OPPOSITION No B 2 991 431

Castle Brands Inc., 122 East 42nd Street, Suite 4700, 10168-4091, New York, United States (opponent), represented by Mewburn Ellis LLP, City Tower 40 Basinghall Street, EC2V 5DE, London, United Kingdom (professional representative)

a g a i n s t

Ivano Trombino, Via Pianette1, 87046 Montalto Uffugo (CS), Italy (applicant)

On 14/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 991 431 is upheld for all the contested goods.

2. European Union trade mark application No 17 072 216 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 17 072 216 in Class 33. The opposition is based on the European Union trade mark registration No 10 945 335 for the word mark ‘JEFFERSON’S’. 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

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Liqueurs; Bitters; Spirits and liquors; Flavored tonic liquors; Extracts of spiritous liquors; Digesters [liqueurs and spirits]; Liquor-based aperitifs; Alcoholic aperitif bitters; Alcoholic beverages containing fruit; Spirits [beverages]; Potable spirits; Pre-mixed alcoholic beverages; Preparations for making alcoholic beverages; Alcoholic beverages of fruit; Alcopops; Alcoholic extracts; Alcoholic essences.

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 33

The contested liqueurs, bitters, spirits and liquors, flavoured tonic liquors, digesters [liqueurs and spirits], liqueur based aperitifs, alcoholic aperitif bitters, alcoholic beverages containing fruit, spirits [beverages], potable spirits, pre-mixed alcoholic beverages, alcoholic beverages of fruit and alcopops are diverse types of alcoholic beverages. They are all included in the broad category of the earlier alcoholic beverages (except beers). Therefore, they are identical.

The contested Extracts of spiritous liquors, preparations for making alcoholic beverages, alcoholic extracts and alcoholic essences are considered similar to a low degree to the opponent´s alcoholic beverages (except beers). These goods can be found in the same or neighbouring sections of supermarkets, although they can also be distinguished to some extent by subcategory. They may target the same consumers and originate from the same undertakings.

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 similar to low degree are directed mainly at the public at large. The contested Extracts of spiritous liquors, preparations for making alcoholic beverages, alcoholic extracts and alcoholic essences may also target the professional public. The Opposition Division will focus its assessment on the general public as it is the part of the public more prone to confusion. The goods are all alcoholic beverages as well as preparations used to make or prepare such beverages. They are mostly meant for everyday consumption and normally widely distributed, ranging from the food section of supermarkets, department stores, and other retail outlets to restaurants and cafes. The consumer of these goods is a member of the general public, who will demonstrate an average level of attention when purchasing such goods (see, to that effect, 19/01/2017, T-701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein).

3. The signs

JEFFERSON’S
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 expression ‘Amaro Importante’ has a meaning in Italian. It means ‘Important Amaro’, in which the term ‘Amaro’ denotes a type of Italian alcoholic liquor flavoured with bitter herbs and roots. This term is therefore descriptive of the relevant goods. The term ‘Importante’ is laudatory. The entire expression will, thus, have very limited distinctiveness for the Italian speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.

The earlier sign is a word mark consisting of the verbal element ‘Jefferson’s’. The element ‘Jefferson’s’ as such has no meaning in Italian and ‘Jefferson’ is not a common last name in Italy but it will be perceived as a foreign surname. Since this verbal element is neither descriptive nor allusive of the characteristics of the goods involved, it is of normal distinctive character.

The contested sign is a figurative sign consisting of the various verbal and figurative elements, as presented above. The word ‘Jefferson’ will be perceived as a foreign surname, as explained above.

The term ‘Since 1871’ will be perceived as indicating the starting year of production of the goods in question, because this a commonly used phrasing in labels even though it is in English. It will be understood as such by a relevant part of the Italian speaking public. It is therefore is non-distinctive.

The expression ‘amaro importante’ has been analysed above, its distinctiveness will be very limited.

The two dominant elements of the contested sign are the verbal element ‘Jefferson’ and the figurative element (consisting of the image of a man wearing a top hat), since they are of much bigger size and stronger visual impact than the rest of the elements. It is likely that the relevant public will perceive the image of the male person as the person referred to, whose surname is ‘Jefferson’. Both elements are neither descriptive nor allusive of the characteristics of the goods involved, and therefore of normal distinctive character.

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). In this case, it is relevant to note that the coincidences between the marks are found in their verbal elements. Considering the composition of the contested sign and in accordance with this principle, it can be concluded that, for the consumers, the verbal element ‘JEFFERSON’ will have a stronger impact as an indicator of the commercial origin of the goods than the figurative and stylisation features of the sign.

Visually, the signs coincide in the element ‘Jefferson’ that constitutes the majority of the verbal element in the earlier sign and also has a greater impact in the contested mark, for the reasons explained above (e.g. being distinctive and co-dominant).

They differ in the last letter of the earlier mark that is separated with an apostrophe and in the rest of elements forming the contested sign, described in detail above, some of which have been considered to have limited distinctive character.

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

Aurally, the pronunciation of the signs coincides in the sound of the element ‘Jefferson’, present identically in both signs. This coinciding element has a greater impact in the contested mark, for the reasons explained above (e.g. being distinctive and co-dominant).

The pronunciation differs in the sound of the last letter ‘s’ of the earlier sign, which has no counterpart in the contested mark. The pronunciation also differs in the sound of the remaining verbal elements of the contested sign which are unlikely to be pronounced given their very limited degree of distinctive character (or complete lack thereof), as well as their size and position within the sign.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Both will be perceived as referring to a person with the surname ‘Jefferson’. This concept is reinforced by the image of the man in the contested sign. The concepts conveyed by the differentiating elements ‘Amaro Importante’ and ‘Since 1871’ lack distinctiveness or have a very limited distinctive character and, consequently, their impact on the conceptual perception of the sign will be limited as well.

Therefore, it is considered that 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 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

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.

The goods compared have found to be partly identical and partly similar to a low degree. They are directed at the public at large who will pay an average degree of attention during the purchase. The earlier mark is of normal distinctive character.

The marks have been considered to be visually similar to an average degree and aurally and conceptually similar to a high degree.

The coincidences between the marks have been found in the element that is co-dominant and distinctive in the contested sign, and distinctive in the earlier mark, for the reasons explained above. This element, ‘Jefferson’, is also the first part read and pronounced in the contested sign. The differences between the signs have been found in one letter (suffix) of the earlier mark and the rest of elements forming the contested sign which, for the reasons explained above, are of reduced impact.

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 high phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

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 case at hand, it is considered that the coincidences between the signs are enough to outweigh their dissimilarities, and may induce the relevant public to believe that the conflicting goods found to be identical or similar come from the same or economically linked undertakings. The similarities between the signs are such that this finding also applies to the goods found to be similar to a low degree.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant describes the history of the brand which allegedly dates many years back and mentions prestigious awards its goods have won under this trade mark. The applicant stresses the quality of ingredients and special recipes used in the production of its goods. The applicant also claims that the word Jefferson is linked to a story of a captain Jefferson who lived in XIX century and who allegedly was an author of the ancient recipe for amaro.

As to the above the Opposition Division firstly observes that 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. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Secondly, the perception of the signs is assessed from the perspective of the relevant public on the basis of the submissions of the parties and well known facts. The applicant did not prove that the Italian public would perceive the name Jefferson not only as surname but as a historical figure of a captain who invented a recipe for liquor. What is more, the applicant did not even provide any evidence that such person really existed; therefore, this meaning cannot be considered by the Opposition Division, as it is not a well-known fact and it has not been demonstrated through evidence and facts. Lastly, as to the arguments regarding the ingredients used in the production of the goods by the applicant, these factors are irrelevant for the assessment of likelihood of confusion. This is a legal assessment based on the similarity of signs considered as registered or applied for and similarity of goods considered as registered or applied for. Therefore, all the above mentioned arguments of the applicant have to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Italian-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 10 945 335. 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, there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for the all the contested goods.

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 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

Gueorgui IVANOV

Ewelina SLIWINSKA

Jakub MROZOWSKI

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.