OPPOSITION No B 2 983 602

Rotkäppchen-Mumm Sektkellereien GmbH, Sektkellereistr. 5, 06632 Freyburg, Germany (opponent), represented by Lucia Schwab, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)

a g a i n s t

Gruppo Casaleone Vini srl, Frazione Romazzano 16/A, 06059 Todi, Italy (applicant), represented by Gianluca Caiello and Gabriella Caiello, Frazione Romazzano 16/A, 06059 Todi, Italy (employees representatives).

On 05/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 983 602 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 16 961 401 for the figurative mark , namely against all the goods in Class 33. The opposition is based on German trade mark registration No 302 015 012 436 for the word mark ‘George’. 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).

The contested goods are the following:

Class 33: Alcoholic beverages (except beers), in particular wine in accordance with the specific requirements of the protected geographical indication CHIANTI.

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

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Accordingly, the contested alcoholic beverages (except beers), in particular wine in accordance with the specific requirements of the protected geographical indication CHIANTI are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they 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.

It is settled case-law that, firstly, the goods at issue, which are all alcoholic beverages, are for everyday consumption and are normally widely distributed, ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafes and that, secondly, the consumer of alcohol is a member of the general public, who will demonstrate an average level of attention when purchasing such goods (see, to that effect, 19/01/2017, T-701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein).

c) The signs

George
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

It must be noted that the contested sign is a complex figurative mark that consists of a bottle with verbal and figurative elements. As the applicant claims, the contested sign consists of more than just the verbal elements ‘VILLA GIORGIA’ and ‘CHIANTI’.

With respect to composite marks, like the contested sign, it must be borne in mind that they cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of such a complex mark, unless that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T-6/01, ‘Matratzen’, EU:T:2002:261, § 33). In the present case, the verbal elements ‘VILLA GIORGIA’ are not the dominant elements of the sign, that is, they are not visually outstanding from the rest of the elements contained in the sign.

However, the contested sign contains several negligible elements. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there are numerous elements, such as the text appearing on the label placed in the bottle neck, as well as the words ‘Denominazione di Origine Controllata e Garantita’ included in the white label, that are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

The earlier mark ‘George’ will be understood as a male name. Since it has no relation to the relevant goods, it is distinctive.

The element ‘VILLA’, placed at the top of the contested sign, will be perceived by the relevant public as referring to a kind of a country residence. The opponent claims that ‘VILLA’ is descriptive and very usual for wine. In support of its argument, the opponent refers to numerous European Union trade mark registrations that contain the word ‘VILLA’ for goods in Class 33 and submits some printouts from internet. 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 follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘VILLA’. The Opposition Division notes that in some Member States, as is the case of Spain, wines and other alcoholic beverages are often branded with a term referring to the type of farm and its owner, which usually indicates the origin of the product (16/12/2008, T‑259/06, Manso de Velasco, EU:T:2008:575, § 64). However, that is not the case for the relevant German market. Therefore, it cannot be assumed, nor has been proven by the opponent, that German consumers perceive ‘VILLA’ as a common indication of origin for wines. Under these circumstances, the applicant’s claim must be set aside. Therefore, in the present case, the element ‘VILLA’ is distinctive.

The element ‘GIORGIA’ of the contested sign will be perceived by the relevant public as a foreign female name. As the opponent points out, it is the feminine form of George. Since it has no relation to the relevant goods, it is distinctive.

Therefore, the elements ‘VILLA GIORGIA’ of the contested sign will be perceived by the relevant public as foreign words referring to a kind of a country residence named Giorgia.

The element ‘CHIANTI’ of the contested sign refers to the denomination of origin of a village in Tuscany (Italy), well known for producing wine, and it will be perceived as such by the relevant public. Therefore, this element directly refers to the origin of the goods and it is, therefore, non‑distinctive. The same applies to the element ‘ITALY’ included at the bottom of the sign.

Furthermore, the contested sign reproduces the image of a bottle of wine that contains two labels and some figurative elements, namely a kind of heraldic shield with the colours of the Italian flag and a farmhouse on a hill surrounded by cypress trees. These figurative elements reinforce the concepts of some of the verbal elements already explained above.

Visually, the signs coincide in the string of letters ‘G*ORG*’, corresponding to the only element in the earlier mark and the second verbal element perceived in the contested sign. They differ in the remaining letters making up this element, namely their second letters, ‘E’ of the earlier mark versus ‘I’ of the contested sign, and their endings, ‘E’ of the earlier mark versus ‘IA’ of the contested sign. The signs further differ in the rest of verbal elements contained in the contested sign, mainly in the first verbal element perceived in the sign, namely ‘VILLA’, as well as the figurative elements and aspects described above, which are not less important in terms of their size and position within the sign.

Therefore, the signs are visually similar to a very low degree.

Aurally, the earlier mark ‘GEORGE’ will be pronounced either as one or as two syllables (depending on whether this word is perceived as an English male name or if it is pronounced according to the pronunciation rules in the relevant territory), whereas the second verbal element perceived in the contested sign, ‘GIORGIA’, will be pronounced in four syllables. Although these elements have in common the sound of the same consonants, as the opponent points out, their combination with different vowels in each of the signs has a relevant impact from an aural perspective. Furthermore, the pronunciation of the signs differ in the sound of the letters corresponding to the first verbal element of the contested sign, namely ‘VILLA’, which have no counterparts in the earlier mark and form the more noticeable beginning of the contested sign. For the part of the public that will pronounce the word ‘CHIANTI’ of the contested sign, the signs also differ in this aspect.

Therefore, since the signs have clearly different lengths and rhythms, they are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, the signs are conceptually not similar.

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 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical and target the public at large with an average degree of attention.

The signs are visually and aurally similar to a very low degree since they only coincide in a string of letters that form part of different words, namely ‘George’ and ‘Giorgia’, but most importantly, the contested sign begins with the distinctive word ‘VILLA’ and contains additional verbal and figurative elements and aspects, which are not present in the earlier mark. From a conceptual perspective, the signs are not similar. Contrary to the opponent’s opinion, the fact that ‘GIORGIA’ is the feminine form of ‘George’ does not render the signs similar, because they refer to different persons and at least part of the public will perceive ‘George’ as an English name and ‘Giorgia’ as an Italian name.

As stated by the opponent, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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).

However, in the present case, the identity of the goods cannot offset the low visual and aural similarity that exists between the signs. The Opposition Division considers that the differences between the signs, in particular the visual and conceptual differences, clearly outweigh the similarities.

The opponent also refers to the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. However, in the present case, an imperfect recollection of the signs can lead only to even less similarity between the signs, mainly because of the different composition of the contested sign. Indeed, the relevant public will refer to the earlier mark as the male name ‘George’, whereas in the contested sign the relevant public will recall the distinctive verbal elements ‘VILLA GIORGIA’, most probably associated with an Italian origin, and referring to a kind of a country residence named Giorgia.

Considering all the above, notwithstanding the identity of the goods, there is no likelihood of confusion on the part of the public. 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

Adriana VAN ROODEN

Marta GARCIA COLLADO

Carlos MATEO PEREZ

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.