The EU General Court (GC), in Scandic Distilleries SA v OHIM,  T-460/11, has upheld a decision from the Board of Appeal of the Office of Harmonization for the Internal Market (OHIM) confirming that there was a likelihood of confusion between a figurative mark for BÜRGER and an earlier Community trade mark (CTM) registration for the word mark BÜRGERBRÄU, both registered in respect of “beers” in Class 32.
Scandic Distilleries contested the Board of Appeal’s decision, alleging breach of Article 8(1)(b) of CTM Regulation No. 207/2009, on the basis that the degree of similarity between the conflicting signs was so low that there could not be a likelihood of confusion between them, even in the case of identical or similar goods.
The GC found that the Board of Appeal had carried out correctly the global assessment of the likelihood of confusion as regards the visual, phonetic and conceptual similarity of the marks in question, based on the overall impression given by the marks and taking into account their distinctive and dominant components. As the mark was composed of word elements and figurative elements, and word elements were generally more distinctive, the GC observed that the average consumer would more easily refer to the goods in question by citing their name, rather than describing the figurative element of the mark in question.
The GC agreed with the Board of Appeal that the various figurative elements of the mark, combining different colours and including an assortment of emblems, were not particularly imaginative and would be perceived as decorative elements.
The word BÜRGER, which appeared in capital letters and stood out because of its position and very large size of lettering as compared with all the other elements, was undeniably the dominant element of the mark applied for. The other word elements, namely “premium pils”, “traditional brewed quality” and “original” on the label were subsidiary and not very distinctive as regards the products concerned. Further, owing to the size of the letters used, these word elements were not immediately legible to the consumer targeted. Given that the dominant element of the mark applied for coincided with the word BÜRGER, which constituted the first six letters of the earlier mark, there was a certain degree of visual similarity between the conflicting signs, even if it was low.
The GC agreed there was an average degree of phonetic similarity between the conflicting signs, owing to the fact that the relevant consumers would tend not to pronounce the word elements “premium pils”, “traditional brewed quality” and “original”.
The GC agreed that the Board of Appeal found rightly that the conflicting signs were conceptually similar for the Germanspeaking public insofar as the dominant and most distinctive element of the mark applied for—the word “BÜRGER” and the first part of the earlier mark, “BÜRGER” that was the most distinctive part for that public—both referred to the concept of “citizen”. In that respect, the GC pointed out that it was not necessary that the likelihood of confusion existed in all Member States and all linguistic regions of the European Union. The unitary character of the CTM meant that an earlier CTM could be relied upon in opposition proceedings against an application for registration of another CTM that would affect adversely the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union. Since the relevant territory was that of the European Union, it sufficed to observe that in the German-speaking part of the European Union the word “bräu” referred to the brewing of beer and would therefore be perceived by the average consumer as descriptive of the goods concerned, so the consumers’ attention would focus particularly on the word “BÜRGER”. There was therefore a conceptual similarity between the two marks.
Likelihood of Confusion
Accordingly, owing to this conceptual similarity, and despite a low degree of visual similarity and an average degree of phonetic similarity, the conflicting signs were globally similar. Given that the goods concerned were identical, the GC found that the Board of Appeal had concluded correctly that there was a likelihood of confusion between the conflicting signs.
This conclusion was not invalidated by Scandic Distilleries’ arguments that the word “bürgerbräu” was a common name for beers and that the distinctive character of the earlier mark was diluted because of the presence on the market of other trade marks for beer containing the word “bürgerbräu”. In that regard, the GC commented that the provision of photocopies of beer labels allegedly belonging to third parties did not provide evidence of use of those signs in the European Union. In addition, although the distinctive character of the earlier mark had to be taken into account in assessing the likelihood of confusion, this was only one factor. Even where an earlier mark had a weak distinctive character, there could still be a likelihood of confusion, in particular where the signs and the goods or services concerned were similar.