CANCELLATION No 13 433 C (INVALIDITY)

Lidl Stiftung & Co. KG, Stiftsbergstrasse 1, Neckarsulm 74172, Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Aliança – Vinhos de Portugal, S.A., Rua Do Comércio, Sangalhos, Apartado 6, 3780 Anadia, Portugal (EUTM proprietor), represented by C/M/S Rui Pena, Arnaut & Associados, Rua Sousa Martins, 10, 1050-218 Lisbon, Portugal (professional representative).

On 04/04/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 13 907 027 is declared invalid in its entirety.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 13 907 027 . The application is based on German trade mark registration No 30 2012 053 603 ‘ALLIANCE’. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the dominant element of the contested mark is very similar to the earlier mark and the relevant goods are identical. Therefore, there is a likelihood of confusion between the marks.

The EUTM proprietor, despite having been duly notified of the invalidity application and invited to file observations, did not submit any observations in response.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 application is based are the following:

Class 33:        Alcoholic beverages (except beers), wines, sparkling wines, spirits [beverages], fruit distillates, brandys; essences and extracts for making spirits.

The contested goods are the following:

Class 33:        Alcoholic beverages (except beers).

The contested goods are equally included in the specification of the earlier mark. 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, who will pay an average degree of attention when purchasing those goods.

3. The signs

ALLIANCE
Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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

The earlier mark, being a word mark consisting of a single element, has no elements that could be considered more or less distinctive or dominant than others.

The contested mark is a figurative mark containing the word element ‘ALIANÇA’ depicted in large letters. The words ‘VINHOS DE PORTUGAL’ are represented below this element in a significantly smaller size and a slightly curved line floats above that element. All the described components are depicted in white against a blue rectangular background. The word ‘ALIANÇA’ is placed at the center of the mark and in a significantly larger size than the remaining elements. It is the dominant element of the mark as it is the most visually striking one.

As for the distinctiveness of the various elements of the contested mark, the following is noted. The words ‘vinhos de Portugal’ will be understood by the relevant public as ‘wines from Portugal’. ‘Portugal’ is the German word designating this Iberian country and the ‘vinhos de’, when encountered in relation to the relevant goods (alcoholic drinks), will also be understood, as German consumers are accustomed to seeing similar words designating the origin of the products on bottles of wines. Therefore, these elements are purely descriptive as they will be perceived merely as indicators of the products and the geographic provenance thereof. The figurative elements, namely the curved line and the blue rectangular background, are so simple, banal and common that they cannot have any distinctiveness on their own. Consequently, the most distinctive element of the mark is the word ‘ALIANÇA’ which will be associated with the German term ‘Allianz’, meaning an association or alliance. This meaning, however, has no direct relationship with the goods at issue and this element is, thus, distinctive to an average degree.

Visually, the earlier mark coincides in the vast majority of its letters with the dominant and most distinctive component of the contested mark, namely the letters ‘AL*IANC’ (the cedilla in the contested sign will hardly present any difference because it is barely visible). The earlier mark contains the double letter ‘L’ instead of a single ‘L’ in the contested mark, a difference that may even go unnoticed by consumers. Moreover, the mentioned elements differ in their last letters ‘E’ versus ‘A’. The additional elements of the contested mark do not account for any significant difference between the marks because they are non-distinctive and also visually less important than the dominant element. On account of the very high degree of similarity between the earlier mark and the dominant and most distinctive element of the contested mark, the marks are, as a whole, visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ALIANC’. There is no perceptible difference in pronunciation of a double or single ‘L’ and the cedilla will not be pronounced or taken into account in the pronunciation. Therefore, the only difference between the earlier mark and the most important element of the contested mark from the aural perspective is given by the last sounds of letters ‘E’ versus ‘A’. The marks will also differ in the additional elements ‘vinhos de Portugal’ of the contested mark, if pronounced at all; however, as explained above, these elements are non-distinctive and their impact on the comparison is very limited. Consequently, the marks are aurally similar to a high degree.

Conceptually, reference is made to the explanation of the meanings conveyed by individual elements of the contested mark above. The earlier mark will likewise be associated with the concept of the German term ‘Allianz’. Therefore, the marks coincide in the meaning of association or alliance and differ in the non-distinctive concept of ‘wines from Portugal’. Consequently, they are conceptually similar to a high 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

The marks have been found similar to a high degree from visual, aural and also conceptual perspective. The entire earlier mark is highly similar to the dominant and most distinctive element of the contested mark. The differences involve mainly additional elements in the contested sign of very secondary impact on the overall impression created by the mark on account of their lack of distinctiveness. Considering that the contested goods are identical to the goods of the applicant and that the earlier mark enjoys an average degree of distinctiveness, the Cancellation Division concludes that a risk that the German consumers confuse the marks is considerable. In other words, there is a likelihood of confusion between the marks on the part of the relevant public.

Therefore, the application is well founded on the basis of the applicant’s German trade mark registration No 30 2012 053 603. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

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

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

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

The Cancellation Division

Pierluigi M. VILLANI

Michaela SIMANDLOVA

Elisa ZAERA CUADRADO

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 Cancellation 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.