OPPOSITION DIVISION
OPPOSITION No B 2 835 927
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
Blends Wine Estates Australia Pty Ltd, 186 Fisher St, Malvern SA 5061, Australia
(holder), represented by HGF Limited, 4th Floor, Merchant, Exchange Building, 17-
19 Whitworth Street West, Manchester M1 5WG, United Kingdom (professional
representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 835 927 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 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 of international registration
designating the European Union No 1 309 700 for the figurative mark
, namely against beverages containing wine (alcohol content 1
15% or more by volume); beverages containing wine (wine predominating); blended
wine; cooking wine; dessert wine; drinks containing wine (wine predominating); dry
fortified wine; dry red wine; dry sparkling wines; dry white wine; dry wine; fortified
wines; ginger wine; mulled wines; non-sparkling wines; red wine; sparkling fruit
wines; sparkling wines; still wines; sweet fortified wine; sweet red wine; sweet
sparkling wine; sweet white wine; sweet wine; vintage wines; white wine; wine in
Class 33. The opposition is based on European Union trade mark registration No 1
309 700 for the word mark ‘MAS LA NOVELLA’ in Class 33 (alcoholic beverages
(except beer); wine; liqueurs; spirits [beverages]; brandy). The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 835 927 page: 2 of 4
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.
a) The signs
MAS LA NOVELLA
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).
It should be pointed out that an examination of the similarity of the signs must take
account of the overall impression produced by those signs, since the average
consumer normally perceives a sign as a whole and does not examine its individual
details (27/06/2012, T-344/09, EU:T:2012:324, Cosmobelleza, §52).
The earlier mark is a word mark made up of the terms ‘MAS LA NOVELLA’. Part of
the relevant public, such as Spanish-speaking one will understand the element ‘MAS’
in the meaning of the English word ‘more’. Having said that, it should be pointed out
that the opponent’s allegations concerning the potential association of said element
with the term ‘MASÍA’ being descriptive of a traditional agricultural holding consisting
of a country house with various dependencies, with forests, pastures and attached
farmland (the reference is made to the opponent’s writ dated 23/01/2017, page 1),
even though cannot excluded for part of the Spaniards with Catalan knowledge, this
association is too distant to make such a connection and furthermore the opponent
has not adduced any relevant or convincing evidence to this extent, given that a list
of trade marks consisting of ‘MAS’ is not appropriate in this regard. Thus, the
Opposition Division would like to draw the opponent’s attention that a great number
of marks consisting of said term, cannot affect its distinctiveness as such. The
following element ‘LA’ of the earlier mark, will be understood by, among others, the
Spanish-speaking part of the public, as a define article (feminine, singular). The last
element of the earlier mark, namely ‘NOVELLA’ is an English word referring to ‘a
short novel or a long short story’ (see Collins English Dictionary online) and as such
will be perceived at least by the English-speaking part of the relevant public. In light
of the foregoing and irrespective of whether the mentioned elements are understood
or not, their distinctiveness should be seen as normal in relation to the goods at
stake. Thus, the earlier mark has no elements which could be considered more
distinctive than the others.
Decision on Opposition No B 2 835 927 page: 3 of 4
Regarding the contested sign, the element ‘Cuvella’ has no meaning at least for a
significant part of the public in the relevant territory. Consequently, its distinctiveness
should be seen as normal in relation to the goods at stake.
Visually, the signs coincide in the letters ‘-VELLA’ placed at the end of the marks.
They differ in the additional first elements ‘MAS’ and ‘LA’ of the earlier mark, having
no counterpart in the contested sign, and the letters ‘NO-’ of the earlier mark versus
‘CU-’ of the contested sign, respectively. Regarding the typeface in which the verbal
elements of the contested sign are written, their stylisation is fairly standard and will
not lead the consumer’s attention away from the elements they seem to embellish.
The fact that the signs coincide in the letters ‘-VELLA’ has to be put into context. It
should be highlighted that the marks differ in the additional first two elements of the
earlier mark which have no counterparts in the contested sign and the first two letters
of the third element of the earlier mark and the only element of the contested sign. To
this extent, it is important to remark the fact that the signs start with an entirely
different letters which usually attracts the primary attention of the relevant public and
significantly influences the perception of the marks. Furthermore, the earlier sign is
clearly much longer than the contested sign, three terms vs one term. Indeed, the
overall impression is sufficiently distinct and the mere fact that the signs coincide in
last letters is offset by the differences described above. The marks are considered
visually dissimilar overall.
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
‘VELLA’, present identically at the end of both signs. The signs differ in the sound of
both the additional first two terms ‘MAS’ and ‘LA’ of the earlier mark, having no
counterpart in the contested sign, and the letters ‘NO-’ versus ‘CU-’, respectively. The
above said results in obvious differences, namely a different amount of syllables,
rhythm and intonation, when the marks are being pronounced. Thus, it is concluded
that the signs are not aurally similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. Given that any of the earlier mark’s elements are
associated with the meaning specified above by part of the relevant public, the other
sign has no meaning in that territory, the signs are not conceptually similar. In case
neither of the signs has a meaning for the public in the relevant territory, a conceptual
comparison is not possible, and so the conceptual aspect does not influence the
assessment of the similarity of the signs.
b) 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.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 835 927 page: 4 of 4
Since the opponent is the losing party, it must bear the costs incurred by the holder in
the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
holder are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Eva Inés PÉREZ
SANTONJA
Klaudia MISZTAL Vít MAHELKA
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.