OPPOSITION No B 2 905 050

Buffalo Grill, 9 Boulevard du General de Gaulle, 92120 Montrouge, France (opponent), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Arvokonseptit Oy, Mikkolantie 1 A Helsinki Fashion House, 00640 Helsinki, Finland (applicant).

On 19/11/2018, the Opposition Division takes the following

DECISION:

1. The decision adopted by the Opposition Division on 25/04/2018 is hereby revoked and replaced by the present decision.

2. Opposition No B 2 905 050 is partially upheld, namely for the following contested goods:

Class 32: Beer; Beers; Root beer; Wheat beer; Flavored beer; Black beer; Imitation beer; Malt beer; Ginger beer; Craft beers; Flavored beers; Black beer [toasted-malt beer]; Coffee-flavored beer; De-alcoholized beer; Beers enriched with minerals; Non-alcoholic beer; De-alcoholised beer; Low-alcohol beer; Barley wine [Beer]; Beer-based beverages; Beer-based cocktails; Alcohol-free beers; Beer and brewery products; Non-alcoholic beer flavored beverages.

3. European Union trade mark application No 16 427 312 is rejected for all the above goods. It may proceed for the remaining goods.

4. Each party bears its own costs.

REVOCATION OF THE DECISION OF 25/04/2018

In accordance with Article 103 EUTMR, where the Office has taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the decision is revoked. Revocation shall be determined within one year from the date on which the decision was taken, after consultation with the parties to the proceedings.

On 09/08/2018, the Office informed the parties that it had the intention to revoke the decision dated 25/04/2018 due to an error attributable to the Office, namely that the dictum wrongfully listed beer wort in Class 32 as part of the contested goods which the opposition was upheld for, and that it would consider any observations submitted by the parties in this regard in accordance with Article 103 EUTMR.

The opponent filed its observations on 30/08/2018 claiming its disagreement with the revocation by stating that it was ready to accept the registration of the EUTM for the product ‘beer wort’ in Class 32 without a revocation.

The error in the decision of 25/04/2018 resulted in an incorrect scope of protection of the EUTM, resulting from a clear inconsistency between the dictum and the outcome of the global assessment. The goods beer wort were erroneously listed in the dictum among those for which the opposition is upheld (and the EUTM does not proceed to registration) whereas the comparison of goods established that beer wort was dissimilar to all of the opponent’s goods and the conclusion in the global assessment established that there was no likelihood of confusion for the dissimilar goods. This error qualifies for revocation of a decision under Article 103 EUTMR.

In light of the above considerations, the claims put forward by the opponent are immaterial to the revocation in question and shall be dismissed.

Therefore, the decision adopted by the Opposition Division on 25/04/2018 in opposition B 2 905 050, dated 25/04/2018, is hereby revoked and is replaced by the present decision.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 427 312 for the word mark ‘Buffalo Power Beer Non-Alcoholic with Caffein’16 427 312, namely against all the goods in Class 32. The opposition is based on European trade mark registration No 11 602 075 for the figurative mark . 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 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Seaweed [condiment]; Powders for ice cream; Almond confectionery; Starch for food; Star aniseed; Aniseed; Peanut confectionery; Flavorings, other than essential oils; Flavorings, other than essential oils, for cakes; Aromatic preparations for food; Seasonings; Meat tenderisers, for household purposes; Oat-based food; Crushed oats; Oatmeal; Husked oats; Unleavened bread; High-protein cereal bars; Stick liquorice [confectionery]; Baking soda [bicarbonate of soda for cooking purposes]; Beer vinegar; Rusks; Cookies; Cookies; Cocoa-based beverages; Coffee-based beverages; Chocolate-based beverages; Tea-based beverages; Flavourings (vegetable), other than essential oils, for beverages; Sweetmeats [candy]; Gruel, with a milk base, for food; Hominy; Buns; Cocoa; Cocoa products; Coffee; Coffee flavourings; Chicory [coffee substitute]; Unroasted coffee; Rice pie; Cinnamon [spice]; Capers; Caramels [candy]; Curry [spice]; Celery salt; Buns; Breadcrumbs; Cheeseburgers [sandwiches]; Chicory [coffee substitute]; Chocolate; Chow-chow [condiment]; Chutneys [condiments]; Cloves [spice]; Condiments; Corn flakes; Fruit coulis [sauces]; Couscous [semolina]; Crackers; Custard; Cream of tartar for culinary purposes; Cream of tartar for cookery; Preparations for stiffening whipped cream; Ice cream; Pancakes; Turmeric for food; Sea water for cooking; Natural sweeteners; Cereal-based snack food; Rice-based snack food; Thickening agents for cooking foodstuffs; Spices; Essences for foodstuffs, except etheric essences and essential oils; Malt extract for food; Meal; Ferments for pastes; Bean meal; Wheat flour; Oat flakes; Chips [cereal products]; Fondants [confectionery]; Cakes; Waffles; Royal jelly; Wheat germ for human consumption; Ginger [spice]; Glazing preparations for ham; Cake frosting [icing]; Ice; Ice, natural or artificial; Edible ices; Glucose for culinary purposes; Gluten additives for culinary purposes; Gluten prepared as foodstuff; Chewing gum; Groats for human food; Halvah; Garden herbs, preserved [seasonings]; Infusions, not medicinal; Meat gravies; Ketchup [sauce]; Cocoa beverages with milk; Coffee beverages with milk; Chocolate beverages with milk; Leaven; Yeast; Binding agents for ice cream; Sausage binding materials; Linseed for human consumption; Macaroni; Macaroons [pastry]; Maize flour; Corn, roasted; Popcorn; Corn, milled; Malt biscuits; Malt for human consumption; Maltose; Marinades; Marzipan; Mayonnaise; Molasses for food; Peppermint sweets; Mint for confectionery; Farinaceous foods; Honey; Milling products; Chocolate mousses; Mousse desserts (confectionery); Mustard; Mustard meal; Muesli; Nutmegs; Noodles; Prepared meals based on noodles; Crushed barley; Barley meal; Husked barley; Bread; Gingerbread; Lozenges [confectionery]; Almond paste; Soya bean paste [condiment]; Pastry; Meat pies; Pasta; Fruit jellies [confectionery]; Pasties; Pastries; Pesto [sauce]; Petit-beurre biscuits; Petits fours [cakes]; Bread rolls; Peppers [seasonings]; Pizzas; Pepper; Potato flour for food; Puddings; Baking powder; Cake powder; Pralines; Bee glue; Allspice; Quiches; Ravioli; Liquorice [confectionery]; Relish [condiment]; Rice; Spring rolls; Saffron [seasoning]; Sago; Sandwiches; Soya sauce; Tomato sauce; Dressings for salad; Sauces [condiments]; Cooking salt; Salt for preserving foodstuffs; Semolina; Hominy grits; Golden syrup; Soya flour; Sorbets [ices]; Spaghetti; Artificial coffee; Sugar; Candy; Confectionery; Confectionery for decorating Christmas trees; Sushi; Tabbouleh; Tacos; Tapioca; Tapioca flour for food; Tarts; Tea; Iced tea; Tortillas; Pies; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Vermicelli [noodles]; Vinegar; Frozen yogurt [confectionery ices].

Class 43: Services for providing food and drink; Temporary accommodation; Accommodation bureaux [hotels, boarding houses]; Bars; Cafés; Cafeterias; Holiday camp services (lodging); Canteens; Day-nurseries [crèches]; Hotel services; Rental of cooking apparatus; Rental of chairs, tables, table linen, glassware; Rental of transportable buildings; Rental of drinking water dispensers; Rental of temporary accommodation; Rental of meeting rooms; Rental of tents; Retirement homes; Tourist homes; Providing campground facilities; Motel services; Boarding houses; Boarding for animals; Hotel reservations; Temporary accommodation reservations; Boarding house bookings; Snack-bars; Self-service restaurants; Restaurants; Catering; Bar services, Cafés, Cafeterias, Hotels, Snack bars, Self-service restaurants, Food and drink catering.

The contested goods are the following:

Class 32: Beer; Beers; Root beer; Wheat beer; Flavored beer; Black beer; Imitation beer; Malt beer; Beer wort; Ginger beer; Craft beers; Flavored beers; Black beer [toasted-malt beer]; Coffee-flavored beer; De-alcoholized beer; Beers enriched with minerals; Non-alcoholic beer; De-alcoholised beer; Low-alcohol beer; Barley wine [Beer]; Beer-based beverages; Beer-based cocktails; Alcohol-free beers; Beer and brewery products; Hop extracts for manufacturing beer; Non-alcoholic beer flavored beverages; Hops (Extracts of -) for making beer; Extracts of hops for making beer.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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; beers; root beer; wheat beer; flavored beer; black beer; imitation beer; malt beer; ginger beer; craft beers; flavored beers; black beer [toasted-malt beer]; coffee-flavored beer; de-alcoholized beer; beers enriched with minerals; non-alcoholic beer; de-alcoholised beer; low-alcohol beer; barley wine [beer]; beer-based beverages; beer-based cocktails; alcohol-free beers; beer and brewery products; non-alcoholic beer flavored beverages are related to the opponent’s bar services in Class 43. The contested abovementioned goods are generally beers or beer-based beverages, consumed to quench thirst or for enjoyment. Notwithstanding their different natures, these goods and services are complementary, in the sense that the contested goods are in the core of the provision of bar services, which entail the activity of preparing and serving drinks. The relevant public would expect that in some cases the commercial origin and distribution channels of these goods and services coincide. Therefore, the goods and services under comparison are similar to a low degree.

However, the contested hop extracts for manufacturing beer; hops (extracts of -) for making beer; extracts of hops for making beer; beer wort, are not sufficiently related to the opponent’s services in Class 43, which are services for providing food and drink, or temporary accommodation, and services of rental of various appliances. Hop extracts come from hop flowers and are one of the essential ingredients in beer. Besides acting as a flavouring and stability agent, they are also used for the purpose of preserving beer due to their antibacterial effect. As for the contested beer wort, these are liquids, produced from malt and hot water, used in the brewery process as they contain sugars which are eventually fermented by the brewing yeast to produce alcohol. The mere fact that these contested goods and some of the opponent’s services relate to the food and beverage industry is not necessarily sufficient for a finding of similarity also taking into account that the contested goods are not beverages, but ingredients for making beverages. Likewise, the fact that preparations for making beverages are essential for the provision of the opponent’s services in Class 43 does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking. The goods and services under comparison have different commercial origin and different nature, purposes and methods of use. They are neither strictly complementary nor in competition. Therefore, they are considered dissimilar.

Further, the contested hop extracts for manufacturing beer; hops (extracts of -) for making beer; extracts of hops for making beer; beer wort, are also found dissimilar to the opponent’s goods in Class 30. Although the contested hop extracts may, in part, have the same purpose at the opponent’s flavourings (vegetable), other than essential oils, for beverages, in the sense that they all can add flavour to beer, this is not sufficient for a finding of similarity between the goods. As mentioned above, besides adding flavour, hop extracts are used in the manufacturing of beer for other important purposes, namely as a stability agent and for their antibacterial effect. Accordingly, in contrary to the opponent’s flavourings that only give new or additional tastes to beverages, the hop extracts acts as an active ingredient that is absolutely essential for making beer. Taking this into account, the goods do not have fully coinciding purposes. As for the contested beer wort, these too are used as an active ingredient in the brewery process to produce alcohol. In principle, the beer wort does not add any flavour to beer, and thus, differs completely in purpose than the opponent’s flavourings (vegetable), other than essential oils, for beverages. Furthermore, hop extracts and beer wort mainly target professional consumers such as breweries, while the opponent’s goods target the public at large. The distribution channels differ and they usually have different producers.

The opponent’s husked barley; crushed barley in Class 30 are processed cereal grains intended as food for human consumption, and are not barley for use in brewing beer (which belongs in Class 31). When compared to the applicant’s brewery goods such as hop extracts for manufacturing beer; hops (extracts of -) for making beer; extracts of hops for making beer; beer wort, they differ in nature and purpose. As the opponent’s brewery products, in contrary to the contested goods, target the professional consumers, they also have different distribution channels. Furthermore, they tend to have a different origin and they are neither in competition nor complementary to each other. Therefore, they are dissimilar.

The link between the remaining of the opponent’s goods in Class 30, are even further off than the specifically mentioned flavourings (vegetable), other than essential oils, for beverages; husked barley; crushed barley. They have no relevant point of contact. They do not have the same producers, they are not in competition nor complementary. Furthermore, they have a different nature and method of use. Therefore, they are considered dissimilar.

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 similar to a low degree are directed at the public at large. The degree of attention is considered average.

3. The signs

	Buffalo Power Beer Non-Alcoholic with Caffein
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.

All of the verbal elements that form the signs are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark consisting of the words ‘BUFFALO’ and ‘GRILL’. The word ‘BUFFALO’ is placed above the word ‘GRILL’ and both words are written in slightly stylised red upper case letters. On each side of the word ‘BUFFALO’ is a depiction of a red figurative element resembling cattle horns.

The Opposition Division considers that the earlier mark has no elements that could be considered clearly more dominant than the others.

The verbal element ‘BUFFALO’, will be perceived as an animal, namely a large wild animal of the cattle family, with long, curved horns. Although it is a meaningful word for the relevant public, it is not descriptive, allusive or otherwise weak for the relevant services, as the word cannot be considered to indicate or evoke any characteristics of the relevant bar services (found lowly similar to some of the contested goods). Therefore, ‘BUFFALO’ enjoys an average degree of distinctiveness in the present case. The two figurative elements will be perceived as cattle or buffalo horns and are also distinctive to an average degree. In general, it must be observed that in the case of signs that consist of both verbal and figurative components, in principle, the public 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 the present case, the figurative elements of the buffalo horns serve as a reinforcement of the meaning of the word ‘BUFFALO’.

Regarding the element ‘GRILL’, it could be understood as a flat frame of metal bars on which food can be cooked over a fire or as a restaurant serving grilled food. As services under comparison, namely bar services, mainly consists of providing drinks, the word ‘GRILL’ is not directly related to such services. However, the fact remains that simple foods such as grilled meat or vegetables are often served in bars. The word may therefore be perceived as indicating that the bar services in question are provided by an establishment that also serves grilled food. Consequently, the element ‘GRILL’ must be considered as weak.

The contested sign is a word mark consisting of the words ‘Buffalo Power Beer Non-Alcoholic with Caffein’.

As for the element ‘Buffalo’ in the contested sign, the reasoning given above applies equally to its meaning and distinctiveness in both signs. The remaining verbal elements ‘Power Beer Non-Alcoholic with Caffein’ indicate the nature of the relevant goods, namely that the contested beers are non-alcoholic and contain caffeine, whose consumption can enhance performance or give the consumer power/strength. Therefore, the expression ‘Power Beer Non- Alcoholic with Caffein’ is considered as non-distinctive.

Visually, the signs are similar to the extent that they coincide in their distinctive word ‘BUFFALO’ which is the first verbal element of both signs. Furthermore, this coinciding element constitutes the first element of both signs, which tends to be the part of the sign that generally catches the attention of consumers when they encounter a trade mark.

They differ in their additional verbal elements, being the text ‘Power Beer Non-Alcoholic with Caffein’ in the contested mark and the word ‘GRILL’ of the earlier mark, as well as the stylisation, structure, colour and figurative elements of the earlier mark. Bearing in mind that the differing elements have limited impact for the reasons given above, the signs are considered visually similar to an average degree.

Aurally, it must be taken into account that the expression ‘Power Beer Non-Alcoholic with Caffein’ of the contested sign is not likely to be pronounced by a significant part of the public given the length of the expression and its descriptive character (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342 and 03/06/2015, joined cases T‑544/12, PENSA PHARMA, EU:T:2015:355 and T‑546/12, pensa, EU:T:2015:355).

The pronunciation of the signs coincides in the syllables ‘BUF-FA-LO’, a distinctive element present identically at the beginning of both signs. As for the aural differences, resulting from the additional verbal element of the earlier mark, ‘GRILL’, are not sufficient to remove the impression of an overall phonetic similarity, both due to the identity of the first three syllables between the signs and to the fact that the differing elements are weak. Therefore, the signs are aurally similar to a high degree.

Conceptually, the common word element of the marks, ‘BUFFALO’, will be perceived as a large wild animal of the cattle family, with long, curved horns. Further the figurative elements of the earlier sign depicting horns of cattle or buffalo reinforce the common association to the same animal. The additional verbal elements in the signs, namely ‘GRILL’ of the earlier sign and ‘Power Beer Non-Alcoholic with Caffein’ of the contested mark, will be perceived as secondary in the overall impression of the signs and are, therefore, not sufficient to counteract the conceptual similarity at hand. Consequently, the signs are conceptually similar to a high 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 services 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 weak element in the mark, as stated above in section c) of this decision.

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 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).

Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the goods and services are partly similar to a low degree and partly dissimilar. The earlier sign as a whole enjoys an average degree of inherent distinctiveness. The signs are visually similar to an average degree. Aurally and conceptually, they are similar to a high degree.

Despite the differences, the Opposition Division finds that there is still a likelihood of confusion, as the commonalities between the signs lie in their more distinctive parts. In addition, it must be borne in mind that the average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Also, the horn device in the earlier mark reinforces the meaning of the coinciding verbal element. It is therefore clear that the commonalities between the signs outweigh the differences.

Consequently, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 602 075. It follows that the contested trade mark must be rejected for the goods found to be similar to those 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

Catherine MEDINA

Tu Nhi VAN

Marta Maria CHYLIŃSKA

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.