OPPOSITION No B 2 496 092

Miguel Torres S.A., Miquel Torres i Carbó, 6, 08720 Vilafranca del Penedès (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

TSI GmbH & Co. KG, Südring 26, 27404 Zeven, Germany (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Hollerallee 73, 28209 Bremen, Germany (professional representative).

On 29/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 496 092 is upheld for all the contested goods and services, namely:

Class 33: Alcoholic beverages (except beers); wine; spirits [beverages]; liqueurs; alcoholic instant beverages, alcoholic fruit drinks; alcoholic essences.

Class 35: Retailing, wholesaling, wholesale customer services and/or online mail order in the fields of alcoholic beverages.

2. European Union trade mark application No 13 357 611 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 357 611, namely against all the goods and services in Classes 33 and 35. The opposition is based on Spanish trade mark registration No 2 690 480 ‘ALQUIMIA’ and international trade mark registration No 1 033 174 ‘ALQUIMIA’ designating the United Kingdom, Ireland, Cyprus, Austria, Denmark, Estonia and Benelux. 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.

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 international trade mark registration No 1 033 174 designating the United Kingdom and Ireland.

1. The goods and services

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

Class 33: Alcoholic beverages (except beers).

The contested goods and services are the following:

Class 33: Alcoholic beverages (except beers); wine; spirits [beverages]; liqueurs; alcoholic instant beverages, alcoholic fruit drinks; alcoholic essences.

Class 35: Retailing, wholesaling, wholesale customer services and/or online mail order in the fields of alcoholic beverages.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 33

Alcoholic beverages (except beers) are identically contained in both lists of goods.

The contested wine; spirits [beverages]; liqueurs; alcoholic instant beverages, alcoholic fruit drinks are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

The contested alcoholic essences are similar to a low degree to the opponent´s goods, as the goods in comparison can coincide in producer, relevant public and distribution channels.

Contested services in Class 35

The contested services in Class 35, namely retailing, wholesaling, wholesale customer services and/or online mail order in the fields of alcoholic beverages, are services consisting of activities around the actual sale of all kinds of alcoholic beverages. The opponent´s goods cover alcoholic beverages, apart from beers.

Services consisting of activities around the actual sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing, wholesaling, wholesale customer services and/or online mail order in the fields of alcoholic beverages are similar to a low degree to the opponent’s alcoholic beverages (except beers).

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 and services found to be identical and similar to a low degree are directed at the public at large, but also at some business customers, such as bar (restaurant) owners and/or retailers. The degree of attention is considered to be average.

3. The signs

ALQUIMIA	ALKIM
Earlier trade mark	Contested sign

The relevant territories are the United Kingdom and Ireland.

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).

Both signs are word marks; the earlier mark consists of the element ´ALQUIMIA´ and the contested sign consists of the element ´ALKIM´. Although the earlier mark has no meaning for the public in the relevant territories, it could be perceived by a part of the relevant public as a reference to the English word ´alchemy´ in the meaning of ´the pseudoscientific predecessor of chemistry that sought a method of transmuting base metals into gold, an elixir to prolong life indefinitely, a panacea or universal remedy, and an alkahest or universal solvent´ (see http://dictionary.reverso.net/english-definition/alchemy). Given that at most there is an allusive, fanciful quality the term is distinctive in relation to the relevant goods.

The applicant argues that the contested sign will be understood as a Turkish forename with the meaning of ‘rainbow’. In support of its argument, the applicant encloses two pages, one in German (claimed to be an article from ‘Wikipedia’) and its English translation, containing information about the word ‘Alkim’.

However, Wikipedia entries cannot be considered a reliable source of information, as they can be amended by Wikipedia’s users. Furthermore, the submitted entry is in German and it refers to a Turkish name. As the term ´ALKIM´ in the contested sign is not a meaningful word in the languages of the relevant territories, and in the absence of any evidence that consumers in the relevant territories will perceive the contested sign as referring to a specific name or the word ‘rainbow’, the applicant’s argument must be rejected. It is, therefore, considered that the contested sign has no meaning for the public in the relevant territories and is therefore distinctive.

Visually, the signs coincide in the letters ‘A’, ‘L’, ‘I’ and ‘M’, present as ´AL**IM**´ in the earlier mark and ‘AL*IM’ in the contested sign. The signs differ in their third letters, namely ‘Q’ of the earlier mark against ‘K’ in the contested sign, as well as in the fourth, seventh and eight letters of the earlier mark, namely ‘U’, ‘I’ and ‘A’, which have no counterparts in the contested sign. Furthermore, the signs differ in the number of letters they consist of, namely eight in the earlier mark against five in the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sounds of the sequence of letters ‘ALQUIM’ in the earlier mark and ‘ALKIM’ of the contested sign, as they will be pronounced the same way by the public in the relevant territories. The pronunciation differs in the sounds of the last two letters, namely ‘I-A’ of the earlier mark, which have no counterparts in the contested sign.

It follows that the signs in comparison are aurally similar at least to an average degree.

Conceptually, while part of the public in the relevant territories may perceive the earlier mark as a reference to ‘alchemy’ in the meaning specified above, the other sign lacks any meaning in these territories. For this part of the public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For part of the public, neither of the signs will have a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

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 territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods and services have been found to be partly identical and partly similar to a low degree to the opponent’s goods. The level of attention when choosing the relevant goods and services would be average.

The signs are found to be visually similar to a low degree and aurally similar to at least an average degree, the latter is due to the coinciding pronunciation of the sequences ‘ALQUIM’ in the earlier mark and ‘ALKIM’ of the contested sign.

As has been held by the Court of Justice in its judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik (EU:C:1999:323), mere aural similarity between marks may create a likelihood of confusion. Similarity on an aural level may be highly relevant when the goods are traditionally ordered orally, which is often the case for the goods in question. Where goods are ordered orally, the aural perception of the sign may also be influenced by factors such as the presence of various other sounds perceived by the recipient at the time of purchase. Such considerations are relevant where the goods in question are normally ordered at sales points with an increased noise factor, such as bars or nightclubs (judgment of 15/01/2003, T-99/01, ‘Mystery’, § 48). This could also be the case when the relevant services are provided over the phone (or otherwise orally communicated). Therefore, the fact that the signs aurally coincide in the sounds of the sequence ‘ALQUIM’ in the earlier mark and the entire contested sign is of material importance when assessing the likelihood of confusion between them, as the difference in the sounds of the last two letters ‘I-A’ of the earlier mark is likely to remain undetected by the relevant consumer.

In addition, 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).

Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically-linked undertakings.

Therefore, the coincidence of the letters and sounds of the signs in comparison and their prominent positions in both signs is likely to lead the consumer to believe that the goods and services found to be identical or similar to a low degree come from the same undertaking or economically linked undertakings, even when the goods and services in question are not ordered (or otherwise communicated) orally.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well-founded on the basis of the opponent’s international trade mark registration No 1 033 174 designating the United Kingdom and Ireland.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to the goods of the earlier trade mark. Indeed, based on the principle of interdependence, whereby a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (judgment of 29/09/1998, C-39/97, ‘Canon’, para. 17), the similarities between the signs are more than sufficient, even for the goods and services found similar to a low degree.

As the earlier international trade mark registration No 1 033 174 designating the United Kingdom and Ireland leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Respectively, there is no need to examine the request for proof of use and the submitted evidence in regard to the earlier Spanish trade mark.

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

Vanessa PAGE

Eamonn KELLY

Volker MENSING

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.