OPPOSITION No B 2 725 169

Fine Estates From Spain, Inc., 745 High Street, Dedham, MA 02026, United States of America (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia, Spain (professional representative)

a g a i n s t

Domaine Riefle (Société à Responsabilité Limitée), 7, rue du Drotfeld, 68250 Pfaffenheim, France (applicant).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 725 169 is partially upheld, namely for the following contested goods and services:

Class 33: Wine; mulled wines; sparkling wines; sweet wines; rose wines; fortified wines; natural sparkling wines; sparkling red wines; sparkling white wines; table wines; still wine; Japanese sweet grape wine containing extracts of ginseng and cinchona bark.

Class 41: Wine tastings [educational services]; wine tastings [entertainment services]; entertainment relating to wine tasting; wine tasting events for educational purposes.

Class 43: Wine bar services.

2. European Union trade mark application No 15 000 904 is rejected for all the above goods and services. It may proceed for the remaining services, namely publishing of printed matter relating to French wines in Class 41.

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 15 000 904. The opposition is based on, inter alia, European Union trade mark registration No 10 359 801. 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 10 359 801.

1. The goods and services

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

Class 33: Wine, liqueurs and other alcoholic beverages (except beers).

The contested goods and services are the following:

Class 33: Wine; mulled wines; sparkling wines; sweet wines; rose wines; fortified wines; natural sparkling wines; sparkling red wines; sparkling white wines; table wines; still wine; Japanese sweet grape wine containing extracts of ginseng and cinchona bark.

Class 41: Wine tastings [educational services]; wine tastings [entertainment services]; publishing of printed matter relating to French wines; entertainment relating to wine tasting; wine tasting events for educational purposes.

Class 43: Wine bar services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 33

The contested wine is contained in the list of goods of the earlier trade mark. Therefore, these goods are identical.

The contested mulled wines; sparkling wines; sweet wines; rose wines; fortified wines; natural sparkling wines; sparkling red wines; sparkling white wines; table wines; still wine; Japanese sweet grape wine containing extracts of ginseng and cinchona bark are included in the broad category of the opponent’s wine. Therefore, they are identical.

Contested services in Class 41

The contested wine tastings [educational services]; wine tastings [entertainment services]; entertainment relating to wine tasting; wine tasting events for educational purposes may be offered by the same undertakings as the opponent’s wine in Class 33, given that wine producers also commonly offer wine tastings. Furthermore, they are distributed through the same distribution channels and they target the same relevant public. Therefore, they are similar to a low degree.

The contested publishing of printed matter relating to French wines has no connection with the opponent’s wine, liqueurs and other alcoholic beverages (except beers) in Class 33 that could lead to a similarity between them. These goods and services have different natures (goods versus services), purposes and methods of use. They do not usually originate from the same undertakings and are not usually distributed through the same channels. Moreover, they are neither in competition nor complementary. The mere fact that the main theme of the printed matter published by the applicant concerns wines is insufficient for a finding of similarity. Therefore, they are dissimilar.

Contested services in Class 43

The contested wine bar services may be provided by the same undertakings as the opponent’s wine in Class 33. Furthermore, they are distributed through the same distribution channels and are complementary to each other. Therefore, they are similar to a low 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 and services found to be identical or similar to a low degree are directed at the public at large.

The degree of attention is considered average.

3. The signs

	AD QUADRATUM
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 the verbal element ‘QVADRVM’ written in a slightly stylised Old Latin script. Part of the public will not perceive the letter ‘V’, included in the mark twice, as the letter ‘U’, whereas another part of the public will perceive it in the way in which Latin scripts are usually understood, i.e. ‘V’ will be perceived as ‘U’. Therefore, the Opposition Division finds it appropriate to limit its examination to the part of the public that will read the earlier mark as ‘QUADRUM’. In this regard, it should be pointed out that, if a significant part of the relevant public for the goods and services at issue may be confused about the origin of the goods and services, this is sufficient to establish a likelihood of confusion. It is not necessary that it be established that all actual or potential consumers of the relevant goods and services are likely to be confused.

The contested sign is a word sign consisting of the verbal elements ‘AD’ and ‘QUADRATUM’.

All the verbal elements of the signs are Latin words: both ‘QUADRUM’ and ‘QUADRATUM’ mean, inter alia, ‘square’; and ‘AD’ is a preposition meaning, inter alia, ‘near’, ‘at’, ‘to’, ‘up to’, ‘towards’, ‘until’, ‘on’ or ‘by’ (information extracted from Latdict Latin Dictionary & Grammar Resources at www.latin-dictionary.net/). Even though the general public cannot be expected to be familiar with these Latin terms, part of the public will associate the words ‘QUADRUM’ and ‘QUADRATUM’ with their similar equivalents in other languages, for example kвадра in Bulgarian, quadrat in German, quadro or quadrato in Italian, kvadrāts in Latvian, quadro or quadrado in Portuguese and cuadrado in Spanish.

None of the words constituting the conflicting signs is descriptive, allusive or otherwise weak for the relevant goods and services, and they will even be perceived by part of the public as invented, meaningless words. Therefore, they are distinctive to an average degree.

Visually, the signs coincide in the letters ‘Q-A-D-R-M’. However, they differ in the remaining letters, namely the two letters ‘V’ of the earlier mark and ‘AD’ and the two letters ‘U’ and ‘AT’ of the contested sign.

Regarding the script in which the verbal element of the earlier mark is written, this stylisation is not considered that overwhelming and will not draw the consumer’s attention away from the word it is supposed to embellish.

Therefore, the signs are visually similar to an average degree.

Aurally, from the perspective of the part of the public on which the present comparison is focused and 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 ‘Q-U-A-D-R-U-M’, which, in fact, means that all the sounds of the earlier mark are included in the contested sign, in the same order. However, the pronunciation differs in the sound of the remaining letters of the contested sign, namely in the sound of the first element ‘AD’ and the letters ‘AT’ in the middle of the contested sign.

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

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

However, part of the public will associate the words ‘QUADRUM’ and ‘QUADRATUM’ with the meaning explained above, i.e. with the meaning ‘square’. To that extent, the signs are conceptually similar to a high 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 relevant goods 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Account must be also 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).

As concluded above, the contested goods and services are partly identical, partly similar to a low degree and partly dissimilar to the opponent’s goods; the relevant public consists of the public at large and the degree of attention is average; the earlier mark has a normal degree of inherent distinctiveness.

The signs under comparison are visually similar to an average degree, aurally similar to a high degree and conceptually not comparable for part of the public, while for another part of the public they are similar to a high degree, as explained in detail above in section c) of this decision.

The Opposition Division is of the opinion that the differences between the signs are not sufficient to counteract their similarities. This is also because the opponent’s goods consist of wine, for which it is established practice that similarity on the aural level has more weight than similarity on the visual level, as the goods at issue are commonly ordered orally.

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, 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, particularly in bars and restaurants, where 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. These considerations come into play in the finding of likelihood of confusion.

Based on an overall assessment, particularly taking into account the principle of imperfect recollection and a high degree of aural similarity between the signs, the Opposition Division concludes that there is a likelihood of confusion on part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 359 801. As regards the focus on a part of the relevant public, given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

It follows from the above that the contested sign must be rejected for the goods found to be identical to those of the earlier trade mark, even for the contested services that are only similar to a low degree to the opponent’s goods. This is because, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those services and the opponent’s goods is clearly offset by the average degree of visual similarity and high degree of aural and conceptual similarity between the signs (the latter in relation to only part of the public).

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.

The opponent refers to some previous decisions of the Office to support its arguments. However, although the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities, the decisions referred to by the opponent, namely B 2 295 650, B 2 483 082 and B 2 126 236, do not contain any findings in relation to the comparisons of the goods and services that could change the outcome with regard to the dissimilarity of some of the contested services in the present case. Considering this, the opponent’s reference to previous decisions must be set aside.

The opponent has also based its opposition on European Union trade mark registration No 12 394 797 for the figurative mark , registered for wines in Class 33. However, since this mark covers a narrower scope of goods than the earlier mark that has been compared above, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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 will 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

Chantal VAN RIEL

Martin MITURA

Vita VORONECKAITĖ

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.