OPPOSITION No B 2 490 962
Sociedad Anonima Viña Santa Rita, Av. Apoquindo 3669, Piso 6º, Las Condes, Chile (opponent), represented by Hgf Limited, 8th Floor, 140 London Wall, London EC2Y 5DN, United Kingdom (professional representative)
a g a i n s t
Juan Tirado Agudo, Margarita Iturralde 58 bajo, 10200 Trujillo (Cáceres), Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío 4, 28010 Madrid, Spain (professional representative).
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 490 962 is upheld for all the contested goods and services.
2. European Union trade mark application No 13 496 229 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 496 229. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 644 325. The opponent invoked Articles 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.
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 United Kingdom trade mark registration No 2 644 325. It is also noted, that this mark is not subject to the proof of use requirement, since, at the date of publication of the contested trade mark, it had not been registered for at least five years.
- The goods and services
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages, except beer; wine; sparkling wine.
The contested goods and services are the following:
Class 33: Alcoholic beverages (except beers), wines.
Class 35: Retail and wholesale services (also via the internet) in respect of Alcoholic beverages.
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.
Contested goods in Class 33
Alcoholic beverages (except beers), wines are identically contained in both lists of goods (including synonyms).
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retail and wholesale services (also via the internet) in respect of Alcoholic beverages are similar to a low degree to the opponent’s alcoholic beverages, except beer.
- 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 and services found to be identical and similar to a low degree are directed at the public at large. The degree of attention is average.
- The signs
| SANTA RITA SR | |
|
Earlier trade mark |
Contested sign |
The relevant territory is the United Kingdom.
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).
In the earlier word mark, the element SANTA is perceived by the public as referring to ‘holy; saint, used before the given name of a female saint’’ (Collins English Dictionary). The element RITA is a female first name. The element SR is considered to be of less distinctive character, as it may refer to something that is older than what is compared with. It can not also be excluded that the SR are the initials of the words ‘Santa Rita’, in case of which they are merely seen as a repetition of the name and also overlooked.
In the contested figurative mark, the element RITA is a female first name. The element HABLA has no meaning, but can be perceived as a surname. Furthermore, when signs consist of both verbal and figurative components (in the thick frame and in the stylised typeface in the contested mark in the present case), 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).
The contested sign has no elements that could be considered clearly more distinctive or dominant than other elements.
Visually and aurally, the signs coincide in the element RITA. However, they differ in the remaining elements.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the similar concepts related to RITA, the signs are conceptually similar to that extent.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
- Global assessment, other arguments and conclusion
The goods and services have been found to be partially identical and partially similar to a low degree. The similarities and dissimilarities between the signs have been established.
The earlier sign and the contested sign have been found to be similar to the extent that they have the element RITA in common. The additional word SANTA, and HABLA do not have a decisive differentiating effect given that the concepts in the marks are essentially the same, referring to a similar female first name. The marks are aurally, visually and conceptually confusingly similar for the consumer.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).
Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause, at least a part of the public, to believe that the conflicting identical goods and similar to a low degree services come from the same undertaking or economically linked undertakings.
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent similar to the present case, the outcome may not be the same as the facts of the cases at hand differ.
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 United Kingdom trade mark registration No 2 644 325. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right UK No 2 644 325 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
| José Antonio GARRIDO OTALOA | Erkki MÜNTER | Irina SOTIROVA |
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.