OPPOSITION No B 2 900 762

Krombacher Brauerei Bernhard Schadeberg GmbH & Co. KG, Hagener Str. 261, 57223, Kreuztal, Germany (opponent), represented by Olaf Runggas, Hagener Str. 261, 57223, Kreuztal, Germany (employee representative)

a g a i n s t

Branko Jurcola, Rehnsgatan 5, 11357, Stockholm, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85, Stockholm, Sweden (professional representative).

On 29/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 900 762 is upheld for all the contested goods.

2. European Union trade mark application No 16 475 907 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 475 907 for the figurative mark . The opposition is based on European Union trade mark registration No 9 686 361 and German trade mark registration No 30 464 452, for the word marks ‘BASTARD’. 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.

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 European Union trade mark registration No 9 686 361 for the word ‘BASTARD’.

a) The goods

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

Class 32: Beers.

The contested goods are the following, following a limitation in the course of the proceedings:

Class 33: Alcoholic beverages (except beers), namely bitters and herb liqueurs.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Contrary to the applicant’s reasoning, the contested alcoholic beverages (except beers), namely bitters and herb liqueurs are similar to the opponent’s beers. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they are in competition.

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 similar are directed at the public at large. The degree of attention is average.

c) The signs

BASTARD
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 words ‘BASTARD’ and ‘BITTER’ 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 word ‘BASTARD’, which forms the entire earlier mark and which is included in the contested sign, will be understood as ‘a person born of parents not married to each other’. It is also an informal word for ‘an unpleasant or despicable person’. In combination with an adjective it will be understood as ‘a person of a specified kind, e.g. lucky bastard’ (Oxford Dictionaries Online, 25/01/2019, https://en.oxforddictionaries.com/definition/bastard). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a figurative mark composed by the verbal element ‘BITTER BASTARD’, a figurative element depicting an evil above all included and contoured by a figurative element depicting a vertical ellipse.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested mark, the verbal elements ‘For amusement only’ and ‘Twisted with Orange’ are barely perceptible due to their size. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

The word ‘BITTER’, in conjunction with the word ‘BASTARD’, will be perceived as an adjective referring to ‘feeling or showing anger, hurt, or resentment because of bad experiences or a sense of unjust treatment’ (Oxford Dictionaries online, 25/01/2019, https://en.oxforddictionaries.com/definition/bitter). On the other hand, the primary meaning of the word ‘BITTER’ is ‘having a sharp, pungent taste or smell; not sweet’ or as ‘alcohol flavoured with bitter plant extracts, used as an additive in cocktails’, which clearly describe the goods at issue. Therefore, the distinctiveness of that element only stems from the fact that it is used with a kind of double meaning or pun, but the public will nevertheless perceive that it indicates the nature of the goods at issue, namely their bitter taste, and it is therefore, of very reduced distinctiveness.

The figurative element depicting the evil is distinctive to an average degree as it has no connection to the relevant goods or any of their essential characteristics. The geometric ellipse is a shape that is commonly used on labels of goods and will be perceived as purely decorative. Consequently, the latter is considered non-distinctive and its impact is very limited.

The contested mark has no elements that could be considered more dominant (visually eye-catching) than other elements, apart the negligible verbal elements explained above.

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).

Visually, the signs coincide in the distinctive verbal element ‘BASTARD’ which is the earlier mark in its totality and wholly included in the contested sign. They differ in the additional verbal element ‘BITTER’, which is non-distinctive, and the figurative elements described above, all in the contested sign.

Taking into account the distinctiveness and/or impact of the elements of the signs and the fact that the earlier mark is fully included in the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘BASTARD’, present identically in both signs. The pronunciation differs in the sound of the word ‘BITTER’ of the contested mark, which has no counterpart in the earlier sign and which is considered non-distinctive. Therefore, the signs are phonetically similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The adjective ‘BITTER’ does not affect the comprehension of the word ‘BASTARD’ in the contested sign, but simply indicates a characteristic of this person and at the same time, for the reasons explained above, of the goods. Therefore, both signs will be perceived as containing the striking and distinctive concept (bastard), even bearing in mind the additional and distinctive concept of an evil in the contested sign. 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the meaning of the earlier mark as previously explained is not related to the goods at issue. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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).

It has been established in the previous sections of this decision that the contested goods are similar to the opponent’s goods. They are directed at public at large with an average degree of attention and the earlier mark has an average degree of inherent distinctiveness.

The signs are visually similar to an average degree and aurally and conceptually similar to a high degree. Moreover, the additional differentiating elements in the contested sign, owing to their non-distinctive character and/or their reduced impact, are not able to avoid the likelihood of confusion.

In addition, 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).

In its observations, the applicant refers to previous General Court decisions to support its arguments. In the previous case referred to by the applicant, (20/09/2017, T-350/13, BAD TORO (figurative) / TORO, EU:T:2017:633), the Court established that the element ‘BADTORO’ of the contested sign formed a single word element because of the absence of a space between the two terms, which is clearly not the case of ‘BITTER BASTARD‘. In addition, the verbal element ‘BAD’ was not considered non-distinctive for the goods, contrary to ‘BITTER’ in the present case. Accordingly, the signs were found visually similar to a low degree, not to an average degree as those of this case.

As regards the previous case (18/12/2008, T-287/06, TORRE ALBENIZ / TORRES, EU:T:2008:602) referred by the applicant, none of the earlier marks are wholly included in the contested sign, and the coincidence is not that obvious because the coinciding element is not exactly the same (TORRE v TORRES), contrary to the current case. Therefore, the applicant’s arguments have to be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-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 No 9 686 361. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark No 9 686 361 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 right invoked by the opponent, namely German trade mark No 30 464 452 ‘BASTARD’ (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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Catherine MEDINA

Jorge ZARAGOZA GOMEZ

Begoña URIARTE VALIENTE

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.