OPPOSITION No B 2 954 108

Societe A.S., Rue de la Brèche d’Oger, 51190 Le Mesnil sur Oger, France (opponent), represented by Ernest Gutmann - Yves Plasseraud S.A.S., 3, rue Auber, 75009 Paris, France (professional representative)

a g a i n s t

Weingut Sonnenhof Fischer GbR, Sonnenhof 2, 71665 Vaihingen, Germany (applicant), represented by LSH Rechtsanwälte, Schlossberg 20, Stadtbau-Gebäude, 75175 Pforzheim, Germany (professional representative).

On 21/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 954 108 is upheld for all the contested goods.

2. European Union trade mark application No 16 600 116 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 600 116 for the figurative trade mark , namely against all the goods in Classes 32 and 33. The opposition was initially based on European Union trade mark registration No 16 307 159 for the figurative trade mark and European Union trade mark registration No 2 872 273 for the figurative trade mark . The opponent invoked Article 8(1)(b) EUTMR.

On 19/03/2018, the opponent submitted, along with its observations, a withdrawal of part of the basis of the opposition, namely European Union trade mark registration No 2 872 273, and it requested that the opposition be continued based on only the remaining earlier EUTM registration, No 16 307 159.

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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages, namely fruit beverages and fruit juices, grape juices, fruit nectars, lemonade, soda water; Syrups and other preparations for making beverages; Non-alcoholic beverages; Cocktails, non-alcoholic.

Class 33: Alcoholic beverages (with the exception of beers); Wine, Sparkling wines, Wine complying with the specifications of the AOC Champagne; Champagne cocktails.

The contested goods are the following:

Class 32: Beers; Mineral and aerated waters and other non-alcoholic drinks; Syrups and other preparations for making beverages; Non-alcoholic fruit drinks and fruit juices, Namely fizzy fruit juices.

Class 33: Alcoholic beverages, namely, wine.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in both the opponent’s and the applicant’s lists of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 32

Beers; syrups and other preparations for making beverages are identically contained in both lists of goods.

The contested mineral and aerated waters and other non-alcoholic drinks; non-alcoholic fruit drinks and fruit juices, namely fizzy fruit juices are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are identical.

Contested goods in Class 33

Wine is identically contained in both lists of goods.

b) 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 are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a figurative mark consisting of a black upper case letter ‘S’ with slightly stylised serifs.

The letter ‘S’ has no meaning in relation to the relevant goods and thus, contrary to the applicant’s arguments, has an average degree of distinctiveness. The General Court has stated in a number of cases that a trade mark consisting of a single letter, even when depicted in standard characters, may be inherently distinctive (08/05/2012, T‑101/11, G, EU:T:2012:223, § 50; 06/10/2011, T‑176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T‑378/12, X, EU:T:2013:574, § 37-51). Its degree of inherent distinctiveness must be assessed with reference to the goods and services concerned.

The contested sign is also a figurative mark consisting of a black bottle with a white rectangular label at the bottom and a standard black letter ‘S’ on the label.

The letter ‘S’ is meaningless for the relevant public and therefore distinctive for the goods for which registration is sought.

The shape of the bottle, despite the applicant’s opinion, is non-distinctive, since it is commonly used in packaging beverages, such as wines, and there is nothing in its depiction that would render it different from other bottles. The same applies to the white label; it is also non-distinctive, as it consists of a common shape typical of labels used on wine bottles, in ordinary colours.

Visually, the marks coincide in the distinctive letter ‘S’ and they differ in their stylisation and in the non-distinctive figurative elements of the contested sign.

The letter ‘S’ in the earlier sign has a slight stylisation at the serifs of the letter, and the same letter in the contested sign, according to the applicant’s arguments, ‘is a very normal “S”’, a standard upper case letter.

These differences in the depiction of the letter are not very noticeable; in neither sign is the stylisation sufficiently striking to have a substantial influence on the overall impression.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the relevant public, the signs coincide in the distinctive letter ‘S’, and therefore they convey the concept of the same letter of the alphabet. They differ in the figurative elements of the contested trade mark, namely the bottle and the label; however, as explained above, these elements are non-distinctive and therefore do not involve any conceptual difference.

Therefore, the trade marks are conceptually similar to a high degree or even identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) 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).

The goods are identical and they target the public at large, which has an average degree of attention. The degree of distinctiveness of the earlier mark is average.

The only distinctive element of both signs is the letter ‘S’. When signs contain or consist of the same single letter, the visual perception of the signs has a major impact on the overall impressions created by them and has more weight in the global assessment than other aspects of the comparison.

Considering this, the way the letter appears in each sign is determinant. In the present case, the two signs are visually similar to a higher than average degree, since the letter ‘S’ is depicted very similarly. The signs are aurally identical and conceptually similar to a high degree or identical.

The differences between the signs are limited to the non-distinctive figurative elements of the contested sign, namely the shape of the bottle and the label.

It should also be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

In its observations, the applicant argues that ‘there is a great many number of protected trade marks relating to the letter “S”’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It has not been demonstrated that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letter ‘S’. Under these circumstances, the applicant’s claims must be set aside.

Therefore, the visual differences between the signs, arising from non-distinctive elements of the contested sign, cannot outweigh the strong overall visual similarity and aural and conceptual identity resulting from the distinctive element ‘S’.

Taking into account 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), the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 307 159. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA -VALCHANOVA

Sofia SACRISTAN MARTINEZ

Martin EBERL

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.