EPIKUUR | Decision 2689712 - FEMAR VINI S.R.L. v. OSCAR ONDOÑO ELVIRA
Date Published: Oct 11, 2017
OPPOSITION No B 2 689 712
Femar Vini s.r.l., Via Fontana della Girandola, 4, 00040 Monte Porzio Catone (RM), Italy (opponent), represented by Akran Intellectual Property SRL, Via del Tritone 169, 00187 Rome, Italy (professional representative)
a g a i n s t
José Francisco Navarro Conejero, C/ Monte de Santa Pola 10 BW 313, 03130 Alicante, Spain, Oscar Ondoño Elvira, C/ Infante Don Manuel Nº 12 3º Centro, 03203 Elche Alicante, Spain (applicants), represented by Alberto Paz Espuche, Agilmark Patentes & Marcas, SL, Parque Cientifico de la Universidad Miguel Hernández de Elche, Avda de la Universidad, s/n, Edific Quórum IV, 03202 Elche (Alicante), Spain (professional representative).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 2 689 712 is upheld for all the contested goods, namely:
Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic beverages.
2. European Union trade mark application No 14 822 597 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicants bear the costs, fixed at EUR 620.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 822 597, namely against all the goods in Class 33. The opposition is based on, inter alia, European Union trade mark registration No 8 300 469. 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 European Union trade mark registration No 8 300 469.
- The goods
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beers).
The contested goods are the following:
Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages.
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.
Contested goods in Class 33
Alcoholic beverages (except beer) are identically contained in both lists of goods.
The contested preparations for making alcoholic beverages refer to alcoholic essences, alcoholic extracts and alcoholic fruit extracts, which are used, for example, in preparing cocktails. These goods are similar to a low degree to the opponent’s alcoholic beverages (except beers), as they target the same public, have the same distribution channels and are likely to be produced by the same undertakings.
- 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 or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise in relation to production of alcoholic beverages. The degree of attention will be average.
- The signs
Earlier trade mark
The relevant territory is the European Union.
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).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The pronunciation of the verbal elements is more similar in some territories, for example in those countries where the letter ‘C’ is pronounced as ‘K’, than in other parts of the European Union. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.
The contested sign is the word mark ‘EPIKUUR’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.
The earlier mark is a figurative mark consisting of the verbal element ‘EPICURO’ in standard white lower case letters at the bottom of a black quadrilateral and a thin white line, resembling a rhombus, in the centre of the quadrilateral. Above this element, there is a stylised figure of a man in armour or a knight riding a horse between two white thin triangles, inside a black hexagon. Between these two shapes there is a white concave polygon.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to determine the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin.
The verbal element ‘EPICURO’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
The contested sign ‘EPIKUUR’ has no meaning in the language of the relevant territory. However, it cannot be excluded that at least some German-speaking consumers who are familiar with Greek philosophy will understand the contested sign as referring to the ancient Greek philosopher Epicurus, since it is very close to the equivalent word in the official language in the relevant territory, ‘Epikur’. Irrespective of the different perceptions of the relevant public, the contested sign is distinctive, as it is not descriptive, allusive or otherwise weak for the relevant goods.
The figurative element of the earlier mark, namely the stylised figure of a man in armour or a knight riding a horse, will be perceived by the relevant public as such. This element has no meaning for the goods in question and has a normal degree of distinctiveness. The rest of the figurative features of the earlier mark, such as the black quadrilateral, the white triangles and the white concave polygon, perform a purely decorative function within the mark and, therefore, are considered less distinctive than the other elements, which have a normal degree of distinctiveness.
Visually, the signs coincide in the letters ‘EPI*UR’, present in both marks. However, they differ in the fourth letter of the marks, that is, the letter ‘C’ of the earlier mark versus the letter ‘K’ of the contested sign, the additional fifth letter, ‘U’, of the contested sign and the final letter, ‘O’, of the earlier mark. In addition, they differ in the figurative elements of the earlier sign.
The fact that the signs under comparison have their initial three-letter sequence in common is of particular importance given 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.
As regards the figurative elements in the earlier mark, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This principle is fully applicable to the present case, as the relevant public will clearly read and pronounce the verbal element ‘EPICURO’ in the earlier sign and will readily use it to refer to the mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘EPIC/KUR*’, present in both signs. The second consonant, ‘C’, of the earlier mark is pronounced as ‘K’ in the language of the relevant territory and the penultimate letter, ‘U’, of the contested sign is a simple repetition of the fifth letter, which will not differentiate the pronunciation. The pronunciation differs only in the sound of the final letter ‘O’ of the earlier mark, which has no counterpart in the contested sign. The figurative elements are not subject to a phonetic assessment.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks in the perception of the relevant public.
As seen above, although the verbal components of the signs do not have any meaning for a part of the public in the relevant territory, the figurative element included in the earlier sign will be perceived as such, that is, as a man in armour or a knight riding a horse. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
The same conclusion can be reached with regard to those German-speaking consumers for whom the sole verbal element of the contested sign, ‘EPIKUUR’, alludes to the concept of the ancient Greek philosopher Epicurus, and the earlier sign conveys the meaning of a man in armour or a knight riding a horse. Therefore, as the earlier mark and the contested sign will be perceived as having different meanings, the signs are not conceptually similar for this part of the relevant public.
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
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks 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 marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 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).
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 covered are from the same or economically linked undertakings.
The goods under comparison are identical or similar to a low degree and the inherent distinctiveness of the earlier mark is normal. The degree of attention of the relevant public is average.
The signs are visually similar to an average degree, aurally highly similar and conceptually not similar.
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 alcoholic beverage market, consumers usually describe and recognise alcoholic beverages, such as wine, by reference to the verbal element that identifies them, particularly in bars and restaurants, where for instance 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.
The Opposition Division notes that the signs are not conceptually similar due to the figurative element of the earlier mark. As explained above in section c) of this decision, 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. It must be added that the stylisation of the earlier mark is not sufficiently striking to obscure or camouflage the verbal element of the sign. Therefore, it is considered that the strong aural and visual similarities between the marks are sufficient to counteract the differences between them.
Considering all the above and also bearing in mind that average consumers rarely have the chance to make a direct comparison between marks, but must trust in their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 300 469. It follows that the contested trade mark must be rejected for all the contested goods.
As the abovementioned earlier trade mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicants are the losing party, they 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.