BÜRGER and Bürgerbräu

Dinner

This Kat loves beer and burgers, and in an ideal world, a burger and a beer at the same time. So it was with a slightly distracted mind that the General Court's recent decision in Case T-460/11 Scandic Distilleries SA v OHIM finding a likelihood of confusion between marks BÜRGER and Bürgerbräu was considered.

Scandic Distilleries SA, established in Bihor (Romania), contested a decision of the Second Board of Appeal that denied registration of the figurative sign BÜRGER as a Community trade mark for goods and services in Classes 32 (Beers) and 35 (Burgers Advertising; business management) on the ground of a likelihood of confusion with the earlier Community word mark Bürgerbräu, also for goods in Class 32. The applicant only raised one plea in law, alleging breach of art. 8(1)(b) Reg (EC) No 207/2009 on the ground 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.

Mark denied

After a general telling off by the court for not providing sufficiently clear and precise essential elements of the legal argument (at [15] to [20]), Scandic's plea was rejected and the appeal dismissed in its entirety.

The Court found that the Board of Appeal rightly observed the legal framework applicable to the dispute: similarity of conflicting signs based on a global assessment of the likelihood of confusion, as regards the visual, phonetic or conceptual similarity of the marks, based on the overall impression conveyed to the relevant public. The Board also correctly noted that for the purposes of the global assessment the average customer was deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, account was be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in his imperfect recollection of them [after a good beer drinking night out]. It was also to be borne in mind that the average consumer’s level of attention was likely to vary according to the amount of beer tasted category of goods or services concerned and that a component of a mark was capable of dominating the image of that mark so that all other components were negligible in the overall impression.  

The Court held that the Board of Appeal rightly observed that;

• as regards the visual aspect, the figurative elements of the BÜRGER sign were not particularly imaginative and would be perceived as decorative elements. The dominant element of the mark was undeniably the word element BÜRGER. 'In view of the fact that the dominant element of the mark applied for coincides with the word ‘bürger’ constituted by the first six letters of the earlier mark, there is thus a certain degree of visual similarity between the conflicting signs, even if it must be regarded as low' (at [39]);
• as regards the phonetic aspect, there was an average degree of phonetic similarity between the conflicting signs, in view of the fact that the relevant consumers would tend not to pronounce the decorative word elements. 'Moreover, the relevant consumers will also tend not to pronounce those elements, simply to economise on words because they take time to pronounce [at the bar] and are easily [capable of delaying service] separable from the dominant element of the mark applied for, namely the word ‘bürger’' (at [48]);
• as regards the conceptual comparison,the unitary character of the Community trade mark meant that an earlier mark could be relied on in opposition proceedings even if only in relation to the perception of consumers in part of the EU. It sufficed 'to observe that in the German-speaking part of the European Union the word ‘bräu’, in that it refers to the brewing of beer, will be perceived by the average consumer as descriptive of the goods concerned, so that that consumer’s attention will focus particularly on the word ‘bürger’' (at [53]), which has a precise meaning in the German language referring to the concept of 'citizen'.

e.g. a common name for beers

As such, despite a low of degree of visual similarity and an average degree of phonetic similarity, the conflicting signs were globally similar because of the conceptual similarity. A likelihood of confusion therefore existed cumulatively on the degree of similarity of the marks which covered identical goods.

However, the telling off alluded to above came back to haunt the applicant. The court held that the conclusion was 'not invalidated by the applicant’s argument that the earlier mark has low distinctive character because the word ‘bürgerbräu’ is a common name for beers and the distinctive character of the earlier mark is weak or diluted as a result of the presence on the market of other trade marks for beer containing the word ‘bürgerbräu’' (at [59]). Although the coexistence of earlier marks on the market could reduce the likelihood of confusion, such a possibility could only be considered if the applicant duly demonstrated such a submission. It was 'not possible to infer from mere photocopies of different beer labels allegedly belonging to third parties any use at all of those signs on the European Union market, so that not even the identity of registrations coexisting on the market has been proved. Moreover, the applicant has in any event failed to show that that coexistence was based on the absence of a likelihood of confusion...It follows that the applicant has not shown that the distinctive character of the earlier mark was weakened or diluted' (at [61]).

Time for an IPKat tipple and a burger...