OPPOSITION No B 2 770 991

Viña Carmen S.A., Av. Apoquindo 3669, Piso 6, Las Condes, Santiago, Chile (opponent), represented by Elzaburu S.L.P., Miguel Ángel 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Maria Roberta Pirone, Via Molinelle 82, 83024 Monteforte Irpino (AV), Italy (applicant).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 770 991 is upheld for all the contested goods.

2.        European Union trade mark application No 15 472 137 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 15 472 137. The opposition is based on, inter alia, European Union trade mark registration No 3 471 067. The opponent invoked Article 8(1)(a) EUTMR.

PRELIMINARY REMARK

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected. However, in the present case, the signs at issue are not identical (see section c) of this decision).

The opponent invoked Article 8(1)(a) EUTMR only. Although the specific conditions under Articles 8(1)(a) and 8(1)(b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR that requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.

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 3 471 067.

1. The goods

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

Class 33:        Wines.

The contested goods are the following:

Class 33:        Wine.

Wines are identically contained in both lists of goods, albeit using slightly different wording (i.e. wines in the applicant’s specification versus wine in the opponent’s list).

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 average.

3. The signs

NATIVA
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 verbal elements of the signs, ‘NATIVA’ and ‘NATIV’, are meaningful or will be understood in some territories, for example by the English-, Italian- and Spanish-speaking parts of the public. The Opposition Division will proceed with the evaluation of the decision on this basis, that is, in relation to the abovementioned parts of public.

The earlier mark is a word mark, ‘NATIVA’, which in Italian and Spanish is a feminine adjective or noun defining a person, animal or plant indigenous to a place. The English-speaking public will perceive the word as a misspelling of the English ‘native’, with the same meaning. Considering that, in connection with the relevant goods, the word does not have a precise meaning, it is considered distinctive.

The contested sign is a figurative mark that includes multiple elements. Firstly, in a central position, it contains the word ‘NATIV’ in slightly stylised black upper case letters. This word will be perceived by the relevant parts of the public as a misspelling of the Italian and Spanish word ‘nativo’ and the English word ‘native’, with the same meaning and degree of distinctive character as mentioned above in relation to the earlier mark.

Above the abovementioned verbal element, there is a figurative element depicting an emblem surmounted by a crown with a rearing horse on each side. These elements are non-distinctive. In particular, the depiction of the crown constitutes a reference to the high quality of the relevant goods; and the emblem and the rearing horses are commonly used in the wine sector and are not able to function as indications of commercial origin. In any case, 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). Consequently, the figurative elements mentioned above and the stylisation of the contested sign have less impact than the verbal elements of the marks.

Finally, the contested mark includes the words ‘viticoltori di vitgni autoctoni italiani’ in slightly stylised upper case letters, depicted on a ribbon. This element, regardless of the understanding of the relevant public (the expression is in Italian), has a limited impact in the present comparison, due to its substantially smaller size and secondary position.

The marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘NATIV*’. They differ in the additional letter ‘A’ of the earlier mark. They also differ in the words ‘viticoltori di vitgni autoctoni italiani’ of the contested sign, as well as in its figurative elements, which, as stated above, have a limited impact on the public’s perception of the signs.

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. Therefore, the additional letter, ‘A’, at the end of the earlier mark has less impact than the other letters, which the signs have in common.

In view of the above and of the fact that the earlier mark is entirely included in the verbal element of the contested sign, the signs are visually similar to an average 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 ‘NATIV*’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‘A’ of the earlier mark. However, this difference has limited relevance, since it results from only one phoneme at the end of the earlier mark. The subordinate position and small size of the element ‘viticoltori di vitgni autoctoni italiani’ in the contested sign mean that the public is unlikely to pronounce these words. Therefore, the signs are aurally highly similar.

Conceptually, the signs are similar to the extent that they evoke the same concept, of ‘native’, as seen above. As set out above, the remaining elements of the contested sign are non-distinctive or of secondary relevance and are thus insufficient to establish relevant conceptual differences between 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.

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

The contested goods are identical. These goods target the public at large, whose degree of attention is considered average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness in connection with the relevant goods.

The signs are visually similar to an average degree and aurally similar to a high degree because they coincide in the string of letters ‘NATIV’, which constitutes the most distinctive verbal element of the contested sign and five out of the six letters of the only element of the earlier sign. The marks are also conceptually similar to the extent that they evoke the same concept, of ‘native’.

The differences between the signs are confined to aspects that either may easily go unnoticed or have a limited impact on the overall impression of the sign concerned, namely the letter ‘A’ at the end of the earlier mark (where consumers do not tend to focus their attention) and the figurative elements of the contested sign, which are either secondary (i.e. the wording ‘viticoltori di vitgni autoctoni italiani’ and the stylisation of the word element) or non-distinctive (the figurative elements of the sign).

Account must be 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).

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 identity between the relevant goods is largely sufficient to outweigh the (in any case, less relevant) differences between the signs.

Considering all of the above, the Opposition Division is of the opinion that the differences between the signs are not sufficient to counteract their similarities, which result in similar overall impressions being created by the signs.

In view of the foregoing, there is a likelihood of confusion on the part of the English-, Italian- and Spanish-speaking parts of the public in the European Union. 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 3 471 067. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 3 471 067 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 rights 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

María Clara IBÁÑEZ FIORILLO

Orsola LAMBERTI

Francesca CANGERI SERRANO