DECISION

of the Fifth Board of Appeal

of 2 September 2019

In case R 430/2019-5

Dominio do Bibei, S.L.
C/ Langullo, s/n 32781 Manzaneda-Orense Spain	Opponent / Appellant

Represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 21-23, 5º A-B, 03002 Alicante, Spain

V

Zuegg Com GmbH
Bozner Straße 2 39011 Lana Italy	Applicant / Defendant

Represented by Rechtsanwaltssozietät Brugger & Partner, Kapuzinergasse 5, 39100 Bozen, Italy

APPEAL relating to Opposition Proceedings No B 2 909 805 (European Union trade mark application No 16 411 506)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), C. Govers (Rapporteur) and V. Melgar (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 28 February 2017, Zuegg Com GmbH (‘the applicant’) sought to register the word mark

DALANA

for the following list of goods:

Class 29 – Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats; Frozen meals consisting predominantly of meat, fish, poultry or vegetables; Canned meat; Vegetable pastes; Meat pastes; Prepared meals consisting predominantly of meat, fish, poultry or vegetables; Pre-packaged meals consisting predominantly of meat, fish, poultry or vegetables; Pre-packaged meals consisting predominantly of meat; Ready meals consisting predominantly of meat substitutes; Potato-based dumplings; Potato-based gnocchi;

Class 30 – Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Fresh pasta; Frozen meals consisting predominantly of pasta or rice; Tarts; Sponge cake; Sponge cake; Sponge cake; Bavarian creams; Crème brûlées; Crème caramels; Custard; Custards [baked desserts]; Custard tarts; Custard tarts; Petits fours filled with cream; Croissants; Frozen cookie dough; Preparations for making bakery products; Cocoa-based ingredients for confectionery products; Filo pastry; Chocolate paste; Curry pastes; Chili paste for use as a seasoning; Dried pasta; Danish pastries; Cocoa-based spreads; Chocolate desserts; Mousses (Dessert -) [confectionery]; Macaroni; Farinaceous food pastes; Meat pies; Ravioli; Noodles; Vermicelli [noodles]; Spaghetti; Flour-based gnocchi; Rice salad; Lasagne; Meals consisting predominantly of pasta or rice; Ziti; Pancakes; Yoghurt (Frozen -) [confectionery ices]; Tortellini; Filled pastries; Pasta containing eggs; Semolina pudding; Knedle (potato dumplings stuffed with fruit); Cakes based on frozen yogurt in combination with fruits, nuts, cereals;

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).

2. The application was published on 18 April 2017.

3. On 12 June 2017, Dominio do Bibei, S.L. (‘the opponent’) filed an opposition against the registration of the published trade mark application against all the goods in Classes 32 and 33.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on Spanish trade mark registration No 2 566 955, LALAMA, filed on 13 November 2003 and registered on 7 April 2004 for the following goods:

Class 33 – Wines and liqueurs.

6. By decision of 14 December 2018 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety, on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

• The contested ‘beers’ in Class 32 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’ in Class 32 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’ in Class 32 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 flavour 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.

• The contested ‘alcoholic beverages (except beers)’ in Class 33 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.

• 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.

• The relevant territory is Spain.

• 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 a 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.

• 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. The clear concept conveyed by the earlier mark in contrast with the contested mark, is 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 previous cases referred to by the opponent are not relevant to the present proceedings:

• In 13/01/2017 R 2590/2015-5, VINOVA / Minowa et al., 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 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 21/11/2013, B 1 930 703, REGIMA / REGINA, both signs had the same beginnings. This has an important impact on the aural and visual comparison.

• In 04/07/2013, B 1 744 344, Movolo / GOVOLO, 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.

• 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.

7. On 18 February 2019, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 15 April 2019.

8. In its response received on 24 June 2019, the applicant requested that the appeal be dismissed.

Submissions and arguments of the parties

9. The arguments raised by the opponent in the statement of grounds may be summarised as follows:

• The Opposition Division did not consider that the contested goods are identical, similar and highly related to the earlier goods. This fact, together with the similarity between the signs, clearly reinforces the possibilities of a real risk of confusion or association between the marks at issue.

• There are a multitude of companies that under the same mark commercialized fruit juices, mineral and aerated water, sangria and wines (see Annex R-1).

• All non-alcoholic beverages (also including ‘mineral waters, aerated waters, syrups and other preparations for making beverages’) applied for must also be considered similar to ‘wines and liqueurs’.

• The opposition division erred in considering the contested ‘fruit beverages, fruit juices, other non-alcoholic beverages’ as similar to a low degree and in considering the contested ‘mineral waters; aerated waters; syrups; other preparations for making beverages’ as dissimilar.

• The signs produce a highly similar global impression and they should be considered visually similar, at least to an average degree, and phonetically similar to a high degree.

• The conceptual comparison is not pertinent since the signs at issue, as they are registered are meaningless for the Spanish consumers and so the signs will be perceived as fanciful words.

• Furthermore, the Court of Justice has established that in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, in particular in bars and restaurants, in which 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, Cotod’Arcis, EU:T:2008:69, § 38).

• Reference is also made to 06/03/2019, B 3 048 297.

• Since the marks are highly similar and the contested goods are partly identical and partly similar, it is likely that the public concerned will be confused as to their commercial origin in any event and especially in relation to the identical goods in Class 33.

10. The arguments raised in response by the applicant may be summarised as follows:

• The contested goods (Class 32) are not similar to those on which the appeal is based (Class 33). The contested goods in Class 32 have no or very little similarity with wine.

• The products are manufactured completely differently and consist of different basic substances. In addition, the degree of alcohol is clearly different. Beer and wine might, but are not necessarily consumed in the same places (bars, restaurants). It is a fact and common knowledge that beer and wine do not belong to the same family of alcoholic beverages. They are also not sold on the same shelves, as they are two basic subcategories of alcoholic beverages.

• The opposing goods satisfy different needs and have a different type of use. They have different basic substances and are used for different occasions. ‘Wines and liqueurs’ are a specific category of goods which exist independently and are clearly separate from ‘beer’ for which registration is sought. Even if the goods use the same distribution channels in individual cases, they are sold in different areas and clearly offered separately.

• The signs are not similar.

Reasons

11. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

12. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Likelihood of confusion ‒ Article 8(1)(b) EUTMR

13. Article 8(1)(b) EUTMR states, in material part, that the trade mark applied for shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

14. 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 on the part of the public, in the absence of which Article 8(1) EUTMR does not apply (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

15. It is settled case‑law that the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That 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. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, as said consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22-23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Relevant public / relevant territory

16. As a preliminary point, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products and services concerned, who is reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42).

17. Given that the earlier trade mark is a Spanish trade mark registration, the relevant public is the public in Spain.

18. In the present case, the contested decision took the view that the goods considered are directed at the public at large, whose level of attention will be average.

19. The Board endorses the contested decision’s finding in this respect, which has not been challenged by the parties.

Comparison of the goods

20. In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Additional factors include the purpose of the goods and services, whether or not they can be manufactured, sold or supplied by the same undertaking or by economically-linked undertakings, and also their distribution channels and sales outlets.

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

Class 33 – Wines and liqueurs.

22. The goods applied for which are at issue in the present appeal 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).

Contested goods in Class 32

Beers

23. As regards the contested ‘beers’, it is true that their production processes are different, however, they all have the same nature as they 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, where they can be found in the same area. Furthermore, they may well originate from the same undertakings. These goods are therefore similar, as stated in the contested decision.

Mineral and aerated waters

24. As for the contested ‘mineral and aerated waters’, it is highly unlikely that the producers of ‘mineral and aerated waters’ are the same as those of alcoholic beverages such as ‘wines and liqueurs’ as in the present case. While water is a liquid found naturally and not refined, alcoholic drinks are made using a complex production process.

25. On the one hand ‘mineral water’ is defined as ‘water that comes out of the ground naturally and is considered healthy to drink’. On the other hand ‘wine’ is an ‘alcoholic drink which is made from grapes’ and a ‘liqueur’ is a strong alcoholic drink with a sweet taste’ (Collins English Dictionary).

26. It is common knowledge that there are different categories of waters intended for human consumption such as natural mineral waters and spring waters (15/03/2006, T-129/04, Plastikflaschenform, EU:T:2006:84, § 19; 21/01/2019, R 1720/2017-G, ICEBERG). Natural mineral waters may be distinguished from ordinary drinking water by their purity at source and their constant level of minerals. Spring waters are intended for human consumption in their natural state and are bottled at source (21/01/2019, R 1720/2017-G, ICEBERG).

27. Thus, the goods differ in nature, purpose and production process. The consumer is not used to obtaining water from the same undertakings and seeing the goods with the same trade mark as for ‘wines and liqueurs’. The parties did not provide evidence to the contrary regarding this fact.

28. Concerning the nature of the goods at stake, it differs also in terms of the presence or absence of alcohol. The relevant consumer is aware of the distinction between alcoholic and non-alcoholic goods. The distinction between these goods is highly necessary, since some consumers do not wish to – or cannot –consume alcohol, due to health, age, religion, driving a car or other reasons. Thus, this distinction will regularly be made by the consumer when comparing the goods covered by the mark applied for and the earlier trade mark. Last but not least, drinking alcohol can carry certain health risks, while water is vitally important for a person’s health (03/10/2012, T-584/10, Tequila Matador hecho en Mexico, EU:T:2012:518, § 54).

29. Secondly, regarding the end-user and method of use of ‘wines and liqueurs’ and ‘mineral and aerated waters’, the goods overlap in part. Even though, the consumption of one does not necessarily preclude the consumption of the other, they do not depend on each other. While water is often consumed to quench thirst, alcoholic drinks are often consumed for pleasure during social events. However, there can be an overlap, since water might also be consumed during the same events, while alcoholic beverages can equally be consumed outside of social events.

30. Moreover, the goods are not complementary. The purchase of one is not indispensable or important for the use of the other and there is nothing to support the conclusion that the purchaser of one of these types of products would be led to purchase the other as well.

31. ‘Wines and liqueurs’ are neither interchangeable with water. Due to the differences in taste, the consequences of consumption and their normal use, all of them caused by the absence or presence of alcohol and the vital importance of water for the human body, the consumer seeking to buy one of them would not compare it with the other. Therefore, the goods are not in competition.

32. Following the preceding findings, the Spanish consumer will consider it normal for ‘mineral and aerated waters’, on the one hand, and ‘wines and liqueurs’, on the other, to come from different companies and will therefore expect this (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 51).

33. It is true that all these goods can be served in restaurants and bars and usually come in bottles, intended for human consumption. However, these factors refer to all drinks, even the most varied (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 58), and cannot diminish the fact that the distinction between alcoholic beverages and water is of high importance, e.g. for drivers, people of certain religions, age etc. and that on a more concrete level they are different in nature, often serve different purposes and do not usually compete with each other.

34. Given the preceding factors, ‘wines and liqueurs’, on the one hand, and ‘mineral waters; aerated waters’, on the other, are to be considered dissimilar (18/06/2008, T-175/06, Mezzopane, EU:T:2008:212, § 79-90; 24/03/2010, R 770/2009-1, WESTERN GOLD / WeserGold, § 25).

Other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages

35. Comparing, ‘non-alcoholic beverages; fruit beverages; fruit juice; syrups for making beverages; preparation for making beverages’ on the one hand, and ‘wines and liqueurs’, on the other, the most distinguishing feature again is the absence or presence of alcohol. As mentioned before, due to health, age, religion or because of driving a vehicle, etc. this distinction is, in general, an important one. While alcoholic beverages are regularly consumed during social events, juices, for example, are often consumed during the day, even accompanying breakfast. Therefore, the nature of the goods is different to a certain degree, even though all belong to the general category of liquids/beverages.

36. On the other hand, consumers can still expect that the producer of alcoholic beverages is responsible for the whole range of combined and derived goods, for a wine producer this could be grape juice, cider or apple juice, and for a spirits producer applejack, for example. It can also be assumed that the same undertakings that produce alcoholic beverages produce at the same time the ‘other non-alcoholic drinks, fruit and fruit juice-based beverages, syrups and other preparations for making beverages’ that are especially suitable for mixing drinks. Hence, the producer of the different goods could be the same.

37. It also cannot be denied that the purpose of the goods can overlap, since, contrary to water, all of the aforementioned goods are not primarily consumed for survival, but rather for pleasure. It is also true that, ‘non-alcoholic beverages; fruit beverages; fruit juices’ on the other hand, are often mixed with alcoholic beverages in cocktails and other mixed drinks. For example a ‘Tinto de verano’ is a mix of red wine and lemonade, and ‘Sangria’ of red wine and orange juice. Also cocktails are often mixed with juices and fruit juice-based beverages, syrups or other preparations for making beverages. At social events, people are often welcomed with sparkling wine, orange juice or a mix of both. Also in the ‘PAPAGAYO ORGANIC / PAPAGAYO’ case the possible combination of different drinks was considered an important argument for the similarity between the goods (18/07/2013, R 233/2012-G, PAPAGAYO ORGANIC, § 70).

38. Furthermore, ‘non-alcoholic beverages; fruit beverages; fruit juices; syrups for making beverages; preparations for making beverages’ on the one hand, and ‘wines and liqueurs’, on the other may also be in competition. During social gatherings people can choose not only between alcoholic drinks and mixed drinks, but also non-alcoholic ones with the same purpose of pleasure.

39. As a consequence of the above, consumers are used to a parallel consumption of them and can be led to expect that ‘non-alcoholic beverages; fruit beverages; fruit juices; syrups for making beverages; preparation for making beverages’ might come from the same undertakings as ‘wines and liqueurs’.

40. Hence, ‘non-alcoholic beverages; fruit beverages; fruit juices; syrups for making beverages; preparation for making beverages’ on the one hand, and ‘wines and liqueurs’ on the other hand, are similar to a low degree (05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565), as the contested decision correctly stated.

Contested goods in Class 33

41. The contested goods ‘alcoholic beverages (except beers) include, as a broader category, the earlier ‘wines and liqueurs’. Thus these goods are identical.

Comparison of the marks

42. With regard to the comparison of the signs, the likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the signs, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

43. In general terms, two signs are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 30 upheld on appeal by order of 28/04/2004, C‑3/03 P, Matratzen, EU:C:2004:233, 12/07/2006, T-97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T-34/04, Turkish Power, EU:T:2005:248, § 43, upheld on appeal by order 01/06/2006, C-324/05 P, Turkish Power, EU:C:2006:368).

44. The signs to be compared are:

    LALAMA	DALANA
    Earlier sign	Contested sign

45. It should be pointed out, in general terms, that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30; 18/10/2007, T-28/05, Omega 3, EU:T:2007:312, § 54).

46. The earlier mark is a verbal mark comprising the word element ‘LALAMA’. The contested sign is also a word mark that consists of the word element ‘DALANA’.

47. In view of the fact that both marks are word marks, no visually dominant element can be ascertained.

48. For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (03/09/2010, T-472/08, 61 a nossa alegria, EU:T:2010:347, § 47, and the case-law cited therein).

49. The Board agrees with the contested decision in that the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory and its distinctiveness must therefore be seen as average.

50. It must be recalled that, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he/she will nevertheless, when perceiving a verbal sign, break it down into elements which, for him/her, suggest a concrete meaning or which resemble words known to him/her (10/02/2015, T-85/14, DINKOOL, EU:T:2015:82, § 46 and the case-law cited therein). In this respect, it is possible for the relevant consumer to break down a word mark even if only one of the elements making up that mark is familiar to him/her (22/05/2012, T-585/10, Penteo, EU:T:2012:251, § 72 and the case-law therein cited).

51. In the case at hand, as held by the Opposition Division, the earlier mark is likely to be split into the article ‘LA’ and the word ‘LAMA’, which will be understood as ‘the slat’ or ‘the slime’. Taking into account the relevant goods, the earlier mark remains distinctive.

52. As far as the contested sign ‘DALANA’ is concerned, it may be the case that part of the relevant public will recognise the words ‘DA’ and ‘LANA’ which means ‘give(s) wool’. In the Board’s view, although this could be the case, at least for a portion of the relevant Spanish-speaking part of the relevant public, the term as a whole remains a fanciful word for the majority of the relevant public. The Board endorses the findings of the Opposition Division that it is meaningless, at least for a significant part of the relevant public.

53. According to case-law, when evaluating the overall impression created by the signs at issue, the assessment of the visual similarity of those signs may take account, where they are word marks, of aspects such as their length, the letters of which they are composed and the order of those letters (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 55; 20/11/2007, T-149/06, Castellani, EU:T:2007:350, § 54; 25/03/2009, T-402/07, Arcol II, EU:T:2009:85, § 83).

54. Visually, the signs have in common the fact that they both consist of one word only, with six letters, and that they coincide in the string of letters ‘*-A-L-A-*-A’ which are placed in the same order. They differ insofar as they begin with different letters, namely ‘L’ vs. ‘D’, and in their fifith letter ‘M’ vs. ‘N’. Customers generally pay greater attention to the beginning of a mark than to its ending (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64-65) and will do so in this case. The Board therefore shares the view of the Opposition Division that the signs are visually similar to a low degree.

55. Aurally, both marks are composed of three syllables, /la/la/ma/ vs. /da/la/na/. Their pronunciation is identical in their second syllable /la/ and similar as regards the third syllable /ma/ vs. /na/, but their respective first syllables (/la/ as opposed to /da/) are different. Given that the beginning of a sign makes a stronger impact in the overall impression, the signs are phonetically similar to a low degree, as the contested decision correctly states.

56. Conceptually, as explained above, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Overall assessment of the likelihood of confusion

57. 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 (eighth Recital 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).

58. Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

59. The average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (11/11/1997, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

60. In the assessment of likelihood of confusion, one of the factors to be taken into account is the distinctive character of the earlier mark. The more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (27/04/2006, C-235/05 P, Flexi Air, EU:C:2006:271, § 36).

61. The degree of inherent distinctive character of the earlier mark is normal. The earlier mark as a whole does not convey any reference to the goods in question.

62. In the case at hand, in spite of the similarity (to various degrees) and the identity between the relevant goods, the visual and aural coincidences between the signs are outweighed by their differences and will not give rise to a likelihood of confusion.

63. The conflicting signs have a low degree of visual and aural similarity. Moreover, the earlier mark ‘LALAMA’ at least will be associated with a clear meaning by the public in Spain, whereas the contested sign will not be associated with any meaning. It must be borne in mind that, in order to have a counteraction of the visual and aural similarities, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it directly and immediately (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 93 and the case-law cited; 06/03/2015, T‑257/14, BLACK JACK TM, EU:T:2015:141, § 44).

64. In the present case, this conceptual difference counteracts the visual and aural similarities, as at least one of the trademarks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (21/01/2016, T-802/14, Lenah.C / LEMA, EU:T:2016:25, § 48; 23/04/2008, T-35/07, Celia, EU:T:2008:125, § 46; 14/10/2003, T-292/01, Bass, EU:T:2003:264, § 54; 12/01/2006, C-361/04 P, Picaro, EU:C:2006:25, § 20; 23/03/2006, C-206/04 P, Zirh, EU:C:2006:194, § 35).

65. In those circumstances, and taking a global approach, it must be held that the similarities between the signs are not sufficient to conclude that there is a likelihood of confusion as regards the goods which are similar (also to a low degree) and identical. The Opposition Division was therefore right in finding that there was no likelihood of confusion for the relevant public in Spain.

66. There is therefore a clear difference between the marks on a conceptual level, in addition to the visual and aural differences. Consumers will safely distinguish between the earlier marks and the contested sign, following the above reasoning. Considering all the above, there is no likelihood of confusion on the part of the public.

67. Consequently, in the absence of additional factors, the Board concludes that the target public will be able to safely distinguish the marks and no likelihood of confusion will arise.

68. The previous decisions of the Office mentioned by the opponent cannot alter the said conclusion. It is sufficient to point out that 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).

69. 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 case referred to by the opponent is not relevant to the present proceedings as it refers to different signs and to different goods. Furthermore, the Board had no chance to decide on the case referred to by the opponent.

70. Therefore, the contested decision must be confirmed insofar as it found that in the case at hand, there can be no likelihood of confusion between the trade marks at issue. The appeal is dismissed.

Costs

71. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.

72. These consist of the applicant’s costs of professional representation of EUR 550.

73. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to pay EUR 550 for the applicant’s costs in the appeal proceedings. The total amount to be paid by the opponent in the opposition and appeal proceedings is EUR 850.

Signed G. Humphreys

Signed C. Govers

Signed V. Melgar

Registrar: Signed H.Dijkema