OPPOSITION No B 3 025 882

Illva Saronno S.p.A., Via Archimede, 243, 21047 Saronno (VA), Italy (opponent), represented by Fiammenghi - Fiammenghi S.R.L., Via delle Quattro Fontane, 31, 00184 Roma, Italy (professional representative)

a g a i n s t

Chevaliers Capital, Ltd., Piilipuuntie 18 C 13, 02200 Espoo, Finland (applicant), represented by Attorneys At Law Mk-Law, Ltd., Hirsalantie 11, 02420 Jorvas, Finland (professional representative).

On 08/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 025 882 is upheld for all the contested goods.

2. European Union trade mark application No 17 318 908 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 17 318 908 ‘Arctic Blue’ (word mark). The opposition is based on, inter alia, Italian trade mark registration No 764 103 (figurative mark). The opponent invoked Article 8(1)(a) and (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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Italian trade mark registration No 764 103.

a) The goods

In the notice of opposition, the opponent has indicated that it bases its opposition on earlier Italian trade mark registration No 764 103 on part of the goods, namely on wines, spirits and liquors; alcoholic beverages in Class 33. However, based on the registration certificate of the earlier Italian trade mark registration No 764 103 this trade mark registration covers alcoholic beverages (except beers) only. Since wines, spirits and liquors are included in the broad category of alcoholic beverages(except beers) and alcoholic beverages is a wider category than the goods for which its earlier mark is registered, namely alcoholic beverages (except beers), it is considered that the goods on which the opposition is based are the goods indicated in the trade mark registration certificate. Therefore, 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 beer).

Alcoholic beverages (except beer) are identically contained in both lists of goods.

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

	Arctic Blue
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 figurative trade mark containing the word ‘ARTIC’ depicted in standard upper-case letters.

The contested sign is a two-word mark containing words ‘Arctic’ and ‘Blue’. It must be noted that in case of word marks it is irrelevant whether the word mark is depicted in lower-or upper-case letters. According to the settled-case-law, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43).

The applicant argues that the word ‘ARTIC’ is meaningless and that the word ‘Artic’ brings to mind the word ‘Art’ and it seems to be a broken/short version of the word ‘Artistic’. However, the word ‘art’ in Italian is arte and the word ‘artistic’ in Italian is artistico whereas the word ‘arctic’ in Italian is àrtico. The words artistico and arte are objectively less similar to the word àrtico than the word ‘ARTIC’ and therefore, it is unlikely that the relevant Italian consumers will associate the word ‘ARTIC’ with the words ‘art’ and/or ‘artistic’. It follows from the above that the word ‘ARTIC’ is sufficiently similar to the Italian word àrtico (which means ‘arctic’ in English) so as to safely assume that the relevant public will associate the word of the earlier mark ‘ARTIC’ with it and will perceive it as referring to the polar region located at the northernmost part of the Earth.

Similarly, due to the similarity of the verbal element ‘ARCTIC’ with an Italian word àrtico, the relevant Italian-speaking public will understand the verbal element ‘Arctic’ in the contested sign also as related with the meaning described above. Although as pointed out by the applicant, the word ‘ARCTIC’ could evoke something extremely cold, this concept does not describe or allude to any of the objective characteristics of the goods in question such as their nature or their purpose. Besides, as the geographical area of the arctic has no specific relation to alcoholic beverages, it will not be perceived as descriptive of the place of origin of the goods (19/04/2016, T‑198/14, 100% Capri, EU:T:2016:222, § 72-83 and order of 10/11/2016, C‑351/16 P, 100% Capri, EU:C:2016:866, § 37-41). Finally, the word ‘ARCTIC’ cannot be considered as otherwise weak in relation to these goods, for example, because it would have become customary in that sector, and its distinctiveness is average. Consequently, both verbal elements ‘ARTIC’ in the earlier mark and ‘Arctic’ in the contested sign are of average distinctiveness for the goods in question.

The word ‘blue’ is an English word which means the colour blue. It is similar to the Italian word ‘blu’ with the same meaning of colour. Furthermore, according to settled case-law, the word ‘blue’ is part of basic English vocabulary known to the public throughout the European Union (12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30). Consequently, the relevant Italian-speaking public will understand the word ‘blue’ in the contested sign as referring to the colour blue.

According to settled case-law, reference to the colour blue may refer to the appearance of the goods in Class 32, which include non-alcoholic beverages. Furthermore, it is common knowledge that terms referring to a colour may be used in order to designate goods in the beverages sector, including non-alcoholic beverages (28/04/2016, T‑803/14, Mahou (B’lue) EU:T:2016:251, § 28). In the present case the goods are alcoholic beverages (except beer) in Class 33 and since they also belong to the beverages sector, the aforementioned considerations are applicable and therefore, the word ‘blue’ is weak in relation to the relevant goods.

Therefore, the element ARCTIC is the most distinctive element of the contested sign.

Visually, the signs coincide in letters ‘AR*TIC’. However, they differ in graphic depiction of the earlier mark, in the letter ‘C’ between the letters ‘AR-’ and ‘-TIC’ in the contested sign and in the additional verbal element ‘Blue’ in the contested sign which have no counterparts in the earlier mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. When encountering the contested sign consumers will first perceive the word ‘Arctic’ and therefore, contrary to the applicant´s arguments, this word and not the word ‘BLUE’ will attract the consumers’ attention first.

Bearing in mind that the first element of the contested sign is the most distinctive element and it almost fully reproduces the only word of the earlier mark, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AR*TIC’, present identically in both signs. The pronunciation slightly differs in the sound of the letter ‘C’ between the letters ‘AR*TIC’ in the contested sign and in the sound of its element ‘BLUE’ which have no counterparts in the earlier mark. Due to the additional element of the contested sign, they further differ in rhythm and intonation.

However, as explained above, the differing word ‘BLUE’ is weak in relation to the relevant goods and the distinctive words ‘artic’ and ‘arctic’ are pronounced almost identically. Therefore, the signs are aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with an identical meaning of ‘arctic’/’artic’ as explained above, and the word ‘blue’ in the contested sign invokes an additional concept but it is weak as described above, the signs are conceptually highly 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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).

The goods in the present case are identical. They target the public at large which displays an average degree of attentiveness. The signs are visually and conceptually highly similar and aurally similar to an average degree at least.

The word ‘ARCTIC’ in the contested sign is placed at the beginning of it which, as explained above, is the part of the mark that first catches consumers’ attention. Furthermore, this word appears as an independent element in the contested sign and it almost entirely reproduces the earlier trade mark. The only difference between these words lies in one letter in the middle of the word, that is, in a position where it could be overlooked.

Account is taken of 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). Applying the aforementioned principle of imperfect recollection, it is highly conceivable that consumers will overlook the difference lying in the letter ‘C’. Besides, the additional verbal element ‘blue’ of the contested sign is weak and it cannot prevent a likelihood of confusion between the signs.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Bearing in mind the signs at issue consumers may make a connection between the signs and assume that the goods are coming from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumers will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), namely a line of ‘blue’ of ‘ARTIC’/ARCTIC’ alcoholic beverages (except beer).

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 Italian trade mark registration No 764 103. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Italian trade mark registration No 764 103 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Marine DARTEYRE

Birute SATAITE-GONZALEZ

Francesca DRAGOSTIN

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.