OPPOSITION No B 2 867 599

Brauerei Fohrenburg GmbH & Co KG, Fohrenburgstr. 5, 6700 Bludenz, Austria (opponent), represented by Konzett Kohlhaupt Folie Rechtsanwälte GmbH, Fohrenburgstr. 4, 6700 Bludenz, Austria (professional representative)

a g a i n s t

Pummeleinhorn GmbH, Hervorster Straße 147, 47574 Goch, Germany (applicant), represented by Roman Amonat, Am Wehrhahn 17, 40211 Düsseldorf, Germany (professional representative).

On 06/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 002867599 is partially upheld, namely for the following contested goods:

Class 29: Game, not live; jellies for food; milk; meat extracts; compotes; dairy products; meats; fruit, stewed; dried fruit; poultry, not live; fish, not live; jams.

Class 30: Chocolate-based beverages; chocolate; gingerbread; baked goods, confectionery, chocolate and desserts; pizzas; tea; rusks; cocoa products; liquorice [confectionery]; non-medicated confectionery candy; spaghetti; bread; coffee; waffles; cookies; ices; pastry; cocoa-based beverages; chocolate based products; cocoa; sweetmeats [candy]; pastries; rolled wafers [biscuits].

Class 32: Aerated water; mineral water [beverages]; syrups for making beverages; fruit drinks; juices; preparations for making beverages; non-alcoholic beverages.

2. European Union trade mark application No 16 159 311 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 159 311 for the word mark ‘Pummeleinhorn’, namely against all the goods in Classes 29, 30 and 32. The opposition is based on European Union trade mark registration No 14 552 293 for the word mark ‘EINHORN’. 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 and services

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

Class 32: Beers, mixed drinks containing beer and brewery products; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; vegetable juice, vegetable beverages and vegetable juices [beverages]; syrups and other preparations for making beverages; energy drinks; lemonades; mixed beverages of beer and lemonade with lemon vodka flavouring and/or taste; mixtures of beers and non-alcoholic drinks; mixed beverages containing beer and mineral water [beverages] or other aerated waters or other non-alcoholic drinks; mixed beverages containing beer and fruit juice beverages or juices; shandy; non-alcoholic beer flavored beverages; beer-flavoured alcoholic beverages; alcoholic beverages, including those with added beer or with beer flavouring.

Class 33: Alcoholic beverages (except beers); mixed beverages made with alcoholic beverages, in particular with vodka or with vodka lemon flavouring and/or taste, and beer.

Class 43: Services for providing food and drink, including catering, and temporary accommodation; services for providing food and drink in restaurants, inns, public houses, in particular brew pubs, discotheques, bars and at events; catering for the provision of food and beverages; services for the preparation of food and drink; takeaway services; drink dispensing machines (rental of); consultancy and information in connection with or in relation to all of the aforesaid services.

The contested goods are the following:

Class 29: Game, not live; jellies for food; eggs; milk; meat extracts; compotes; edible fats; edible oils; dairy products; meats; fruit, stewed; dried fruit; poultry, not live; fish, not live; jams.

Class 30: Chocolate-based beverages; chocolate; chewing gum; gingerbread; baked goods, confectionery, chocolate and desserts; pizzas; tea; rusks; cocoa products; liquorice [confectionery]; non-medicated confectionery candy; ice; spaghetti; bread; honey; coffee; waffles; cookies; ices; pastry; cocoa-based beverages; chocolate based products; muesli; sugar; cocoa; sweetmeats [candy]; pastries; rolled wafers [biscuits].

Class 32: Aerated water; mineral water [beverages]; syrups for making beverages; fruit drinks; juices; preparations for making beverages; non-alcoholic beverages.

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

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

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 29

The contested dairy products are similar to the opponent’s fruit juices in Class 32, since there is a market trend to have mixed fruit/milk beverages. These goods have the same purpose, distribution channels and target public. Furthermore, they are in competition.

The contested milk is similar to a low degree to the opponent’s other non-alcoholic drinks in Class 32. These goods can have the same distribution channels and target public. Furthermore, they can be in competition.

The contested game, not live; jellies for food; meat extracts; compotes; meats; fruit, stewed; dried fruit; poultry, not live; fish, not live; jams are similar to a low degree to the opponent’s services for providing food and drink in Class 43. The opponent’s services necessarily use the contested goods, so there is a degree of complementarity between these goods and services. In addition, the opponent’s services may be offered in the same places where the goods in question are sold. These goods and services can also originate from the same company or economically related companies that market packaged products, or restaurants that sell ready-made meals (12/12/2014, T‑405/13, DA ROSA, ECLI:EU:T:2014:1072, § 97).

The remaining contested eggs; edible fats; edible oils are dissimilar to all the goods and services covered by the earlier mark. These goods and the opponent’s goods and services have different natures and purposes. They also differ in their producers/providers, distribution channels and end users. They are neither complementary nor in competition.

Contested goods in Class 30

The contested chocolate based-beverages; tea; coffee; cocoa-based beverages and cocoa are similar to the opponent’s other non-alcoholic drinks in Class 32, as they have the same producers, distribution channels and target public. Furthermore, they can be in competition.

The contested chocolate (listed twice); gingerbread; baked goods; confectionery and desserts; pizzas; rusks; cocoa products; liquorice (confectionery); non-medicated confectionery candy; spaghetti; bread; waffles; cookies; ices; pastry; chocolate based products; sweetmeats [candy]; pastries; rolled wafers [biscuits] are similar to a low degree to the opponent’s services for providing food and drink in Class 43, as these goods and services have the same producers/providers and distribution channels and they are complementary.

The remaining contested goods, namely muesli; chewing gum; ice (referring here to cooling ice); honey and sugar, are dissimilar to all the opponent’s goods and services. They have different natures, purposes and methods of use. They also differ in their producers/providers and distribution channels. They are neither complementary nor in competition.

Contested goods in Class 32

Aerated water; mineral water [beverages]; syrups for making beverages; preparations for making beverages; non-alcoholic beverages are identically contained in both lists of goods (including synonyms).

The contested juices include, as a broader category, the opponent’s fruit juices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested fruit drinks include, as a broader category, the opponent’s fruit juices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 and services found to be identical or similar (to various degrees) are directed at the public at large.

The degree of attention is considered average.

3. The signs

EINHORN	Pummeleinhorn
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 Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public, because the words shown in the signs are meaningful for this part of the public, as will be explained later in this decision.

The earlier sign is a word mark, ‘EINHORN’. The relevant public will understand this sign as an ‘equine or goat-like mythical animal with a long straight horn in the middle of the forehead as a symbol of chastity and virginity’, that is, a unicorn (‘(als Symbol der Keuschheit und Jungfräulichkeit geltendes) pferde- oder ziegenähnliches Fabeltier mit einem langen geraden Horn in der Mitte der Stirn’, information extracted from Duden on 05/04/2018 at https://www.duden.de/rechtschreibung/Einhorn). The earlier sign has no meaning in connection with the goods and services in question. It has, therefore, an average degree of distinctiveness.

The contested sign is also a word mark, ‘Pummeleinhorn’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign/component, they will likely break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

In the present case, the contested sign is a compound word, consisting of the words ‘Pummel’ and ‘Einhorn’. ‘Pummelig’ is an adjective that means ‘roundish, chubby’ (‘rundlich, dicklich’, information extracted from Duden on 05/04/2018 at https://www.duden.de/suchen/dudenonline/pummelig). Although the word in the contested sign is ‘Pummel’ and not ‘pummelig’, since the contested sign is a compound word formed by conjoining two words according to German grammatical rules, ‘Pummel’ will be understood with the same meaning as ‘pummelig’ and as qualifying the subsequent noun, ‘Einhorn’. Contrary to the opponent’s argument that the word ‘Pummeleinhorn’ as a whole has no meaning, it is irrelevant whether this kind of mythical animal is known to the relevant public or not, insofar as both words of which the contested sign is composed will readily be recognised by the relevant public.

As explained above, ‘Einhorn’ has an average degree of distinctiveness. As regards ‘Pummel’, it has no meaning in connection with the goods in question. It has, therefore, an average degree of distinctiveness. Contrary to the applicant’s assertions ‘Pummel’ is not extraordinary and surprising. It is a well-known and commonly used word in German.

Contrary to the applicant’s assertions, because the contested trade mark is a word mark there are no elements which could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘Einhorn’, contained in both signs. They differ, however, in the verbal element ‘Pummel’ of the contested sign, which has no counterpart in the earlier sign.

As the applicant points out by referring to the previous Office decision B 2 483 124, the first part of a mark’s word elements may be more likely to catch the consumer’s attention than the other parts that follow, because the public reads from left to right. This assumption does not, however, apply in all cases (16/05/2007, T‑158/05, Audi (ALLTREK) not published, EU:T:2007:143, § 70 and the case-law cited). The assertion that the beginning of the mark applied for is the part that particularly attracts the consumer’s attention cannot be assessed independently of the facts of the present case, and in particular the specific characteristics of the signs at issue (13/04/2011, T‑228/09, Textiles CMG (U.S. POLO ASSN.), not published, EU:T:2011:170, § 37).

In the present case, the word ‘Pummel’ of the contested sign qualifies the subsequent noun ‘Einhorn’. Therefore, it does not have a greater impact on the relevant public than the verbal element ‘Einhorn’ despite its initial position in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛EIN‑HORN’, present in both signs. The pronunciation differs in the syllables ‛PU‑MEL’ of the contested trade mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the meaning of a unicorn, they are similar to a higher than average degree, given that the additional verbal element of the contested sign ‘Pummel’ qualifies the word ‘Einhorn’.

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 and services in question from the perspective of the public in the relevant territory. Therefore, contrary to the applicant’s claim that ‘EINHORN’ is of limited distinctiveness, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

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).

The goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. The applicant’s arguments that it has sought registration for just a small number of goods in Class 32 and that the earlier mark is not registered for goods in Classes 29 and 32, with the result that no identity or similarity between the opponent’s and the contested goods can be established, should be dismissed. The Nice Classification mainly serves to categorise goods/services for administrative purposes and is not decisive for their comparison. According to Article 33(7) EUTMR, the fact that goods or services are listed in the same class of the Nice Classification is not, in itself, an indication of similarity. According to the same provision and case-law, goods/services listed in different classes are not necessarily considered dissimilar (16/12/2008, T‑259/06, Manso de Velasco, EU:T:2008:575, § 30-31).

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

The entire earlier sign is contained in the contested sign. The additional verbal element ‘Pummel’ of the contested sign will be perceived as a qualifier of the coinciding verbal element, ‘Einhorn’. Therefore, the similarities between the signs prevail over their differences.

The arguments of the parties, namely the applicant’s argument that the sign applied for corresponds to its company name and the opponent’s argument that the opponent belongs to the ‘Rauch’ company group, are irrelevant and should not be taken into account in the assessment of likelihood of confusion. Such facts presuppose previous knowledge that the relevant public is not likely to possess.

In addition, the applicant claims that its company is known as a special and unique company that offers a wide range of goods and services under the sign ‘Pummeleinhorn’.

The awareness of the public of the contested sign and of the applicant’s company of the same name is irrelevant to the current proceedings. The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Events or facts that happened before the filing date of the EUTM are irrelevant.

Moreover, on account of the similarity of the signs, the relevant public is likely to believe that the goods and services found to be identical or similar (even to a low degree) originate from the same undertaking or from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to the goods and services of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin EBERL

Alexandra APOSTOLAKIS

Denitza STOYANOVA-VALCHANOVA

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.