OPPOSITION No B 2 432 352

Rives Pitman S.A., Aurora, 4, 11500, Puerto de Santa Maria (Cádiz), Spain (opponent), represented by Rodolfo de la Torre S.L., C/ San Pablo, nº15-3º, 41001, Seville, Spain (professional representative)

a g a i n s t

Cerveceros Garage SLU, Carrer Consell de Cent, 261, 08011, Barcelona, Spain (applicant), represented by Freeman Harris Solicitors, 6 Sutton Street, London E1 0BB, United Kingdom (professional representative).

On 10/05/2018, the Opposition Division takes the following


1. Opposition No B 2 432 352 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.


As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.


The opponent filed an opposition against all the goods of European Union trade mark application No 13 134 002 , namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 1 712 140 for the word mark ‘RIVES’ and Spanish trade mark registrations No 74 495 and No 972 491 for the word mark ‘RIVES’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.


On 23/01/2017, the opponent submitted a batch of documents to substantiate its claim of reputation for the earlier trade marks. The evidence consists of the following:

Document 1: extracts listing trade marks (registrations and applications) owned by the opponent, in particular Spanish trade marks, international registrations and EUTMs registered for goods in Classes 32 and 33 and containing the verbal element ‘RIVES’.

Documents 2-4: tables of figures concerning the opponent’s advertising expenditures (Annex I), including merchandising and promotions, and total sales (Annex II) for 2006-2010 and 2011-2015. The tables are accompanied by translations into English.

Documents 5 and 6: a certifying document concluding on the reputation of the opponent’s marks ‘RIVES’ based on evidence submitted before the issuing body, namely the Spanish Association for the Protection of Trade Marks (ANDEMA). The document is accompanied by a translation into English. According to the opponent, the brand ‘Rives’ has been present on the Spanish and international market for over 130 years and is used mainly for distilled spirits, liqueurs and soft drinks.

Documents 7 and 8: a certificate confirming the recognition and awareness of the opponent’s trade marks ‘RIVES’, issued by the Official Chamber of Commerce, Industry, Services and Navigation of Cádiz, based on evidence previously submitted before the Chamber. The certificate is accompanied by an English translation.

Documents 9-14: various advertising materials and brochures promoting the opponent’s goods bearing the marks ‘RIVES’, mostly gins, for instance:

, and .

As can be deduced from the evidence submitted, the opponent has sponsored a few local sporting and entertainment events such as the Ruta Gin Tonic (Seville), music concerts (Torremolinos and Cordoba) and nautical regattas (Cadiz). Furthermore, according to the brochures, one of the opponent’s products (Rives London Gin) also won silver medals at the International Wine & Spirits Competition (IWSC) and the San Francisco World Spirits Competition in 2013.

Documents 15-18: copies of various advertisements and newspaper articles related to the mark ‘RIVES’ (in both Spanish and English):

  • Rives busca el nicho que dejan multinacionales como Beefeater’, dated 03/04/2013, published in the Spanish newspaper Expansión (in Spanish).

  • Rives apuesta por las marcas Premium y los mercados emergentes’, dated 01/12/2009, published in Alimentación Alimarket, www.alimarket.es (in Spanish).

  • Spirits review, Gin in Europe’, dated 20/07/2015, published in The IWSR Magazine, www.theiwsr.com (in English). The opponent’s brand of alcoholic beverages, in particular gin, ‘RIVES’ appears in a table headed ‘Gin: top 10 brands in Europe’, where it occupies the 10th position. The figures illustrate the amounts sold in 2010, 2013 and 2014.

  • Furor por el Gin Tonic’, dated 23/11/2009, published in El Diario Vasco (in Spanish), in which the opponent’s Gin Rives Premium is commented on and depicted alongside competitors on the market.

Furthermore, on 22/05/2017, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 27/07/2017 to submit evidence of use of the earlier trade marks at the request of the applicant. On 25/07/2017, within the time limit, the opponent submitted evidence of use to be taken into account in the assessment of genuine use of its earlier marks, namely:

Documents 1-7: 40 copies of invoices issued by the opponent between 14/05/2009 and 10/11/2014 and addressed to various clients in Spain, in particular in Alicante, Cordoba, Malaga, Barcelona, Valencia, Leon, Lugo, Zaragoza, etc. Eight of the invoices are dated outside the relevant period. The invoices as a whole reflect sales of alcoholic and non-alcoholic goods bearing the mark ‘RIVES’, for instance Love cream licor Rives, Banana Rives, Ginebra Special Rives, Kiwi Rives, Avellana Sin Rives, Melocoton Rives, Granadina Rives, Blue Rives Vodka and Mora sin Rives. The set of invoices is accompanied by an invoice template translated into English.

Documents 8 and 9: price lists for ‘RIVES’ goods for 2009-2014. The price lists demonstrate a wide range of goods that the opponent offers under the mark ‘Rives’, inter alia gin, vodka (Blue and Red Rives), liqueurs with and without alcohol (‘licor de melocoton’, ‘mora’, ‘avellana’, etc.) and preparations for making drinks. The goods may be cross-checked against the invoices above by means of their product codes. English translations were also submitted.

Documents 10 and 11: extracts from a catalogue of ‘RIVES’ goods from 2013, as well as images showing ‘RIVES’ gins, vodkas, liqueurs with and without alcohol, and fruit juices. The catalogue clearly illustrates the goods referred to as units sold in the invoices and price lists above.


In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark No 1 712 140 and Spanish trade marks No 74 495 and No 972 491.

The contested application was published on 11/08/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Spain from 11/08/2009 to 10/08/2014 inclusive.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Spanish trade mark registration No 74 495

Class 33: All kinds of spirits, aniseed, liquors, alcohol and other products distillery.

Spanish trade mark registration No 972 491 for the word mark ‘RIVES’

Class 32: Syrups for beverages.

EUTM No 1 712 140 for the word mark ‘RIVES’

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

Class 33: Alcoholic beverages (except beers).

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

The assessment of genuine use will be conducted on the basis of all the evidence listed above, as it was submitted within the relevant period for proof of use.

Analysis of the evidence of proof of use

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

All the documents listed above, taken into account as a whole, show that the place of use is mainly Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in Spain, as referred to above in the list of evidence. Therefore, as far as the Spanish trade marks are concerned, the evidence relates to the relevant territory. The earlier EUTM must be used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR). Following 19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 44, Article 18(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the Union. Therefore, bearing in mind that the mark has been used in the territory of Spain, it is considered to have been used in a substantial part of the EU.

Most of the evidence is dated within the relevant period. However, as mentioned above, some of the invoices and the figures mentioned are outdated. Nonetheless, even though this evidence cannot be taken into account, it may support the remaining evidence, which is dated within the relevant period.

The documents filed, namely the invoices, catalogues, price lists and advertising materials, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The opponent demonstrates large sales of its alcoholic and non-alcoholic beverages featuring the marks ‘RIVES’ (including the figurative EUTM) in Spain, as presented in its catalogues and advertising materials. Furthermore, the opponent has also been involved in various promotional events with the main goal of promoting its brand in Spain.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

The evidence submitted to demonstrate the opponent’s product range refers in particular to various types of spirits in Class 33, as well as to various non-alcoholic beverages in Class 32, namely fruit drinks and fruit juices, syrups and other preparations for making beverages. However, no use of the marks ‘RIVES’ was shown for other categories of goods in Class 32 for which the EUTM is registered, in particular water and beers. Therefore, the opponent has proved use only for the following goods:

Spanish trade mark registration No 74 495

Class 33: All kinds of spirits, aniseed, liquors, alcohol and other products distillery.

Spanish trade mark registration No 972 491 for the word mark ‘RIVES’

Class 32: Syrups for beverages.

EUTM No 1 712 140 for the word mark ‘RIVES’

Class 32: Non-alcoholic drinks (except for non-alcoholic beer); fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).


According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

  • The signs must be either identical or similar.

  • The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

  • Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

  1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in Spain and in the EU in connection with all the goods for which they are registered, in particular for other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages in Class 32 and alcoholic beverages in Class 33. The Opposition Division takes into account that in the previous section genuine use was proven for these categories of goods.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 01/08/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain and in the European Union prior to that date.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Self-produced evidence

In principle, information deriving directly from the opponent is unlikely to be enough on its own, especially when the opponent submits internal memoranda or tables of data and figures of unknown origin. In the present case, the opponent submitted two tables of figures (Documents 2-3 in the first batch) illustrating the opponent’s advertising costs for the relevant period, as well as its sales. However, to the extent that these documents originated from the opponent and do not have the character of official documents of annual audits, they will be treated with the necessary caution and may be taken into account only to the extent that they support other documents such as annual reports, invoices for marketing and advertising issued by the opponent or third parties, reports and reviews of advertising campaigns and costs, and marketing plans corroborating the figures in the tables. Nonetheless, the opponent failed to submit such information originating from independent third parties or from verifiable objective sources.

Other registrations of the earlier trade marks

The opponent submitted extracts from a large number of registrations and applications containing the mark ‘RIVES’ (for goods in Classes 32 and 33) around Europe or the world (Document 1 in the first batch). Although the number of registrations of the mark concerning the relevant territory plays a certain role, it is in itself a weak indication of the degree of recognition of the sign by the relevant public. The fact that the opponent has many trade mark registrations in many classes may indirectly attest to the international circulation of the brand, but it cannot in itself decisively prove reputation. Therefore, these extracts will also have a supplementary and supporting role in the assessment of reputation.

Certificates of reputation originating from national and local bodies

In its evidence, the opponent also refers to two documents, issued by two Spanish bodies, namely ANDEMA and the Official Chamber of Commerce, Industry, Services and Navigation of Cádiz.

Opponents in opposition proceedings often invoke certifications by third parties, including national authorities, in order to prove the reputation of earlier marks. Although such certifications are admissible evidence and may have evidentiary value, especially if they originate from a Member State whose territory is also relevant to the opposition (Spain, in the present case), they are not binding on the Office, in the sense that it is not mandatory to follow their conclusions. Moreover, it needs to be differentiated whether the certifications attest facts relevant to the proceedings (in which case they are considered of high reliability) or merely draw and/or confirm conclusions (in which case they need to be treated similar to national court or administrative decisions). Consequently, even though such documents may serve to indicate some level of reputation, their relevance needs to be still analysed. For instance, account must be taken of the fact that there may be differences between the substantive and procedural conditions applicable in the certification proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences in how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence will not necessarily be the same as the weight given to it in the certification proceedings. Also, authorities like the chambers of commerce may be able to take into account, ex officio, facts known to them directly, whereas the Office may not, pursuant to Article 95 EUTMR.

In the present case, the certificates issued by ANDEMA and the Chamber of Commerce in Cadiz certify that the opponent’s brand ‘RIVES’ has acquired reputation on the Spanish market. The Opposition Division notes in particular that the examination and analysis of the respective bodies have evidently been based on sets of evidence that have not been introduced in the present opposition proceedings; the Opposition Division notes that it is not familiar with the content of the evidence submitted before these bodies, as listed, for instance, in the certificates. Consequently, even though their conclusions of reputation cannot be disregarded completely and will be taken into account to a certain extent, they cannot be simply transposed to the present case and have a conclusive character per se.

Press articles, promotional materials and public recognition

The probative value of press articles and other publications will depend mainly on whether such publications are covert promotional matter or the result of independent and objective research. Most of the opponent’s documents taken from publications are obviously advertising materials prepared in relation to various promotional activities in which the opponent’s brand has been involved, including sponsorships, for instance Documents 9-14 in the first batch. However, no definite conclusions may be drawn in respect of the degree of exposure of the public to the advertising messages concerning the mark. Although some advertising materials have been introduced as evidence, they do not serve to give sufficient information about the audience ratings or circulation figures attained by the relevant spots or publications. Documents 15-18 in the first batch introduce the opponent’s goods that are on the market, but without giving a global picture of the public reception and recognition of the brand for the relevant territory. Moreover, some of these press articles have been published in magazines specialised on news about the food and drink market, thus, not addressed to the general public.

One of the brochures gives information about two awards received for the opponent’s Rives London Gin in 2013. In principle, certificates, awards and similar indications of public recognition usually provide information about the history of the mark, or of the quality of the goods sold under it, but as a rule they will not be sufficient in themselves to establish reputation and will be more useful as indirect indications. However, the San Francisco World Spirits Competition 2013 award relates to a context outside the relevant territory and cannot be taken into account. Furthermore, the opponent did not elaborate on the importance of the second award, in the IWSC, the extent of the competition or the professional exposure the brand may have received. None of the evidence explains the role of the abovementioned media, IWSC, in the spirits industry in Spain or the EU.

Of particular interest in the present proceedings is the review in The IWSR Magazine, giving details of gin consumption in Europe and displaying a table of the top 10 gin brands in Europe. Although the review itself is dated outside the relevant period (in July 2015, namely after the filing date of the contested application), it still gives some relevant information about trends on the gin market in Europe in the relevant period between 2010 and 2014. In particular, it refers to Spain as the main consumer of gin in Europe during those years and show that the opponent’s gin is ranked in 10th position in Europe; this information about total consumption, collaborated with the market shares of the brands, as illustrated in the table, may serve to conclude that the marks have, indeed, gained a certain position on the Spanish market due to their use. However, the global reference to the European market would in principle be supporting evidence if the opponent had submitted a breakdown of the figures according to the relevant territories for which it claims reputation, in particular Spain and the EU countries. Such breakdown is missing in the relevant report and only indirect information about the relevant markets may be deduced.

The Opposition Division noted that opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitors’ goods. However, the opponent failed to provide any detailed information that might help the Opposition Division to determine the degree of recognition of the opponent’s brand on the EU or Spanish market.

Therefore, taking into account the evidence as a whole, the Opposition Division considers that the opponent has, indeed, demonstrated that its earlier marks have acquired a certain degree of enhanced distinctiveness through use on the Spanish market in relation to spirits, in particular gin. However, the opponent failed to demonstrate that its earlier marks enjoy reputation in the sense of Article 8(5) EUTMR. Although it is clear that the marks were used particularly on the Spanish market and acquired some degree of enhanced distinctiveness, the evidence at hand does not suffice in the opinion of the Opposition Division for the establishment that the marks are also reputed.

The Opposition Division needs to clarify that even though both terms, ‘enhanced distinctiveness’ and ‘reputation’, are concerned with the recognition of the mark among the relevant public, in the case of reputation a threshold exists below which extended protection cannot be granted, whereas in the case of enhanced distinctiveness there is no threshold. Therefore, a finding of ‘enhanced distinctiveness’ under Article 8(1)(b) EUTMR will not necessarily be conclusive for the purposes of Article 8(5) EUTMR.

In the present case, as concluded above, the opponent failed to prove reputation of its earlier marks. As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have reputation. Since it has not been established that the earlier trade marks have reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground. Nevertheless, the examination will proceed under Article 8(1)(b) EUTMR for all the earlier rights.


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. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The evidence submitted by the opponent to prove the reputation of the earlier trade marks has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings. As established above, the opponent failed to demonstrate that the earlier marks enjoy reputation on the relevant markets. However, the opponent showed its promotional efforts to acquire an enhanced distinctiveness of its marks on the Spanish market in relation to spirits, in particular gin.

However, the assessment of the distinctiveness of the earlier marks for the remaining goods will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal for the remaining goods for which no enhanced distinctiveness has been proven.

  1. The goods

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

Spanish trade mark registration No 74 495

Class 33: All kinds of spirits, aniseed, liquors, alcohol and other products distillery.

Spanish trade mark registration No 972 491 for the word mark ‘RIVES’

Class 32: Syrups for beverages.

EUTM No 1 712 140 for the word mark ‘RIVES’

Class 32: Non-alcoholic drinks (except for non-alcoholic beer); fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 32: Beers.

Beer refers to an alcoholic drink, defined as having an alcoholic strength by volume exceeding 0.5% vol. The term non-alcoholic drink can refer to a non-alcoholic version of an alcoholic drink. As is evident from the proof of use above, the opponent produces various types of non-alcoholic mixed drinks and syrups and preparations for making beverages. However, the opponent did not submit any evidence referring to the manufacture of non-alcoholic beer. Consequently, the contested beers are considered only similar to the opponent’s goods in Classes 32, in particular to non-alcoholic drinks (except for non-alcoholic beer) of the EUTM and syrups for beverages of Spanish trade mark No 972 491, for which the earlier marks enjoy a normal degree of distinctiveness. These goods may have the same purpose, being beverages, and they have the same relevant publics and distribution channels. They are also in competition with each other.

The contested goods are also considered similar to the opponent’s spirits (including gin) of Spanish trade mark No 74 495 and alcoholic beverages (including gin) in Class 33 of the EUTM, as they may have the same nature, relevant public, distribution channels and producers.

  1. 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 similar are directed at the public at large, as well as professional consumers such as bartenders. The degree of attention is considered average.

  1. The signs


Earlier trade marks

Contested sign

The relevant territories are Spain and 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).

The element ‘RIVES’ of the earlier marks is meaningless for the majority of the EU public, and, therefore, distinctive. It must be noted, nonetheless, that it will be perceived as the plural form of the word ‘rive’ in French (meaning ‘shore of a river or a lake’) and, furthermore, it may also allude to similar or other concepts for some of the Danish-, English- and Italian-speaking consumers. It may be further perceived as a Spanish surname by most of the Spanish speakers. Nevertheless, the word is of average distinctiveness in relation to the goods in question, as it does not convey any concept that describes or alludes to the goods.

The word ‘RIBA’ will be meaningless for the vast majority of the Spanish-speaking part of the public. Despite still being noted in dictionaries as meaning ‘land along the edge of a sea, lake, or wide river’ (information extracted on 19/04/2018 from http://dle.rae.es/?id=WRhB4ST), the term is not currently being used by the Spanish public. For the rest of the EU public this verbal element is meaningless. In any event, it is distinctive for the relevant public throughout the EU, including Spain. The other verbal and figurative elements of the sign (‘Garage Beer Co.’, ‘Barcelona’, ‘Cerveza Auténtica de Barcelona’, ‘MMXIV’, etc.) are negligible due to their size and position, compared with the most eye-catching element, ‘RIBA’, and thus will have a minor impact when depicted on a bottle label. In any case, for the Spanish-speaking part of the public, which will understand these elements, they refer, for instance, to a beer named ‘RIBA’ originating from the company Garage Beer Co. in Barcelona and are, therefore, of limited distinctiveness.

Visually, the signs coincide in the letters ‘RI’, which form the beginning of the earlier marks and the first two letters of the dominant element of the contested sign. In principle, consumers 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. However, in the present case, the verbal elements in question differ completely in their endings, namely ‘VES’ versus ‘BA’. Bearing in mind that the contested sign’s dominant element, ‘RIBA’, consists of only four letters, it is considered a relatively short sign. Account must be taken of the fact that consumers tend to note the differences in shorter signs and disregard such differences when perceiving more complex and longer signs. In the present case, given the striking differences in their endings, and bearing in mind the figurative character of the contested sign, the signs are considered visually similar to a low degree.

Aurally, the Spanish-speaking public will pronounce the letters ‛RI(B/V)’ in both marks identically due to the mostly identically pronounced sound of the letters ‘B’ and ‘V’ in Spanish. The pronunciation will, nevertheless, differ in the remaining sounds of the signs, in particular the open sound ‘A’ of the contested sign versus the closed syllable ‘ES’ of the earlier marks, in which the strong sound created by the letter ‘S’ will be particularly noted. Therefore, the signs are aurally similar to an average degree for Spanish speakers.

The signs are, however, aurally similar to a low degree for the remaining parts of the public, which will pronounce the letters ‘B’ and ‘V’ with two different sounds. For the majority of the public, each of the signs will be split into two syllables, the second syllables differing in their pronunciation, as the earlier marks will end in a closed syllable, [RI-VES], and the contested sign will end in an open syllable, [RI-BA]. In addition, for French and English speakers, for instance, the signs will be aurally even less similar because the earlier EUTM will be pronounced as [RIV] or [RAIVS], that is, in one syllable.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As stated above, none of the signs has a meaning for a significant part of the EU public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for these parts of the public. Furthermore, for the parts of the public that perceive a meaning in either of the signs or generally different meanings in them, the signs will be conceptually not similar or dissimilar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

  1. Global assessment, other arguments and conclusion

The goods in question are similar and the degree of attention of the relevant public is considered average. The earlier marks enjoy an enhanced degree of distinctiveness in relation to spirits, in particular gin and are attributed with a normal degree of distinctiveness in relation to the other beverages offered by the opponent.

The similarities between the signs concern the coinciding beginnings of the verbal elements composing the earlier marks and the dominant element of the contested sign, namely ‘RI(V/B)*’. As stated above, these commonalities will be reinforced in the aural perception of the Spanish-speaking consumers due to the identical or similar pronunciation of the consonants ‘V’ and ‘B’; for the remaining parts of the public these sounds have crucially different pronunciation, as previously commented. The findings of aural similarity must be especially considered in the context of the noisy environment in which alcoholic beverages are usually ordered by consumers.

Firstly, account must be taken of the fact that consumers perceive a mark as a whole and do not analyse its individual elements or parts. As explained above, depending on the language, the earlier marks either contain the very strong and audible consonant ‘S’ (particularly in Spanish) in their endings or are pronounced as one syllable only (in French). Consequently, even though the beginnings of the signs may create similar audible impressions, the clear differences at the end of the earlier marks will in itself be capable of preventing a confusing aural similarity, even in bars and restaurants. The different overall perception of the signs will be further reinforced by the fact that for the majority of the Spanish public ‘RIVES’ will be associated with a Spanish surname. As concluded above, it has been demonstrated that the opponent’s marks enjoy enhanced distinctiveness among Spanish consumers in relation to spirits, in particular gin. Nevertheless, even bearing this in mind, the Opposition Division is still of the opinion that the aural similarities are not yet sufficient to lead to a likelihood of confusion on the part of the public, in particular on the Spanish speakers, for which the degree of aural similarity has been considered slightly higher. Given the specificities of the beverage markets in question, the Opposition Division concurs with the applicant’s point of view that, in general, consumers will be able to differentiate between beers and spirits even in noisy environments.

Consequently, the relevant consumers are expected to safely distinguish between beers sold under a mark featuring the element ‘RIBA’ and spirits, for instance gin, sold under the mark ‘RIVES’. Therefore, even bearing in mind the enhanced degree of distinctiveness of the marks ‘RIVES’ in relation to spirits, in particular gin, the commonalities between the signs are not sufficient to lead to any confusion.

The absence of likelihood of confusion applies equally to the remaining parts of the EU public, for which the aural pronunciation of the signs differs thoroughly and/or the conflicting elements may convey distinctive and differentiating concepts. As a result, these parts of the public will perceive the signs as being even less similar.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.


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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Volker Timo MENSING

Manuela RUSEVA

Gueorgui IVANOV

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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