OPPOSITION No B 2 697 731
Gloria S.A., Av. República de Panamá 2461, Urb. Santa Catalina, Lima 13, Peru (opponent), represented by Elena Javier Sánchez, Paseo de la Castellana, 123 – esc. dcha. 7°B, 28046 Madrid, Spain (professional representative)
a g a i n s t
Oslo Håndverksdestilleri AS, Nils Hansen Vei 14A, 0667 Oslo, Norway, and Number One Drinks Company Ltd, St John's House 25, St John Maddermarket, Norwich NR2 1DN, United Kingdom (applicant).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 2 697 731 is upheld for all the contested goods.
2. European trade mark application No 15 080 047 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 15 080 047. The opposition is based on Spanish trade mark registration No 3 525 762. 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, inter alia, the following:
Class 33: Alcoholic beverages (except beers).
The contested goods are the following:
Class 33: Alcoholic beverages (except beer); spirits and liquors; gin; herb liqueurs; liqueurs; schnapps; spirits [beverages].
Alcoholic beverages (except beers) are identically contained in both lists of goods.
The contested spirits and liquors; gin; herb liqueurs; liqueurs; schnapps; spirits [beverages] are included in the broad category of the opponent’s alcoholic beverages (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 considered to be average.
- The signs
Earlier trade mark
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 are word marks.
The earlier mark is composed of the Spanish words ‘PURA VIDA’, which literally translates to ‘pure life’ in English. Nevertheless, the sign will be perceived as an exclamation used to express great satisfaction with life in general or with a particular enjoyable moment or situation in life. Therefore, the sign has no direct meaning for any of the goods in question and is distinctive.
The contested sign, ‘VIDDA’, has no meaning as such in Spanish but given its pronunciation and its close spelling, it will be associated, at least aurally and at least by part of the relevant public, with ‘VIDA’ which means ‘life’ in Spanish. Whether or not perceived as such, the word is distinctive of the relevant goods.
Visually, the earlier mark and the contested sign coincide in the string of letters ‘V-I-D-(*)-A’. However, they differ in the initial element ‘PURA’ of the earlier mark and in the additional letter ‘D’ of the contested sign. Therefore, the signs are visually similar to an average degree.
Aurally, taking into account that in Spanish, the repetition of the letter ‘D’ remains without effect on the pronunciation of the sign, the word ‘VIDA’ of the earlier mark and the contested sign will be pronounced identically. The pronunciation of the signs differs in the sounds of the initial word ‘PURA’ of the earlier mark. Therefore, the signs are aurally similar to an average degree.
Conceptually, the earlier mark will be perceived as an exclamation with the meaning indicated above, and the contested sign will be associated, at least aurally and at least by a significant part of the public, with the concept of ‘life’. Therefore, in both signs, a link can be established with the concept of ‘life’ and, therefore, they are conceptually similar to an average degree for part of the public at least. In the unlikely event that part of the public would not perceive, aurally at least, the concept of ‘life’ in the contested sign, the signs are conceptually not 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 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 a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services. 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 for such goods is deemed to be average. The signs are visually and aurally similar to an average degree and are also conceptually similar to an average degree, at least for part of the relevant public. For the relevant goods, the aural perception of the signs is all the more important, since alcoholic beverages are often ordered orally (e.g. in bars and restaurants). Therefore, the fact that the signs are similar to an average degree aurally is even more important. Account must also be 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).
Furthermore, it must be pointed out that likelihood of confusion includes the likelihood of association, in the sense that the public may, if they do not confuse two signs directly, believe that they come from the same undertaking or from economically related ones.
Considering all the above, and taking into account the abovementioned principle of interdependence, whereby a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa, the Opposition Division considers that the differences between the signs are not sufficient to offset their similarities and the identity of the goods at issue and that there is a likelihood of confusion, which includes the risk of association, on the part of the Spanish public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 525 762. 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Begoña URIARTE VALIENTE
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.