OPPOSITION No B 2 798 315

Red Bull GmbH, Am Brunnen 1, 5330 Fuschl am See, Austria (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Voltino, app.54, entr B, 94 Georgi Sava Rakovski Str, Stara Zagora, Bulgaria (applicant), represented by Zdravka Dimitrova Kostadinova-Vulcheva, 119, Hadji Dimitar Assenov Str, office 11, 6000 Stara Zagora, Bulgaria (professional representative).

On 23/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 798 315 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against all the goods (in Class 32) of European Union trade mark application No 15 772 114 (figurative mark:
“ ”). The opposition is based on, inter alia, United Kingdom trade mark registration No 3 129 029 (figurative mark:
“ ”). The opponent invoked Article 8(1)(b) and 8(5) 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 the trade marks on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 23/08/2016.

Earlier United Kingdom trade mark registration No 3 129 029 was registered on 25/12/2015 and Austrian National trade mark registration No 277 454 was registered on 31/03/2014. Therefore, the request for proof of use is inadmissible (see letter of the Office of 27/06/2017).

As far as the other earlier trade marks (see below) are concerned, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 United Kingdom trade mark registration No 3 129 029.

1. The signs
   
   

Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 trade mark is a purely figurative mark, whereas the contested sign includes word elements, figurative elements and the additional colours yellow and black.

In the earlier trade mark, two bulls race towards each other with their heads lowered, and they are about to collide. The bulls have two comparatively short horns on their heads. Between the animals, a circle is depicted in the background, showing the same distance between the animals. Entering the circle takes place in the lower part of the presentation. The tails of the animals stand upwards, which gives the viewer an impression of tension. Colours are not claimed.

The contested mark shows graphic design elements in the upper part and a word combination in the lower part. All components of the sign have the colours black and yellow. Within the upper part, a sun or a yellow circle is shown, which is interrupted at the bottom by a mountain landscape. This mountain range depicts different heights and levels, which are higher towards the centre. In the middle or upper part, two animals jump towards and touching each other. The leap goes clearly upwards and in such a way that the mountains are exactly between them. Striking are the strongly rounded and large horns, which form a clear curve on the heads. Obviously these are mountain ibexes living in the mountains, their typical habitat. The words "BIG HORN" in the lower part of the mark also have a slight oblique font and are slightly longer than the one above. The hind legs of the two animals are slightly behind the representation of the mountain landscape.

The element “BIG HORN” of the contested sign will be understood by the English speaking public with that meaning. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. For the rest of the public, it is meaningless and, therefore, also distinctive.

The other figurative elements of the signs will be understood by the relevant public in the above cited sense. As they are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

The signs have no elements that could be considered clearly more dominant than other elements.

Visually, as previously stated, the representations differ in the manner of displaying the animals, the background, the composition of the marks, and the additional colours of the contested mark. In addition, the species are clearly different, namely two bulls in the earlier mark and two ibexes in the contested mark. Furthermore, the contested mark with the representation of the mountain landscape and the words "BIG HORN" has components that the earlier mark does not have. The fact that two apparently different animals move towards each other is not sufficient for a finding of similarity. Therefore, the signs are visually dissimilar.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the earlier trade mark is purely figurative, it is not possible to compare them aurally.

Conceptually, the earlier trade mark is described as a sign in which two bulls (fast) move towards each other. The contested mark is a mountainous landscape against the background of a sun/yellow circle, with two ibexes starting to jump. The meanings of the signs therefore go in different directions, so that they do not overlap in the possible interpretations by the targeted public. They are therefore conceptually dissimilar. For the English-speaking consumers, the additional word combination "BIG HORN" differs from the earlier mark, so there are additional differences in this respect.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• Austrian National trade mark registration No 277 454 (figurative mark:
  “ ”);

• Austrian National trade mark registration No 242 872 (figurative mark:
  “ ”) and

• International trade mark registration No 961 855 designating different member states of the EU (figurative mark:” ”).

The other earlier rights invoked by the opponent are either identical to the already examined earlier mark or by having additional different features are even further away from the contested mark, thus any further comparisons, cannot result in a more favourable outcome for the opponent.

This overall finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08 & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

a) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C 552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin EBERL

Peter QUAY

Octavio MONGE GONZALVO

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.