OPPOSITION No B 2 856 832

The World Institute of Slowness AS, Johan Øydegardsvei 11, 4632 Kristiansand S, Norway (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, EC2N 2DG, London, United Kingdom (professional representative)

a g a i n s t

Adegas e Viñedos Via Romana S.L., A Hermida s/n -Belesar - Apdo. Postal 24, 27500 Lugo/Chantada, Spain (applicant), represented by Licentia Patentes y Marcas y Servicios Jurídicos S.L., C/Novoa Santos Num 6-8 1º; 15006 A Coruña, Spain (professional representative).

On 10/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 856 832 is upheld for all the contested goods.

2. European Union trade mark application No 15 808 215 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 808 215 ‘SLOW LIFE’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 9 895 269 ‘SLOW’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submits proof of use of European Union trade mark registration No 9 895 269 ‘SLOW’.

In the present case, the date of filing of the contested trade mark was 25/11/2016.

The opponent’s earlier trade mark No 9 895 269 ‘SLOW’ was registered on 04/12/2015. Therefore, the request for proof of use is inadmissible.

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 9 895 269 ‘SLOW’.

1. The goods

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

Class 33: Alcoholic beverages (except beer).

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

Alcoholic beverages (except beer) are identically included in both lists of 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 average.

3. The signs

SLOW	SLOW LIFE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both signs under comparison are word marks.

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 common element ‘SLOW’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-, Polish- and Slovak-speaking part of the public, where the majority of the public will not understand its meaning. In addition, the word element ‘LIFE’ is also meaningless for the majority of the aforesaid public. Therefore, the Opposition Division will focus its comparison on this part of the relevant public for which the aforesaid words are meaningless as it will be more prone to confusion.

The element ‘SLOW’, present in both signs, has no meaning for the relevant public and is, therefore, distinctive. The element ‘LIFE’ of the contested sign is also meaningless for the relevant public and is, therefore, distinctive.

The signs, both being word marks, have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘SLOW’ which is the only word in the earlier mark and the first word element in the contested sign. They differ in the second word element ‘LIFE’ of the contested sign.

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

Aurally, 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 ‛SLOW’, present identically in both signs. The pronunciation differs in the sound of the letters ‛LIFE’ of the contested mark, which has no counterpart in the earlier sign.

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

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

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §22).

In the present case, the goods are identical and the conflicting marks are visually and aurally similar to an average degree. The conceptual comparison is not possible. The relevant goods target the general public whose degree of attention is average. Furthermore, the distinctiveness of the earlier mark is normal.

In an overall assessment of all the relevant factors, it must be concluded that the only difference between the marks, that is, the second word element of the contested sign (‘LIFE’), cannot outweigh the visual and aural similarities arising from the coinciding element ‘SLOW’. In the present case the signs have the same first four letters. In this respect it should be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Furthermore, it should be noted that the distinctive word element ‘SLOW’ of the earlier mark is entirely contained in the contested sign where it plays an independent role.

Considering all the above, there is a likelihood of confusion on the major part of the Czech-, Polish- and Slovak-speaking part of the public for which the words ‘SLOW’ and ‘LIFE’ are meaningless. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 895 269 ‘SLOW’. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, namely European Union trade mark registration No 9 895 269 ‘SLOW’, 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).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘SLOW’. In support of its argument the applicant refers to several trade marks registrations, namely European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘SLOW’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to previous decisions of the Office and court judgments to support its arguments (e.g. 04/03/2015, T-558/13, FSA K-FORCE, ECLI:EU:T:2015:135). However, the Office is not bound by its previous decisions or court judgments as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office or court judgments are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as they concern other factual circumstances such the trade marks and goods compared. Therefore, this claim of the applicant has to be set aside.

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

Arkadiusz GÓRNY

Michal KRUK

Janja FELC

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.