News

World Trademark Review: No likelihood of confusion between ROYAL marks for beer

– Royal Unibrew, the owner of the earlier mark ROYAL, opposed the registration of GUBERNIJA BREWERY ROYAL BALTIC PORTER for beer

– Based on the coinciding and non-coinciding elements, their degree of distinctiveness and the overall impression of those elements, the Appeals Division concluded that the overall impression created by the signs was different

– Coincidence in an element with a low degree of distinctiveness will not, on its own, lead to a likelihood of confusion

MV Group Asset Management has successfully overcome the opposition filed by Royal Unibrew A/S against its trademark application for GUBERNIJA BREWERY ROYAL BALTIC PORTER for beer.

Background

On 3 July 2020 Lithuanian company MV Group applied for the registration of the national figurative trademark GUBERNIJA BREWERY ROYAL BALTIC PORTER (No 2020 1106) (depicted below) for “beer” in Class 32:

pic1

On 10 December 2020 Royal Unibrew filed an opposition (No PNZ-845) with the Appeals Division against the registration of the mark in Lithuania based on its earlier international trademark ROYAL (No 854092) designating the European Union and registered for “beer” in Class 32.

Royal Unibrew stated that the opposed trademark had been applied for in breach of Article 8(1)(2) of the Law on Trademarks of the Republic of Lithuania, since it was confusingly similar to its earlier trademark as the earlier sign was fully incorporated into the opposed mark. Although the word ‘royal’ in the opposed mark was smaller in size, it was nevertheless clearly visible and was displayed in the central part of the mark. Moreover, due to the length of the opposed mark, all the verbal elements would not be pronounced by consumers, and it was likely that the descriptive elements ‘Baltic Porter’ (which indicate the type of beer) and ‘Gubernija Brewery’ (which indicate the place of production) would be omitted. Therefore, due to the coinciding verbal element ‘royal’, the opposed mark would be pronounced identically to the earlier mark ROYAL and refer to the same meaning.

In response to the opposition, MV Group stated that, when comparing a word mark and a composite mark (as in the present case), the assessment of similarity does not imply that only one element of the complex mark should be compared with another mark. On the contrary, the comparison requires an assessment of the marks as a whole. In addition, MV Group argued that the coinciding element ‘royal’ had a weak distinctive character. Finally, as the earlier mark was vulnerable due to non-use, MV Group requested that Royal Unibrew prove the genuine use of the trademark ROYAL.

Decision

On 19 January 2022 the Appeals Division rejected the opposition in its entirety and allowed the registration of the trademark GUBERNIJA BREWERY ROYAL BALTIC PORTER for “beer” in Class 32.

The Appeals Division stated that, even if the assessment was made solely on the basis of the verbal elements of the compared marks, it was clear that the opposed mark consisted of a significantly higher number of verbal elements (‘Gubernija’, ‘brewery’, ‘royal’, ‘Baltic’ and ‘porter’), while the earlier mark ROYAL consisted of a single word element. It was particularly significant that the compared marks differed in their beginnings, which is considered as the most important part of the signs: the first word in the opposed mark was ‘Gubernija’, while the earlier mark was ROYAL. In addition, the word ‘Gubernija’ was written in a larger font and clearly occupied a central position in the composition of the opposed mark; that element would undoubtedly be brought to the consumer’s attention in the first place, with the result that it would be considered as the dominant element of the mark and significantly affect its overall perception. The Appeals Division also agreed with MV Group that the English word ‘royal’ has the meaning of “royal, excellent” and refers to positive and laudatory qualities – namely, that the object is magnificent, luxurious and royal. This meant that the verbal element ‘royal’ had a weak distinctive character. The evidence submitted by MV Group proved that the word ‘royal’ is often repeated in the names and marks of other applicants. In addition, visually the element ‘royal’ was written in a smaller, understated font when compared to the dominant element ‘Gubernija’; therefore, it was completely unreasonable to compare the marks based only on the word element ‘royal’ in the opposed mark.

The Appeals Division also followed general practice regarding non-distinctive and weak elements in the assessment of the likelihood of confusion, whereby coincidence in an element with a low degree of distinctiveness will not, on its own, lead to a likelihood of confusion. However, there may be a likelihood of confusion if:

– the other components have a lower (or equally low) degree of distinctiveness or have an insignificant visual impact and the overall impression of the marks is similar; or

– the overall impression of the marks is highly similar or identical.

In the present case, the compared marks shared the element ‘royal’, which had a weak distinctive character in relation to the goods covered. Although the other word elements in the opposed mark (‘brewery’, ‘Baltic’ and ‘porter’) had a weaker distinctive character, the dominant word element in the opposed mark was ‘Gubernija’. Together with other elements (graphics and colour), and considering the marks as a whole, this rendered the opposed mark completely different.

Therefore, after assessing the overlapping and non-overlapping elements, their degree of distinctiveness and the overall impression created by those elements, the Appeals Division concluded that the overall impression created by the compared signs was different. The marks differed visually and phonetically. The earlier mark consisted of a single word, ‘royal’, while the first word element of the opposed mark, ‘Gubernija’, would be pronounced first. Even if all the verbal elements of the opposed mark were pronounced, the word ‘royal’ was only the third word in the sequence. The fact that it is common for consumers to abbreviate long or multi-word marks was not a relevant factor for assessing the marks phonetically in this case. From a semantic point of view, the marks were not similar since the semantically different words ‘royal’ and ‘Gubernija’ were emphasised.

As there was no likelihood of confusion between the marks, whether or not the earlier mark had been in use during the relevant period was irrelevant. The Appeals Division considered that an assessment of the proof of use would be self-serving and redundant, as it would not in itself have any effect on the final outcome of the proceedings.

Outlook

The term to appeal this decision will expire on 19 April 2022. If no appeal is filed, the decision will become final.

This article first appeared in WTR Daily, part of World Trademark Review, in February, 2022. For further information, please go to www.worldtrademarkreview.com

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