OPPOSITION No B 3 032 003

George Bateman & Son Limited, Salem Bridge Brewery, Wainfleet, PE24 4JE Skegness, United Kingdom (opponent), represented by Nucleus IP Limited, 10 St. Bride Street, EC4A 4AD London, United Kingdom (professional representative)

a g a i n s t

Omnipollo AB, Munkbrogatan 2, SE-111 27 Stockholm, Sweden (applicant), represented by Otmore Limited, Dragonara Business Centre, 5th Floor, Dragonara Road, STJ 3141 St Julian’s, Malta (professional representative).

On 24/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 032 003 is upheld for all the contested goods.

2. European Union trade mark application No 17 382 201 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 17 382 201 for the word mark ‘Yellow Belly Imperial Stout’. The opposition is based on United Kingdom trade mark registration No 3 008 879 for the word mark ‘YELLA BELLY’, in relation to which the opponent invoked Articles 8(1)(b) and 8(5) EUTMR. The opponent also relied on non-registered trade mark ‘YELLA BELLY’, in relation to which it invoked Article 8(4) EUMTR.

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.

a) The goods

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

Class 32: Beer, ale, lager, stout, porter, shandy; hop extracts; non-alcoholic and low-alcoholic beverages; mineral water; aerated water; fruit drinks; fruit juices; mixtures containing any of the aforesaid goods; preparations for making any of the aforesaid goods.

The contested goods are the following:

Class 32: Soft drinks; beer and brewery products; preparations for making beverages.

Beer is identically contained in both lists of goods.

The contested soft drinks are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are identical.

The contested preparations for making beverages overlap with the opponent’s preparations for making any of the aforesaid goods (beer, ale, lager, stout, porter, shandy; non-alcoholic and low-alcoholic beverages; fruit drinks; fruit juices). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested brewery products are at least similar to the opponent’s beer. These goods, at the very least, have the same nature, distribution channels and target the same public.

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 identical or at least similar are directed, primarily, at the public at large. However, some of the goods, such as the contested preparations for making beverages also target the professional public.

The applicant argues that the degree of attention of the relevant public is high because the craft beer industry is growing rapidly, and it is attracting people who have a preference for local, environmentally sustainable premium products and who tend to have a higher degree of brand loyalty. However, neither of the marks specifically covers specifically craft beer. The goods involved are indeed everyday consumer goods, bought at affordable prices that are normally widely distributed, ranging from the food section of a department store to bars and cafes (05/04/2018, R 2459/2018‑1, Munin / Monin et al., § 18; 26/06/2018, T‑556/17, STAROPILSEN; STAROPLZEN / STAROPRAMEN et al., EU:T:2018:382, § 26). Therefore, the applicant’s argument is not well founded.

c) The signs

YELLA BELLY	Yellow Belly Imperial Stout
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 marks under comparison are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant if word marks are depicted in upper- or lower-case letters or a combination thereof. For example, the earlier mark could be depicted in title case, ‘Yella Belly’. For the same reasons, word marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Although ‘Yellow Belly’ could be understood as a reference to a person from Lincolnshire, England, an important part of the relevant public will perceive it as a slang expression used for the noun ‘coward’; the same meaning is likely to be attributed to the expression ‘Yella Belly’ (information extracted from Urban Dictionary and Collins Dictionary, Annex 2 to the opponent’s observations of 14/06/2018). The applicant argues that the meaning of a slang expression is typically restricted to a particular context or group of people and that the relevant public for beer is unlikely to know this particular slang expression. However, even if a part of the public was to understand the words ‘Yellow’ and ‘Belly’ in their literal meanings, namely as a reference to a colour and a part of a human body, the same meanings would be attributed to the words ‘Yella’ and ‘Belly’, given that ‘Yellow’ and ‘Yella’ are visually similar and aurally highly similar or identical. Whatever the meaning, neither ‘Yella Belly’ nor ‘Yellow Belly’ are descriptive, allusive or otherwise weak in relation to the relevant goods, their inherent distinctiveness is average.

The adjective ‘Imperial’ of the contested sign is often used to indicate that a product is of superior quality, for example, in English it means ‘of superior or unusual size or excellence’ (information extracted from Merriam-Webster on 12/07/2019 at www.merriam-webster.com/dictionary/imperial); this meaning may apply to various alcoholic and non-alcoholic beverages (15/05//2001, R 166/2000‑3, BRUT IMPERIAL, § 16; 15/05/2001, R 236/2000‑3, DRY IMPERIAL, § 17; 21/03/2001, R 168/2000‑3, NECTAR IMPERIAL, § 15; 12/03/2001, R 167/2000‑3, RESERVE IMPERIALE, § 15). As it is highly laudatory, its inherent distinctiveness is low, at most. The noun ‘Stout’ would be understood as ‘[a] kind of strong, dark beer brewed with roasted malt or barley’ (information extracted from Lexico Dictionary on 11/07/2019 at www.lexico.com
/en/definition/stout). This meaning is directly descriptive and non-distinctive for the contested beers and distinctive to at most a low degree for the remaining goods, either because it may be perceived as deceptive (soft drinks) or as an indication of the purpose of these goods (e.g. preparation of stout beverages regarding the contested brewery products; preparations for making beverages).

Visually and aurally, the signs coincide in the sequence of letters ‘Yell**’ and the word ‘Belly’. The signs’ first elements differ visually in their endings, ‘Yella’ and ‘Yellow’. However, this difference is aurally less relevant (or irrelevant), as their pronunciation will be highly similar in certain parts of the relevant territory and identical in other parts. The contested sign differs in its remaining two words, ‘Imperial’ and ‘Stout’, which have no counterparts in the earlier mark. However, the resulting difference should not be overestimated since these elements are not particularly distinctive (or non-distinctive) and are located in a more distant position.

Therefore, the signs are visually similar to an average degree and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Bearing in mind that the earlier mark, ‘Yella Belly’, and the most distinctive elements of the contested sign, ‘Yellow’ and ‘Belly’, will be associated with the same concept(s), as explained above, while the remaining two elements of the contested sign differ conceptually, but they are not particularly distinctive (or non-distinctive), 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 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.

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 that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

The goods are identical and at least similar. The inherent distinctiveness of the earlier mark is normal. Both signs are word marks, and 9 out of 10 letters of the earlier mark are incorporated in the first two elements of the contested sign that constitute its most distinctive part. The slight visual difference at the end of the signs’ first verbal elements, ‘Yella’ and ‘Yellow’, is compensated on an aural level, as explained above, and the expressions ‘Yella Belly’ and ‘Yellow Belly’ will evoke the same distinctive concept.

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). Therefore, the slight difference at the end of the signs’ first element is more likely to be overlooked by the relevant public. The contested sign additionally differs in the words ‘Imperial’ and ‘Stout’, which, however, are distinctive to at most a low degree or non-distinctive. Therefore, their impact on the consumers’ perception of the signs is much lower than that of the coinciding part.

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 fact that some of the goods are (at least) similar is compensated by a high degree of aural and conceptual similarity between the signs.

In view of an average degree of visual similarity and a high degree of aural and conceptual similarity as well as the identity and similarity of the goods, likelihood of confusion between the signs seems inevitable.

Therefore, the opposition is upheld and the application is rejected in its entirety.

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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR and the examined earlier right, there is no need to further examine the other earlier mark (non-registered trade mark ‘YELLA BELLY’), and other grounds invoked by the opponent, namely Articles 8(4) and 8(5) EUTMR.

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

Liliya YORDANOVA

Jakub MROZOWSKI

Ewelina ŚLIWIŃSKA

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.