OPPOSITION DIVISION
OPPOSITION No B 2 772 138
Az. Agr. Monte Zovo di Cottini Diego e Figli S.S. – Societa' Agricola, Localita'
Zovo, 23, 37013 Caprino Veronese (VR), Italy (opponent), represented by Mondial
Marchi S.r.l., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional
representative).
a g a i n s t
Andreas Mazzei, Via 25 Aprile 3/E, 23891 Barzanó (LC), Italy (applicant),
represented by Müller Schupfner & Partner Patent- Und
Rechtsanwaltspartnerschaft Mbb, Bavariaring 11, 80336 München, Germany
(professional representative).
On 12/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 772 138 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 558 463, for the word mark ‘Mazzei’. The opposition is based on,
inter alia, European Union trade mark registration No 5 103 528, for the word mark
‘PALAZZO MAFFEI’. The opponent invoked Article 8(1)(b) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
PROOF OF USE
Proof of use of the earlier mark was requested by the applicant. However, at this
point, the Opposition Division does not consider it appropriate to undertake an
assessment of the evidence of use submitted. The examination of the opposition will
proceed as if genuine use of the earlier marks had been proven for all the goods
invoked, which is the best light in which the opponent’s case can be considered.
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
Decision on Opposition No B 2 772 138 page: 2 of 6
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 5 103 528, for the word mark
PALAZZO MAFFEI.
a) The goods
The goods on which the opposition is based are, inter alia, the following:
Class 33: Alcoholic beverages (with the exception of beers); Alcoholic essences;
Alcoholic extracts; Alcoholic fruit extracts.
The contested goods are the following:
Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic
beverages; Cider; Wine; Wine-based drinks; Beverages containing
wine [spritzers]; Low-alcoholic wine.
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
Alcoholic beverages (except beers) are identically contained in both lists of goods
(including synonyms).
The contested Wine; Wine-based drinks; Beverages containing wine [spritzers]; Low-
alcoholic wine; Cider are included, or overlap with, in the broad category of the
opponent’s Alcoholic beverages (except beer). Therefore, they are identical.
The contested Preparations for making alcoholic beverages refer to preparations
containing alcohol and aromatic essences or extracts obtained from a plant, spice,
herb or fruit, used as flavouring ingredients by the manufacturers of beverages.
Therefore, these goods include, as a broader category the opponent’s Alcoholic
essences; Alcoholic extracts; Alcoholic fruit extracts. Since the Opposition Division
cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
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
Decision on Opposition No B 2 772 138 page: 3 of 6
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 to a low degree are
directed at the public at large (alcoholic beverages) and business customers with
specific professional knowledge or expertise (preparations for making alcoholic
beverages).
The degree of attention is considered to be average.
c) The signs
PALAZZO MAFFEI Mazzei
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 earlier mark is a word mark with the verbal elements ‘PALAZZO’ and ‘MAFFEI’
written in upper case standard letters. Part of the public will understand the first
verbal element as the English word palace either because it is the word in their own
language (Italian) or because it is similar to the equivalent word in their own language
(e.g. German (palest) and Swedish (palats)). Unlike the view of the opponent, who
thinks that this word is weak considering it is often used in the wine sector, the
Opposition Division finds that the word has no meaning in relation to the relevant
goods and is therefore distinctive. For the rest of the public the word has no meaning
(e.g. Lithuania (rūmai)) and thus distinctive. Considering that the second verbal
element is a surname in Italy and that there is a famous singer and an industrial
company with this name in Germany, it will be perceived as a surname for this part of
the public and for the rest it has no meaning. Even if the word has a meaning it is
distinctive.
The contested sign is a word mark, ‘Mazzei’. The sign will be perceived as a surname
for part of the public (Italian-speaking public) however for the rest of the public it has
no meaning. Even if the word has a meaning it is distinctive.
Visually, the signs coincide in ‘Ma**ei’ of the second verbal element of the earlier
mark and the sole element of the contested sign. However, they differ in the first
verbal element of the earlier mark ‘PALAZZO’. Furthermore, they differ in the third
and fourth letters of the second verbal element of the contested sign, ‘**FF**’, and
the sole element of the contested sign, ‘**zz**’. As a result, the overall impression of
the marks is not very similar. The earlier mark has a different composition in that it
consists of two words rather than one in the contested sign. Furthermore, the
contested sign is not fully incorporated in the earlier mark but rather incorporated with
a strong difference in their middle letters.
Decision on Opposition No B 2 772 138 page: 4 of 6
Also, consumers generally tend to focus on the beginning of a sign when they
encounter a trade mark. This is 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. In the current case the earlier mark has a verbal element
in the beginning of the mark that is completely different from the contested sign.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
‛Ma**ei’, present identically in both signs. The pronunciation differs in the sound of
the letters ‘PALAZZO’ and ‘**FF**’ of the earlier mark and ‘**zz**’ of the contested
sign. These additional three syllables in the beginning of the earlier sign (PA-LA-ZZO)
and the difference in the sound between the middle letters of the second verbal
element of the earlier mark and the contested sign will not go unnoticed by the
relevant public.
Therefore, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For part of the public (Italian-speaking), as specified
above, the signs will be associated with a dissimilar meaning and for this part of the
public the signs are conceptually not similar. For another part of the public (e.g.
German and Swedish-speaking) only the earlier mark will have a meaning. Since one
of the signs will not be associated with any meaning, the signs are not conceptually
similar for this part of the public. For the rest who does not perceive any meaning in
the signs, 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. 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.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous factors 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 of
art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors
Decision on Opposition No B 2 772 138 page: 5 of 6
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).
As has been concluded above, the contested goods are partly identical and partly
similar to a low degree. The goods are directed at the public at large and
professionals with an average degree of attention. Furthermore, the earlier mark is
considered to enjoy an average degree of distinctiveness. Additionally, the marks in
dispute have been found visually and aurally similar to a low degree. Conceptually
the marks are dissimilar for part of the public and for another part of the public, they
are not similar. For the rest of the public, the conceptual aspect has no influence in
the comparison.
Considering the low similarities between the signs, they only coincide in four letters of
the second verbal element of the earlier mark, the importance of the beginning of a
sign, the overall impression of the marks is so different that the relevant public will be
able to differentiate between them.
In its observations, the opponent argues that the first verbal element of the earlier
trade mark has a low distinctive character given that many trade marks include the
word ‘PALAZZO’. In support of its argument the opponent refers to several trade
mark registrations.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include ‘PALAZZO’. Under these
circumstances, the opponent’s claims must be set aside.
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
The opponent has also based its opposition on the following earlier trade marks:
European Union trade mark registration No 14 014 179 for the figurative mark
and the Italian trade mark registration No 1 109 818 for the word
mark PALAZZO MAFFEI.
Since these marks are identical or less similar (one of the earlier mark contains
additional figurative elements) to the one that has been compared and cover the
same or a narrower scope of goods, the outcome cannot be different with respect to
goods for which the opposition has already been rejected. Therefore, no likelihood of
confusion exists with respect to those 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.
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Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Adriana VAN ROODEN Benjamin Erik WINSNER Begoña URIARTE
VALIENTE
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.