OPPOSITION No B 2 964 651

Herdade Dos Grous - Agricultura E Pecuária, Lda., Herdade dos Grous, Albernoa 7800-001, Beja, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, Lda., Rua Castilho 167, 2º andar, 1070-050, Lisbon, Portugal (professional representative)

a g a i n s t

Donna Laura S.R.L., Str. Prov.le 9 di Pievasciata, 28 - Loc. Vallenuova, 53019 Castelnuovo Berardenga (Siena), Italy (applicant), represented by Ufficio Internazionale Brevetti Ing. C. Gregorj S.R.L., Via Muratori 13/B, 20135 Milan, Italy (professional representative)

On 21/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 964 651 is upheld for all the contested goods.

2. European Union trade mark application No 16 897 217 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 16 897 217 ‘ALI’ (word mark), namely against all the goods in Class 33. The opposition is based on Portuguese trade mark registration No 574 721 ‘DONA ALI’ (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.

a) The goods

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

Class 33: Alcoholic beverages (except beers), including wine, brandy and liqueurs.

The contested goods are the following:

Class 33: Wine.

The contested category of wine is included in the opponent’s broader category of alcoholic beverages (except beers). Therefore, the goods are identical.

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

DONA ALI	ALI
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 composed of two elements ‘DONA ALI’, which will be understood in Portuguese as “Mrs. Ali’” as a consequence of which the element ‘ALI’ – in this combination – will be perceived as a given- or surname. Since the element ‘DONA’ merely makes reference to the title of a married woman it is considered that the element ‘ALI’ is the most distinctive in the earlier mark. The sign has no meaning in relation to the goods.

The contested sign consists of the single element ‘ALI’ which may – on its own – also be perceived as the name of a person by a part of the Portuguese public, i.e. for those familiar with one of the greatest professional American boxers of all time named ‘Muhammad Ali’ or for those that know the famous story of ‘Ali Baba’ from the 18^th century. For the other part of the relevant public, not familiar with any of this, ‘ALI’ has no meaning. Regardless, however, how it is perceived the sign is distinctive in relation to the goods in question.

Visually and aurally, the signs coincide in ‘ALI’, which is fully incorporated in the earlier mark. However, they differ in the element ‘DONA’ of the earlier mark, which is considered to play a lesser important role in the mark as a whole.

Therefore, the signs are considered similar to a high degree on an aural and visual level.

Conceptually, for the part of the public that will associate the word ‘ALI’, contained in both signs, with a given- or surname, the signs are conceptually highly similar. For another part of the public, one of the signs has no meaning and thus the signs are not similar from a conceptual point of view.

Taking into account the above mentioned visual, aural and, where applicable, conceptual coincidences, it is considered that the signs under comparison are similar.

Therefore, 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

The goods are identical. The signs are aurally and visually similar to a high degree and conceptually they are either highly similar or not, depending on the perception of the contested mark by the relevant public.

Account is taken of the fact that the average consumer rarely has 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; 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case it is, moreover, highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of – in this case alcoholic beverage - that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 – in this case high - phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48), also taking into account that the earlier mark may be referred to ‘ALI’ only, given the fact that the element ‘DONA’ plays a lesser important role.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 574 721. 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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Claudia ATTINÀ

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.