OPPOSITION No B 2 697 376

Numero Ocho Limited, 71-75 Shelton Street, London  WC2H 9JQ, United Kingdom (opponent), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, London  EC4Y 0DA, United Kingdom (professional representative)

a g a i n s t

Yowipe S.A. de C.V., Hidalgo 1002, Colonia centro, Oaxaca de Juárez Oaxaca 68000

México (applicant), represented by Salvador Ferrandis IP Legal SLP, C/ Joaquin Costa nº24, 28002 Madrid, Spain (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 697 376 is upheld for all the contested goods.

2.        European Union trade mark application No 14 770 226 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 14 770 226. The opposition is based on, inter alia, European Union trade mark registration No 11 813 425. 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 11 813 425.

1. The goods

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

Class 33: Spirits protected by the appellation of origin Tequila.

The contested goods are the following:

Class 33: Mezcal, complying with the specifications of the Agreement between Mexico and the EC on the trading of spirits (beverages).

Contested goods in Class 33

The contested mezcal, complying with the specifications of the Agreement between Mexico and the EC on the trading of spirits (beverages) overlaps with the opponent’s spirits protected by the appellation of origin Tequila. This is due to the fact that tequila is a sort of mescal which is essentially a strong intoxicating spirit distilled from the fermented sap of an agave plant (see, http://www.oed.com/view/Entry/116921?redirectedFrom=mescal#eid). 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 to be average.

3. The signs

TEQUILA OCHO
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 common element ‘OCHO’ is meaningful in certain territories, for example, in those countries where Spanish is understood and it means eight (see, http://www.reverso.net/translationresults.aspx?lang=EN&direction=spanish-english). In the remaining territory it has no meaning.

As regards the earlier sign, it contains two words ‘TEQUILA’ and ‘OCHO’. The term ‘TEQUILA’ designates distilled liquor that is made from the fermented juice of the Mexican blue agave plant and, hence, the term is descriptive for the registered goods in, inter alia, Germany and the United Kingdom. Since the term ‘OCHO’ has no meaning from the perspective the non-Spanish-speaking part of the public such as the German and English speakers, it is distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German and English speaking part of the public.

The contested sign is composed of one large and complex figurative element above which the three words ‘MEZCAL OCHO COYOTE’ are written in white, bold standard upper case on a black background. The term ‘MEZCAL’ designates distilled liquor that is made from the fermented juice of Mexican agave plants and, hence, the term is descriptive for the registered goods. The term ‘OCHO’ is distinctive as explained above. The term ‘COYOTE’ will be understood by the relevant public as a canidae mammal found in Mexico and other parts of Northern and Central America (see, http://www.duden.de/rechtschreibung/Kojote; see also, http://academic.eb.com/levels/collegiate/article/coyote/26701). However, the term ‘COYOTE’ has no meaning with respect to the goods of the contested sign. It is also not allusive or otherwise weak for the relevant goods. The black and white coloured figurative element consists in its upper part of a framed plate, and in its lower larger part a fanciful Mexican style depiction of a coyote face, thus reinforcing the understanding of the term ‘COYOTE’. Accordingly, neither the figurative elements nor the word elements of the contested sign may be regarded as being either dominant (visually eye-catching) or negligible.

Therefore, the terms ‘OCHO COYOTE’ and the figurative element are the elements that can be considered clearly more distinctive than the descriptive verbal element ‘MEZCAL’.

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). Indeed, in this case it is even more pertinent given that the figurative element reinforces the meaning of a verbal component, as discussed above,

Visually, the signs coincide in the word ‘OCHO’, the most distinctive element in the earlier sign and the first, distinctive verbal component in the contested sign. The signs differ in ‘TEQUILA’ and ‘MEZCAL’ but given their non-distinctive nature, as discussed previously, their impact is reduced and they do not contribute to really discerning the signs. This therefore leaves ‘COYOTE’ of the contested sign and the figurative element which do not have any counterpart in the earlier trade mark.  

Therefore, the signs are visually similar to a low degree.

Aurally, from the perspective of the relevant public, the pronunciation of the signs coincides in the sound of the string of letters ‘O-C-H-O’, present identically in both signs.

Although the pronunciation differs in the non-distinctive sound of the string of letters ‘T-E-Q-U-I-L-A’ in the earlier trade mark and ‘M-E-Z-C-A-L’ in the contested sign,  these do not help to differentiate the signs aurally, since these terms are merely descriptive. Also given their descriptive nature they may not be referred to aurally.

However, the pronunciation differs in the sound of the string of letters ‘C-O-Y-O-T-E’ in the contested sign. The figurative element will not be pronounced.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The terms ‘TEQUILA’ in the earlier trade mark and ‘MEZCAL’ in the contested sign are not capable of establishing any conceptual similarity, as these elements are non-distinctive and cannot indicate the commercial origin of any of the marks.

Although the public in the relevant territory will perceive the meaning of the term ‘COYOTE’ further reinforced by the figurative element in 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, despite the presence of the non-distinctive element ‘TEQUILA’ in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

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 higher degree of similarity between signs may be offset by a lower degree of similarity between goods and services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The present assessment of likelihood of confusion focuses on the perception of the German and English speaking part of the public. The relevant public consists of the public at large. The degree of attention is average.

As concluded above, the contested goods are identical to the opponent’s goods.

The signs in conflict are visually similar to a low degree, aurally similar to an average degree, and conceptually not similar, as explained in detail above in section c) of this decision.

The applicant argues that there is no similarity whatsoever between the signs, despite the coincidence in ‘OCHO’ as it considers the ‘highly distinctive elements such as the word ‘Coyote’ and the depiction of a coyote head… give a completely different overall impression’ [sic]. However, these arguments cannot be fully upheld. Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element ‘OCHO’ plays an independent distinctive role in both signs. Further, even if ‘COYOTE’ and the device are equally distinctive, these differences do not suffice to truly differentiate the signs. In this sense, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Furthermore, 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).

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.

Considering all the above, there is a likelihood of confusion on the part of the German and 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 11 813 425. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 11 813 425 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Martin EBERL

Frank MANTEY

Vanessa PAGE

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.