OPPOSITION No B 2 909 805

Dominio do Bibei, S.L., C/ Langullo, s/n, 32781 Manzaneda (Orense), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

Zuegg Com GmbH, Bozner Straße 2, 39011 Lana, Italy (applicant), represented by Rechtsanwaltssozietät Brugger & Partner, Kapuzinergasse 5, 39100 Bozen, Italy (professional representative).

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 909 805 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 411 506 ‘DALANA’ (word mark), namely against all the goods in Classes 32 and 33. The opposition is based on the Spanish trade mark registration No 2 566 955 ‘LALAMA’ (word mark). 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: Wines and liqueurs.

The contested goods are the following:

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

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 32

The contested beers are similar to the opponent’s wine and liqueurs. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. 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. Beers and alcoholic beverages can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings.

The contested fruit beverages, fruit juices, other non-alcoholic beverages are similar to a low degree to the earlier wines because they usually coincide in relevant public and they are in competition. The end-user of these beverages is often faced with the choice of buying/consuming beverages containing alcohol or not. Furthermore they also coincide in distribution channels. They can be purchased in the same stores and they usually are found next to each other in these stores. They sometimes also coincide in producers. Fruit being one of the main ingredients of both fruit beverages/juices and wines/liqueurs, some companies tend to produce both the alcoholic and non-alcoholic versions.

The contested mineral waters; aerated waters; syrups; other preparations for making beverages are dissimilar to the earlier wines and liqueurs because on the one hand they are of a different nature. This applies to Syrups and other preparations for making beverages which cannot be used alone, rather they are used in addition to enhance/alter the flavor of other beverages. Hence they are of a different purpose and they do not follow the same method of use. On the other hand they are not complementary. This applies to Mineral waters and aerated waters. They are not used in connection with wines and liqueurs. Hence they are not in competition. Furthermore they are produced by different companies.

Contested goods in Class 33

The contested alcoholic beverages (except beers) include, as a broader category the earlier wines. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier 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 found to be identical and/or similar to varying degrees are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

LALAMA	DALANA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Contrary to the opponent’s claim, the earlier mark will be dissected into the article ‘LA’ and the word ‘LAMA’, since both elements have a meaning and, moreover, are aurally clear. The word has several meanings in Spanish. The most frequent meanings are ‘the slat’ or ‘the slime’. Bearing in mind the nature of the relevant goods, ’LAMA’ (and by extension) ‘LALAMA’ is distinctive.

The applicant claims that the earlier mark lacks any distinctive character because it refers to a municipality in Galicia (Spain) or to a part of a municipality in Puglia (Italy), or because it is already used by an Italian winegrower. However, it is not clear why this small municipality in a region of Spain, or a section of an Italian municipality would be known by the relevant public in Spain. Moreover, the fact that there is an Italian wine purportedly commercialized under this name, is not relevant as regards its distinctiveness.

However, the contested sign has no meaning in Spanish nor can it be broken down into meaningful concept. The fact that ‘DALANA’ is a person’s name cannot be taken into account as this name is very rare. Furthermore, it is very unlikely that the average consumer would break down the word into ‘DA LANA’ which means ‘give(s) wool’ in Spanish as the subject of the sentence is not present and cannot be implied. Consequently, the sign is distinctive.

Visually, the signs have the same number of letters and coincide in four out of six, namely ‘*-A-L-A-*-A’. However, they differ in their first letter, namely ‘L’ in the earlier mark and ‘D’ in the contested sign, as well as in their fifth letter, namely ‘M’ in the earlier mark and ‘N’ in the contested sign.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Furthermore, 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. In this regard, the difference in their initial letter is extremely relevant from a visual point of view. Indeed, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. In contrast, the public is less aware of differences between long signs. Given that neither of the signs is short, both having six letters, the letters that they have in common is not something that will be clearly identified by consumers.

Considering the above, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the middle syllable ‛LA’. The pronunciation differs in the syllables ‛LA‑*-MA’ of the earlier sign, which have the counterparts ‘DA-*-NA’ in the contested mark, in respectively the first and last positions in both signs.

Unlike the opponent, the Opposition Division does not consider that the signs share the same rhythm despite the fact that both signs are composed of three syllables, each of them containing the vowel ‘A’. The repetition of the syllable ‘LA’ in first and second position within the earlier sign produces a distinct overall rhythm compared to the one produced by the combination of the syllables ‘DA’ and ‘LA’. The difference of rhythm is further reinforced by the fact that the third and last syllables which, although of a lesser impact in rhythm, will not go unnoticed and the fact that only the earlier sign will be broken down as explained above.

Furthermore, as already highlighted above, the fact that the public reads from left to right, thereby making the part placed at the left of the sign the one that first catches the attention of the reader, implies that the difference in the first syllable will be the most striking in the pronunciation of the signs. Therefore, the signs are aurally similar to a low degree.

Conceptually, as explained above, since one of the signs will not be associated with any meaning, the signs are not conceptually similar. This finding is not affected by the fact that the earlier mark may bear several meanings.

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and similar to varying degrees and partly dissimilar. Furthermore, the earlier mark enjoys a normal degree of distinctiveness and the degree of attention is considered to be average.

The main aural and visual coincidences between the signs, namely the existence of three syllables containing the vowel ‘A’, are mainly offset by the impact left by the first differing letter which greatly determines how the earlier mark is pronounced and perceived visually in comparison to the contested sign. Furthermore, the meaning of the earlier mark will be clearly grasped by consumers and will help to differentiate between the signs even as regards identical goods. According to case-law, the conceptual differences between signs may counteract their visual and phonetic similarity (judgment of 12/01/2006, C-361/04, PICARO, ECLI:EU:C:2006:25, § 20). In this respect, reference is made to the visual and aural comparison of signs and the low degree of similarity that was found. The clear concept conveyed by the earlier mark in contrast with the contested mark, is also an important factor that distinguishes the signs. Even considering the importance of the aural aspect when ordering beverages in noisy establishments, the signs are still aurally similar to a low degree.

The opponent refers to previous decisions of the Office to support its arguments. 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings.

In the decision of 13/01/2017 R 2590/2015-5 ‘VINOVA’, the earlier rights invoked in the proceedings are German. Therefore, the relevant public is the German one and this had an impact on the degree of aural similarity and lack of meaning of the signs.

In the decision of 22/09/2015 R 253/2015-2 ‘KALITA / TALIKA’, the signs contained exactly the same syllables but placed in a different order. In the present case, the differences go beyond the mere change of order of the syllables.

In B 1 930 703, both signs had the same beginnings. As highlighted earlier on, this has an important impact on the aural and visual comparison.

In B 1 744 344, the Opposition Division decided to focus the comparison of the signs on the English-speaking part of the relevant public. The difference in the signs resided only in their first letter (G vs M), whereas in the present case there is an additional difference in the last syllable and the first letters are ‘D’ and ‘L’. Furthermore, there was no repetition of the same syllable within one of the signs unlike in the present case and there was no concept in relation to any of them.

Considering all the above, there is no likelihood of confusion on the part of the public nor is there a risk that the consumers would make a connection between the conflicting signs and assume the goods covered come from the same or economically linked undertakings. Therefore, the opposition must be rejected.

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

Eva Inés PÉREZ SANTONJA

Raphaël MICHE

Vanessa PAGE

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.