OPPOSITION Nо B 3 040 964

 

Bodegas Martin Codax SA, Burgans, 91, 36633 Vilariño-Cambados (Pontevedra), Spain (opponent), represented by Miguel Fernández-Ayala Novo, Francisco Mariño, 5-6º izq, 15004 A Coruña, Spain (professional representative) 

 

a g a i n s t

 

Ignacio Carballido, 86 Orchard Street, 10002 New York, United States of America (applicant), represented by IP21 Oakleigh Europe, Ул. Тодор Александров N.41, Ет.2, 2700 Благоевград, Bulgaria (professional representative).

On 27/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 040 964 is upheld for all the contested goods.

2. 3.	European Union trade mark application No 17 414 921 is rejected in its entirety. 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 17 414 921 (figurative mark). The opposition is based on European Union trade mark registration No 10 753 151 ‘LOS AMANTES’ (word mark). 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

 

After cancellation proceedings No 17261C the goods on which the opposition is based are the following:

Class 33: Wines

The contested goods, after a limitation filed by the applicant on 01/09/2020, are the following:

Class 33: Alcoholic beverages (except beers and wine); mezcal and alcoholic beverages made from mezcal. 

 

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 applicant claims that the contested goods are dissimilar to wines since 'as a result of cancellation decision No 17261C and the applicant’s limitation, the opponent has lost its trade mark ability to satisfy the minimum requirements of Art. 8(1)(b) EUTMR in order to maintain this opposition as both the marks and the goods are dissimilar’.

Wines are similar to alcoholic beverages (except wines). Although their production processes are different, these goods all belong to the same category of alcoholic drinks 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. Furthermore, they can originate from the same undertakings.

 

Therefore, the contested alcoholic beverages (except beers and wine); mezcal and alcoholic beverages made from mezcal are similar to the opponent's wines because they have the same nature. Furthermore, they are in competition and they coincide in distribution channels, end user and producer.

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 considered to be average.

 

c) The signs and the distinctiveness of the earlier mark

 

LOS AMANTES
Earlier trade mark	Contested sign

 

The relevant territory is the European Union

 

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57).  Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common verbal expression 'LOS AMANTES' is meaningful for the Spanish-speaking part of the relevant public, since it is the Spanish equivalent of 'the lovers'. The Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, for whom the signs bear conceptual similarities that might not arise from the perspective of other consumers.

 

'LOS AMANTES' is not related to the relevant goods and is therefore distinctive to an average degree.

The same finding applies equally to the earlier mark as a whole, since it has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Moreover, given the lack of a claim for enhanced distinctiveness on the side of the opponent, the distinctiveness of the earlier mark must be seen as normal.

The image of a plant depicted in the contested sign may be allusive to the characteristics of the relevant goods, namely it alludes to the plant extracts used in the elaboration of the alcoholic beverages. It is therefore of reduced distinctiveness.

The image of two laying persons in an affectionate attitude reinforces the verbal element ‘los amantes’ in the contested sign and is, therefore, also distinctive to an average degree.

The typeface of the verbal expression in the contested sign is slightly stylised but of a limited impact in the overall impression of the sign.

However, 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).

Based on the above principle, the figurative elements in the contested sign are of a secondary nature and consumers will focus on the expression ‘los amantes’.

The contested sign, contrary to the applicant’s statement, has no element that could be considered clearly more dominant than other elements. 

  

Visually and aurally, the signs coincide in their distinctive expression ‘LOS AMANTES’, present identically in both signs. They differ visually in the figurative elements of the contested sign and in the typeface of its verbal expression, both of a secondary nature, as seen above, and with no counterparts in the earlier mark.

Therefore, the signs are visually similar to an average degree and aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the meaning of a loving couple, and the differing concepts in the contested sign are of a secondary nature, 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) Global assessment, other arguments and conclusion

 

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 undertaking or economically linked undertakings.

 

The goods are similar and target the public at large with an average degree of attention.

The signs are visually similar to an average degree, aurally identical and conceptually highly similar. The earlier mark enjoys a normal degree of distinctiveness.

 

The earlier mark is completely contained, as an independent and distinctive expression, in the contested sign and is reinforced by its image of the two lovers. The differences between the signs are confined to the figurative elements of the contested sign, on which consumers will focus less when they encounter a mark.

Based on the principle of association, mentioned above, it is highly conceivable that the relevant consumer 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

Moreover, 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). In the present case, the aural identity between the signs plays a decisive role in the assessment of similarity between them.

 

Considering all the above, there is a likelihood of confusion on the part of the Spanish- speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 753 151. It follows that the contested trade mark must be rejected for all the contested goods.

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, he 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, 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

 

 

Francesca DRAGOSTIN

Sylvie ALBRECHT

Meglena BENOVA

 

 

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.