OPPOSITION No B 2 533 985
Red Bull GmbH, Am Brunnen 1, 5330 Fuschl am See, Austria (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)
a g a i n s t
Jörg Thurm, Coebergerstraat 49, 2018 Antwerpen, Belgium (applicant), represented by Alexander Plath, Hofweg 58, 22085 Hamburg, Germany (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods and services of
European Union trade mark application No
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 Austrian trade mark registration No 277 453.
The goods and services
The goods and services on which the opposition is based are the following:
Class 32: Non-alcoholic beverages; soft drinks; energy drinks; whey beverages; refreshing drinks; hypertonic and hypotonic drinks (for use and/or as required by athletes); isotonic beverages; beers; malt beers; wheat beers; porter; ale; stout; lager; mineral waters; table waters and aerated waters; fruit beverages and fruit juices; non-alcoholic vegetable or fruit juice beverages and non-alcoholic fruit extracts; syrups and other preparations for making beverages and syrups for lemonade; pastilles and powders for effervescing beverages; non-alcoholic aperitifs and cocktails; sherbets [beverages]; smoothies.
Class 33: Alcoholic beverages (except beers); hot and mixed alcoholic drinks; alcoholic energy drinks; mulled wines; distilled beverages; pre-mixed alcoholic beverages, other than beer-based; alcoholic beverages containing fruit and alcoholic fruit extracts; wines; ciders; spirits [beverages] and liqueurs, including gin, rum, vodka, whisky, brandy; alcoholic essences and extracts for making beverages; cocktails and aperitifs; bitters.
Class 35: Advertising; sales promotion for others; arranging of advertising events and space; distribution of goods for advertising purposes; layout services for advertising purposes; on-line advertising on a computer network; rental of advertising time on communication media; news clipping services; business organization consultancy; business management; business administration; office functions; rental of vending machines; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods; compilation of statistics; sponsorship search; commercial administration of the licensing of the goods and services of others; administrative processing of purchase orders; updating of advertising material; dissemination of advertising matter; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; business information; commercial information agencies; compilation of information into computer databases; systemization of information into computer databases; public relations; publication and writing of publicity texts; radio advertising; production of radio and television commercials; rental of advertising space; television advertising; outdoor advertising; demonstration of goods; presentation of goods on communication media for retail purposes; sales promotion for others; commercial information and advice for consumers; opinion polling.
The contested goods and services are the following:
Class 32: Non-alcoholic beverages; Isotonic beverages; Energy drinks.
Class 33: Alcoholic beverages (except beer); Spirits [beverages]; Alcoholic energy drinks.
Class 35: Advertising.
Contested goods in Class 32
All the contested goods, non-alcoholic beverages; isotonic beverages; energy drinks, are identically contained in the opponent’s list of goods.
Contested goods in Class 33
All the contested goods, alcoholic beverages (except beer); spirits [beverages]; alcoholic energy drinks, are identically contained in the opponent’s list of goods.
Contested services in Class 35
The contested advertising is identically contained in the opponent’s list of 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, some of the goods and services found to be identical are directed at the public at large and some are more specialised services directed at business customers with specific professional knowledge or expertise.
Therefore, in the light of the nature of the goods and services in question, the awareness of the professional public will vary from average to high.
Earlier trade mark
The relevant territory is Austria.
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 earlier mark is a figurative mark composed of the words ‘Red Bull’ in bold black title case letters.
The contested sign is a figurative mark composed of the words ‘Mad Bull’ in bold white upper case letters and, above this verbal element, a figurative element depicting a bull’s head in purple, black and white. All the elements are placed inside a purple circle and against a black background.
The word ‘Red’ of the earlier mark has no meaning in German. However, since it is a basic English word, it may be understood by consumers with a basic knowledge of English as meaning ‘something that is ... the colour of blood or fire’ (see Collins English Dictionary online). The coinciding word ‘Bull’ has no meaning in German. However, since the word ‘Bull’ is very similar to its German equivalent, ‘Bulle’, it is reasonable to assume that it may be understood by a significant proportion of the Austrian public as meaning ‘a male animal of the cow family’ (see Collins English Dictionary online). Furthermore, the device in the form of a bull in the contested sign evokes the concept of a bull and reinforces this concept. The word ‘mad’ in the contested sign is a German masculine noun meaning ‘military intelligence service of the Federal Republic’ (http://www.duden.de/).
Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Visually, the signs coincide in the word ‘BULL’. They differ in the depiction of a bull’s head that appears in the contested mark and in the presence of the word ‘RED’ as the first element in the earlier sign; the counterpart of this element in the contested mark is ‘MAD’. Moreover, the signs differ in the remaining figurative elements, described above.
The marks are visually similar to a low degree.
Aurally, the pronunciation of the marks coincides in the sound of the word ‘BULL’. The pronunciation differs in the sound of the word ‘RED’ in the earlier sign versus the sound of the word ‘MAD’ in the contested mark.
The marks are aurally similar to an average degree.
Conceptually, bearing in mind the concepts conveyed by the elements contained in the marks, as described above, the marks are conceptually similar to an average degree in as much as they both refer to the concept of a bull.
As the signs have been found similar in at least one aspect of the comparison, 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.
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 and services 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
A likelihood of confusion (including a likelihood of association) 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.
According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22).
In the present case, the goods and services are identical and the degree of attention of the relevant public varies from average to high.
The marks are visually similar to a low degree and aurally and conceptually similar to an average degree.
The beginnings of the signs differ, as in the contested sign the coinciding word ‘bull’ follows the word ‘MAD’ and in the earlier mark it follows the word ‘RED’. Consumers are used to reading from left to right and from top to bottom and, therefore, they will generally focus on the first or top element of a sign when encountering a trade mark; however, taking the signs in their entirety, the differing first elements are not sufficient to differentiate the signs as a whole. The overall impressions created by the signs are similar due to the commonalities in the element ‘BULL’ and in the structure of the signs’ verbal elements (two words in each sign).
However, although more attention is usually paid to the beginning of a sign, ECJ case law indicates that generally it does not matter much whether the coinciding element is the first or the second element of the mark. This is because the earlier mark is protected not only against the later mark being understood as referring to the contested goods, but also against the earlier mark being taken as referring to the applicant’s goods (26/01/2006, T‑317/03, Variant, EU:T:2006:27).
The relevant consumers might be led, therefore, by the visual, aural and conceptual similarities resulting from the word ‘BULL’, to believe that the identical goods and services covered by the marks come from the same undertaking or economically linked undertakings. Taking into account all the circumstances of the case, the differences between the signs are not sufficient to counteract their similarities and to safely exclude a likelihood of confusion, even taking into account the higher degree of attention on the part of the relevant public in relation to the more specialised services. It can reasonably be concluded that consumers will not be able to distinguish the marks in dispute and will perceive them as having the same origin.
Considering all the above, the Opposition Division finds 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 Austrian trade mark registration No 277 453. It follows that the contested trade mark must be rejected for all the contested goods and services.
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/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 abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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 ground of the opposition, namely Article 8(1)(5) EUTMR.
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, he 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.
The Opposition Division
Isabel DE ALFONSETI
Victoria DAFAUCE MENÉNDEZ
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.