OPPOSITION No B 3 006 643

Nordbrand Nordhausen GmbH, Bahnhofstr 25, 99734 Nordhausen/Harz, Germany (opponent), represented by Lucia Schwab, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)

a g a i n s t

Savio S.R.L. A Socio Unico, Rue de la Gare 47, Chatillon (AO), Italy (applicant), represented by Studio Torta S.P.A., Via Viotti 9, 10121 Torino, Italy (professional representative).

On 19/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 006 643 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 265 216 ‘LA CRUZ’, namely against all the goods in Class 33. The opposition is based on German trade mark registration No 30 2017 008 010 ‘Cruise Islands’. 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: Rum.

Contested goods in class 33:

The contested rum is included in the broader category of the opponent’s alcohol beverages excluding 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, alcoholic beverages (except beers) 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 cafés, 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 (19/01/2017, T‑701/15, LUBELSKA, EU:T:2017:16, § 22 and the case-law cited therein).

c) The signs

Cruise Islands	LA CRUZ
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 is a word mark, composed of the two words ‘Cruise’ and ‘Islands’. The first word has no meaning for the public in the relevant territory. The second word, ‘Islands’, will be associated with the name of the country Iceland, which is written almost identically in German — ‘Island’ — as the words differ in only one letter, namely the final letter, ‘s’, in the earlier mark. The opponent argues that the relevant public will understand the English word ‘islands’ and that this word is descriptive for the goods, as it is frequently used in their marketing. In the Opposition Division’s opinion, this argument has to be set aside, because ‘islands’ or Iceland are not related to the production of the goods, and evidence proving otherwise was not submitted by the opponent. Therefore, the mark is distinctive.

The contested sign is also a word mark, composed of two Spanish words, the definite article ‘LA’ and the noun ‘CRUZ’. The relevant public will perceive it as a foreign expression, and therefore the sign is distinctive.

Visually, the signs coincide in three letters, ‘CRU’, forming the beginning of the first word in the earlier mark and the beginning of the second word in the contested sign. The definite article ‘LA’, included in the contested sign, is also present in the earlier sign’s second word ‘Islands’, but this coincidence is not striking, as it is part of a longer word in the earlier mark.

Bearing in mind the different beginnings of the signs, they are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters
‘CRU’, although they are included in a longer syllable in each sign. Therefore, the endings of the similar verbal elements, the letters ‘ISE’ in ‘Cruise’ in the earlier mark and the letter ‘Z’ in ‘CRUZ’ in the contested sign, will be pronounced differently in German. The pronunciation of the signs further differs in the sounds of the word ‘Islands’ in the earlier mark and ‘LA’ in the contested sign, neither of which has a counterpart in the other sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘Islands’ in the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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).

In the present case, the goods are identical. The signs are visually and aurally similar to a low degree and conceptually dissimilar. The earlier mark has a normal degree of distinctiveness for the relevant public, namely the public at large, which will pay an average degree of attention.

Both marks are word marks composed of two verbal elements of different lengths. The marks coincide in only three letters at the beginning of one of their verbal elements, but the endings are written and pronounced differently and the words are in different positions in the signs. The commonality in a sequence of three letters is not particularly striking because the structures of the signs are different.

The opponent argues that particular importance should be attached to 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). However, in the present case, the aural and visual similarities between the signs are low. The signs differ visually and aurally in one of their verbal elements and coincide only in the beginnings of the first element in the earlier mark and the second element in the contested sign. The different sounds of the letters ‘ISE’ in the word ‘Cruise’ in the earlier mark and of the letter ‘Z’ in the word ‘CRUZ’ in the contested sign will not escape consumers’ attention. Moreover, the words that have identical beginnings are in different positions in the signs.

According to the principle of interdependence, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, but the fact that the goods are identical cannot, in this case, compensate for the differences between the signs. In addition, in the relevant territory, the signs are conceptually dissimilar, which also makes it unlikely that consumers will confuse the signs.

Based on an overall assessment of the earlier mark and the contested sign, the Opposition Division takes the view that the differing elements will enable consumers paying an average degree of attention to safely differentiate between them.

Considering all the above, even assuming that the goods are identical, 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

Ana MUÑIZ RODRIGUEZ

Loreto URRACA LUQUE

Judit NÉMETH

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.