OPPOSITION No B 2 256 660

Davinia Hardt-Brückmann, Havixbecker Straße 162, 48161 Münster, Germany (opponent), represented by Patentanwälte Dr. Keller, Schwertfeger, Westring 17, 76829 Landau, Germany (professional representative)

a g a i n s t

GMYL L.P., A Limited Partnership Legally Organised under the Laws of California, Comprising of Sentinel Corp., a Nevada Corporation as the General Partner, and Francis Ford Coppola, as Trustee of The Coppola Family Trust, as the Limited Partner, 916 Kearny Street, San Francisco, California 94133, United States of America (applicant), represented by Urquhart-Dykes & Lord LLP, The Podium, 1 Eversholt Street, London NW1 2DN, United Kingdom (professional representative).

On 07/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 256 660 is upheld for all the contested goods.

2. European Union trade mark application No 11 829 711 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 829 711. The opposition is based on European Union trade mark registration No 9 619 669. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 32: Non alcoholic drinks.

Class 33: Alcoholic beverages (except beers), in particular alcopops.

The contested goods are, after a limitation by the applicant on 22/12/2014, the following:

Class 33: Wine.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 33

The contested wine is included in the broad category of the opponent’s alcoholic beverages (except beers), in particular alcopops. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is average.

3. The signs

Dolce Vendetta	VENDETTA
Earlier trade mark	Contested sign

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is the word mark ‘Dolce Vendetta’. The contested sign is the word mark ‘VENDETTA’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

As both marks are word signs, they have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The word ‘VENDETTA’, which the signs under comparison have in common, will be understood as ‘a blood feud’. It has a normal degree of distinctiveness for the relevant goods in Class 33.

The word ‘Dolce’ of the earlier mark is meaningless for part of the relevant public, while another part of the relevant public will see it as a term used in music meaning ‘to be performed gently and sweetly’. It has a normal degree of distinctiveness for the relevant goods. Consequently, the earlier mark has no elements that are more distinctive than other elements.

As the contested sign is composed of a single verbal element, it has no elements that are more distinctive than others.

Visually, the signs are similar to the extent that they coincide in the distinctive word ‘VENDETTA’, since differences in the use of lower or upper case letters are immaterial. In contrast, they differ only in the word ‘Dolce’ of the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables /VEN/DET/TA/, present identically in the both signs. The pronunciation differs in the syllables /Dol/ce/ of the earlier mark, which have no counterparts in the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the statements made above regarding the meanings of the signs and the elements of which they are constituted.

The public in the relevant territory will perceive the distinctive word ‘VENDETTA’ in both signs as referring to ‘a blood feud’.

Part of the relevant public will also perceive the word ‘Dolce’ in the earlier mark as having the meaning mentioned above, and consequently the whole contested sign might be understood in the sense of ‘gentle vendetta’, ‘dolce’ being only a qualifier of the word ‘vendetta’, while another part of the relevant public will perceive it as meaningless.

As the signs will be associated by a substantial part of the relevant public with similar meanings on account of the element ‘VENDETTA’, the signs are conceptually similar to an average degree.

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 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, 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 (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). This is particularly relevant in the present case as the conflicting goods are identical.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The conflicting goods are identical. They target the public at large, which has an average degree of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the relevant goods.

The signs are visually, aurally and conceptually similar to an average degree due to the commonality in the word ‘VENDETTA’, which constitutes the entire contested sign and one element of the earlier trade mark.

While it is true that the initial part of word marks may be liable to attract the consumer’s attention more than the following parts (see, to that effect, 17/03/2004, T‑183/02 and T‑184/02, Mundicor, § 81; 16/03/2005, T‑112/03, Flexi Air, § 64 and 65), the difference at the beginning of the earlier mark is not enough to counteract the similarity arising from the presence in both of the distinctive word ‘VENDETTA’.

Furthermore, the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, it is conceivable that the relevant consumer will perceive the marks as variations of each other, configured in different ways according to the type of goods which they designate. It is, therefore, conceivable that the targeted public may regard the goods designated by the trade mark applied for as belonging to two ranges of goods coming, nonetheless, from the same undertaking.

In its observations, the applicant argues with the existence of a consent agreement between the parties, effective as of 06/11/2012. The applicant accuses the opponent of having filed the opposition in bad faith and in breach of the agreement. However, regarding agreements between the parties, when assessing likelihood of confusion the Office’s policy is that such agreements may be taken into account like any other relevant factor, but they are in no way binding on the Office. In the present case, the consent agreement submitted by the applicant refers to a dispute between the parties relating to a United States trade mark application and, as the terms and conditions contained therein are not clear and are subject to different interpretations, it cannot be taken into account in the present proceedings.

Taking into account the abovementioned similarities between the signs in question and the identity of the goods, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 9 619 669. It follows that the contested sign must be rejected for all the contested goods.

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 applicant is the losing party, it 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

Martin MITURA

Bekir GÜVEN

Saida CRABBE

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.