OPPOSITION No B 2 744 251

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

Tibaldi Società Semplice Agricola, Strada San Giacomo 49, 12060 Pocapaglia (CN)  

Italy (applicant), represented by Jacobacci & Partners S.p.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative).

On 08/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 744 251 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 441 728. The opposition is based on, International trade mark registration No 1 125 561 and Spanish trade mark registration No 780 722. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was not accompanied by any evidence as regards the International trade mark registration No 1 125 561 for the word mark ‘ALBALI’ purportedly designating the European Union on which the opposition is based.

On 31/08/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 05/01/2017.

The opponent filed some observations on 29/07/2016. However, they did not include any evidence concerning the substantiation of this earlier trade mark.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition based on international trade mark No 1 125 561 must therefore be rejected as unfounded.

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 Spanish trade mark registration No  780 722.

1. The goods

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

Class 33:        Wines, spirits and liquor.

The contested goods are the following:

Class 33:        Grappa; wine; wine-based drinks; red wine; white wine; schnapps; spirits [beverages]; bitters; aperitifs; potable spirits; alcoholic beverages (except beer); distilled beverages; digesters [liqueurs and spirits]; liqueurs; cider; spirits and liquors; vermouth; sparkling wines; sweet wines.

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.

The contested wine; spirits and liqueurs; spirits [beverages] are identically contained in both lists of goods, albeit liquors (which appear twice) are written in singular.

The contested grappa; schnapps; potable spirits; digesters [liqueurs and spirits]; distilled beverages are included in the broad categories of/or overlap with, the opponent’s spirits and liquor. Therefore, they are identical.

The contested alcoholic beverages (except beer) include as a broader category the opponent’s spirits and liquor. 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 vermouth (which is a kind of fortified wine); wine-based drinks; red wine; white wine; sparkling wines; sweet wines are included in the broad category of the opponent’s wines. Therefore, they are identical.

The contested aperitifs are alcoholic beverages that can be a kind of wine or spirit so it overlaps with wines from the earlier right.

 

The contested cider; bitter; are similar to the opponent’s wine. Although, their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings.

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 and similar are directed at the public at large. The degree of attention is considered average.

3. The signs

ALBALI
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both signs contain just one word of similar lengths; the earlier mark has seven letters, whilst the contested sign has eight letters. Neither of the signs have a meaning in the languages of the relevant territory nor for the goods in questions, and are, therefore, distinctive to a normal degree.

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. Therefore, the fact that the earlier mark and the contested sign have different beginnings will be of particular importance in the comparison of the signs.

Visually, the signs coincide in the third, fourth and fifth letters ‘*-*-B-A-L-*-I’, they also share a further letter, ‘I’, which is the last one in both signs, but do not appear in the same position. However, they differ in the first and second letters, ‘AL’ in the earlier mark versus ‘TI’ in the contested sign, and in the additional letter, ‘D’, of the contested sign.

The opponent claims that the coinciding letters lead to a ‘hardly differentiable’ degree of similarity. However the divergence at the beginnings of the signs is of particular importance as remarked above. Moreover, given the length of the signs, the coincidence in some letters in the middle of the words loses impact as they will not be immediately noticed. Further, the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually similar to a low degree.

Aurally, the signs coincide in the sound of their third, fourth and fifth letters. They also coincide in the sound of their last letter ‘I’ which occupies the sixth position in the earlier mark and the seventh in the contested sign. However, they differ in the sound of the remaining letters. Despite the fact that both signs will be pronounced as three syllables, /AL/BA/LI/ and /TI/BAL/DI/, and, as remarked above share certain sounds, the actual syllables do not coincide as the identical sounds are diluted by the presence of the differing ones as well as the differing positions. The previous arguments concerning the beginnings and lengths of the signs are also pertinent. Therefore, the signs are aurally similar to a low 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 claimed that the earlier trade mark enjoys enhanced distinctiveness in Spain but 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

In the present case, the goods are identical and similar, the degree of attention of the relevant public is expected to be average and the distinctiveness of the earlier mark is normal.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered come from the same or economically linked undertakings.

In the Opposition Division’s view, the visual and aural similarity between the signs is too low for a likelihood of confusion to exist on the part of the public even taking into account that the goods are identical and similar.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Therefore, the examination of the opposition will continue as concerns one of the other grounds on which the opposition is based, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested sign shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Reference is made once again to Article 76(1) EUTMR, as set out previously and it follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence. Reference is also made to the relevant time-frames as set out under Rule 19(1) EUTMIR and Rule 19(2) EUTMIR (set out above). However, in the present case the notice of opposition was not accompanied by any evidence concerning the reputation of the earlier mark, the Spanish trade mark registration No 780 722 on which the opposition is based nor was any evidence filed subsequently.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must also be rejected as unfounded as regards this ground.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca CANGERI SERRANO

María Clara  IBÁÑEZ FIORILLO

Vanessa PAGE

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.