OPPOSITION No B 2 746 322

Felix Solis, S.L., Autovía de Andalucía Km. 199, 13300 Valdepeñas (Ciudad Real), Spain (opponent), represented by José María Sánchez Wolff, Avda/ Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

Enoitalia S.p.A., Località Colombara, 5 – Calmasino, 37011 Bardolino, Italy (applicant), represented by Bugnion S.P.A., Via Pancaldo 68, 37138 Verona, Italy (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 322 is upheld for all the contested goods.

2.        European Union trade mark application No 15 442 321 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 15 442 321, for the word mark ‘PROGRIGIO’. The opposition is based on European Union trade mark registration No 12 390 126, for the word mark ‘PONTI GRIGIO’. 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: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Alcoholic beverages (except beers).

Alcoholic beverages (except beers) are 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 average.

3. The signs

PONTI GRIGIO	PROGRIGIO
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both marks are word marks. The earlier mark is composed of the verbal element ‘PONTI GRIGIO’, whereas the contested mark is composed of the verbal element ‘PROGRIGIO’.

The elements ‘PONTI’ and ‘GRIGIO’ of the earlier mark are not meaningful in certain territories, for example in those countries where Italian is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Italian-speaking part of the public, such as the French-, Spanish- and Romanian-speaking parts.

The element ‘PONTI’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘GRIGIO’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. The applicant argues in its observations that the earlier sign contains a descriptive component (the verbal element ‘GRIGIO’), used to identify pinot gris (‘pinot grigio’ in Italian) wine and as such is weak for all the relevant goods, and it submitted evidence in this regard. In the present comparison, the relevant public is limited to non-Italian speakers, such as French, Spanish and Romanian speakers, for whom the verbal element ‘GRIGIO’ has no meaning. There is nothing to indicate that the relevant public will use this element to identify pinot gris wine. Moreover, the applicant mentions in its observations that the wine is known as pinot grigio, not grigio as such. Therefore, the applicant’s argument about the weak character of the coinciding element ‘GRIGIO’ must be put aside.

The contested sign, ‘PROGRIGIO’, has no meaning for the relevant public and is, therefore, distinctive to an average degree.

Neither mark has any elements that could be considered clearly more dominant than other elements.

Visually, the signs are similar to the extent that they coincide in their first letters, ‘P’, and their endings, ‘GRIGIO’, as well as in the letter ‘O’, which is in second position in the earlier mark and in third position in the contested mark. The signs differ in the third, fourth and fifth letters, ‘NTI’, of the earlier mark and in the second letter, ‘R’, of the contested sign and in the fact that the earlier mark is written as two words whereas the contested sign is written as one word.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs are similar to the extent that they coincide in their first letters, ‘P’, and their endings, ‘GRIGIO’, as well as in the letter ‘O’, which is in the second position in the earlier mark and in the third position in the contested mark. The signs differ in the third, fourth and fifth letters, ‘NTI’, of the earlier mark and in the second letter, ‘R’, of the contested sign.

Therefore, the signs are 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 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 goods are identical and target the public at large, which exhibits an average degree of attention.

The signs are visually and aurally similar to an average degree to the extent that they coincide in their first letters, ‘P’, and their endings, ‘GRIGIO’, as well as in the letter ‘O’, which is in the second position in the earlier mark and the third position in the contested mark. The signs differ in the third, fourth and fifth letters, ‘NTI’, of the earlier mark and the second letter, ‘R’, of the contested sign and in the fact that the earlier mark is written in two word elements, whereas the contested sign is written in one word.

Taking into account the principle of imperfect recollection, according to which 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), the differences in the verbal elements are considered rather minor, as they arise from only a few letters in relation to the total length of the signs and occur in a not particularly prominent position between other letters that are identical. Considering that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23), the differing characters, ‘NTI’ and ‘R’, could easily be overlooked and misheard by the average consumer, who will perceive the expression as a whole.

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).

Therefore, in the present case, the identity between the goods offsets any lesser degree of similarity between the signs.

Considering all the above, there is a likelihood of confusion on the part of the French-, Spanish- and Romanian-speaking parts 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 390 126. 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

Zuzanna STOJKOWICZ

Francesca DRAGOSTIN

Loreto URRACA LUQUE

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.