OPPOSITION No B 3 059 566

Seamus O'Hara, Carlow Brewing Company, Muine Bheah Business Park, Royal Oak Rd., Bagenalstown, Co. Carlow, Carlow, Ireland (opponent), represented by A2 Estudio Legal, C/ Alcalá 143, 3º Derecha, 28009 Madrid, Spain (professional representative)

a g a i n s t

BH Group USA LLC, 777 Brickell Avenue, Ste. 500, 33131 Miami, United States of America (applicant), represented by William Fry, 2 Grand Canal Square, 2, Dublin, Ireland (professional representative).

On 16/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 566 is upheld for all the contested goods.

2. European Union trade mark application No 17 895 624 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 17 895 624 (word mark 'NOTORIOUS PINK'), namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 14 982 731 (word mark 'Notorious'). 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.

a) The goods

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

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

Class 33: Whiskey, gin, vodka, alcoholic spirits.

The contested goods are the following:

Class 33: Wine.

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 applicant errs in its findings that the contested goods are not similar to the opponent’s. Actually, wine is similar to, for example, the opponent’s alcoholic spirits because they coincide in their nature (alcoholic beverages), the method of use (drinking); these goods are in competition and are targeted at the same relevant public via the same distribution channels.

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 as well as at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

Notorious	NOTORIOUS PINK
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 common element 'Notorious' is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The mentioned common element is understood as being “well-known for something bad” (information extracted on 05/09/2019 at https://www.collinsdictionary.com/dictionary/english/notorious) and is distinctive for the goods at hand.

The element ‘PINK’ of the contested sign will be associated with the colour it denotes (“the colour between red and white”, information extracted on 05/09/2019 at https://www.collinsdictionary.com/dictionary/english/pink) and is at most allusive for the relevant goods but nonetheless distinctive. As the applicant points out correctly, wine is not referred to as being pink but rather rosé (or red or white).

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.

Moreover, in the case of word marks, the word as such is protected and not its written form. Therefore, it is irrelevant whether word marks, like in the present case, are represented in small or capital letters.

Visually, the signs coincide in ‘Notorious’, the only element of the earlier mark and the initial and more attention drawing part of the contested sign. However, they differ in the contested sign’s second element ‘PINK’.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛NOTORIOUS’, present identically in both signs. The pronunciation differs in the sound of the letters ‛PINK’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are similar to an above 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 (“well-known for something bad”), the signs are conceptually similar to an above 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.

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.

e) 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 were found to be similar and due to the visual, aural and conceptual similarity and the absence of any dominant or non‑distinctive elements in the signs, a likelihood of confusion exists.

Even though it is true that the contested sign is composed of two elements, this cannot out rule a likelihood of confusion. Especially not when taking into account that the earlier mark is contained in its entirety in the contested sign, has an independently distinctive role in it and is placed in the initial and more attention drawing position of the contested sign.

Taking account 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) and the only average attention in the present case, even the addition of a second distinctive element ('PINK') in the contested sign cannot avoid a likelihood of confusion.

Moreover, 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, 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), namely the “pink” product line of the same brand.

Considering all the above, there is a likelihood of confusion at least 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 registration No 14 982 731. It follows that the contested trade mark must be rejected for 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

Martin EBERL

Swetlana BRAUN

Peter QUAY

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.