OPPOSITION No B 2 439 480
Rotkäppchen-Mumm Sektkellereien GmbH, Sektkellereistr. 5, 06632 Freyburg, Germany (opponent), represented by Lucia Schwab, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)
a g a i n s t
Cave Central da Bairrada S.A., Arcos, 3780 291 Anadia, Portugal (applicant), represented by J. Pereira da Cruz S.A., Rua Victor Cordon 14, 1249-103 Lisboa, Portugal (professional representative).
On 29/09/2016, the Opposition Division takes the following
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 350.
opponent filed an opposition against all the goods of European Union
trade mark application No
The applicant requested the opponent to file evidence of use of all the earlier marks on which the opposition is based. The Office invited the opponent to file evidence of use and the opponent submitted documents.
In accordance with Article 42(2) EUTMR, the obligation to provide proof of use requires that the earlier registered mark has, at the date of filing or the date of priority of the European Union trade mark (EUTM) application, been registered for not less than five years. For oppositions filed before 23/03/2016, the relevant date for the calculation of the five year period is the date of publication of the contested trade mark.
The decisive date for establishing whether a trade mark has been registered for not less than five years at the relevant date is, according to Article 15 and Article 42(2) EUTMR, the registration date of the earlier EUTM. If five years or more have elapsed between the registration date of the earlier EUTM and the relevant date, the applicant (or in the case of a contested IR, the holder) is entitled to request proof of use.
For international registrations designating the European Union, Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put to genuine use in the EU.
As from that publication the international registration has the same effects as a registered EUTM pursuant to Article 151(2) EUTMR. The date of publication pursuant to Article 152(2) equals the date of the second re-publication of the EU designation in part M.3. of the Bulletin.
The opposition was filed on 18/11/2014. The publication of the contested EUTM took place on 25/08/2014. Therefore, earlier international trade mark registration No 976 438 designating the European Union would have to have been published under M.3.1. before 25/08/2009 to be subject to the use requirement. However, it was only published on 31/08/2009. Thus, it is not subject to the use requirement and the Opposition Division will examine likelihood of confusion on the basis of this earlier right.
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 international trade mark registration No 976 438 designating the European Union.
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beers).
The contested goods are the following:
Class 33: Alcoholic beverages (except beers).
Contested goods in Class 33
Alcoholic beverages (except beers) are identically contained in both lists of goods and services.
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. The degree of attention is considered to be average.
M & M
Earlier trade mark
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).
Neither of the signs has an element that could be considered clearly more distinctive than other elements and since both marks are word marks neither of the signs has an element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in two capital letters ‘M’. The only visual difference between the signs is the additional ampersand contained in the contested sign that appears between the two capital letters ‘M’. It is to be noted that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case the presence of the ampersand does not go unnoticed; however, due to the identity of all the remaining elements, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‘M’, present identically in both signs. The pronunciation only differs in the additional syllable created by the ampersand contained in the contested mark; in English for example the earlier sign is pronounced /em-em/ whereas the contested sign is pronounced /em-ǝn-em/. The additional syllable makes the contested sign slightly longer in pronunciation. However, it is important to note that in many relevant languages such as in English this additional syllable is not stressed and, therefore, it may go almost unnoticed in pronunciation. Therefore, the signs are also aurally similar to an average degree.
Conceptually, letters can have an independent conceptual meaning. The signs are conceptually identical insofar as they both convey a double letter ‘M’, with a slight difference represented by the ampersand symbol in the contested sign’.
As the signs have been found visually and phonetically similar and conceptually identical, the examination of likelihood of confusion will proceed.
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.
Global assessment, other arguments and conclusion
The contested goods are identical to the goods for which the earlier mark is protected.
The signs are visually and aurally similar and conceptually identical.
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).
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).
The goods at stake are alcoholic beverages. These are also ordered orally in restaurants and bars and, therefore, the phonetic perception of the signs may also be influenced by factors such as the likely presence of various other sounds perceived by the recipient of the order at the same time. These considerations are relevant because the goods in question are also ordered at sales points with an increased noise factor, such as bars or nightclubs. In such cases, attaching particular importance to the phonetic similarity between the signs at issue may be appropriate. Under point b) the Office has found that the signs are aurally similar to an average degree; nevertheless, the degree of aural similarity may be even higher considering that in many relevant languages such as in English the additional syllable created by the ampersand is not stressed and, therefore, it may go even more unnoticed in pronunciation and perception (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48).
In its observations, the applicant argues that it owns Portuguese registration No 357 302 for the mark ‘ ’ which coexists with the opponent’s earlier marks and which is earlier than the opponent’s marks; therefore, the applicant holds prior rights and if it wished it could request for the cancellation of the earlier marks on which the opposition is based.
In addition, the applicant claims that the opposing marks have already coexisted for several years, at least with the Portuguese mark, meaning that there is no reason to conclude that there may be likelihood of confusion in the market of the European Union.
According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).
In this regard it should be noted that formal co‑existence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Opposition Division shall in principle be restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.
The applicant further argues that the opponent could have chosen a longer sign. The opponent is well aware that few differences should be and are sufficient to make it possible for the trade marks of this nature to coexist. It is noted that it is not for the Opposition Division to enter into discussions about the kind of sign that should have been chosen by a party to proceedings. It is the Opposition Division’s task to decide on whether or not there is a likelihood of confusion between the signs at issue
The applicant concludes that many trade marks composed of two letters and protected for the same goods or services coexist because they show sufficient differences to avoid confusion among consumers. In shorter signs small differences make it possible to distinguish them from each other because the consumers are more attentive and more easily memorize these signs. The applicant provides six examples for European Union trade marks (EUTMs) composed of the same two letters ‘AB’ and quotes parts of three previous decisions of the Office to make this matter clear.
In reply to these arguments it is pointed out that the Office even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the EUTMs referred to as well as the previous decisions quoted by the applicant are not comparable to the present case because even though all the signs compared are short signs composed of two letters, they do show differences in typeface and figurative representations and even additional elements. In the present case, the signs are both word marks made up of two letters and the symbol ‘&’. There are no more differences and this fact makes the signs at hand visually and aurally similar and conceptually identical.
Considering all the above and due to the visual and aural similarities and the conceptual identity and the absence of any dominant or non-distinctive elements in the signs, the Opposition Division concludes that 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 international trade mark registration No 976 438 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier international trade mark registration No 976 438 designating the European Union 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).
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.