OPPOSITION No B 2 537 226

Destilerias M.G., S.L., Miquel Guanse s/nº, 08800 Vilanova i la Geltru (Barcelona), Spain (opponent), represented by Manresa Industrial Property, Roger de Llúria, 113, 4ª, 08037 Barcelona, Spain (professional representative)

a g a i n s t

GAS Familia, s.r.o., Prešovská 8, Stará Ľubovňa, Slovak Republic (applicant), represented by Ivan Belička, Švermova 21, 974 04 Banská Bystrica, Slovak Republic (professional representative).

On 01/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 537 226 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 842 811. The opposition is based on Spanish trade mark registration No 2 884 077 and European Union trade mark registrations No 8 381 097 and No 10 015 832. 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 European Union trade mark registration No 8 381 097.

1. The goods

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Gin.

The contested gin is included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, these goods are identical.

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 identical are directed at the public at large. The degree of attention is considered 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 earlier mark is a figurative mark composed of a grey rectangle in the middle of which the word elements ‘GIN MARE’ and the much smaller words ‘MEDITERRANEAN GIN’ (being practically illegible) appear, all in black. As a background to these words the mark depicts a rather abstract leafy design in white.

The contested sign is a figurative mark composed of the words ‘GIN RENMAR,’ written in upper case letters. It is depicted on a green rectangular background with a border formed by three lines (gold, white and gold). In the upper part, there is a combination of figurative elements featuring a shield and crown and spiky leaves and berries.

The term ‘GIN’ in both marks will be associated with a clear alcoholic spirit made from grain or malt and flavoured with juniper berries, and it will be understood as such across the relevant territory. Bearing in mind that the relevant goods are alcoholic beverages and gin, it is considered that this element is descriptive of the nature of the goods, and therefore it is non-distinctive for these goods. Consequently, the impact of this non-distinctive element is limited when assessing the overall impression of the signs.

For part of the public, the element ‘MEDITERRANEAN’ of the earlier sign is weak for the goods at issue. This word will be understood by the English-speaking public as referring to the region near the Mediterranean Sea. Moreover, this word has similar equivalent forms in other languages, for instance ‘Mediterráneo’ in Spanish or ‘Méditerranéen’ in French. The word ‘MEDITERRANEAN’ will therefore be seen as indicating that the goods originate from the Mediterranean region. For the remaining part of the public, which will not perceive this meaning, the element’s distinctiveness is normal.

Accordingly, the public will pay more attention to the element ‘MARE’ than to the aforementioned weak or non-distinctive elements of the earlier sign.

The element ‘MARE’ in the earlier mark means ‘sea’ in Italian. This word has similar equivalent forms in Spanish (‘mar’) and in Portuguese (‘mar’). It also means ‘a small lake’ in French and ‘a female horse’ in English.

In the contested sign, the figurative element at the top of the mark features a shield and crown surrounded by a pattern of spiky leaves and berries. Given that gin is made of juniper berries, the leaf-and-berry element is likely to be seen as referring to the ingredients of the product. This element is therefore weak.

In the contested sign, the shield and crown are small, and it is difficult to pick out the details thereof. The large word element ‘GIN RENMAR’ is visually dominant.

The element ‘GIN MARE’ in the earlier mark is the dominant element, as it catches the eye first.

Visually, the signs coincide in the letter sequence ‘MAR’ and the word ‘GIN’, which is non-distinctive and will not attract the consumer’s attention. However, they differ in the letter sequence ‘REN’ in the contested sign and in the final letter ‘E’ and the word ‘MEDITERRANEAN’ in the earlier mark.

Moreover, the marks differ in their additional figurative elements. 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).

Therefore, the abstract leafy design in the earlier mark will have a limited impact on consumers.

Furthermore, as regards the contested sign, the figurative element will be perceived as somewhat weak, given that it represents berries and spiky leaves, which will tend to be seen as juniper berries and leaves. The remaining elements of the shield and crown are small and have little visual impact.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛M, A, R’, present identically in both signs. The pronunciation differs in the sound of the letters ‛REN’ of the contested sign and, for part of the public, the letter ‘E’ in the earlier mark. The letter ‘E’ will be silent for part of the public, such as the French-speaking part of the public, and the letter sequences ‛MAR’ and ‛MARE’ will, in that case, be pronounced identically. Leaving aside the non-distinctive word ‘GIN’, the first syllables in the signs are different (‘MA’/‘REN’). This major difference in the pronunciation of the marks will not be overlooked, as the elements ‘MARE’ and ‘RENMAR’ have entirely different first syllables and also different numbers of syllables.

The word ‛GIN’, which is non-distinctive, has no effect on the aural comparison of the marks. The additional verbal element ‘MEDITERRANEAN GIN’ of the earlier mark is written in small characters, and it is likely that this element will not be pronounced and will not influence the aural comparison of the marks.

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

Conceptually, the relevant public will understand the word ‘GIN’ in both marks as a description of the alcoholic beverage, and the marks have this concept in common. However, since this is a concept that will be seen as describing the nature of the goods, it will not lead consumers to make a mental connection between the signs on a conceptual level.

In the contested sign, as stated above, the depiction of leaves and berries will be seen as weak. The other concept in the mark is that of a shield and crown. The earlier mark also contains a leafy design; however, this is abstract in nature and cannot be identified as a plant with berries, still less as a juniper plant. The mere fact that both marks contain some kind of leafy element is therefore not sufficient to endow them with any conceptual similarity.

In the earlier mark, part of the relevant public will understand the words ‘MEDITERRANEAN’ as having the meaning given above. However, since this is a concept that will be seen as describing the origin and/or place of production of the goods, this concept will be seen as weak.

Part of the public will perceive a concept in the earlier mark by virtue of the presence of the element ‘MARE’, as mentioned previously. The Italian-speaking public might perceive the concept of the sea, as might the Spanish- and Portuguese-speaking publics. It also has the concept for the French-speaking public of a small lake and for the English-speaking public of a female horse.

Contrary to the opponent’s argument, the contested sign’s element ‘RENMAR’ will not be dissected by the public because they will not see any natural split between the letter sequences ‘REN’ and ‘MAR’, the first of which has no meaning. ‘RENMAR’ will therefore be seen as a whole and, as such, as an invented word having no meaning.

To summarise, setting aside the weak and non-distinctive elements, part of the public in the relevant territory will perceive the concept of the sea or a small lake in the earlier mark. The contested sign’s concept resides in the shield and crown element. Therefore, the signs are not conceptually similar.

For the remaining part of the public, which does not understand the element ‘MARE’, the marks are also not conceptually similar.

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 non‑distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The comparison of the signs in question revealed some similarities and some differences. The goods under comparison are identical.

The signs are visually and aurally similar to a low degree, as they coincide in the string of letters ‘MAR’, that is, three letters of the verbal elements ‘MARE’ in the earlier mark and ‘RENMAR’ in the contested sign.

The coinciding letters do not form an independent element in the earlier mark and the public will not artificially dissect the mark and perceive the element ‘MAR’. The verbal elements ‘MARE’ and ‘RENMAR’ will naturally be perceived as whole words and not split into separate elements.

The figurative elements of the marks, the colours used in the contested sign and the marks’ overall arrangements produce further clearly perceptible visual differences between the signs, even taking into consideration the fact that some of these additional elements are weak.

Regarding the differences between the signs, the Opposition Division considers that the relevant consumers (who are reasonably observant and circumspect even when their degree of attention is average) will be able to safely distinguish the signs under comparison, even in relation to identical goods.

Therefore, it is unlikely that consumers would think that the goods under the contested sign came from the same undertaking as the goods under the earlier mark or that the contested sign constituted a sub-brand of the earlier mark.

The opponent refers to previous national decision to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, as the coinciding elements ‘MARE’ were included identically in the signs (e.g. ‘CASA DE MARE’ versus ‘GINMARE’).

Considering all the above, although the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Spanish trade mark registration No 2 884 077 for alcoholic beverages (except beers) (Class 33).

European Union trade mark No 10 015 832 for alcoholic beverages (except beers) (Class 33).

The other earlier rights invoked by the opponent are less similar to the contested sign. This is because they contain further additional co-dominant elements, such as the large letter ‘M’ and the leaf-like figurative element (which bears no resemblance to the more complex leaf-and-berry design in the contested sign). Moreover the term ‘MEDITERRANEAN’ is more noticeable in both, and the second mark has an additional distinctive verbal element, ‘INSPIRATIONS’.

These additional elements are not present in the contested trade mark. Therefore, as the earlier marks are even less similar to the contested sign than the earlier mark already compared, there is no likelihood of confusion with respect to these earlier marks.

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 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 Rule 94(7)(d)(ii) EUTMIR, 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.

The Opposition Division

Richard THEWLIS

Julie GOUTARD

Ric WASLEY

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.