OPPOSITION No B 2 718 065 and No B 2 718 073

Casa Gran Del Siurana, S.L., C/Mayor, 3, 43738 Bellmunt del Priorat (Tarragona), Spain, and Perelada Comercial, S. A., Motors 140, 08038 Barcelona, Spain (opponents), represented by Durán – Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Newcelas Ltd, 3, Kon Skokou, 1061 Nicosia, Cyprus (applicant), represented by Katerina G. Siotou, 122 Patission Street, 112 57 Athens, Greece (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Oppositions No B 2 718 065 and No B 2 718 073 are rejected in their entirety.

2.        The opponents bear the costs, fixed at EUR 300.

REASONS:

The opponents filed an opposition against some of the goods of European Union trade mark application No 15 074 818, namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 8 555 286 and Spanish trade mark registration No 2 942 199, both for the word mark ‘GR-174’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PRELIMINARY REMARK:

On 08/06/2016, the applicant was informed that the Office had received two notices of opposition against trade mark application No 15 074 818  and that it had assigned them the opposition numbers B2718065 and B 2 718 073.

The opponents requested that oppositions No B 2 718 065 and No B 2 718 073 against trade mark No 015 074 818 be joined.

On 10/11/2016, the parties were informed that the Office had decided to deal with these oppositions in one set of proceedings and to join the oppositions, in accordance with Rule 21(1) EUTMIR. Both oppositions are directed against the same goods, namely against all goods in Class 33, and were filed by opponents with a direct commercial connection. They are, moreover, represented by the same professional representative.

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 one opponent’s Spanish trade mark No 2 942 199.

1. The goods

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

Class 33: Alcoholic beverages (except beer).

The contested goods are the following:

Class 33: Alcoholic beverages; wines; spirits; ouzo.

        

Contested goods in Class 33

The contested alcoholic beverages include, as a broader category, the opponent’s alcoholic beverages (except beer). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested wines; spirits; ouzo are included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they 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 are directed at the public at large. The degree of attention is considered average.

3. The signs

GR-174
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 the letters ‘GR’, written in upper case, followed by the number ‘174’; these elements are separated by a hyphen.

The contested sign is a figurative mark depicting the letters ‘GR’ and the number ‘301’ in olive green and gold. On the left-hand side of the letters a small indeterminable figurative element and a small leaf are depicted.

The letters ‘GR’ that the signs have in common will be understood as the two-letter country code abbreviation for Greece. Bearing in mind that the relevant goods are ‘alcoholic beverages’ such as ouzo, this element is weak for these goods, as the relevant public will perceive this element as descriptive of the goods, namely that the alcoholic beverages in question come from Greece.

The number ‘174’ in the earlier sign has no meaning in relation to the goods and is, therefore, distinctive.

The contested sign is composed of a distinctive verbal element, the number ‘301’ and a less distinctive figurative element of a purely decorative nature. Therefore, the number is the most distinctive element of the contested sign.

Both marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘GR’, which are the weak parts of the signs, given that they will be perceived as designating the origin of the relevant goods. However, they differ in their numbers, namely ‘174’ in the earlier mark and ‘301’ in the contested sign, as well as in the figurative elements in the contested sign.

Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the weak letters ‘GR’, present identically in both signs. The pronunciation differs in the pronunciation of the respective numbers in the signs, namely ‘174’ (ciento setenta y cuatro) in the earlier sign and ‘301’ (tres cientos y uno) in the contested mark.

Therefore, the signs are similar to a low degree.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding element, ‘GR’, will be perceived as the two-letter code for Greece and, thus, will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is weak and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional fanciful verbal elements, the numbers in the signs, which have no meaning.

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 trade mark has a reputation as a result of its long-standing and intensive use in Spain in connection with wines. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• A screenshot of the opponent’s website as regards its company history.
• The opponent indicates that its wine has been mentioned in several blogs and on web pages on the internet in the last years, for example on Gastropia (http://gastropi.blogspot.com.es) without, however, explaining what Gastropia is. The opponent also includes an undated printout from the internet showing a bottle with the label ‘GR-174’.
• An undated printout of unknown origin of a bottle of wine with the label ‘GR-174’. It indicates the score attributed to the said wine for 2014, which is between 90 and 91 points.
• A copy of a printout from the website ‘Vinos Molones’ (http://vinosmolones.com/cata-de-vinos-gr-174-priorat/) showing a bottle of wine with the label ‘GR-174’. Two more pages, in Spanish, from the same website are included.
• Excerpts from the Central Mercantile Register concerning the opponent, Casa Gran del Siurana S.L. No reference is made to the earlier sign.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through use.

Both enhanced distinctiveness and reputation require recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Furthermore, it must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).

In the present case, the material submitted by the opponent consists only of documentation from the opponents (website excerpts) and no information from third parties is given. The material consists only of some depictions of bottles of wine with the label ‘GR-174’, as well as one reference to what critics from four different guides or magazines say with respect to this wine in terms of scores. However, it is not even explained what the different scores mean. There is no reference to turnover or sales figures. It is not apparent from the evidence that the earlier sign is known by a significant part of the public. The opponent did not submit any evidence of recognition of the sign by consumers or of business relationships. Likewise, the opponent has not shown that it had developed any advertising activity. Therefore, the Opposition Division concludes that the opponent failed to prove that its trade mark has 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods under comparison are identical and the inherent distinctiveness of the earlier mark is normal. The degree of attention of the relevant Spanish public is expected to be average.

The signs are visually and aurally similar to a low degree given that the signs coincide in the first element, ‘GR’, of the signs. However, as explained in section c) of this decision, this element is weak for the relevant goods. Consequently, in this case, contrary to the opponent’s arguments, these coinciding letters, even though they appear at the beginning of the signs, have only a limited impact when assessing the likelihood of confusion between the marks.

According to established case-law, less attention will be paid to the elements that are weak or devoid of distinctive character and the existing differences between the signs have to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALLDAY AQUA/Krüger All Days; 14/05/2001, R 0257/2000-4, e plus/PLUS).

Therefore, the different elements in the signs, namely the number ‘174’ in the earlier sign and ‘301’ in the contested mark, are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks under comparison, even for identical goods. The different impressions created by the signs under comparison are strengthened by the grey colour and the figurative depiction of the contested sign. This, together with the visual and aural differences referred to above, will contribute to clearly differentiating the marks.

In addition, contrary to the opponent’s argument, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered reasonably well informed and reasonably observant and circumspect, might believe that the identical goods come from the same undertaking or, as the case may be, from economically-linked undertakings.

The opponent also argues that the dominant and distinctive element in the marks is the element ‘GR’ that the signs have in common, because numbers are commonly used in the public domain.

As already set out in section c) of this decision, the two letters, ‘GR’, that the signs have in common will be understood as the country code for Greece and, therefore, this element is weak in relation to the relevant alcoholic beverages. The relevant public will therefore focus its attention on the additional and different numbers in the signs, namely ‘174’ and ‘301’, which have no meaning in relation to the goods.

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

• European Union trade mark registration No 8 555 286 for the figurative trade mark registration .

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains additional figurative elements, such as the depiction of a map with a red path through a certain region, which are not present in the contested trade mark. Moreover, they cover the same scope of goods. Therefore, the outcome cannot be different with respect to the contested mark; no likelihood of confusion exists with respect to the contested mark.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponents are the losing party, they must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Sigrid DICKMANNS

Claudia MARTINI

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.