OPPOSITION No B 2 883 901

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Rhums Réunion, Groupement d’intérêt économique, ZIC N1, 6 rue Armagnac, 97420 Le Port, France (applicant), represented by Cabinet Célanie, 5 avenue de Saint Cloud, 78002 Versailles Cedex, France (professional representative).

On 23/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 883 901 is partially upheld, namely for the following contested goods and services:

Class 33: Rum with the protected geographical indication ‘Rhum de la Réunion’ or ‘Rhum de Réunion’ or ‘Rhum Réunion’ or ‘Rhum de l’Ile de La Réunion’.

Class 40: Processing of agricultural products for others (distillation, fruit pressing).

2. European Union trade mark application No 16 334 914 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 334 914 . The opposition is based on, inter alia, German trade mark registration No 1 183 419 ‘CHARETTE’. 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.

On 12/10/2017, in its observations, the applicant requested proof of use of the earlier marks. However, it did not submit the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR for proof of use requests filed on or after 01/10/2017.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR, as rightly pointed out by the opponent. It follows that the Opposition Division will not examine the evidence submitted by the opponent.

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 German trade mark registration No 1 183 419 ‘CHARETTE’.

1. The goods and services

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

Class 33: Wines and sparkling wines.

The contested goods and services are the following:

Class 21: Plates; disposable table plates; glass flasks (containers), other than wine glasses; jars (glass -) [carboys]; boxes of glass; basins [bowls]; bottles, other than wine bottles; carafes, other than wine carafes; coasters (not of paper) and other than table linen; flasks; liqueur sets; mugs; electric and non-electric bottle openers; drinks containers and drinking vessels, other than wine containers and vessels; kitchen containers; ice buckets; services [dishes]; shakers; kitchen utensils; glass (receptacles), other than wine glasses; drinking glasses, other than wine glasses.

Class 33: Rum with the protected geographical indication ‘Rhum de la Réunion’ or ‘Rhum de Réunion’ or ‘Rhum Réunion’ or ‘Rhum de l’Ile de La Réunion’.

Class 35: Demonstration of goods; organisation of trade fairs for commercial or advertising purposes; consumers (commercial information and advice for -) [consumer advice shop]; providing business information via a web site; presentation of goods on communication media, for retail purposes; retailing or wholesaling of rum with the protected geographical indication ‘Rhum de la Réunion’ or ‘Rhum de Réunion’ or ‘Rhum Réunion’ or ‘Rhum de l’Ile de La Réunion’.

Class 40: Processing of agricultural products for others (distillation, fruit pressing).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 21

The contested plates; disposable table plates; glass flasks (containers), other than wine glasses; jars (glass -) [carboys]; boxes of glass; basins [bowls]; bottles, other than wine bottles; carafes, other than wine carafes; coasters (not of paper) and other than table linen; flasks; liqueur sets; mugs; electric and non-electric bottle openers; drinks containers and drinking vessels, other than wine containers and vessels; kitchen containers; ice buckets; services [dishes]; shakers; kitchen utensils; glass (receptacles), other than wine glasses; drinking glasses, other than wine glasses are dissimilar to the opponent’s wines and sparkling wines.

Although some of the contested goods, such as drinking glasses, other than wine glasses, could be used to drink wines, regardless of the limitation (other than wine glasses), these goods do not have the same nature, method of use or purpose. They do not have the same usual origin or distribution channels and they do not target the same consumers. Finally, they are not in competition.

Contested goods in Class 33

The contested rum with the protected geographical indication ‘Rhum de la Réunion’ or ‘Rhum de Réunion’ or ‘Rhum Réunion’ or ‘Rhum de l’Ile de La Réunion’ is similar to the opponent’s wines because they have the same nature, being alcoholic beverages, regardless of the fact that they could be manufactured using different production processes or that they are made from different products, or contain different proportions of alcohol (between 12.5% and 14% for wines and 45% for rums). Therefore, the applicant’s arguments are irrelevant. Moreover, they target the same relevant public and have the same distribution channels. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. They also usually have the same method of use. Furthermore, they are in competition.

The applicant refers to a previous decision of the Office to support its arguments, namely 29/04/2009, T‑430/07, Montebello rhum agricole, EU:T:2009:127. However, the Office is not bound by its previous decisions, 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The applicant also refers to a decision of the Benelux trade mark office dated 05/03/2012 and involving the same parties. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the two proceedings referred to by the applicant, it was stated that wine and rum were dissimilar because they differed in nature, method of use and distribution channels. However, these previous cases are not relevant, since they preceded a change in Office practice in 2018.

Therefore, the applicant’s arguments must be disregarded.

Contested services in Class 35

The contested retail services of rum with the protected geographical indication ‘Rhum de la Réunion’ or ‘Rhum de Réunion’ or ‘Rhum Réunion’ or ‘Rhum de l’Ile de La Réunion’ and the opponent’s wines and sparkling wines are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are only similar, as stated above.

The same principles apply to wholesale services. Therefore, the contested services wholesaling of rum with the protected geographical indication ‘Rhum de la Réunion’ or ‘Rhum de Réunion’ or ‘Rhum Réunion’ or ‘Rhum de l’Ile de La Réunion’ are also dissimilar to the opponent’s wines and sparkling wines.

The contested services demonstration of goods; organisation of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes are advertising services that consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the contested services demonstration of goods; organisation of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes are dissimilar to the opponent’s goods.

The contested consumers (commercial information and advice for -) [consumer advice shop]; providing business information via a web site are commercial and business services usually rendered by specialist companies such as business consultants. They are dissimilar to the opponent’s goods because they have nothing in common. They have different natures, purposes and methods of use. They are neither complementary nor in competition. They do not have the same distribution channels. They do not target the same end user. Finally, they are provided by different companies.

Contested services in Class 40

The contested processing of agricultural products for others (distillation, fruit pressing) are similar to a low degree to the opponent’s wines and sparkling wines, as they are complementary, since the contested services relate to the production process of the opponent’s wines. Moreover, they can have the same providers, as the companies in charge of the production process are usually the same as those that produce the finished 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 and services found to be similar to various degrees are directed at the public at large as well as at business customers.

The degree of attention is considered average with regard to goods in Class 33 and to vary from average to high with regard to services in Class 40, depending on the price and terms and conditions of the services purchased.

3. The signs

CHARETTE
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is a word mark consisting of the word ‘CHARETTE’ written in capital letters. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the earlier mark is depicted in upper case whereas the verbal elements of the contested sign are depicted in stylised upper and lower case letters on a slight curve.

‘CHARETTE’ is a misspelling of the French word ‘charrette’, which means ‘cart’ in English. However, it will not be understood by the relevant public. It is therefore distinctive to a normal degree.

The contested sign is a figurative mark composed of the verbal elements ‘Rhum’ at the top of the sign, ‘Charrette’ written below it in larger letters, these two in a stylised typeface, and ‘ILE DE LA RÉUNION’ underneath them in much smaller standard letters. The first two elements are in white on green backgrounds, while the last is in green.

‘Rhum’ is the French word for ‘rum’, a ‘spirit distilled from fermented sugar-cane juice or molasses’ (information extracted from www.oxfordreference.com). It will be understood as such by the relevant public, as it is highly similar to the German equivalent, ‘Rum’. For the relevant goods and services, it is non-distinctive. The word ‘Charrette’ will be perceived as meaningless by the relevant public and thus distinctive to a normal degree, as explained above. The element ‘ILE DE LA RÉUNION’ is the French expression for ‘REUNION ISLAND’, the name of an island, part of the territory of France, located in the Indian Ocean. It will be perceived as referring to this geographical area by a part of the relevant public, as pointed out by the applicant; however, the other part will not perceive this reference. Therefore, for the first part of the public this element is non-distinctive, as it is an indication of the geographical origin of the goods and services, whereas for the other part of the public it is fanciful and thus distinctive to a normal degree.

The white and green backgrounds on which the first two verbal elements, ‘Rhum’ and ‘Charrette’, are depicted are purely decorative. Moreover, they are common shapes for labelling goods, in particular bottles. Therefore, they are non-distinctive for the relevant goods and services.

The contested sign also contains a figurative element consisting of a depiction of an ox-drawn cart led by a man. The German public that does not understand the word ‘CHARRETTE’ will perceive it as a purely decorative element with no specific meaning in relation to the goods and services.

Even though the figurative element is relatively important in the contested sign considering its size and position, 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).

It follows that in the contested sign the element ‘ILE DE LA RÉUNION’ is less dominant, given its size, while the other elements (verbal and figurative) are co-dominant in the mark.

Visually, the signs coincide in the string of letters ‘CHAR*ETTE’, that is, the entirety of the earlier mark and eight out of nine letters of the second verbal element in the contested sign. They differ in the double letter ‘R’ and in all the other elements of the contested sign as detailed above.

Consequently, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CHA*RETTE’, present identically in both signs, and differs in the additional verbal elements ‘Rhum’ and ‘ILE DE LA RÉUNION’ in the contested sign as well as in the double ‘R’.

However, taking into account the very small size of the element ‘ILE DE LA RÉUNION’, and its lack of distinctive character for a part of the public, it is likely that it will not be pronounced by the relevant public. Therefore, it has no aural impact. Moreover, the word ‘Rhum’ is non-distinctive for the relevant goods and services, as detailed above.

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

Conceptually, the words ‘CHARETTE’, the only element of the earlier mark, and ‘Charrette’, in the contested sign, are fanciful for the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The goods and services are partly similar to various degrees and partly dissimilar. The degree of attention of the public is average for the goods and some of the services, and higher than average for the services that target a professional public. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar to a low degree, aurally similar to an average degree and, as the earlier mark as no meaning for the relevant public, conceptually not similar.

The sole element of the earlier mark, ‘CHARETTE’, is wholly included in the contested sign, with the sole difference the double letter ‘R’ in the middle in the contested sign, which is likely to go unnoticed by the relevant public. The signs mainly differ by the additional figurative and verbal elements ‘Rhum’ and ‘ILE DE LA RÉUNION’ in the contested sign. However, as mentioned above in the comparison of signs, these differences are confined to non-distinctive and secondary elements. Therefore, they are insufficient to allow consumers to safely distinguish between the signs, even those consumers paying a higher than average degree of attention.

Moreover, 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 wine 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, the phonetic average similarity between the signs in the present case is particularly relevant.

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.

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), namely for new range of alcoholic beverages (rum).

The applicant argues that its EUTM has a reputation (‘well-known in exportation’) and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on 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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 1 183 419 ‘CHARETTE’.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark, as well as for the services found to be similar to a low degree, considering in particular the similarities between the signs.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on German trade mark registration No 1 183 280 for wines from France (Class 33).

Since this mark is less similar to the contested mark, as it contains additional figurative and word elements, and covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Julie, Marie-charlotte HAMEL

Paloma PERTUSA MARTÍNEZ

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.