OPPOSITION No B 2 672 163

Fundação Eugénio De Almeida (Private Charitable Institution), Páteo de S. Miguel, 7001-901 Évora, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

Bodegas Bordoy S.L., C/ Perez Galdos Nº 29, 07006 Palma (Illes Balears), Spain (applicant), represented by Bordehore Schick Patentes Y Marcas S.L., Paseo de la Castellana, 166, Esc. 2º, 5º Dcha., 28046 Madrid, Spain (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 672 163 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 and services of European Union trade mark application No 14 891 022, namely against all the goods in Classes 32 and 33. The opposition is based on Portuguese trade mark registrations No 283 684, No 308 864 and No 405 797. 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 signs

1) PT No 283 684

2) PT No 405 797           3) PT No 405 797	FERMANÇA
Earlier trade marks	Contested sign

The relevant territory is Portugal.

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).

Earlier marks (1) and (2) have similar layouts, as they are both composed of labels showing a horseman and a woman on the left and a large bottle of wine on the right. Above these elements, the words ‘VINHO’, ‘PERA-MANCA’ and, in earlier sign (1), ‘TINTO’ or, in earlier sign (2), ‘BRANCO’, are placed on successive lines and written in slightly stylised, upper case letters. These letters do not depart too much from standard letters, apart from the initial ‘V’ of ‘VINHO’, which is highly stylised. There are other verbal elements in the signs that are not discernible due to their small size. Earlier mark (3) is also a figurative mark consisting of a grey-scale image of a horseman leaning towards a woman, placed below the expression ‘PÊRA-MANCA’ and written in standard, upper case letters. The contested mark is the word mark ‘FERMANÇA’, which is protected in all typefaces.

The element ‘PÊRA-MANCA’, contained in earlier marks (1), (2) and (3), will be perceived by the relevant public as a fanciful expression formed by the words ‘PÊRA’, meaning ‘pear’, and ‘MANCA’, meaning ‘lame, unable to walk’ (Cambridge English-Portuguese dictionary online on 27/04/2017 at http://dictionary.cambridge.org/dictionary/english-portuguese/lame). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

At the same time, it is important to note that the words contained in earlier marks (1) and (2), ‘VINHO’, ‘TINTO’ and ‘BRANCO’, mean ‘wine’, ‘red’ and ‘white’, respectively. As the goods in relation to which there could be confusion are white or red wines, these words are considered descriptive of their characteristics, as they refer to the name and colour of the goods. When words are descriptive, they are considered weak elements of the sign and consumers will not pay as much attention to these elements as to other, more distinctive, elements of the mark. The wine bottles depicted in the aforementioned signs are also merely decorative elements alluding to the goods that are wines; consequently, their distinctive character is also reduced.

As regards the earlier signs, they are composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal elements are more distinctive than the figurative elements. 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).

The element ‘FERMANÇA’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Visually, with regard to the distinctive elements, the signs coincide in the letters ‘*ER**MAN*A’. However, they differ in the first letters (‘P’ versus ‘F’) of their distinctive elements, in the vowel ‘A’ and the hyphen in the fourth and fifth positions of the distinctive element of the earlier signs, and also in the penultimate letters (‘C’ versus ‘Ç’) of their distinctive elements. Moreover, they differ in the structure of the distinctive elements: the contested sign will be perceived as a single meaningless word, whereas in the earlier marks the distinctive element will be clearly perceived as two separate words, since they are hyphenated and both are well-known and eye-catching existing words in Portuguese. Furthermore, earlier signs (1) and (2) differ in the non-distinctive elements ‘VINHO’, ‘TINTO’ and ‘BRANCO’ ; however, these words have a limited impact on the overall impressions of the earlier signs.

In addition, although the figurative elements are less distinctive and will be perceived as secondary elements, as explained above, the signs also differ to that extent, since only earlier signs (1), (2) and (3) have figurative elements, with no counterparts in the contested sign.

As the signs coincide in only irrelevant aspects, it is concluded that the signs are not visually similar.

Aurally, earlier mark (1) is pronounced ‘VI/NHO/PE/RA/MAN/CA/TIN/TO’, earlier mark (2) is pronounced ‘VI/NHO/PE/RA/MAN/CA/BRAN/CO’, earlier mark (3) is pronounced ‘PE/RA/MAN/CA’ and the contested mark is pronounced ‘FER/MAN/SA’ in Portuguese.

As regards the distinctive elements, the signs coincide in the sound of the letters ‘*ER*MAN*A’; however, they are pronounced with different rhythms and intonations. The pronunciation differs in the sound of the first letters, namely ‘P’ in the earlier signs and ‘F’ in the contested sign; in the sound of the letter ‘A’, placed in the fourth position of the distinctive element of the earlier signs, which has no counterpart in the contested sign; and also in the penultimate letters of the marks’ distinctive elements, namely ‘C’ of the earlier sign, pronounced [k], versus ‘Ç’ (c cedilla) of the contested sign, pronounced [s]. With respect to the rhythm and intonation, the earlier marks are pronounced in four syllables as two separate words (stressing the first syllable of each word), whereas the contested mark is pronounced as three syllables, as a single word.

Admittedly, earlier signs (1) and (2) differ insofar as the pronunciation of the descriptive elements ‘VINHO’, ‘TINTO’ and ‘BRANCO’ is concerned. However, this has limited impact on the overall impressions of the earlier signs.

As the signs coincide in only irrelevant aspects, it is concluded that the signs are not aurally similar.

Conceptually, although the public in the relevant territory will perceive the meanings of the words of earlier marks (1), (2) and (3), as explained above, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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

Andrea VALISA

José Antonio GARRIDO OTAOLA

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.

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.