OPPOSITION No B 3 104 618

Global SMM 2009 S.L., Balneario de Fuensanta S/N, 33520 Nava (Asturias), Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Rafael Lechuga Vilariño, In der Wölpke, 32547 Bad Oeynhausen, Germany (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).

On 14/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 618 is upheld for all the contested goods, namely:

Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages; spirits and liquors; rum.

2. European Union trade mark application No 18 102 909 is rejected for all the contested goods in Class 33. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 102 909 ‘MAMBÍ’ (word mark), namely against all the goods in Class 33. The opposition is based on, inter alia, Spanish trade mark registration No 3 030 173 ‘MAMBO’ (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.

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 Spanish trade mark registration No 3 030 173.

a) The goods

As a preliminary remark, the Opposition Division notes that there is a discrepancy in the wording of the opponent’s goods in the translation of the word ‘siropes’ with ‘syrups’. However, despite this discrepancy because both words have the same structure, the opposition will proceed with the translation which appears to be more grammatically accurate.

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

Class 32: Beers; table and gaseous waters and other non-alcoholic drinks; drinks and fruit juices; syrups (siropes) and other preparations to make drinks.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages; spirits and liquors; rum.

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.

Alcoholic beverages (except beer) are identically contained in both lists of goods (although in plural form in the opponent’s list of goods).

The contested spirits and liquors; rum are included in the broader category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

The contested preparations for making alcoholic beverages are similar to the opponent’s syrups (siropes) other preparations to make drinks in Class 32, because they have the same nature and methods of use. In addition, these goods are usually offered through the same distribution channels and coincide in the relevant public. Furthermore, ‘preparations for making beverages’ in Class 32 and preparations for making alcoholic beverages in Class 33 are broad categories, which, in principle, can be considered similar because of very particular (other) goods under them being similar. ‘Preparations for making beverages’ in Class 32 include, inter alia, ‘non-alcoholic fruit extracts used in the preparation of beverages’. In addition, preparations for making alcoholic beverages in Class 33 cover, inter alia, ‘fruit extracts, alcoholic’. When comparing these very particular goods, they are similar (nature, method of use, distribution channels, relevant public and producer).

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 similar are directed at the public at large. The degree of attention is average.

c) The signs

MAMBO	MAMBÍ
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 verbal element ‘MAMBÍ’ of the contested sign will be understood by part of the relevant public as ‘participant or supporter of the independence insurrection against Spain in Santo Domingo and Cuba in the 19th century’ (information extracted from Spanish Dictionary of the Royal Academy on 02/09/2020 at https://dle.rae.es/mamb%C3%AD#O5wWyyk). For another substantial part of the relevant public, this verbal element is meaningless because of its uncommon use, limited to historical references. In order to avoid multiple scenarios, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which this element is meaningless and, therefore, has a normal degree of distinctiveness.

The word ‘MAMBO’ will be associated with ‘Cuban popular music and dance’ (information extracted from Spanish Dictionary of the Royal Academy on 02/09/2020 at https://dle.rae.es/mambo). Since it has no direct or indirect link with the goods at issue, this element has a normal degree of distinctiveness.

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.

Visually, the signs coincide in the letters ‘MAMB*’. They only differ in their last letters, ‘O’ v ‘Í’ respectively, and in the accent of the last letter in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the number of the syllables and the sound of the letters ‘MAMB*’, present identically in both signs. The pronunciation only differs in the sound of their last letters in both signs, ‘O’ of the earlier mark v ‘Í’ of the contested sign, and the stress that is on the first syllable in the earlier mark and on the second syllable in the contested sign. The length of the pronunciation is also similar in both signs.

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

Conceptually, although the public in question will perceive the meaning of the earlier mark 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 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. 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly similar. They target the public at large, whose degree of attention is average. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar to a high degree, aurally to an above-average degree and conceptually not similar. They coincide in their initial letters ‘MAMB*’, which first catch the attention of consumers for the reasons explained above. The differences are confined to the last letters of both signs. Consequently, the differences are not sufficient to counteract the similarities between the signs.

Account is taken of 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).

It should be borne in mind that some of the relevant goods are alcoholic beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48), which is above average in this case.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 030 173. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Benoit VLEMINCQ

Claudia SCHLIE

Martin MITURA

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.