OPPOSITION No B 2 512 591

Bodegas Escudero S.L., Crta. de Arnedo, s/n 26587 Grávalos (La Rioja), Spain (opponent), represented by Polopatent, Dr. Fleming 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Pavino B.V., Achthovenerweg 15 J, 2351 AX Leiderdorp, The Netherlands (applicant), represented by Signify B.V., Prof. J.H. Bavincklaan 2, 1183 AT Amstelveen, The Netherlands (professional representative).

On 01/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 512 591 is partially upheld, namely for the following contested goods:

Class 32: Pre-mixed beverages (non-alcoholic).

Class 33: Alcoholic cocktail mixes; pre-mixed alcoholic beverages, other than beer-based.

2. European Union trade mark application No 13 611 504 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 611 504. The opposition is based on European Union trade mark registration No 10 781 102. 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 and services

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

Class 30: Coffee, tea, cocoa, artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry; sugar, honey, theriac; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices.

Class 33: Alcoholic essences; alcoholic extracts; alcoholic fruit extracts.

After a limitation of the goods and services, filed by the applicant on 26/11/2016, the contested goods and services are the following:

Class 32: Pre-mixed beverages (non-alcoholic).

Class 33: Alcoholic cocktail mixes; pre-mixed alcoholic beverages, other than beer-based.

Class 43: Rental of cooling apparatus and machines for beverages; the aforesaid services relating to the providing of food and drink.

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 32

The contested pre-mixed beverages (non-alcoholic) are beverages that do not contain alcohol. The opponent’s coffee, tea in Class 30 are alcohol-free hot and cold beverages that are most often drunk in social situations or for their stimulating properties. All being non-alcoholic beverages, the goods at issue can have the same producers, end users and distribution channels. Furthermore, they can be in competition. Therefore, they are considered similar.

Contested goods in Class 33

The contested alcoholic cocktail mixes; pre-mixed alcoholic beverages, other than beer-based are alcohol-based beverages. The opponent’s alcoholic essences; alcoholic extracts; alcoholic fruit extracts are particular kinds of alcoholic beverages. All being alcohol-based drinks, these goods can have the same producers, end users and distribution channels. Therefore, they are similar to a low degree.

Contested services in Class 43

The contested rental of cooling apparatus and machines for beverages; the aforesaid services relating to the providing of food and drink is a very specific service consisting in the rental of cooling machines for beverages. These services have a very specific nature, purpose and method of use, which are different from those of all the opponent’s goods in Classes 30 and 33. In addition, these goods and services are neither in competition nor complementary. Moreover, their usual commercial origins and distribution channels are different. Therefore, they are dissimilar.

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 similar to various degrees are directed at the public at large. The degree of attention may vary from average to low for goods such as pre-mixed beverages (non-alcoholic), as these are relatively inexpensive goods that may be purchased on a daily basis.

3. The signs

AVINO	PAVINO
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 part of the public for which the marks have no meaning (e.g. the Greek-speaking part of the relevant public).

Neither of the signs has any element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘AVINO’, which form the entire earlier mark and are present in the same order, from the second to the last letter, in the contested sign, ‘PAVINO’. However, the marks differ in the first letter, ‘P’, of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AVINO’, which form the entire earlier mark and are present in the same order, from the second to the last letter, in the contested sign, ‘PAVINO’. The pronunciation differs in the sound of the first letter, ‘P’, of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

According to the case law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

A likelihood of confusion on the part of the public must be assessed globally. Such a global assessment implies some interdependence between the factors taken into account and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

In the present case, the goods target the public at large. The degree of attention may vary from average to low.

The inherent distinctiveness of the earlier mark, considered as a whole, is normal. Enhanced distinctiveness of the earlier mark was not claimed by the opponent.

The goods and services are partly similar, partly similar to a low degree and partly dissimilar.

The signs are visually and aurally highly similar.

The signs coincide visually and aurally in the letters ‘AVINO’, which form the entire earlier mark and are present in the same order, from the second to the last letter, in the contested sign, ‘PAVINO’.

Although the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect, 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). Therefore – taking into consideration the fact that the signs differ only in the first letter, ‘P’, of the contested mark – the Opposition Division considers that the differences between the signs are not sufficient to safely exclude the likelihood of confusion.

This finding is also valid for the goods that are similar to only a low degree, as the similarities between the signs outweigh the low degree of similarity between those goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion for the part of the relevant public for which the signs have no meaning (e.g. the Greek-speaking part of the relevant public), and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 781 102.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar or similar to a low degree to those of the earlier trade mark.

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

Karin KUHL

Michele M. BENEDETTI-ALOISI

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.