OPPOSITION No B 2 141 920

Oy Hartwall AB, Hiomotie 32, 00380 Helsinki, Finland (opponent), represented by Berggren OY, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative)

a g a i n s t

Eduard Meier GmbH, Brienner Str. 10, 80333 München, Germany (applicant), represented by SKW Schwarz Rechtsanwälte, Wittelsbacherplatz 1, 80333 München, Germany (professional representative).

On 23/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 141 920 is upheld for all the contested goods, namely

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

2. European Union trade mark application No 11 101 318 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 101 318 for the word mark ‘ED MEIER’, namely against all the goods in Class 32. The opposition is based on, inter alia, Finnish trade mark registration No 245 397 for the word mark ‘ED’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 Finnish trade mark registration No 245 397.

1. The goods

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

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

The contested goods are the following:

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

The contested goods are identically contained in both lists of goods (including synonyms).

2. 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 are directed at the public at large with an average degree of attention.

3. The signs

ED	ED MEIER
Earlier trade mark	Contested sign

The relevant territory is Finland.

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).

Contrary to the opinion of the applicant the element ‘ED’ of the earlier mark has no meaning for the relevant public in Finland and is, therefore, distinctive. Most probably it will not be seen as a given name, such as a short of ‘Edward’.

The element ‘MEIER’ of the contested sign will be perceived as a rather common family name by the relevant public. Although ED on its own has no meaning it could be seen in the contested sign as a very rare given name.

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 and aurally, the signs coincide in the entire earlier mark, namely ‘ED’. However, they differ in ‘MEIER’ of the contested sign.

Therefore, the sign are visually and aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign as explained above, the other sign has for the overwhelming majority of the public no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. In case ‘ED’ would be recognized in the earlier mark as a name the signs are even 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.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. 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 8 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 signs were found to be aurally and visually similar to an average degree and the level of attention is average. For part of the public the signs are even conceptually similar. The earlier mark is normal distinctive and the contested goods are identical. The addition of the term ‘MEIER’ to the trade mark application will be perceived as a common surname and will have less weight than the first name ‘ED’ which is quasi non-existent in Finland, see also decision of decision of 17/03/2009, R-1892/2007-1, AMANDA SMITH / AMANDA, § 31.

It should be borne in mind that the relevant goods are 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).

Considering all the above, there is a likelihood of confusion on the part of the public. This is even more the case if in the earlier mark ‘ED’ will be perceived as a name.

Therefore, the opposition is well founded on the basis of the opponent’s Finnish trade mark registration No 245 397 for the word mark ‘ED’. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘ED’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Gonzalo BILBAO TEJADA

Martin EBERL

Beatrix STELTER

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.