OPPOSITION No B 2 898 420

J. Garcia Carrion, S.A., Carretera de Murcia, s/n, 30520, Jumilla (Murcia), Spain (opponent), represented by Carlos Aymat Escalada, Hortaleza, 37, 28004, Madrid, Spain (professional representative)

a g a i n s t

DFM s.r.l., Largo Quinto Alpini 1, 20100 Milano, Italy (applicant), represented by Agazzani & Associati s.r.l., Via dell'Angelo Custode 11/6, 40141 Bologna, Italy (professional representative).

On 25/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No  B 2 898 420 is upheld for all the contested goods, namely

Class 33: Wine; Liqueurs; Potable spirits; Grappa (brandies); Brandy.

2. European Union trade mark application No 16 334 203 is rejected protection in respect of all of the above goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 334 203 for the word mark ‘CAPO REAMOL’, namely against all the goods in Class 33. The opposition is based on the European Union trade mark registration No 13 585 641 for the word mark ‘CAPPO’. 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.

1. The goods

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

Class 33: Wine.

The contested goods are the following:

Class 33: Wine; Liqueurs; Potable spirits; Grappa (brandies); Brandy.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Wine is identically contained in both lists of goods.

The contested liqueurs; potable spirits; grappa (brandies); brandy are similar to the opponent’s wine as they have the same nature. They usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

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 or similar are directed at the public at large. The applicant argues that the relevant public will display a higher-than-average degree of attention because of the nature and price of the goods and because, when purchasing these goods, the consumers spend more time reading the labels, comparing beverages on the basis of several factors. However, it is settled case-law that, firstly, the goods at issue, which are 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

CAPPO	CAPO REAMOL
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.

When an opposition is based on a European Union trade mark, as in the present case, in conducting the comparison account must be taken, in principle, of all the different pronunciations and meanings of the signs by the relevant public in all the official languages of the Member States.

In the present case, for a part of the public, such as the English and German-speaking part of the public, the pronunciation of the verbal elements ‘CAPPO’ of the earlier mark and ‘CAPO’ of the contested sign is identical as the double ‘PP’ is pronounced in the same way as ‘P’. However, the pronunciation of these verbal elements is less similar for that part of the public laying certain emphasis in the pronunciation of the double ‘PP’ which will be quite different from the pronunciation of the single letter ‘P’, such as the Italian and Polish-speaking part of the public

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English and German-speaking part of the public such as the public in Ireland, Malta, United Kingdom, Germany and Austria.

Moreover, for this part of the public the signs’ verbal elements (i.e. CAPPO of the earlier mark and CAPO REAMOL of the contested sign) are meaningless and, therefore, distinctive. Consequently a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. In this respect it is noted that this part of the public will not attach any geographical meaning to the verbal elements ‘CAPO REAMOL’, as it is an Italian location known at most by part of the Italian public which is not taken into account in the present analysis. Moreover, contrary to the applicant’s arguments, the verbal element of the contested sign ‘CAPO’ is not likely to be associated by the English speaking public with the English word ‘Cape’ because of the different endings.

As both signs are word marks they have no element which could be considered dominant (visually eye-catching).

Visually, the signs coincide in the string of four letters ‘CAP-O’ which make up four out of five letters of the earlier mark and the entire first verbal element of the contested sign which is the part that first catches the consumer’s attention. On the other hand, they differ in additional letter ‘P’ in the middle of the earlier mark and additional verbal element ‘REAMOL’ of the contested sign.

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

Aurally, as said above the earlier mark ‘CAPPO’ and the first verbal element of the contested sign ‘CAPO’ will be identically pronounced. The pronunciation differs in the sound of the additional verbal element of the contested sign ‘REAMOL’.

Therefore, the signs are aurally 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.

5. Global assessment, other arguments and conclusion

The goods found to be identical or similar target the public at large with an average degree of attention. The signs are visually similar to a below average degree and aurally similar to an average degree based on the fact the first verbal element of the contested sign and the only element of the earlier mark almost coincide differing only because the letter ‘P’ of the contested sign’s verbal element ‘CAPO’ is doubled in the earlier mark ‘CAPPO’. Moreover, as explained above, this difference has no relevance at a phonetic level.

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).

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The contested sign has the additional verbal element ‘REAMOL’ which has a normal distinctive character. However, this element is clearly separated from the element ‘CAPO’, where the coincidences between the signs occur. Therefore, even if the verbal element REAMOL will not go unnoticed by the relevant public, given the visually similarities and aurally identity of the elements CAPPO/CAPO, it is likely that the relevant public will at least associate the contested sign with the earlier mark in relation to identical or similar goods. Additionally, neither of the signs or their elements has a meaning which would help to differentiate them.

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.

Therefore, taking into account the above mentioned considerations regarding the aural comparison and in particular the coincidence in the pronunciation of ‘CAPPO’ (the only element of which the earlier mark is made up) and ‘CAPO’ (the first verbal element of the contested sign), the risk of association is even more likely to occur in relation to the relevant goods.

In the present case, consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark, considering that it will be applied to goods that are identical or similar to those protected by the earlier trade mark. In other words, consumers may confuse the origins of the goods at issue, assuming that they come from the same undertaking or from economically linked undertakings.

The applicant argues that as ‘the earlier mark is very short and the contested sign is twice its length, the differences in the respective visual and impact will surely be noted by the consumer’.

According to the current Office Guidelines, the length of signs may influence the effect of the differences between them. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements. In contrast, the public is usually less aware of differences between longer signs. However, each case must be judged on its own merits, having regard to all the relevant factors. The Courts have not defined exactly what a short sign is. However, signs with three or less letters/numbers are considered by the Office to be short signs which is not the case at issue. Moreover, the current case-law emphasises that 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 (15/12/2009, T‑412/08, TRUBION/TriBion Harmonis (fig.), EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

In the light of the above, despite the different length of the signs, the likelihood that the public under analysis might associate the signs with each other is real.

Considering all the above, there is a likelihood of confusion in the form of a likelihood of association on the part of the English and German-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 13 585 641. It follows that the contested trade mark must be rejected for all the contested 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 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

Anna BAKALARZ

Angela DI BLASIO

Kieran HENEGHAN

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.