OPPOSITION DIVISION
OPPOSITION No B 2 790 338
Codorníu S.A., Casa Codorníu s/n, 08770 Sant Sadurní d’Anoia (Barcelona), Spain
(opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona,
Spain (professional representative)
a g a i n s t
Armando De Zan, 2870 Pharr Court South, Suite 2009, Atlanta Georgia 30305,
United States (of America) and Elviana Candoni, Via Solferino 5, 30026
Portogruaro, Italy (applicant), represented by Bugnion s.p.a., Via A. Gramsci 42,
50132 Firenze, Italy (professional representative).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 790 338 is upheld for all the contested goods.
2. European Union trade mark application No 15 695 794 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 695 794, ELVIANA. The opposition is based on European Union
trade mark registration No 11 035 698, NUVIANA. The opponent invoked Article 8(1)
(b) EUTMR.
Preliminary remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 2 790 338 page: 2 of 5
a) The goods
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beers); Hydromel [mead]; Piquette; Rice
alcohol; Bitters; Anise [liqueur]; Anisette [liqueur]; Aperitifs; Arak
[arrack]; Alcoholic beverages, except beer; Pre-mixed alcoholic
beverages, other than beer-based; Alcoholic beverages containing
fruit; Distilled beverages; Spirits [beverages]; Brandy; Cocktails;
Curacao; Digesters [liqueurs and spirits]; Alcoholic essences;
Alcoholic extracts; Fruit extracts, alcoholic; Gin; Kirsch; Liqueurs;
Peppermint liqueurs; Perry; Rum; Sake; Cider; Wine; Vodka; Whisky.
The contested goods are the following:
Class 33: Alcoholic beverages (except beer); Wine; Sparkling wines.
Contested goods
The contested alcoholic beverages (except beer) are identically contained in both
lists, albeit with slightly different wording. The contested wine is identically contained
in both lists. The contested sparkling wines are included in the broad category of the
opponent´s wine. They are also identical.
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 average as they are everyday consumer items.
c) The signs
NUVIANA ELVIANA
Earlier trade mark Contested sign
The relevant territory is the European Union.
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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
Decision on Opposition No B 2 790 338 page: 3 of 5
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
For reasons of procedural economy, the Opposition Division finds it appropriate to
focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is made up of the verbal element ‘NUVIANA’. It has no meaning for
the relevant public and is, therefore, distinctive.
The contested sign is made up of the verbal element ‘ELVIANA’. It has no meaning
for the relevant public and is, therefore, distinctive.
Visually, the signs coincide in the letters ‘_ _ V I A N A ’, However, they differ in their
respective first letters being ‘E L’ in the case of the contested sign and ‘N U’ in
respect of the earlier sign.
The applicant stresses that it has to be taken into account that the first letters of the
conflicting signs are different, and that consumers tend to focus on the first element
of a sign when being confronted with a trade mark, since the public reads from left to
right.
However, the Opposition Division notes that every case has to be assessed on its
own merits, and that the degree of similarity of the signs cannot be determined on the
basis of their first letters only. In the present case, each mark consists of one verbal
element that does not convey any meaning to the English-speaking public. Five out
of seven letters are in the same order.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters V I A N A
present in both signs which will be pronounced identically by the relevant public and
have the same number of syllables. They differ only in the pronunciation of one
syllable. The same rhythm and intonation of enunciation is largely shared. Therefore,
the signs are highly similar.
Conceptually, 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. The earlier mark as a whole will be understood as an invented
term by the relevant public. As it is not descriptive, allusive or otherwise weak for the
Decision on Opposition No B 2 790 338 page: 4 of 5
relevant alcoholic goods, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The goods are identical and the earlier sign is distinctive. The signs are visually
similar to an average degree, and aurally similar to a high degree, which leads to a
similar overall impression of the signs. There are no dominant or non-distinctive
elements in the signs. Moreover, the signs do not convey any meaning to the
English-speaking part of the public that could allow consumers to distinguish
between them.
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).
Account is also 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).
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 11 035 698. It follows that the contested trade mark
must be rejected for all the contested goods.
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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 790 338 page: 5 of 5
The Opposition Division
Plamen IVANOV Keeva DOHERTY Natascha GALPERIN
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.