OPPOSITION No B 2 459 025

Bodegas Valoria S.L., Carretera De Burgos, Km.5, 26006 Logroño, Spain (opponent), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. Cerro del Aguila, 2, Portal 3, Planta 2, Puerta 5, 28702 San Sebastian de los Reyes (Madrid), Spain (professional representative)

a g a i n s t

Valori S.R.L. Societa’ Agricola, Via Gamberale 1, 66010 San Martino Sulla Marrucina (CH), Italy (applicant), represented by Ing. C. Corradini & C. S.R.L., Piazza Luigi di Savoia 24, 20124 Milano, Italy (professional representative)

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 459 025 is partially upheld, namely for the following contested goods:

Class 29: Fruit conserves; preserved fruits; marmalade; tomato juice.

Class 33: Alcoholic beverages (except beer); wine; sparkling wines; liqueurs.

2.        European Union trade mark application No 13 348 834 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 348 834. The opposition is based on, inter alia, European Union trade mark registration No 9 862 121. The opponent invoked Article 8(1)(a) and (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 Union trade mark registration No 9 862 121.

1. The goods and services

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

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for the preparation of beverages.

Class 33: Alcoholic beverages (except beers).

Class 35: Advertising; business management; business administration; wholesaling, retailing, selling through catalogues and via global computer networks of beverages.

The contested goods are the following:

Class 29: Fruit conserves; preserved fruits; canned vegetables; preserved vegetables; dried vegetables; mushrooms, preserved; vegetable preserves; marmalade; cheese products; edible oils; olive oils; tomato preserves; tomato purée; tomato juice; pickles; eggs.

Class 33: Alcoholic beverages (except beer); wine; sparkling wines; liqueurs.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

As a beverage, the contested tomato juice is in competition with the opponent’s fruit juices. Moreover, these goods can be found in the same cooling section of supermarkets and target the same public. It follows that these goods are similar.

The contested fruit conserves; preserved fruits; marmalade and the opponent’s fruit drinks and fruit juices have some commonalities, even though the contested goods are foodstuffs and the opponent’s goods are drinks. Clearly, these goods have fruit as their main ingredient, and the market reality shows that producers of processed fruit also produce fruit-based beverages. These goods have similar production processes and involve similar technical know-how in the relevant fruit-processing field. Moreover, they target the same consumers and can be found at the same points of sale. Therefore, these goods are similar to a low degree.

The contested canned vegetables; preserved vegetables; dried vegetables; mushrooms, preserved; vegetable preserves; cheese products; edible oils; olive oils; tomato preserves; tomato purée; pickles; eggs do not, however, have anything in common with the opponent’s goods and services in Classes 32, 33 and 35. They have different natures and they are not manufactured or provided by the same companies. They are neither in competition nor complementary. Moreover, they are found in very different sections of supermarkets or provided through different channels. Consequently, these goods and services are dissimilar.

Contested goods in Class 33

The contested alcoholic beverages (except beer); wine; sparkling wines; liqueurs are either reproduced identically or included in the opponent’s broad category of alcoholic beverages (except beer). These 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 and similar to various degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

PAGOS DE VALORIA
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. The Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The elements ‘PAGOS’ and DE’ of the earlier mark are meaningful in Spain and – in this combination – will be recognised as referring to products coming from a specific district of land or estates, in particular vineyards or olive groves. In the context of the relevant goods, ‘PAGOS DE’ will be perceived as an informative indication of the origin of the goods and is therefore considered weak. The element ‘VALORIA’ of this sign has no meaning. Therefore, the word ‘VALORIA’ is the most distinctive element of the earlier mark and will have a stronger impact on the consumer than the other elements.

The contested sign consists of a single verbal element, ‘VALORI’, which has no meaning for the relevant consumer and is, therefore, distinctive. The mark is figurative and there are no dominant elements.

Visually, the signs coincide in six letters, ‘VALORI’. They differ in the elements ‘PAGOS DE’ and the final letter, ‘A’, of the earlier mark. However, considering that the elements ‘PAGOS DE’ are descriptive and thus weak, that the difference between ‘VALORIA’ and ‘VALORI’ is confined to one letter, ‘A’, placed at the end of the earlier mark, and that the only other difference lies in the graphic depiction of the contested sign, the differences between the signs cannot counterbalance the visual similarity resulting from their coinciding letters.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘VA-LO-RI-*’, present identically in both signs. The pronunciation differs in the verbal elements ‘PAGOS DE’ of the earlier mark, which have no counterparts in the contested sign, and in the final letter, ‘A’, of the earlier mark. However, as stated above, the words ‘PAGOS DE’ in the earlier mark are purely descriptive of the origin of the goods and, therefore, are considered weak.

Therefore, the marks are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the elements ‘PAGOS DE’ 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the conflicting goods are identical or similar (to various degrees) and dissimilar, and the degree of attention paid by the relevant public is average. The marks are visually similar to an average degree and aurally highly similar.

It should be borne in mind that the relevant goods are mainly beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, 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). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 9 862 121. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier trade mark.

In the present case, the low degree of similarity between the goods is not sufficient to avoid a likelihood of confusion, as it is clearly counterbalanced by the average degree of visual similarity and the high degree of aural similarity between the marks. The differences between the marks are not sufficient to exclude a likelihood of confusion.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 5 660 055 ‘VIÑA VALORIA’ for wines in Class 33.

European Union trade mark registration No 9 864 042  for the following goods and services:

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for the preparation of beverages.

Class 33: Wines from Rioja, other than muscatel.

Class 35: Advertising; business management; business administration; wholesaling, retailing, selling through catalogues and via global computer networks of beverages.

The other earlier rights invoked by the opponent are less similar to the contested mark than the mark already compared above, because either they contain further figurative elements as shown above, which are not present in the contested trade mark, or they cover a narrower scope of goods than the mark already compared above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marine DARTEYRE

Cynthia DEN DEKKER

Jessica LEWIS

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.