OPPOSITION No B 2 530 189

Sumol + Compal Marcas, S.A., Rua Dr. António João Eusébio, nº. 24, 2790-179 Carnaxide, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Heretat Mont-Rubi, S.A., Finca l'Avellà, 08736 Font-Rubi, Spain (applicant), represented by R. Volart Pons y Cia. S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 530 189 is partially upheld, namely for the following contested goods and services:

Class 33:        Wine, cava and sparkling wine, all the aforesaid goods being made from the Sumoll grape variety.

Class 35:        Retailing of wine, alcoholic beverages.

2.        European Union trade mark application No 13 763 578 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 763 578 ‘GAINTUS SUMOLL’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 10 527 042 . 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 European Union trade mark registration No 10 527 042.

1. The goods and services

The goods on which the opposition is based are the following:

Class 30:        Beverages based on chocolate, cocoa, coffee, tea, artificial coffee and other cereals.

Class 32:        Beverages, namely organic fruit juices, drinking waters, flavoured waters, mineral and aerated waters and other non-alcoholic drinks; Beers; Energy and sports drinks; Soft drinks, crushed-ice drinks, fruit drinks and aerated fruit juice drinks; Vegetable and plant juices; Syrups for beverages, concentrates, powders and other preparations for making beverages.

Class 33:        Alcoholic beverages (except beers); Alcoholic beverages containing fruit juice.

The contested goods and services are the following:

Class 33:        Wine, cava and sparkling wine, all the aforesaid goods being made from the Sumoll grape variety.

Class 35:        Business management in the food industry and beverages; Retailing of wine, alcoholic beverages and foodstuffs; Procurement, for others, of wine, alcoholic beverages and foodstuffs; E-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes; Sales promotion.

Class 39:        Arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to oenotourism, wine culture, gastronomy and cultural and architectural heritage; Conducting of guided visits to wineries; Tour guide services; Escorting of travellers and sightseeing (tourism); Tour reservation services; Packaging and packing of beverages; Storage, sending, transport, distribution and delivery of beverages.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant and opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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

The contested wine, cava and sparkling wine, all the aforesaid goods being made from the Sumoll grape variety are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. 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.

Therefore, the contested retailing of wine, alcoholic beverages are similar to a low degree to the opponent’s alcoholic beverages (except beers) in Class 33.

Retailing of foodstuffs and the opponent’s goods in Classes 30, 32 and 33 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

The contested business management in the food industry and beverages; e-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc., all of them for the beverage and food industry.

Procurement, for others, of wine, alcoholic beverages and foodstuffs are services that relate to the acquisition of these goods from an external source. Issues in procurement include identifying the needs of customers and suppliers, choosing and preparing tools and processes to communicate with suppliers, preparing requests for proposals and requests for quotations, and setting policies for evaluating proposals, quotes and suppliers.

The contested sales promotion consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

All the above mentioned services are clearly different from all the goods covered by the opponent’s earlier mark in Classes 30, 32 and 33. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The above-mentioned services refer to various services which play an important role to support other businesses. Furthermore, the goods and services have different methods of use and are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 39

The contested packaging and packing of beverages; storage, sending, transport, distribution and delivery of beverages are not considered similar to the opponents’ goods. The contested services are mainly services intended to transport goods from one place to another and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or safe keeping. The contested arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to oenotourism, wine culture, gastronomy and cultural and architectural heritage; conducting of guided visits to wineries; tour guide services; escorting of travellers and sightseeing (tourism); tour reservation services relate to the organisation of trips. The opponent’s goods in Classes 30, 32 and 33 are different kinds of beverages and liquids. Apart from being different in nature, given that the contested services are intangible whereas goods are tangible, they serve different needs. The contested services are provided by specialist companies in tour operating and trip organising or companies whose business is not the manufacture and sale of the goods that are transported, distributed or stored. The purpose and method of use of these goods and services are different. They do not have the same distribution channels and they are not in competition. Therefore, they are dissimilar.

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 identical or similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	GAINTUS SUMOLL
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, 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.

The verbal elements ‘Sumol’ and ‘SUMOLL’ of the earlier and contested signs can be associated by the Portuguese-speaking public with the word ‘sumo’ (juice in Portuguese). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Portuguese-speaking public, such as the English- and French-speaking part of the public for who these words are meaningless.

The verbal element ‘Sumol’ constitute the dominant (most eye-catching) element of the earlier trade mark, due to their size, compared with the other elements. Furthermore, above the verbal element ‘Sumol’, there is the word ‘ORIGINAL’ and below it the words ‘ORANGE’ and ‘LARANJA’. However, these elements, due to their size and in the context of the other elements of the earlier mark, are not clearly legible, so that they are barely perceptible. These elements are considered negligible and as they are very likely to be disregarded by the relevant public, they will not be further taken into consideration. Moreover, bearing in mind that the relevant goods are beverages, ‘ORANGE’ is non-distinctive. The presence of an orange slice, a frequently used picture for beverages, may also be perceived as descriptive in connection with the goods as described above.

As to the figurative elements in the earlier trade mark, 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).

Contrary to the applicant’s observations, the elements ‘Sumol’ and ‘GAINTUS SUMOLL’ of the earlier and the contested signs respectively have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs have in common the letters ‘Sumol’, which constitute the more dominant and distinctive element of the earlier trade mark and the first 5 out of 6 letters of the second word of the contested sign. However, they differ in the green background, which has a purely decorative function, the depiction of the orange slice, stylisation and colouring, these differences have a limited impact on the perception of this mark. The signs also differ in the distinctive word ‘GAINTUS’ and in the last letter ‘-L’ of the second word in the contested sign.

The applicant points out that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly 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. However, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, §  52).

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

Aurally, the pronunciation of the signs coincides in the syllables ‘Su-mol’ as the double ‘l’ in the contested sign will be pronounced the same as the single ‘l’ and will therefore have no influence on the pronunciation. The pronunciation differs in the sounds of the letters ‘GAINTUS’ in the contested sign, which have no counterparts in the earlier sign. It follows that the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. Although the orange slice of the earlier mark will evoke a concept, a conceptual comparison is not possible, as this element is non-distinctive and cannot indicate the commercial origin of the mark. Therefore, 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.

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

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. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.

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 contested goods and services are identical, similar to a low degree or dissimilar to the opponent’s goods. The similarity between the signs (which are visually and aurally similar to an average degree) results from the coinciding distinctive word ‘SUMOL-’. In this regard, in its submissions, the applicant argues that ‘SUMOLL’ is a black grape variety (mainly cultivated in Spain) and therefore it is descriptive. The Office does not share this opinion. The goods and services target the public at large, whose degree of attention is average. The relevant public (in the present case the French and English speaking public) will perceive the words ‘SUMOL’ and ‘SUMOLL’ as fanciful terms and will not establish any link between them and the goods and services at issue. Therefore, ‘SUMOL’ and ‘SUMOLL’ are not descriptive for the goods and services in question, as explained above in section c).

A global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). Taking this principle into account when assessing the likelihood of confusion, the Opposition Division considers that the similarity between the signs compensates the low degree of similarity between some of the goods and services.

While the differences between the signs are not imperceptible, they are not sufficient to rule out any likelihood of confusion. More specifically, there is a likelihood of association on the part of the relevant public which, although possibly aware of differences between the signs, may nevertheless still assume that they derive from the same undertaking or economically linked undertakings owing to their similarities.

Indeed, it is highly likely that 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 (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English- and French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to the goods of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• Portuguese trade mark registration No 142 201 for the word mark ‘SUMOL’.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it only contains the word ‘SUMOL’ which will be associated with juice in Portuguese as mentioned above and, therefore, is less distinctive for the opponent’s goods in Class 32 than the word ‘GAINTUS’ in the contested sign. Furthermore, since this mark covers the same or a narrower scope of goods, the outcome cannot be different with respect to the services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Carlos MATEO PÉREZ

Saida CRABBE

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.