OPPOSITION No B 2 866 526

Albert Jane Ubeda, Pau Casals, 10-12, 43700 El Vendrell (Tarragona), Spain (opponent), represented by Ponti & Partners, S.L.P, C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Nosio S.p.A., Via del Teroldego 1/E, 38016 Mezzocorona, Italy (applicant), represented by Legance Avvocati Associati, Via Broletto, 20, 20121 Milano, Italy (professional representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 866 526 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 014 921 for the word mark ‘ACCUSì’. The opposition is based on, inter alia, European Union trade mark registration No 8 696 908 for the word mark ‘ACÚSTIC’. 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 8 696 908 for the word mark ‘ACÚSTIC’ , which is the best case scenario for the opponent, taking into account the kind of the earlier sign chosen, its territorial scope of protection and the goods covered by this earlier mark.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 32: Beers; Mineral, natural and aerated waters; Fruit beverages and fruit juices; Aperitifs, non-alcoholic; Cocktails, non-alcoholic.

Class 33: Alcoholic beverages, especially wines and sparkling wines.

An interpretation of the wording of the list of the contested goods in Class 33 is required to determine the scope of protection of these goods.

The term ‘especially’, used in the applicant’s list of goods in Class 33, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 32

The contested Beers; Mineral and aerated waters; fruit beverages and fruit juices are identically mentioned in the opponent’s specification (including synonyms).

The contested natural waters include, as a broad category, or overlap with, the opponent’s mineral waters. Consequently, they are identical.

The remaining contested Aperitifs, non-alcoholic; Cocktails, non-alcoholic are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.

Contested goods in Class 33

All the contested goods, namely alcoholic beverages, especially wines and sparkling wines overlap with the opponent’s Alcoholic beverages (except beers). Consequently, they are identical.

b) 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 whose degree of attention is average.

c) The signs

ACÚSTIC	ACCUSì
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).

Both marks are word marks.

The earlier mark ‘ACÚSTIC’ will be associated by some parts of the relevant public in the relevant territory, such as the Spanish-, Italian-, French- and Portuguese-speaking parts of the public, but also by the English-speaking part of the public, because of the proximity of its equivalent word in the corresponding official languages (e.g. in English ‘acoustic’), as a an adjective referring to a sound of a musical instrument without electronic amplification.

As to the contested sign, the element ‘ACCUSì’ will be understood by the Italian-speaking part of the public as a verb meaning accused and referring to a person or a group of people with a crime or on trial for it.

Since these words are neither descriptive nor lacking distinctiveness for any of the relevant goods, as they do not describe or even allude to any of their essential characteristics, they are distinctive in relation to them.

For the remaining part of the public in the relevant territory the signs are meaningless. They are, therefore, normally distinctive in relation to the goods at issue.

The Opposition Division will therefore analyse all the above mentioned modalities referring to different perceptions of the signs in question.

Visually and aurally, to the extent that the signs are compared with regard to their coinciding parts, they have the first letters ‘AC’ placed in the same position. The Opposition Division respectfully disagrees with the opponent and notes that although some of the remaining letters, such as ‘U’, ‘S’ and ‘I’, are shared by the signs, they are disposed differently because the sequence of consonants only coincide in the first one C/S/T vs. C/C/S. Furthermore, they differ in the second letter ‘C’ of the contested sign. The double letter ‘C’ of the contested sign will be pronounced strongly by the Italian-speaking part of the public. While, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present case, what matters more is that the above mentioned different letter arrangement is equally important and has a great impact on the overall impression given by the signs. Bearing in mind the abovementioned findings, the signs are aurally and visually similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will understand both terms present in the signs according to the meanings mentioned above, the signs are conceptually dissimilar. For the part of the public that will perceive only the meaning of one of the conflicting signs, they are not conceptually similar. For the remaining part of the public, the conflicting signs are meaningless and, therefore, the conceptual aspect will not affect the comparison 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.

d) 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 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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The contested goods are identical to the opponent’s ones. In relation to them the attention of the public at large is average. The earlier mark enjoys an average degree of distinctiveness.

The signs are visually and aurally similar to a low degree, principally due to the presence of the coinciding first two letters ‘AC’. The relevant public will perceive more common letters in both signs, however these letters are distributed differently between the two signs and this fact disperses a sense of similarity between them. Likewise, conceptually, the signs are either dissimilar, not similar or this aspect will not affect the assessment of the likelihood of confusion in the present case (for the part of the public, for which the signs do not convey any meaning).

Therefore, as commented above, the conflicting signs contain clearly perceivable differences which are sufficient to exclude any likelihood of confusion between the marks. Furthermore, the opponent did not sufficiently prove that the public may confuse the origin of the goods or assume that they are manufactured by the same undertakings. In the present case, the differences between the signs are overwhelming and a likelihood of confusion, including likelihood of association, can be safely excluded in the case at hand. As remarked by the opponent, although consumers tend more to retain similarities than dissimilarities between the signs, in the present case, when being confronted with the conflicting marks, they will instantly spot characteristic double letter ‘C’ at the beginning of the contested sign and differently arranged letters which the signs have in common.

Taking into account the abovementioned and contrary to the opponent’s observations, the relevant consumers will not be able to think that the contested sign ‘ACCUSì constitutes a sub-brand of the earlier mark ‘ACÚSTIC’. As the market practice shows, it is natural for brands to introduce their new versions via the introduction of new verbal or/and stylisation components, while preserving the same ‘house’ brand. The present case shows that the opponent’s earlier mark is not included into the contested sign and, for this reason, the arguments of the opponent must be put aside.

Considering all the above and even if the conflicting goods have been found identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on the following earlier trade marks:

 Spanish trade mark registration No 2 664 091 for the word mark ‘ACÚSTIC’, covering the goods in Class 33.

 International trade mark registration designating the United Kingdom No 901 514 for the figurative mark , covering the goods in Class 33, and

 European Union trade mark registration No 11 600 053 for the figurative mark and covering the goods in Class 33.

Since these marks are either identical, but their scope of protection is narrower, or less similar because they contain further figurative components to the one that has been compared and cover a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Monika CISZEWSKA

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.