OPPOSITION DIVISION
OPPOSITION No B 2 723 529
Bodegas y Viñedos Verum, S.L., Juan Antonio Lopez Ramirez, 4, 13700 Tomelloso
(Ciudad Real), Spain (opponent), represented by Herrero & Asociados, Cedaceros,
1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Perun Destilerija doo, Vojvode Putnika bb, 22320 Indjija, Serbia (holder),
represented by Patentna Pisarna D.O.O., Čopova 14, 1001 Ljubljana, Slovenia
(professional representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 723 529 is upheld for all the contested goods.
2. International registration No 1 261 510 is entirely refused protection in respect
of the European Union.
3. The Holder bears the costs, fixed at EUR 620.
Preliminary Remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 international registration
designating the European Union No 1 261 510 for the word mark ‘PERUN’. The
opposition is based on, inter alia, international trade mark registration No 1 075 289
designating the European Union for the word mark ‘VERUM’. 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
Decision on Opposition No B 2 723 529 page: 2 of 6
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 international trade mark registration No 1 075 289 designating the
European Union for the word mark ‘VERUM’.
a) The goods
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beers).
The contested goods are the following:
Class 33: Alcoholic essences; alcoholic beverages, except beer; alcoholic beverages
containing fruit; alcoholic extracts; rice alcohol; anisette [liqueur]; aperitifs; arrack
[arak]; “baijiu” (Chinese distilled alcoholic beverage); bitters; eaux-de-vie (brandy);
wines; whisky; vodka; alcoholic fruit extracts; distilled beverages; digesters (liqueurs
and spirits); spirits; ciders; kirsch; cocktails; perry; curaçao; liqueurs; anise (liqueur);
peppermint liqueur; mead [hydromel]; nira (sugar-cane-based alcoholic beverage);
piquette; pre-mixed alcoholic beverages, other than beer-based beverages; rum;
sake; gin.
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.
The contested alcoholic beverages, except beer is identically contained in both lists
of goods.
The contested alcoholic beverages containing fruit; rice alcohol; anisette [liqueur];
aperitifs; arrack [arak]; “baijiu” (Chinese distilled alcoholic beverage); bitters; eaux-
de-vie (brandy); wines; whisky; vodka; distilled beverages; digesters (liqueurs and
spirits); spirits; ciders; kirsch; cocktails; perry; curaçao; liqueurs; anise (liqueur);
peppermint liqueur; mead [hydromel]; nira (sugar-cane-based alcoholic beverage);
piquette; pre-mixed alcoholic beverages, other than beer-based beverages; rum;
sake; gin are included in the broad category of the opponent’s Alcoholic beverages
(except beers). Therefore, they are identical.
The contested Alcoholic essences; alcoholic extracts; alcoholic fruit extracts are
preparations containing alcohol (used as solvent) and the aromatic principles of a
plant, spice, nut, herb or fruit, etc. They are considered similar to a low degree to the
opponent’s alcoholic beverages, since they might be manufactured by the same
producers (e.g. some spirit producers also produce and market essences, extracts
and flavours), they can have the same end users (e.g. when used for preparing
home-made alcoholic drinks and cocktails) and they may share the distribution
channels.
Decision on Opposition No B 2 723 529 page: 3 of 6
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
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. The degree of attention is considered to be average.
c) The signs
VERUM PERUN
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).
Both signs are word marks, the earlier mark consisting of ‘VERUM’ and the contested
sign of ‘PERUN’.
The applicant argues that the earlier mark will be understood by English, Spanish,
French and German consumers as meaning ‘truly’ as it derives from the Latin word
vērus (‘true’). However, the Opposition Division considers that the average European
consumer of the goods at issue will not perceive this meaning. It is considered that
the earlier sign enjoys an average degree of inherent distinctiveness.
As regards the contested sign, it cannot be excluded that part of the relevant public
will understood ‘PERUN’ as a mythical Slavic god. For the remaining public, the sign
will not be associated with any meaning. As it is not descriptive for the relevant
goods, the sign is normally distinctive.
Visually, the signs coincide in the sequence of letters ‘*ERU*’. However, they differ in
their respective beginnings, ‘V’ versus ‘P’, and in their last letters, ‘M’ in the earlier
mark and ‘N’ in the contested sign.
Therefore, the signs are 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 /e-r-u/, present identically in both signs. The pronunciation differs in the sound
of the first letters (/v/ in the earlier mark and /p/ in the contested sign) and the
endings, /m/ of the earlier mark and /n/ in the contested sign. The signs have the
same the length and the vowel sequence.
Decision on Opposition No B 2 723 529 page: 4 of 6
Therefore, the signs are similar to an average degree.
Conceptually, for part of the public neither of the signs has a meaning. Since a
conceptual comparison is not possible, the conceptual aspect does not influence the
assessment of the similarity of the signs. However, it cannot be excluded that part of
the relevant public may associate the contested sign with a mythical Slavic god. As
the other sign will not be associated with any meaning, the signs are not conceptually
similar for part of the relevant public.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion 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.
e) Global assessment, other arguments and conclusion
The goods are partially identical and partially similar to a low degree.
The signs are visually and phonetically similar in so far as they coincide in three
letters placed in the same order. Aurally, the similarity between the signs is enhanced
given that the sounds of the final letters of the signs (namely, ‘M’ in the earlier mark
and ‘N’ of the contested sign), can be hardly audible taking into account their position
within the signs. As regards the differences between the signs created by the
different initial letters, the Opposition Division is of the opinion that these are not
enough to counteract the similarities between the signs. This will be the case in
particular since the goods at issue are usually ordered orally. In these circumstances,
the phonetic perception of the sign may also be influenced by factors such as the
likely presence of various other sounds perceived by the recipient of the order at the
same time. Such considerations are relevant where the goods in question are
normally ordered at sales points with an increased noise factor, such as bars or
nightclubs. In such cases, attaching particular importance to the phonetic similarity
between the signs at issue may be appropriate (15/01/2003, T-99/01, Mystery,
EU:T:2003:7, § 48). In these circumstances, the association that the part of the
relevant public may make between the contested sign and the notion of a mythical
Slavic god, will not counteract the overall similarities between the signs.
What is more, it should be noted that average consumers only rarely have the
chance to make a direct comparison between the different marks but must place their
trust in the imperfect picture of them they have kept in their mind.
Decision on Opposition No B 2 723 529 page: 5 of 6
In consequence, the differences between the signs are not sufficient to safely
distinguish between the marks as to their trade origin. It must be recalled that
according to well-established case-law of the Courts, a trade mark must offer a
guarantee that all the goods bearing it have originated under the control of a single
undertaking, which is responsible for their quality. Accordingly, the risk that the public
might believe that the goods in question come from the same undertaking or from
economically-linked undertakings, constitutes a likelihood of confusion.
In light of all the considerations above, the Opposition Division considers that the
relevant public could think that the identical goods and even the goods that are
similar to a low degree come from the same or economically linked undertakings. In
its deliberations, the Opposition Division is particularly swayed by the enhanced
degree of aural similarity between the marks coupled with the fact that the contested
goods will frequently be ordered orally.
Considering all the above, there is a likelihood of confusion between the signs.
Therefore, the opposition is well founded on the basis of the opponent’s international
trade mark registration No 1 075 289 designating the European Union. It follows that
the contested trade mark must be rejected for all the contested goods.
As the earlier right international trade mark registration No 1 075 289 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) and the proof of use material submitted in relation to this
mark.
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 holder 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Liliya YORDANOVA Marzena MACIAK Monika CISZEWSKA
Decision on Opposition No B 2 723 529 page: 6 of 6
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.