OPPOSITION DIVISION
OPPOSITION No B 2 708 546
Weinkellerei Lenz Moser Aktiengesellschaft, Bäckermühlweg 44, 4030 Linz,
Austria (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft
MbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany
(professional representative)
a g a i n s t
Yantai Changyu Group Co., Ltd, No.56, Dama Road, Zhifu District, Yantai City,
Shandong, People’s Republic of China (applicant), represented by Metida Law Firm
Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius,
Lithuania (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 708 546 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK — APPLICABLE REGULATIONS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 997 795 . The opposition is based on international
trade mark registration No 850 636 designating the Czech Republic, United Kingdom,
Slovakia, Poland, Hungary, Benelux and Germany, ‘LENZ MOSER PRESTIGE’ and
international trade mark registration No 573 004 designating the Czech Republic,
Spain, Lithuania, United Kingdom, Estonia, Benelux, Sweden, Bulgaria, Slovakia,
Denmark, Poland, Hungary, Germany and Finland, ‘LENZ MOSER SELECTION’.
The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the
opponent must furnish proof that, during the five-year period preceding the date of
Decision on Opposition No B 2 708 546 page: 2 of 12
filing or, where applicable, the date of priority of the contested trade mark, the earlier
trade mark has been put to genuine use in the territories in which it is protected in
connection with the goods or services for which it is registered and which the
opponent cites as justification for its opposition, or that there are proper reasons for
non-use. The earlier mark is subject to the use obligation if, at that date, it has been
registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of the international
trade marks No 850 636 ‘LENZ MOSER PRESTIGE’ and No 573 004 ‘LENZ MOSER
SELECTION’ on which the opposition is based.
The date of filing of the contested application is 13/01/2016. The opponent was
therefore required to prove that the trade marks on which the opposition is based
were put to genuine use in the Czech Republic, United Kingdom, Slovakia, Poland,
Hungary, Benelux and Germany for international trade mark registration No 850 636,
‘LENZ MOSER PRESTIGE’, and in the Czech Republic, Spain, Lithuania, United
Kingdom, Estonia, Benelux, Sweden, Bulgaria, Slovakia, Denmark, Poland, Hungary,
Germany and Finland for international trade mark registration No 573 004, ‘LENZ
MOSER SELECTION’ from 13/01/2011 to 12/01/2016 inclusive.
Earlier trade mark No 850 636 ‘LENZ MOSER PRESTIGE’ is an international
registration designating the Czech Republic, the United Kingdom, Slovakia, Poland,
Hungary, Benelux and Germany. Each Member State has either a 12- or 18-month
deadline to issue a provisional refusal under the Madrid Protocol.
Where a provisional refusal is issued within this deadline, the date that will be
decisive in determining whether the mark is subject to the proof of use obligation is
the date when the proceedings leading to the provisional refusal are concluded,
namely when the Statement of Grant of Protection is issued. Additionally, where a
provisional refusal has not been issued, but a Statement of Grant of Protection is
issued prior to the expiry of the 12- or 18-month deadline, this will be the decisive
date.
For the United Kingdom, Poland, Hungary and Slovakia designations, the Statement
of Grant of Protection was published by WIPO on 17/02/2011, 17/03/2011,
01/09/2011 and 08/09/2011, respectively. For the designation of Germany, the 12-
month deadline applies which — added to WIPO’s date of notification, namely
19/08/2010 — establishes that the decisive date is 19/08/2011.
It can be inferred from these dates that the earlier mark had not been protected for at
least five years on the relevant date. Therefore, the request for proof of use is
inadmissible for all the Member States on which the opponent relied for the present
opposition, namely: the United Kingdom, Poland, Hungary, Slovakia and Germany.
As a result of the above, the request for proof of use is inadmissible for earlier trade
mark No 850 636 ‘LENZ MOSER PRESTIGE’.
However, the request was submitted in due time and is admissible as far as
international registration No 573 004 ‘LENZ MOSER SELECTION’ is concerned
given that this earlier trade mark was registered more than five years prior to the
relevant date mentioned above.
Decision on Opposition No B 2 708 546 page: 3 of 12
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 33: Wines and sparkling wines.
According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the evidence of use must consist of indications concerning the place,
time, extent and nature of use of the opposing trade mark for the goods or services in
respect of which it is registered and on which the opposition is based.
On 23/12/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2)
EUTMIR, in force before 01/10/2017), the Office gave the opponent until 28/02/2017
to submit evidence of use of the earlier trade marks. On 27/02/2017, within the time
limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the
evidence confidential vis-à-vis third parties, the Opposition Division will describe the
evidence only in the most general terms without divulging any such data.
The evidence is the following:
Enclosure A: Affidavit
Affidavit from the opponent’s CEO dated 16/02/2017 listing the distributors of its
products ‘Lenz Moser Prestige’ and ‘Lenz Moser Selection’ as well as its turnover
figures for the years 2011 to 2016 by country, namely, Austria, Germany, the
Netherlands, Denmark, the United Kingdom, Bulgaria, Poland, Sweden, Slovakia,
Spain, the Czech Republic and Hungary. The affidavit also mentions the number
of bottles sold under the labels ‘Lenz Moser Prestige’ and ‘Lenz Moser Selection’
in each of these countries. It was filed along with the following enclosures:
– Enclosure A1: Samples of products
Pictures of bottles of wine on which a label – containing the sign ‘Lenz Moser
Selection’, along with other verbal and graphical elements, namely the
representation of a landscape – is affixed.
– Enclosure A2: Opponent’s website extracts
Extracts dated 23/02/2017 of the opponent’s websites www.lenzmoser.at and
www.shop.lenzmoser.at in German and English showing pictures of bottles of
wines and listing inter alia, several lines of wines ‘Lenz Moser Selection’.
– Enclosure A3: Delivery notes
Ten delivery notes issued by the opponent between January 2014 and
February 2016 addressed to recipients in the Netherlands (1), Bulgaria (3),
the United Kingdom (1), Denmark (1), Spain (1), Hungary (1) and Latvia (2)
regarding sales of products identified with reference numbers and indications
such as the following: ‘LMS GR. VETLINER’, ‘Lenz Moser Selection Grüner
Veltliner’ etc. showing sales of a few hundred of bottles each.
– Enclosure A4: German catalogue
The opponent’s 2016 catalogue in German, parts of which are also in English
presenting, inter alia, the opponent’s ‘Lenz Moser Selection’ line of products
along with their reference numbers and barcodes. It is also apparent from the
catalogue that the opponent has two shops in Austria and one in Germany.
– Enclosure A5: Polish catalogue
Decision on Opposition No B 2 708 546 page: 4 of 12
Catalogue of the opponent’s subsidiary in Poland mentioning the product ‘Lenz
Moser Prestige Beerenauslese 2008’ along with its characteristics and the picture
of a bottle of wine on which a label including the words are affixed. The awards
won by this wine are also mentioned, among which, the International wine
Challenge 2010 for the 2007 harvest.
Enclosure B: Way back machine extracts
Extracts of the opponent’s website, www.shop.lenzmoser.at as it was on
15/08/2007 and 07/10/2011 mentioning, inter alia, the wine ‘Lenz Moser
Selection’. It shows the sale price per bottle of €5,67.
Enclosure C: German retailers websites’ extracts
Undated extracts from www.rewe.de and www.schneekloth.de both showing a
bottle of wine labelled ‘Lenz Moser Selection’, one of which mentions the harvest
of the wine in question as being 2014.
Enclosure D: Austrian retailer websites’ extracts
Extracts from www.hofer.at dated 17/02/2017 showing a bottle of wine ‘LENZ
MOSER Prestige Cuvée Carpe Diem’ along with three awards labels among which
the label ‘AWC Vienna Gold 2016’ is visible.
At the outset, the Opposition Division notes that, when assessing genuine use, the
Opposition Division must consider the evidence in its entirety. Even if some relevant
factors are lacking in some items of evidence, the combination of all the relevant
factors in all the items of evidence may still indicate genuine use.
In particular, as far as the affidavit is concerned, Article 10(4) EUTMDR (former
Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written
statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of
use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn
or affirmed written statements or other statements that have a similar effect according
to the law of the State in which they have been drawn up. As far as the probative
value of this kind of evidence is concerned, statements drawn up by the interested
parties themselves or their employees are generally given less weight than
independent evidence. This is because the perception of the party involved in the
dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value
at all. The final outcome depends on the overall assessment of the evidence in the
particular case. This is because, in general, further evidence is necessary to
establish use, since such statements have to be considered as having less probative
value than physical evidence (labels, packaging, etc.) or evidence originating from
independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to
see whether or not the contents of the declaration are supported by the other items of
evidence.
Assessment of the evidence
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in
accordance with its essential function, which is to guarantee the identity of the origin
of the goods or services for which it is registered, in order to create or preserve an
outlet for those goods or services. Genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark. Furthermore, the
Decision on Opposition No B 2 708 546 page: 5 of 12
condition of genuine use of the mark requires that the mark, as protected in the
relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,
EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
As regards the place of use, the Opposition Division notes at the outset that for the
present opposition, the opponent relied, inter alia, on the territories of Lithuania,
Estonia and Finland for which no item of evidence at all was submitted. Therefore,
the conclusion is taken that the opponent has not proved that it uses the earlier mark
in these countries.
The evidence filed shows that the earlier mark has been used in some of the
territories on which the opponent relied, namely, the Czech Republic, Slovakia,
Hungary, Spain, Benelux (the Netherlands only), Sweden, Bulgaria, Denmark,
Poland, Germany and the United Kingdom.
In particular, the affidavit (enclosure A) mentions sales figures in all these countries.
In addition, delivery notes have been provided as enclosure A1 which mention sales
of products designated under the sign ‘Lenz Moser Selection’ in the Netherlands,
Bulgaria and the United Kingdom.
Finally, the catalogues (enclosures A4 and A5) and website extracts (enclosure C)
show use of the earlier mark in Germany, the United Kingdom and Poland. This can
be inferred from the language of the documents (German, English and Polish), the
German extension (.de) of the websites on which the opponent’s products are offered
for sale and the addresses of the opponent’s shops as mentioned in its 2016
catalogue, one of which is in Germany.
Therefore, the evidence relates to some of the relevant territories, namely, the Czech
Republic, Slovakia, Hungary, Spain, Benelux, Sweden, Bulgaria, Denmark, Poland,
Germany and the United Kingdom.
As regards the time of use, it is noted that some items of evidence are dated within
the relevant period while some are not and the remaining are undated.
In particular, the extracts of the opponent’s website from the internet archive
‘Wayback machine’ (enclosure B), the opponent’s 2016 catalogue and seven out of
the ten delivery notes provided are dated within the relevant period, that is, the notes
addressed to recipients in Bulgaria, the United Kingdom, Sweden, Hungary and
Latvia.
As the opponent did not rely on these countries for the present opposition, neither
Latvia nor Austria is a relevant territory in the case at hand. Therefore, the two
delivery notes and the extracts of the opponent’s Austrian website are irrelevant for
the proceedings in question.
Similarly it is noted that since the delivery notes addressed to recipients in Sweden,
Hungary, Spain and Denmark do not refer to sales of products ‘Lenz Moser Selection’
but ‘Lenz Moser Prestige’, they can obviously not be taken into account either in
order to assess the genuine use of the earlier mark ‘Lenz Moser Selection’.
The rest of the documents submitted are, either, dated outside the relevant period, or,
undated. They might nevertheless be relevant to the present proceedings in so far
they refer to sales that occurred during the relevant period and on the relevant
territories. This holds true for the affidavit of the opponent’s CEO submitted as
Decision on Opposition No B 2 708 546 page: 6 of 12
enclosure A, as well as the extracts of German retailers’ websites submitted as
enclosure C. Further, the extracts of websites filed as enclosures A2 and D. However,
bearing in mind that Austria is not a relevant territory for the assessment of the
genuine use of the earlier mark, the conclusion has to be taken that such evidence is
irrelevant.
Therefore, only enclosures A, A1, B and C provide relevant information regarding the
time of use.
As regards the extent of use, it has to be borne in mind that all the relevant facts
and circumstances must be taken into account, including the nature of the relevant
goods or services and the characteristics of the market concerned, the territorial
extent of use, and its commercial volume, duration and frequency.
Indeed, the assessment of genuine use entails a degree of interdependence between
the factors taken into account. Thus, the fact that commercial volume achieved under
the mark was not high may be offset by the fact that use of the mark was extensive
or very regular, and vice versa. Likewise, the territorial scope of the use is only one of
several factors to be taken into account, so that a limited territorial scope of use can
be counteracted by a more significant volume or duration of use.
Moreover, use of the mark need not be quantitatively significant for it to be deemed
genuine.
However, genuine use of a trade mark cannot be proved by means of probabilities or
suppositions, but must be demonstrated by solid and objective evidence of effective
and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01,
Hiwatt, EU:T:2002:316, § 47 and 06/10/2004, Vitakraft, T-356/02, EU:T:2004:292,
§ 28).
In the present case, taking due account of the nature of the goods in question,
namely, wines sold at prices ranging between 5 and 10 euros, and thus, daily
consumption goods, the quantities mentioned in the delivery notes are extremely low.
Specifically, the quantities mentioned expressed in number of bottles of wine sold
under the mark ‘Lenz Moser Selection’ do not exceed 2000 bottles for each territory,
namely, the United Kingdom, Bulgaria, and the Netherlands. Moreover, these delivery
notes show a very restricted territorial scope of use, that is, they are addressed to
only one customer in one city in some of the relevant territories.
Although it is true that use of the mark by a single client can be sufficient to
demonstrate that such use is genuine, this is the case only when it appears that the
operation has a genuine commercial justification for the proprietor of the marks (see
to that effect, 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 24;
11/05/2006, C-416/04 P, VITAFRUIT, EU:C:2006:310, § 76).
In the present case, the affidavit does mention that these recipients are the
opponent’s distributors. However, they are not completed by any other item of
evidence which would allow the conclusion that these goods were the subject of
subsequent sales and where. Therefore, the territorial extent of the use of the earlier
mark is extremely limited.
Finally, they show use for an extremely reduced period of time, that is, two days for
Bulgaria and one day only for the United Kingdom, Sweden and Hungary. It also
follows from the above that such use cannot be held as being frequent.
Decision on Opposition No B 2 708 546 page: 7 of 12
In light of the above and considering that the rest of the documents provided do not
contain indications regarding the extent of use, it has to be considered that the
important figures mentioned in the affidavit are not corroborated by the delivery
notes. These figures are not corroborated either by any other evidence, namely, the
samples of the opponent’s products (enclosure A1), the opponent’s website extracts
(enclosures A2 and B), as well as the German and Polish catalogues regarding the
opponent’s products (enclosures A4 and A5) or the German and Austrian retailers
websites’ extracts (enclosures C and D) as they do not provide information as
regards the extent of use in these territories.
Bearing in mind that, even when sworn, a statement which has been drawn up by
one of the opponent’s managers, cannot be attributed probative value unless it is
corroborated by other evidence (18/10/2016, T-824/14, Poweredge, EU:T:2016:614,
§ 28; 13/06/2012, T-312/11, CERATIX, EU:T:2012:296, § 30) and considering the
above, the conclusion is taken that the affidavit, in lack of further supporting
evidence, is not suitable for establishing the extent of use of the earlier mark.
It also follows from all the aforesaid that the low turnover figures shown by the
delivery notes are not compensated by other factors, namely, the duration, the
territorial scope and the frequency/regularity of said use.
As a result of all the above, the conclusion is taken that the documents filed do not
provide the Opposition Division with sufficient information concerning the commercial
volume, the territorial scope, the duration, and the frequency of use.
Therefore, the Opposition Division considers that the opponent has not provided
sufficient indications concerning the extent of use of the earlier mark.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in
accordance with its essential function, which is to guarantee the identity of the origin
of the goods or services for which it is registered, in order to create or preserve an
outlet for those goods or services. Genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark. Furthermore, the
condition of genuine use of the mark requires that the mark, as protected in the
relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,
EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Since the conditions for proof of use are cumulative (05/10/2010, T-92/09,
STRATEGI, EU:T:2010:424, § 43) and the extent of use of the earlier mark has not
been proven, the nature of use need not be analysed.
The Opposition Division concludes that the evidence furnished by the opponent is
insufficient to prove that the earlier trade mark was genuinely used in the relevant
territories during the relevant period of time.
Therefore, the opposition based on earlier international registration No 573 004 must
be rejected pursuant to Article 47(2) and (3) EUTMR.
However, as explained above, the opponent has also based its opposition on
international registration No 850 636, ‘LENZ MOSER PRESTIGE’ for which the
request of proof of use is inadmissible. Therefore, the assessment of the opposition
will continue in relation to the existence or not of a likelihood of confusion with this
earlier mark.
Decision on Opposition No B 2 708 546 page: 8 of 12
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.
a) The goods
The goods on which the opposition is based are the following:
Class 33: Wines and sparkling wines known as “Sekt”.
The contested goods are the following:
Class 33: Wine; Spirits [beverages]; Liqueurs; Fruit extracts, alcoholic; Aperitifs; Arak
[arrack]; Cider; Brandy; Cocktails; Rice alcohol.
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.
Wine is identically covered by both marks in spite of a slight difference in wording.
The contested spirits [beverages]; liqueurs; aperitifs; arak [arrack]; cider; brandy; rice
alcohol are similar to the opponent’s wines as they have the same nature. They can
coincide in end user, distribution channels and method of use. Furthermore they are
in competition.
The contested cocktails can be defined as alcoholic drinks consisting of a spirit mixed
with other ingredients such as fruit juice. Therefore, its nature is different from that of
the opponent’s wine. However, they coincide in end user, distribution channels and
method of use with the opponent’s goods. Furthermore they are in competition with
these. As a result, they are similar.
The contested fruit extracts, alcoholic are dissimilar to the opponent’s wine and
sparkling wines known as “Sekt”. Indeed, they have different natures and different
purposes. They do not share the same distribution channels and are not usually
provided by the same undertakings. Finally, they are neither in competition nor
complementary.
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 2 708 546 page: 9 of 12
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. The degree of attention is considered to be average (24/11/2016, T-
250/15, CLAN, EU:T:2016:678, § 25 to 31 and the case-law cited).
c) The signs
LENZ MOSER PRESTIGE
Earlier trade mark Contested sign
The relevant territories are the Czech Republic, the United Kingdom, Slovakia,
Poland, Hungary, Benelux and Germany.
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 trade mark is a word mark consisting of three word elements, namely,
‘LENZ’, ‘MOSER’ and ‘PRESTIGE’. As it is a word mark, the fact that these words are
represented in lower or upper case letters is irrelevant.
The contested sign is a figurative mark consisting of a single element ‘Moser’
represented in a black title case typeface which is banal and common place and,
hence, will not be given any trade mark significance.
The element ‘Prestige’ – existing as such or having close equivalents in all the
relevant territories (‘prestige’ in English, Dutch, French and German, ‘prestiž‘ in
Czech, ‘prestíž’ in Slovak, ‘prestiż’ in Polish and ‘presztízs’ in Hungarian) – will be
perceived as referring to something prestigious and, hence, as a laudatory statement
highlighting the quality of the goods in question. Therefore, it is not distinctive in the
perception of the relevant public.
It is common ground between the parties that the element ‘Moser’ will be perceived
as a surname.
As regards the element ‘Lenz’ of the earlier mark, the Opposition Division
acknowledges, as argued by the opponent and illustrated by the extracts from
German websites it submitted along with translations, that it could be perceived by
some German consumers as the diminutive of Laurentius or Lorenzo, that is, as a
male first name. However, it is also apparent from the evidence that such first name
is unusual and not frequently used.
It is also true that ‘Lenz’ also means ‘spring’ in old German language. However, as it
is nowadays mainly used in poetry, it is considered that only few German consumers
will perceive such meaning.
Decision on Opposition No B 2 708 546 page: 10 of 12
Besides, it has to be pointed out, that ‘Lenz’ also corresponds to a German surname
that is also worn by people who are famous, not only in Germany but also in the
relevant territories, for example, the German physicist Heinrich F. E. Lenz, the
German writers Siegfried Lenz, or Jakob Michael Reinhold Lenz, the American model
and actress Nicole Marie Lenz etc. Therefore, contrary to the opponent’s pretention,
it has to be assumed that ‘Lenz’ will be perceived as a German surname by the
substantial part of the public in the relevant territories.
As regards the distinctive character of ‘Lenz’ and ‘Moser’, it is noted that family
names have, in principle, a higher intrinsic value as indicators of the origin of goods
or services than first names. This is because common experience shows that the
same first names may belong to a great number of people who have nothing in
common, whereas the presence of the same surname could imply the existence of
some link between them (01/03/2005, T-185/03, Enzo Fusco, EU:T:2005:73, § 52).
However, it should be recalled, as the applicant claims, that the perception of signs
made up of personal names may vary from country to country within the European
Union (13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 67, 24/06/2010,
C-51/09 P, Barbara Becker, EU:C:2010:368, § 36).
Account has to be taken in particular, of the fact that the surname concerned is
unusual or, on the contrary, very common, which is likely to have an effect on that
distinctive character (16/05/2013, C-379/12 P, H.Eich, EU:C:2013:317, § 44).
In the present case, the opponent argues that, as Moser does not appear among the
‘list of the most common surnames in Germany’ it is not common. In that connection,
the Opposition Division notes that although the surname ‘Moser’ is worn by several
people which can be considered famous in the relevant territories such as, for
example, the English painter Mary Moser, the German composer and musicologist
Hans Joachim Moser, the German-American mathematician Jürgen Kurt Moser etc.
as shown by the list provided by the applicant, that does not mean that this surname
is common in the relevant territories.
The Opposition Division therefore concurs with the opponent’s assertion that ‘Moser’
is not a common surname and adds that the same holds true for the surname ‘Lenz’.
Although these two surnames are worn by people that may be considered famous in
the relevant territories, this fact alone does not make them very common in the
relevant territories.
Therefore, ‘Lenz’ and ‘Moser’ are both and equally distinctive. It follows that they are
the most distinctive elements of the earlier mark.
Visually, the signs coincide in ‘Moser’. However, they differ in the elements ‘Lenz’
and ‘Prestige’ of the earlier mark which have no counterpart in the contested sign and
also provide a different length and structure to the signs.
Bearing in mind that the differing element ‘Lenz’ is placed at the beginning of the
earlier mark, to which consumers generally pay more attention and taking due
account of the different length and structure of the signs, it is considered that the
signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Moser’,
present identically in both signs. The pronunciation differs in the sounds of the letters
‘Lenz’ and ‘Prestige’ of the earlier mark which also results in the marks differing in
their rhythm and intonation.
Decision on Opposition No B 2 708 546 page: 11 of 12
As the only coincidence between the signs from the aural perspective lies in an
element placed in the middle of the earlier mark, 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. At the outset, it is recalled that the element ‘Prestige’
is not distinctive and, hence, has no relevant influence on the comparison of the
signs from a conceptual point of view. The marks coincide in the surname ‘Moser’.
However, they differ insofar the earlier mark contains the additional surname ‘Lenz’.
In that regard the Opposition Division notes that, without any evidence in its support,
the applicant’s claim according to which the public in the relevant territories will
associate the earlier mark with the Austrian winemaker Lorenz Moser III, called Lenz
Moser rather than perceiving it as a combination of the surnames ‘Lenz’ and ‘Moser’
cannot be accepted.
Therefore, contrary to the applicant’s arguments, the signs are conceptually similar to
a low degree on account of the coinciding surname ‘Moser’.
Taking into account that the signs have been found similar in at least one aspect of
the comparison, the examination of the existence of a risk of injury 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, despite the presence of a non-distinctive element in the mark, as stated
above in section c) of this decision.
e) 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 in question are in part identical or similar.
However, the signs only share a low degree of similarity from the visual, aural and
conceptual points of view and having regard to the interdependence principle
mentioned above, it can be safely excluded that the average consumer in the
relevant territories confuses the contested sign ‘Moser’ with the earlier mark ‘Lenz
Decision on Opposition No B 2 708 546 page: 12 of 12
Moser Prestige’ based on the imperfect recollection that it would have kept in mind,
even in the context of identical and similar goods.
In that regard it has to be observed that consumers being used to trade marks that
contain surnames, they will not blindly assume that every time a surname occurs in
two conflicting signs, the goods in question all emanate from the same source.
Considering all the above, a likelihood of confusion on the part of the public in the
relevant territories can be safely excluded.
Therefore, the opposition must be rejected.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
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
Carmen SÁNCHEZ
PALOMARES
Marine DARTEYRE Mark KING
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.