OPPOSITION No B 3 047 272

Tobias Friderichs, Moselweinstr. 14, 56814, Ediger-Eller, Germany; Michael Oster, Moselweinstr. 14, 56814, Ediger-Eller, Germany (opponents), represented by Schneiders & Behrendt Partmbb, Rechts- Und Patentanwälte, Huestr. 23, 44787, Bochum, Germany (professional representative)

a g a i n s t

Helmut Köcher, B. Johannes-Str. 9, 39012 Meran, Italy (applicant), represented by Anton Ausserer, Via Isarco 6, 39100 Bolzano, Italy (professional representative).

On 17/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 272 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 245 713 is rejected in its entirety.

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

REASONS

The opponents filed an opposition against all the goods and services of European Union trade mark application No 17 245 713 . The opposition is based on German trade mark registration No 3 020 171 080 666 . The opponents 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 and services

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

Class 33: Alcoholic beverages; wine; beverages containing wine; all afore-mentioned goods with the exception of herbal spirits and pre-mixed alcoholic beverages with a base of herbal spirits.

The contested goods and services are the following:

Class 33: Wine.

Class 41: Wine tasting services (education); Wine tastings [educational services]; Wine tastings [entertainment services].

Class 43: Wine tasting services (provision of beverages).

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.

Contested goods in Class 33

Wine is identically contained in both lists of goods, notwithstanding the limitation of the opponents’ goods, since it does not affect the usual and natural meaning of wine.

Contested services in Class 41

The contested wine tasting services (education); wine tastings [educational services]; wine tastings [entertainment services] may be offered by the same undertakings as the opponents’ wine; all afore-mentioned goods with the exception of herbal spirits and pre-mixed alcoholic beverages with a base of herbal spirits in Class 33, given that wine producers also commonly offer wine tastings and related education, contrary to the arguments of the applicant. Furthermore, they are distributed through the same distribution channels and they target the same relevant public. Therefore, they are similar to at least a low degree.

Contested services in Class 43

Wine tasting services (provision of beverages) are similar to a low degree to opponents’ wine; all afore-mentioned goods with the exception of herbal spirits and pre-mixed alcoholic beverages with a base of herbal spirits as they usually coincide in producer and distribution channels. Indeed, wine producers, sometimes also wine growers, commonly offer wine tasting where the price of the wine consumed is generally included in the fee for the service. Furthermore they are complementary.

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 relevant goods and services are directed at the public at large. The degree of attention is average. The consumer of alcoholic drinks is a member of the general public, deemed to be reasonably well-informed and reasonably observant and circumspect (24/11/2016, T-250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 26 and the case-law cited as well as § 30-31). Thus, the public at large does not have a high, but rather an average, level of attention (19/05/2015, T-607/13, 42 Vodka, EU:T:2015:292, § 29).

3. The signs

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).

The earlier mark contains word elements WINE HUNTER, above which are stylised images of two small dogs on both sides of a large horned deer and a branch of grape wine, all placed within a square formed of a thin line.

The branch of grape wine is perceived with its meaning. The element WINE, despite being an English word, is widely understood by the German public due to its universal use. Both of these elements alone are non-distinctive in relation to the opponent’s goods, which are wines. The square background and curved lines within which the verbal element is placed are perceived as a banal embellishment and attributed no distinctive character. The word HUNTER despite being an English word, is widely understood by the German public due to its universal use as a person who searches or hunts for something. The images of three animals are perceived and they reinforce the concept of ‘hunting’ since deer is a common game and the depicted dachshunds are typical hunting dogs. Nevertheless, as the notion of hunting is fanciful in relation to wine, the word HUNTER and the images of the animals are the (most) distinctive elements of the mark.

The element depicting a deer in the earlier sign is the dominant element as it is the most eye-catching due to its size.

The contested mark contains slightly stylised separate word elements THE WINE HUNTER above which is a figurative element without a specific meaning. The meaning and distinctiveness of the elements WINE and HUNTER have been discussed above. The element THE is perceived as an English article and therefore attributed no distinctive value. The figurative element has no meaning. The elements HUNTER and the figurative element are the more distinctive elements of the mark.

The figurative element in the contested sign is the dominant element as it is the most eye-catching due to its size.

Visually, the signs coincide in the element HUNTER and also in the non-distinctive element WINE. The marks differ in the remaining word and figurative elements, some of which were found non-distinctive above. When signs consist of both verbal and figurative components, in principle, the public will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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

Aurally, the pronunciation of the signs coincides in the sound of the elements WINE (found non-distinctive) and HUNTER, present identically in both signs. The pronunciation differs in the element THE of the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to WINE HUNTER, which brings to mind someone who is looking for (good) wine, and given that some of figurative elements in the earlier mark reinforce the concept of hunting, the signs are conceptually highly similar to that extent, despite the non-distinctive role of the individual element WINE.

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 opponents 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, despite the presence of elements with reduced distinctiveness in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services have been found partially identical and partially similar to a low degree. The visual, aural and conceptual aspects have been examined.

The earlier mark and the contested sign have been found to be similar to the extent that they have the elements WINE HUNTER in common. The remaining differences, in the element THE and figurative elements cannot outweigh the prevailing coinciding elements perceived by the public. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting goods and and services come from the same or economically linked undertakings.

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). Similar reasoning can be applied to services, whereas the services are ordered aurally.

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. This also applies to the services at hand. These considerations come into play in the finding of likelihood of confusion. Presently the signs are aurally highly similar.

Taking into account the circumstances described above, it is considered that the coincidences between the signs, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods and services come from the same or economically-liked undertakings.

In addition, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product or service lines or to endow a trade mark with a new fashionable image.

In the present case, although the public in the relevant territory might detect certain differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way depending on the type of goods or services that it designates. It is, therefore, conceivable that the relevant public will regard the goods and services designated by the conflicting signs as belonging to two ranges of goods and services coming from the same undertaking.

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 German trade mark registration No 3 020 171 080 666. It follows that the contested trade mark must be rejected for all the contested goods and services, taking into account also that the low similarity of the services is offset by the sufficiently high similarity between the marks.

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 opponents 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 opponents 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

Solveiga BIEZA

Erkki Münter

Ferenc GAZDA

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.