OPPOSITION No B 2 510 249

Felix Solis, S.L., Autovía de Andalucía Km. 199, 13300 Valdepeñas (Ciudad Real), Spain (opponent), represented by José María Sánchez Wolff, Avda/ Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

Annamaria Cillario, Corso Fratelli Bandiera, 13, 12051 Alba, Italy (applicant).

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

DECISION:

1. Opposition No B 2 510 249 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 13 428 222, namely against all the goods and services in Classes 29, 30, 32, 33 and 43. The opposition is based on the following earlier rights: international trade mark registration No 1 125 561 designating the European Union for the word mark ‘ALBALI’ and Spanish trade mark registrations No 1 090 169, No 1 090 170, No 876 608, No 780 722 and No 1 090 172 for the word marks ‘ALBALI’.  The opponent invoked Article 8(1)(b) CTMR.

SUBSTANTIATION – EARLIER INTERNATIONAL REGISTRATION NO 1 125 561

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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) CTMIR, the Office shall 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) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier international trade mark registration No 1 125 561 on which the opposition is based.

On 28/04/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 10/09/2015.

The opponent did not submit any evidence concerning the substantiation of the earlier international trade mark registration No 1 125 561.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on 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.

1. The goods and services

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

ES 1 090 169:

Class 29: Meat, fish, birds and game; Extracts of meat; Preserves, dried and cooked fruits and vegetables; Jams and jellies; Egg, milk and dairy products; Sauces for salads; Preserves.

ES 1 090 170:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; Flour and preparations made from cereals, bread, pastry and confectionery; Edible ices; Yeast, baking-powder; Yeast, banking-powder; Salt, mustard; Vinegar, sauces (except salad dressings); Spices; Ice.

ES 876 608:

Class 32: Non alcoholic beverages.

ES 780 722:

Class 33: Wines, spirits and liquor.

No 1 090 172:

Class 43: Bar, restaurants and hotel industry services. Services provided by enologists.

The contested goods and services are the following:

Class 29: Meats; Casseroles [food]; Onion rings; Blancmanges; Bombay mix; Stock; Soups; Stock [prepared]; Beef bouillon; Fish stock; Vegetable stock; Broth [soup]; Filled potato skins; Dairy puddings; Roast chestnuts; Corned beef hash; Chop suey; Chili con carne; Chilled foods consisting predominately of fish; Broth concentrates; Condensed tomatoes; Puffed pork rind; Croquettes; Fish crackers; Stock cubes; Soup cubes; Processed fruits, fungi and vegetables (including nuts and pulses); Fish, seafood and molluscs; Savory butters; Clarified butter; Concentrated butter; Butter for use in cooking; Coconut butter; Seed butters; Edible fats; Corn fats; Cooking fats; Vegetable fats for cooking; Beef fat; Fatty substances for the manufacture of edible fats; Fat-containing mixtures for bread slices; Edible oils; Edible oils for use in cooking foodstuffs; Edible oils for glazing foodstuffs; Linseed oils [edible]; Coconut oil and fat [for food]; Cooking oils; Chilli oil; Olive oil for food; Groundnut oil; Butter oil; Canola oil; Coconut oil; Dairy products and dairy substitutes.

Class 30: Coffee, teas and cocoa and substitutes therefor; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice cream drinks; Ice beverages with a cocoa base; Ice beverages with a coffee base; Ice beverages with a chocolate base; Frozen yogurt confections; Ice confectionery; Iced confectionery (Non-medicated -); Ice cream confectionery; Confectionery ices; Frozen custards; Ice cubes; Ice cream desserts; Ice-cream cakes; Edible fruit ices; Dairy ice cream; Soya based ice cream products; Ice creams containing chocolate; Ice cream with fruit; Ice creams flavoured with chocolate; Ice cream mixes; Non-dairy ice cream; Yoghurt based ice cream [ice cream predominating]; Fruit ices; Ices and ice; Ice cream stick bars; Prepared savory foodstuffs made from potato flour; Prepared foodstuffs in the form of sauces; Filled baguettes; Chocolate-based ready-to-eat food bars; Pizza crusts; Pre-baked pizzas crusts; Rice biscuits; Calzones; Burritos; Chalupas; Cheeseburgers [sandwiches]; Corn kernels being toasted; Chimichanga; Tortilla chips; Chow mein; Pretzels; Prawn crackers; Rice crackers; Crackers flavoured with cheese; Rice crackers [senbei]; Crackers filled with cheese; Pellet-shaped rice crackers (arare); Crackers made of prepared cereals; Crackers flavoured with meat; Crackers flavoured with spices; Cereal bars and energy bars; Sweets (candy), candy bars and chewing gum; Bread; Pastries, cakes, tarts and biscuits (cookies); Foods with a cocoa base; Foodstuffs containing cocoa [as the main constituent]; Foodstuffs containing chocolate [as the main constituent]; Chocolate flavourings; Chocolate coated nougat bars; Salted wafer biscuits; Jam buns; Rice puddings containing sultanas and nutmeg; Ready-to-eat puddings; Rice-based pudding dessert; Semolina pudding; Candy; Confectionery made of sugar; Liquorice flavoured confectionery; Panned sweets (Non-medicated -); Sugar-coated coffee beans; Butterscotch chips; Waffles; Chocolate waffles; Waffles with a chocolate coating; Chocolates; Savory sauces, chutneys and pastes; Beer vinegar; Achar pachranga (fruit pickle); Sea water for cooking; Synthetic thickeners for foodstuffs; Vegetable thickeners; Powdered garlic; Minced garlic; Angelica; Aniseed; Star aniseed; Vanilla flavorings; Flavourings made from lobsters; Flavourings made from meat; Flavourings made from fruits; Flavourings made from fruits [other than essential oils]; Flavourings made from shrimps; Flavourings made from snails; Flavourings made from vegetables [other than essential oils].

Class 32: Preparations for making beverages; Waters; Flavoured carbonated beverages; Juices; Milk (Peanut -) [non-alcoholic beverage]; Almonds (Milk of -) [beverage]; Lemon barley water; Orange barley water; Quinine water; Aperitifs, non-alcoholic; Whey beverages; Guarana drinks; Non-alcoholic malt free beverages [other than for medical use]; Beverages containing vitamins; Aloe vera drinks, non-alcoholic; Energy drinks; Energy drinks containing caffeine; Energy drinks [not for medical purposes]; Isotonic drinks; Isotonic beverages [not for medical purposes]; Sports drinks; Non-alcoholic honey-based beverages; Cocktails, non-alcoholic; Smoothies; Part frozen slush drinks; Sarsaparilla [non-alcoholic beverage]; Sherbets [beverages]; Beer and brewery products; Low alcohol beer; Non-alcoholic beer; Coffee-flavored beer; Lagers; Wheat beer; Malt beer; Beers enriched with minerals; Beers; Beer-based cocktails; Kvass [non-alcoholic beverage]; Porter; Shandy.

Class 33: Cider; Alcoholic fruit extracts; Rum punch; Alcoholic punches; Spirits and liquors; Rice alcohol; Bitters; Aperitifs; Baijiu [Chinese distilled alcoholic beverage]; Alcoholic jellies; Mead [hydromel]; Nira [sugarcane-based alcoholic beverage]; Sake; Schnapps; Brandy; Peppermint liqueurs; Spirits [beverages]; Anisette [liqueur]; Arak [arrack]; Distilled beverages; Bourbon whiskey; Cachaca; Calvados; Curacao; Digesters [liqueurs and spirits]; Gin; Grappa; Kirsch; Liqueurs; Scotch whisky based liqueurs; Cream liqueurs; Fermented spirit; Rum; Vodka; Whisky; Malt whisky; Blended whisky.

Class 43: Rental of furniture, linens and table settings; Temporary accommodation; Provision of food and drink; Hire of interior lighting; Rental of futon; Rental of quilts; Hiring of furniture for exhibitions; Hiring of furniture for presentations; Hire of interior chairs; Hire of interior matting; Rental of carpets; Hire of interior tables; Rental of lighting apparatus other than for theatrical sets or television studios; Rental of furniture; Rental of internal furnishings; Rental of cutlery; Rental of glassware; Hire of bed linen; Rental of beds; Hiring of furniture for conferences; Rental of floor coverings; Rental of chairs, tables, table linen, glassware; Rental of crockery; Rental of lighting apparatus (Domestic -); Hotels, hostels and boarding houses, holiday and tourist accommodation; Nurseries, day-care and elderly care facilities; Room rental for exhibitions; Hiring of rooms for social functions; Providing accommodation for meetings; Provision of facilities for conventions; Provision of facilities for exhibitions; Providing conference rooms; Providing convention facilities; Provision of trade show facilities [accommodation]; Provision of temporary work accommodation; Hire of temporary office space; Rental of meeting rooms; Arranging of wedding receptions [venues]; Provision of conference facilities; Accommodation services for meetings; Hire of pavilions; Rental of rooms as temporary living accommodations; Temporary room hire; Provision of temporary furnished accommodation; Providing temporary housing accommodations; Provision of caravan park facilities; Rental of temporary accommodation; Rental of portable buildings; Rental of tents; Charitable services, namely providing temporary accommodation; Arranging temporary housing accommodations; Room reservation services; Booking of accommodation for travellers; Room booking; Room hire services; Travel agency services for booking accommodation; Accommodation booking agency services [time share]; Accommodation bureau services; Accommodation letting agency services [time share]; Creche services provided in shopping locations; Hospitality services [accommodation]; Emergency shelter services [providing temporary housing].

PRELIMINARY REMARK

‘Servicios prestados por enologos’ in Class 43 of the earlier Spanish, contained in Class 43 in the opponent’s original list of goods in Spanish trade mark registration No 1 090 172, have been translated into English as ‘services provided by enologists’. Taking into consideration the opponent’s original list of goods in Spanish, these are ‘services provided by winemakers’.

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

2. The signs

ALBALI
Earlier trade marks	Contested sign

The relevant territory is Spain.

The earlier marks are word marks. In the case of word marks it is the word as such which is protected and not its written form. Therefore it is irrelevant if the marks are written in small or capital letters.

Visually, the signs are similar to the extent that they coincide in the string of letters ‘ALBA’. Although the signs also coincide in the letters ‘LI’, these letters form part of different words (‘ALBALI’/’ITALIA’). Therefore, this coincidence is not relevant. Furthermore, the signs differ in the element ‘d’Italia’, graphical presentation of the letters, figurative element and colours of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛A-L-B-A’ present in all signs, and to that extent the signs are aurally similar. The pronunciation of the signs also coincides in the sound of the letters ‛LI’. However, as these letters form part of different words (‘ALBALI’/’ITALIA’), this coincidence is not relevant. The pronunciation differs in the sound of the additional word ‘D’ITALIA’ of the contested sign.

Conceptually, the word ‘ALBA’ of the contested sign means ‘dawn’, and the word ‘ITALIA’ means ‘Italy’ in Spanish. The public in the relevant territory will understand these words or will perceive the whole expression ‘ALBA D’ITALIA’ as ‘dawn from Italy’ or ‘dawn of Italy’. Furthermore, the figurative element of the contested sign may be perceived as representing a sun at dawn surrounded by flowers and fruits. The earlier mark lacks any meaning in Spanish. 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.

‘ITALIA’ means ‘Italy’ in Spanish. Eventually, the relevant public may understand that the element ‘D’ITALIA’ means ‘from/of Italy’. Even if the relevant public perceives the whole expression ‘ALBA D’ITALIA’ as ‘dawn from Italy’ or ‘dawn of Italy’, the connection with Italy will be perceived. Therefore, it is considered that the element ‘ITALY’/‘D’ITALY’ is weak for the relevant goods and services as it may be perceived as referring to the origin of foodstuffs or beverages or to Italian restaurants, wineries or accommodation-related services in Italy. The public will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The earlier mark has no element which could be considered more dominant (visually eye‑catching) than other elements.

The figurative element of the contested trade mark, by virtue of its central position and size, overshadows the verbal elements of the mark. The figurative element is the visually dominant element of the contested trade mark.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

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

6. Global assessment, other arguments and conclusion

The goods and services are assumed to be identical.

The signs are visually and aurally similar to the extent that they have in common the string of letters ‘ALBA’. The coincidence in the letters ‘LI’ is not relevant as these letters form part of different words (‘ALBALI’/’ITALIA’). Furthermore, the signs differ in the additional verbal element ‘D’ITALIA’ of the contested sign as well as colours and graphical representation of letters and in the figurative element of the contested sign which is dominant. The relevant public may perceive in the element ‘ITALIA’ or ‘D’ITALIA’ a reference to the origin of the relevant goods or services or to Italian restaurants, wineries or accommodation-related services in Italy. Consequently, this element is weak. However, it is part of the expression ‘ALBA D’ITALIA’, placed underneath the figurative element and written in small letters. Therefore, this whole expression is of secondary importance to the other, eye-catching figurative element which dominates the contested sign.

Account is also taken of the fact that the signs are not conceptually linked as the relevant public will perceive the concept in the contested sign while the earlier marks are meaningless.

Taking all the above into account, the Opposition Division considers that the similarities in the elements which are secondary within the overall impression given by the contested sign are not sufficient to cause confusion on the part of the public, even in relation to identical goods and services. The differences between the signs outweigh the similarities and will suffice to enable consumers to safely distinguish between the marks.

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

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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 CTMR and therefore did not incur representation costs.

The Opposition Division

Eamonn KELLY

Justyna GBYL

Natascha GALPERIN

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.