OPPOSITION No B 2 326 166

Miguel Torres S.A., Miquel Torres i Carbó, 6, 08720 Vilafranca del Penedès (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Mas Que Vinos Global S.L., Plazuela de la Iglesia 1, 45311 Dos Barrios (Toledo), Spain (applicant), represented by Protectia Patentes y Marcas S.L., C/ Arte 21 2ºA, 28033 Madrid, Spain (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 326 166 is upheld for all the contested goods, namely:

Class 33:        Wine; Alcoholic beverages (except beers).

2.        European Union trade mark application No 12 257 465 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 257 465, namely against all the goods in Class 33. The opposition is based on international trade mark registration No 945 757 designating Denmark, Greece, Lithuania, Finland and the United Kingdom. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

The opposition is based on an international trade mark registration designating several Member States, as shown above. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 945 757 designating Denmark, Greece, Lithuania and Finland.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of international trade mark registration No 945 757 on which the opposition is based.

In the present case the contested trade mark was published on 05/12/2013.

Earlier trade mark No 945 757 is an international registration designating, inter alia, the individual Member States of Denmark, Greece, Lithuania and Finland. Each Member State has either a 12 or 18 month deadline to issue a provisional refusal under the Madrid Protocol. If no provisional refusal is issued within this deadline, the date that will be decisive in determining whether the mark is subject to proof of use obligation is calculated taking the date of notification from which the time limit to notify the refusal starts (as notified by WIPO), applying the relevant 12 or 18 month deadline.

For Denmark, Greece, Lithuania and Finland, the 18 month deadline applies, which, added to WIPO’s date of notification, namely 27/12/2007, establishes that the decisive date is 27/06/2009. Therefore, the request for proof of use is inadmissible for all the abovementioned Member States.

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:        Alcoholic beverages (except beers).

The contested goods are the following:

Class 33:        Wine; alcoholic beverages (except beers).

The contested wine is included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

Alcoholic beverages (except beers) are 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 degree of attention will be average.

3. The signs

LA PLAZA
Earlier trade marks	Contested sign

The relevant territories are Denmark, Greece, Lithuania and Finland.

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 contested sign is a figurative mark composed of the verbal elements ‘La Plazuela’ written in a slightly stylised red italic typeface and, above them, a stylised turquoise leaf.

Neither ‘La Plaza’ nor ‘La Plazuela’ has any meaning for the relevant public and these words are, therefore, distinctive for the relevant goods. The leaf in the contested sign will, however, be attributed less trade mark significance than the verbal elements. This is not only because 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, but also because this element could be associated by some consumers with a grape leaf and is therefore weak for the relevant goods.

Neither mark has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘LA PLAZ(*)A’. However, they differ in the letters ‘-UEL-’, the typeface and the figurative element of the contested sign. It is important to note that the coinciding letters ‘LA PLAZ-’ are at the beginning of the trade marks. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In addition, the stylisation of the verbal elements of the contested sign is not so conspicuous or striking that it impedes consumers from perceiving them as such. In view of the above and bearing in mind also the impact attributed to the figurative element of the contested sign, as explained above, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛LA-PLAZ*A’. The difference in pronunciation results from the sound of the letters ‘UEL’ of the contested sign, which have no counterparts in the earlier marks. The applicant puts forward that the signs are dissimilar, since they are short signs and small differences may frequently lead to different overall impressions. These claims are ill founded and have to be set aside, since, according to Office practice, only signs with three or fewer than three letters/numbers are considered short signs. Therefore, the signs are aurally similar to an average degree.

Conceptually, only the figurative element of the contested sign, that is, the depiction of the leaf, evokes a concept, as explained, and to that extent there is a point of conceptual difference between the signs, albeit for some consumers rather low given the less than average distinctiveness of this element.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se.

In its observations, the applicant argues that the earlier trade marks have a low distinctive character given that there are many trade marks that include ‘PLAZA’. In support of its argument, the applicant refers to several EU trade mark registrations and international registrations designating a great number of countries (including Member States of 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 ‘PLAZA’. In addition, the applicant also claims that the earlier marks are made up of two words ‘with a generic character by nature since they mean in English “THE SQUARE” and therefore they may not be monopolized’. In this regard, it is recalled that, as explained in section c) above, ‘La Plaza’ will be perceived by the public in the relevant territories as invented words with no meaning. Under these circumstances, the applicant’s claims must be set aside.

In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the goods at issue are identical and they target the public at large, with an average degree of attention.

Contrary to the applicant’s view, the signs are visually and aurally similar to an average degree, as stated above in section c) of this decision.

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).

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 is particularly relevant in the present case, given that the conflicting goods are identical.

Considering all the above, the Opposition Division finds that the differences between the signs are insufficient to counterbalance the similarities and consequently the relevant public is likely to think that the identical goods in Class 33, if they bear the marks at issue, come from the same or, as the case may be, economically linked undertakings. Therefore, 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 international trade mark registration No 945 757 designating Denmark, Greece, Lithuania and Finland. It follows that the contested trade mark must be rejected for all the contested goods.

As international trade mark registration No 945 757 designating Denmark, Greece, Lithuania and Finland 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 IR No 945 757 designating the UK, also invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, there is no need to examine the applicant’s request for proof of use in relation to this earlier mark or the evidence of use submitted by the opponent.

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

Anna MAKOWSKA

Carlos MATEO PÉREZ

Oana-Alina STURZA

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.