CANCELLATION No 12 295 C (INVALIDITY)

Peter Mulryan, Knockmourne Forge, Conna, Cork, Ireland (applicant), represented by André Thompson, Bishopsfield, Williamstown, Waterford City, Ireland (professional representative)

a g a i n s t

Blackwater Irish Spirits Limited, Headborough, Knockanore, County Waterford, Ireland (EUTM proprietor), represented by Niall Patrick, FP Logue Solicitors 8-10 Coke Lane Smithfield, Dublin 7, Ireland (professional representative).

On 19/05/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 13 105 622 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

On 23/12/2015, the applicant filed an application for a declaration of invalidity against European Union trade mark No 13 105 622 ‘BLACKWATER IRISH SPIRITS’ (‘the contested EUTM’) (word mark), filed on 22/07/2014 and registered on 12/10/2015. The request is directed against all the services of the contested EUTM, namely:

Class 35: Retail services relating to distilled spirits, alcoholic spirits, whiskey, gin, vodka, liqueurs, whiskey-based liqueurs and cream liqueurs.

Class 40: Distilling; distilling services; distillery services; distilling of spirits; distilling of spirits for others.

The application is based on Irish trade mark registration No 253 861 ‘Blackwater Gin Blackwater Vodka Blackwater Whisky’ (a series of three word marks), registered on 09/04/2014, for alcoholic beverages (except beer) in Class 33. The application for invalidity is based on all the goods claimed in Class 33.

The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the conflicting marks are highly similar to the extent that they coincide in the initial term ‘BLACKWATER’, which is the most distinctive element in all the signs. He further adds that the contested registration covers services in Classes 35 and 40 that are similar to the earlier goods in Class 33, since the formers specifically relate to the production and sale of the latters. Therefore, according to the applicant, there exists a likelihood of confusion, which also includes a risk of association between the marks.

In support of his observations, the applicant filed, inter alia, the following evidence:

• Exhibit 1: Extracts form the website www.blackwater.ie providing general information on the Blackwater Valley and the River Blackwater in Ireland.

• Exhibit 2: Extracts from the Wikipedia page dedicated to the river ‘Munster Blackwater’.

The EUTM proprietor did not file any observations in reply.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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.

1. The goods and services

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 goods and services on which the application is based are the following:

Class 33: Alcoholic beverages (except beer).

The contested services are the following:

Class 35: Retail services relating to distilled spirits, alcoholic spirits, whiskey, gin, vodka, liqueurs, whiskey-based liqueurs and cream liqueurs.

Class 40: Distilling; distilling services; distillery services; distilling of spirits; distilling of spirits for others.

Contested services in Class 35

According to the case law, retail services concerning the sale of particular goods are similar to a low degree to those particular goods (05/10/2011, T 421/10, Rosalia de Castro, EU:T:2011:565, § 33).

In the case at hand, the object of the retail services of the contested mark, namely distilled spirits, alcoholic spirits, whiskey, gin, vodka, liqueurs, whiskey-based liqueurs and cream liqueurs, are all included in the broad category alcoholic beverages (except beer) of the Irish registration and, therefore, they are identical to the earlier goods in Class 33. Although the nature, purpose and method of use of the conflicting goods and services are not the same, the fact that the contested retail services and the earlier goods are offered at the same (retail) outlets is a relevant factor for assessing the similarity between those goods and services (15/02/2011, T 213/09, Yorma’s, EU:T:2011:37, § 31; 11/07/2007, T-443/05, Piranam, EU:T:2007:219, § 37; 22/03/2007, T-364/05, Pam Pluvial, EU:T:2007:96, § 95). Furthermore, the goods and services at hand are complementary to each other and target the same public. Consequently, the contested retail services relating to distilled spirits, alcoholic spirits, whiskey, gin, vodka, liqueurs, whiskey-based liqueurs and cream liqueurs are considered to be similar to a low degree to the earlier alcoholic beverages (except beer).

Contested services in Class 40

The contested services distilling; distilling services; distillery services; distilling of spirits; distilling of spirits for others refer to a process aimed at producing distilled spirits, namely alcoholic beverages such as those covered by the applicant’s registration. The same company that renders the contested services may, at the same time, elaborate and sale the earlier goods to end-consumers or retailers. Therefore, the conflicting goods and services may have the same origin and distribution channels. These services are, therefore, similar to a low degree to the applicant’s alcoholic beverages (except beers) in Class 33.

2. Relevant public — degree of attention

For the purposes of the global appreciation, the average consumer of the category of the goods and services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

In the present case, the earlier goods in Class 33 and the contested retail services in Class 35 are targeted at the public at large, who is reasonably well informed and reasonably observant and circumspect with an average level of attention. Consumers will display a normal level of attentiveness for those goods and services. The remaining services in Class 40 are directed at both the general public and business consumers in the field of alcoholic beverages, whose degree of attentiveness is average.

3. The signs

Blackwater Gin Blackwater Vodka Blackwater Whisky	BLACKWATER IRISH SPIRITS
Earlier trade mark	Contested trade mark

The relevant territory is Ireland.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The conflicting marks are purely word signs and, as such, they lack dominant elements.

The applicant’s evidence shows that the common word ‘BLACKWATER’ refers to the name of an Irish river. The documentation suggests that the river and the valley around it are “notable for being one of the best salmon fishing rivers in the country” and, in general, for being a touristic destination. Since there is nothing on file indicating that the Irish public will perceive any specific association between the term ‘BLACKWATER’ and the alcohol industry, this element is deemed to be inherently distinctive in respect with the relevant goods and services.

Further, as correctly argued by the applicant, the word ‘BLACKWATER’ will be perceived as the most distinctive element of the signs at issue. Indeed, the remaining terms ‘Gin’, ‘Vodka’ and ‘Whiskey’, in the earlier registration, and ‘Irish Spirit’, in the contested EUTM, are descriptive of both the earlier goods in Class 33 and the object of the contested services in Classes 35 and 40. Consequently, those descriptive elements will not attract the consumer’s attention.

Visually, the signs coincide in the term ‘BLACKWATER’ that is the most distinctive element of the conflicting marks and forms their beginning, which is normally the part that attracts more the public’s attention (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, §§ 64-65). They differ in the terms ‘Gin’, ‘Vodka’ and ‘Whiskey’ of the earlier registration and in the expression ‘Irish Spirit’ of the contested EUTM. Nonetheless, since those differences lay on descriptive elements, the fact that the marks share the same initial part and the most distinctive element leads to a high degree of visual similarity.

The same considerations apply to the aural comparison of the signs at hand. Indeed, their pronunciation coincides in the syllables “BLACK/WA/TER” present identically in all marks, while it differs in the sound of the descriptive words ‘Gin’, ‘Vodka’ and ‘Whiskey’, in the earlier registration, and ‘Irish Spirit’, in the contested EUTM. Consequently, the aural similarity between the marks is deemed to be ‘high’ in the view of the relevant public.

Conceptually, there is a clear semantic link between the signs as they all contain the name of the Irish river Blackwater, which will be perceived as such by the Irish relevant public. Further, the terms ‘Gin’, ‘Rum’ and ‘Whisky’ of the earlier registration convey almost the same concept of the ‘Irish spirits’ of the contested EUTM. Therefore, the signs are conceptually highly similar.

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.

Since the applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

In the present case, as explained above, the element ‘BLACKWATER’ has no meaning in connection with the goods in Class 33 from the perspective of the Irish consumers. Therefore, the distinctiveness of the earlier mark as a whole must be seen as normal in relation with alcoholic beverages (except beer), despite the presence of the descriptive terms ‘Gin’, ‘Vodka’ and ‘Whiskey’.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T 6/01, Matratzen, EU:T:2002:261, § 25). Moreover, the average consumer only rarely has the chance to make a direct comparison between the different marks, but must rely on his imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The relevant public, in respect of which the likelihood of confusion must be assessed, is composed of the public at large and business customers displaying an average degree of attention. The conflicting goods and services have been found to be similar to a low degree.

According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). This condition is fulfilled in the case at issue. Indeed, the comparison of the signs has shown that the marks at hand display a high degree of visual, aural and conceptual similarities to the extent that they share the common element ‘BLACKWATER’, which is the most distinctive element of the signs.

The presence of the remaining words - ‘gin’, ‘rum’ and ‘whisky’ in the earlier registration and ‘Irish spirits’ in the contested EUTM - are not likely to influence the consumer’s perception for the reasons stated previously and does not put into question the overall similarity between the marks. Rather, the relevant public will tend to focus on the first coinciding element ‘BLACKWATER’, which is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

In light of all the foregoing, taking into account the relevant factors and their mutual interdependence, especially the fact that the high degree of similarity between the marks compensates for the low degree of similarity that was found between the goods and services under comparison, the Cancellation Division considers that a significant part of the relevant public in the Irish territory may be misled into thinking that the contested services provided under the contested EUTM and the goods bearing the earlier mark come from the same undertaking or, as the case may be, from undertakings that are economically linked.

Therefore, the cancellation application is fully successful on the basis of the applicant’s Irish trade mark registration. It follows that the contested EUTM must be cancelled for all the contested services.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Andrea VALISA

Karin KUHL

Michaela SIMANDLOVA

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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 Cancellation 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.