OPPOSITION DIVISION
OPPOSITION No B 2 763 038
Rotkäppchen-Mumm Sektkellereien GmbH, Sektkellereistr. 5, 06632 Freyburg,
Germany (opponent), represented by Lucia Schwab, Rotkäppchen-Mumm
Sektkellereien GmbH, Rechtsabteilung, Matheus-Müller-Platz 1, 65343 Eltville am
Rhein, Germany (employee representative)
a g a i n s t
Viñedos Casa de Uco S.A., Juan Bautista Alberdi 431, piso 15, of. 02, Olivos,
Buenos Aires 1636, Argentina (applicant), represented by Isern Patentes y Marcas,
S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional
representative).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 763 038 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 371 611 for the word mark ‘CASA DE UCO’. The opposition is
based on Austrian trade mark registration No 286 727 for the word mark ‘UGO’. The
opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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.
Decision on Opposition No B 2 763 038 page: 2 of 5
a) 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).
Alcoholic beverages (except beer) are identically contained in both lists of goods.
b) 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.
c) The signs
UGO CASA DE UCO
Earlier trade mark Contested sign
The relevant territory is Austria.
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).
Neither the earlier trade mark, ‘UGO’, nor the contested sign, ‘CASA DE UCO’, has
any meaning for the relevant public, namely the German-speaking public. Therefore,
they are distinctive in relation to the goods in question.
The first part of the contested sign is completely different from the earlier mark.
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.
Visually and aurally, the signs coincide in the string of letters and phonemes ‘U*O’
but differ in the middle letters, ‘G’ in the earlier trade mark and ‘C’ in the contested
sign, and in the pronunciation of the remaining words at the beginning of the
contested mark, ‘CASA DE’. As noted above, the coinciding phonemes /U*O/ are
secondary in the contested sign, given their position at the end of the sign. Aurally,
the overall rhythms and intonations of the signs are easily distinguishable due to the
number of sounds in the contested sign compared with the number in the earlier
mark.
Decision on Opposition No B 2 763 038 page: 3 of 5
Therefore, in view of the foregoing, the signs are similar to a low degree both visually
and aurally.
Conceptually, contrary to the opponent’s argument, neither of the signs has a
meaning for the public in the relevant territory. Since a conceptual comparison is not
possible, 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.
d) 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.
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
According to the case-law of the Court of Justice, in determining the existence of a
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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).
In the present case, the goods are identical and the earlier mark has a normal degree
of distinctiveness. The signs are visually and aurally similar to a low degree on
account of the two common letters ‘U*O’. However, these are placed in different
positions within signs of different structures, namely ‘UGO’ and ‘CASA DE UCO’.
Furthermore, a conceptual comparison is not possible.
In its observations, the opponent argues that a part of the contested sign has a low
degree of distinctiveness given that many trade marks for goods in Class 33 include
the element ‘CASA’. In support of its argument, the opponent refers to several trade
mark registrations in the European Union.
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
Decision on Opposition No B 2 763 038 page: 4 of 5
the market. In other words, on the basis of register data 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 ‘CASA’.
Furthermore, ‘CASA’ is a Portuguese and Spanish word, whose translation into
German is ‘Haus’, and therefore might be less distinctive in relation to goods in
Class 33 for the Portuguese- and Spanish-speaking public but not for the German-
speaking public. Under these circumstances, the opponent’s claim must be set aside.
The opponent also refers to previous judgments of the General Court to support its
arguments in favour of a likelihood of confusion. The Opposition Division observes
that, while acknowledging that some of the principles mentioned by the opponent are
well established by relevant case-law, the previous cases referred to by the opponent
are not relevant to the present proceedings, since they relate to marks composed of
meaningful elements in the relevant territories, which are less distinctive or dominant,
whereas the current signs are meaningless and distinctive, as explained above in
section c).
In the scenario described above, and taking into account all the circumstances of the
case and the arguments and evidence submitted by the parties, it is considered that
the signs do not have sufficient similarities for a likelihood of confusion or association
between them to arise, even for identical goods and with the average degree of
distinctiveness of the earlier mark. Even the average consumer is reasonably
observant and circumspect and will easily distinguish the signs.
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Marta GARCÍA COLLADO Carlos MATEO PÉREZ Inés GARCÍA LLEDÓ
Decision on Opposition No B 2 763 038 page: 5 of 5
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.