OPPOSITION DIVISION
OPPOSITION No B 2 346 834
Cielo e Terra S.P.A., Via IV Novembre, 39, 36050 Montorso Vicentino (VI), Italy
(opponent), represented by D’Agostini Group, Rivale Castelvecchio, 6, 31100
Treviso, Italy (professional representative)
a g a i n s t
Toto Limited, Level 1, Blue Harbour Business Centre, Ta Xbiex Yacht Marina, Ta
Xbiex XBX 1027 Malta (applicant), represented by Abril Abogados S.L.P.,
C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 346 834 is upheld for all the contested goods.
2. European Union trade mark application No 12 474 698 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 European Union trade mark
application No 12 474 698 ‘AJE CIELO’. The opposition is based on, inter alia, Italian
trade mark registration No 1 501 914 ‘CIELO BLU’. The opponent invoked Article 8(1)
(b) and Article 8(5) 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.
Decision on Opposition No B 2 346 834 page: 2 of 6
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 Italian trade mark registration No 1 501 914.
a) The goods
The goods on which the opposition is based are the following:
Class 33: Wines.
The contested goods are, after limitation, the following:
Class 32: Mineral waters and table waters.
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.
Wine is an alcoholic drink made from fermented grape juice. On the other hand,
mineral waters are those occurring in nature with some dissolved salts present, often
bottled and sold as drinking water; table waters refer to water suitable for drinking at
table.
In its observations, the applicant argued that the goods under comparison are not
similar since the earlier wines are generally intended to be savoured and is not
designed to quench thirst, whereas the mineral and table waters covered by the
contested sign are exclusively intended to quench thirst. In support of its arguments,
the applicant quotes a judgement of the General Court, namely, judgement
18/06/2008, T-175/06, Mezzopane, EU:T:2008:212, § 79, 81-83, 85, 87-88.
It has to be noted that, although the judgement of the General Court is relevant to
some extent to the present case, the Office does have a duty to exercise its powers
in accordance with the general principles of European Union law, such as the
principle of equal treatment and the principle of sound administration and the way in
which these principles are applied must be consistent with respect to legality. It must
also be emphasised that each case must be examined on its own individual merits.
The outcome of any particular case will depend on specific criteria applicable to the
facts of that particular case, including, for example, the parties’ assertions, arguments
and submissions.
In view of the above, it follows that, even if the judgement submitted to the
Opposition Division are to some extent factually similar to the present case, the
outcome may not be the same.
Although the judgment to which the applicant refers to found dissimilarity between
wines and waters, this is not an established case-law since the opposite conclusion
was drawn by the General Court in case T-421/10.
As regards the similarity between products of Class 32 designated with the mark
applied for and products of Class 33 protected by the earlier mark, it must be stated
that, indeed, the products protected by the earlier mark also include low-alcohol
beverages which, like the products included in Class 32 of the contested application,
are designed to quench thirst and can be consumed in the same way and in the
Decision on Opposition No B 2 346 834 page: 3 of 6
same places. Non-alcoholic beverages are often marketed and consumed together
with alcoholic beverages and are subject to widespread distribution, from the food
section of department stores to bars and cafes [see the judgment of the Court of 9
March 2005, Osotspa / OHIM – Distribution & Marketing (Hai), T 33/03, Rec. P. II 763,
paragraphs 43 and 44]. In addition, beers, which constitute a subcategory of
alcoholic beverages, are sold in the same types of commercial establishments,
where they are displayed in the same sections or in sections adjacent to those
containing alcoholic beverages.
However, it should be noted that the beverages in question also have different
characteristics. While alcoholic beverages are consumed, as a rule, on special
occasions and at social or family gatherings, water and non-alcoholic beverages are
consumed daily. In addition, water consumption responds to a vital need. The
average consumer, who is considered to be reasonably well informed, reasonably
observant and circumspect, is sensitive to this differentiation between alcoholic and
non-alcoholic beverages, which is necessary since some consumers do not want, or
cannot even, consume alcohol [judgment of the Court of 12 November 2009, Spa
Monopole v OHIM – De Francesco Import (SpagO), T 438/07, Rec. p. II 4115,
paragraph 30]. Therefore, it must be considered that the similarity between both
types of products is scarce (05/10/2011, T-421/10, Rosalia de Castro,
EU:T:2011:565, § 31-32).
Therefore, the Opposition Division considers that the contested mineral waters and
table waters share a certain degree of similarity with the opponent’s wines since they
can have the same method of use and can be distributed through the same
channels. Furthermore, these goods can be in competition and be addressed at the
same consumers. Therefore, the goods under comparison are similar to a low
degree.
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 found to be similar to a low degree are directed at the
public at large. The degree of attention will be average.
c) The signs
CIELO BLU AJE CIELO
Earlier trade mark Contested sign
The relevant territory is Italy.
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).
Decision on Opposition No B 2 346 834 page: 4 of 6
Both marks are word signs. The earlier mark consists of the elements ‘CIELO’ and
‘BLU’ whereas the contested sign consists of ‘AJE’ and ‘CIELO’.
The common element ‘CIELO’ will be perceived by the relevant public as ‘sky’ (the
region of the atmosphere and outer space from the earth) since this word exists in
Italian (cièlo). As regards the element ‘BLU’ of the earlier mark, it refers to the colour
which qualifies the noun therefore, the elements ‘CIELO’ and ‘BLU’ of the earlier
mark form a conceptual unit that will be understood by the relevant public as blue
sky. Since these two elements do not have any relation to the relevant goods, they
have a normal degree of distinctive character. The term ‘AJE’ is meaningless and it
will be perceived by the relevant public as a fanciful element. Since neither ‘CIELO’
nor ‘AJE’ included in the contested sign has any relation with the relevant goods, they
are normally distinctive.
Visually, the signs coincide in the common element ‘CIELO’ which is first word of the
earlier mark. However, they differ in the term ‘AJE’ of the contested sign as well as in
the element ‘BLU’ of the earlier mark. Therefore, the signs are visually similar to an
average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /cielo/,
present identically in both signs. The pronunciation differs in the sound of the
letters /aje/ of the contested sign and in the letters /blu/ of the earlier mark. Both
signs contain eight letters respectively, of which, the five/cielo/ are the same.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning on account of the common and distinctive element ‘CIELO’, the signs are
conceptually similar to an average degree.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The Court has set out the essential principle that evaluating likelihood of confusion
implies some interdependence between the relevant factors and, in particular, a
Decision on Opposition No B 2 346 834 page: 5 of 6
similarity between the marks and between the goods. Therefore, a lesser degree of
similarity between the goods 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).
The goods are similar to a low degree and the level of attention of the relevant public
is average.
Taking into account all the above, and especially the fact that the signs are visually,
aurally and conceptually similar as they share the distinctive element ‘CIELO’, which
plays and independent distinctive role within both marks, it is considered that the
differing elements included in both marks cannot counteract the similarities between
the signs so as to exclude a likelihood of confusion.
The relevant consumers may think that the similar goods come from the same or
from economically-related companies. Those consumers might focus on the element
‘CIELO’, when remembering the marks based on the imperfect recollection of them
and might consequently not notice the differences between them, or they might link
the trade marks based on the common distinctive element ‘CIELO’ and therefore
assume that the contested sign is a sub-brand of products connected to the earlier
mark.
It should be also borne in mind that the relevant goods are beverages and, since
these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic
similarity between the signs is particularly relevant (see judgment of 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, there is a likelihood of confusion on the part of the public.
In the present case and taking into account the interdependence principle, as stated
above, the contested sign must be rejected for the goods found to be similar to a low
degree to the goods of the earlier trade mark as the similarities between the signs
offset the low degree of similarity between the goods.
Therefore, the opposition is well founded on the basis of the opponent’s Italian trade
mark registration No 1 501 914. It follows that the contested trade mark must be
rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its extensive use as claimed by the opponent. The result
would be the same even if the earlier mark enjoyed an enhanced degree of
distinctiveness.
As the earlier right No 1 501 914 leads to the success of the opposition and to the
rejection of the contested trade mark for all the goods against which the opposition
Decision on Opposition No B 2 346 834 page: 6 of 6
was directed, there is no need to examine the other earlier rights invoked by the
opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b)
EUTMR, there is no need to further examine the other ground of the opposition,
namely Article 8(5) EUTMR.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Ana MUÑIZ RODRIGUEZ Carmen SANCHEZ
PALOMARES
Michaela SIMANDLOVA
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.