OPPOSITION No B 2 464 397

Davide Campari - Milano S.P.A., Via Franco Sacchetti, 20, 20099 Sesto San Giovanni (Milan), Italy (opponent), represented by Notarbartolo & Gervasi, Via Luigi Mercantini 5, 10121 Turin, Italy (professional representative)

a g a i n s t

Colmado Casa Lola S.L., C/ Don Juan de Aragon 14, 50001 Zaragoza, Spain (applicant), represented by Jesús Learte Alvarez, Las Damas 17, Pral. Centro 50008 Zaragoza, Spain (professional representative).

On 23/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 464 397 is partially upheld, namely for the following contested goods

Class 29: Egg products; dairy products and dairy substitutes

Class 32: Non-alcoholic beverages; beer and brewery products; preparations for making beverages.

Class 33: Alcoholic beverages (except beer).

2. Community trade mark application No 13 356 613 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 356 613. The opposition is based on, inter alia, Community trade mark registration No 9 799 231. The opponent invoked Article 8(1)(b) and 8(5) CTMR in respect of this earlier mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Community trade mark registration No 9 799 231.

1. The goods

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

Class 32: Beers; beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 29: Edible oils; meats; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs and egg products; fish, seafood and molluscs; dairy products and dairy substitutes.

Class 32: Non-alcoholic beverages; beer and brewery products; preparations for making beverages.

Class 33: Alcoholic beverages (except beer).

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 29

The contested dairy products and dairy substitutes which can contain drinks based on milk and milk substitute drinks are similar to other non-alcoholic drinks in Class 32 of the earlier mark as they have the same purpose. They can coincide in end user and distribution channels. Furthermore they are in competition.

Similarly, the contested egg products which contain drinks based on egg are similar to other non-alcoholic drinks in Class 32 of the earlier mark as they have the same purpose. They can coincide in end user and distribution channels. Furthermore they are in competition.

The contested edible oils; meats; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs; fish, seafood and molluscs are foodstuffs for consumption or for improving the flavour of food. They have a different nature and purpose to the alcoholic and non-alcoholic drinks of the earlier mark in Classes 32 and 33. It is true that some of these goods may be consumed together with the drinks of the opponent and that the opponent’s drinks may be included in some of the applicant’s goods. However, this does not make these goods similar. They have a different nature and purpose. They satisfy different consumer needs and are not in competition. Thus these goods are dissimilar.

Contested goods in Class 32

The contested beer and brewery products are identical to beers of the earlier mark.

The applicant’s non-alcoholic beverages are identical to other non-alcoholic drinks, albeit in a slightly different wording.

The contested preparations for making beverages are highly similar to other non-alcoholic drinks in Class 32 of the earlier mark as they have the same purpose. They can coincide in end user and distribution channels. Furthermore, they are in competition.

Contested goods in Class 33

Alcoholic beverages (except beer) are identically covered by the earlier mark in Class 33.

2. The signs

APEROL
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 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 Italian-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the letters ‘APER’ and also in the letter ‘L’ although in a different position in the marks. However, they differ in the letter ‘O’ of the earlier sign and the letters ‘it’ at the end of the contested sign. They also differ in the apostrophe, stylisation of the letters and the device of a square in the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘APER’ and the letter ‘L’ present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letter ‛O’ of the earlier sign and in the sound of the letters ’it’ of the contested sign, which have no counterpart in the opposite mark.

Conceptually, neither of the signs as a whole has a meaning for the public in the relevant territory. It is not considered that the public will artificially extract ‘APER’ from the earlier sign and in any case neither it nor ‘APERIT’ of the contested sign will be understood as ‘aperitif’, as suggested by the applicant, as these are not common abbreviations.

The letter ’L’ followed by an apostrophe in the contested sign will be seen as the commonly used definite article which, in Italian, is in this form before a feminine word starting with a vowel.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements.

The element ‘L’ of the contested sign will be associated with the definite article in its form before a feminine word starting with a vowel. The public understands the meaning of the element and will not pay as much attention to this non‑distinctive element as to the other letters of the mark. Consequently, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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.

According to the opponent, the earlier trade mark has a reputation in Italy in connection with part of the goods for which it is registered, namely alcoholic beverages (except beers). This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 18).

The opponent submitted, in particular, the following evidence:

An extract from the website of the opponent explaining the different steps of the development of the trade mark spread over different periods, namely 1919-1930, 1950-1960, 1980-1990, 2000-2008, 2009-2011 and 2012-2013.

2. Documents to prove sponsoring and advertising campaigns. According to the opponent, 1 550 announcements on the radio, 9 150 appearances on television have been launched, and more than 400 events have been sponsored. Moreover, the opponent stated that he has made an intensive communication campaign on the worldwide well-known airline RYANAIR.

3. Screenshot extracted from a video showing that the brand Aperol Spritz has 33 652 ‘likes’ on the social network ‘Facebook’.

4. Screenshot extracted from a video showing that 14 000 visitors were on the website related to the promotion of the brand Aperol Spritz.

5. Screenshot extracted from a video showing that ‘Aperol Spritz’ is the first cocktail in Italy. Moreover, according to the evidence provided, the brand awareness reaches 80%.

6. A collection of historical posters created over the course of the years (namely from 1989 to 1993) by the famous Italian artist/cartoonist Lorenzo Mattotti with the goal of celebrating the renown of the APEROL brand.

7. Pictures showing that ‘APEROL’ became the sponsor of the MOTO GP World Championship. It is possible to see ‘APEROL’ on the advertising panels around the raceway and behind the podium.

8. Screenshot of the website of the opponent, showing that the opponent has launched derivative products.

9. An article stating that in 2012, 2 657 people joined in the social spirit of Aperol Spritz, which was a world record according to the Guinness World Records.

10. A screenshot from the website of the Manchester United football team announcing the Official Global Spirits Partner between the opponent and the team.

11. Invoices divided according to year. Five bills to Italian companies are provided for each year from 2011 to 2014.

12. Annual sales data report for ‘APEROL’ between 2000 and 2013 according to the IWSR which is an institute provident database on the alcoholic beverage market. The table confirms the intense presence of the brand on the market and moreover, the increase of the amount each year.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Italy for all the goods for which the opponent has claimed reputation.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, the advertising campaign and the partnership in sponsoring famous events like the MOTO GP World Championship and the football team of Manchester United are relevant indications. Moreover, the fact that an independent organisation referenced the amount of sales indicates the continuous growth of the opponent’s turnover and contributes to confirming its success. Therefore, taken as a whole, the evidence provided unequivocally show that the mark enjoys a high degree of recognition among the relevant public. Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market.

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

6. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar to different degrees and partly dissimilar.

The signs are visually and aurally similar to the extent that they have in common the sequence of letters ‘A-P-E-R’ and the letter ‘L’. They differ in their additional letters, namely the letter ‘O’ in the earlier mark and the letters ‘I’ and ‘T’ of the contested sign. They also differ in the apostrophe and the device of a square of the contested sign.

When signs consist of both word and figurative components, the principle has been established that the word component of the sign usually has a stronger impact on consumers than the figurative component. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component. Thus, in the present case, the parts of the marks that have the most impact on the consumer are the verbal elements ‘APEROL’ and ‘L’APERIT’.

‘L’ of the contested sign has been found to be non-distinctive. Thus the first four letters of the earlier mark are identical to the first four letters of the more distinctive part of the contested sign to which the consumer will pay more attention.

The earlier mark enjoys enhanced distinctiveness.

It should also be recalled that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).

Considering all the above, there is a likelihood of confusion on the part of the Italian -speaking part of the public. As stated above in section b) 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 partially well founded on the basis of the opponent’s Community trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• Community trade mark registration No 10 163 574,

• Community trade mark registration No 8 416 679, ‘APEROL SPRITZ’

• Community trade mark registration No 9 468 273 .

These earlier rights, invoked by the opponent are less similar to the contested mark as they contains additional figurative elements and colours and or the additional word ‘SPRITZ’ which are not present in the contested trade mark. Moreover, they cover the same scope of the goods except for syrups and other preparations for making beverages of CTM 8 416 679 which are dissimilar to the remaining goods of the earlier mark, namely edible oils; meats; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs; fish, seafood and molluscs, having a different purpose, method of use and different end users. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

The Opposition Division will now examine the opposition under Article 8(5) in respect of the remaining goods of the application, namely edible oils; meats; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs; fish, seafood and molluscs.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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.

Therefore, the grounds of refusal of Article 8(5) CTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) CTMR. Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) CTMR. Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed for alcoholic beverages (except beers) and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) CTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, ‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

It should further be noted that, for the purposes of Article 8(5) CTMR, it is not necessary to show that the goods and services covered by the conflicting marks are identical or similar, although this article does not exclude identity or similarity between the disputing goods and services either. Nevertheless, a misappropriation of the distinctiveness of the earlier mark presupposes an association between the marks that renders possible the transfer of attractiveness to the application’s sign. The existence of such a link between the signs must be assessed globally, taking into account all factors relevant to the circumstances of the case (see judgement of 23/10/2003, C-408/01, ‘Adidas’, paragraph 30).

Those factors include the degree of similarity between the conflicting marks, the nature of the goods and services for which these marks are registered, including the degree of closeness or dissimilarity between those goods and services, the relevant section of the public, the strength of the earlier mark’s reputation, the degree of the earlier mark’s distinctive character and the existence of the likelihood of confusion (see judgment of 27/11/2008, C-252/07, ‘Intel’, paragraph 42).

It is apparent from the above that the fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark to mind is tantamount to the existence of such a link between the marks in conflict. The existence or lack of the other factors does not necessarily imply the existence of such a link but does not exclude one either (‘Intel’, loc. cit., paragraphs 60–61).

The Opposition Division notes that an association between the marks is more likely where there is a special connection between the goods covered by the conflicting signs.

As mentioned above, the signs are aurally and visually similar. The reputation of the earlier mark has been proven for alcoholic beverages (except beers).

The contested goods are edible oils; meats; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs; fish, seafood and molluscs.

The relevant public for alcoholic beverages overlaps with that of the contested goods because the goods at issue are both targeted at the public at large.

However, as the Court has stated ‘even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public’ (‘Intel’, loc. cit., paragraph 49).

The rest of the factors suggest that no link will be made. The goods are dissimilar and although they are all for human consumption, as pointed out by the opponent they are produced through different processes and industries and involving different expertise. It is not usual for producers of alcoholic drinks to also produce foodstuffs and although they can all be bought in supermarkets, they are always in separate areas. The fact that these goods can be used together does not automatically mean that the consumer will make a link between the signs at issue.

Thus, while the relevant section of the public for the goods covered by the conflicting marks is the same or overlaps to some extent, those goods are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) CTMR and must be rejected insofar as this ground is concerned.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Richard BIANCHI

Deirdre QUINN

Pedro JURADO MONTEJANO

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.