OPPOSITION No B 3 106 076

Rives Distillery, S.A., Aurora, 4, 11500 Puerto de Santa Maria (Cádiz), Spain (opponent), represented by Rodolfo de la Torre S.L., C/ San Pablo, nº15-3º, 41001 Seville, Spain (professional representative)

a g a i n s t

Edwin von Werder, Drottninggatan 61, 25200 Helsingborg, Sweden - Jorge Bravo, Tre Liljor 3, 11344 Stockholm, Sweden (applicants).

On 25/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 076 is partially upheld, namely for the following contested goods:

Class 32: Beer and brewery products.

Class 33: Alcoholic beverages (except beer).

2. European Union trade mark application No 18 120 318 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 18 120 318 ‘Kinky Love’ (word mark). The opposition is based on, inter alia, Spanish trade mark registration No 682 050 ‘LOVE LICOR’ (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 682 050.

a) The goods

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

Class 33: Liqueurs.

The contested goods are the following:

Class 32: Non-alcoholic beverages; beer and brewery products; non-alcoholic preparations for making beverages.

Class 33: Preparations for making alcoholic beverages; alcoholic beverages (except beer); alcoholic preparations for making beverages.

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 32

The contested beer and brewery products are all types of alcoholic beers and brewery products. Although their production processes are different from those of the opponent’s liqueurs, 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. Therefore, these goods are similar.

On the contrary, the contested non-alcoholic beverages; non-alcoholic preparations for making beverages are non-alcoholic beverages and preparations for making beverages. As such they are not sufficiently close to the opponent’s liqueurs to render the goods similar. The fact that all the 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. Therefore, taking into account the differences between the sectors of alcoholic and non-alcoholic beverages, it is unlikely that producers of alcoholic beverages, like the opponent’s liqueurs, would also be engaged in the production of these non-alcoholic beverages and essences 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.

Contested goods in Class 33

The contested alcoholic beverages (except beer) include, as a broader category, the opponent's liqueurs. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested preparations for making alcoholic beverages; alcoholic preparations for making beverages are dissimilar to the opponent’s goods. They have different natures and methods of use. While these goods may be consumed in the same places and on the same occasions and may satisfy the same need (and only after mixing it), for example, enjoyment of a drink after a meal, the fact remains that they do not belong to the same family of alcoholic beverages and that the consumer perceives them as two distinct products. They are not complementary, in the sense of one being essential or important for the use of the other, nor are they in competition. These goods are not normally displayed in the same shelves in the areas of supermarkets and other outlets selling drinks. Their relevant public and producers are also usually different.

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 considered to be average.

c) The signs

LOVE LICOR	Kinky Love
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).

Both signs are word marks. Therefore for the purposes of the comparison it is irrelevant whether they are written in upper- or lower-case letters, or in a combination thereof, since it is the word as such that is protected and not its written form. 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.

The word ‘LOVE’ that is part of both signs will be understood by the relevant Spanish public as a noun meaning ‘a strong feeling of affection; a great interest and pleasure in something’ or as a verb meaning ‘feel deep affection or sexual love for (someone)’, as it is a basic and internationally understood English word. Since it does not describe or allude to the nature or characteristics of the products in question, it is considered distinctive.

The element ‘Kinky’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The word ‘LICOR’ of the earlier mark is a Spanish word that will be understood by the relevant public as meaning ‘liqueur’: a spirit obtained by distillation, maceration or mixture of various substances, and composed of alcohol, water, sugar and various aromatic essences.

Bearing in mind that the relevant goods are liqueurs in Class 33, this element of the earlier mark is non-distinctive, as it describes their nature directly, clearly and unequivocally.

Visually, aurally and conceptually the signs coincide in the word ‘LOVE’. However, they differ visually and aurally in the first word ‘Kinky’ of the contested sign, which is meaningless and distinctive, and they differ visually, aurally and conceptually to the extent that the earlier mark contains the word ‘LICOR’, although account must be taken of the fact that this element is non-distinctive.

Therefore, the signs are visually, aurally and conceptually similar to at least 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. 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 11 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods in Classes 32 and 33 covered by the contested trade mark have been found partly identical, partly similar and partly dissimilar to the goods in Class 33 covered by the earlier trade mark. The signs are visually, aurally and conceptually similar to, at least, an average degree. The similarities are all the more increased by the circumstance that the signs coincide in one of the two words of the contested sign, which is also the first and only distinctive word of the earlier mark, that is to say, ‘LOVE’.

Taking into account the visual, aural and conceptual similarity of the signs, the average degree of distinctiveness of the earlier trade mark, the average degree of attention of the relevant public and the identity and similarity of the goods, there is a likelihood of confusion on the part of the public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 682 050.

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.

The opponent has also based its opposition on the following earlier trade mark:

 Spanish trade mark registration No M0 938 317 for the figurative mark

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains, for instance, an additional figurative element, namely the heart-shaped element that contains the words ‘LOVE CREAM’, which is not present in the contested trade mark. Moreover, it covers the same scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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

Martin MITURA

Andrea VALISA

Christophe DU JARDIN

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.