OPPOSITION No B 2 540 931

D.M.C. S.R.L., Via dei Bar, 14, 31020 San Vendemiano (TV), Italy (opponent), represented by D'Agostini Group, Rivale Castelvecchio, 6, 31100 Treviso, Italy (professional representative)

a g a i n s t

Societa' Agricola Giusti Dal Col S.R.L., Via Zilio n.1, Cornuda, 31041 Treviso, Italy (holder), represented by Carlo Emanuele Mayr, via Garibaldi, 15, 44121 Ferrara, Italy (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 540 931 is upheld for all the contested goods.

2.        International registration No 1 217 728 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 217 728. The opposition is based on, inter alia, Italian trade mark registration No 1 542 679. 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 Italian trade mark registration No 1 542 679.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 33:        Alcoholic beverages (except beers), wine and distilled spirits.

The contested goods are the following:

Class 33:        Wine.

Wine is identically contained in both lists of goods.

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 holder argues that, in the wine sector, the relevant public has become more refined over the last decades and that the consumers are particularly attentive to the commercial origin of what they are purchasing. In that regard, the Opposition Division notes that wine, being a rather broad category, is not limited to expensive, sophisticated products that necessarily mean a heightened degree of attention on the part of the public. Whilst there is a part of the public who indeed has specific knowledge and deep interest about wine, there is another part of the public—which is not a negligible one—that chooses wine rather spontaneously, especially insofar as the inexpensive, mass consumption products are concerned. Therefore, the public’s degree of attention is considered to be, on the whole, average.

3. The signs

	GIUSTI WINE
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 verbal element of the earlier mark, ‘DeGIUSTI’, will be perceived as a surname, the preposition ‘De’ being commonplace in Italian family names. Also the element ‘GIUSTI’ in the contested sign will be seen as a surname. They are both endowed with an average degree of inherent distinctiveness.

The element ‘GIUSTI’ in the contested sign is subject to a disclaimer, entered voluntarily by the holder. However, this is not an overriding factor in the context of examining the likelihood of confusion between the trade marks as the public is unaware of such disclaimer and perceives the trade mark as it is without notice of the disclaimer. If two marks coincide in a disclaimed element, such a disclaimer entered by the holder will serve no purpose because it cannot bind the owner of the earlier mark. In other words, the holder cannot unilaterally reduce the scope of protection of the earlier mark (decision of 11/02/2010, R 229/2009-2 – ‘DOUGHNUT THEATER’ / ‘DONUT’ et al.; § 58; decision of 29/03/2012, R 2499/2010-1 – ‘ACETAT Silicon 101E’ (fig.) / ‘101’ et al.; § 19). Therefore, the disclaimer has no material bearing on the present assessment.    

Since the element ‘WINE’ in the contested sign is quite similar to the Italian equivalent ‘vino’ and the relevant goods are wine, it can be reasonably assumed that the majority of the relevant public will perceive this element as allusive and thus weak.

As regards the figurative component of the earlier mark, it may be seen as a stylised depiction of the initial letters of the words ‘DeGIUSTI’, or as the mirrored double grapheme ‘G’. Although this element is fanciful, it will be perceived as an embellishment. It has to be borne in mind 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).

It follows that the signs carry the concept of the same surname which is not altered by the presence of the preposition, ‘De’, in the earlier mark. Given the limited impact of the component ‘WINE’ in the overall impression of the contested sign and since the earlier mark’s figurative component lacks any relevant semantic content, the signs are conceptually similar to a high degree.

Although the figurative element is somewhat bigger than the verbal element in the earlier mark that circumstance has to be weighed against the visual impact of this figurative element. The graphemes in it are elongated and incomplete. They are visually outbalanced by the readily perceptible verbal element, ‘DeGIUSTI’, which occupies a larger space horizontally and features densely depicted letters. Therefore, neither of the earlier mark’s components can be considered more visually eye-catching than the other. As regards the contested sign, it is noted for the sake of completeness that, being a word mark, it has no dominant elements by definition.

Visually, the signs coincide in the readily identifiable sequence of the letters ‘GIUSTI’. However, the signs differ in the letters ‘De’, the very slight stylisation of the verbal element and the figurative element of the earlier mark. Admittedly, the contested sign differs insofar as the element ‘WINE’ is concerned. However, it has a limited impact in the contested sign’s overall impression. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the word ‘GIUSTI’ which will be discerned in both signs. Since it can be reasonably assumed that the figurative element of the earlier mark will not be enunciated, the earlier mark differs in the sound of the preposition ‘De’ that has no counterpart in the contested sign. Admittedly, the contested sign differs insofar as the pronunciation of the element ‘WINE’ is concerned. Yet, it has a limited impact in the contested sign’s overall impression. Therefore, the signs are highly 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 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

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). The interdependence principle is of a particular relevance to the global assessment since, in the present case, the contested goods are identical to those covered by the earlier mark.

The signs show some differences, as stated in detail in section c) of this decision. However, they are insufficient to dispel the similarities on all relevant levels of comparison and to enable the relevant public to safely distinguish between the signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Thus, the difference resulting from the fact that, in addition to the common element, ‘GIUSTI’, the earlier mark comprises the preposition, ‘De’, does not put a significant distance between the overall impressions produced by the signs and may even pass unnoticed, as the relevant public is accustomed to family names containing such a preposition.

In its observations, the holder argues that the surname ‘Giusti’ is widespread in Italy, thus reducing the risk of confusion between the signs, and refers to case-law to support its arguments. In that regard, the Opposition Division accepts that the surname at issue is a rather common one in the relevant territory. Nevertheless, the same surname is present in both signs and has an equal impact in their overall impressions.

The holder also argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include this name. In support of its argument the holder refers to several trade mark registrations, in the wine sector, in Italy and the European Union. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the name ‘Giusti’. Under these circumstances, the holder’s claims must be set aside.

As regards the earlier mark being a composite sign that contains a figurative element, it has to be pointed out that it is common practice, on the relevant market, for producers to make variations of their trade marks, for example by altering the typeface of colours, or adding verbal or figurative elements to them, in order to denote new product lines, or endow their marks with a new, fashionable image. Moreover, the public is well accustomed to word marks being stylised and embellished with logotypes and other devices. That supports the conclusion that the public can attribute the same (or economically linked) commercial origin to the goods bearing the signs at issue.

The holder submits an outline of the historic events that underlie the conflict between the parties to the present proceedings. The holder argues that ‘Giusti’ is the family name of one of the founders of the holder’s company and that, since 2010, several promotional and commercial activities have been carried out under this name. The holder points out that the main activity of the opponent is roasting coffee, and its involvement in the wine business is limited to production of prosecco. The holder finds it important that the parties are both based in the same province of Treviso, which allegedly led to the opponent’s bad faith when filing of EUTM applications with the name ‘Giusti’. In addition, the holder claims that its company name, registered in 2007, grants a specific right to use the name ‘Giusti’ pursuant to Italian law, and that it launched a website, Giustiwine.com, in February 2010. To substantiate these claims, the holder files various pieces of evidence.

In that regard, the Opposition Division recalls that the right to a trade mark begins on the date when the trade mark is filed and not before, and from that date on the trade mark has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the trade mark falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the trade mark are irrelevant because the rights of the opponent, insofar as they predate the trade mark, are earlier than the holder’s trade mark.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 542 679. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Italian trade mark registration No 1 542 679 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). For the sake of completeness, it is noted that there is no need to examine the evidence of use filed by the opponent in relation to earlier European Union trade mark No 5 902 515 and Italian trade mark registration No 1 219 199.

In its observations of 23/03/2016, the holder requests that the opposition proceedings are suspended in view of the multiple opposition pending against the contested trade mark, namely opposition B 2 543 737 filed by Capetta I. Vi. P. S.P.A. Industria Vinicola Piemontese. Although the holder does not maintain this request in its subsequent observations, the Opposition Division notes, for the sake of clarity, that such a request must be assessed in relation to all the relevant circumstances in the multiple oppositions. In the present case, given the stage of proceedings of the multiple opposition namely that at the time of taking this decision the adversarial part of those proceedings is still open such a suspension would only cause unnecessary delays.

In addition, the holder states that it has filed applications for a declaration of invalidity of the opponent’s European Union trade mark registrations No 11 402 435, No 5 902 515 and No 9 244 955 on which the opposition is, inter alia, based. According to the holder, the opponent acted in bad faith when it filed for its EU trade marks, thus the present opposition proceedings should be suspended awaiting the final decisions in the cancellation cases. In that regard, the Opposition Division notes that the outcome of any of those cancellation proceedings would have no impact on the present case, since the earlier right on the basis of which the opposition is upheld is the opponent’s Italian trade mark registration No 1 542 679 which is a valid, unchallenged earlier right at the moment of taking this decision and there is no evidence to the contrary. Therefore, the holder’s arguments are dismissed.

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 holder 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

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

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.