OPPOSITION No B 2 771 817

Sazerac Brands, LLC, 10400 Linn Station Road, Suite 300, Louisville, Kentucky 40223, United States of America (opponent), represented by Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London, City of London, EC2M 1QS, United Kingdom (professional representative)

a g a i n s t

Tecnoview Led World, S.A., Cofre de Perote, 359-9 Lomas de Chapultepec, Ciudad de Mexico 11000, Mexico (applicant), represented by R. Volart Pons y Cia., S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 771 817 is upheld for all the contested goods.

2.        European Union trade mark application No 15 502 933 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 15 502 933 ‘PURO CORAZON’. The opposition is based on European Union trade mark registration No 2 443 661 . The opponent invoked Article 8(1)(b) and 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.

1. The goods

The goods on which the opposition is based are the following:

Class 32: Liquor, namely tequila.

The contested goods are the following:

Class 32: Alcoholic beverages (except beer); mescal; tequila.

Contested goods

Tequila is identically included in both lists of goods.

The contested mescal is a distilled alcoholic beverage that can be prepared from any agave plant, while the opponent’s tequila is a distilled alcoholic beverage that is prepared exclusively from blue agave. This means that the contested mescal is a broad category that includes the opponent’s tequila. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested alcoholic beverages (except beer) is a broad category that includes the opponent’s goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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 average.

3. The signs

	PURO CORAZON
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.

The coinciding element ‘CORAZÓN’ is meaningful in certain territories, namely those where Spanish is understood. This element will be perceived as a descriptive reference to the heart of a fruit, that is, the best part thereof. As such, it lacks distinctiveness (11/06/2008, R 1684/2007-1, PURO CORAZON, § 20-21). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish- and Hungarian-speaking parts of the public, for which the coinciding element included in both signs is meaningless and therefore distinctive.

The contested sign consists of the words ‘PURO CORAZON’, neither of which has any meaning in the relevant territory. Therefore they have a normal degree of distinctive character in relation to the goods concerned.

The earlier mark is composed of the word ‘CORAZÓN’, positioned along a curve over a depiction of a heart and a plant. The word element lacks any meaning and it is therefore distinctive. Moreover, the figurative parts of the mark, namely the heart and the plant, will be seen as such by the relevant consumers. Since they have no relation to the relevant goods, they are distinctive.

None of the elements of the earlier mark is more dominant than any other.

Visually, the signs coincide in the word element ‘CORAZON’, which differs only in the addition of an accent in the earlier mark. The signs differ in the additional word ‘PURO’ of the contested sign, as well as in the earlier mark’s figurative elements. Consequently, the earlier sign’s sole word element is nearly identically reproduced in the contested sign. It should also be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Based on all the foregoing, the signs must be considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /corazon/, present identically in both signs. The addition of the accent in the earlier mark is not sufficient to counteract the coinciding sounds. The pronunciation differs in the sound of the word ‛PURO’ in the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of parts of the earlier mark, namely the heart and the plant, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any 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.

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.

According to the opponent, the earlier mark enjoys enhanced distinctiveness; however, it did not file any evidence in order to prove such a claim.

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 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).

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).

Taking into account all relevant factors, including the interdependence principle mentioned above and the fact that the goods in the present case are identical, the difference between the signs must be significant (13/11/2012, T-555/11, tesa TACK, EU:T:2012:594, § 53) to exclude a possible likelihood of confusion. This is not the case here, as the visual and aural similarities between the signs are sufficient to counteract the differences between them.

Furthermore, as the goods in the present case are beverages, particular importance must be attached to the aural similarity between the signs, since these products are often ordered orally in bars or restaurants, usually in a noisy environment, where aural differences between the signs may be obscured, and where the visual aspect will play a much lesser role (see 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Considering all the above, there is a likelihood of confusion on the part of the Polish-and Hungarian-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 2 443 661. It follows that the contested trade mark must be rejected for all the contested goods.

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

Cynthia DENDEKKER

Ferenc GAZDA

Carmen SÁNCHEZ PALOMARES

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.