http://ipkitten.blogspot.com/2025/02/think-gin-and-non-alcoholic-beer-are.html
On 24 January last, the Fifth Board of Appeal (BoA) of the EUIPO refused the registration of “KINGSMAN” for several goods in Class 32 of the Nice Classification due to the likelihood of confusion with the earlier word mark “KINGSMAN” under Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR).
Background
Agate Integrated Engineering SDN BHD (applicant) filed an application on 29 December 2021 to register the word “KINGSMAN” for the following goods in Class 32:
| Kat-pals discussing the similarity of non-alcoholic and alcoholic drinks, all while enjoying beers! |
Alcoholic beer, ale, lager, stout and porter; craft beer; dark beer; flavored beers; low-alcohol beer; maize beer; malt beer; preparations for making beer; shandy; light beer; beer-based cocktails; fruit-flavored beer; malt beverages; mineral and aerated waters and other non-alcoholic drinks; non-alcoholic beer, ale, lager, stout and porter; fruit drinks and fruit juices; beer, ale, lager, stout and porter-based alcoholic beverages; non-alcoholic beverages containing beer, ale, lager, stout and porter; syrups and other preparations for making beverages.
After the application’s publication in May 2022, Marv Studios Limited (opponent) contested the registration of the sign for all the goods listed above. Having registered the “KINGSMAN” word mark inter alia in Class 33 (alcoholic beverages except beers; spirits and liquors; whisky; bourbon; brandy; rum; vodka; gin; tequila; vermouth; champagne; wine; sparkling wine; cava) in 2016, the opponent argued that the applicant’s sign would create a likelihood of confusion on the part of the public with its goods.
In May 2024, the Opposition Division partially upheld the opposition. It found a likelihood of confusion with the opponent’s trade mark in relation to the goods for which the applicant sought registration, except for the following: preparations for making beer, mineral and aerated waters, fruit drinks and fruit juices, and syrups and other preparations for making beverages.
The applicant appealed the decision to the BoA.
BoA decision
The Board dismissed the appeal (R1426/2024-5).
First of all, it clarified that the applicant’s word mark “KINGSMAN” could proceed to registration for preparations for making beer, mineral and aerated waters, fruit drinks and fruit juices, and syrups and other preparations for making beverages, due to the absence of a cross-appeal by the opponent.
Then, the Board assessed whether the screenshot of a search result from the EUIPO’s Similarity Tool, submitted by the applicant for the first time at the appeal stage, was admissible. Pursuant to Article 95(2) EUTMR, the Board found it admissible, particularly due to the absence of any “negligence or delaying tactics” on the part of the applicant [more on this was previously covered on the IPKat here].
| The screenshot from the EUIPO’s Similarity Tool, comparing ‘beer’ with the alcoholic beverages in Class 33 but, interestingly, not with ‘alcoholic beverages (except beers)’ |
Next, the Board moved on to the assessment of likelihood of confusion. According to settled case law, likelihood of confusion arises when the public may mistakenly believe that the goods and services in question originate from the same undertaking or from economically linked undertakings. Thus, to decide whether a likelihood of confusion exists in a specific case, revealing the perception of the relevant public encountering the signs in connection with the corresponding goods is necessary.
Relevant public
The test for likelihood of confusion rests on the fictitious average consumer of the relevant goods and services, who is reasonably well informed and reasonably observant and circumspect. By referring to the relevant authorities, the BoA held that both the applicant’s and the opponent’s goods “target the public at large” who would display “an average level of attention” towards those goods (paras 30-31).
Comparison of the goods
In order to establish the likelihood of confusion, it should also be demonstrated that the relevant goods and services are similar. The assessment of similarity of the goods depends on comparing their nature, intended purposes, methods of use, end-users, whether they are competitors or subsidiaries, and any other relevant factor. When applied to the case at hand, the Board found that alcoholic beverages in Class 32, for which the applicant is seeking trade mark registration, are “similar at least to an average degree”, while the non-alcoholic beverages therein are “similar at least to a low degree” to the opponent’s alcoholic beverages in Class 33. (It seems that the BoA did not consider the Similarity Tool’s findings as binding, as opposed to an earlier approach adopted by the EUIPO Cancellation Division, which was discussed on the IPKat here.)
The presence of alcohol in a beverage is often a deal breaker for many consumers. Therefore, it might be tempting at first glance to argue against a finding of low degree of similarity between alcoholic and non-alcoholic beverages. [Merpel: Gin equals non-alcoholic beer?! I do not think so…] However, as the BoA convincingly demonstrated, focusing solely on the presence of one ingredient – namely, alcohol – would oversimplify the assessment of similarity of goods. Additionally, the non-alcoholic beverages in Class 32 can be viewed as alternatives to the alcoholic ones in Class 33, catering to consumers who either avoid alcohol or opt for non-alcoholic options, which are sold or served at the same locations. It thus follows that the goods in question should at least be similar to a low degree. [Merpel: Ohh, now I see!]
Comparison of the marks
The settled case law and EUIPO Guidelines clearly indicate that the comparison of word marks should focus solely on the relevant word(s), without taking into account the fonts used or the choice of upper and lower-case letters. Accordingly, the BoA saw no difference between the signs, and concluded that the contested sign and the opponent’s word mark are identical.
Overall assessment of the likelihood of confusion
Building up on all these findings, the BoA upheld the Opposition Division’s decision and refused the registration of the contested sign. Since the level of attention of the relevant public is not high, all the contested goods are similar to the opponent’s goods at hand either to a low or an average degree, and the contested sign and the earlier word mark are identical, the Board found it highly likely that upon encountering these identical signs used on similar goods, a “non-negligible part of the relevant public” would be confused as to the commercial origin of the goods.
Comment
Having recently had drinks with Kat-pals, some of whom preferred non-alcoholic beers, this Kat found it interesting at first that beverages containing alcohol could be considered similar to alcohol-free alternatives. However, after a thorough review, the Board’s conclusion was found to be appropriate and, more importantly, imperative.
It might always be possible for a company that produces gin, for example, to decide to implement a brand extension in order to address a broader consumer base, by producing non-alcoholic alternatives, or complementary beverages, such as tonics to be consumed together with its gin. With this in mind, allowing another brand to use the same sign as the earlier company’s trade mark in relation to non-alcoholic beverages inevitably creates a likelihood of confusion as to the commercial origin of those products.
Moreover, given the places and circumstances in which alcoholic and non-alcoholic drinks are sold or served, a consumer with an average level of attention might mistake an alcoholic drink bearing the identical sign or brand name for her long-time favourite non-alcoholic treat, or vice versa. Although in the latter scenario, the consumer might only be disappointed by receiving an alcohol-free drink when expecting to enjoy a savoury gin or wine, the mistake in the first case might cost the consumer more than emotional distress. This decision, therefore, demonstrates the significance of adopting a flexible approach in assessing the similarity of goods and services that are capable of creating a likelihood of confusion, not only to respect the prior rights of trade mark proprietors but also, in some cases, to safeguard the wellbeing of consumers
Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).