OPPOSITION No B 2 608 910
Champagne Louis Roederer (CLR) Société Anonyme, 21, boulevard Lundy, 51100 Reims, France (opponent), represented by Ernest Gutmann – Yves Plasseraud S.A.S., 3, rue Auber, 75009 Paris, France (professional representative)
a g a i n s t
Juan Ramon Lozano, S.A., Avda. Reyes Católicos, 156, 02600 Villarrobledo (Albacete), Spain (applicant), represented by R. Volart Pons y Cia., S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative).
On 17/01/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 608 910 is upheld for all the contested goods and services, namely
Class 33: Alcoholic beverages (except beer).
Class 35: Retailing, wholesaling and sale via global computer networks of alcoholic beverages.
2. European Union trade mark application No 14 432 553 is rejected for all the contested goods and services. It may proceed for the remaining goods and services, namely
Class 32: Fruit beverages and fruit juices.
Class 35: Advertising; Business management; Business administration; Office functions; Retailing, wholesaling and sale via global computer networks of beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 432 553, namely against all the goods in Class 33 and some of the services in Class 35. The opposition is based on, inter alia, German trade mark registration No 647 501. The opponent invoked Article 8(1)(b) and Article 8(5) 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 German trade mark registration No 647 501.
- The goods and services
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beers).
The contested goods and services are the following:
Class 33: Alcoholic beverages (except beer).
Class 35: Retailing, wholesaling and sale via global computer networks of 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) are identically contained in the opponent’s list of goods, however with beer in its plural form.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. The same principle applies to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services and internet shopping. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested Retailing, wholesaling and sale via global computer networks of alcoholic beverages are similar to a low degree to the opponent’s Alcoholic beverages (except beers).
- 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 and services found to be identical or similar are directed at the public at large. The degree of attention is considered average.
- The signs
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CRISTAL
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PALACIO DE CRISTAL
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Earlier trade mark |
Contested sign |
The relevant territory is 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 mark is a word mark, ‘CRISTAL’.
The contested sign is also a word mark, ‘PALACIO DE CRISTAL’.
Neither the earlier, nor the contested mark have any elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘CRISTAL’, constituting the entire earlier mark. This coinciding element is distinctive for the relevant goods and services. The marks differ in the first word elements ‘PALACIO’ and ‘DE’ of the contested mark. These components are also distinctive for the goods and services in question.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CRISTAL’, present identically in both signs, and is deemed to be distinctive for the relevant goods and services. The pronunciation differs in the sound of the, also distinctive, initial word elements ‛PALACIO’ and ‘DE’ of the contested mark, which have no counterparts in the earlier sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the marks as a whole do not have any meaning for the public in the relevant territory, the identical element ‘CRISTAL’ included in both signs, will, by at least part of the public, be understood as meaning – among other meanings unrelated to the relevant goods and services – glass, especially glass of high quality. This is because this word is close to the equivalent word in German, ‘Kristall’ and also, since many Germans are familiar with the English language, to the equivalent English word crystal. For the part of the public that perceive the meaning of the word ‘CRISTAL’ or the full meaning of the marks, the signs are conceptually highly similar.
For the part of the public that will not perceive this 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.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Account is 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).
In the present case, the contested goods and services are partly identical and partly similar to a low degree to the opponent’s goods. The signs are visually and aurally similar to an average degree. They target the public at large and the degree of attention is average.
The signs are similar to the extent that they both contain the word ‘CRISTAL’, constituting the entire earlier mark. The marks differ in the words ‘PALACIO’ and ‘DE’ of the contested sign.
Even though the word element ‘CRISTAL’ is not in the first position and therefore does not constitute a primary element in the contested mark, it is identical to the earlier mark. It follows that the earlier mark is fully included in the contested sign.
Although more attention is usually paid to the beginning of the signs, ECJ case law indicates that generally it does not matter much whether the coinciding element constitutes the first or the second element of the mark (26/01/2006, T-317/03, Variant, EU:T:2006:27, § 50). This is because the earlier mark is protected not only against the later mark being understood as referring to the opponent’s goods, but also against the earlier mark being taken as referring to the applicant´s goods.
In the present case, the additional Spanish words ‘PALACIO DE’ will not be sufficient to distract the consumer’s attention from the fact that the word ‘CRISTAL’ in the contested sign play an independent distinctive role in both signs.
It must be noted that it constitutes a frequent practice nowadays for companies to make small variations of their trade marks (e.g. by altering their typeface or colour, adding or removing terms or elements to them) in order to name new lines of products or to create a modern version of the sign. In the case at hand, the contested mark is likely to be perceived by the consumer as another version of the earlier mark.
In view of all the relevant factors in the present case and also the principle of interdependence set out above, the relevant public could be mistaken as to the origin of those goods/services that are similar even only to a low degree. The high similarity of the signs outweighs the low similarity of these services.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 647 501. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right, German trade mark registration No 647 501 ‘CRISTAL’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) 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 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
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Victoria DAFAUCE MENÉNDEZ
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Lena FRANKENBERG GLANTZ |
Sigrid DICKMANNS
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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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.