OPPOSITION No B 3 025 874

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 19/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 025 874 is upheld for all the contested goods.

2. European Union trade mark application No 17 318 916 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 17 318 916 for the word mark ‘Arctic Gold’. The opposition is based on, inter alia, Italian trade mark registration No 764 103 for the figurative sign . 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 for the figurative sign .

a) The goods

The goods on which the opposition is based are the following:

Class 33: Wines, spirits and liquors; alcoholic beverages.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

The contested alcoholic beverages (except beer) are included in the broad category of the opponent’s alcoholic beverages. 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. The degree of attention is average.

c) The signs

	Arctic Gold
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).

First of all, the applicant’s argument that the word ‘artic’ would bring to mind the idea of ‘art’ has not been supported by any additional line of reasoning or evidence thereof. Consequently, the Opposition Division cannot agree on this point with the applicant’s allegations. On the contrary, the word ‘artic’ constituting the earlier mark will be, without further thought, understood by the Italian speakers as a reference to the polar region located at the northernmost part of Earth. This is due to the fact that this word is a simple derivative of the Italian words ‘artico/a’ or ‘l'Artico’. Even though it vaguely evokes a concept of ‘freezing cold’, yet it does not describe the goods or their characteristics, and thus it is considered of having a normal distinctiveness as a whole. Although the earlier mark is featured as a figurative sign, it barely contains any stylisation or other visible components that may be of relevance in the present assessment; consequently, consumers’ attention when encountering the opponent’s products on the market will be focused on the verbal element ‘artic’.

The contested mark is a word mark. Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

Furthermore, due to its significant resemblance with the Italian equivalents commented above, the verbal element ‘arctic’ of the contested sign will evoke the same concepts as previously outlined. Likewise, it is of a normal distinctiveness for the goods in question.

The word ‘Gold’ in the contested sign will generally denote ‘a valuable, yellow-coloured metal that is used for making jewellery and ornaments, and as an international currency’, as well as ‘a deep yellow colour, sometimes with a brownish tinge’. Although it may not be expected that the average consumer has a particular knowledge of a foreign language, this is a flexible rule (see a reference, by analogy with 03/09/2009, C-395/38 P, EU:C:2009:334, § 51) and the knowledge of foreign terms by the relevant public should be assessed on a case by case basis, being hereby particularly pertinent as to whether the word in question is commonplace word in trade. In the present case, a vast majority of the Italian consumers will know the word ‘gold’ due to its character of a basic English term used in the alcoholic beverages industry and will associate it with a brownish colour of the respective drinks or, in another frequent context, with their superior quality. Indeed, nowadays, it is common in the market alcoholic beverages such as vodka, gin, rum, liquor or whisky to be labelled with the same or similar indications (‘black’, ‘white’, ‘silver’, etc.) bearing the intent to highlight their qualities or particular characteristics (by analogy with 24/07/2017, R 2305/2016-2, BLACK (fig.) / NOVAL BLA, § 49). Therefore, contrary to what the applicant argues, for consumers who will grasp the word ‘gold’ as meaningful, it will be of a reduced distinctiveness in relation to the goods in question. To that extent, Italian consumers will not pay as much attention to this weaker element as to the other more distinctive word of the mark, ‘Arctic’.

For the remaining part of the public for which the verbal element ‘gold’ present in the contested sign has no meaning, this word is distinctive to an average degree.

Visually and aurally, the signs coincide in the letters ‘ar*tic’ composing the entire earlier mark and most of the first elements of the contested sign. The signs differ in the additional letter ‘c’ of that first element in the contested sign, as well as in the word ‘gold’, which, however, is considered of reduced distinctiveness for at least part of the Italian public.

Account is taken of the fact that 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. Consequently, contrary to what the applicant argues, consumers in the present case will focus their attention on the first word ‘arctic’ rather than on the word ‘gold’ in any of the events explained above, namely whether they understand the word as a qualifier of the products or simply see it as a meaningless word.

Bearing in mind the above findings and, in particular, the complete reproduction of the earlier mark in the contested sign’s initial element, the signs are found visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that the signs will be associated with a similar meaning produced by their almost coinciding elements, the signs are conceptually similar at least to an average degree.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As has been concluded above, the contested goods were found to be identical to the goods covered by the earlier trade mark and they target the public at large with an average degree of attention. Furthermore, the earlier trade mark is considered to enjoy a normal degree of distinctiveness in relation to the relevant goods.

The marks in dispute are visually, aurally and conceptually similar at least to an average degree due to the partial reproduction of the earlier mark’s sole element within the initial verbal element of the contested sign, ‘ar*tic’. The said element plays an independent and distinctive role in the contested sign, where it is moreover placed at the most prominent position, namely the beginning of the sign which primarily catches consumers’ attention. These similarities will be even greater for the part of the public that will recognise the meaning of the word ‘gold’ in the contested mark and will only attribute it the role of a qualifier of the present goods.

Account is taken of the fact that 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). Consequently, the difference in one additional letter in the contested sign (‘c’), between other identical letters, may be easily overlooked or misheard (if pronounced at all), especially when both verbal elements convey the same concept to the relevant public.

In addition, it has to be noted that 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. Therefore, even if not directly confusing the marks, the consumers could be led to believe that the owner of the earlier trade mark has launched a new label of alcoholic drinks designated by the trade mark applied for (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This finding even more holds true whenever Italian consumers will see the additional word ‘gold’ as a modification of the label with regard to a new characteristic of the alcoholic drinks in question.

The applicant refers to well-established case-law examples to support its arguments. The Opposition Division notes that the previous cases referred to by the applicant are not relevant to the present proceedings as they involve other factors that have been taken into account upon concluding on the lack of likelihood of confusion, in particular the descriptive (per se) character of the coinciding elements (F1 and Post); thus, given all the above, their findings cannot be transferred or considered in a different manner under the circumstances of the present case. In that sense, the applicant’s references to those cases have to be disregarded.

Considering all the above findings, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the Italian trade mark registration No 764 103 for the figurative sign . 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.

Furthermore, as the earlier right examined above 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR. For the sake of completeness, it has to be noted that the signs examined above were in any event not identical.

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

Inés GARCÍA LLEDÓ

Manuela RUSEVA

Alexandra APOSTOLAKIS

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.