OPPOSITION No B 3 029 132

Duca Di Salaparuta S.p.A., Via Vincenzo Florio, 1, 91025 Marsala (TP), Italy (opponent), represented by Barzanò & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Josef Drathen GmbH & Co. KG, Fliehburgstraße 23, 56856 Zell, Germany (applicant), represented by Jörg Wagner, Monaiser Str. 21, 54294 Trier, Germany (professional representative).

On 28/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 029 132 is partially upheld, namely for the following contested goods:

Class 33: Alcoholic beverages (except beer); cider.

2. European Union trade mark application No 17 163 619 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 163 619 , namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 159 277 ‘FLORIO’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the holder so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

In its observations of 14/08/2018, the applicant requested that the opponent submit proof of use of earlier European Union trade mark registration No 159 277 ‘FLORIO’, on which the opposition is based. The request was submitted in due time; however, the applicant did not submit it by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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, wine, liqueurs, sparkling wines, vermouth, marsala, aperitifs.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages; cider.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested alcoholic beverages (except beer) are identical to the opponent’s alcoholic beverages, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

The contested cider is included in the broad category of the opponent’s alcoholic beverages. Therefore, they are identical.

The contested preparations for making alcoholic beverages are dissimilar to the opponent’s goods in Class 33. While it is true that these goods may be consumed in the same places and on the same occasions and may satisfy the same need (only after mixing them), for example enjoying a drink as an aperitif, the facts remain that they do not belong to the same family as alcoholic beverages and that the consumer perceives them as two distinct products. Therefore, they differ in their nature and purpose from the opponent’s goods in Class 33, which are various alcoholic beverages. They do not usually have the same relevant consumers, distribution channels and commercial origin. Therefore, they are dissimilar.

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

FLORIO
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a word mark, consisting of one word, ‘FLORIO’. As it is an Italian family name, it will be perceived as such by the Italian-speaking part of the public. The Romanian-speaking part of the public may perceive this word as being related to ‘flower’ (‘FLORI’ in Romanian). For the remaining part of the public, the word ‘FLORIO’ is meaningless. In either case, the distinctiveness of this word is seen as normal, as, contrary to the applicant’s arguments, it does not directly describe or allude to any characteristics of the goods in question.

The applicant claims that the contested sign is composed of two verbal elements, namely ‘FLO’ or ‘FLOR’ and ‘A’ or ‘AN’, and the figurative elements, namely a stylised flower between these verbal elements and two curls. However, as neither of the figurative elements plays an independent distinctive role in the overall composition of the mark and, moreover, the element to which the applicant refers as a flower is in the middle of the word and clearly resembles the letter ‘I’, the Opposition Division considers that the contested sign, for the purpose of conveniently reading or pronouncing it, will be perceived by the relevant public as being composed of the verbal element ‘FLORIAN’, depicted in upper case letters, with the majority of the letters being slightly stylised and the letter ‘I’ in the middle being highly stylised. The verbal element is decorated with two curled lines, one below the letter ‘R’ and the other above the letter ‘N’. All the abovementioned elements are depicted in gold against a rectangular black background.

Part of the public, such as the French-, German-, Polish- or Romanian-speaking public, will perceive the word ‘FLORIAN’ of the contested sign as referring to a male name. However, for another part of the public, such as significant parts of the Bulgarian-, Estonian-, Lithuanian- or Swedish-speaking public, this word is meaningless. In either case, the distinctiveness of this word is seen as normal, as it does not directly describe or allude to any characteristics of the goods in question. The figurative elements of the contested sign merely serve to decorate the verbal element or as a background for all the other elements and will not be attributed any trade mark significance by the relevant consumers.

The contested sign does not have any elements that could be considered more dominant (visually eye-catching) than other elements.

Considering the abovementioned perceptions of the marks in question, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public, such as parts of the Bulgarian-, Estonian-, Lithuanian- and Swedish-speaking public, that will perceive the earlier mark, ‘FLORIO’, and the verbal element ‘FLORIAN’ of the contested sign as meaningless words, as this part of the public would be more likely to confuse the signs.

Visually, the signs coincide in the sequence of letters ‘FLORI’, which constitute the first five letters in both signs. The signs differ in the last letter, ‘O’, of the earlier mark versus the last two letters, ‘AN’, of the verbal element of the contested sign, as well as in the colours, stylisation and figurative elements of the contested sign.

Contrary to the applicant’s arguments, the earlier mark and the verbal element of the contested sign have almost the same number of letters (six in the earlier mark and seven in the contested sign), of which the first five coincide. Taking into account that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, which is justified by the fact that the public reads from left to right and makes the part placed on the left of the sign (the initial part) the one that first catches the reader’s attention, the commonality in these initial five letters will create significant visual similarities between the marks. The differences in their last letters and in the colours, stylisation and decorative figurative elements of the contested sign, although creating some visual differences between the signs, are not of such a nature that they outweigh the similarities arising from the fact that the signs coincide in the vast majority of their letters.

Therefore, the signs are considered visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in the parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘FLORI*(*)’, present identically at the beginning of both signs. Moreover, the fact that the signs are composed of six (in the earlier mark) and seven (in the contested sign) letters, five of which coincide, means that their lengths, pronunciations, intonations and rhythms are very similar to each other.

The signs differ in the sound of the last letter, ‘O’, of the earlier mark versus the sound of the last two letters, ‘AN’, of the contested sign, which, contrary to the applicant’s argument, will not create significant aural differences between them.

Therefore, the signs are considered aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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/or 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).

As concluded above, the goods are partly identical and partly dissimilar, and the relevant public for assessing likelihood of confusion is the public at large, whose degree of attention is average. The degree of distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and aurally similar to a high degree, and the conceptual aspect does not influence the assessment of likelihood of confusion between the signs. As detailed in section c), the contested sign reproduces five letters (out of six) of the earlier mark in the same order; the differences in the verbal elements reside in one letter (in the earlier mark) and two letters (in the contested sign) at the end of the marks. However, these differences, together with the colours, stylisation and decorative figurative elements of the contested sign, are insufficient to offset the commonalities described above.

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

Since the signs coincide in the majority of their letters and neither of them conveys any concept that could clearly differentiate them from each other, it is highly conceivable that the relevant consumers, relying on their imperfect recollection, will be led to believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings. Therefore, it cannot be safely excluded that the relevant public will confuse the marks or, alternatively, perceive the contested sign as a variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, such as parts of the Bulgarian-, Estonian-, Lithuanian- and Swedish-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 159 277 ‘FLORIO’.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cynthia DEN DEKKER

Rasa BARAKAUSKIENE

Erkki MÜNTER

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.