OPPOSITION No B 2 808 346

Playa Holding Corporation, 75 Rockefeller Plaza, 23rd. Floor, 100 19, New York,, United States (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008, Barcelona, Spain (professional representative)

a g a i n s t

Sazerac Brands LLC, 10101 Linn Station Road, Suite 400, 40223 Louisville Kentucky, United States (applicant), represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, EC4R 3TT, London, United Kingdom (professional representative).

On 13/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 808 346 is upheld for all the contested goods.

2. European Union trade mark application No 15 521 503 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 521 503 ‘BLACK DRAGON’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 9 359 464 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based, namely: European Union trade mark No 6 860 555 ‘LOS DRAGONES’ registered on 14/01/2009, EUTM No 6 912 497 ‘MIL DRAGONES’ registered on 29/03/2009, EUTM No 6 912 521 ‘CASA DRAGONES’ registered on 29/03/2009, EUTM No 6 913 651 ‘CASA DRAGONES SIPPING TEQUILA’ registered on 15/05/2009, EUTM No 7 585 664 registered on 20/10/2009 and EUTM No 9 359 464 registered on 24/02/2011.

In the present case, the date of priority of the contested trade mark is 08/12/2015. As indicated above, earlier trade mark No 9 359 464 was registered on 24/02/2011. Therefore, the request for proof of use in relation to this earlier trade mark is inadmissible.

As regards the remaining earlier rights, on which the opposition is based, the request for proof of use was filed in due time and is admissible given that these earlier trade marks were registered more than five years prior to the relevant date mentioned above (08/12/2015).

However, at the present stage, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 359 464, not subject to the proof of use requirement, and will examine the proof of use filed by the opponent in relation to the remaining earlier rights only if necessary.

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.

As mentioned, the opposition is based on more than one earlier trade mark and the Opposition Division will first examine the opposition in relation to the opponent’s EUTM No 9 359 464.

1. The goods

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

Class 33: Alcoholic beverages (except beers), in particular tequila.

The contested goods are the following:

Class 33: Alcoholic beverages (except beers).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 33

Bearing in mind the explanation about the interpretation of the wording of the opponent’s list of goods, the contested alcoholic beverages (except beers) are identical to the opponent’s alcoholic beverages (except beers), in particular tequila.

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

3. The signs

	BLACK DRAGON
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.

In the present case, the verbal elements ‘casa’, ‘dragones’ of the earlier mark and ‘dragon’ of the contested sign are meaningful in certain territories, for example in those countries where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public. This is also because, as it will be explained further on below, the element ‘casa’ is lowly distinctive for this part of the public and its impact in the comparison of the signs is reduced, thus enhancing the degree of similarity between the signs.

The earlier mark is figurative and consists of a blue square containing two superimposed circles in white, yellow and blue with the elements ‘16’ in the middle of the inner circle and ‘CASA ^. DRAGONES’ written in the outer circle. The mark also contains a stylised representation of a bird/animal in yellow. The contested sign is a word mark and consists of the verbal elements ‘BLACK DRAGON’. It has to be taken into account that in the case of word marks, it is the word that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters. The mark has no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

The element ‘dragon’ and, respectively, ‘dragones’ included in the signs will be perceived by the relevant public as the singular and the plural form of the word dragón (‘mythical monster like a giant reptile’). This element(s) has no specific descriptive, allusive or otherwise weak meaning in relation to the relevant goods and its inherent distinctive character is normal.

The element ‘casa’ of the earlier mark will be associated with industrial or commercial establishment. Bearing in mind the nature of the relevant goods, it is considered that this element is of low distinctive character, as it is commonly used to indicate establishments, the place or factory where the goods are produced/offered.

The verbal element ‘black’ in the contested sign is a basic English word and will be understood by a significant part of the relevant public as the colour black. Although it may not be expected that the average consumer has a particular knowledge of a foreign language, this is a flexible rule (see, by analogy, 03/09/2009, C-395/38 P, EU:C:2009:334, § 51) and the knowledge of foreign terms by the relevant public should be assessed on a case by case basis. In this respect, in the present case, the word ‘black’ is an elementary, basic English word, and at the same time, a basic colour. As such, it is most likely that its meaning will be understood by the majority of the relevant public. Furthermore, the Opposition Division notes that nowadays many companies in the field of the alcoholic drinks industry tend to use different coloured labels on the bottles to explain the differences (and different categories) of the drinks, for example, in relation to alcoholic beverages, such as liquors, vodkas, gin, rums, whiskies etc. As found in the decision of the Board of Appeal of 24/07/2017, R 2305/2016-2, BLACK (fig.) / NOVAL BLA, § 49:

For instance, Jonnie Walker’s Scotch Whiskies have different coloured labels and quote the colour on their bottles, ranging from blue, green, red, gold to their black label which is considered to be very exclusive and one of their iconic blends recognised as the benchmark for all other deluxe blends. The same can be said, for instance with Smirnoff which also classifies its vodka from its different types of coloured labels and also quoting the colours on its bottle, from blue, red to black being their premium, special range (see by analogy, 03/05/2012, R 1710/2011-2, GOLD LABEL RESERVE concerning the lack of distinctiveness of the expression ‘GOLD LABEL RESERVE’ and the fact that the general public is used to seeing it in relation to alcoholic drinks; and 28/01/2016, R 3270/2014-1, THE YELLOW LABEL / YELLOW LABEL). Thus, in this context, the use of the word ‘BLACK’ and the representation of a black label as in the mark applied for will inform the public of a desirable quality/aspect of the product in question, i.e. the idea of it being unique and exclusive.

Consequently, it is considered that the although not negligible, the term ‘BLACK’ in the contested sign cannot be seen as a particularly distinctive element in the comparison of the signs, as it may be considered, to some extent, as a laudatory term in relation to the goods concerned, alluding, inter alia, to their uniqueness, exclusivity, elegance and distinction. Even if ‘black’ is perceived only as a colour, it still defines the element ‘dragon’ that follows it and is conceptually subordinated to it.

The numeral ‘16’ in the earlier trade mark has no specific descriptive, allusive or otherwise weak meaning in relation to the relevant goods and its inherent distinctive character is normal.

As to the stylised representation of a bird/animal in the contested sign, it will probably be associated with a dragon in view of the verbal element ‘dragones’ present in the signs. Although this element is inherently distinctive, account must be taken of the fact that 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). In addition, as regards the figurative elements in the contested sign in general, it must be mentioned that, in the context of the relevant goods, they form a label, which is a commonplace element. Therefore, the verbal elements are, in principle, more distinctive/important than the figurative elements of the contested sign.

In relation to the earlier mark, the dot between ‘CASA ^. DRAGONES’ and the dot, or possibly, the registered trade mark symbol ® placed after ‘DRAGONES’ are hardly visible and barely perceptible and are likely to be disregarded by the relevant public. Consequently, they will not be taken into consideration for the purposes of comparison.

As to the dominant elements in the earlier complex mark, it is considered that there are no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

Visually, the main coincidence in the signs is in the elements ‘DRAGONES’ and ‘DRAGON’, which coincide nearly in full, are inherently distinctive and are the single and the plural variant of the same word. The signs differ in the normally distinctive numeral ‘16’ of the earlier mark, as well as in the lowly/less distinctive elements ‘casa’ vs. ‘black’. Furthermore, the signs differ in their structure and the figurative elements of the earlier mark. Therefore, it is considered that the signs are visually similar to a low degree.

Although the coincidences in ‘DRAGONES’ / ‘DRAGON’ are not immediately visible in the signs, these elements are important trade identifier within both signs: ‘DRAGONES’ has an independent distinctive role in the earlier mark and ‘DRAGON’ is the most distinctive element of the contested sign.

Aurally, the main coincidence in the signs is in the distinctive elements ‘DRAGONES’ and ‘DRAGON’, which are the plural and singular version of the same word. The pronunciation differs in ‘16’ of the earlier mark, as well as in the lowly distinctive ‘casa’ of the earlier mark versus the less distinctive ‘black’ of the contested sign. Furthermore, as regards the earlier trade mark, it is possible that at least part of the public, when faced with a numeral and a verbal element, refers to the sign aurally only by its verbal elements ‘CASA DRAGONES’ and omitting to pronounce the numeral ‘16’, or pronouncing it only after the verbal elements, namely ‘CASA DRAGONES 16’. Therefore, taking into account the mentioned similarities and differences, the relevant factors and their respective weight in the signs, it is considered that the signs are aurally similar to an average degree.

The concepts of the signs have been defined above. As mentioned, the earlier sign will be associated with the lowly distinctive concept of ‘casa’, the concept of ‘dragons’ reinforced by the stylised figurative image and with the concept of the numeral ‘16’. The contested sign contains the less distinctive concept of ‘black’ and the concept of the normally distinctive element ‘dragon’. As mentioned, the elements ‘casa’ and ‘black’ are lowly/less distinctive and have a reduced conceptual impact. Even if the element ‘black’ is perceived only as a colour, it still defines the element ‘dragon’ that follows it and is conceptually subordinated to it. Therefore, taking into account the mentioned similarities and differences, and since the signs will be associated with the same concept on account of the elements dragones/dragon, it is considered that they are conceptually 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, despite the presence of some lowly distinctive element(s) in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods and they are directed at the public at large with an average level of attention.

The signs are visually similar to a low degree and aurally and conceptually similar to an average degree.

The similarities between the signs are on account of their normally distinctive elements ‘DRAGONES’ vs. ‘DRAGON’, which constitute an element with an independent distinctive role within the earlier mark and the most distinctive element of the contested sign. While it is indeed true that the signs differ in certain aspects, especially from a visual point of view, this difference is not of decisive importance.

It should 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 (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach more importance to the phonetic similarity between the signs at issue.

Furthermore, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). 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. Therefore, in the present case, even if not directly confusing the marks, the consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that lesser degree of similarity of the signs is compensated by the identical nature of the goods.

In its observations, the applicant argues that the earlier trade mark does not have a particularly high inherent distinctive character given that there are many trade marks in Class 33 that include the term ‘DRAGON’. In support of its argument the applicant refers to several trade mark registrations in the EU and submitted printouts from EUIPO’s database eSearchPlus.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ‘DRAGON’. Under these circumstances, the applicant’s argument must be set aside.

The applicant also filed several extracts from the Internet in order to show and support its argument that the relevant public is used to seeing the term ‘DRAGON’ in relation to alcoholic drinks/names of cocktails in the European marketplace. The applicant filed several printouts from the internet, namely from www.tesco.com, www.royaldragonvodka.com/en, dragonsoop.com/page4lstockists.html, www.wijnkro nieken.nl/supermarktwijn-bij-een-topdiner/, www.vivino.com/wineries/dragons-back-mountair/wines and mattslandscape.com/dragon_fruit_drinks and claims that these are examples show that the EU consumer is used to seeing different DRAGON alcoholic drinks. In this regard, the Opposition Division notes that these printouts cannot be taken as solid evidence reflecting the situation on the market, let alone proving that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ‘dragon’. In relation to the printout from mattslandscape.com/dragon_fruit_drinks, it obviously refers to fruit drinks containing pitaya (a plant widely known as dragon fruit) and not to alcoholic beverages. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘DRAGON’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 9 359 464. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right EUTM No 9 359 464 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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

Jakub MROZOWSKI

Liliya YORDANOVA

Gueorgui IVANOV

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.