OPPOSITION Nо B 3 124 019

 

ASHU16 Holding ApS, c/o To Øl Slotsgade 2, 1., 2200 København, Denmark (opponent), represented by Walther Rebernik, Østergade 16, 2. th., 1100 Copenhagen K, Denmark (professional representative) 

 

a g a i n s t

 

Riccarda Mueller, Silcherweg 1-3, 73463 Westhausen, Germany (applicant).

On 08/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 124 019 is upheld for all the contested goods, namely Spirits [beverages]; Liqueurs in Class 33.

 

2.	European Union trade mark application No 18 221 605 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

On 15/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 221 605 ‘DON'T PANIC’ (word mark), namely against all of the goods in Class 33. The opposition is based on EUTM registration No 16 238 198, ‘Don’t Panic’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

 

PRELIMINARY REMARKS

Upon filing the opposition notice, the opponent identified itself as the Danish legal entity TO ØL ApS. However, the following day (on 16/06/2020, still within the opposition period, therefore the correction was accepted), the opponent informed the Office that the former had erred in indicating the opponent as TO ØL ApS (as reflected in the opposition notice), and that the opponent was, in actual fact, Tore Gynther Holding ApS (the proprietor of the earlier mark invoked as the basis of the opposition).

On 19/10/2020, the opponent informed the Office of its change of name from Tore Gynther Holding ApS to ASHU16 Holding ApS with an address in Denmark. The change of name was recorded by the Office on 26/10/2020.

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

 

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

 

Class 32:

Beer and brewery products; Mineral and aerated beverages (soda water) and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

 

The contested goods are the following:

 

Class 33:

Spirits [beverages]; Liqueurs.

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.

 

The contested spirits [beverages]; liqueurs are similar to the opponent's beer and brewery products because although their production processes are different, these goods all belong to the same category of alcoholic drinks (nature) 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 area of supermarkets, even if some distinction according to their respective subcategory can be made. Furthermore, some alcoholic beverages may originate from the same undertakings.

b) The signs

 

Don’t Panic	DON'T PANIC
Earlier trade mark	Contested sign

 

The contested sign is a word mark consisting of the words ‘DON’T PANIC’. It only differs from the opponent’s earlier word mark, ‘Don’t Panic’, in its use of upper- rather than lower-case letters. However, since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features that the mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower-case letters (as is the case with the earlier mark) or upper-case letters (as per the contested sign).

Consequently, the signs at issue are identical.

c) Global assessment, other arguments and conclusion

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/services covered are from the same or economically linked undertakings.

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 the goods at issue are similar and the signs are identical, there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 16 238 198. 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, it 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

 

 

Denitza STOYANOVA-VALCHANOVA

Begoña URIARTE VALIENTE

Michaela SIMANDLOVA

 

 

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.