OPPOSITION No B 2 586 199

António Manuel Malheiro Coelho Lima, Lugar de S. Roque, 4850-505, Vieira do Minho, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

Zimmermann-Graeff & Müller GmbH, Barlstr. 35, 56856 Zell/Mosel, Germany (applicant), represented by Rechtsanwältem, Rohwedder & Partner, Kaiserstr. 74, 55116 Mainz, Germany (professional representative).

On 22/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 586 199 is partially upheld, namely for the following contested goods:

Class 32: Non-alcoholic beverages; preparations for making beverages.

Class 33: Alcoholic beverages (except beer).

2. European Union trade mark application No 14 356 117 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 356 117. The opposition is based on Portuguese trade mark registrations No 491 427 and No 495 892. The opponent invoked Article 8(1)(b) EUTMR.

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 Portuguese trade mark registration No 495 892.

1. The goods

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

Class 32: Beer; Malt beer.

The contested goods are the following:

Class 32: Non-alcoholic beverages; preparations for making beverages.

Class 33: Alcoholic beverages (except beers); preparations for making alcoholic beverages.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 32

The contested non-alcoholic beverages, such as fruit drinks, fruit juices, mineral and aerated waters, and the opponent’s beers and malt beer have the same purpose and are often sold side by side both in shops and bars and on drinks menus. These goods target the same public, may be in competition and may also be produced by the same manufacturer. Therefore, they are similar to a high degree.

Furthermore, the contested preparations for making beverages are ingredients used in beverages, for example syrups. The opponent’s beer and syrups are often sold next to each other in shops. While the methods of use are different (i.e. the contested goods cannot be consumed straight away whereas the opponent’s beers are ready to drink), the goods may target the same public and they can have the same distribution channels. Therefore, these goods are similar to a low degree.

Contested goods in Class 33

The contested alcoholic beverages (except beers) are similar to an average degree to beer and malt beer. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. Beers and alcoholic beverages can, furthermore, be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Likewise, they can originate from the same undertakings.

Preparations for making alcoholic beverages and the opponent’s beer and malt beer are not complementary or in competition. They differ in nature, purpose and method of use. Therefore, the Opposition Division finds these goods to be dissimilar.

2. 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 to various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 consisting of several elements, namely the abbreviation ‘BBQ’ written in standard upper case black and bold letters, with a slight ‘shadowing’ effect, and the word ‘BEER’ written below it. The verbal elements in the mark are placed against a stylised rendition of a landscape of a gold-coloured wheat field, with green hills and a blue sky in the background, and a red and white table cloth at the bottom.

The contested sign is also a figurative mark containing the verbal elements ‘BBQ’ and ‘WINE’ in light green or turquoise upper case letters, with ‘BBQ’ having a three-dimensional effect. The verbal elements of the mark are, furthermore, placed upon a dark beige background, which has a slightly ‘worn out’ effect. Above the verbal elements of the contested mark, there is a black and white figurative depiction of a small figurative device, which in the light of the relevant goods will not be associated with any meaning, and a label displaying five stars. Finally, there is a black curly line at the bottom of the mark.

The verbal element ‘BBQ’ is not a commonly used abbreviation in Portuguese and will be perceived as having no known meaning for the relevant goods in Classes 32 and 33. Therefore, ‘BBQ’ has a normal degree of distinctiveness. The applicant’s arguments in this regard are addressed further in section e) of this decision.

The verbal element ‘BEER’, however, will be perceived as a descriptive element for alcoholic beverages by the relevant public in Portugal. ‘Beer’ is a basic English word that will be understood by the relevant public for alcoholic beverages in Portugal. It is, for example, quite common to import beer from the United Kingdom and other English-speaking countries to countries throughout the European Union. This emphasises the fact that beer is a word easily understood in a significant part of the European Union, including Portugal.

The element that will have the strongest impact on the consumer is in both marks ‘BBQ’, as in each case it stands out visually (is visually eye-catching) and is distinctive, while the other elements of the marks have less importance in the overall perception of the signs, for the following reasons. In the earlier mark, the figurative elements have little distinctiveness, as they are purely decorative (the background and frame), and the use of a landscape including a wheat field, in particular, will be associated with the products in question, since beer can be made from wheat. Furthermore, 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). In the contested mark, the verbal element ‘WINE’ is non-distinctive or weak in relation to the goods at issue, as it is a basic English word, which will be understood as descriptive for goods relating to beverages (indicating either the kind of goods or goods that can be used by mixing with wine). The figurative elements are either less distinctive (e.g. the label with five stars, which could be perceived as a claim of high quality) or visually non-dominant (e.g. the small black figurative device). These figurative elements are, therefore, less likely to be recalled or referred to simply because they are figurative (for the reasons explained above).

Visually, the signs coincide in the element ‘BBQ’, which is the most prominent element in both marks, for the reasons explained above. The signs differ in all the figurative elements, and the descriptive word elements ‘BEER’ and ‘WINE’ are of less importance, as explained above.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘BBQ’, which are identically present in both signs, and differ in the sound of the words ‘BEER’ and ‘WINE’, which might be pronounced but, due to their weak distinctiveness, have little impact.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the relevant public will not perceive a concept in the most prominent element in both signs, ‘BBQ’. Both signs convey different concepts, namely the concepts of a landscape and of the word ‘BEER’ in the earlier mark and the concepts of a five-star label and a word ‘WINE’ in the contested mark. However, these concepts are of little distinctiveness and will have little influence on the conceptual comparison of the signs.

Therefore, the signs are not conceptually 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.

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 element ‘BBQ’ does not have any meaning for 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, despite the presence of some non‑distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the goods are similar to various degrees and the signs are visually similar to an average degree, aurally similar to a high degree and conceptually not similar.

The signs have the element ‘BBQ’ in common. This is the dominant element in the earlier mark, and the most conspicuous element in the contested mark, as the rest of the elements in the two marks are either less distinctive or less likely to be recalled simply because they are figurative.

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). Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In addition, account must be taken of the market reality when purchasing the at least some of the goods at issue, such as beers or other beverages. It has been confirmed by the case law that the aural aspect of the signs plays a greater role in the purchase of such products. In the present case, the signs are aurally similar to a high degree.

Bearing in mind the foregoing, the Opposition Division considers that the fact that both marks contain the same prominent element, despite the additional elements of both signs, is likely to lead consumers to believe that the similar goods at issue originate from the same manufacturer or related manufacturers. The abbreviation ‘BBQ’ will not be perceived as having a meaning for the goods in question, and the average consumer of the relevant goods in Classes 32 and 33, paying an average degree of attention during the purchase of these goods, is likely to at least associate the signs with each other. The similarity between the signs is such that it is likely to lead the consumers to confuse them even in relation to the goods found to be similar to a low degree.

In its observations, the applicant argues that Portuguese consumers are accustomed to the abbreviation ‘BBQ’ meaning ‘barbecue’. As a consequence, they will perceive ‘BBQ’ as merely descriptive for the relevant goods, meaning that these goods are suitable to consume at a barbecue. The applicant also points out that previous EUTM application No 14 356 117, ‘BBQ WINE’, was rejected because of lack of distinctiveness for the same goods in Classes 32 and 33 as in the contested application. Finally, the applicant has submitted examples from Portuguese advertisements and extracts from websites that allegedly show that ‘BBQ’ is used in a descriptive way in Portugal for goods such as crisps and for restaurant services.

The relevant territory in this case is Portugal, whereas it was the English-speaking part of the public that was relevant in EUTM application No 14 287 262 when it was refused as being descriptive. The assessment and the outcome of the earlier EUTM application are, therefore, not comparable to this case, even though that EUTM application concerns similar signs and identical goods. Furthermore, the language of proceedings in the present case is English, and the examples submitted by the applicant are in Portuguese. The Opposition Division cannot, therefore, take those examples into account in its assessment of whether or not the relevant public in Portugal will perceive ‘BBQ’ as a descriptive abbreviation. That said, the Opposition Division cannot see that the examples submitted by the applicant demonstrate any use of ‘BBQ’ in connection with the goods in question, such as beer.

Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 495 892.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) (b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on Portuguese trade mark registration No 491 427 for the figurative mark

, registered for wines in Class 33.

As Opposition No B 2 586 199 is partially upheld for the contested goods, it remains necessary to examine the likelihood of confusion only in relation to the contested goods that were found to be dissimilar.

The contested preparations for making alcoholic beverages in Class 33 and the opponent’s wines are not complementary or in competition. They differ in nature, purpose and method of use. The Opposition Division finds the same reasoning as mentioned in section a) to be applicable for wines as for beer; malt beer.

Therefore, the Opposition Division finds the contested goods in Class 33 to be dissimilar to the goods covered by the opponent’s Portuguese trade mark No 491 427.

Therefore, as similarity of goods and services is a necessary condition for the application of Article 8(1) (b) EUTMR, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michal KRUK

Christian RUUD

Vita VORONECKAITE

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.