OPPOSITION No B 2 661 570

Montes S.A., Av. del Valle, nº 945, Of. 2611 – Ciudad Empresarial, Huechuraba, Santiago, Chile (opponent), represented by Arochi & Lindner, S.L., C/ Serrano 28, 1°C, 28001 Madrid, Spain (professional representative)

a g a i n s t

Accolade Wines Chile SpA, Alonso de Cordova 5151, oficina 1103, Las Condes, Santiago, Chile (applicant), represented by Società Italiana Brevetti S.P.A., Via Carducci, 8, 20123 Milano, Italy (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 570 is upheld for all the contested goods.

2.        European Union trade mark application No 14 861 959 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 14 861 959. The opposition is based on European Union trade mark registration No 12 529 178. 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.

1. The goods

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

Class 33:        Wine

The contested goods are the following:

Class 33:        Alcoholic beverages (except beers); wines.

Contested goods

Wines are identically contained in both lists of goods.

The contested alcoholic beverages (except beers) include, as a broader category, the opponent’s wine. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 average.

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).

The earlier mark is a figurative mark consisting of a depiction of a stylised bird.

The contested sign is a figurative mark consisting of the word ‘ANAKENA’, in gold, and, above it, a gold depiction of a stylised bird. The element ‘ANAKENA’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. The contested sign has no elements that could be considered clearly more distinctive than other elements.

The bird figures in both signs have no meaning for the relevant goods; therefore, they are distinctive.

Visually, the signs differ in the word ‘ANAKENA’ of the contested sign. However, they coincide in the similar depictions of stylised birds. Despite a few differences, such as the colours of the birds and the crest of the bird in the contested sign, both birds are depicted in the same manner. The wings of both birds are outstretched, and the positions of the birds, their feathers and their tails are the same. They also coincide in that the birds’ heads are shown in profile, albeit facing in different directions. The eyes are depicted in the same manner, using circles. The body of each bird is depicted using a large circle, which has another circle inside it in the earlier mark and the letter ‘A’ inside it in the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, only the word component of the contested mark will be pronounced. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, the word element of the contested mark does not have any meaning. On the other hand, the signs coincide in the depiction of a bird. Since the signs will both be associated with the concept of a bird, they are conceptually similar.

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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). This is particularly relevant in the present case, as the conflicting goods are identical.

The earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the relevant goods. The signs are visually and conceptually similar due to the coincidence in the depiction of a bird, which constitutes one element of the contested sign and the only element of the earlier trade mark. Although the signs differ in the word ‘ANAKENA’ of the contested sign, and there are also a few differences between the depictions of birds, the Opposition Division is of the opinion that these differences are not sufficient to counteract the visual and conceptual similarities between the signs, which together result in their creating similar overall impressions.

The applicant 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 are to some extent factually similar to the present case, the outcome may not be the same. In addition, in most of the cited cases the coinciding figurative element is accompanied by different verbal elements. Furthermore, in most of the cited cases the relevant goods are in Class 33, and for those goods aural similarity may have a particular importance, since they are traditionally ordered orally.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 529 178. It follows that the contested trade mark must be rejected for all the contested goods.

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

Francesca DINU

Bekir GÜVEN

Judit NÉMETH

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.