OPPOSITION DIVISION
OPPOSITION No B 2 269 788
Cesari S.R.L., Via Stanzano, 1120, 40024 Castel San Pietro Terme (Bologna), Italy
(opponent), represented by Elena Marangoni, Viale Felice Cavallotti 3/A, 35124
Padova, Italy (professional representative)
a g a i n s t
V&F, S.L., C/ Cambados 9c, 28050 Madrid, Spain (applicant), represented by
Arcade & Asociados, C/ Isabel Colbrand, 6 – 5ª planta, 28050 Madrid, Spain
(professional representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 269 788 is partially upheld, namely for the following
contested goods and services:
Class 32: Beers; mineral and aerated waters and other non-alcoholic
beverages; fruit beverages and fruit juices; syrups and other preparations for
making beverages; lithia water; seltzer water; waters [beverages]; table waters;
aerated water; preparations for making aerated water; mineral water
[beverages]; preparations for making mineral water; aperitifs, non-alcoholic;
whey beverages; aloe vera drinks, non-alcoholic; non-alcoholic fruit juice
beverages; powders for effervescing beverages; isotonic beverages;
preparations for making beverages; non-alcoholic beverages; non-alcoholic
honey-based beverages; beers; beer wort; cider, non-alcoholic; cocktails, non-
alcoholic; essences for making beverages; non-alcoholic fruit extracts; orgeat;
ginger ale; fruit juice; vegetable juices [beverages]; kvass [non-alcoholic
beverage]; milk of almonds [beverage]; peanut milk [non-alcoholic beverage];
preparations for making liqueurs; smoothies; lemonades; syrups for lemonade;
extracts of hops for making beer; malt beer; malt wort; must; fruit nectars, non-
alcoholic; pastilles for effervescing beverages; soda water; syrups for
beverages; sorbets [beverages]; tomato juice [beverage]; grape must,
unfermented; sarsaparilla [non-alcoholic beverage].
Class 35: Retailing or wholesaling of all kinds of alcoholic beverages, wine,
spirits and liqueurs.
2. European Union trade mark application No 11 940 459 is rejected for all the
above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
Decision on Opposition No B 2 269 788 page: 2 of 13
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 11 940 459, . The opposition is based on
Italian trade mark registration No 1 053 828, ‘MOMA’; international trade mark
registration No 942 559 designating the European Union, ‘MOMA’; and European
Union trade mark registration No 4 895 926, . The opponent invoked Article 8(1)
(b) EUTMR.
SUBSTANTIATION – Italian trade mark registration No 1 053 828
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings
before it the Office will examine the facts of its own motion; however, in proceedings
relating to relative grounds for refusal of registration, the Office is restricted in this
examination to the facts, evidence and arguments submitted by the parties and the
relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence of the existence, validity and scope of
protection of its earlier mark or earlier right, as well as evidence proving its
entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark that is not a
European Union trade mark, the opposing party must submit a copy of the relevant
registration certificate and, as the case may be, of the latest renewal certificate,
showing that the term of protection of the trade mark extends beyond the time limit
referred to in paragraph 1 and any extension thereof, or equivalent documents
emanating from the administration by which the trade mark was registered —
Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the
adversarial part).
In the present case, following a request for an extension, the time limit for the
opponent to substantiate its earlier rights expired on 02/08/2014. The evidence filed
by the opponent by this deadline regarding Italian trade mark registration
No 1 053 828 consists of an extract from the Italian database.
Decision on Opposition No B 2 269 788 page: 3 of 13
According to this extract, the protection granted by Italian trade mark registration
No 1 053 828 expired on 17/02/2016. On 13/06/2017, the opponent was requested to
submit evidence of the renewal of its registration and given a time limit for this
purpose, expiring on 18/07/2017. Given that the opponent did not submit evidence of
the renewal of this earlier right, the abovementioned extract from the Italian database
is not sufficient to prove the existence, validity and scope of protection of earlier
Italian trade mark registration No 1 053 828.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), the opposing party has not proven the existence, validity and scope
of protection of its earlier mark or earlier right, as well as its entitlement to file the
opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on
Italian trade mark registration No 1 053 828.
Remark
In its communication dated 13/06/2017, the Office also requested that the opponent
provide evidence of the renewal of earlier international registration No 942 559.
However, this request should not have been issued, since the protection of this
earlier right expired on 26/06/2017, that is, after the date on which the Office’s
communication was issued. The time limit set in this communication is not applicable
with regard to this particular earlier right and must be disregarded.
Consequently, the Romarin extract submitted on 01/09/2017 to prove the renewal of
earlier international trade mark registration No 942 559 until 26/06/2027 is accepted.
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, now Article 47(2) and (3) EUTMR), 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 942 559 designating the European Union, ‘MOMA’, and of
European Union trade mark registration No 4 895 926, .
The evidence to be taken into account is, in particular, the following:
Decision on Opposition No B 2 269 788 page: 4 of 13
A Christmas catalogue dated 2012 (document 3) in which several ‘MOMA’ wines
by Umberto Cesari are displayed with the following logos: ,
.
A list of several prizes awarded to ‘MOMA’ wines, such as at the Mundus Vini
competition, held in Germany, where ‘MOMA’ wines won several prizes for
2008, 2010 and 2011 (document 10); at the Imbibe Sommelier Wine Awards,
held in the United Kingdom, where ‘MOMA’ wine won a prize for 2009
(document 11); and at the Decanter World Wine Awards held in Italy, where the
‘MOMA 2013’ wine won a prize.
An edition of the Umberto Cesari magazine dated June 2011 (document 20), in
English, in which there are several references to ‘MOMA’ wines, for example in
the articles entitled ‘Elena Valentini puts her name on the new look for ‘MOMA’,
‘MOMA MyOwnMasterpiece Competition’, which refers to a design competition
launched in art and design schools (documents 21-22), and ‘MOMA Days
Bolzano: artful tastings to celebrate the new look’.
A total of 55 invoices, in Italian, dated between 2009 and 2013 and issued to
customers in Germany, Austria, Benelux, the Czech Republic, Denmark, the
United Kingdom, France and Italy. References to various types of ‘MOMA’
wines are made in the invoices, for instance ‘MOMA TREBB/CHARD RUB. IGT
750ml’, ‘MOMA SANG/CAB.S.RUB.IGT 750ml’ and ‘MOMA RUBICONE IGT
BIANCO 750 ml’.
Printouts from several websites, in the languages corresponding to their domain
names, from which ‘MOMA’ wines can be purchased across the European
Union: www.umbertocesari.it (document 32), www.wineman.co.uk
(document 33), www.hdnwines.co.uk (document 34), www.televino.de
(document 35), www.edelrausch.de (document 36), www.wein.cc
(document 37), www.shopwiki.co.uk (document 38), www.wine-searcher.com
(document 39) and www.bottiglia375.it (document 40). A picture of a bottle of
‘MOMA’ wine appears on each page, with the following logos: ,
or .
The applicant argues that the opponent did not submit translations of some of the
evidence of use and that therefore this evidence should not be taken into
consideration. However, the opponent is not under any obligation to translate the
proof of use, unless it is specifically requested to do so by the Office
(Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017).
Taking into account the nature of the documents that have not been translated and
are considered relevant for the present proceedings, namely, invoices and the
printouts from websites, and their self-explanatory character, the Opposition Division
considers that there is no need to request a translation.
Decision on Opposition No B 2 269 788 page: 5 of 13
The applicant argues that not all the items of evidence indicate genuine use in terms
of time, place, extent, nature and use of the goods and services for which the earlier
marks are registered.
The applicant’s argument is based on an individual assessment of each item of
evidence regarding all the relevant factors. However, when assessing genuine use,
the Opposition Division must consider the evidence in its entirety. Even if some
relevant factors are lacking in some items of evidence, the combination of all the
relevant factors in all the items of evidence may still indicate genuine use.
The documents listed above show that the place of use is the European Union. This
can be inferred from the languages of the documents (the invoices in Italian, the
magazine in English and the printouts from online shops in Italian, English and
German) and the currencies mentioned, namely euros in the invoices and pounds
sterling in the printouts from online shops based in the United Kingdom. Furthermore,
the invoices also indicate that they were issued to customers with addresses in
Germany, Austria, Benelux, the Czech Republic, Denmark, the United Kingdom,
France and Italy. Therefore, the evidence relates to the relevant territory, namely the
European Union.
All of the evidence listed above is dated within the relevant period.
The documents filed provide the Opposition Division with sufficient information
concerning the commercial volume, the territorial scope, the duration, and the
frequency of use.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in
accordance with its essential function, which is to guarantee the identity of the origin
of the goods or services for which it is registered, in order to create or preserve an
outlet for those goods or services. Genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark. Furthermore, the
condition of genuine use of the mark requires that the mark, as protected in the
relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,
EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, the evidence submitted by the
opponent is sufficient to prove genuine use of earlier international registration
No 942 559 designating the European Union, ‘MOMA’, during the relevant period in
the relevant territory. Some of the evidence refers to the word ‘MOMA’ and some to
the sign . The depiction of this sign is accepted as constituting a satisfactory
use of the earlier word mark ‘MOMA’, since the additional elements occupy a
secondary position within the sign, either because they are written in a much smaller
size than the word ‘MOMA’ or because they are commonly used additions. The
stylised typeface used for the word ‘MOMA’ is not particularly elaborate and will not
distract the consumer’s attention from the element it embellishes.
However, the evidence filed by the opponent shows genuine use of European Union
trade mark No 4 485 926, , not for all the goods covered by the earlier trade
mark but only for alcoholic beverages (except beers) in Class 33.
According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation
to only some of the goods or services for which it is registered it will, for the purposes
Decision on Opposition No B 2 269 788 page: 6 of 13
of the examination of the opposition, be deemed to be registered in respect only of
those goods or services.
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 international registration No 942 559 designating the European Union,
‘MOMA’.
a) The goods and services
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beers)
The contested goods and services are the following:
Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit
beverages and fruit juices; syrups and other preparations for making beverages;
lithia water; seltzer water; waters [beverages]; table waters; aerated water;
preparations for making aerated water; mineral water [beverages]; preparations for
making mineral water; aperitifs, non-alcoholic; whey beverages; aloe vera drinks,
non-alcoholic; non-alcoholic fruit juice beverages; powders for effervescing
beverages; isotonic beverages; preparations for making beverages; non-alcoholic
beverages; non-alcoholic honey-based beverages; beers; beer wort; cider, non-
alcoholic; cocktails, non-alcoholic; essences for making beverages; non-alcoholic
fruit extracts; orgeat; ginger ale; fruit juice; vegetable juices [beverages]; kvass [non-
alcoholic beverage]; milk of almonds [beverage]; peanut milk [non-alcoholic
beverage]; preparations for making liqueurs; smoothies; lemonades; syrups for
lemonade; extracts of hops for making beer; malt beer; malt wort; must; fruit nectars,
non-alcoholic; pastilles for effervescing beverages; soda water; syrups for
beverages; sorbets [beverages]; tomato juice [beverage]; grape must, unfermented;
sarsaparilla [non-alcoholic beverage].
Class 35: Advertising; business management; business administration; office
functions; procurement services for others [purchasing goods and services for other
businesses]; updating of advertising material; import-export agencies; commercial
information agencies; publicity agencies; rental of advertising space; publicity
material rental; rental of advertising time on communication media; cost price
analysis; advisory services for business management; business management
assistance; business auditing; data search in computer files for others; marketing
research; sponsorship search; business research; commercial or industrial
management assistance; price comparison services; compilation of information into
Decision on Opposition No B 2 269 788 page: 7 of 13
computer databases; layout services for advertising purposes; news clipping
services; business management consultancy; personnel management consultancy;
business organization consultancy; business management and organization
consultancy; professional business consultancy; accounting; publicity columns
preparation; demonstration of goods; dissemination of advertising matter; marketing
studies; outsourcing services [business assistance]; organization of trade fairs for
commercial or advertising purposes; commercial administration of the licensing of the
goods and services of others; computerized file management; business inquiries;
business information; commercial information and advice for consumers [consumer
advice shop]; business investigations; marketing; organization of exhibitions for
commercial or advertising purposes; presentation of goods on communication media,
for retail purposes; economic forecasting; production of advertising films; sales
promotion for others; publication of publicity texts; advertising; on-line advertising on
a computer network; bill-posting; direct mail advertising; advertising by mail order;
radio advertising; television advertising; compilation of statistics; writing of publicity
texts; business efficiency expert services; systemization of information into computer
databases; opinion polling; arranging subscriptions to telecommunication services for
others; administrative processing of purchase orders; transcription; business
appraisals; retailing or wholesaling of all kinds of alcoholic and non-alcoholic
beverages, wine, spirits and liqueurs, juices, mineral waters and other non-alcoholic
beverages; auctioneering.
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 32
Beers (listed twice); malt beer are similar to the opponent’s alcoholic beverages
(except beers). Although their production processes are different, these goods all
belong to the same category of alcoholic drinks intended for the general public. They
can be served in restaurants and in bars and are on sale in supermarkets and
grocery stores. These drinks can be found in the same sections of supermarkets,
although they can also be distinguished to some extent by subcategory. Beers and
alcoholic beverages can be mixed and consumed together, for instance in cocktails.
Furthermore, they can originate from the same undertakings.
The contested non-alcoholic beverages, namely mineral and aerated waters and
other non-alcoholic beverages; fruit beverages and fruit juices; lithia water; seltzer
water; waters [beverages]; table waters; aerated water; mineral water [beverages];
aperitifs, non-alcoholic; whey beverages; aloe vera drinks, non-alcoholic; non-
alcoholic fruit juice beverages; isotonic beverages; non-alcoholic beverages; non-
alcoholic honey-based beverages; cider, non-alcoholic; cocktails, non-alcoholic; non-
alcoholic fruit extracts; orgeat; ginger ale; fruit juice; vegetable juices [beverages];
kvass [non-alcoholic beverage]; milk of almonds [beverage]; peanut milk [non-
alcoholic beverage]; smoothies; lemonades; must; fruit nectars, non-alcoholic; soda
water; sorbets [beverages]; tomato juice [beverage]; grape must, unfermented;
sarsaparilla [non-alcoholic beverage], and the opponent’s alcoholic beverages
(except beers) in Class 33 are often sold side by side, both in shops and bars and on
drinks menus. These goods target the same public and may be in competition.
Therefore, they are similar to a low degree.
The contested syrups and other preparations for making beverages; preparations for
making aerated water; preparations for making mineral water; powders for
Decision on Opposition No B 2 269 788 page: 8 of 13
effervescing beverages; preparations for making beverages; beer wort; essences for
making beverages; preparations for making liqueurs; syrups for lemonade; extracts
of hops for making beer; malt wort; pastilles for effervescing beverages; syrups for
beverages and the opponent’s alcoholic beverages (except beers) are similar to a
low degree, as they can have the same end users, distribution channels and method
of use.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to
these particular goods (05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A.
(fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of
these goods and services are not the same, they have some similarities, as they are
complementary and the services are generally offered in the same places where the
goods are offered for sale. Furthermore, they target the same public.
The goods covered by the retail services and the specific goods covered by the other
mark have to be identical in order to find similarity, that is to say, they must either be
exactly the same goods or fall within the natural and usual meaning of the category.
Therefore, the contested retailing or wholesaling of all kinds of alcoholic beverages,
wine, spirits and liqueurs is similar to a low degree to the opponent’s alcoholic
beverages (except beers).
The rest of the contested services in Class 35 are dissimilar to the opponent’s
alcoholic beverages (except beers) in Class 33, since, by nature, they are different.
Goods are tangible whereas services are intangible. They have different purposes
and methods of use and are neither in competition nor complementary. Furthermore,
they are not provided by the same undertakings and they target different publics.
b) 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 and services found to be similar to varying degrees
are directed at the public at large and at business customers with specific
professional knowledge or expertise.
The degree of attention is considered average.
c) The signs
MOMA
Earlier trade mark Contested sign
Decision on Opposition No B 2 269 788 page: 9 of 13
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). This applies by analogy to international registrations
designating the European Union. Therefore, a likelihood of confusion for only part of
the relevant public of the European Union is sufficient to reject the contested
application.
The earlier mark is a word mark consisting of the verbal element ‘MOMA’. In the case
of word marks, it is the word as such that is protected and not its written form.
Therefore, it is irrelevant whether the earlier sign is depicted in upper or lower case
characters.
The contested sign is a figurative mark consisting of the word ‘MONA’ written in
orange upper case letters in the middle of a black rectangle. Above this word, an
orange sun is depicted. The expression ‘by V&F’ in orange appears below the word
‘MONA’, in much smaller letters.
Part of the relevant public might associate ‘MOMA’ in the earlier mark with the
Museum of Modern Art in New York or, in the case of the Bulgarian speakers, with a
‘young lady, damsel, maiden’. However, for part of the public in the relevant territory,
such as the Polish-speaking public, ‘MOMA’ has no meaning.
‘MONA’ in the contested sign might be associated with a given name (e.g. by the
English-, German- and Swedish-speaking parts of the public). In Spanish, ‘mona’
means ‘cute’, ‘lovely’ or ‘nice’, and it is also used as a generic name that designates
a female monkey. For part of the public, such as the French- and Polish-speaking
parts of the public, although ‘Mona’ might be perceived as a name because of the
well-known ‘Mona Lisa’, since it is rather unusual, it is not very likely to be
understood in this way.
In any case, both ‘MOMA’ and ‘MONA’ are distinctive to an average degree in relation
to the relevant goods and services that are or relate to alcoholic beverages.
Furthermore, the element ‘V&F’ in the contested sign will be understood as a
business name not conveying any particular concept, and it is therefore distinctive to
an average degree. The preposition ‘by’ is commonly used in commerce before the
name of the designer of the goods or before a business name.
Where the business name is not the dominant element, as is the case here, although
each of the elements of which the sign is made up might have their own independent
distinctive roles, consumers are likely to focus more on the element that would be
seen as identifying the specific product line than on the element that would be
perceived (because it is preceded by ‘by’ or another equivalent term) as identifying
Decision on Opposition No B 2 269 788 page: 10 of 13
either the company that has control of the products concerned or the designer who
created the product line. In the case of the contested sign, the focus of the
consumers’ attention will be the distinctive word ‘MONA’.
Visually, the signs coincide in the letters ‘MO*A’, which constitute the earlier mark
almost in its entirety. However, they differ in their third letters, ‘M’ in the earlier mark
and ‘N’ in the contested sign. They also differ in the figurative elements and colours,
described above, of the contested sign, as well as in its expression ‘by V&F’, which
will be paid less attention, since it is not the dominant element, as explained above.
Account is taken of the fact 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).
Therefore, 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
‘MO*A’. However, it differs in the sounds of the signs’ third letters, ‘M’ in the earlier
mark and ‘N’ in the contested sign. The additional verbal elements ‘by V&F’ in the
contested sign are depicted in such a small size that they are barely noticeable, and
they are unlikely to be pronounced.
Consequently, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for part of the public in the
relevant territory. Since a conceptual comparison is not possible, the conceptual
aspect does not influence the assessment of the similarity of the signs.
Part of the public in the relevant territory will perceive the meaning of either the
earlier mark or the contested sign, as explained above, but will not perceive a
meaning in both signs. For this part of the public, since one of the signs will not be
associated with any meaning, the signs are not conceptually similar.
For the remaining part of the public, which will associate the signs with dissimilar
meanings, as explained above, the signs are conceptually dissimilar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 in question from the perspective of the public in the
Decision on Opposition No B 2 269 788 page: 11 of 13
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) 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).
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
Account should also be 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).
In the present case, the goods and services are partly similar to varying degrees and
partly dissimilar. The earlier mark has a normal degree of distinctiveness and the
degree of attention of the public is average. The signs are visually similar to an
average degree and aurally similar to a high degree. Conceptually, depending on the
part of the public under consideration, they are dissimilar, they are not conceptually
similar or the assessment of the similarity of the signs is not be influenced by this
aspect.
As explained above, although the contested sign consists of several elements, which
affects the overall impression created by the sign, as mentioned by the applicant,
most of these elements will not have much of an impact on consumers, either
because of their size or because of their secondary role. Instead, consumers will
focus on the distinctive word ‘MONA’, placed in the centre of the sign.
The similarities between ‘MOMA’ and ‘MONA’ are obvious, and the Opposition
Division considers that the differences between the signs are not sufficient to enable
consumers to differentiate the signs. Likelihood of confusion covers situations where
the consumer directly confuses the trade marks themselves, or where the consumer
makes a connection between the conflicting signs and assumes that the
goods/services covered are from the same or economically linked undertakings.
The applicant refers to previous decisions of the Office to support its arguments
(18/04/2011, No B 1 640 575, OLYS/OLISANA; 30/05/2007, No B 686 347,
LOOP/LOOPSTAR; 29/06/2007, R 895/2006-2, THALASSAVITA/THALASSA-
INTERNATIONAL; 16/05/2007, No B 325 466, BLUE/BLUE CHANNEL). However,
the Office is not bound by its previous decisions, as each case has to be dealt with
separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and
outcome should still be duly considered when deciding upon a particular case.
Decision on Opposition No B 2 269 788 page: 12 of 13
In the present case, the previous cases referred to by the applicant are not relevant
to the present proceedings.
In cases No B1 640 575, OLYS/OLISANA; No B 686 347, LOOP/LOOPSTAR; and
No B 325 466, BLUE/BLUE CHANNEL, the differences between the signs were
considered to play a different role from in the present case, where the impact on
consumers of the differing elements is limited, for the reasons explained above.
In case R 895/2006-2, THALASSAVITA/THALASSA-INTERNATIONAL, there was no
likelihood of confusion because the signs coincided only in ‘THALASSA’, which had a
low degree of distinctiveness.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s international registration No 942 559 designating the
European Union.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be similar to varying degrees to those of the earlier
trade mark.
The rest of the contested services 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 services cannot be successful.
The opposition is also based on the following earlier trade marks, for which
Article 8(1)(b) was also invoked:
– European Union trade mark No 4 485 926, , for which genuine use was
proven for the following goods in Class 33: alcoholic beverages (except
beers).
For the same reasons as given in section a) of this decision, the remaining,
dissimilar, services in Class 35 are also dissimilar to alcoholic beverages (except
beers), and no likelihood of confusion exists with respect to those services.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) 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 for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
Decision on Opposition No B 2 269 788 page: 13 of 13
The Opposition Division
Martina GALLE Sandra IBAÑEZ Steve HAUSER
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.