OPPOSITION No B 2 748 963

Consorzio per la Tutela dell'Asti, Piazza Roma, 10, 14100 Asti, Italia (opponent), represented by Notarbartolo & Gervasi, Via Luigi Mercantini 5, 10121 Turin, Italy (professional representative)

a g a i n s t

Asti Consortium S.r.l., Via Monti 15, 14100 Asti, Italy (applicant), represented by UAB "Brainera", Savanorių pr. 217, 02300 Vilnius, Lithuania (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 748 963 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 14 365 621 in Class 33, namely wine; sparkling wine; sparkling grape wine; natural sparkling wines; sparkling white wines; white wines; all aforementioned goods complying with the specification of the PDO 'Asti'. The opposition is based on Italian collective mark registration No 1 089 590 for goods in Class 33, namely wines; Italian trade mark registration No 1 559 555 for goods in Class 33, namely sparkling Asti (wines); Asti (wines); muscat Asti (wines); European Union collective mark registration No 10 881 134 for goods in Class 33, namely sparkling Asti (wine), Asti (wine), muscat Asti (sweet wines); European Union collective mark registration No 11 256 311 for goods in Class 33, namely sparkling Asti (wine), Asti (wine), muscat Asti (sweet wines) and European Union collective mark registration No 10 881 241 for goods in Class 33, namely sparkling Asti (wine), Asti (wine), muscat Asti (sweet wines). 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 signs

(Italian collective mark registration No 1 089 590)   LADY ASTI (Italian trade mark registration No 1 559 555)  (European Union collective mark registration No 10 881 134) (European Union collective mark registration No 11 256 311) (European Union collective mark registration No 10 881 241)
Earlier trade marks	Contested sign

As preliminary remark, and in reply to the observations of the opponent filed on 21/02/2017, the Opposition Division notes that pursuant to Article 66 (1) EUTMR the essential function of an European Union collective mark is to distinguish the goods and services of an association of producers or traders from those of other undertakings. Such a trade mark is in all other respects to be treated in the same way as an ‘individual’ European Union trade mark (Article 66 (3) EUTMR), and in particular it must be inherently distinctive (see 13.6.2012, T-534/10, Hellim, EU:T:2012:292, § 44, 47, 52).

The relevant territory is Italy as regards Italian collective mark registration No 1 089 590 and Italian trade mark registration No 1 559 555 and the European Union for European Union collective mark registration No 10 881 134, European Union collective mark registration No 11 256 311 and European Union collective mark registration No 10 881 241.

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 contested sign is a figurative mark consisting of the word ‘FRATELLI’ depicted in white capital letters within a black rectangular background and placed on a sort of heraldic shield also placed on a grey shield. Below the word ‘FRATELLI’ the word ‘ASTI’ is placed, depicted in fanciful black characters.

On the upper part of the mark and within the upper part of the heraldic element, the word and numerical elements ‘CASA FONDATA NEL 1991 FRATELLI’ and ‘VINO BIANCO’ are placed. However, account must be taken on the fact that these elements, due to their secondary position and significantly small size, shall be considered as negligible.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, the aforementioned elements ‘CASA FONDATA NEL 1991 FRATELLI’ and ‘VINO BIANCO’ are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

Moreover, when compared to these elements, it is clear that the words ‘FRATELLI’ and ‘ASTI’, together with the figurative elements on which they are placed, play the role of dominant element, as they are the most eye-catching.

The element ‘FRATELLI’ of the contested sign has no meaning for a part of the relevant public. However, a part of the relevant public, as for instance the Italian-speaking consumers, will understand it as the equivalent of the English word ‘brothers’.  As this word is meaningless for a part of the public but also not descriptive, allusive or otherwise weak for another part for the relevant public, it is distinctive.

The element ‘ASTI’ of the contested sign will be associated with the name of a city in Northwest Italy, famous for its sparkling wines, and contextually with the name of a protected geographical indication for wines. Bearing in mind that the relevant goods are wines, this element is non-distinctive for all the goods in Class 33.

The earlier Italian trade mark registration No 1 559 555 is a word mark consisting of the two words ‘LADY ASTI’.

The earlier Italian collective mark registration No 1 089 590 is a figurative mark consisting of the stylized depiction of the silhouette of a man on a horse holding a flag with a white cross. This element is place on a grey circle surrounded by a white larger circle with a grey outline. In the lower part of the white circle the words ‘CONSORZIO DELL’ASTI D.O.G.C’ are placed, depicted using fanciful grey capital letters.

The European Union collective mark registration No 10 881 134, European Union collective mark registration No 11 256 311 and European Union collective mark registration No 10 881 241 are also figurative marks. The three of them display on their left side a device that fully coincide with the depiction of the whole of the Italian collective mark registration No 1 089 590.

Additionally, the European Union collective mark registration No 10 881 134 displays the verbal elements ‘CONSORZIO DELL’ASTI D.O.C.G.’, the European Union collective mark registration No 11 256 311 the verbal elements ‘CONSORZIO ASTI D.O.C.G.’ and below them, the lower case letters ‘bollicine dolci’, depicted using smaller letter than the preceding verbal elements,  and the European Union collective mark registration No 10 881 241 the words ‘ASTI’ and ‘D.O.C.G’, divided by an horizontal line, followed by the words, also of a smaller size, ‘dolcezza naturale’.

The earlier marks have no elements that could be considered clearly more dominant than other elements.

For a part of the public, in particular the part who has no understating of Italian language, none of the elements, with the exception of the word ‘ASTI’ and the element ‘D.O.C.G.’ has a meaning or is descriptive, allusive or otherwise weak and thus, for a part of the relevant public these elements of the marks are distinctive. As seen above, the element ‘ASTI’ is non-distinctive for all the goods in Class 33 also covered by the earlier mark while the acronym ‘D.O.C.G’ will be understood as standing for Denominazione di Origine Controllata e Garantita (controlled and guaranteed designation of origin). This element is also non-distinctive in relation to goods in Class 33.

For another part of the public, such as the Italian-speaking part of the public, not only the elements ‘ASTI’ and ‘D.O.C.G’ are non-distinctive but also other elements of the earlier marks are considered to be non-distinctive (‘CONSORZIO’, meaning consortium, in the sense of regulatory authority but also partnership, association) or weak (‘bollicine dolci’ meaning sweet little bubbles, ‘dolcezza naturale’ meaning natural sweetness) in relation to gods in Class 33. As seen above, the remaining elements of the earlier marks are deemed to be distinctive since, like they are not descriptive, allusive or otherwise weak for the relevant goods.

Visually, aurally and conceptually, the marks in dispute only coincide in the word ‘ASTI’, which is a non-distinctive element for the reasons explained above. Independently on their degree of distinctiveness or the role they play in the marks, all the remaining verbal and/or figurative elements of the signs are not similar.

As the signs coincide only in a non-distinctive element, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Angela DI BLASIO

Andrea VALISA

Francesca CANGERI SERRANO

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.