OPPOSITION No B 3 037 341

E. Remy Martin & C°, 20 rue de la Société Vinicole, 16100 Cognac, France (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative)

a g a i n s t

Jingshi Media Co., Ltd., Room 1-2503-01, Building 6, Longyuan Residential Area, 4569 Phoenix Road, High-tech District, Jinan Shandong, People Republic of China (applicant), represented by Eugenia Gainutdinova, Tomsona 24-15, 1013 Riga, Latvia (professional representative).

On 21/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 037 341 is upheld for all the contested goods.

2. European Union trade mark application No 17 423 311 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 17 423 311 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 12 035 747 for the word mark ‘LOUIS XIII’ in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR and on two earlier signs used in the course of trade, in relation to which the opponent invoked Article 8(4) 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 European Union trade mark registration No 12 035 747 for the word mark ‘LOUIS XIII’, which is not under the proof of use obligation and is the mark most similar to the contested sign.

1. The goods

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

Class 33: Alcoholic beverages (excepts beers), namely cognac, brandy, brandy, rum, whisky, spirit beverages, rice alcohol, vodka, gin, sake, tequila, aquavit, liqueurs, still wines, alcoholic extracts, alcoholic essences, aperitifs, digestives, cider and alcoholic cocktails.

The contested goods are the following:

Class 33: Baijiu [Chinese distilled alcoholic beverage]; fruit extracts, alcoholic; alcoholic beverages, except beer; spirits [beverages]; rice alcohol; wine; piquette; brandy; whisky; distilled beverages.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The contested spirits [beverages]; rice alcohol; brandy; whisky are identically contained in both lists of goods.

The contested baijiu [Chinese distilled alcoholic beverage]; piquette are included in the broad category of, or overlap with, the opponent’s spirit beverages. Therefore, they are identical.

The contested fruit extracts, alcoholic are included in the broad category of the opponent’s alcoholic extracts. Therefore, they are identical.

The contested alcoholic beverages, except beer; wine include, as broader categories, the opponent’s still wines. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested distilled beverages include, as a broader category, the opponent’s brandy. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. 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, whose level of attention is average.

3. The signs

LOUIS XIII
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 earlier mark ‘LOUIS XIII’ is a word mark. 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). Therefore, it is irrelevant whether the earlier word mark is depicted in lower- or upper- case letters, or in a combination thereof. The contested sign is a figurative mark that is an emblem consisting of two black winged creatures in side view, a coat of arms with grapes and barrels between the creatures and underneath all a banner with the verbal elements ‘Louis xviii’. The verbal elements are in a quite standard white typeface, with the letter ‘L’ in upper -case and the rest in lower –case, against a black background.

The earlier mark ‘LOUIS XIII’ will be seen by a part of the public as referring to a ‘king of France (1610-43)’ (information extracted from Collins English Dictionary on 05/11/2019 at https://www.collinsdictionary.com/dictionary/english/louis-xiii). However, it is possible that another part of the public will perceive the word ‘LOUIS’ as referring to a male first name of French origin followed by the number ‘XIII’ (thirteen in Roman numerals). As in both scenarios the earlier mark does not have any particular relationship with the relevant goods, it has a normal degree of distinctiveness.

The verbal elements of the contested sign, ‘Louis xviii’, will be seen by a part of the public as referring to a ‘king of France (1814-24)’ (information extracted from Collins English Dictionary on 05/11/2019 at https://www.collinsdictionary.com/dictionary/english/louis-xviii). However, it is possible that another part of the public will perceive the word ‘LOUIS’ as referring to a male first name of French origin followed by the number ‘XVIII’ (eighteen in Roman numerals). As in both scenarios the verbal elements of the contested sign do not have any particular relationship with the relevant goods, they have a normal degree of distinctiveness.

The figurative elements of the contested sign will be perceived as an emblem with a coat of arms with grapes and barrels. Bearing in mind that the relevant goods are alcoholic beverages and emblems and/or coats of arms are commonly used on such bottles and labels, these elements are weak for all the relevant goods in Class 33. The public will not pay as much attention to these weak elements as to the more distinctive verbal elements ‘Louis xviii’ of the contested sign. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the signs at issue.

In the contested sign, the verbal elements are written in a small typeface and located in the sign’s lowermost part, overshadowed by the figurative elements in the form of an emblem and, therefore, the verbal elements are considered less dominant.

Visually and aurally, the signs coincide in the sight and sound of the verbal element ‘LOUIS’, followed by the Roman numerals ‘XIII’ (earlier mark) or ‘xviii’ (contested sign). The coinciding elements are located at the beginning of both signs, where the consumer usually focuses more of their attention. Furthermore, the verbal elements of both signs have a very similar structure, namely that of a word element followed by a number in Roman numerals.

The signs’ verbal elements differ visually in the number ‘XIII’ versus ‘xviii’ and in the contested sign’s typeface, which is rather standard and will not divert the consumer’s attention from the elements it embellishes. Moreover, the signs differ visually in the figurative elements of the contested sign, which, however, have less impact, despite being dominant. They have less impact since they are weak, as explained above, and the consumer will focus more on the verbal elements than on the figurative elements, as the verbal elements will be used to refer to the mark (see also the paragraph below). The marks also differ to some extent in the pronunciation of the Roman numerals ‘XIII’ versus ‘xviii’, depending on the language, for example ‘the thirteenth’ and ‘the eighteenth’ in English, ‘de dertiende’ and ‘de achtiende’ in Dutch, ‘treize’ and ‘dix-huit’ in French and ‘trece’ and ‘dieciocho’ in Spanish.

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; 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). This is even more applicable in the present case with respect to the emblem and coat of arms of the contested sign, since these elements are weak, as pointed out above.

For all the aforementioned reasons, and also taking into account the distinctiveness issue, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived either as kings in France governing in different periods or as a French male first name followed by different Roman numerals, the signs are conceptually similar to at least an average degree. Although there are some additional figurative elements in the contested sign, they have little impact for the aforementioned reasons.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found identical and they target the public at large, whose level of attention is average. The earlier mark has a normal degree of inherent distinctiveness.

In addition, the marks have been found visually and aurally similar to a high degree and conceptually similar to at least an average degree.

Although the verbal elements in the contested sign are visually less dominant, they are its most distinctive elements and its sole verbal elements, where consumers usually focus their attention and which they will use to refer to the sign.

In addition, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between the different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Taking into account all the circumstances, the differences between the signs are not enough to counteract the striking similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish between the signs in dispute for the goods that are identical and will perceive them as having the same origin.

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 European Union trade mark registration No 12 035 747 for the word mark ‘LOUIS XIII’. 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 or reputation 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 right European Union trade mark registration No 12 035 747 for the word mark ‘LOUIS XIII’ 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 grounds of the opposition, namely Article 8(4) and (5) EUTMR.

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

Saida CRABBE

Chantal VAN RIEL

Victoria DAFAUCE MENÉNDEZ

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.