OPPOSITION No B 1 740 771

Fürstlich Castell'sches Domänenamt Albrecht Fürst zu Castell-Castell, Schlossplatz 5, 97355 Castell, Germany (opponent), represented by WürtenbergerKunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative)

a g a i n s t

Castel Freres, 24, rue Georges Guynemer, 33290 Blanquefort, France (applicant), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative).

On 26/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 740 771 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all of the contested goods of European Union trade mark application No 9 098 823 for the word mark ‘CHATEAUX ET DOMAINES CASTEL’, namely against all the goods in Class 33. The opposition is, after the opponent requested a restriction of the extent of the opposition on 13/11/2017, only based on German trade mark registration No 305 23 023 for the word mark ‘SCHLOSS CASTELL’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

On 03/08/2016 the applicant requested that the opponent submit proof of use of the earlier marks on which the opposition was initially based, namely German trade mark registrations No 30 523 023 and No 2 092 484.

In the present case, the contested trade mark was published on 13/07/2010. Earlier German trade mark registration No 30 523 023 was registered on 22/09/2005. Therefore, the request for proof of use for this earlier right is inadmissible.

As regards the remaining earlier right that proof of use was requested for, namely German trade mark registration No 2 092 484, as mentioned above, on 13/11/2017 the opponent requested a restriction of the extent of the opposition by discontinuing to base the opposition upon German trade mark registration No 2 092 484. Therefore, the request for proof of use for said earlier mark is no longer valid.

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.

Preliminary remarks

The parties refer to several conflicts regarding their relationship and the rights to several marks, including the letters ‘CASTEL’, over the past years.

The Opposition Division points out that the intentions of the parties, including what seems like unsuccessful attempts on settlement agreements and the opponent’s alleged bad faith, or their previous and on-going conflicts (outside of these proceedings) as well as the opponent’s request of re-assessment of the contested sign under absolute grounds for registration, are all irrelevant under all of the grounds invoked in the present proceedings and, hence, have no bearing on this case.

a) 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: Still wines with registered designation of origin complying with the definition/conditions of use of the TTW ‘Chateau’.

The contested still wines with registered designation of origin complying with the definition/conditions of use of the TTW ‘Chateau’ are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

b)

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.

c) The signs

SCHLOSS CASTELL	CHATEAUX ET DOMAINES CASTEL
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is comprised of the German words ‘SCHLOSS’ and ‘CASTELL’. ‘SCHLOSS’ refers, inter alia, to estates that in English are referred to as ‘mansion’, ‘stately homes’ or ‘castle’. For wine, it will primarily be perceived as a common place/estate of wine production and is, therefore, non-distinctive. The word ‘CASTELL’ refers to the wine-producing municipality situated in the region of Franconia in Germany, known for its quality wine, and is also a protected geographical indication for wines in Germany (not on EU-level). For the relevant goods ‘CASTELL’ is considered as descriptive, as it merely refers to the geographical origin of the wines.

However, as the opponent rightfully points out in its observations, the earlier mark as a whole should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’, which the Office is not empowered to overturn. The Court made it clear in its judgment of 24/05/2012, C-196/11, F1-LIVE, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’.

In light of the foregoing, it is considered that the earlier mark, as a whole, is distinctive, albeit very weak.

The contested sign consists of the French verbal elements ‘CHATEAUX ET DOMAINES CASTEL’. Germany is the fourth biggest world market in terms of wine consumption, where the main suppliers of wine are Italy, France and Spain. The German consumers are therefore accustomed seeing a large number of trade marks for wine whose name begins with ‘Schloss’, ‘castello’, ‘château’, ‘castel’ or ‘castle’, see decision of the General Court 13/09/2013, T-320/10, CASTEL, § 75, confirmed in decision 30/04/2018, C-622/13 P.

Consequently, it is highly plausible that the relevant public will understand the word ‘CHATEAUX’ as ‘castles’, ‘grand houses of nobility’ or ‘manor houses’, also taking into account that the contested goods are still wines with registered designation of origin complying with the definition/conditions of use of the TTW ‘Chateau’. According to the database E-Bacchus, the traditional wine term ‘château’ relates to the wine-making undertaking in France, Italy and Luxembourg, in case the grapes originate exclusively from it and the wine-making is carried out in the same undertaking.

The word ‘DOMAINES’ is plural for ‘domaine’, which also in German refers to a winery in France that produces wine from its own grapes (information extracted from Duden on https://www.duden.de/rechtschreibung/Domaine on 15/03/2019). There also exists another close equivalent in German, namely ‘domäne’, which is synonymous to ‘Landgut’ and refers more generally to an estate. The word ‘ET’ is a basic French word and will be perceived as the conjunction meaning ‘and’.

As regards the word ‘CASTEL’ of the contested sign, it is French for a small castle and the word as such does not exist in German. However, the equivalent for castle in German is ‘kastell’ and as referred to above, ‘castel’ is a term that Germans are accustomed to see on wine. Therefore, it is likely that the relevant public will understand the meaning of the term as ‘castle’. Although the applicant argues that it refers to the French surname ‘Castel’, which is also the surname of the applicant, it is not likely that a German consumer is aware of such meaning.

Furthermore, the opponent argues in its observations that the element ‘CASTEL’ of the contested sign will in fact be perceived as the wine-region ‘CASTELL’ in Franconia of Germany, and refers in this matter to the decision of the General Court in 13/09/2013, T-320/10, CASTEL. This was a case of invalidity proceedings for the cancellation of the word mark ‘CASTEL’ based on absolute grounds for refusal. The Court found that ‘CASTEL’ indeed is descriptive for alcoholic beverages (except beers in Class 33 as it would be perceived by the German part of the relevant public as the geographical indication ‘CASTELL’ in Germany. Nevertheless, there are factual differences between the case assessed by the General Court and the present case, which justifies a different outcome on the perception of ‘CASTEL’.

While the Court assessed the verbal element ‘CASTEL’ on its own for a broad category of alcoholic beverages, which encompassed German wine, these factors differ in the case at issue. In the present case, the element ‘CASTEL’ of the contested sign is preceded by three French terms. In addition, the contested goods are also limited to still wines that comply with the definition/conditions of use of the TTW (traditional terms for wines) ‘Chateau’, which as mentioned above only relates to wine from France, Italy and Luxembourg. Therefore, since the contested goods are wines that do not originate from Germany, the German consumer will not perceive ‘CASTEL’ as the German wine-producing region ‘Castell’, but rather as a general estate ‘castle’.

The verbal elements of the contested sign are different words that refer to estates of wine production and are, therefore, non-distinctive for the goods at issue. However, the contested sign as a whole, given the combination of the verbal elements, does indeed reach a minimum degree of distinctiveness.

Visually, the signs have quite different structures and lengths, as the earlier mark is composed of two words, ‘SCHLOSS CASTELL’, while the contested sign comprises four words, ‘CHATEAUX ET DOMAINES CASTEL’. The only coincidence between the signs is the letters ‘CASTEL’, which is the last word of the contested sign and part of the last word of the earlier mark. Furthermore, this coinciding element is in fact non-distinctive, as elaborated above.

Therefore, the sign are considered visually similar to at best a low degree.

Aurally, the earlier mark has three syllables, ‘SCHLOSS/CA/STELL’, while the contested sign comprises seven syllables, ‘CHA/TEAUX/ET/DO/MAINES/CA/STEL’. Apart from nearly coinciding in the sound of their last two syllables, they differ in the remaining. However, even in their last two syllables, ‘CA/STELL’ and ‘CA/STEL’, there is a slight aural difference between them with regard to the letter ‘E’, which is a bit shorter in the word ‘CASTELL’ than in ‘CASTEL’.

Consequently, the signs are considered aurally similar to at best a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. On one hand the earlier mark evokes associations to a castle and the wine-producing region Castell in Germany, while on the other hand the contested sign evokes associations to various castles, mansions and wine estates. Although, the words of the signs appear in two different languages, respectively German and French, they do share certain conceptual similarities to the extent that both marks refer to various estates where wine-production commonly is carried out.

However, it must be taking into account that this similar concept of various wine estates is non-distinctive for the relevant goods; as such the concept cannot indicate the commercial origin. Therefore, the signs are conceptually similar to at best 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.

d) 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as very weak for all of the goods in question.

e) 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, § 16, EU:C:1998:442, § 29).

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 goods are identical and the relevant public consists of the public at large in Germany, who will have an average degree of attentiveness. The earlier mark, as a whole, enjoys a very limited degree of inherent distinctiveness.

Visually, aurally and conceptually, the signs are rendered similar to at best a low degree, due to the coinciding letters ‘CASTEL’. On the other hand, they display clear differences due to their different structures and lengths. Although the differing verbal elements have been found non-distinctive, they do indeed still have a certain degree of impact, albeit very limited, and cannot be totally ignored when assessing the overall impressions given by the signs at issue. In this particular case, they are considered sufficient to outweigh the similarities, since the similarities in fact also lies in elements that cannot be deemed more distinctive than the dissimilarities. Therefore, it is of the Opposition Division’s view that the differences between the signs are sufficient to exclude any likelihood of confusion between the marks, despite the fact that the goods are identical.

Considering all the above, even taking into account that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 21/10/2010 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/02/2011.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must also be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Martin EBERL

Tu Nhi VAN

Renata COTTRELL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.