OPPOSITION No B 2 253 097

Masi Agricola S.p.A. e per brevità M. Agri S.p.A., Via Monteleone, 26 – Località Gargagnago, Sant’Ambrogio di Valpolicella (VR), Italy (opponent), represented by Feltrinelli & BrogI, Via Ca’ di Cozzi, 41, 37124 Verona, Italy (professional representative)

a g a i n s t

Finca Agnello S.A., Av. Del Libertador 6343, Piso 9 D.A., Ciudad Autónoma de Buenos Aires 1428, Argentina (applicant), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124, 4º, 28006 Madrid, Spain (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 253 097 is upheld for all the contested goods.

2.        European Union trade mark application No 11 847 175 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 11 847 175. The opposition is based on, inter alia, Maltese trade mark registration No 51 554. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Maltese trade mark registration No 51 554.

1. 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 32:        Beers; Mineral and aerated waters and other non-alcoholic beverages (non-alcoholic wine).

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services 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.

Contested goods in Class 32

The contested beers are similar to the opponent’s alcoholic beverages (except beers). Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Beers and alcoholic beverages can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings.

Non-alcoholic beverages in Class 32, such as fruit drinks, fruit juices, mineral and aerated waters, on the one hand, and alcoholic beverages (except beers) in Class 33 on the other, are often sold side by side both in shops and bars and on drinks menus. These goods target the same public and may be in competition. Therefore, the contested mineral and aerated waters and other non-alcoholic beverages (non-alcoholic wine) are similar to a low degree to the opponent’s alcoholic beverages (except beers).

Contested goods in Class 33

Alcoholic beverages are listed in both lists of goods in Class 33. Furthermore, wines fall within the broad category of the opponent’s alcoholic beverages (except beers). Therefore, the contested alcoholic beverages, wines (except beers) and the opponent’s alcoholic beverages (except beers) 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 or similar to varying degrees are directed at the public at large. The degree of attention is average.

3. The signs

COSTASERA
Earlier trade mark	Contested sign

The relevant territory is Malta.

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 trade mark is a word mark composed of two conjoined basic Italian words, ‘costa’ and ‘sera’. It can reasonably be assumed that the relevant part of the public will split the verbal element into two separate words, as each of the words conveys a specific concept. The word ‘costa’ of the earlier mark will be understood by the relevant public as ‘coast’. This is because the Maltese and English equivalents of the word ‘costa’ are very similar. The word ‘sera’ will be understood by the relevant public as ‘evening’. This is because the Maltese equivalent of word ‘sera’ is ‘serata’ and at least part of the relevant public is able to understand basic Italian words. Given that the words have no connection with the characteristics of the goods, they have an average degree of distinctiveness.

The contested mark is a figurative sign depicted in purple. It consists of two conjoined words, ‘costa’ and ‘negra’, which have meanings in Italian, and below the conjoined words is an abstract figurative element depicting waves. As stated above, the relevant public is able to understand basic Italian words, so the word ‘negra’ will be understood as meaning ‘black’. Given that the words have no connection with the characteristics of the goods, the contested mark’s verbal elements have an average degree of distinctiveness. The figurative element will be perceived as purely decorative and therefore is weak.

Visually, the signs coincide in their beginnings, namely the word ‘COSTA’, and in their final letters, ‘RA’, all of which are upper case in both marks. However, the marks differ in the remaining letters of their verbal elements. The contested sign contains an additional figurative element, which will be perceived as purely decorative. The contested sign also differs in its colours.

According to case-law, 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 rather than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R-233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R-53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). It follows that, in the present case, the consumer will identify and memorise the verbal element of the contested sign, rather than the decorative figurative element.

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

Aurally, the pronunciation of the signs coincides in the syllables ‛COS-TA-*-RA’, present identically in both signs. The pronunciation differs in the syllables ‛SE’ of the earlier mark and ‘NEG’ of the contested sign. However, these syllables have the same vowel, ‘E’, and consequently both signs present the same vowel pattern: ‘O*A*E*A’.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both marks will be associated with the same concept of ‘coast’, they are conceptually similar to an average degree.

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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

In the present case, the signs are visually and conceptually similar to an average degree and aurally similar to a high degree. The goods are partly identical and partly similar, and directed at the public at large, whose degree of attention is average. Although the relevant public may perceive certain visual and aural differences between the signs, the likelihood that they might associate the signs with each other is high. It is likely that, even in the context of the goods that are similar to a low degree, the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates.

The applicant refers to a previous decision 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).

It must also be emphasised that each case must be examined on its own individual merits. The signs considered in the current opposition and those involved in the decision of 06/12/2010 in Case R 622/2010-2 are not comparable because the earlier mark in this previous decision was a complex figurative mark containing various word and figurative elements and the contested sign was composed of two words. Therefore, the previous decision is not comparable to the present case. Moreover, 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.

Considering all of the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Maltese public.

Therefore, the opposition is well founded on the basis of the opponent’s Maltese trade mark registration No 51 554.

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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Maltese trade mark registration No 51 554 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Zuzanna STOJKOWICZ	Liina PUU	Loreto URRACA LUQUE

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.