OPPOSITION No B 2 603 994

S.C. Agroindustriala Bucium S.A., Fundac Plopii Fără Soț, nr. 18-22, Jud. Iași, Iasi, Romania (opponent), represented by S.C. Weizmann Ariana & Partners Agentie De Proprietate Intelectuala S.R.L., str. 11 IUNIE, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucharest, Romania (professional representative)

a g a i n s t

S.C. Romvintec S.R.L., Str.Alecu Russo, nr. 2-4, Camin Vila, parter, camera 7, Tecuci, jud. Galati, Romania (applicant), represented by Anna Nicoleta Costache Demes, Str. Constantin Lacea nr. 12-14, biroul 2, 500112 Brasov, Romania (professional representative)

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 603 994 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 793 484 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 and services of European Union trade mark application No 13 793 484. The opposition is based on, inter alia, Romanian trade mark registration No 138 913.

The opponent invoked Article 8(1)(b) EUTMR in relation to this earlier mark.

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 Romanian trade mark registration No 138 913.

1. The goods and services

The goods on which the opposition is based are, inter alia, the following:

Class 33: Alcoholic beverages (except beer).

The contested goods and services are the following:

Class 33: Wine.

 

Class 35: The bringing together, for the benefit of others, of wine (excluding the transport thereof), enabling customers to conveniently view and purchase those goods, in wholesale or retail stores, via mail order catalogues, electronic media, websites and teleshopping.

Class 43: Wine bar services; wine bar services; wine tasting services; services for providing drink.

 

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 33 wine falls in the broad category of alcoholic beverages (except beer) of the opponent. Therefore these goods are identical.

Contested services in Class 35 the bringing together, for the benefit of others, of wine (excluding the transport thereof), enabling customers to conveniently view and purchase those goods, in wholesale or retail stores, via mail order catalogues, electronic media, websites and teleshopping are similar to a low degree to the opponent´s alcoholic beverages (except beer), being wine included in this category, as already explained.

Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary, and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Contested services in Class 43 services for providing drink; wine bar services; wine tasting services are similar to a low degree to the opponent´s alcoholic beverages (except beer), which include wine as already explained, since they are complementary, can coincide in distribution channels and come from the same kind of undertakings. In fact, it is common nowadays for wine producers to hold onsite wine tasting sessions, and similar events.

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 and services found to be partly identical and partly similar to a low degree are directed at the public at large. The degree of attention paid during their purchase is deemed to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Romania.

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 term ‘Bucium’ in the earlier mark is a Romanian word used to refer to a musical instrument that has the shape of a horn. It is also the name of a commune in Romania, with a population of about 1 792 people. The term ‘Buciumeni’ is the name of a Romanian commune, with a population of about 4 652 people.

The applicant states that, since the words “Bucium” and “Buciumeni” refer to two different geographical places, and being the applicant´s company located in one of them (i.e. Buciumeni), and the opponent´s company in the other one (i.e. Bucium), no confusion from the public can be expected in relation to said terms or the confronted trade marks.

However, neither of the parties has adduced evidence demonstrating that the places are well known or associated with the goods and services in any way, and neither of these communes is well-known in any way and indeed their small populations mean that a significant part of the public will only perceive the concept of a horn from the term ‘Bucium’, whilst ‘Buciumeni’ will have no meaning..  

Therefore, it cannot be totally disregarded that part of the Romanian public ignores the fact that those words are the names of geographical regions, and even more, the name of the places where the companies are located. In such a scenario, ‘Bucium’ and ‘Buciumeni’ are both of average distinctive character. The Opposition Division will concentrate on this significant part of the public.

The tower depiction in the earlier mark is also of average distinctive character. 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 than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). As such, this element is secondary to the verbal component “Bucium”.

The word “CRAMA” in the contested mark is the Romanian term for “wine cellar” and, together with the bunch of grapes device, they are non-distinctive in relation to the contested goods and services that consist of or are related to wine, for being descriptive of their characteristics (e.g. wine; wine bar services). They are of at least lower than average distinctive character in relation to the rest of services, for being at least allusive of their characteristics (e.g. services for providing drink), namely of the fact that they are somehow related to wine. The green curved line, also in the contested mark, is non-distinctive, being a merely decorative element, used as a frame.

 

The consumer´s attention will be focused on the most distinctive parts of the marks, which are those capable of helping them to distinguish or identify the commercial origin of the signs. In this case, the most distinctive elements are, as explained above, “Bucium”, “Buciumeni” and the tower depiction.

The signs have no element which is more dominant (more visually-outstanding) than others.

Visually, the signs coincide in the sequence of letters “B-u-c-i-u-m”, which constitutes the entire verbal element of the earlier mark, and the beginning of the verbal element “Buciumeni” in the contested mark. The signs also coincide in the fact that “Bucium” and “Buciumeni” are written in identical stylised font type and colour.

The differences found in the contested mark rely on elements that have been considered to be at least of lower than average distinctive character. The signs also differ in the last letters “eni” of the word “Buciumeni” in the contested mark, and in the other figurative elements.

The main visual coincidences are found in distinctive elements of the marks. Regarding the difference in the tower depiction (distinctive) of the earlier mark, it has been already explained above that the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. Lastly, the differing letters of the word “Buciumeni” are positioned at the end of the word, and therefore in the part to which less attention is paid, as signs are read from top to bottom and left to right.

For all the above, it is considered that the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters
“b-u-c-i-u-m”, present identically in both signs. The pronunciation differs in the sound of the letters “e-n-i” at the end of “Buciumeni” in the contested mark, and in the sound of “c-r-a-m-a” in that same sign.

The main aural coincidences are found in distinctive elements of the marks, whereas the dissimilar sound of “crama” is found on an element considered to be either non-distinctive or of lower than average distinctive character. It is even likely that consumers omit this term when referring to the mark aurally, pronouncing only the distinctive term “Buciumeni”.

For all the above, it is considered that the marks are aurally either similar to an average degree (for consumers pronouncing “crama” when referring to the contested mark) or to a high degree (for consumers omitting “crama” and referring to the contested mark only as “Buciumeni”)

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, the signs are not 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 and services 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 goods and services compared are partly identical and partly similar to a low degree.

The signs have been considered to be visually similar to an average degree and aurally similar (to an average or high degree, depending on the omission or not of the term “crama”), and not conceptually similar.

The coincidences found between the marks rely on distinctive elements, whereas the dissimilarities are, in their vast majority, found in elements considered to be either less distinctive or secondary.

The average consumer of the category of goods and services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

Based on the principle of imperfect recollection, the consumers might believe that the conflicting goods and services come from the same or economically-linked undertakings. Also having regard to the principle of interdependence, it is considered that the coincidences between the signs outweigh their dissimilarities and may induce at least part of the public to believe that the conflicting goods and services come from the same or economically-linked undertakings.

The applicant argues that the terms “Bucium” and “Buciumeni” do not have a specific meaning for the targeted consumer. It also explains that “Buciumeni” is the name of a village in Romania, where the applicant has one of the wineries and conducts its business. It submits information about the company acting as the applicant, its characteristics and data about its wine production. It states that the contested sign has been positioned on the market, and constantly advertised by the applicant, and filed various pieces of evidence to substantiate this claim. However, the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The analysis carried out above concludes that the coincidences between the marks, together with the identity or low similarity of the goods and services, are clearly enough to counteract their dissimilarities.

Considering all the above, there is a likelihood of confusion on the part of the public. If a significant part of the relevant public of the goods or services at issue may be confused as to the origin of the goods or services, this is sufficient. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 138 913. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier Romanian trade mark registration No 138 913 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268) or any articles invoked in relation to said earlier right.

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

Vanessa PAGE

María del Carmen SUCH SANCHEZ

Ric WASLEY

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.