OPPOSITION No B 2 716 093

J. Garcia Carrion, S.A., Carretera de Murcia, s/n, 30520 Jumilla (Murcia), Spain (opponent), represented by Carlos Aymat Escalada, Hortaleza, 37, 28004 Madrid, Spain (professional representative)

a g a i n s t

Bepin De Eto Societa' Agricola di Ceschin Ettore S.S., Via Colle 32/A, 31020 San Pietro di Feletto (Treviso), Italy (applicant), represented by D'Agostini Group, Rivale Castelvecchio 6, 31100 Treviso, Italy (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 716 093 is upheld for all the contested goods, namely

Class 33:         Wine.

2.        European Union trade mark application No 15 028 079 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 028 079, namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 13 585 641. 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:        Wine.

The contested goods are the following:

Class 33:        Wine.

Contested goods in Class 33

Wine is identically contained in both lists of goods.

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 considered to be average.

3. The signs

CAPPO
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate, in order to remove the need to examine the specific meaning (or lack thereof) of the marks (and their elements/components) for different parts of the relevant public, to focus the comparison of the signs on the German-speaking part of the relevant public, who will perceive the signs as meaningless.

The earlier sign is the word mark, ‘CAPPO’. As it has no meaning for the relevant part of the public, it is distinctive.

The contested sign is a figurative mark and consists of the verbal components ‘PRIM’, depicted in a non-bold upper-case typeface, and ‘CAPO’, depicted in a bold upper-case typeface. A filled circle placed above a vertical linear element, is positioned between these two verbal components. It is unclear whether the said device combination will be perceived as the letter ‘O’. Consequently, it is unclear whether the verbal element will be perceived as ‘PRIM O CAPO’ or ‘PRIM CAPO’. Despite the existence of the German word Primzahl meaning prime number, the verbal components will be perceived as meaningless by the relevant public when encountering the sign. and is therefore distinctive. Therefore, these verbal elements, namely ‘PRIM’ and ‘CAPO’ are distinctive. There are no components or elements which can be considered more distinctive or dominant (visually eye-catching) than other.

Visually and aurally, the signs coincide in the sequence of letters (and the sound of) ‘CAP*O’, being nearly the entire earlier sign and the ending of the contested sign. The bold typeface of the ending in the contested mark ensures that the relevant public pays just as much attention to this part than to the sign’s other components. However, the signs differ in the additional letter ‘P’ of the earlier sign (placed next to the other letter ‘P’), the verbal component ‘PRIM’, the figurative device, the mix of bold and non-bold typeface of the contested sign, which have no counterparts in the other mark.

Taking into account all the above, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of 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 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 to the opponent’s goods. The degree of attention is considered to be average. The signs have been found visually and aurally similar to an average degree. They are not conceptually similar. The coincidences between the signs are found in the sequence of letters ‘CAP*O’ which is distinctive for the relevant goods. The differences, as explained above in section c) of this decision, are not sufficient to offset the similarity between the signs.

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).

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).

Considering all the above, there is a likelihood of confusion on the German-speaking part of the public. 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.

The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim. In the opposition proceeding reputation of the contested sign is not examined and therefore the above argument of the applicant has to be set aside.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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 European trade mark registration No 13 585 641. 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

Michal Beniamin KRUK

André Gerd Günther BOSSE

Plamen IVANOV

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.