OPPOSITION No B 2 637 901

Font Salem, S.L., Ptda. del Fronton, s/n, 46843 Salem Valencia, Spain (opponent), represented by Despacho González-Bueno S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Wielobranżowe Przedsiębiorstwo Export-Import Wajdlejt Zygmunt Wajdlejt, Szkolna 9ª, 14-500 Braniewo, Poland (applicant), represented by Bogdan Niesiobędzki, Lubartowska 2, 82-300 Elbląg, Poland (professional representative).

On 25/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 637 901 is upheld for all the contested goods, namely:

Class 33: Spirits [beverages]; spirits and liquors; alcoholic punches; extracts of spiritous liquors; alcopops; low alcoholic drinks; alcoholic essences; alcoholic extracts; low-alcoholic wine; preparations for making alcoholic beverages; alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based.

2. European Union trade mark application No 14 682 314 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 682 314, namely against all the goods in Class 33. The opposition is based on Spanish trade mark registration No 2 113 773. 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.

1. The goods

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

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

The contested goods are the following:

Class 33: Spirits [beverages]; spirits and liquors; alcoholic punches; extracts of spiritous liquors; alcopops; low alcoholic drinks; alcoholic essences; alcoholic extracts; low-alcoholic wine; preparations for making alcoholic beverages; alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based.

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 33

The contested low-alcoholic drinks; low-alcoholic wine; alcoholic beverages (except beers) are similar to the opponent’s beers in Class 32. 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. These drinks can 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.

The contested spirits [beverages]; spirits and liquors; alcoholic punches; alcopops and pre-mixed alcoholic beverages, other than beer-based are various alcoholic beverages that target the general public. To this extent, they have the same nature as the opponent’s beers in Class 32. Moreover, they can be distributed through the same channels of trade and target the same consumers. These goods are, therefore, also similar.

Furthermore, the contested preparations for making alcoholic beverages are similar to the opponent’s other preparations for making beverages in Class 32. These goods have the same nature and method of use. Furthermore, these goods have the same distribution channels, they target the same relevant public and they are produced by the same companies.

Finally, the contested extracts of spirituous liquors; alcoholic essences and alcoholic extracts are various types of preparations used for making alcoholic beverages. To this extent they are of the same nature as other preparations for making beverages covered by the earlier mark and have the same method of use. They can target the same consumers, originate from the same manufacturers and be distributed through the same sales outlets. These goods are, therefore, also similar to the opponent’s other preparations for making beverages in Class 32.

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

3. The signs

KOPERWIEK	KOPERNIK
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 word mark, ‘KOPERWIEK’. The earlier mark does not have a meaning and will be perceived as a fanciful term by the relevant public. Therefore, ‘KOPERWIEK’ is of normal distinctiveness for the relevant goods.

The contested sign is also a word mark, namely ‘KOPERNIK’. For the relevant goods, this word does not have a meaning, although part of the public might associate it with the Polish mathematician and astronomer Nicolaus Copernicus (1473-1543), due to the aural similarity between ‘KOPERNIK’ and the Spanish version of Copernicus, namely Copérnico. The word ‘KOPERNIK’ of the contested mark is, therefore, of normal distinctiveness.

Visually, the signs coincide in their first five letters, ‘KOPER*’. The fact that the first parts of the marks are identical is particularly important, considering that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. The signs also coincide in the letter ‘I’ (albeit placed in different positions in the marks) and in that they both end with the letter ‘K’. The Opposition Division considers that, for the relevant public, the two ‘K’s contained in each sign will be particularly visually striking (because in Spanish it is more usual to use a ‘C’ before or after a vowel). The signs differ in that the earlier mark contains one more letter than the contested sign: the earlier mark contains nine letters and the contested sign contains eight. Furthermore, the signs differ in that the earlier mark contains the letters ‘W’ and ‘E’, and the contested sign contains the letter ‘N’. Overall, in view of the above considerations, the Opposition Division finds the signs visually similar to a high degree.

Aurally, the signs coincide in their first two syllables (i.e. ‘/KO/’ and ‘/PER/’) and in the number of syllables (both signs are pronounced as three syllables). Both signs also end with the sound of the letter ‘K’. They differ in the sounds of the letters in their final syllables, even though the final syllables of both signs contain a letter ‘I’. Overall, the Opposition Division finds the signs aurally similar to a high degree.

Conceptually, for the part of the public in the relevant territory that associates the contested sign with the astronomer Nicolaus Copernicus, the signs are not conceptually similar, because the earlier mark does not have a meaning in Spanish. For the remaining part of the public, for which neither sign conveys a concept, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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 earlier trade mark has 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 mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the relevant goods are similar.

The signs are visually and aurally highly similar. Moreover, while part of the public might associate the contested sign with Nicolaus Copernicus, for another part both signs will be perceived as coined words, as explained in section c) above.

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). In the present case, it is considered that the differences between the signs are insufficient to counterbalance the similarities and, consequently, the public in the relevant territory is likely to think that the goods in question, if they bear the marks at issue, come from the same undertaking or, as the case may be, economically linked undertakings.

Considering all the above and also taking into consideration the principle of interdependence (according to which a higher degree of similarity between the signs outweighs a lower degree of similarity between the goods or services and vice versa), the Opposition Division finds that there is a likelihood of confusion on the part of the relevant Spanish public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 113 773. It follows that the contested trade mark must be rejected for all the contested 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.

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

According to Rule 94(3) 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

Edith Elisabeth VAN DEN EEDE

Christian RUUD

Oana-Alina STURZA

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.