OPPOSITION No B 2 440 124

Scillard Investments Limited, Michail Psellou, 5, Viom. Per. Agiou Athanasiou, Linopetra, 4105 Limassol, Cyprus (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Agro-Roca Valles, S.L., C/ La Noria, 13 nave 5, 08430 La Roca del Vallés (Barcelona), Spain (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 440 124 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 091 848 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 091 848. The opposition is based on EUTM No 10 943 942 and EUTM No 6 630 008. 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 EUTM registration No 6 630 008.

1. The goods and services

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

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Class 13: Firearms; ammunition and projectiles; explosives; fireworks.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brushmaking materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 25: Clothing, footwear, headgear.

Class 30: Coffee, tea, sugar, rice, tapioca, sago, artificial coffee; flour and bread; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 35: Advertising; business management services; business administration; office functions.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Class 40: Treatment of materials.

Class 43: Services for providing food and drink; temporary accommodation.

The contested goods and services are the following:

Class 29: Ham, sausages and pork loin.

Class 33: Wine; red wine; mulled wines; white wine; wine punch; beverages containing wine; wine coolers [drinks]; cooking wine; fortified wines; sparkling wines; fortified wines; low-alcoholic wine; low-alcoholic wine.

Class 35: Promotion for retailing, wholesaling and sale via global computer networks of hams, sausages, pork loin and wine, red wine, mulled wine, white wine, wine punch, beverages containing wine, alcoholic beverages containing wine and fruits, cooking wine, fortified wine, sparkling wine, wine with a reduced alcohol content, low-alcohol wine.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested ham, sausages and pork loin are similar to a low degree to the opponent’s services for providing food and drink in Class 43. Some butchers or charcuteries may roast pork products. Although those goods are not necessarily consumed on the premises, there are some similarities with the services of a fast food restaurant or take away. Therefore, they are complementary, and their distribution channels and producers are identical (see, in this regard, 12/12/2014, T-405/13, da rosa, EU:T:2014:1072, § 96, 97).

Contested goods in Class 33

The contested wine; red wine; mulled wines; white wine; wine punch; beverages containing wine; wine coolers [drinks]; cooking wine; fortified wines; sparkling wines; fortified wines; low-alcoholic wine; low-alcoholic wine are similar to a low degree to the opponent’s services for providing food and drink in Class 43. There is a clear degree of complementarity between wine and services for providing food and drink, because these drinks do not undergo a manual transformation process in order to be consumed but are rather just served in order for the consumer to drink them. Moreover, they have the same distribution channels and their producers are identical (see, by analogy, 22/07/2010, R 11/2008-4, CASAS DE FERNANDO ALONSO (fig.)/FERNANDO ALONSO, §21).

Contested services in Class 35

The contested services are promotion for retailing, wholesaling and sale via global computer networks of hams, sausages, pork loin and wine, red wine, mulled wine, white wine, wine punch, beverages containing wine, alcoholic beverages containing wine and fruits, cooking wine, fortified wine, sparkling wine, wine with a reduced alcohol content, low-alcohol wine. These services consist of promoting the sale of various products. Therefore, they are included in the broad category of the opponent’s advertising. Consequently, they 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 contested goods in Class 33 (and the opponent’s services in Class 43) are directed at the public at large displaying an average degree of attention (see, in this regard, 12/12/2014, T-405/13, da rosa, EU:T:2014:1072, § 91). Moreover, the contested goods in Class 29 might be bought on a daily basis, which means that the relevant consumers will display at most an average degree of attention, because the goods are everyday products (see, in this regard, 30/03/2016, R 2167/2012-2, SEARA THIS IS IT! / SEARA et al., § 26.

As regards the contested services (and the opponent’s services) in Class 35, they are mainly directed at a professional public with a higher than average degree of attention (see, in this regard, 31/01/2013, T-66/11, Babilu, EU:T:2013:48, § 25).

3. The signs

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).

Both trade marks are figurative signs containing verbal and figurative elements. In such cases, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The earlier mark contains two elements of almost the same size. The verbal element ‘BELUGA’ is written in upper case letters and in a bold typeface. The letters are curved around the top half of the figurative element, which is a dark circle with a grey border. Inside the circle, there is a grey crown. Part of the public will also see caviar inside the circle. There is also a rather realistic depiction of a fish, which extends beyond the circumference of the circle.

The contested sign has a black rectangular background. At the top, there is a symbol resembling a coat of arms with two birds’ heads and a shield in its centre. At the bottom, there is the verbal element ‘GRAN BELUGA’, written in standard white upper case letters. Between ‘GRAN BELUGA’ and the figurative device, the verbal element ‘IMPERIO IBERICO’ appears, also written in white, in a standard upper case typeface. It should be noted that, given the size of both the figurative device and ‘GRAN BELUGA’, the element ‘IMPERIO IBERICO’, due to its relatively small size, may not be remembered, noticed or considered important and therefore has less impact on the overall impression of the sign.

Moreover, as pointed out by the opponent, the element ‘IMPERIO IBERICO’ will be perceived as referring to the Iberian Empire by at least part of the public, the Spanish public in particular, although it will also has similar equivalents in Portuguese (‘IMPERIO IBERICA’), French (‘EMPIRE IBERIQUE’), Romanian (‘IMPERIU IBERICA’) and Italian (‘IMPERO IBERICA’). For this part of the public, the distinctiveness of the expression will be slightly below average, because it will be perceived as referring to the origin of the goods and services, especially for goods in Classes 29 and 33 for which Spain has acquired a certain level of notoriety.

As also correctly pointed out by the opponent, the coinciding element ‘BELUGA’ will be understood as referring to a large white sturgeon. For the part of the public that perceives caviar in the figurative element of the earlier mark this meaning will be reinforced by the figurative element. Given the goods and services at issue, this element has a normal degree of distinctiveness.

Furthermore, the element ‘GRAN’ of the contested sign is the Spanish word for ‘big’ or ‘grand’. It will also be understood by at least the French- and English-speaking parts of the public (for which the equivalent word is ‘grand’) and the Italian- and Portuguese-speaking parts of the public (for which the equivalent word is ‘grande’).

It should be recalled that 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.

In the present case, the Opposition Division finds it appropriate, for reasons of procedural economy, to focus the comparison of the signs on the part of the public that perceives ‘IMPERIO IBERICO’ as a geographical indication and ‘GRAN’ as qualifying ‘BELUGA’.

From all the above, it is likely that the verbal element ‘BELUGA’ in the earlier mark and the verbal element ‘GRAN BELUGA’ in the contested sign are the elements to which the public will attribute the most trade mark significance.

The earlier mark has no element that could be considered dominant, while in the contested sign the figurative device and, to a lesser degree, ‘GRAN BELUGA’ are more eye-catching than the other elements.

Visually, the signs coincide in the verbal element ‘BELUGA’ and in the colours, black, white and grey, of their respective figurative elements. However, they differ in many aspects, namely in their respective figurative elements and in the additional verbal elements in the contested sign. Nevertheless, given that verbal elements are in general of more importance than figurative elements, and that the impact of the descriptive and small verbal element ‘IMPERIO IBERICO’ of the contested sign should not be overestimated, the marks are visually similar to a low degree.

Aurally, the signs coincide in the identical word ‘BELUGA’. However, they differ in the additional verbal elements in the contested sign, ‘IMPERIO IBERICO’ and ‘GRAN’. Nevertheless, it should be noted that, according to settled case-law, the relevant consumer will tend to shorten long signs (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). Moreover, the General Court has stated that only the dominant part of a mark would be pronounced when enunciated by consumers. (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 55). Therefore, it is likely that at least part of the public will not pronounce the element ‘IMPERIO IBERICO’. This is particularly likely to be the case for the public that perceives ‘IMPERIO IBERICO’ as an indication of the geographical origin of the goods and services, because consumers tend not to pronounce less distinctive elements.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by ‘IMPERIO IBERICO’ and by the figurative elements of the marks at issue. The coinciding element ‘BELUGA’ will be understood as referring to a large white sturgeon. Furthermore, in the conceptual comparison, the influence of ‘GRAN’ is limited, because it only qualifies the idea of a fish, indicating that it is large (see, by analogy, 07/09/2005, R 928/2004-1, BIG PLUS (Fig.) / PLUS, § 24).

Moreover, the influence of the element ‘IMPERIO IBERICO’ should not be overestimated, because it is less dominant, and, for the part of the public that understands it as referring to a geographical indication, non-distinctive (31/01/2012, T-205/10, La victoria de Mexico, EU:T:2012:36, § 72).

Furthermore, the earlier mark contains a crown, while the contested sign contains a coat of arms. Therefore, both use figurative elements that contain a clear heraldic reference (see, in this regard, 23/02/2012, R 2340/2010-1, H (FIGURATIVE MARK) / H (FIGURATIVE MARK), § 25).

Therefore, taking the above into account, from a conceptual perspective, the signs are similar to an average degree overall.

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.

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).

In the present case, the signs are aurally and conceptually similar, and visually similar to a low degree. The contested goods in Classes 29 and 33 are similar to a low degree to the opponent’s goods and services, while the contested services in Class 35 are identical to the opponent’s services.

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). This is particularly relevant in the present case, as the contested goods in Class 29 are foodstuffs purchased on a regular basis. They are relatively cheap so they do not significantly affect the family budget and their purchase is not preceded by long hesitation and comparisons of various offers (see, in this regard, 30/03/2016, R 2167/2012-2, SEARA THIS IS IT! / SEARA et al., § 26). Moreover, it cannot be excluded that they may be sold over the counter, for example in butchers’ shops. Therefore, the fact that the signs at issue are aurally similar must be taken into consideration.

As regards the contested goods in Class 33, the Opposition Division agrees with the opponent’s arguments. 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. Moreover, as part of the public will immediately perceive ‘IMPERIO IBERICO’ as a geographical indication of origin, it should be noted that this argument is supported by the fact that Spain is the third largest wine producer worldwide (during the period from 1993 to 2014, according to the Food and Agriculture Organization of the United Nations http://www.fao.org/faostat/en/#data/QD/visualize). Therefore, the influence of this verbal element is limited.

In relation to the services at issue in Class 35, the relevant public will display a higher than average degree of attention. However, as already explained, likelihood of confusion involves a combination of various factors. In the present case, it is important to note that the contested services are identical to the opponent’s services. Furthermore, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application must not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new brand line of services provided under the opponent’s mark.

Consequently, taking into consideration all the circumstances of the case, the Opposition Division concludes that the marks under comparison convey similar overall impressions, and this is not counteracted by the differences between them. Therefore, since the relevant public may believe that the identical or similar goods and services at issue come from the same undertaking or from economically-linked undertakings, there is a likelihood of confusion, including a likelihood of association, on the part of the relevant public.

As earlier EUTM registration No 6 630 008 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right 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

Steve HAUSER

Patricia LOPEZ FERNANDEZ DE CORRES

Adriana VAN ROODEN

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.