OPPOSITION No B 2 643 172

Nordbrand Nordhausen GmbH, Bahnhofstr. 25, 99734 Nordhausen/Harz, Germany (opponent), represented by Rotkäppchen-Mumm Sektkellereien GmbH, Lucia Schwab, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)

a g a i n s t

Monster Energy Company, 1 Monster Way, Corona, California 92879, United States of America (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, London, EC4A 1JP, United Kingdom (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 643 172 is upheld for all the contested goods.

2. European Union trade mark application No 14 823 306 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 823 306. The opposition is based on European Union trade mark registration No 9 856 352. 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 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 32: Non-alcoholic beverages; beer.

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.

The contested beer is similar to the opponent’s alcoholic beverages (except beers) in Class 33 as they have the same nature. They can coincide in producers, end users and distribution channels.

The contested non-alcoholic beverages are considered similar to a low degree to the opponent’s alcoholic beverages (except beers) in Class 33 as they can coincide in end users, distribution channels and method of use. Furthermore they are in competition.

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

3. The signs

Balle	BALLER’S PUNCH
Earlier trade mark	Contested sign

The relevant territory is 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘PUNCH’ in the contested sign will be understood in Dutch as referring to a wide assortment of drinks both alcoholic and non-alcoholic. Consequently, taking into consideration the goods at hand, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the public.

The signs are word marks and for word marks it is the word as such that is protected and not the written form. Therefore, it is irrelevant whether the sign are represented in upper or lower characters or a combination of those. Furthermore, there are no elements that could be considered clearly more dominant than other elements.

The elements ‘BALLER’S’ of the contested sign and ‘Balle’ of the earlier mark have no meaning whatsoever for this part of the public and are therefore distinctive in relation to the goods in question. Bearing in mind that the relevant goods are beverages, ‘PUNCH’ in the contested sign that will be understood as already explained, has a limited role within the sign due to its non-distinctive character. The applicant argues that ‘PUNCH’ is distinctive for non-alcoholic beverages and beer since it would appear to be unusual. However, nowadays, many recipes for punch containing alcoholic or non-alcoholic mix of beverages exist. Therefore consumers will also understand this word in relation to non-alcoholic beverages and beer.

Therefore, conceptually, although the public in the relevant territory will perceive the meaning of ‘PUNCH’ in the contested sign, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Visually and aurally, the signs coincide in their first five letters, ‘BALLE’ and in their corresponding sound, but differ in the additional letter’s ‘*R’S’ at the end of the first verbal element of the contested sign, and in the second verbal element, ‘PUNCH’, that has no counterpart in the earlier mark but with no distinctive character. As such, it is reasonable to consider that a significant part of the public might choose not to pronounce this last word.

Account is also taken of the fact 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.

Consequently, the signs are aurally similar to a high degree for a significant part of the public and visually to an average degree. For the rest of the public, that will also pronounce the word ‘PUNCH’ of the contested sign the signs are aurally similar to an average degree.

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 as a whole 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

According to settled case-law, 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).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In the case at end the signs are visually similar to an average degree and aurally similar to a high degree for a significant part of the relevant public on account of the fact that the earlier mark is entirely reproduced in the contested sign and that the main differentiating element is non-distinctive for beverages-related goods.

Therefore, it is likely that the consumer, on being exposed to the use of both signs in relation to goods similar to different degrees and having an imperfect recollection of the earlier mark, might think that the goods on which the contested mark appears are produced by the same undertaking, or an economically linked one, as those sold under the earlier mark. The consumer might perceive the mark applied for as a sub-brand and/or a variation of the earlier mark designating a new line of goods.

In view of the above, it is highly conceivable that the relevant consumer will perceive the signs as variations of each other, configured in a different way according to the type of goods that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

It should also be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T 99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, 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).

Considering all the above, there is a likelihood of confusion on the part of the Dutch-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 856 352. 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Benoit VLEMINCQ

Sandra IBAÑEZ

Boyana NAYDENOVA

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.