G-Star Raw succesvolle oppositie tegen GINRAW

Gerecht EU 7 juni 2017, IEF 16860; IEFbe 2199 (GINRAW) MPS vraagt het EU woordmerk GINRAW aan. G-Star Raw voert met succes oppositie op basis van haar woordmerk. Onterecht doet MPS een beroep op een vermoedelijke serie van fouten die zijn gemaakt bij de analyse van de visuele, fonetische en conceptuele vergelijking van de onderhavige tekens. Het beroep hiertegen wordt afgewezen en het Gerecht EU wijst de actie af. MPS wordt veroordeeld tot betaling van de kosten.

91. In the present case, the Board of Appeal found that the Opposition Division had correctly concluded that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion between the word mark applied for GINRAW and the earlier marks RAW in respect of all of the goods covered. More specifically, it is apparent from paragraph 11 of the contested decision, first, that the contested goods in Class 33 and the intervener’s goods in that class are identical and, second, that the contested goods in Class 21 and the intervener’s goods in that class are identical, highly similar or similar to an average degree. According to paragraphs 14 to 16 of the contested decision, the word marks at issue are visually, phonetically and also, as regards the English-speaking public, conceptually similar to an average degree. Consequently, in the context of a global assessment, the Board of Appeal found that there was a likelihood of confusion between the marks at issue, for the reasons set out in paragraphs 17 to 23 of the contested decision. Such a statement of reasons is, in principle, sufficient to satisfy the requirements set out in paragraphs 88 to 90 above.
    97. In that regard, it must be pointed out that the Opposition Division’s decision states that the word ‘gin’ is descriptive of a series of goods in Class 21, namely ‘crystal [glassware]; beverage glassware; glasses, drinking vessels and barware; shakers, manual mixers (cocktail shakers), cocktail stirrers, cocktail straws, cocktail sticks, cocktail mixing sticks’. Furthermore, the Opposition Division’s decision adds that the element ‘gin’ will be associated with a spirit distilled from grain or malt and flavoured with juniper berries. Consequently, it is obvious that the reason why the Opposition Division found the word ‘gin’ to be descriptive of the goods in Class 21 mentioned above was the fact that they are connected with the preparation or the consumption of the spirit in question. Moreover, it is apparent from paragraph 44 of the application that the applicant was in a position to know of the connection, which it even admits exists, between some of the goods in Class 21 mentioned above and the preparation of gin-based beverages.
    98. Furthermore, EUIPO points out that, in the light of the fact that the applicant did not dispute before the Board of Appeal the descriptiveness of the word ‘gin’ with regard to the goods at issue in Class 21, the Board of Appeal did not dwell on that issue and confined itself to endorsing the findings of the Opposition Division. It must be stated that not only did the applicant not dispute before the Board of Appeal the descriptiveness of the word ‘gin’ with regard to the goods in Class 21, it even expressly conceded its descriptive nature in its appeal against the Opposition Division’s decision.