OPPOSITION No B 3 046 759

Rauch Fruchtsäfte GmbH, Langgasse 1, 6830 Rankweil, Austria (opponent), represented by Michael Konzett, Fohrenburgstr. 4, 6700 Bludenz, Austria (professional representative)

a g a i n s t

Mauricio Gaston Perez Jofre, PH San Francisco Bay, Torre 400, Apto 32-A, San Francisco, Panama, Panama, Ricardo Gonzalez Perez, Av. Paseo Solares #934, Int. 70 Coto 7 Fracc. Solares, Zapopan, Jalisco 45019, Mexico and María Isabel Jofre de Perez, PH San Francisco Bay, Torre 400, Apto 32-A, San Francisco, Panama, Panama (applicants), represented by A2 Estudio Legal, C/ Alcalá 143, 3º Derecha, 28009 Madrid, Spain (professional representative).

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 759 is upheld for all the contested goods.

2. European Union trade mark application No 17 393 109 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 17 393 109 for the figurative mark . The opposition is based on, inter alia, international trade mark registration No 743 278 for the word mark ‘NATIVA’, designating, inter alia, Italy. 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.

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 Italian designation of the opponent’s international trade mark registration No 743 278.

a) The goods

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

Class 32: Beers.

The contested goods are the following:

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 opponent’s beers have relevant characteristics in common with the contested alcoholic beverages (except beers); rum. Although their production processes are different, these goods all belong to the same category of alcoholic drinks and, consequently, coincide in their nature; moreover, they are all intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Beers and other types of alcoholic beverages can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings. Therefore, the contested alcoholic beverages (except beers); rum are similar to the opponent’s beers in Class 32.

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 similar are directed at the public at large.

The degree of attention is deemed to be average.

c) The signs

NATIVA
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 sign is a word mark composed of the term ‘NATIVA’, whereas the contested sign is a figurative mark, containing the words ‘AUTÉNTICO NATIVO’ written in stylised upper case letters, in shades of brown. The sign also contains some wavy and round ornamental flourishes, in particular around the initial letter ‘N’. The symbol of the registered mark ® contained at the top right corner of the sign is negligible within the overall impression conveyed by the mark, due to its non-distinctive character and its minimal size, and will not be taken in consideration in the present comparison.

The earlier mark as a whole and the verbal element ‘NATIVO’ of the contested sign will be understood by the public in the relevant territory as, respectively, the feminine and masculine form of the adjective ‘nativo(a)’, which means ‘innate’, ‘inherent’, ‘indigenous’ or ‘born or belonging to a specific place or area’ (see Italian Dictionary ‘Corriere Della Sera’ at http://dizionari.corriere.it/dizionario_italiano/N/nativo.shtml). This word has no descriptive or even allusive connotation in relation to the relevant goods and is considered normally distinctive.

The word ‘AUTÉNTICO’ of the contested sign will be understood as ‘genuine, trustworthy, reliable, legally recognised as original’, since it is almost identical to the Italian word ‘autentico(a)’ and the graphic accent over the ‘E’ will not prevent this immediate recognition (see Italian Dictionary ‘Corriere Della Sera’ at http://dizionari.corriere.it/dizionario_italiano/A/autentico.shtml). In the context of the contested sign, this adjective will naturally be perceived as characterising the word it precedes, ‘NATIVO’, as being an authentic/genuine one. Therefore, it is semantically subordinated to the word ‘NATIVO’ and, consequently, of secondary importance in the overall impression conveyed by the sign. Furthermore, due to its diminutive size, this word is visually overshadowed by the element ‘NATIVO’, which will attract the consumers’ attention as the dominant and visually eye-catching element of the contested sign.

As regards the figurative nature of the contested sign, it must be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). In addition, in the present case, the figurative component of the sign is limited to the stylisation of its verbal elements (which does not obscure or prevent their immediate comprehension according to the aforementioned meanings), the use of shades of brown and to some flourish elements portrayed around the referred word elements.

Therefore, in view of the composition of the contested sign, the verbal elements ‘AUTÉNTICO NATIVO’ will be the ones that will be used to refer to it, whereas the figurative components described above (stylisation, colours and curved lines) will be seen by consumers as an essentially ornamental feature of the sign, intended to embellish it and to draw their attention to the brand at issue; in other words, the elements to which the public will attach more trade mark significance in the contested sign are the verbal elements ‘AUTÉNTICO NATIVO’.

Visually and aurally, the signs coincide in that they both contain the distinctive verbal element ‘NATIVO(A)’, which comprises the entire earlier mark and is independently reproduced in the contested sign, where it is also the dominant element. The slight difference between these elements (last letter ‘A’ versus ‘O’) will only have a minor impact for the Italian-speaking public at issue, as it simply corresponds to a gender variation of the same adjective.

The signs differ, both visually and aurally, in the additional word ‘AUTÉNTICO’ of the contested sign; nonetheless, as previously noted, this word plays a secondary role in the sign, as it characterises and describes the qualities of the term it precedes, ‘NATIVO’ and also because it is visually overshadowed by it, due to its much smaller size. Admittedly, the word ‘AUTÉNTICO’ has a higher impact as a differentiating element on an aural than on a visual level.

The marks also differ (only from a visual perspective, however) in the figurative components (stylisation, colours and embellishments) of the contested sign. As explained above, the public will not pay significant attention to these features as indicators of commercial origin and will rather focus of the elements ‘AUTÉNTICO NATIVO’ of the mark.

Consequently, taking into account that the most important/relevant, dominant and distinctive element of the contested sign reproduces almost identically the earlier mark, it is considered that the signs are visually similar to a high degree and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs will be perceived as containing the same and distinctive concept (‘innate’, ‘inherent’, ‘indigenous’ or ‘born or belonging to a specific place or area’), due to the presence of the elements ‘NATIVA’ and ‘NATIVO’, and bearing in mind that the additional concept of the contested sign (‘authentic’) further refers to and characterises the term ‘NATIVO’, the marks are considered conceptually similar to an above than 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 descriptive or allusive 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 (recital 8 of the EUTMR). It must be rendered globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the relevant goods are similar and the degree of attention of the public is deemed to be average.

The earlier mark as a whole has a normal degree of inherent distinctiveness.

The conflicting signs are visually highly similar, aurally similar to an average degree and conceptually similar to an above than average degree, as the earlier mark is almost entirely reproduced by the dominant, independent and distinctive element of the contested sign, ‘NATIVO’. The slight difference in their endings (‘NATIVA’ vs ‘NATIVO’) corresponds to a gender variation of the same adjective and has a reduced impact for the relevant Italian-speaking public.

As analysed above, the signs differ essentially in the figurative components and additional term ‘AUTÉNTICO’ of the contested sign; however, it is considered that these elements are not sufficient to safely exclude a likelihood of confusion between the marks in question. As regards the differences in the figurative features of the contested sign (colours used, stylisation of the lettering and ornamental elements), it must be noted that they result from elements to which the consumers will not attribute significant weight as indicators of commercial origin. Instead, as previously covered, the public is likely to attribute more trade mark significance to the verbal elements ‘AUTÉNTICO NATIVO’ of the mark. In addition, as regards the word ‘AUTÉNTICO’, it performs a secondary role in the contested sign, due to the reasons mentioned in section c) of this decision.

In this regard, account must be 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).

Furthermore, 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.

In the present case it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), since the launch of new versions of marks accompanied by another verbal element and/or a new ornamentation or graphical embellishment is a common market practice. This conclusion is further reinforced by the dominant character of the element ‘NATIVO’ in the contested sign. Therefore, consumers could be led to believe that the owner of the earlier trade mark has introduced on the market a new line of goods designated by the trade mark applied for.

In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion, including a likelihood of association, on the part of the public in relation to the similar goods at issue.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 743 278 designating Italy. 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 international trade mark registration No 743 278 designating Italy 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

Ewelina SLIWINSKA	Gueorgui IVANOV	Anna MAKOWSKA

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.