OPPOSITION No B 2 686 874
Sur Andino Argentina S.A., Catamarca 35, Mendoza, Argentina (opponent), represented by Sipara Limited, Seacourt Tower, Third Floor, West Way, Oxford OX2 0JJ, United Kingdom (professional representative)
a g a i n s t
Einig-Zenzen GmbH & Co. KG, Carl-Friedrich-Benz-Str. 8, 56759 Kaisersesch, Germany(applicant), represented by Hannke Bittner & Partner Mbb Patentanwälte Rechtsanwälte, Firmungstraße 4-6, 56068 Koblenz, Germany (professional representative).
On 22/06/2017, the Opposition Division takes the following
1. Opposition No B 2 686 874 is upheld for all the contested goods.
2. European Union trade mark application No 14 911 457 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 911 457 in Class 33. The opposition is based on UK trade mark registration No 3 133 349.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 goods
The goods on which the opposition is based are the following:
Class 33: Wines and sparkling wines
The contested goods are the following:
Class 33: Wine, beverages containing wine, sekt
The relevant factors relating to the comparison of the goods 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.
The contested goods wine are identical since they are listed in the same terms as those of the earlier trade mark. The contested goods sekt are identical to the opponent’s sparkling wines of the earlier mark, since ‘sekt’ is the German term for sparkling wines.
The contested goods beverages containing wine are highly similar to wine of the earlier mark, since they have the same nature, purpose, method of use, often have the same producers, target at the same public and share the same distribution channels. Further, they can substitute for each other and hence, they are in competition.
- 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 of the contested sign, found to be identical and highly similar to those of the earlier mark are directed at the public at large. The degree of attention is considered to be average.
- The signs
ASADO SUR ANDINO
Earlier trade mark
The relevant territory is the United Kingdom.
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).
Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).
The earlier mark is a word mark, consisting of Spanish words with the following meaning: (1) ‘ASADO’ means ‘grilled, roasted’. In some Latin American countries (Argentina, Chile, etc.) it means specific barbeque techniques, a social gathering where such barbeque techniques are used and also the name of a traditional meal in such countries consisting usually of barbequed beef meat as a main ingredient. (2) ‘SUR ANDINO’ means ‘South Andean’ in Spanish, however it would not be understood by the relevant public in the UK.
The applicant claims that ‘ASADO’ would be understood by the relevant public as referring to Argentinian-style barbeque and since such food is often accompanied by red wine, it will be clearly perceived by the UK consumers as descriptive of the goods and in particular, as indicating that the wine is suitable for (Argentinian-style) barbequed food. In support the applicant has submitted print-outs of Google search results on ‘asado’ and ‘wine’, of an on-line article on Argentinian ‘asado’ from a website dedicated to wines and related topics, of an article from an internet site on Argentinian ‘asado’ and suitable wines, of Google search results on ‘asado’ and ‘London’ and of a website with information on places in London that offer ‘The best asado’.
Even though the submitted evidence show that the term ‘asado’ is used to designate specific barbequed food in English-language materials, including in relation to places offering such food in the UK, this is not sufficient to show that the term is generally known to the relevant public, which as noted above is the general public. Whether or not the term might be known to people interested in ‘asado’ cuisine, remains to be seen. This claim however has not been supported by any convincing evidence nor is ‘asado’ an English term nor has it been incorporated into the English language by any means. No evidence has been submitted to show that the places offering such food in the UK are of a number indicating that ‘asado’ food is known (and consumed) by the general public. Moreover, the information on restaurants offering such food in London, available on www.yelp.com and submitted by the applicant, shows only 10 restaurants, which for the size of London indicates that such places are quite exceptional and rare. Further, there is no evidence showing that the foreign word ‘asado’ and related barbequed meat are well-known in the UK for other reasons (e.g. due to a fashion trend, large advertising of ‘asado’ place(s) in the UK, etc.). Accordingly, a conclusion that ‘asado’ is a term, commonly used by the UK consumers and known to them, may not be made.
Accordingly, the element ‘ASADO’ of the earlier mark has no meaning for the relevant public and has a normal degree of distinctive character.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Since the earlier mark is composed of three foreign words, it is likely that the consumers focus on and remember the first word of the word expression.
The contested sign consists of the element ‘ASADO’ and a stylised bull device. The above considerations are also relevant regarding ‘ASADO’ in the contested sign. With respect to the bull device, it is not descriptive, allusive or otherwise weak for the relevant goods and is therefore distinctive. In the current case the following principle can also be applied, namely that when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer 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 image of a bull and ‘ASADO’ positioned one below each other in the contested sign, are equally eye-catching. The image of a bull is quite detailed and bigger in size when compared to ‘ASADO’. On the other hand, ‘ASADO’ is represent in sufficiently big letters to attract the attention and in view of the fact that consumers tend to easier notice and remember the word elements in composite signs, this element equally attracts the consumer’s attention. Therefore, the contested sign has no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in their shared element ‘ASADO’ and differ in ‘SUR ANDEN’ in the earlier mark and the image of a bull in the contested one. Accordingly and upon taking into account that the consumers generally focus on the beginning of a sign, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the common element ‛ASADO’, which is the only word element in the contested sign and the first word in the earlier mark. The pronunciation differs in the sound of the words ‘SUR ANDEN’ in the earlier mark, which have no counterpart(s) in the contested mark. Therefore, the signs are aurally similar to an average degree.
Conceptually, as noted above, the public at large will not attribute any meaning to the coinciding word ‘ASADO’ and the remaining word elements of the earlier mark. It would be only the bull device of the contested sign that would convey some semantic meaning to the contested mark. Accordingly, the consumers would not associate the earlier mark with any notion, while the contested sign would convey a concept linked to a bull. Therefore, the signs are not conceptually similar.
Since the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- 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. 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).
This 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).
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).
The signs were found to coincide in the element ‘ASADO’, which is the only word element in the contested sign and the first word element in the earlier mark and has no meaning for the relevant public.
The contested goods were found to be identical and highly similar to the goods of the earlier trade mark. They are directed to the public at large whose degree of attention is average. The signs were found to be visually and aurally similar to an average degree, and not similar conceptually. Furthermore, the earlier trade mark has normal distinctiveness with respect to the goods of Class 33.
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).
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.
In the light of the foregoing, also taking into account the principle of interdependence mentioned above, there is a likelihood of confusion
Therefore, the opposition is well founded on the basis of the opponent’s UK trade mark registration No 3 133 349. It follows that the contested trade mark must be rejected for all the contested goods.
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
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.