OPPOSITION No B 2 659 913

Barceló Comercial Internacional, S.A. (Bainsa), Avenida Samuel Luis Lewis Esquina Omega, Mezzanini, calle 53, Panama  4493, Panama (opponent), represented by Durán Cuevas, S.L.P., P° de Gracia, 110, 1°, 1ª, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Beltre Baez Luis Francisco, Santo Domingo RD, Santo Domingo, Dominican Republic (applicant), represented by Arcangelo Fele, Corso Ponticelli 52, 80147 Napoli, Italy (professional representative).

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

DECISION:

1.        Opposition No B 2 659 913 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 14 796 957 namely against all goods in Classes 32, 33 and 34. The opposition is based on European Union trade mark registration No 2 394 146. 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 signs

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 earlier mark is a complex figurative mark for which, on registration, the opponent explicitly disclaimed the following expressions: "RON DOMINICANO", "ENVEJECIDO EN BARRICA", "IMPORTADO", "IMPORTED", "PRODUCIDO Y EMBOTELLADO POR BARCELÓ & Co. C. POR A., "SANTO DOMINGO REPÚBLICA DOMINICANA", "700 ML", "37,5% ALC/VOL", "75% PROOF".

The effect of a disclaimer is:

• if the earlier mark contains a disclaimer, that the proprietor is prevented from successfully invoking rights in the disclaimed element. Therefore, similarity between two signs cannot be induced or increased because of coincidence or similarity in the disclaimed element (decision of 06/10/2008, R 21/2008-4, AUTENTICO JABUGO / FLOR SIERRA DE JABUGO JABUGO (fig.) et al., § 17, where JABUGO was disclaimed).

It follows that the coinciding element "RON DOMINICANO", despite the arguments of the opponent, cannot lead to any similarity between the signs. The only other coinciding verbal element is ‘RON’, which is fully contained in the disclaimed element.

In the earlier sign, the words ‘BARECELÓ’ and ‘AÑEJO’ vie for attention and can be considered co-dominant in the sign. AÑEJO’, a Protected Traditional Term meaning ‘aged’ or ‘mature’ in Spanish, is descriptive and non-distinctive for the part of the public that understand it and distinctive for the part of the public that does not.

The verbal element, ‘BARCELÓ’, appears in a large red standard capital font and has no meaning and so is distinctive for the goods at issue. It is preceded by the word ‘RON’ in smaller red letters, which in Spanish means ‘rum’ and is descriptive of the goods at hand. It is likely that it will be understood by the consumer in the relevant territory given its similarity to the word in the other EU languages. Furthermore, it is common in trade in the case of the labels of alcoholic beverages that the descriptive elements such as whiskey, gin or rum are not translated into other languages.  Therefore the consumer is used to seeing words such as ‘RON’ or indeed ‘RON DOMINICANO’ on beverage labels and does not give such words any trade mark significance but rather sees them as indications of the type of goods and the origin of these goods. The fact that the opponent explicitly disclaimed the words ‘RON DOMINICANO’ along with a list of other descriptive word elements is noteworthy in this regard. In addition, as mentioned, ‘RON’ is part of the disclaimed expression ‘RON DOMINICANA’.

The verbal elements appear in red and black on a rectangular background with rounded corners and a dark green border. The background is a light beige colour on which a palm tree is just about discernible. A small black shield-like element appears in the centre topped by a crown with a white dragon-like creature. The figurative elements are not particularly distinctive; the palm tree alluding to the place of origin and the small emblem in the centre giving an official character. The disclaimed words ‘RON DOMINICANO’ appear in white capitals on an oval red background with dark green border.  Above the described rectangle is an additional curved red shape with dark green border on which more disclaimed text appears in white with a black outline.

The contested sign has an elongated shape, rounded at the top and with slightly protruding corners at the bottom. The verbal elements are ‘RON ZOLEZ RON DOMINICANO’. The dominant verbal element due to its size and central position is ‘ZOLEZ’ which has no meaning and so is distinctive in relation to the goods at issue. The considerations regarding the word ‘RON’ discussed above also apply to the contested sign. ‘RON ZOLEZ’ appears in black over a white background that adapts to the shape of the letters. Underneath in very small white capital letters, the non-distinctive verbal elements ‘RON DOMINICANO’ appear over red that merges to a dark brown extending under the main lettering to create a dark uneven shaped background.  A cream border encircles a gold decorative circular figurative element at the top.

There is some negligible text in the bottom corners of the contested sign that will not be taken into consideration for the comparison.

Visually, the signs only coincide in the non-distinctive terms ‘RON’ and ‘RON DOMINICANO’, the latter disclaimed by the opponent, and in some of the colours used, namely red, black and white. They differ in the distinctive words ‘BARCELÓ’ in the earlier mark and the dominant ‘ZOLEZ’ in the contested sign. They also differ in the word ‘AÑEJO’, distinctive for the part that don’t understand this Protected Traditional Term.  Other visual differences include the shape, the figurative elements and the amount of text displayed, which although mostly disclaimed in the earlier mark, has an effect on the visual impression. The visual impact of the signs is completely different.

As the signs only coincide in irrelevant aspects, it is concluded that the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the disclaimed words ‘RON DOMINICANO’, and ‘RON’. They differ in the pronunciation of the distinctive combination ‘BARCELÓ AÑEJO’ in the earlier mark and ‘ZOLEZ’. It is most likely that the relevant consumer will in any case only refer to the dominant verbal elements of the mark when ordering these brands ‘BARCELÓ’ and ‘ZOLEX’.

As the signs coincide in irrelevant aspects and the parts that are likely to be pronounced are completely different, it is concluded that the signs are not aurally similar.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding elements ‘RON DOMINICANO’ and ‘RON’ have a conceptual meaning, it is not sufficient to establish any conceptual similarity, as they cannot indicate the commercial origin of either of the marks. Even though Spanish is not understood in all the countries of the Union, as previously stated, it is common in labels for drinks such as wine or rum not to translate the verbal elements and consumers are used to seeing ‘RON’ or ‘RON DOMINICANO’ just as they are used to being confronted with other descriptive verbal elements which will also not be translated such as ‘vino’ in the case of wines. The attention of the relevant public will be immediately attracted by the additional fanciful verbal elements, which have no meaning. The concept of ‘AÑEJO’, for those who understand it, is only present in the earlier mark. In addition the concept of the palm tree and the dragon-like emblem has no counterpart in the contested sign, whose visual elements portray no clear concept.

Therefore, the signs are not conceptually similar.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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

Lars HELBERT

Lynn BURTCHAELL

Martin EBERL

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.