OPPOSITION No B 2 535 444

Wegenstein Gesellschaft m.b.H., Strasse 3, Objekt 16, 2351 Wiener Neudorf, Austria (opponent), represented by REWE-Zentralfinanz e.G., Nina Kaulmann, Domstr. 20, 50668 Köln, Germany (employee representative)

a g a i n s t

National Federation of Agricultural Cooperative Associations (ZEN-NOH), 1-3-1, Otemachi, Chiyoda-ku, Tokyo, Japan (applicant), represented by Kipa AB, Drottninggatan 11, 252 21 Helsingborg, Sweden (professional representative).

On 05/07/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 535 444 is upheld for all the contested goods, namely:

Class 33: Wines and sparkling wines.

2. European Union trade mark application No 13 822 515 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 822 515, namely against some of the goods in Class 33. The opposition is based on European Union trade mark registration No 10 358 745. 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: Wines and sparkling wines.

Wine is contained identically in both lists of goods.

The contested sparkling wines are included in the broad category of the opponent’s wine. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the goods in question 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 target 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 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 which 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 refuse the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public.

The earlier mark is a figurative mark composed of the word ‘ZEN’, depicted vertically in large, light-green standard lower case letters and, above this word, a dark-green crescent-shaped figurative element. The inscription ‘die neue Leichtigkeit des Weins’ is placed between these elements; this inscription is in much smaller, light-green italic letters. A grey letter ‘W’, with an illegible verbal element underneath, is depicted at the top of the sign.

The contested sign is a figurative mark composed of the words ‘ZEN’ and ‘NOH’. These words are divided by a hyphen and are depicted in standard bold upper case characters.

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

With regard to the existence of elements that are more distinctive than others in the earlier mark, the inscription ‘die neue Leichtigkeit des Weins’ will be understood as ‘the new lightness of wine’. Bearing in mind that the relevant goods are wines, this element is weak for these goods, as it will be perceived as a laudatory slogan indicating the positive characteristics of the goods.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

With regard to the existence of dominant elements in the earlier mark, the inscription ‘die neue Leichtigkeit des Weins’, as well as the letter ‘W’, together with the verbal element at the top of the sign, are written in relatively small letters and therefore are less eye-catching than the other elements which dominate the earlier sign. Therefore, the verbal element ‘ZEN’ and the figurative element above it are the most dominant elements of the mark, due to their relatively large size and visually outstanding position.

Visually, both signs contain the distinctive and, in the case of the earlier sign, dominant word ‘ZEN’. However, they differ in the figurative element, the letter ‘W’ (and the illegible verbal element underneath) and the laudatory inscription ‘die neue Leichtigkeit des Weins’ of the earlier sign, and in the letters ‘NOH’ and the hyphen of the contested sign. The signs also differ in their graphical depictions.

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). Accordingly, the differing figurative components of the earlier mark will have less impact than the verbal elements.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ZEN’, present identically in both signs. This is because consumers read from left to right or, if the text is on different lines or the letters are positioned vertically, from top to bottom.

The pronunciation differs in the sound of the letters ‛NO’ of the contested mark (the final letter ‘H’ of ‘NOH’ will not be pronounced in German) and the inscription ‘die neue Leichtigkeit des Weins’ of the earlier sign; however, this latter verbal element is weak with regard to the goods in question. It is reasonable to assume that the letter ‘W’, due to its size and position in the sign, will not be pronounced by the relevant public.

Therefore, the signs are similar to an average degree as they have a distinctive element in common, which is also dominant in the earlier sign.

Conceptually, the vast majority of the public in the relevant territory will perceive the word ‘ZEN’ as a reference to a Japanese form of Buddhism that emphasises meditation. The inscription ‘die neue Leichtigkeit des Weins’ of the earlier sign will be understood as a slogan meaning ‘the new lightness of wine’. The letter ‘W’ in the earlier sign will be perceived as the 23rd letter of the Latin alphabet. The word ‘NOH’ of the contested mark is meaningless. The applicant claims that ‘NOH’ refers to a Japanese dance; however, this meaning is not commonly known in the relevant territory. The figurative element of the earlier sign will not evoke any clear concept.

As the signs will be associated with a similar meaning, the signs are conceptually highly similar, as the same concept is associated with their distinctive element.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical and they target the public at large.

The signs are visually, aurally and conceptually similar to the extent that they both contain the word ‘ZEN’. They differ in the verbal element ‘die neue Leichtigkeit des Weins’ and the letter ‘W’ of the earlier sign, and the verbal element ‘-NOH’ of the contested sign, as well as in the figurative element of the earlier sign and the graphic depictions of the signs.

Furthermore, where goods are ordered orally, the aural perception of the sign may also be influenced by factors such as the likely presence of various other sounds perceived by the recipient of the order at the same time. 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. In such cases, attaching particular importance to the aural similarity between the signs at issue may be appropriate (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Similarly, a particular method or customary way of ordering goods may mean increased importance being attributed to the phonetic similarity between the signs. For instance, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, in particular in bars and restaurants, in which wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue.

Therefore, in the present case, the Opposition Division considers that the aural similarities between the signs resulting from the word ‘ZEN’ cannot be counteracted by their dissimilarities, and that the public would believe that the identical goods, which, moreover, are likely to be ordered verbally, come from the same undertaking or from economically-linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘ZEN’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘ZEN’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking public. As stated above in section c) 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 well founded on the basis of the opponent’s European Union trade mark registration No 10 358 745. The contested trade mark must therefore be rejected for all the contested goods.

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

The Opposition Division

Agueda MAS PASTOR

Katarzyna ZANIECKA

Karin KUHL

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.