OPPOSITION No B 2 723 842

Grupo de Bodegas Vinartis S.A., Jorge Juan, 73, 28009 Madrid, Spain (opponent), represented by Carlos Aymat Escalada, Hortaleza, 37, 28004 Madrid, Spain (professional representative)

a g a i n s t

Lazaros Kovlakas, B Tomeas 109, 50200 Ptolemaida, Greece, CGK I.K.E (CGK P.C), 2km Old National Road Ptolemaida-Kozani, 50200 Ptolemaida, Greece (applicant).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 723 842 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 193 386, namely against all the goods in Class 33. The opposition is based on Spanish trade mark registration No 753 926. 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 33:        Wines of all class.

The contested goods are the following:

Class 33:        Alcoholic beverages (except beer); Preparations for making alcoholic beverages.

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

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wines of all class. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested preparations for making alcoholic beverages are similar to a low degree to the opponent’s wines of all class. They have the same distribution channels, they can be produced by the same providers and they target the same relevant public.

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 or similar to a low degree are directed at the public at large, in the case of alcoholic beverages (except beer), and at business customers with specific professional knowledge or expertise, in the case of preparations for making alcoholic beverages.

The degree of attention may vary from average, with regard to alcoholic beverages (except beer), to above average, with regard to preparations for making alcoholic beverages.

3. The signs

DON OPAS	OPA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both signs are word marks, ‘DON OPAS’ and ‘OPA’. The first word, ‘DON’, of the earlier mark will be understood by the relevant public as a title, equivalent to ‘Mr’, placed before a name/surname to indicate respect. Neither ‘OPAS’ in the earlier mark nor ‘OPA’ in the contested sign has a meaning in Spanish. Therefore, the earlier mark will be understood as ‘Mr Opas’. In this context, the verbal element ‘OPAS’ will most likely be perceived as an unusual name/surname of foreign origin.

The signs at issue, both being word marks, have no elements that could be considered clearly more distinctive and/or more eye-catching (dominant) than other elements.

Visually, the signs coincide in ‘OPA’. However, they differ in ‘DON’ and ‘S’ in the earlier mark. The earlier mark consists of seven letters (two words), whereas the contested sign has three letters (one word).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OPA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛DON’ and the letter ‛S’ of the earlier sign, the latter being the last phoneme of the word ‛OPAS’; these letters have no counterparts in the contested sign. The pronunciation of the earlier mark will be longer than that of the contested sign, as it is composed of two words instead of one word.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the first element, ‘DON’, of the earlier mark 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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partly identical and partly similar to a low degree, whereas the conflicting marks have only a low degree of visual and aural similarity. The relevant public, as explained above, will have either an average or an above average degree of attention. In addition, the distinctiveness of the earlier mark is only average.

The Opposition Division is of the opinion that the differences resulting from the additional word at the beginning of the earlier mark and its last letter are clearly perceptible and outweigh the similarities in the present case. These differences are, therefore, sufficient to exclude any likelihood of confusion between the marks.

Furthermore, in the present case, the earlier mark ‘DON OPAS’ will most likely be perceived as meaning ‘Mr Opas’, whereas the contested sign will be seen as the invented word ‘OPA’. In this context, the word ‘Opas’ will be perceived by the relevant public as an unusual name or surname of foreign origin.

The opponent refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case (16/07/2014, No B 2 129 081, RED SIMON/DON SIMON) referred to by the opponent is not relevant to the present proceedings, as the factual circumstances, for instance a different relevant territory resulting in a different pronunciation, lead to a higher degree of similarity between the marks than in the present case.

Considering all of the above, even taking into account the fact that some of the goods are identical, there is no likelihood of confusion on the part of the relevant public.

Therefore, the opposition must be rejected under Article 8(1)(b) EUTMR.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Jessica LEWIS

Michal KRUK

Judit NÉMETH

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.