OPPOSITION No B 2 692 922

Rotkäppchen-Mumm Sektkellereien GmbH, Sektkellereistr. 5, 06632 Freyburg, Germany (opponent), represented by Rotkäppchen-Mumm Sektkellereien GmbH, Rechtsabteilung, Lucia Schwab, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)

a g a i n s t

Vins El Cep SL., Can Llopart de les Alzines, 08770 Sant Sadurní d’Anoia (Barcelona), Spain (applicant), represented by Javier Vázquez Salleras, Aribau 198, 08036 Barcelona, Spain (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 692 922 is upheld for all the contested goods.

2.        European Union trade mark application No 15 322 761 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 322 761 for the figurative mark . The opposition is based on, inter alia, international trade mark registration No 976 438 designating the European Union for the word mark ‘MM’. The opponent invoked Article 8(1)(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 international trade mark registration No 976 438 designating the European Union.

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        Alcoholic beverages (except beer). 

The 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.

The degree of attention will be average at most as the goods are rather frequently bought and they are neither particularly complex nor expensive.

3. The signs

MM
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). 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 element ‘NATURA’ of the contested sign will be understood in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as in the United Kingdom, Ireland and Malta.

The verbal elements ‘MM’ of the earlier mark and ‘MIM’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The element ‘NATURA’ of the contested sign will immediately be associated by the relevant public with the English word ‘natural’, as it is very close to this word, indicating something non-artificial, non-synthetic. Bearing in mind that the relevant goods are beverages that may be natural or produced in a natural way (i.e. without any artificial ingredients, additives, etc.) this element is non-distinctive for the goods, as the public will merely perceive it as information about their characteristics.

The figurative element of the contested sign, a depiction of a crown, is of low distinctiveness as this symbol is commonly used in advertising as a symbol of luxury and high quality.

Consequently, the element ‘MIM’ is the most distinctive element of the contested sign. It is also the dominant element of the contested sign as it is the most eye-catching, due to its size and positon.

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).

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the letters M-*-M at the beginning and the end. They differ in the additional letter ‘I’ in middle of the contested sign. They also differ in the lowly distinctive figurative element of the contested sign and its non-distinctive and visually clearly subordinated verbal element ‘NATURA’.

Therefore, the degree of visual similarity is slightly lower than average.

Aurally, given that the verbal elements ‘MM’ and ‘MIM’ are meaningless, part of the public will pronounce them both as sequences of single letters and the Opposition Division will focus the comparison on this part of the public, as for them the likelihood of confusion will be greatest. For this part of the public the pronunciation of the signs coincides in the sound of the letters M-*-M and will differ in the additional letter ‘I’ in the middle of the contested sign. The element ‘NATURA’ is not likely to be pronounced as it is non-distinctive and visually clearly subordinated. The figurative element does not have any impact on the aural comparison.

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

Conceptually, neither of the signs has a meaning as a whole. Although the word ‘NATURA’ of the contested sign will evoke a concept, it is non-distinctive and cannot indicate the commercial origin of the mark. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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.

5. 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).

The gods are identical, the degree of visual similarity is slightly lower than average and the aural similarity is an average. The distinctiveness of the earlier mark is normal and the degree of attention of the relevant public will be average at most.

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).

It should also be 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).

Taking into account the aforesaid, the Opposition Division considers that the differences between the signs are not sufficient to safely exclude a likelihood of confusion.

Whilst it is true, that the earlier mark and the most distinctive element of the contested sign are short elements, making differences between them easier to perceive, this fact alone is not sufficient to exclude a likelihood of confusion. The additional letter ‘I’ of the contested sign is located in the middle of the sign. Bearing in mind that the aural aspect is particularly relevant in the present case, it is not sufficient to clearly separate the pronunciation of the signs from each other as their first and last letters are identical, causing a degree of aural similarity that may lead to confusion in typical purchasing situations within noisy establishments.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that consist of or include the letter ‘M’. In support of its argument the applicant refers to some European Union trade mark registrations.

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 the element ‘M’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to previous decisions of the Office to support its arguments. 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).

While 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, 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. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division were to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 976 438 designating the European Union. 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/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the above mentioned earlier right 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 the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Octavio MONGE GONZALVO

Tobias KLEE

Sigrid DICKMANNS

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.