OPPOSITION No B 2 267 493

Hess Family Estates AG, Steinhölzli, 3097 Liebefeld – Berna, Switzerland (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Pugliese Angelo Raffaele, Via Don Minzoni 38, 20091 Bresso, Italy (applicant).

On 23/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 267 493 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 962 115. The opposition is based international trade mark registration No 1 047 454 designating the European Union. 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 33: Wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beers); brandy spirits; peppermint liqueurs; rice alcohol; spirits [beverages]; bitters; anise [liqueur]; anisette [liqueur]; aperitifs; arak [arrack]; alcoholic beverages, except beer; alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; distilled beverages; cocktails; curacao; digesters [liqueurs and spirits]; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic; gin; hydromel [mead]; kirsch; liqueurs; nira [sugarcane-based alcoholic beverage]; rum; sake; cider; perry; piquette; wine; vodka; whisky.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large. The degree of attention is average.

3. The signs

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 earlier mark is a figurative mark. It contains a black and white spiral of a continuous thick line, and four circles, opening to the right and ending in a thinner line. The mark has no element that is more distinctive or dominant (visually eye-catching) than others.

The contested sign is a figurative mark. It contains a spiral of non-continuous, uneven and partly faded line, of three circles, opening to the left. At the end of the line is a highly stylised depiction of a rhomb, or a star. The word elements STELLA POLARE, in a stylised typeface are placed underneath the spiral element. These words mean ‘North Star or Polar Star’ in Italian. The mark has no element that could be considered more dominant (visually eye-catching), as all elements have an impact, or distinctive than other elements.

Visually, the signs coincide in that they both contain a circular line forming a spiral. However, they differ in the characteristics of that element, as explained above. The marks also differ in the word elements and the star device element of the contested mark, which are not present 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).

Therefore, the signs are visually similar to a low degree.

Aurally, it is noted that purely figurative signs, such as the earlier mark, are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, the public in the relevant territory will perceive both signs as containing a spiral line and there is a conceptual similarity to an average degree in that respect.

The additional elements, such as the word elements, understood by the Italian-speaking public, and a stylised image of a star, both in the contested sign, lead however to a conceptual difference of the marks to that extent.

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

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods 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.

The contested goods have been assumed to be identical to the opponent’s goods, and the level of attention is average. The visual, aural and conceptual aspects of the marks have been discussed above, in a very detailed manner, in section c).

The marks present important differences. In fact, the shapes of all the individual elements and their orientation, as well as their configuration together with the verbal elements included in the contested sign, are different. No enhanced distinctiveness of the earlier mark has been claimed by the opponent.

The differences are sufficient to exclude any likelihood of confusion between the marks, bearing in mind that the figurative element of the contested sign, which is the element that was found similar to a low degree with the earlier mark, is not more eye-catching than the verbal element of that sign and that the distinctive verbal element of the contested sing will have a stronger impact on the consumers than the figurative element. This is because, as mentioned, the public does not tend to analyse signs and will more easily refer to the sign in question by their verbal element than by describing their figurative elements.

Therefore, taking into account all the relevant circumstances of the case, and assuming that the goods are identical, the Opposition Division concludes that the dissimilarities between the marks at issue are so striking that they will enable the targeted public to avoid any likelihood of confusion.

Therefore, the opposition must be rejected.

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 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Justyna GBYL

Erkki Münter

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.