OPPOSITION No B 2 615 055

La Zaragozana S.A., Ramón Berenguer IV, 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Celiaco.M S.r.l., Contrada Colle Delle Api, 114, 86100 Campobasso, Italy (applicant), represented by De Tullio & Partners S.R.L., Viale Liegi 48/b, 00198 Roma, Italy (professional representative).

On 31/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 615 055 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 325 609, namely against all the goods in Class 32. The opposition is based on Spanish trade mark registration No 1 674 949. 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 32: Beers.

The contested goods are the following:

Class 32: Beers; non-alcoholic beer; imitation beer; aperitifs, non-alcoholic; fruit-based beverages; non-alcoholic beverages; fruit juice concentrates; concentrates for use in the preparation of soft drinks.

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.

Beers are identically contained in both lists of goods.

The contested non-alcoholic beer, imitation beer are similar to a high degree to the opponent’s beer, since they have the same purpose, are distributed through the same channels, target the same consumers and are manufactured by the same companies. Moreover, they are in competition.

The contested aperitifs, non-alcoholic; fruit-based beverages; non-alcoholic beverages; fruit juice concentrates; concentrates for use in the preparation of soft drinks have the same purpose as the opponent’s beers. These goods are offered side by side in the same shops and bars and on drinks menus, etc. These goods may have the same producers and distribution channels, they target the same public and, furthermore, they are in competition. Therefore, they are similar to a high degree.

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 or similar to a high degree are goods for daily consumption, not expensive and directed at the public at large. The degree of attention is considered to vary from normal to low.

3. The signs

AMBAR-GREEN
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 word mark containing the two verbal elements ‘AMBAR’ and ‘GREEN’ linked with a hyphen, ‘-’.

The contested sign is a figurative mark composed of the two verbal elements ‘GREEN’ and ‘FLUTE’ written in pale-green upper case letters over two lines and placed inside a white circle with small protuberances of different dimensions. Several small ellipses are placed randomly just outside the circle.

The verbal element ‘AMBAR’ of the earlier mark exists as such in Spanish with the meaning ‘hard translucent fossilised resin originating from extinct coniferous trees of the Tertiary Period, typically yellowish in colour’ (information extracted from the Oxford Dictionaries on 14/10/2016 at www.oxforddictionaries.com). The word is also used to describe something as having a characteristic of amber, namely, being amber-coloured and a clear yellowish brown. Therefore, in relation to the relevant goods, this word is of average distinctiveness.

By contrast, the coinciding verbal element ‘GREEN’ in the food market and in marketing relates, in general, to organic products. Therefore, this word could be perceived, by at least the part of the Spanish-speaking public that has a basic knowledge of English, as a type of organic, environmentally friendly beers, drinks and preparations and thus as a weak element in the contested sign. For the rest of the relevant public, it is a fanciful element and it is of average distinctiveness.

The verbal element ‘FLUTE’ will not be understood by the Spanish-speaking part of the public. Therefore, since this element is not related in any way to the relevant goods for the Spanish public, it has an average degree of distinctive character. The figurative elements of the contested sign are decorative embellishments with a low degree of distinctive character.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘GREEN’, although it is placed in different positions: in the earlier mark it is the second element and the first verbal element in the contested sign. It is weak for a part of the relevant public. However, the signs differ in the first verbal element, ‘AMBAR’, of the earlier mark and in the second verbal element, ‘FLUTE’, of the contested sign. The signs further differ in the hyphen that separates the two elements of the earlier mark and in the figurative element and the colours of the contested sign, as described above.

Therefore, since the signs have different beginnings and different compositions of their verbal and figurative elements, they are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GREEN’. The pronunciation differs in the sound of the letters ‘AMBAR’ of the earlier mark and ‘FLUTE’ of the contested sign. The marks also differ aurally in their rhythm and intonation, as the coinciding element ‘GREEN’ is the second element in the earlier sign but at the beginning of the contested sign.

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

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘AMBAR’ in the earlier mark will be associated with ‘amber’ (‘ámbar’ in Spanish) as defined above. The word ‘FLUTE’ of the contested sign conveys no meaning for the relevant public.

By contrast, the word ‘GREEN’, which the signs have in common, relates to organic, environmentally friendly products and will be understood as such by part of the relevant public. Nevertheless, for another part of the public, this element conveys no meaning. The figurative element of the contested sign conveys no meaning.

The opponent asserts that the word ‘AMBAR’ is its house mark and that it frequently uses a sub-brand depending on the specific characteristics of each beer. Therefore, the generic mark ‘AMBAR’ also forms part of, inter alia, the various sub-brands ‘AMBAR 1900’, ‘AMBAR ESPECIAL’, ‘AMBAR EXPORT’, ‘AMBAR CAESAR AUGUSTA’, ‘ambar negra’, ‘AMBAR MANSANA’, ‘AMBAR LEMON’ and ‘AMBAR PREMIUM’.

Such frequent use of a second verbal element qualifying the mark ‘AMBAR’ supports the notion that the relevant public will understand the word ‘AMBAR’ as being the principal element permitting recognition of the mark and the word ‘GREEN’ as a type of beer under the ‘AMBAR’ mark. Contrary to the opponent’s arguments, the Office contends that the word ‘GREEN’ would be perceived not as an original and distinctive element but as being descriptive of organic beer, for at least part of the public, and that the word ‘AMBAR’ would attract more attention from the relevant public.

The verbal element ‘GREEN’ in the contested sign is a colour and is regarded as belonging to the basic vocabulary of words in English and, therefore, it would be understood by part of the Spanish public. Therefore, it would be perceived as describing the contested goods as environmentally friendly or organic, while the second verbal element, ‘FLUTE’, of the contested sign (an English word for a musical wind instrument) would be perceived as having no relation to the contested goods for the relevant Spanish-speaking public.

Therefore, the opponent’s argument – in which it references a Wikipedia extract regarding beer glassware – that ‘FLUTE’ is a generic word referring to the preferred serving vessel in Belgium for Belgian lambics and fruit beers is irrelevant in the present case, in which the relevant public is Spanish speakers.

For the part of the public that understands only the word ‘AMBAR’ of the earlier mark and does not attribute any meaning to the contested sign, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For another part of the public, the element ‘GREEN’, included in both signs, might be associated with the colour. As this coincidence between the signs lies in a weak element, for that part of the public the signs are conceptually similar to a low degree.

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 the weak element ‘GREEN’ in the mark as stated above in section c) of this decision in relation to a part of the relevant public.

5. Global assessment, other arguments and conclusion

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements, and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

The Court has also held that 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 goods are identical or similar to a high degree. The degree of attention varies from average to low.

The signs coincide visually, aurally and, for at least a part of the public, conceptually in the verbal element ‘GREEN’, although it is placed in different positions. This element is weak in relation to the relevant goods for the part of the public that understands this word.

The signs have significant differences, namely the earlier mark begins with the distinctive element ‘AMBAR’ followed by a hyphen, whereas the contested sign includes the additional distinctive element ‘FLUTE’ and the figurative elements and colours described above. The differing elements in the signs are clearly sufficient to exclude any likelihood of confusion between the marks.

A trade mark consisting of various elements cannot be regarded as being similar to another trade mark which is similar to one of the components in such a trade mark, unless that component forms the dominant element within the overall impression created by the complex mark. That is the case only where the component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, §33).

This is clearly not applicable in this case, since the remaining components of the contested sign are not negligible. Therefore, the similarities between the marks are not sufficient to offset the dissimilarities between them and to lead to a likelihood of confusion on the part of the public. This is despite the fact that the goods are identical or similar to a high degree. There exist important differences between the signs that outweigh the similarities and, consequently, consumers will be able to safely distinguish between them.

Moreover, the first parts of the conflicting marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the dissimilar first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The following cases were cited in the opponent’s submissions:

• decision of 29/01/2003, R 166/2003, PIRCHER WILLIAMS v WILLIAM;

• decision of 20/05/2011, R 902/2010-2, EL CORTE INGLÉS FORMULA JOVEN v FORMULA;

• decision of 23/02/2010, B 1 467 267;

• decision of 22/02/2010, B 1 153 701;

• decision of 18/05/2010, B 1 479 932.

The Opposition Division considers that the previous cases referred to by the opponent are not relevant to the present proceedings.

The abovementioned cases have in common the fact that they all can be distinguished from the present case, since all of the abovementioned earlier cases relate to a comparison between a contested application that consists of only one verbal element that is reproduced in its entirety (with the inclusion of a final letter ‘S’ in the decision of 29/01/2003, R 166/2003, PIRCHER WILLIAMS v WILLIAM) in the opponent’s mark, or vice versa. The present case relates to a contested sign that consists of two separate verbal elements, only one of which is reproduced within the opponent’s mark, which itself consists of two separate verbal elements.

Finally, the decision of 18/05/2010, B 1 479 932, can be distinguished from the present case given that the former decision relates to a comparison of two signs that both contain figurative elements. Therefore, the situation is not comparable to the present case.

Consequently, considering all the above, even considering that the goods are identical or similar to a high degree, there is no likelihood of confusion on the part of the relevant public. Therefore, the opposition must be rejected.

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

Marta GARCÍA COLLADO

Finn PEDERSEN

Carmen SÁNCHEZ PALOMARES

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.