OPPOSITION No B 2 718 644

Freixenet, S.A., Joan Sala, 2, 08770 Sant Sadurni d’Anoia (Barcelona), Spain (opponent), represented by Baker & McKenzie Barcelona, Av. Diagonal, 652 Edif. D, 8ª Planta, 08034 Barcelona, Spain (professional representative)

a g a i n s t

Cantina di Bertiolo S.P.A., Via Madonna, 27, 33032 Bertiolo (Udine), Italy (applicant), represented by Jacobacci & Partners s.p.a., Via Berchet, 9, 35131 Padova, Italy (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 718 644 is upheld for all the contested goods.

2.        European Union trade mark application No 15 210 438 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 15 210 438  in Class 33. The opposition is based on European Union trade mark registration No 10 837 755 for the word mark ‘LEGERO FREIXENET’. 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 32: Beverages based on de-alcoholised wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); wine; sparkling wines.

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 wine; sparkling wines are similar to beverages based on de-alcoholised wine. Although their production processes are different, all these goods are wine based and they could be produced by the same company. They can be served in restaurants and bars and are on sale in the same places, namely supermarkets and grocery stores, where they can be found in the same section, although they can also be distinguished to some extent by subcategory.

The opponent’s beverages based on de-alcoholised wine in Class 32 and the contested alcoholic beverages (except beers) in Class 33 are often sold side by side both in shops and bars and on drinks menus. These goods target the same public and may be in competition. Therefore, they are similar to a low degree.

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 similar to various degrees are directed at the public at large.

The degree of attention is average.

3. The signs

LEGERO FREIXENET
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 elements ‘LEGERO’ and ‘Leggero’ are meaningless and do not allude to any specific meaning in certain territories, for example in those countries where Italian, French and Spanish are not understood, for example in English-speaking territories. Consequently, 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 a word mark composed of the two elements ‘LEGERO FREIXENET’. The distinctiveness of these elements is normal, as they have no meaning in relation to the relevant goods. Furthermore, the earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark containing verbal and figurative elements. At the top of the sign is a figurative element depicting an angel holding a glass of wine in its hand. In the middle of the sign is the slightly inclined verbal element ‘Leggero!’. At the bottom of the sign is the element ‘9°’ in a black circle.

Where a mark is composed of both figurative and verbal elements, 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; decisions of 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The distinctiveness of the element ‘Leggero!’ is normal, as it has no meaning in relation to the relevant goods. The element ‘9°’ is weak in relation to the goods, because the relevant consumer will perceive this element as providing information, for example about the alcoholic content of the product.

Given its position and its size, the verbal element ‘Leggero’ is the most eye-catching element of the sign.

Visually, the signs coincide in the similar elements ‘LEG(G)ERO’. They differ in the typeface of the word ‘Leggero!’ in the contested sign. They also differ in their additional elements, namely ‘FREIXENET’ in the earlier mark, and in less significant elements in the contested sign, namely the figurative angel and the weak element ‘9°’.

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. In the present case, the fact that ‘Leggero’ is the more significant verbal element of the contested sign and is highly similar to the first verbal element of the earlier mark increases the degree of similarity arising from these elements.

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

Aurally, the pronunciation of the elements ‘LEGGERO’ and ‘LEGERO’ is identical for at least part of the public under consideration, while for the rest of the public under consideration the pronunciation of these elements will be highly similar. Moreover, the presence of the exclamation point does not change this finding (14/12/2016, T-745/15, YO !, EU:T:2016:732, § 40).

They differ in the sound of the additional element ‘FREIXENET’ in the earlier trade mark and in the element ‘9°’ in the contested sign. Given the weight attributed to the various elements, the signs are similar to an average degree for the part of the public under consideration.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive the meanings of the angel and the element ‘9°’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, 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 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

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 conflicting signs are visually and aurally similar to an average degree, and they are not conceptually similar. The contested goods are similar to various degrees to the opponent’s goods.

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).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

In the present case, there is a significant degree of aural similarity between the signs at issue, given that the pronunciation of the most significant element of the contested sign will be identical, for the part of the public under consideration, to the first element of the earlier mark.

Moreover, 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).

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 10 837 755. 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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothee SCHLIEPHAKE

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.