OPPOSITION No B 2 701 145
António Manuel Boletas Lança, Rua Da República, Nº 154, 2975-331 Quinta Do Conde, Sesimbra, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Latentia Winery S.p.A., Strada Statale 7 Appia Km 605, Localita' "San Filippo", 74014 Laterza (TA), Italy (applicant),.
On 31/03/2017, the Opposition Division takes the following
1. Opposition No B 2 701 145 is upheld for all the contested goods.
2. European Union trade mark application No 15 074 933 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 15 074 933. The opposition is based on Portuguese trade mark registration No 480 886. 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 33: Wine; vodka; piquette; pear brandy; eaux-de-vie; rice alcohol; alcohol (fruit extracts with -); beverages (alcoholic -) [except beers]; essences (alcoholic -); extracts (alcoholic -); bitters; anise [liqueur]; anisette; aperitifs; arrack [liqueur]; alcohol (rice -); alcoholic beverages [except beers]; alcoholic beverages containing fruit; distilled beverages; cherry brandy [“kirsch”]; ciders; cocktails; curacao; digesters [spirits and liqueurs]; spirits; alcoholic essences; alcoholic extracts; fruit extracts with alcohol; fruit (beverages containing -); extracts (fruit -) with alcohol; gin [spirit]; mead; liqueur (peppermint -); kirsch [cherry brandy]; peppermint liqueur; liqueurs; perry [pear spirit]; brandy (pear -); rum; sake; whiskey; wines; vodka; whisky
The contested goods are the following:
Class 33: Wine; red wine; white wine; mulled wines; Acanthopanax wine (Ogapiju); beverages containing wine [spritzers]; wine-based drinks; prepared wine cocktails; sparkling wines; fortified wines; aperitifs with a distilled alcoholic liquor base; sparkling white wines; sparkling red wines; low-alcoholic wine; sparkling grape wine; cooking wine; table wines; sweet wines; still wine; natural sparkling wines; fruit wine; sparkling fruit wine; piquette; sangria; rose wines; grape wine; strawberry wine; black raspberry wine (Bokbunjaju); yellow rice wine.
The contested goods are all included in the broad category of the opponent’s beverages (alcoholic -) [except beers]. Therefore, they are identical.
- 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 deemed average.
- The signs
Earlier trade mark
The relevant territory is Portugal.
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).
Whereas the contested sign is made up of the sole word 'SELONE' which has no meaning in Portuguese and is, therefore, distinctive of the relevant goods, the word element ‘SELO’ of the earlier mark will be understood as ‘seal', 'postage stamp' or 'cachet’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The word is placed in a rectangular frame that reminds precisely of a seal or stamp but neither element can be considered more eye-catching than the other. It should 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).
Neither sign has any element that could be considered clearly more eye-catching (dominant) than other elements.
It must be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually and aurally, the signs coincide to the extent that the word element 'SELO' of the earlier mark is fully reproduced at the beginning of the contested sign. However, they differ in the final letters of the contested sign, 'NE', and in their corresponding sounds. Visually, they also differ in the graphic and figurative elements of the earlier mark which as seen above, have less impact than the word element. This is all the more true in the present case given that these elements are not particularly sophisticated or elaborate.
In view of the foregoing, the signs are visually and aurally similar to an average degree.
Conceptually, although the public in the relevant territory will associate both elements of the earlier mark with the same concept, as explained above, the other 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.
- 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.
- Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).
According to the same line of case-law, 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 addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods are identical and the degree of attention displayed by the public with regard to such goods is average. The signs at issue are visually and aurally similar to an average degree and the earlier mark is distinctive to a normal degree.
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).
In addition, 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, particularly in bars and restaurants, where 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, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.
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 Portuguese trade mark registration No 480 886. 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.