OPPOSITION No B 2 718 701

Salentein Argentina B.V., Putterstraatweg 5, 3862 RA Nijkerk, Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands, (professional representative)

a g a i n s t

Olearia Vinicola Orsogna Soc. Coop. Agricola, Via Ortonese n. 29, 66036 Orsogna (CH), Italy (applicant), represented by Bugnion S.p.a.,Via Sallustiana 15, 00187 Roma Italy (professional representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 718 701 is partially upheld, namely for the following contested goods:

Class 33: Wine; alcoholic beverages.

2. European Union trade mark application No 15 138 613 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 138 613, namely against all the goods and services in Classes 32, 33 and 41. The opposition is based on European Union trade mark registration No 12 25 91 49. 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 and services

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

Class 33: Alcoholic beverages (except beers).

The contested goods and services are the following:

Class 32: Mineral waters; aerated waters; non-alcoholic beverages; juices; aerated beverages.

Class 33: Wine; alcoholic beverages.

Class 41 Organisation of entertainment and cultural events; organisation of parties for cultural and recreational purposes; wine tasting events for educational purposes.

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 32

The contested goods in Class 32 and the opponent's alcoholic beverages (except beers) in Class 33 on the other are often sold side by side whether in shops and bars or on drinks menus. These goods target the same public and may be in competition. Therefore, the contested mineral waters; aerated waters; non-alcoholic beverages; juices; aerated beverages are similar to a low degree to the opponent’s alcoholic beverages (except beers).

Contested goods in Class 33

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

Alcoholic beverages are identically contained in both lists of goods.

Contested services in Class 41

The contested wine tasting events for educational purposes in Class 41 can (as the opponent argues) be provided by winegrowers. Moreover, it is quite common to buy wine directly from the winegrowers. The opponent’s alcoholic beverages (except beers) in Class 33 include wines. Therefore, the contested services in Class 41 may be provided by the same producers that produce and sell goods covered by the opponent’s mark, which makes the contested services similar to a low degree to the opponent’s goods.

The contested organisation of entertainment and cultural events; organisation of parties for cultural and recreational purposes relates to organisation of all kinds of entertainment, cultural events (such as musical concerts or art exhibitions) and parties in Class 41. These services have a different nature, purpose and method of use than the opponent’s alcoholic beverages (except beers) in Class 33. Although alcoholic beverages can be sold at such events, these goods and services are normally not manufactured or provided by the same undertakings and are not complementary or are in competition. Therefore, the contested services are dissimilar to the opponent’s goods.

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

LUNARIS BY CALLIA
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 that 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 reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking part of the public, since for this part of the public the signs are more similar conceptually.

In the earlier mark, ‘LUNARIS’ will be understood with a reference to the moon by the public taken into account, which is distinctive for the relevant goods and services. The following elements ‘BY CALLIA’ will be understood as the English preposition followed by the name of a person. The Opposition Division notes that the public under analysis is used to see ‘BY’, followed by a name, as an indication of the producer and the commercial origin of the goods. Therefore, the expression will be perceived as indicating the commercial origin of the goods or services and is distinctive.

The element ‘LUNARIA’ in the contested sign will, moreover, be associated with the moon by the public under analysis and is a distinctive element in the sign. The contested sign also contains a figurative element consisting of the silhouettes of two wolves standing on a rock under the moon or in the moonlight, as the applicant argues. The applicant also argues that these figurative elements are dominant in the sign. The Opposition Division share this view but considers the word element ‘LUNARIA’ to be co-dominant whereas the word ‘Orsogna’ written in smaller and fine italics occupies a secondary position within the sign.

Visually, the signs coincide in that their initial word elements ‘LUNARIS’ and ‘LUNARIA’ share six out of seven letters (‘LUNARI*’). They differ in the remaining verbal and in the graphic and figurative elements of the contested sign described above. Consumers generally tend to focus on the word elements of signs, in particular on those placed at the beginning of a sign. Indeed, 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). Moreover, 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. Therefore, the fact that ‘LUNARIS’ in the earlier mark and the co-dominant ‘LUNARIA’ are the initial word elements in the signs must be given considerable weight overall. Furthermore, in view of its secondary position in the contested sign, the word ‘Orsogna’ will easily be overlooked in the sign; therefore, the signs are visually similar to a low degree.

Aurally, ‘LUNARIS’ will be pronounced first in the earlier mark and ‘LUNARIA’ is likely to be the only verbal element to be pronounced in the contested sign, taking into account the secondary position of ‘Orsogna’ in the sign. Although ‘BY CALLIA’ is equally distinctive to ‘LUNARIS’, it will be pronounced last in the earlier mark and will be understood as a reference to the commercial origin of the goods sold under the earlier trade mark. Therefore, the pronunciation of the signs coincides in the sounds of the letters ‘L-U-N-A-R-I-*’ whereas they differ in the respective final letters of ‘LUNARIS’ and ‘LUNARIA’, namely ‘S’ and ‘A’, and in ‘BY CALLIA’. As a whole, the Opposition Division finds the signs to be aurally similar to an average degree.

Conceptually, the Italian- and Spanish-speaking part of the public will associate ‘LUNARIS’ in the earlier mark and ‘LUNARIA’ in the contested sign with the moon, while the figurative elements of the contested sign will be perceived as a silhouette of the moon and of two wolves. Moreover, the public under analysis will perceive the element ‘BY CALLIA’ in the earlier mark as an expression combining the English preposition ‘By’ with a name. The word ‘Orsogna’ has a secondary position in the contested sign and has, therefore, less influence on the conceptual comparison of the signs. Since both signs will be associated with the moon, the Opposition Division finds the signs conceptually similar to an average degree overall.

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 and services in question 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the likelihood of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods and services are partly identical, partly similar to a low degree and partly dissimilar. The signs are visually similar to a low degree and aurally similar to an average degree, while they are conceptually similar to an average degree for the public under analysis. In this regard, the Opposition Division makes reference to that ‘LUNARIS’ and ‘LUNARIA’ may be perceived as trade marks both originating from or being produced ‘BY CALLIA’ and that this creates a risk of association between the signs. Moreover the earlier mark is distinctive and the degree of attention is average. Account is 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).

Considering all the above, and taking into account the abovementioned principle of interdependence, the Opposition Division considers that the differences between the signs are not sufficient to offset their similarities and that there is a likelihood of confusion, which includes the risk of association, on the part of the Italian- and Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The opposition is not successful insofar as the goods and services that are similar to a low degree are concerned. For these goods and services the signs’ similarities cannot counteract their dissimilarities and the principle of interdependence (as referred to above) does not apply.

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.

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

Martina GALLE

Christian RUUD

Adriana VAN ROODEN

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.