OPPOSITION No B 2 667 197

Achaval-Ferrer S.A., Cobos 2601 – Perdriel Lujan de Cuyo – Mendoza CP5509, Argentina (opponent), represented by Ruo Patentes y Marcas S.L.P., C/ Padre Recaredo de los Ríos, 30. Entlo., 03005 Alicante, Spain (professional representative)

a g a i n s t

Liquori Taccola – G.S.G. Srl, Via delle Fornaci, 2 – Loc. Uliveto Terme, 56010 Vicopisano (PI), Italy (applicant), represented by Zanoli & Giavarini S.p.A., Via Melchiorre Gioia 64, 20125 Milano, Italy (professional representative).

On 18/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 667 197 is upheld for all the contested goods.

2.        European Union trade mark application No 14 734 131 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 of European Union trade mark application No 14 734 131. The opposition is based on European Union trade mark registration No 8 407 785. The opponent invoked Article 8(1)(b) and 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 33:        Alcoholic beverages (except beers).

The contested goods are the following:

Class 33:        Spirits; Liqueurs; Bitters; Grappa (brandies).

The contested spirits; liqueurs; bitters; grappa (brandies) are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, 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 goods found to be identical are directed at the public at large. The degree of attention is considered average.

3. The signs

QUIMERA
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). 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 to focus the comparison of the signs on the Italian-speaking part of the relevant public, since the marks will be aurally more similar in this language than in others.

The earlier mark is the word mark ‘QUIMERA’. In Italian, the word ‘QUIMERA’ has no meaning and will be perceived as fanciful and distinctive in relation to the relevant goods.

The contested sign is a figurative mark composed of verbal and figurative elements. The figurative elements depict dark brown coins and light brown branches on a beige rectangular background that has slightly curved corners. The words ‘CHIMERA’ and ‘AMARO’ are in a central position in bold slightly stylised upper case letters. Above these words is the word ‘ITALIA’ and below them is the word ‘TACCOLA’ and the expression ‘del 1895’. These elements are in non-bold slightly stylised upper case letters, except for the word ‘del’, which is in lower case letters.

A significant part of the Italian-speaking public will perceive ‘CHIMERA’ as conveying no meaning. However, for another part of the public (e.g. consumers with a knowledge of Greek mythology), the word ‘CHIMERA’ will be perceived as referring to the Chimera (‘a fire-breathing female monster with a lion’s head, a goat’s body, and a serpent’s tail’) of Greek mythology. However, ‘CHIMERA’ has no meaning in relation to the relevant goods and is therefore distinctive.

The word ‘TACCOLA’ will be perceived as ‘a black and grey bird of the family Corvidae (Corvus monedula), common in central-southern Italy’ (information extracted from Dizionario Italiano on 09/08/2017 at www.grandidizionari.it/Dizionario_Italiano/parola/T/taccola_1.aspx?query=taccola+(1)

It is meaningless in relation to the relevant goods and is, therefore, distinctive. However, it appears at the bottom of the sign and is, therefore, not in a prominent position with respect to the overall impression of the mark. Moreover, its position within the mark and the elements ‘del 1895’ (‘since 1895’) thereunder suggest that this element indicates the name of the company the goods originate from, which was established in 1895. It follows that the elements ‘del 1895’ are non-distinctive.

With regard to the words ‘ITALIA’ and ‘AMARO’, the relevant public will understand them as ‘Italy’ and ‘bitter’. These words are merely descriptive in relation to the relevant goods, since they will be perceived as references to the place of origin and the nature of the goods, respectively. Therefore, they are non-distinctive.

Furthermore, the figurative elements of the contested sign are of a rather decorative nature and, therefore, less distinctive.

Bearing in mind the foregoing, and owing to its central position and size, the element ‘CHIMERA’ will be seen as the central element of the contested mark.

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 earlier sign, being a word mark, has no element that could be considered clearly more dominant than other elements.

Visually, the signs differ in some of the verbal elements of the contested sign, that is, ‘ITALIA’, ‘AMARO’, ‘TACCOLA’ and ‘del 1895’, as well as in its figurative elements. However, as explained above, these are secondary elements in the overall impression of the mark, and the signs coincide in five letters of the words ‘QUIMERA’ and ‘CHIMERA’, the latter constituting the central element in the overall impression of the contested sign. These words differ in their first letters only, namely ‘QU’ and ‘CH’. Account must be taken of the fact that the signs’ last five (identical) letters make up a significant part of the signs. Moreover, as explained above, the verbal components of a sign have a stronger impact on the consumer than the figurative elements.

Therefore, the signs are visually similar to a low degree.

Aurally, the signs will be pronounced as ‘QUI-MER-A’ (the earlier mark) and ‘I-TA-LIA / CHI-MER-A / A-MA-RO / TA-CCO-LA / DEL-1895’ (the contested sign), if all of these elements are pronounced. However, considering what has been stated above, it is conceivable that at least a significant part of the relevant public will refer to the contested mark as ‘CHIMERA’ only. The signs coincide in the phonemes ‘IMERA’ of the earlier mark and of the distinctive word ‘CHIMERA’ of the contested sign. In Italian, the first syllable of the earlier mark will be pronounced in the same way as the first three letters of the English word ‘quid’, while the contested sign’s first syllable will be pronounced in the same way as the first two letters of the English word ‘kill’, which means that the beginnings (‘q’ versus ‘k’) are highly similar. It cannot be excluded that the signs might differ, for a part of the public, in the sounds of the other verbal elements that are present in the contested sign only, that is, ‘ITALIA’, ‘AMARO’, ‘TACCOLA’ and ‘del 1895’. However, taking into account what has been stated above, these elements will not have a substantial impact on consumers.

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

Conceptually, for the Italian-speaking part of the public, the signs are conceptually not similar, since it will associate the contested sign at least with a certain bird, and possibly also with the Chimera of Greek mythology, whereas it will perceive the earlier mark as having no meaning.

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

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.

As concluded above, the goods are identical. The differences between the signs cannot overcome the visual and aural similarities between them, as they are mainly confined to secondary elements, whereas there are significant similarities between the earlier mark and the central element of the contested sign. It is very likely that at least a significant part of the relevant public will pronounce only the word ‘CHIMERA’ of the contested sign, due to the role it has in the overall impression of the mark, when requesting goods labelled with the contested sign.

The fact that the signs are aurally similar to a high degree, for at least a significant part of the public, is particularly important. It should 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). Accordingly, in such cases, it is 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.

Account is also 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).

Consequently, this is likely to lead consumers to believe that the identical goods at issue originate from the same manufacturer or related manufacturers.

Considering all the above, there is a likelihood of confusion on the part of the Italian-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 European Union trade mark registration No 8 407 785. 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.

Moreover, 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 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

Natascha GALPERIN

Michal KRUK

Oana-Alina STURZA

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.