OPPOSITION No B 2 859 976

SC Twins Cafe SRL, Str. Glodeni nr 1-3, sector 2, Bucharest, Romania (opponent), represented by Milcev Burbea Intellectual Property Office, 14 Doctor Staicovici Street, Sector 5, Bucharest, Romania (professional representative)

a g a i n s t

Minuto Casa Vinicola, Via Torino 62, 12050 Barbaresco CN, Italy (applicant), represented by Studio Torta S.P.A., Via Viotti 9, 10121 Torino, Italy (professional representative).

On 27/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 859 976 is upheld for all the contested goods.

2. European Union trade mark application No 16 134 918 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 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 16 134 918 ‘FRATELLI MINUTO’. The opposition is based on, inter alia, Romanian trade mark registration No 143 972, ‘fratelli’. 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 Romanian trade mark registration No 143 972.

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: Wine; spirits [beverages].

The contested wine; spirits [beverages] are included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they are 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.

The applicant argues that its wine is extremely expensive and its consumer is somebody who knows about wines, appreciates good wine and is prepared to spend a lot of money on a bottle of wine. Therefore, it claims, the attentiveness of these consumers should be considered higher than average. However, the registration of the mark is sought for wines and spirits [beverages] in general and not for specifically high quality wines and spirits that would be sold at high prices. Therefore, although some of the applicant’s wine may be sold at high prices, in general these goods are intended for everyday consumption and generally consumers display an average degree of attention when purchasing them (see 24/11/2016, T-250/15, CLAN, EU:T:2016:678, § 30-31; 13/04/2011, T-358/09, TORO DE PIEDRA, EU:T:2011:174, § 29). Therefore, the degree of attention of the relevant public is considered average.

3. The signs

fratelli	FRATELLI MINUTO
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 signs are word marks. It must be noted that in the case of word marks, it is irrelevant whether it is depicted in lower or upper case. Moreover, in relation to word marks, there is no element that is considered to be more dominant (visually eye-catching) than other elements.

The earlier trade mark is a word mark which is composed of a single word ‘fratelli’. The word ‘fratelli’ has no meaning in the Romanian language and it has an average degree of distinctiveness in relation to the relevant goods. In its observations the opponent indicates that the word ‘fratelli’ is an Italian word that means ‘brothers’. In the Romanian language the word ‘frate’ means ‘brother’ and the word ‘frati’ means ‘brothers’. Since the word ‘FRATELLI’ is close to an equivalent word in the Romanian language, it cannot be excluded that part of the relevant public will perceive it as referring to a brother.

In its observations, the applicant claims that the word ‘FRATELLI’ is descriptive due to its meaning, namely that of ‘brothers’. According to the applicant, it is a common word used in Italy to identify companies that are composed of members of the same family, and it is often used in trade marks filed or registered in Class 33 as it conveys the idea of tradition, history, and family relationships which are very important in relation to the products in this class. It must be recalled that, in the present case, the relevant territory is Romania, not Italy. Even if part of the relevant public will perceive this word as referring to a brother, as explained above, it does not describe, or allude to the relevant goods, neither it is otherwise weak in relation to the relevant goods. The applicant did not demonstrate that the alleged common practice in Italy, of using the word referring to ‘brothers’ to evoke the idea of tradition, history and family in trade marks, is also widespread in Romania or known to the Romanian consumers. Therefore, the distinctiveness of the word ‘FRATELLI’ is considered to be average also for the part of the relevant public which perceives the aforementioned meaning.

The contested sign is a word mark comprised of two words ‘FRATELLI MINUTO’. Considerations as regards the perception and the distinctiveness of the word ‘FRATELLI’ in the earlier trade mark on the part of the relevant public apply equally for the contested sign. The word ‘MINUTO’ has no meaning as such in Romanian. In its observations the opponent claims that the word ‘MINUTO’ is an Italian word which means ‘minute’. In the Romanian language the equivalent word is ‘MINUT’. Therefore, it is very close to the word ‘minute’ which means ‘a period of time equal to sixty seconds or a sixtieth of an hour’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/us/minute#minute-3 on 14/06/2018) and at least part of the relevant public will perceive the aforementioned meaning due to its close resemblance to the word ‘minut’ in Romanian. It is not descriptive, allusive or otherwise weak in relation to the relevant goods, and the distinctiveness of this word is also average for the part of the relevant public which perceives it’s the afore mentioned meaning.

Both parties argue in their observations, that ‘MINUTO’ is a surname of Italian origin and that the contested sign ‘FRATELLI MINUTO’ will refer to the MINUTO family and will be perceived as ‘MINUTO BROTHERS’. ‘FRATELLI MINUTO’ does not exist as such in the Romanian language; neither will the verbal element ‘MINUTO’ be perceived as a surname by the relevant public of Romania. Although the verbal elements ‘FRATELLI’ and ‘MINUTO’ will be associated by at least part of the relevant public with ‘brother’ or ‘brothers’ and ‘a minute’, respectively, there is no conceptual link in the unit ‘FRATELLI MINUTO’, but these words will be perceived as two independent elements with the above mentioned concepts.

Visually, the signs coincide in verbal element ‘FRATELLI’, which has an average degree of distinctiveness. However, they differ in the verbal element ‘MINUTO’ in the contested sign which has no counterpart in the earlier trade mark.

According to settled case-law, in word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).

In the present case, the first element of the contested sign, ‘FRATELLI’, will catch the consumers attention first and it has a significant influence on the general impression made by the contested sign. Moreover, it entirely reproduces the earlier trade mark.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛FRATELLI’, present identically in both signs. The pronunciation differs in the sound of the letters ‛MINUTO’ in the contested sign which have no counterpart in the earlier mark.

The first word of the contested sign will be pronounced identically to the only word of the earlier trade mark. Therefore, when referring to the contested sign, in the beginning of it, the consumers would pronounce the entire earlier trade mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal element ‘FRATELLI’, included in both signs, will be associated with the identical meaning of ‘brother’ by part of the relevant public. On the other hand, the contested sign also contains a verbal element which will be associated with the concept of a ‘minute’ by part of the relevant public. Since the marks will be associated with an identical concept, but there is also a distinctive differing concept in the contested mark, they are considered to be similar to an average degree for part of the relevant public.

For the part of the relevant for which neither of the signs has a meaning, a conceptual comparison is not possible, and it does not influence the assessment of the similarity of the signs for this part of the relevant public.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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

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). In addition, 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).

The signs are visually and aurally highly similar and conceptually they are similar to an average degree for part of the relevant public. The goods are identical. They target the public at large, which displays an average degree of attention.

In the present case, the contested sign contains two words, and the first one entirely reproduces the earlier trade mark. The earlier mark is thus, totally included in the contested one, where it retains an independent and distinctive role. As stated in section c) of this decision, since the word ‘FRATELLI’ is the first element of the contested sign, when encountering the contested sign visually and/or aurally, it will catch the consumer’s attention first, will be remembered clearly, will be read and/or pronounced at the beginning, and moreover this first element contains the earlier trade mark in its entirety.

Furthermore, 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).

It should be noted that the likelihood of confusion includes the likelihood of association, in the sense that the public, may, if not confuse the conflicting signs directly, conclude that they designate different lines of products or services coming from the same undertaking or from economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the present case, it is highly conceivable that the contested sign ‘FRATELLI MINUTO’ will be perceived as a sub-brand or a variation of the earlier trade mark ‘FRATELLI’.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that many trade marks, which are registered for the same goods in the Class 33, include the verbal element ‘FRATELLI’. It indicated that there are 124 registered trade marks in Italy, 34 in Europe and 26 international registrations which contain the word ‘FRATELLI’. In support of its argument the applicant submitted a list of these trade marks.

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 Register data 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 in Romania have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘FRATELLI’. Under these circumstances, the applicant’s claim must be set aside.

In its observations, the applicant argues that ‘MINUTO’ is the historical brand, and it is the surname of the brothers Livio and Ernesto Minuto. According to the applicant, FRATELLI MINUTO has been in use for a long time, for a number of decades already, and it is the name of wines that played an important role in the history of oenology. Moreover, FRATELLI MINUTO wines are protected by a Denomination of Origin. The applicant submitted extracts from websites which show that one of its wines is among top 50 most expensive wines in Italy.

Despite the long previous use claimed by the applicant, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date only the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 143 972. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Romanian trade mark registration No 143 972 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). The same applies as regards to the opponent’s claim of family of marks owned by the opponent. There is no need to assess it since the opposition is fully successful on the basis of the earlier Romanian trade mark No 143 972.

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

Michaela SIMANDLOVA

Birute SATAITE-GONZALEZ

Nicole CLARKE

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.