OPPOSITION No B 2 717 109

Felix Solis, S.L., Autovía de Andalucía Km. 199, 13300 Valdepeñas (Ciudad Real), Spain (opponent), represented by José María Sánchez Wolff, Avda/ Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

PHP Wieslaw Wawrzyniak, Niedźwiady 45, 62 800 Kalisz, Poland (applicant), represented by Jolanta Justyńska, ul. Górnośląska 31/25, 62-800 Kalisz, Poland (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 717 109 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 105 621, namely against all the goods in Class 33. The opposition is based on international trade mark registration No 1 125 561 ‘ALBALI’ designating the European Union and on Spanish trade mark registration No 780 722 ‘ALBALI’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards earlier Spanish trade mark No 780 722 ‘ALBALI’ on which the opposition is based.

On 22/06/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/10/2016.

The opponent did not submit any evidence concerning the substantiation of that earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 33: Wines, spirits and liqueurs.

The contested goods are the following:

Class 33: Vodka; alcoholic beverages (except beer); spirits and liquors; alcoholic extracts.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Spirits and liquors are identically contained in both lists of goods (including synonyms).

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wines, spirits and liqueurs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested vodka is an ardent spirit used originally, and especially, in Russia, chiefly distilled from rye, but also from barley, potatoes or other materials. It is included in the broad category of the opponent’s spirits. Therefore, they are identical.

The contested alcoholic extracts can coincide in producer, end user and distribution channels with the opponent’s spirits and liqueurs. However, these goods do not belong to the same family of alcoholic beverages. Therefore, they are similar to a low degree.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to a low degree are directed at the public at large. The degree of attention of the relevant consumer will be average.

3. The signs

ALBALI	DENALI
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Neither of the signs has a meaning for the relevant public and both are, therefore, distinctive.

Visually, the marks are the same length, as both have six letters. In addition, the marks have their final three letters, ‘ALI’, in common. However, the fact that trade marks contain the same letters does not automatically mean that the signs are similar; additional and different letters can differentiate the marks very effectively. In the present case, it cannot be ignored that the first three letters of the earlier mark, ‘ALB’, and the first three letters of the contested sign, ‘DEN’, are visually totally different. In this regard, it is important to mention that it is especially relevant that the beginnings are different, since words are read from left to right and the beginnings of marks have a greater impact on consumers, who tend to focus their attention on the beginning rather than on the ending of a mark.

Therefore, the Office finds that the marks in question are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, although the marks end with the same letters, /A-LI/, the first letters of the earlier mark, /ALB/, and the first letters of the contested sign, /DEN/, are pronounced in entirely different ways. Indeed, the beginnings of the signs do not have any sound in common. As explained above, the beginnings of marks have a greater impact on consumers and, in the present case, these are aurally totally different.

Taking into account all of the above, the Office finds that the marks are aurally similar to a low degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical and similar to a low degree. The degree of attention of the relevant public is average. Finally, the distinctiveness of the earlier mark is average.

The signs are similar insofar as they have three letters in common in the same positions. However, as explained in detail in section c), these coincidences lead to a finding of only a low degree of visual and aural similarity between the signs, especially since the signs begin with completely different letters, ‘ALB’ versus ‘DEN’, which results in significant visual and aural differences. Moreover, the signs do not have a conceptual link that would lead the public to associate them with each other.

Consequently, it is considered that, despite the similarities between the marks under comparison, the differences between them are clearly perceptible and sufficient to exclude any likelihood of confusion, even in relation to the identical goods.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected insofar as this ground is concerned.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 22/06/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/10/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

In conclusion, the opposition is rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Alexandra APOSTOLAKIS

Richard BIANCHI

Inés GARCÍA LLEDÓ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.