FG BODEGAS FRANCISCO GOMEZ | Decision 2682907
Date Published: Oct 10, 2017
OPPOSITION No B 2 682 907
Larex AB, Blasieholmsgatan 4A, 111 48 Stockholm, Sweden (opponent), represented by Noréns Patentbyrå AB, Narvavägen 12, 115 22 Stockholm, Sweden (professional representative)
a g a i n s t
Francisco Gómez Hernández, Carcassonne 1, 03310 Jacarilla, Spain (applicant), represented by Clara Eugenia Martin Alvarez, Vicente Blasco Ibañez 43 entlo. drcha., 03201 Elche (Alicante), Spain (professional representative).
On 17/03/2017, the Opposition Division takes the following
1. Opposition No B 2 682 907 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against part of the goods and services of European Union trade mark application No 14 877 807, namely against all goods in Class 33. The opposition is based on European trade mark registration No 11 659 018. The opponent invoked Article 8(1)(a) and (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 the following:
Class 33: Alcoholic beverages (except beer).
The contested goods are the following:
Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages; wine.
The contested alcoholic beverages (except beer) are identically protected by both marks. Wine is included in the opponent’s broad category of alcoholic beverages (except beer) and is therefore identical.
The contested preparations for making alcoholic beverages are essences or extracts obtained by distillation or otherwise from a plant, or from a medicinal, odoriferous or alimentary substance, and containing its characteristic properties in a concentrated form, used to make beverages of an alcoholic nature. This is however not sufficient to find similarity with the opponent’s alcoholic beverages (except beer). The contested goods are mainly directed at manufacturers and used in the production process while the opponent’s alcoholic beverages are final products directed at the public at large. Indeed, they are distributed through different channels. They serve different needs and are not in competition with each other. Therefore, these goods are dissimilar.
- 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 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 element ‘FRANCISCO’ present in both marks will be associated by part of the relevant public, such as the Spanish-speaking, with a male name. ‘GOMEZ’ will also be associated by this part of the public with a surname. These elements are distinctive for the relevant goods. The element ‘BODEGAS’ is the Spanish word for ‘winery’ and is, therefore, weak for the relevant goods, which are all alcoholic beverages including wines, since it refers to the place of production. Furthermore, the figurative element representing a bunch of grapes is also weak for these goods.
Since the Spanish-speaking part of the public seems more prone to confusion in this case, the analysis below will be done considering firstly this part of the public. This is the best case scenario for the opponent.
Considering the above, for this part of the public the most distinctive elements in the contested mark are therefore the verbal elements ‘FRANCISCO GOMEZ’. The figurative element is dominant in the visual impression of the mark but, as explained above, it has a limited distinctiveness for the relevant goods and will not catch consumers’ attention. Moreover, the letters ‘FG’ appearing in small white letters on a black background within the figurative element are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.
Conceptually, although both marks refer to the same male name, ‘FRANCISCO’, the earlier mark due to the presence of the Roman number ‘I’ will be associated with a monarch, a pope or someone belonging to a dynasty. The contested mark will be perceived as referring to a winery belonging to a person named ‘FRANCISCO GOMEZ’.
Therefore, although the signs contain the same name, namely ‘FRANCISCO’, they will be perceived as referring to different persons. As a consequence, they are not similar conceptually.
Visually, the signs coincide in the verbal element ‘FRANCISCO’ present in both signs. However, they differ in all the remaining elements of the signs, ‘I’ in the earlier mark and the words ‘BODEGAS’ and ‘GOMEZ’ and the graphic and figurative elements in the contested mark.
Although some of these additional elements are weak, as explained above, the different length and layout of the marks is easily perceived visually and contributes to dilute the presence of the coinciding element ‘FRANCISCO’.
Therefore, the signs are similar only to a low degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘FRAN-CIS-CO’, present identically in both signs. The pronunciation differs in the sound of the element ‘I’ of the earlier mark, pronounced as ‘PRIMERO’ and the elements ‘BODEGAS’ and ‘GOMEZ’ of the contested sign. The different length will have an impact in the rhythm and intonation which are also different.
Therefore, the signs are similar to a low degree.
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. 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 (see Canon, § 16).
The goods are partially identical and partially dissimilar. The marks are similar to a low degree to the extent that they include the element ‘FRANCISCO’. However, the additional elements of the marks, especially the elements ‘I’ of the earlier mark and ‘GOMEZ’ of the contested mark, which are distinctive, contribute to diluting this coincidence. They also lead to a different conceptual perception of the marks.
In this regard, it must be noted that family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link). The fact that the element ‘FRANCISCO’ in the earlier mark is followed by a Roman number, whereas in the contested mark it is followed by the surname ‘GOMEZ’ is relevant to exclude any likelihood of confusion by the relevant public in this case. The marks clearly refer to different persons, and the fact that they coincide in the first name ‘FRANCISCO’, which is in addition a common first name under the analysed public, is not sufficient for the consumers to establish a link between the two marks.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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). In the present case, the identity for part of the goods is not sufficient to compensate the low similarity between the marks.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the part of the public for which the verbal elements of the marks are meaningless. This is because for this public, ‘BODEGAS’ would be normally distinctive and therefore that part of the public will perceive the signs as being even less similar.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
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
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.