OPPOSITION No B 2 735 374

Miguel Torres S.A., Miquel Torres i Carbó, 6, 08720 Vilafranca del Penedès (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Alltech Inc., 3031 Catnip Hill Road, Nicholasville Kentucky 40356, United States of America (applicant), represented by Bomhard IP S.L., C/Bilbao 1 5º, 03001 Alicante, Spain (professional representative)

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

DECISION:

1. Opposition No B 2 735 374 is upheld for all the contested goods, namely:

Class 33: Alcoholic beverages (except beer).

2. European Union trade mark application No 15 312 201 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 312 201, namely against all the goods in Class 33. The opposition is based on, inter alia, Spanish trade mark registration No 2 006 121. 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 Spanish trade mark registration No 2 006 121.

1. The goods

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

Class 33: Spirits, brandy, rum, gun, absinthe, aniseed spirits and liqueurs and liqueur of all types.

The contested goods are the following:

Class 33: Alcoholic beverages (except beers).

The contested alcoholic beverages (except beers) include, as a broader category the opponent’s goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical 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 found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

JAIME II	James II
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 composed of a common Spanish name and a roman numeral ‘JAIME II’. In such a combination, the relevant public will perceive the mark as the name of a Spanish king, without recognising any particular historical person, given that the relevant public is used to the fact that roman numerals are used in names of monarchs and popes since the Middle Ages to provide a unique identification during their reigns.

The contested sign will be associated by the relevant public with a foreign name followed by a roman numeral and it is therefore reasonable to assume that the contested sign will be perceived as referring to a foreign king. Furthermore, it cannot be excluded that part of the relevant public may perceive it as a foreign equivalent of ‘Jaime II’, given that ‘James’ is one of the English translations of ‘Jaime’.

The marks enjoy an average degree of distinctiveness in the context of the relevant goods.

Visually, the signs are similar to the extent that they coincide in ‘JA*ME*’ and ‘II’. They only differ in the third letter ‘I’ of the earlier mark and the final letter ‘S’ of the contested sign. The length, structure, beginning and end of the signs are the same.

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

Aurally, the pronunciation of the syllables ‘JAI-ME’ and ‘JA-MES’ is similar because they have the same beginning and the only differences in the middle ‘I’ of the earlier mark and final ‘S’ in the contested sign are not striking. The signs coincide in the pronunciation of ‘II’, which will – taking into consideration that it is recognized as a Roman numeral and associated with a king, be pronounced as ‘segundo’ (second). Moreover, the letter ‘s’ in the contested sign, which has no counterpart in the earlier mark, disappears in the full Spanish pronunciation of ‘Ja-mès-sè-gun-do’ Therefore, the difference created by the letter ‘I’ in the earlier mark, which moreover is placed in the middle, is very little.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs make reference to a king, they are conceptually similar to a low degree. This degree of similarity will be average for the part of the public that recognises the name ‘James’ as a foreign version of the Spanish name ‘Jaime’.

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.

5. Global assessment, other arguments and conclusion

The appreciation of the 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).

The goods are identical and the marks are visually and aurally highly similar. Conceptually the marks are similar from a low to average degree.

The signs are word marks and differ in only one letter when pronounced. It should be borne in mind that the relevant goods are alcoholic 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 006 121. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Jessica LEWIS

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.