OPPOSITION No B 2 926 890

CH. & A. Prieur, société par actions simplifiée, 30 Rue du Général Leclerc, 51130 Vertus, France (opponent), represented by Cabinet Boettcher, 16 rue Médéric, 75017 Paris, France (professional representative)

a g a i n s t

Sebastian Bold, Str.Constantin Brancoveanu Nr.10, Corabia, Romania (applicant).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 926 890 is upheld for all the contested goods.

2. European Union trade mark application No 16 485 501 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 485 501 ‘Chateau de Napoleon’. The opposition is based on French trade mark registration No 1 516 331. 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: All wines containing carbon dioxide, including French wine from Champagne; sparkling wines; semi-sparkling wines; and pearl wines and similar products.

As mentioned above, the opponent directed its opposition against all the goods of European Union trade mark application No 16 485 501, namely distilled beverages; beverages containing wine [spritzers]; alcoholic beverages (except beers). However, due a partial refusal on absolute grounds issued by the Office on 21/10/2017, the opposition is currently directed against the following goods only:

Class 32: Non-alcoholic drinks.

Class 33: Distilled beverages; Beverages containing wine [spritzers]

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 goods in Class 32

The contested non-alcoholic drinks and the opponent’s sparkling wines are often sold side by side, both in shops and bars and on drinks menus. These goods target the same public and may be in competition. Therefore, they are similar to a low degree.

The goods in Class 33

The contested distilled beverages; beverages containing wine [spritzers] are similar to the opponent’s sparkling wines. Although their production processes are not the same, these goods all belong to the same category of alcoholic drinks intended for the general public and therefore can be in competition with each other. Moreover, they have the same method of use and 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.

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 similar (including to a low degree) are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

NAPOLEON	Chateau de Napoleon
Earlier trade mark	Contested sign

The relevant territory is France.

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 trade mark consists of the word ‘NAPOLEON’, which will be associated by the relevant public with Napoléon Bonaparte, a French statesman and military leader during the French Revolution, or with the French 20 franc gold coin, bearing the effigy of Napoleon I or Napoleon III, that remained in use until the First World War.

The contested sign consists of the words ‘CHATEAU DE NAPOLEON’. Its first element, ‘CHATEAU DE’, means ‘castle of/from’. Therefore, it will not attract the consumer’s attention because it is commonly used in the field of alcoholic beverages to indicate origin and consequently is non-distinctive. Although this term is not commonly used in relation to non-alcoholic beverages, it is still weak for them, since it will be perceived as laudatory, implying that these beverages have an exclusive origin. Therefore, consumers will pay more attention to the element ‘NAPOLEON’, which has no meaning in relation to the goods and is, therefore, distinctive.

Visually and aurally, the signs coincide in the element ‘NAPOLEON’ and they differ in the words ‘CHATEAU DE’. However, considering the limited, or even lack of, distinctiveness of this element, its impact is reduced.

Therefore, the signs are visually and aurally at least similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs’ coinciding element ‘NAPOLEON’ is distinctive and they differ in the expression ‘CHATEAU DE’ of the contested sign, which will be perceived as a reference to the place of origin of the alcoholic beverages or as alluding to the quality of the non-alcoholic drinks, the signs are conceptually at least similar to a higher than 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

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.

In the present case, the goods found to be similar or similar to a low degree are directed at the public at large. The degree of attention is considered average. The earlier mark enjoys a normal degree of distinctiveness. The signs are visually, aurally and conceptually at least similar to a higher than average degree.

The commonality between the marks lies in the element ‘NAPOLEON’, which is the sole element of the earlier mark and the more distinctive element of the contested mark. It is true that the differences between the signs result from their beginnings, where consumers will focus their attention. However, due to the limited or lack of distinctive character of the differing element of the earlier mark (‘CHATEAU DE’) and the average degree of attention, the coinciding element ‘NAPOLEON’ is likely to create an overall impression of similarity between the signs that is likely to lead consumers to believe that the goods at issue originate from the same undertaking or related undertakings. In the present case, 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Regarding the goods that are similar to a low degree, it should be taken into consideration that 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). Accordingly, there will also be likelihood of confusion for these goods.

Considering all the above, there is a likelihood of confusion on the relevant public. Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 516 331. 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, he 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

Aldo BLASI

Paloma PERTUSA MARTÍNEZ

Adriana VAN ROODEN

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.