OPPOSITION No B 2 552 068

Casa Santos Lima – Companhia das Vinhas, S.A., Quinta Da Boavista, 2580-081 Aldeia Galega da Merceana, Portugal (opponent), represented by Furtado – Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisbon, Portugal (professional representative)

a g a i n s t

Pernod Ricard Winemakers Spain S.A., Paseo de Mikeletegi 71, 2ª planta, 20009 San Sebastian, Spain (applicant), represented by by Olivia Sergent, Pernod Ricard Société Anonyme, 12 Place des Etats-Unis, 75016 Paris, France (employee representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 552 068 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 (in Classes 32 and 33) of European Union trade mark application No 13 786 231 (word mark: “WINNOVATION LAB”). The opposition is based on, inter alia, Portuguese trade mark registration No 441 812 (word mark: “LAB”). 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 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 Portuguese trade mark registration No 441 812.

1. The goods

The goods in Class 33 on which the opposition is based are the following:

Wines, Brandies.

The contested goods in Classes 32 and 33 are the following:

Class 32: Beer; minerals and aerated waters and other non-alcoholic drinks; Fruit drinks, fruit juices; syrups and other preparations for making drinks.

Class 33: Alcoholic beverages (except beers).

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 32

The contested Beer have the same nature, distribution channels, public and producers as the opponent´s Wines. Therefore, they are similar.

The contested minerals and aerated waters and other non-alcoholic drinks; Fruit drinks, fruit juices and other preparations for making drinks have the same method of use, distribution channels, public and producers as the opponent´s Wines. Therefore, they are similar to a low degree.

The remaining contested syrups for making drinks have a different purpose, a different public and different producers from the opponent’s goods. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 33

The contested Alcoholic beverages (except beers) include, as a broader category, the opponent’s Wines, Brandies. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 to different degrees are directed at the public at large. The degree of attention will vary between average and low, because they will be consumed on a daily basis.

3. The signs

LAB	WINNOVATION LAB
Earlier trade mark	Contested sign

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).

Both signs are wordmarks which are protected in all typefaces.

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 earlier trade mark is a one-word mark, whereas the contested sign has two word elements. The signs also have clearly different lengths: the earlier trade mark has three letters, whereas the contested sign has fourteen letters. Therefore, the contested sign is much longer than the earlier trade mark. The element ‘WINNOVATION’ is not only part of the contested sign; it is also its beginning, which will particularly catch the attention of the reader (see above). The long additional first word of the contested sign will also lead to a rather different rhythm, pronunciation and sound. The fact that the identical word ‘LAB’ is included in both marks cannot counteract these differences between the signs to any significant extent. Therefore, the signs are visually and aurally similar to a lower than average 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. The parties have not proven that ‘LAB’ is commonly used as an abbreviation for ‘laboratory’ in Portugal or that ‘WINNOVATION’ would be understood, as the opponent claims, as a ‘Wine’ and ‘Innovation’.

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 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.

5. Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The contested goods are partly identical, partly similar to different degrees and partly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The signs are visually and aurally similar to a below lower than average degree and have conceptually no coincidences.

Taking into account the fact that the signs are visually and aurally similar only to a lower than average degree, the different (and long) beginning of the contested sign, and the no more than normal degree of distinctiveness of the earlier trade mark, there is, even for identical goods and for the part of the public with a low degree of attention, no likelihood of confusion. This is even truer when the public has an average degree of attention.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to distinguish them clearly from each other. The public will not think that the signs come from the same undertaking or economically linked undertakings. The opponent refers to the decision of the Office in opposition B 1 039 512 of 08/10/2007, “LAB/CELEBRITY LAB”, in which the likelihood of confusion was also based on a conceptual similarity, because one of the two earlier trade marks was a European Union/Community trade mark, so it was relevant that the English-speaking public understood ‘LAB’ as an abbreviation for ‘laboratory’. That is not the case here. The initial situation and the outcome of the opposition B 1 039 512 and of the present case are indeed different. The opponent also cited the decision of the Boards of Appeal R 1051/2007-4 of 08/05/2008, “SOHO LAB/LAB”. However, first, it has not submitted any reason to hold that the signs are visually and aurally similar to an average degree. Second, the first word, ‘SOHO’, in the case cited is much shorter than the word ‘WINNOVATION’ in the present case, which is very conspicuous. In this respect too, the outcomes of the cases are indeed different.

The opponent has also based its opposition on earlier Portuguese trade mark No 539 913 (word mark: ‘LAB OF PORTUGAL’). This trade mark invoked by the opponent is less similar to the contested mark. This is because it contains the additional word combination ‘OF PORTUGAL’. Even though it is non-distinctive, as a geographical indication, it has to be taken into account to a certain degree. The goods are also partly identical, as in the present comparison.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

---

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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.

The Opposition Division

Magnus ABRAMSSON

Peter QUAY

Julia SCHRADER

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.