Decision on Opposition No B 2 346 834 page: 5 of 6
similarity between the marks and between the goods. Therefore, a lesser degree of
similarity between the goods 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).
The goods are similar to a low degree and the level of attention of the relevant public
Taking into account all the above, and especially the fact that the signs are visually,
aurally and conceptually similar as they share the distinctive element ‘CIELO’, which
plays and independent distinctive role within both marks, it is considered that the
differing elements included in both marks cannot counteract the similarities between
the signs so as to exclude a likelihood of confusion.
The relevant consumers may think that the similar goods come from the same or
from economically-related companies. Those consumers might focus on the element
‘CIELO’, when remembering the marks based on the imperfect recollection of them
and might consequently not notice the differences between them, or they might link
the trade marks based on the common distinctive element ‘CIELO’ and therefore
assume that the contested sign is a sub-brand of products connected to the earlier
It should be also 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.
In the present case and taking into account the interdependence principle, as stated
above, the contested sign must be rejected for the goods found to be similar to a low
degree to the goods of the earlier trade mark as the similarities between the signs
offset the low degree of similarity between the goods.
Therefore, the opposition is well founded on the basis of the opponent’s Italian trade
mark registration No 1 501 914. It follows that the contested trade mark must be
rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its extensive use as claimed by the opponent. The result
would be the same even if the earlier mark enjoyed an enhanced degree of
As the earlier right No 1 501 914 leads to the success of the opposition and to the
rejection of the contested trade mark for all the goods against which the opposition