OPPOSITION No B 3 004 580

Irish Distillers Limited, Simmonscourt House, Simmonscourt Road - Ballsbridge, Dublin 4, Ireland (opponent), represented by Eve-Marie Wilmann-Courteau (Pernod Ricard, SA), 12 Place des Etats-Unis, 75016 Paris, France (employee representative)

a g a i n s t

West Coast Bryggeri AB, Bergskäddegatan 5, 42658 Vastra Frolunda, Sweden (applicant).

On 26/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 004 580 is upheld for all the contested goods.

2. European Union trade mark application No 17 161 605 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 17 161 605 for the word mark ‘West Coast Beersmiths’. The opposition is based on, inter alia, European Union trade mark registration No 13 218 888 for the three‑dimensional 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.

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 13 218 888 for the three-dimensional mark since it encompasses a broader list of goods, including goods in Class 32.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

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

The contested goods are the following:

Class 32: Coffee-flavoured beer; non-alcoholic beer flavoured beverages; barley wine [beer]; IPA (Indian pale ale); non-alcoholic beer; kvass [non-alcoholic beverage]; lagers; malt wort; malt beer; beer wort; pale ale; porter; shandy; flavoured beers; craft beers; stout; black beer [toasted-malt beer]; beer; wheat beer; beers enriched with minerals; low alcohol beer; beer-based cocktails; beer-based beverages; imitation beer.

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.

As the opponent commented in its observations, the contested coffee-flavoured beer; barley wine [beer]; IPA (Indian pale ale); lagers; malt beer; pale ale; porter; flavoured beers; craft beers; stout; black beer [toasted-malt beer]; beer; wheat beer; beers enriched with minerals; low alcohol beer are, indeed, various types of beer drinks. By way of example, lager is a type of light beer, ales are strong beers fermented in an open vessel using yeasts that rise to the top of the brew, porter is a dark sweet ale brewed from black malt, stout is a dark-brown beer like porter, but heavier and sweeter and containing a higher percentage of hops. Consequently, all these goods are identically listed or contained within the opponent’s broader category of beer. These goods are then identical.

Wort is a liquid, produced from malt and hot water, which can be fermented to make beer or ale. Consequently, the contested malt wort and beer wort are considered identical to the opponent’s syrups and other preparations for making beverages, to the extent that they are essential preparations for making beer.

The contested kvass [non-alcoholic beverage] is a fermented non-alcoholic drink, traditionally consumed by the Slavic and Baltic countries. The contested non-alcoholic beer; non-alcoholic beer flavoured beverages are also beverages with no alcoholic content. These goods are consequently included in, or at least overlap with, the opponent’s non-alcoholic drinks and thus, they are identical.

The contested shandy is an alcoholic drink made of beer and ginger beer or lemonade. The contested imitation beer is a substitute for beer, usually with no or very low alcohol content. The contested beer-based cocktails; beer-based beverages are drinks based on beer and mixed with other (non-alcoholic or alcoholic) ingredients such as soft drinks. All these goods are highly similar to the opponent’s beer since they have the same purpose and method of use. Furthermore, they coincide in their relevant public distribution channels and manufacturers. They may be in direct competition with each other as alternative beer-based beverages.

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.

Most of the goods involved, except for the abovementioned preparations for making beverages (beer wort; malt wort), are everyday consumer goods, bought at affordable prices, which are normally widely distributed; ranging from the beverage section of a department store to bars and cafes (26/06/2018, T‑556/17, Staropilsen; Staroplzen / Staropramen et al., EU:T:2018:382, § 26).

In that sense, the goods found to be identical or highly similar are mostly directed at the public at large, whereas preparations for making beverages are more directly targeted at the professional public; the degree of attention is deemed to be average in all of the above cases.

c) The signs

	West Coast Beersmiths
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 elements of the two signs will be meaningful in certain territories, for example in those countries where English is understood. Since this may have an impact on the conceptual comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Irish consumers.

For the sake of completeness, it is noted that the contested sign is a word mark. Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower- or upper‑case letters, or in a combination thereof.

The expression ‘West Coast’ contained in both signs may be understood as a general reference to ‘a seaside with a western location’ or more specifically as ‘the coastline along which the continental western United States meets the North Pacific Ocean’. In any of the above cases, the expression as a whole remains of normal distinctiveness since it does not convey a clear and objective message about the nature or characteristics of the goods, neither does it inform consumers about the particular place of production of said beverages.

The element ‘Beersmiths’ of the contested sign is not an existing word in English. However, given the fact that consumers tend to break words into elements when they suggest meanings to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58), in this particular case, consumers will be capable of immediately grasping the word ‘beer’ (a bitter alcoholic drink made from grain) and the following word ‘smiths’, which consumers will most likely associate with the English word ‘smith’ (an abbreviation of ‘blacksmith’), namely ‘a person who makes or repairs things in iron by hand’. Consequently, as the opponent suggests, the entire verbal element ‘beersmiths’, albeit an invented word, may bring into mind the idea of ‘beer experts’ and in that context it may be laudatory and, respectively, with somewhat lesser distinctiveness in relation to the goods in question, namely beer, beer-based beverages and beer alternatives.

As regards the earlier three-dimensional mark, it is composed of 1). a representation of a green bottle, to which consumers will primarily ascribe a mere packaging function, and 2). black labels affixed to the bottle and containing the distinctive verbal element, ‘West Coast’, as addressed above, and less or non-distinctive verbal elements. The word ‘original’ depicted in large white letters along the bottle will be simply perceived as a common component featured on products to indicate ‘of or relating to an origin or beginning; the first and genuine form of something, from which others are derived’. As such, this word is fully descriptive and a non-distinctive element of the sign. Furthermore, the word ‘cooler’ depicted in smaller standard letters under ‘West Coast’ will be either generally associated with ‘a container used for keeping liquids cold’ or particularly with ‘a drink consisting of wine, fruit juice, and carbonated water’ (information extracted from Collins Online Dictionary on 17/03/2019 at https://www.collinsdictionary.com/dictionary/english/cooler). To that extent, it is deemed at most weak in relation to the relevant products as it directly describes their nature or alludes to their characteristics of chilled drinks. Consequently, it is noted that when encountering the earlier mark consumers will focus on the distinctive part ‘West Coast’ and perceive the remaining verbal and figurative elements of the sign, including the visually more striking word ‘original’ as mere descriptive or informative messages concerning the goods’ nature or/and characteristics and the packaging details thereof.

Account is further taken of the fact that 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. Consequently, applying this finding, it is highly probative that consumers will also pay more attention to the verbal part ‘West Coast’ in the contested sign due to its more prominent position, in addition to the slightly weaker character of its second component, ‘Beersmiths’.

Visually and aurally, the signs coincide in the expression ‘West Coast’, identically present in both of them. Given the indicative nature of the remaining verbal elements in the earlier mark, this is, moreover, the verbal part which will be most likely used for aural reference to the goods. Consequently, aurally, the signs will rather differ in the additional word ‘Beersmiths’ of the contested sign, which has no counterpart in the earlier mark. The earlier mark shows some further visual differences with respect to the bottle and labels containing other components. The importance of those differing elements was however referred to above as merely functional and/or limited to the packaging of the said goods.

Therefore, bearing in mind the findings above, as well as the different distinctiveness of the various components of the signs, the signs are found to be visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning produced by their coinciding parts and given the distinctiveness of the remaining elements as discussed above, the signs are conceptually similar to an average 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 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, despite the presence of some non‑distinctive or weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the public might make between the two marks and on the degree of similarity between the signs and the goods. Furthermore, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

Finally, 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 are found identical and highly similar and, as mentioned above in section b), the relevant public will apply an average degree of attention upon purchase. In addition, the earlier mark is found to enjoy a normal degree of distinctiveness as a whole.

The conflicting signs are considered visually, aurally and conceptually similar to an average degree, on account of their coinciding verbal element ‘West Coast’, which is, moreover, the more or most distinctive component in each sign and will serve consumers as a reference to the commercial origin of the beverages. 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).

Consequently, in the present case, given the indicative, decorative or laudatory character of the additional verbal and figurative elements of the signs, it is reasonable to assume that the above similarities may, indeed, lead the public to believe that the products share the same commercial origin.

Furthermore, 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. Indeed, given the identically reproduced distinctive part ‘West Coast’ in both signs, 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 beverages that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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). By way of example, consumers relying only on the phonetic reference to the marks, will not be capable of visualising and comparing the additional figurative or verbal elements which the signs feature.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public such as the Irish consumers. 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 registration No 13 218 888 for the three-dimensional mark . 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 right 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, 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

Inés GARCÍA LLEDÓ

Manuela RUSEVA

Teodora TSENOVA-PETROVA

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.