OPPOSITION No B 2 723 628

Herederos de Julian Chivite, S.L., Ribera, 34, 31592 Cintruénigo (Navarra), Spain (opponent), represented by S. Orlando Asesores Legales y en Propiedad Industrial, S.L., C/ Castelló, 20, 4ºD, 28001 Madrid, Spain (professional representative)

a g a i n s t

Gori Agricola S.R.L., Via Gio Batta Gori, 14, 33045 Nimis (UD), Italy (applicant), represented by Roberto Modena, Via Giacinto Gallina, 2/C, 33170 Pordenone, Italy (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 723 628 is upheld for all the contested goods, namely:

Class 33:         Alcoholic beverages (except beer); Alcoholic beverages of fruit.

2.        European Union trade mark application No 15 163 603 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 163 603, namely against all the goods in Class 33. The opposition is based on Spanish trade mark registration No 617 025. 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 goods

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

Class 33: Wines.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); Alcoholic beverages of fruit.

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.

The contested alcoholic beverages (except beer) is a broad category that includes the opponent’s wines. As the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s wines.

The contested alcoholic beverages of fruit are similar to the opponent’s wines, as they have the same nature, they can coincide in their end users, distribution channels and methods of use and they are in competition.

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 are directed at the public at large displaying an average degree of attention (24/11/2016, T-250/15, CLAN, EU:T:2016:678, § 31; 13/04/2011, T-358/09, TORO DE PIEDRA, EU:T:2011:174, § 29).

3. The signs

VIÑA GORRY
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a word mark consisting of two elements, namely ‘VIÑA’ and ‘GORRY’. The contested sign is a figurative mark consisting of a single word, ‘GORI’, in upper case letters, in which the vertical stem of the letter ‘R’ is depicted in red and extends towards the figurative device displayed underneath, which is described in the application as ‘a stylised representation of a bunch of grapes’.

The element ‘VIÑA’ of the earlier mark is a Spanish word referring to ‘a land planted with many vines’ and will be understood as such by the relevant public. As it is widely used in the field of wines, the applicant is right to contend that it will be perceived as referring to the nature of the goods. Therefore, it is weak for the Spanish public (31/05/2017, T-637/15, SOTTO IL SOLE ITALIANO SOTTO il SOLE, EU:T:2017:371, § 58). By contrast, the element ‘GORRY’ of the earlier mark has no meaning in Spanish. Therefore, it is distinctive.

It follows from the above that the element ‘GORRY’ is the most distinctive element of the earlier mark.

The element ‘GORI’ in the contested sign has no meaning in Spanish. Therefore, it is distinctive. However, the contested sign’s figurative device is reminiscent of a bunch of grapes. Since the contested goods are alcoholic beverages (except beer); alcoholic beverages of fruit and both categories of goods could be made of or contain grapes, this element is at least allusive of the nature of the goods and therefore is weak.

As a result, the element ‘GORI’ is the most distinctive element of the contested sign.

Neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

However, 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). Therefore, in the present case, the element ‘GORI’ of the contested mark has a stronger impact than the bunch of grapes.

Visually, the signs coincide in the sequence of letters ‘GO*R*’. However, they differ in the additional letter ‘R’ of the earlier mark, which has no counterpart in the contested sign, and in their final letters, ‘Y’ in the earlier mark and ‘I’ in the contested sign.

They further differ in the word ‘VIÑA’ of the earlier mark and in the figurative device, the graphical depiction and the colours of the contested sign, which have no counterparts in the earlier mark.

Bearing in mind what is stated above about the most distinctive elements of the signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GO-*RI(Y)’ Although there are two letters ‘R’ in the earlier mark while there is only one in the contested sign, this difference is slight and could go unnoticed by a substantial part of the relevant public. On the other hand, contrary to the applicant’s contentions, the abovementioned difference in the final letters of the signs, ‘Y’ versus ‘I’, has no aural significance in accordance with Spanish pronunciation rules.

The pronunciation differs in the sound of the word ‘VIÑA’ of the earlier mark. However, as already explained, this differing element is weak in the context of the goods in question.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘VIÑA’ of the earlier mark, and the bunch of grapes of the contested sign will be perceived as such, these elements are weak. As a result, they do not have any particular influence from a conceptual point of view and, therefore, the conceptual aspect does not influence the assessment of the similarity between 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 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 weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are identical and similar and the distinctiveness of the earlier mark is normal.

Moreover, the signs are visually similar to an average degree and aurally highly similar.

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the high degree of 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).

Accordingly, it is appropriate in the present case to attach particular importance to the high degree of aural similarity between the signs at issue. Overall, the similarities between the signs lying in the coinciding sequence of letters ‘GOR*Y(I)’ – which constitutes the most distinctive element of each sign – is enough to offset the differences between the signs. The average consumer, when confronted with both marks, might believe that the goods have the same origin or that they come from linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 617 025. It follows that the contested trade mark must be rejected for all the contested goods.

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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Julie GOUTARD

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.