OPPOSITION No B 2 415 316

Isabel Castelo d’Ortega y Cortes, Modesto Lafuente, 37-39, 28003 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Terre da Vino S.P.A., Via Bergesia 6, 12060 Barolo (Cuneo), Italy (applicant), represented by Jacobacci & Partners S.P.A., Corso Emilia 8, 10152 Torino, Italy (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 415 316 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 899 043. The opposition is based on Spanish trade mark registration No 3 028 127. The opponent invoked Article 8(1)(b) EUTMR.

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:        Wine, liqueurs and other alcoholic beverages (except beers).

The contested goods are the following:

Class 33:        Wine, liqueurs and other alcoholic beverages (except beers).

The lists of goods are identical.

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 are directed at the public at large, whose degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

The earlier mark is a figurative mark depicting a stylised black sun and its rays on the horizon at the moment of sunrise or sunset. This element is a familiar and common feature of symbols, logos and trade marks, and is therefore weak.

The contested sign is a figurative mark that consists in a square frame which contains the verbal element ‘MISTRAS’ in grey upper case letters; each letter is separated from the one to its right by a diamond. This word element is depicted in the same grey colour as the rest of the sign. Above it is a figurative element depicting a stylised sun and its rays on the horizon at the moment of sunrise or sunset, in grey. At the bottom of the sign, there is a darker grey rectangle. The contested sign is composed of a distinctive verbal element, since it has no meaning for the relevant public, and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements.

The Opposition Division does not agree with the opponent’s argument that the contested sign is dominated by the image of a sun. According to established practice, the notion of dominance relates only to the visual impact of the elements of a sign; that is, ‘dominant’ is used exclusively to mean ‘visually outstanding’. Consequently, the dominant element of a sign is mainly determined by its position, size and/or colour. In the present case, the verbal and figurative elements of the contested sign are of similar sizes and they both occupy central positions in the mark. Since neither of these two components is more visually outstanding than the other, there is no dominant element. However, it should be taken into account that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the public will pay less attention to the figurative element of the contested sign and will focus on its verbal element, ‘MISTAS’.

Visually, the signs are similar to the extent that they both include a stylised depiction of the sun, although the depictions are different, with the suns depicted in different manners, colours and styles. The earlier mark contains seven rays in black that do not meet the sun and the contested sign contains eleven in grey, of which five meet the sun and the others do not. Furthermore, the signs also differ in the word element ‘MISTRAS’ and in the diamonds between each letter in the contested sign, which have no equivalents in the earlier mark.

Therefore, although both signs depict a sun, there are significant differences between the signs and, taking into account the fact that the verbal element of the contested sign will have a stronger impact on the consumer’s perception than the figurative element, the signs are considered visually similar to a low degree.

Aurally, the contested sign will be pronounced as ‛MISTRAS’. The earlier mark is a purely figurative sign and is not subject to a phonetic assessment.

As one of the signs is purely figurative (the earlier mark), it is not possible to compare them aurally.

Conceptually, the word element of the contested sign does not have any meaning for the relevant public. Since the earlier mark and the weak element of the contested sign will both be associated with the concept of a sunrise or sunset, they are conceptually similar to low degree.

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 did not explicitly claim that her mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the relevant goods are identical. They target the public at large, which has an average degree of attention. Furthermore, the earlier mark has a weak distinctive character and the signs are visually and conceptually similar to a low degree.

An aural comparison of the signs is not possible. The links between the signs are visual and conceptual and due to the depiction of the sun in both signs. However, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 25).

As pointed out above, the signs in dispute cannot be compared aurally. However, the additional word ‘MISTRAS’ of the contested sign, not present in the earlier mark, will be pronounced by the relevant public. Taking into account also the significant visual differences between the marks, the Opposition Division concludes that the conceptual similarity between the signs and the identity between the goods are insufficient to lead to a likelihood of confusion for the relevant public, even taking into account the principle of imperfect recollection argued by the opponent. Therefore, the opposition must be 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, she 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

Steve HAUSER

Alexandra APOSTOLAKIS

Benoit VLEMINCQ

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.