OPPOSITION No B 2 952 698

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- Und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333 München, Germany (professional representative)

a g a i n s t

Jiří Vládík, Pod Pekařkou 1089/3, 14700 Praha 4 – Podolí, Czech Republic (applicant), represented by Michaela Chytilová, Revoluční 725/11, 110 00 Prague, Czech Republic (professional representative).

On 21/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 952 698 is upheld for all the contested goods.

2. European Union trade mark application No 16 627 721 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 16 627 721 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 7 013 998 for the word mark ‘BOHEMUS’. 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 the trade marks on which the opposition is based, including European Union trade mark registration No 7 013 998.

In the present case, the date of priority of the contested trade mark is 21/10/2016. The date of registration of the European Union trade mark No 7 013 998 is 11/12/2012.

The request for proof of use cannot be taken into account, as far as this mark is concerned, because it concerns a mark that, at the date of priority of the contested trade mark, had not been registered for at least five years. Therefore, the request for proof of use regarding this mark is inadmissible.

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 7 013 998. 

1. The goods

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

Class 32: Beers, mixed drinks containing beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 32: Aloe vera drinks (non alcoholic); alcohol free beverages; aperitifs, non-alcoholic; soya-based beverages, other than milk substitutes; lemonades; grape must, unfermented; cider (without alcohol); beer-based cocktails; cocktails, non-alcoholic; kvass (non-alcoholic beverages); preparations for making liqueurs; lithia water; mineral water (beverages); preprations for making mineral water; smoothies; must; preparations for making beverages; isotonic drinks; non-alcoholic honey-based beverages; non-alcoholic fruit extracts; fruit nectars, non-alcoholic; orgeat; beer; essences for making beverages; aerated water (preparations for making -); tomato juice (beverage); sarsaparilla [non-alcoholic beverage]; seltzer water; syrups for beverages; syrups for lemonade; malt wort; malt beer; soda water; table waters; whey beverages; sorbets (beverages); fruit juice; vegetable juice [beverage]; aerated water; pastilles for effervescing beverages; powders for effervescing beverages; pastilles for effervescing beverages; extracts of hops for making beer; ginger ale.

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 aloe vera drinks (non alcoholic); alcohol free beverages; aperitifs, non-alcoholic; soya-based beverages, other than milk substitutes; cider (without alcohol); cocktails, non-alcoholic; kvass (non-alcoholic beverages); lithia water; mineral water (beverages); smoothies; isotonic drinks; non-alcoholic honey-based beverages; sarsaparilla [non-alcoholic beverage]; seltzer water; soda water; table waters; whey beverages; sorbets (beverages); vegetable juice [beverage]; aerated water; ginger ale are included in the broad category of the opponent’s mineral and aerated waters and other non-alcoholic drinks. Therefore, they are identical.

The contested lemonades; grape must, unfermented; must; fruit nectars, non-alcoholic; tomato juice (beverage); fruit juice; are included in the broad category of the opponent’s fruit drinks and fruit juices. Therefore, they are identical.

The contested beer; malt beer are included in the broad categories of the opponent’s beers, mixed drinks containing beers. Therefore, they are identical.

The contested preparations for making liqueurs; preparations for making mineral water; preparations for making beverages; non-alcoholic fruit extracts; orgeat; essences for making beverages; aerated water (preparations for making -); syrups for beverages; syrups for lemonade; malt wort; pastilles for effervescing beverages; powders for effervescing beverages; extracts of hops for making beer are included in the broad category of the opponent’s syrups and other preparations for making beverages. Therefore, they are identical.

The contested beer-based cocktails are highly similar to the opponent’s beers, mixed drinks containing beers. These goods have the same nature and purpose. They also have the same producers, distribution channels and relevant consumers, and they are in competition with each other.

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 or highly similar are directed at the public at large and at the professional public.

The degree of attention is considered to be average.

3. The signs

BOHEMUS
Earlier trade mark	Contested sign

The relevant territory is 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 ‘BOHEMUS’ and ‘BOHEMSCA’ are meaningful in certain territories, for example in those countries where Czech and Slovakian is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Czech, non-Slovakian-speaking part of the public.

Contrary to the applicant’s argument, although the verbal elements of the marks, considered as a whole, have no meaning for the relevant public, they both allude to the region of Bohemia and/or to something bohemian (understood as unconventional, or artistic related) due to the close linguistic equivalents (i.e. ‘bohemia’ in Spanish, ‘bohème’ in Italian, ‘bohême’ in French, ‘bohemen’ in Dutch, ‘böhmens’ in German). However, the words have no meaning that could be related to the goods at issue. Therefore, they are considered to be distinctive to an average degree.

As regards the contested sign, it is composed of the white word ‘BOHEMSCA’ placed on a light black background which has a purely decorative nature and therefore is considered non-distinctive. Moreover it is composed of a depiction of a green rabbit and a yellow owl. These elements are normally distinctive for the relevant goods.

However, 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).

The contested sign has no element that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the first five letters ‘BOHEM’ and the letter ‘S’ which is placed in a different position. They differ in the remaining letters and also in the additional elements of the contested sign which have less impact in the overall impression for the reasons explained above.

Therefore, the signs are considered visually similar to a low degree, at least.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘BOHEM’ placed at the beginning, and differ in the ending parts ‘SCA’ vs. ‘US’. Both marks coincide in the number of syllables and have a similar rhythm and intonation.

Therefore, the signs aurally are highly similar.

Conceptually, as such, neither sign conveys a concept but both do allude to the same one, as explained above and therefore, they are similar to a low 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.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘BOHEM’. In support of its argument the applicant refers to the existence of more than four hundred trade marks several containing the element ‘BOHEM’ without specifying the territory in which they are registered.

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. 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 ‘BOHEM’. Under these circumstances, the applicant’s claims must be set aside.

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.

5. Global assessment, other arguments and conclusion

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).

In the present case the goods are identical or highly similar and the signs are similar to different degrees on the three levels of the comparison, on account of the sequence of letters ‘BOHEM’ present identically at the beginning of both signs, where consumers usually pay more attention.

The differences in the ending parts ( ‘US’/ ‘SCA’) and the figurative elements of the contested sign, which have less impact in consumers, are not enough to outweigh the similarities between the signs and to exclude likelihood of confusion in this case.

Account is 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).

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-Czech, non-Slovakian-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 013 998. 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 all the contested goods.

As the earlier right ‘European Union trade mark registration No 7 013 998’ 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

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

Martina GALLE

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.