OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 430 257
Mass Bay Brewing Company, Inc. 306 Northern Avenue Boston Massachusetts 02210, United States of America (opponent), represented by Appleyard Lees, 15 Clare Road Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative)
a g a i n s t
Cerveceros de España, Almagro 24, 28010 Madrid, Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).
On 09/02/2016, the Opposition Division takes the following
Class 32: Beers.
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against some of the goods of Community
trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 goods on which the opposition is based are the following:
Class 32: Beer.
The contested goods are the following:
Class 32: Beer.
Contested goods in Class 32
Beer is identically contained in both lists of goods.
LOVE BEER. LOVE LIFE.
LOVE BEER, LOVE RUNNING
Earlier trade mark
The relevant territory is the European Union.
The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (08/09/2008, C‑514/06 P, Armacell, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
Visually, the signs are similar to the extent that they coincide in their first three words ‘LOVE BEER, LOVE’. However, they differ in their fourth words respectively, ‘LIFE’ in the earlier mark versus ’RUNNING’ in the contested sign as well as the punctuation marks, dots in earlier mark separating words ‘LOVE BEER. LOVE LIFE.’ versus ‘LOVE BEER, LOVE RUNNING’.
Aurally, the pronunciation of the signs coincides in the sound of the words /LOVE/, repeated twice and a word /BEER/, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of their fourth words, namely /LIFE/ of the earlier mark and ‘RUNNING’ of the contested sign. The conflicting signs, both being slogans and sharing three out of four words, result in same rhythm and intonation, however not being affected by the difference in their punctuation marks.
Conceptually, the English-speaking part of the public will perceive the word ‘LOVE’, present in both signs and repeated twice, as meaning ‘an intense emotion of affection, warmth, fondness, and regard towards a person or thing’ and the word ‘BEER’ meaning ‘an alcoholic drink brewed from malt, sugar, hops, and water and fermented with yeast’ (see for reference Collins Dictionary Online).
The public in the relevant territory will also perceive the word ‘LIFE’, present only in the earlier mark meaning ‘the period between birth and death’ (see Collins Dictionary Online).
The public in the relevant territory will also perceive the word ‘RUNNING’, present only in the contested sign meaning ‘sprinting, racing, sprint, jogging’ (see Collins Dictionary Online).
The earlier mark further contains two dots that will be perceived by the relevant public as such.
The contested sign contains a comma that will be perceived by the relevant public.
Consequently, the public in the relevant territory will perceive the concept behind the earlier mark as loving beer therefore loving life and the other sign will associate a concept of loving beer with loving running. The signs will be associated with a similar meaning in that they both refer to the concept of loving beer. The signs are therefore conceptually similar to that extent.
Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The word ‘LOVE’ of the earlier mark will be associated with ‘an intense emotion of affection, warmth, fondness, and regard towards a person or thing’ and the word ‘BEER’ will be understood as ‘an alcoholic drink brewed from malt, sugar, hops, and water and fermented with yeast’. These elements will therefore be considered as non-distinctive (BEER) and weak (LOVE) for the goods at issue, namely ‘beer’, to indicate a specific advertising, or marketing slogan for the goods at issue. The public understands the meaning of these elements and will not pay as much attention to these weak and non-distinctive elements as to the other, more distinctive, elements of the marks. Consequently, the impact of these elements is limited when assessing the likelihood of confusion between the marks at issue.
The same observations regarding the distinctiveness of ‘LOVE’ and ‘BEER’ are valid also in relation to the contested sign.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as non-distinctive for the goods in question, namely beer in Class 32. The public understands the meaning of the element and will not pay as much attention to these weak elements as to the other, more distinctive, elements. Consequently, the impacts of these weak elements are limited when assessing the likelihood of confusion between the marks.
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 will be average.
Global assessment, other arguments and conclusion
The goods are identical.
The signs are visually, aurally and conceptually similar to the extent that they have three out of four words ‘LOVE BEER, LOVE’ in common, at exactly the same positions. The signs differ thus in the word ‘LIFE’ of the earlier mark and the word ‘RUNNING’ of the contested sign, where the punctuation marks of comma and a dot separating the words of the conflicting signs can be defined as a difference between the signs only in relation to the visual and conceptual aspects, as they are aurally irrelevant.
Account should be taken also of the circumstances in which the relevant public will encounter the signs designating alcoholic beverages, which are consumed in noisy environments such as bars and restaurants contributing to a possibility of confusion, since it is easy to overhear minor differences between the sounds of the words. This increases the importance of the aural similarity of the signs, which is due to the shared pronunciation of three out of four words, respectively ‘LOVE BEER, LOVE (…)’. This is further reinforced by an average level of attention of the end consumer in relation to the goods at question, which in general are mass produced goods commonly available.
This finding is equally valid even in the case where the common word elements ‘LOVE BEER’ could be per se weak which does not automatically prevent that there is a likelihood of confusion. Although the distinctive character of the earlier mark and the common elements must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark or a common element of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13/12/2007, T-134/06, 'Pagesjaunes.com').
Moreover, considering that average consumers rarely have the chance to make a direct comparison between different marks, but must place their trust in their imperfect recollection of them, the Opposition Division considers that the visual, aural and conceptual coincidences between the signs are sufficient to lead to a likelihood of confusion between the marks for the public in the relevant territory.
Article 8(1)(b) CTMR states that, upon opposition, a CTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).
Indeed, in the present case, consumers may legitimately believe that the contested trade mark, ‘LOVE BEER, LOVE RUNNING’, is a new version or a brand variation of the earlier mark/slogan, ‘LOVE BEER. LOVE LIFE.’ used to indicate a specific advertising, or marketing slogan for the goods at issue. Consequently, they would assume that the respective goods come from the same undertaking or from economically-linked undertakings. In other words, consumers may confuse the origins of the conflicting goods.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
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 previous cases referred to by the applicant are not relevant to the present proceedings. In this regard, the conflicting signs ‘LOVE DIAMONDS’ /‘WISH DIAMONDS’ ‘ (B 965 816); the conflicting marks at issue were clearly marked as conceptually dissimilar. Therefore, the circumstances surrounding the comparison of signs in the opposition proceedings mentioned by the opponent are not met in the present case as to reach the same conclusion.
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.