OPPOSITION No B 2 756 370

Bodegas Ramon Bilbao S.A., Avenida Santo Domingo 34, 26200 Haro (La Rioja), Spain (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia, Spain (professional representative)

a g a i n s t

Niepoort (Vinhos) S.A., Rua Cândido dos Reis 670, 4400-071 Vila Nova da Gaia, Portugal (applicant), represented by Gastão Da Cunha Ferreira LDA., Rua dos Bacalhoeiros nº. 4, 1100-070 Lisbon, Portugal (professional representative)

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 756 370 is upheld for all the contested goods.

2.        European Union trade mark application No 15 430 821 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 430 821 ‘LOMBA’. The opposition is based on, inter alia, European trade mark registration No 14 876 999 ‘LALOMBA DE RAMON BILBAO’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registration No 14 876 999 for the word mark ‘LALOMBA DE RAMON BILBAO’.

1. The goods

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

Class 33: Wines, licores and alcoholic beverages (except beers).

The contested goods are, after a limitation by the applicant, the following:

Class 33: Wine from the Dão region.

The contested goods wine from the Dão region are included in the opponent’s broad category of wines. Therefore, the 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. The degree of attention is considered to be average.

3. The signs

LALOMBA DE RAMON BILBAO	LOMBA
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a word mark composed of four elements ‘LALOMBA DE RAMON BILBAO’, which will be perceived by the Spanish public as ‘lalomba’ of Ramon Bilbao’.

As regards the earlier sign, it must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, ‘RESPICUR’). The conjoined verbal element of the earlier mark, ‘LALOMBA’, as a whole, has no meaning for the relevant public and does not exist in common parlance. Therefore, it is reasonable to assume that at least a part of the relevant public will split it into terms that suggest a specific meaning to it and thus perceive it as the article ‘LA’, meaning ‘the’ and the word ‘LOMBA’, which is meaningless. ‘RAMON BILBAO’ will be perceived as the name of a person. Taking into account the relevant goods it is reasonable to assume that at least a part the relevant public will understand that “RAMON BILBAO” – preceded by the preposition ‘DE’, meaning “of” – is the owner of ‘LA LOMBA’.

The contested sign is the word ‘LOMBA’ which has – as stated before – no meaning for the relevant public in relation to the goods.

Visually, the signs coincide in ‘LOMBA’, which makes up the contested sign and will be identified, as described above, as an independent element of the earlier mark by at least part of the public. They differ in the first two letters ‘LA’ and the additional elements ‘DE RAMON BILBAO’ of the earlier mark.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‘LOM-BA’, present identically in the earlier mark and constituting the only verbal element of the contested sign. The pronunciation differs in the sound of the first two letters ‘LA’ and the elements ‘DE RAMON BILBAO’, which may not even be pronounced by part of the public taking into account that it is understood as a reference to the owner of the goods.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 its 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. In the present case, the earlier trade mark as a whole 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. Further the Court has also held that 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, § 22 and 23).

Additionally, the Court has set out the essential principle that 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The goods are identical and the degree of attention of the consumer is average. The signs are similar in as much as the only verbal element of the contested sign is identically included in the earlier mark and moreover is meaningless. It should, moreover, be borne in mind that the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38).

In the present case it appears to be a realistic situation that part of the relevant consumers would order the relevant goods by calling the denomination ‘LA LOMBA’ rather than by referring to the owner.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 14 876 999. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ferenc GAZDA

Cynthia DEN DEKKER

Ioana MOISESCU

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.