OPPOSITION No B 2 859 612

Dominio de Eguren, S.L., Camino de San Pedro, s/n, 01307 Paganos-Laguardia, Spain (opponent), represented by P.E. Enterprise, S.L., Gran Via 81, planta 5°, Dpto. 9, 48011 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

MGM Mondo del Vino SRL, Via C. Seganti 73/F, 47121 Forlí (Forlí Cesena), Italy (applicant), represented by Bugnion S.P.A., Via di Corticella 87, 40128 Bologna, Italy (professional representative).

On 22/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 859 612 is upheld for all the contested goods.

2. European Union trade mark application No 16 146 912 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 146 912 ‘CODICI BANDA NERA’ (word). The opposition is based on, inter alia, the three-dimensional European Union trade mark registration No 14 013 122

The opponent invoked Article 8(1)(b)  EUTMR.

PRELIMINARY REMARK

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.

Proof of use of the earlier marks was requested by the applicant. Since the earlier European Union trade mark registration No 14 013 122 was not subject to the use obligation at that time (registered on 28/08/2015), the Opposition Division will first examine the opposition on the basis of that earlier right and only if deemed necessary, the remaining earlier rights and, respectively, the submitted evidence of use, will be examined.

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 14 013 122 for the reasons explained above.

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; Sparkling wines; Sweet wines; Still wine.

All contested goods, namely wine; sparkling wines; sweet wines; still wine 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.

The applicant contends that the degree of attention of the relevant public, which is the general public, with respect to the goods found to be identical, is high, because these could be, among others, expensive goods.

In the present case, registration of the mark is sought for wines in general, and not specifically for quality wines that would be sold at relatively high prices. Wines in general are everyday goods, averagely priced and sold at standard food and drinks sales points; as such they do not require a higher level of attention upon purchase. As correctly noted by the applicant, it is the attention of the average consumer that should be taken into account. (13/04/2011, T-358/09, Toro de piedra, EU:T:2011:174, § 29). Many categories of goods, including everyday goods, may include more expensive and/or luxurious products. This, however, does not mean that the attention with respect to such goods, which is rather an exception than the rule, is to be taken into account, unless the goods for which the mark is or seeks registration and specifically defined as expensive or luxury goods.

Moreover, it is settled case-law that the likelihood of confusion should be assessed against the perception of the part of the public displaying the lower degree of attentiveness as it will be more prone to being confused (15/07/2011, T-220/09, ERGO, EU:T:2011:392, § 21).

Accordingly, in the present case it is the public at large, showing an average degree of attention, that is considered relevant for the below examination.

3. The signs

	CODICI BANDA NERA
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).

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 Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public since, as shown below, the compared signs will evoke particular concepts in the Italian-speaking public. For procedural economy reasons, it is considered sufficient to assess the signs from the perspective of this part of the public only, instead of considering possible perceptions of other parts of the public (e.g. for whom the words are meaningless or those for whom some of the relevant word elements may evoke a concept).

The earlier mark is a tri-dimensional mark, representing a black bottle with a label in orange. The label contains the verbal element ‘CODICE’ in big letters vertically positioned, a considerably lengthy text in Spanish, written in very small letters and figurative elements of decorative nature.

The word ‘CODICE’ in Italian means ‘code’ (Collins Italian-English Dictionary, available at www.collinsdictionary.com). This meaning has no link to the goods in question and is, therefore, distinctive.

Upon perception of the mark, it is not the bottle as such, that catches the consumer’s attention and serves as an identification of commercial origin, because nothing in the shape of the bottle deviates from the shape of bottles standardly used in the wines sector. It is the colour-composition, as used on the bottle (black bottle, label in orange, golden frame of the front label, red colour of the Spanish text and the figurative elements on the label, the reddish net in which the verbal element ‘CODICE’ in orange is represented, the black and golden wrapping of the neck bottle) that catches the consumer’s attention and is remembered by them.

Further, while it is unlikely that when confronted with the mark, the consumers will read the lengthy text that is included on the label, the word ‘CODICE’ in big letters in the front part of the bottle is the single verbal element of the sign that will be immediately noticed and read. 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). This premise is fully applicable in relation to the perception of ‘CODICE’ in the earlier mark. Moreover, in this particular case the figurative elements of the label are of decorative nature and are likely to be ignored by the consumers or even if noticed, would have a minor impact than ‘CODICE’.

In view of the foregoing, the word ‘CODICE’, which will be seen as the product name, and the specific combination of colours used on the bottle, will be noticed and remembered by the consumers as the elements identifying the commercial origin of the goods. Accordingly, these are the most distinctive elements of the mark.

These elements are considered also to be the most eye-catching components of it. In view of the position, size and colour-combination, ‘CODICE’ will immediately catch the consumer’s attention. Additionally, the specific colour composition of the bottle will also be immediately noticed by consumers.

As for the contested sign, contrary to the claim of the applicant that the mark is composed of a fanciful word combination, without any meaning, actually the second and third word form a grammatically and semantically correct phrase in Italian, meaning a ‘black strip’. In particular, ‘BANDA’ means among others ‘a band, strip’ and ‘NERA’ - ‘black (in feminine)’ (Collins Italian-English Dictionary, available at www.collinsdictionary.com). Additionally, the first word ‘CODICI’ is the plural of the Italian word ‘CODICE’, which has the above-described meaning. None of these elements evokes a concept that is related to the goods in question and are, therefore distinctive.

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. Therefore, it is likely that in the case at hand, it is the first element ‘CODICI’ that plays a more important role in the contested sign’s perception. Moreover, the second and third word form a meaningful expression, and it is unlikely that the consumers break it down and, for example, remember only the first and second words, thus ignoring the third one. On the other hand, given the length of the entire mark, it is quite unlikely that all three words are remembered by the consumers. On a separate note, often in the wines sector the different colour of the label is used to designate different product lines of the same product of the same undertaking. Hence, as noted by the applicant, some consumers may see the second and third word as referring to a ‘black label’ product line of ‘CODICI’ wines. Hence, for these reasons ‘BANDA NERA’ will be subordinate to ‘CODICI’ for this part of the public.

Visually, the signs coincide in ’CODIC*’, which are five out of six letters of (one of) their most prominent elements. It is true that the last letter of the word is different in both signs – ‘E’ in the earlier mark and ‘I’ in the opposed one. However, this difference is in the last letter of the word and consumers pay greater attention to the beginning than to the ending of words (16/05/2005, T-112/03, ‘Flexi Air’, ECLI:EU:T:2005:102, § 64) and some may even not notice the difference. For these reasons and on account of the length of the coinciding letters in the same sequence, the similarities far outweigh the different ending.

The signs differ in the remaining two words in the contested sign and the remaining elements of the earlier mark.

Irrespective of the fact that the earlier mark is a complex mark containing a number of elements that are not present in the contested one and on the other hand that the latter has two additional verbal elements without counterparts in the earlier sign, for the above-explained reasons, the compared marks are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CODIC*’. It is to be noted that the differing last letter in ‘CODICE’ in the opponent’s sign as compared to ‘CODICI’ in the applicant’s sign, are the vowels ‘E’ and ‘I’, which are phonetically very close. On account of this fact and given that these are the last letters in the words, it may be that the difference is not even noticed by part of the public. The signs further differ in ‘BANDA NERA’ in the contested sign, which has no counterpart in the earlier mark.

In the light of the foregoing, the signs are considered aurally similar at least to an average degree, since the differences originate in elements of lesser importance in the consumer’s perception.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Due to the highly similar concept that ‘CODICE/CODICI’ will evoke, the signs are similar to an average degree.

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, despite the presence of a non-distinctive element, as discussed above.

5. Global assessment, other arguments and conclusion

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 is 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).

It has been established that the goods are identical and that they target the public at large with an average degree of attention. The earlier mark has been found to be of normal inherent distinctiveness with respect to the goods at question. On account of the coincidence in ‘CODIC*’, which is one of the most distinctive and dominant elements of the earlier mark, which will be seen as the product name, and the most prominent element in the opposed mark, the signs have been established to be visually and conceptually similar to an average degree and aurally similar at least to an average degree.

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 (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

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 in the finding of likelihood of confusion.

Moreover, it is common in many industry sectors, the wine sector including, for the same distinctive element to be configured in various ways according to the type of product which it covers and for the same undertaking to use a sub-brand to distinguish various production lines. In such circumstances, it is conceivable that the relevant consumer may regard the products covered by the conflicting signs as belonging, admittedly, to two distinct ranges of products but as coming, none the less, from the same undertaking (23/10/2002, T-104/01, Fifties, ECLI:EU:T:2002:262, § 49).

In view of the above findings, it is highly conceivable that when used for identical goods, 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 that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking part of the public. 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 14 013 122. It follows that the contested trade mark must be rejected for all the contested goods. As this earlier mark leads to the success of the opposition, 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) or the related evidence of use.

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

Eva Inés PÉREZ SANTONJA

Teodora Valentinova TSENOVA-PETROVA

Richard BIANCHI

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.