OPPOSITION No B 2 755 943

RWA Raiffeisen Ware Austria Aktiengesellschaft, Wienerbergstr. 3, 1100 Wien, Austria (opponent), represented by Beer & Partner Patentanwälte KG, Lindengasse 8, 1070 Wien, Austria (professional representative)

a g a i n s t

The Wine People Srl, Via Maestri del Lavoro 28, 38121 Trento, Italy (applicant), represented by Niccolo Scardaccione, Viale Majno 9, 20122 Milan, Italy  (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 755 943 is upheld for all the contested goods.

2.        European Union trade mark application No 15 482 201 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 15 482 201 for the word mark ‘PRECISO’. The opposition is based on international trade mark registration No 1 296 417 designating the European Union of the figurative mark . 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, inter alia, the following:

Class 32: Fruit beverages and fruit juices; syrups and other preparations for making beverages; grape must (unfermented), in particular grape must concentrate.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

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.

Contrary to the applicant’s contention, non-alcoholic beverages such as the opponent’s fruit beverages and fruit juices on the one hand, and the applicant’s alcoholic beverages (except beers) in Class 33 on the other, are often sold side by side both in shops and bars and on drinks menus. These goods target the same public and may be in competition. Therefore, they are similar to a low degree.

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 similar to a low degree are directed at the public at large including business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

	PRECISO
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 earlier mark is a figurative mark consisting of the word ‘PREZISO’ written in bold upper case letters of a standard typeface placed against the background of the grey outline of an inverted triangle. The sign does not contain any dominant element, both elements being more or less equal in size, but the figurative element will have very little impact on the mind of the consumer, since it is a basic geometrical shape which is unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as a trade mark (12/09/2007, T-304/05, Pentagon, EU:T:2012:271, § 22). 

The contested sign is a word mark consisting of the word ‘PRECISO’. As a word mark its scope of protection covers representations in different standard typefaces, as well as the representation in upper and lower case letters or a combination of both.

Conceptually, the word ‘PRECISO’ of the contested mark means ‘precise’ in Spanish, Portuguese and Italian which is distinctive in relation to the goods at hand. Although it is true, as pointed out by the applicant, that the word ‘PREZISO’ of the earlier mark has no meaning as such, the consumers speaking Spanish, Portuguese and Italian will perceive the word ‘PREZISO’ as a misspelling of the word ‘PRECISO’, while the Spanish will not even notice any difference when confronted with the marks aurally. Therefore, at least for the Spanish speaking part of the public the marks are conceptually identical when perceived aurally, since the inverted triangle in the earlier mark will not be perceived as meaningful but rather as a non-distinctive decorative element. For the part of the EU-public that perceives both signs as meaningless, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the marks share six out of seven letters in the same order, ‘PRE*ISO’, and merely differ in their fourth letter, being a ‘Z’ in the earlier mark and a ‘C’ in the contested sign. Visually, they also differ in the figurative element of the earlier mark. However, this element will have very little impact on the mind of the consumer due to its non-distinctive character. Moreover, considering that their different fourth letters are both sibilants and located in the middle and, therefore, the least noticeable part of the signs, it must be found that overall the marks are visually and aurally similar to a high degree. In fact in Spanish they are even aurally identical.

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the signs are visually an aurally highly similar and part of the EU-public will associate both signs with the concept of ‘precise’. The goods are lowly similar and must be assessed from the point of view of the public whose degree of attention is average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness.

In light of all the foregoing considerations, also taking into account the notion of imperfect recollection, it must be concluded that there is a strong likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 296 417 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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

Steve HAUSER

Adriana VAN ROODEN

Boyana NAYDENOVA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.