OPPOSITION No B 2 706 680

Fifth Generation, Inc., 12101 Moore Road, Austin Texas 78719, United States of America (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Titos d.o.o., Ljudevita Posavskog 36b, Zagreb 10000, Croatia (applicant), represented by Mladen Vukmir, Gramaca 2 L, Zagreb 10000, Croatia (professional representative).

On 31/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 706 680 is upheld for all the contested goods in Classes 32 and 33, namely

Class 32: Beers.

Class 33 (in its entirety): Alcoholic beverages [except beers].

2. European Union trade mark application No 15 088 909 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 088 909 (figurative mark: ‘ ’), namely against one good in Class 32 (beers) and against all the goods in Class 33. The opposition is based on European Union trade mark registration No 13 430 624 (word mark: ‘TITO'S VODKA’). 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.

a) The goods

The goods in Class 33 on which the opposition is based are the following:

Distilled spirits.

The contested goods in Classes 32 and 33 are the following:

Class 32: Beers.

Class 33: Alcoholic beverages [except beers].

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 beers have the same nature, usually coincide in relevant public and distribution channels as the opponent´s goods distilled spirits. Therefore, they are similar.

Contested goods in Class 33

The contested alcoholic beverages [except beers] include, as broader category, the opponent’s distilled spirits. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

b) 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 identical or similar are directed at the public at large. The degree of attention is considered average.

c) The signs

TITO'S VODKA
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘TITOS’ of both signs are not meaningful in certain territories, for example, in those countries where Greek is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as consumers in the United Kingdom.

The earlier trade mark is a word mark, which is protected in all different typefaces.

The figurative element of the contested sign is a star missing a point in the upper right part of the representation. Furthermore, at the bottom the word ‘TITOS’ is written in upper case letters, but this element is smaller than the rest of the sign. Since it is not a basic representation, it is distinctive.

The elements ‘TITO´S’ and ‘TITOS’ of the signs would be recognized as a foreign name. Since they do not have any meaning for the goods, they are distinctive.

The element ‘VODKA’ of the earlier trade mark will be understood with that comprehensible meaning. Bearing in mind that the relevant goods are spirits, this element is non-distinctive for these goods.

The figurative element of the contested trade mark overshadows the verbal element of the mark by virtue of its central position and size. The figurative element is the visually dominant element of the contested trade mark.

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).

Consumers generally 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.

Visually, the signs differ in the above cited figurative element of the contested sign. The words ‘TITOS’ are written in a slightly different typeface including the apostrophe in the penultimate letter of the earlier trade mark. In this mark, the additional word ‘VODKA’ cannot be taken into account in a relevant manner being non-distinctive. Therefore, the signs are visually similar to an above average degree.

Aurally, the figurative element of the contested sign will not be pronounced including the apostrophe in the earlier trade mark. The signs will be spoken identically as regards their words ‘TITOS’. The additional word in the earlier trade mark ‘VODKA’ cannot be taken into account in a relevant manner being non-distinctive. Therefore, the signs are aurally similar to a high degree.

Conceptually, the common words ‘TITOS’ in both signs will be recognized with the same meaning, namely a foreign name. The word ‘VODKA’ in the earlier trade mark is non-distinctive and cannot, therefore, influence the outcome of the conceptual comparison. The contested sign will be recognised by the relevant consumers as an incomplete star, which leads to conceptual differences between the signs. Therefore, the signs are conceptually similar to an above 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.

d) 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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The contested goods are partly identical and partly similar.

Taking into account the above average degree of visual and conceptual similarity, the high degree of aural similarity, the average degree of distinctiveness of the earlier trade mark, the not more than average degree of attention of the public and the partial identical or similar goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, and, therefore, the opposition is upheld.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponents´ European Union trade mark registration. 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.

The applicant has not filed any observations. Therefore, its arguments cannot be examined.

The opposition is well founded under Article 8(1)(b) EUTMR.

COSTS

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Lars HELBERT

Peter QUAY

Gonzalo BILBAO TEJADA

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.