OPPOSITION No B 2 880 527

Pagos Del Rey, S.L., Autovia de Andalucia, Km. 199, Valdepeñas (Ciudad Real); Spain (opponent), represented by José María Sánchez Wolff, Avda Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

Arivia Industrial And Commercial Societe Anonyme trading as Arivia SA, Block 31, DA 13 Phase B, Industrial Area Of Sindos, 57022 Delta Municipality, Thessaloniki, Greece (applicant), represented by Malamis & Associates, Palaia Tatoiou 8, Kifisia, 145 64 Athens, Greece (professional representative).

On 23/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 880 527 is upheld for all the contested goods, namely

Class 33: Wines, alcoholic beverages, ouzo, liqueurs.

2. European Union trade mark application No 15 335 722  is rejected for all the contested goods. It may proceed for the remaining non-contested goods and services.

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

PRELIMINARY REMARK

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 335 722  for the figurative mark , namely against all the goods in Class 33. The opposition is based on International trade mark registration No 1 125 415 designating the European Union and Spanish trade mark registration No 2 141 153, both for the word mark ‘ANALIVIA’ The opponent invoked Article 8(1)(b) EUTMR.

Substantiation of International trade mark registration No 1 125 415 designating the European Union for the word mark ‘ANALIVIA’

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards this earlier trade mark.

On 17/05/2017, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/09/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier international trade mark registration Nº 1 125 415 designating the European Union.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

The examination of the opposition will now proceed based on the other earlier mark claimed by the opponent, namely Spanish trade mark registration No 2 141 153, which was duly substantiated.

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 33: Wines, sparkling wines, liquor and spirits

The contested goods are the following:

Class 33: Wines, alcoholic beverages, ouzo, liqueurs

Wines and liqueurs are identically contained in both lists of goods (as liquor is the singular form for liqueurs).

The contested alcoholic beverages include, as a broader category, the opponent’s wines. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

As pointed out by the opponent, the contested ouzo is a Greek soil that consists of pure or ethyl alcohol that may be made from either grape or grain and then, distilled with aniseed. To that extent the contested ouzo is contained in the opponent´s broader category of liquor and spirits, being therefore, identical.

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.

It is settled case-law that, firstly, the goods at issue, which are all alcoholic beverages, are for everyday consumption and are normally widely distributed, ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafes and that, secondly, the consumer of alcohol is a member of the general public, who will demonstrate an average level of attention when purchasing such goods (see, to that effect, 19/01/2017, T-701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein).

3. The signs

ANALIVIA
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).

None of the verbal elements of the marks, ‘ANALIVIA’ in the earlier mark and ‘ARIVIA’ in the contested sign, are meaningful in the relevant territory and, therefore, both are distinctive to an average degree. The earlier mark is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof. The contested sign is a figurative mark, consisting of the single verbal element ‘arivia’ written in stylised black lower case letters. Above this word, there is a device resembling the first letter ‘a’ of the word ‘arivia’, with three leaves growing from within the vertical stroke of the letter.

The applicant argues that this letter is the essential and most dominant element of the contested sign and, that in fact, the contested sign will be pronounced as ‘a’. The Opposition Division does not agree with this assertation, and notes that, notwithstanding the fact that this element is depicted on top of the contested sign, and its normal distinctiveness on account of it being fanciful for the goods in question the contested sign has no elements that could be considered more dominant (visually eye-catching) than others.

It is important to note, that, 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).

Visually, the signs share the string of letters ‘a***ivia’, that is, five identical letters in identical order of the eight letters of composing the earlier sign. The signs differ in the sequence of letters ‘*NAL****’ present in the earlier mark and ‘R’ in the contested sign, and in the figurative aspects of the contested sign which, however, as seen above will have less impact than the verbal components.

Therefore, the signs are similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /’A***IVIA’/ present identically in both signs. The earlier mark has four syllables /A/-/NA/-/LI/-/VIA/ and the contested sign is composed of three syllables /a/-/ri/-/via/ the first and the last syllables being identical in both signs. This shared letter sequence gives the signs an overall aural similarity to an average degree.

Conceptually, although the contested sign’s figurative element carries the concept of the letter ‘a’, and the three leaves, the earlier sign bears no meaning, and therefore, the signs are conceptually dissimilar.

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 average.

5. Global assessment, other arguments and conclusion

It has been established in section a) of this decision that the contested goods are identical to the goods on which the opposition is based. They are directed at the public at large and the degree of attention is average. The earlier mark has a normal degree of distinctiveness for the relevant goods.

It has also been concluded that the signs are visually similar to a below average degree, and aurally similar to an average degree while conceptually, the signs are dissimilar.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17)

Account should be 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).

In addition, 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 and is of particular relevance in the present case for a finding of likelihood of confusion.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical goods. Therefore, on account of the principle of imperfect recollection, the relevant public may believe that these goods come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration.

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.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Saida CRABBE

Alexandra APOSTOLAKIS

Carlos MATEO PÉREZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.