public includes the Anglophone countries, as well as consumers with sufficient knowledge of English as a foreign language in the other language areas. Consequently, and considering that this factor has an impact on the conceptual comparison between the signs, the Opposition Division finds it appropriate to focus on this part of the public.

Both signs are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in upper- or lower-case letters, or in a combination thereof. This is true as long as the depiction does not deviate from the usual way of writing (i.e. the standard rules of capitalisation), which is the case here.

It is recalled that the relevant consumers will break a verbal element down into parts that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In view of this principle, the public under analysis, when perceiving the single word of the earlier mark ‘NONAME’, will split it into the elements ‘NO’ and ‘NAME’, despite not having a space between them. This is because this public understands the meaning of the expression ‘NO NAME’ as an adjective that in the context of goods and services refers to something having no brand name and usually sold at a lower price than similar products/services with brand names (e.g. ‘cheap, no-name cigarettes’). Consequently, the element ‘NONAME’ of the earlier mark and, likewise, the words ‘No name’ of the contested sign are distinctive to a low degree in relation to the relevant goods or services as they refer to their possible characteristics (i.e. alcoholic beverages and organisation of events for entertainment purposes which have no brand name and are therefore less expensive).

The words ‘just taste’ of the contested sign will be perceived by the public under analysis as a promotional laudatory message, the function of which is to communicate an inspirational or motivational statement for customers to simply use the services offered by an undertaking, to try and experience what is offered. Moreover, this expression can be associated with the notion that ‘taste’ (i.e. the pure flavour) is the most important aspect of the services at issue. Therefore, the element ‘just taste’ will be perceived as laudatory and thus non-distinctive in relation to the relevant services, in view of the fact that they include the organisation of wine-tasting events.

As a whole, the expression ‘No name just taste’ of the contested sign is likely to be perceived by the public under analysis as pointing to the idea of a high quality tasting product (e.g. wine) which has no brand name, or for which the brand name does not matter.

Visually, the signs coincide in the words ‘NO NAME’. They form the whole earlier mark, albeit written without a space between them, and are the first two words in the contested sign where they are slightly more distinctive than the differentiating words ‘just taste’, found non-distinctive above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the elements ‘NO NAME’. The presence of the lack of a space between these words will not result in a major or audible difference between the signs, given that the public under analysis will discern the two words in the earlier mark, as described above. The pronunciation differs in the sound of the non-distinctive words ‘just taste’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the goods or services without a brand name which are usually less expensive than the branded ones. As the presence of the additional non-distinctive words ‘just taste’ in the contested sign does not result in a major difference between the signs from the perspective of the public under analysis, the signs are conceptually similar to 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.

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 not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the goods in question from the perspective of the public under analysis.

e) Global assessment, other arguments and conclusion

The contested goods and services have been found partly similar and partly dissimilar to the opponent’s goods and services. Those found to be similar target the general public whose degree of attention is average.

From the perspective of the English-speaking part of the public in the relevant territory, which is the public under analysis for the present assessment, the earlier mark has a low degree of inherent distinctiveness in relation to the goods at issue. However, the finding of a low degree of distinctiveness for the earlier trade mark does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark of a low degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The signs have been found to be visually, aurally and conceptually similar to an average degree. Although the contested sign differs in the additional words ‘just taste’, the public under analysis will perceive them as non-distinctive in relation to the relevant services. The Opposition Division considers, therefore, that the addition of these words is clearly insufficient to safely distinguish the signs in the context of the goods and services found to be similar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same or economically linked undertakings. It is likely that the public under analysis will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Indeed, it is conceivable that the respective public will regard the goods and services designated by the conflicting signs as belonging to two ranges of goods and services coming from the same undertaking.

Considering all the above, there is a likelihood of confusion (including a likelihood of association) on the English-speaking part of the relevant public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 512 412. It follows that the contested trade mark must be rejected for the services found to be similar to the goods of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Agnieszka PRZYGODA

Solveiga BIEZA

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.