OPPOSITION No B 2 705 799
Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)
a g a i n s t
Azienda Vinicola Rivera S.P.A., S.P. 231 Km 60,500, Contrada Rivera, 70031 Andria, Bari, Italy (applicant), represented by Vincenzo Raguseo, Via Vincenza Monda, 4, 70056 Molfetta (Bari), Italy (professional representative).
On 28/06/2017, the Opposition Division takes the following
1. Opposition No B 2 705 799 is upheld for all the contested goods.
2. European Union trade mark application No 15 033 806 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 033 806. The opposition is based on German trade mark registration No 946 954. 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.
- The goods
The goods on which the opposition is based are the following:
Class 32: Non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries.
The contested goods are the following:
Class 33: Alcoholic beverages including wines; Wine produced in accordance with the requirements of the protected designation of origin “Puglia”.
An interpretation of the wording of the list of goods is required to determine the scope of protection thereof.
The term ‘particularly’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
Although the production processes of the contested goods (alcoholic beverages) and the opponent’s goods (non-alcoholic beverages) are different, these goods all belong to the same category of drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets, even though some distinction according to their subcategories may be made. Furthermore, their purpose is often the same, namely to quench thirst and/or to be consumed along with food. The goods may also overlap in the use of grapes, which are a core ingredient of the applicant’s goods and a possible ingredient of the opponent’s fruit juices.
Based on all these findings, the contested alcoholic beverages including wines; wine produced in accordance with the requirements of the protected designation of origin ‘Puglia’ are similar to a low degree to the opponent’s non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries.
- 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 are directed at the public at large.
The degree of attention is considered average.
- The signs
Earlier trade mark
The relevant territory is Germany.
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 exclusively composed of the element ‘River’, which is an English word and will be understood by the part of the public that speaks that language. For the remaining public, the word is meaningless. In either case, this word is distinctive in relation to the relevant goods.
The contested sign is made up of the word element ‘Rivera’ in a slightly fanciful typeface, a crest device and the words ‘I vini pregiati di Puglia’. The relevant public will not understand any of the word elements, which are, therefore, distinctive for the goods concerned. Contrary to the applicant’s argument, ‘Puglia’ as a reference to the Italian region will not be widely known to and recognised by the German consumer, also because it is translated into German as ‘Apulien’. Furthermore, it is the word ‘Rivera’ and the device element that have a dominant role in the visual perception of the sign, as the Italian text is much smaller and placed at the bottom of the sign. With regard to the figurative elements, they are of smaller size than the word ‘Rivera’ and contain colours and some simpler elements such as a cross or a crown. While being distinctive in the present case, none of these figurative elements are particularly fancy. In any event, the device will play a secondary role in comparison with the – dominant – verbal element since customers would still refer to the relevant goods by the name, and not by the figurative elements. In summary, of the contested sign’s elements, it is the word ‘Rivera’ and the device that have a central and dominant position as well as a normal degree of distinctiveness.
Visually, the signs coincide in the letter sequence ‘RIVER-’ and they differ in the contested sign’s figurative elements, the text in Italian and the final letter, ‘a’, in the word ‘Rivera’. This means that the earlier mark’s sole word element is replicated in the contested sign with an extra letter ‘a’ at the end of the word. The remaining, additional elements in the contested sign are of much lesser importance, since they are either of a decorative nature or much smaller size. Consumers, on encountering the contested sign, will first and foremost perceive the word ‘Rivera’ and pay much less attention to the crest device since, in principle, the verbal component of a 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 these findings and despite the differences in typeface and other factors, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters [RIVER-], present identically in both signs. The pronunciation differs as a consequence of the sound of the additional letter ‛a’ in the contested sign. As explained above, the contested sign’s additional word elements are likely to be ignored, partly because of their much smaller size and partly because the relevant public does not speak Italian and will not try to pronounce those words. As a result, the signs will be pronounced in a near-identical manner by the vast majority of the relevant public, which makes them highly similar.
Conceptually, part of the public in the relevant territory will perceive the meaning of the earlier mark as explained above while the other sign’s words have no meaning in that territory and its figurative elements will have much lesser weight in the comparison. To the other part of the public who does not understand the earlier mark, neither sign’s words have a meaning while the above finding on the contested sign’s figurative elements apply in the same way. In summary, 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.
- 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.
- Other arguments
The applicant refers to previous decisions to support its arguments. However, the Office is not bound by 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).
Even though previous decisions are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the applicant has cited a number of earlier Court and Office decisions, some of which may have some similarity to the present case. However, it must also be emphasised that case-law is constantly evolving and not all earlier decisions can automatically be applied to every subsequent case. In particular, as regards the similarity between alcoholic and non-alcoholic beverages, the applicant cites a court decision handed down in 2005 (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49); however, a different approach has been taken since then in this regard, for example in 19/07/2010, R 1804/2008-4, Rosalía de Castro/Rosalía, § 16-18 (confirmed by 05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 31) and in 15/05/2014, R 941/2013-1, Spezoomix / Spezi et al. § 22 (confirmed by 01/03/2016, T-557/14, Spezoomix, EU:T:2016:116). In any event, 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.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
With regard to the applicant’s argument that it already owns another, similar, mark that was registered without the opponent having filed an opposition against it, it must be pointed out that nothing precludes the opponent from filing an opposition against an EUTM application irrespective of whether or not it had previously opposed other marks of the applicant. This cannot be interpreted to the opponent’s disadvantage, especially since in opposition proceedings the defence of acquiescence is not available. The article referred to by the applicant, namely Article 54 EUTMR, concerns invalidity proceedings and is, therefore, not relevant to the present case.
- Global assessment and conclusion
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).
It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).
Furthermore, the General Court has held that in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, in particular in bars and restaurants, in which wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, the aural similarity between the signs comes into play in the finding of likelihood of confusion between the marks despite their visual differences.
In the present case, the goods are beverages and they are similar to a low degree, while the signs are aurally highly similar (and visually similar to an average degree). The differing elements in the contested sign are likely to be either ignored or afforded much less importance, which means that, even in environments other than bars or restaurants, average consumers relying on their imperfect recollection are likely to remember the central word element of the contested sign when making a purchasing decision.
Considering all the above, there is a likelihood of confusion despite the low degree of similarity between the goods and the lack of conceptual similarity which is not particularly relevant in the present case, in particular since 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). This applies in the present case, where the lower degree of similarity between the goods and the differences between the signs are sufficiently counterbalanced by the visual similarities and, especially, by the particularly relevant high degree of aural similarity.
Therefore, the opposition is well founded on the basis of the opponent’s earlier German trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.
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
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.