OPPOSITION No B 3 043 430

Sensi Vigne & Vini S.r.l., Via Cerbaia, 107 - Fraz. Cerbaia, 51035 Lamporecchio (PT), Italy (opponent), represented by Dott. Franco Cicogna & C. S.r.l., Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative)

a g a i n s t

Sentio, Soroksári út 115., 1095 Budapest, Hungary (applicant), represented by Kapolyi Law Firm, József nádor square 5-6. III., 1051 Budapest, Hungary (professional representative).

On 12/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 043 430 is partially upheld, namely for the following contested goods and services:

Class 33: Alcoholic beverages (except beer).

Class 35: Retail services in relation to alcoholic beverages (except beer); wholesale services in relation to alcoholic beverages (except beer).

Class 43: Food and drink catering.

Class 44: Cultivation of grapes for winemaking.

2. European Union trade mark application No 17 449 018 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 449 018 for the word mark ‘Sentio’. The opposition is based on, inter alia, European Union trade mark registration No 11 631 983 for the figurative 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.

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 11 631 983.

a) The goods and services

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

Class 33: Wine; spirits; liqueurs; alcoholic beverages (except beers).

Class 35: Services carried out for and/or on behalf of others in the advertising and business sectors; public relations and market research; advertising and promotion for the marketing of wines, spirits, aperitifs and liqueurs.

The contested goods and services are the following:

Class 33: Alcoholic beverages (except beer).

Class 35: Retail services in relation to alcoholic beverages (except beer); wholesale services in relation to alcoholic beverages (except beer).

Class 39: Vehicle rental; transportation of passengers by boat; rental of ships.

Class 41: Organising events for entertainment purposes; vocational training services; entertainment, sporting and cultural activities; organisation of events for cultural, entertainment and sporting purposes.

Class 43: Food and drink catering; hospitality services [accommodation].

Class 44: Cultivation of grapes for winemaking.

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.

Contested goods in Class 33

The contested alcoholic beverages (except beer) are identically contained in both lists of goods.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to alcoholic beverages (except beer) are similar to a low degree to the opponent’s alcoholic beverages (except beers).

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35. Therefore, the contested wholesale services in relation to alcoholic beverages (except beer) are similar to a low degree to the opponent’s alcoholic beverages (except beers).

Contested services in Class 39

The contested vehicle rental; transportation of passengers by boat; rental of ships are dissimilar to the opponent’s goods and services in Classes 33 and 35 since they do not have anything in common. These goods and services have different purposes, methods of use and natures. They are distributed via different channels and usually do not have the same commercial origins.

Contested services in Class 41

The contested organising events for entertainment purposes; vocational training services; entertainment, sporting and cultural activities; organisation of events for cultural, entertainment and sporting purposes are dissimilar to the opponent’s wine; spirits; liqueurs; alcoholic beverages (except beers) in Class 33 since they do not have anything in common. The contested services mainly encompass services intended to amuse, divert or educate, involving physical and cultural activities that render them different from the opponent’s wine; spirits; liqueurs; alcoholic beverages (except beers) in purposes, methods of use and natures. The contested services and the opponent’s goods are also rendered/distributed via different channels and usually do not have the same commercial origins. The mere fact that the opponent’s goods can be sold at some of the events included in the contested services is not sufficient to counterbalance the fact that these goods and services are normally neither manufactured nor provided by the same undertakings and are not complementary or in competition.

The contested services are also dissimilar to the opponent’s services carried out for and/or on behalf of others in the advertising and business sectors; public relations and market research; advertising and promotion for the marketing of wines, spirits, aperitifs and liqueurs in Class 35. These services have different natures and purposes. They also have different providers, distribution channels and relevant publics. The mere fact that the applicant’s events can be advertised is insufficient to support a finding of similarity.

Contested services in Class 43

The contested food and drink catering is the business of providing food and drink service at a venue and, if compared with the opponent’s alcoholic beverages (except beers) in Class 33, consumers may think that responsibility for the production of those goods and provision of those services lies with the same undertaking. Moreover, the distribution channels can coincide and the goods and services are complementary to each other. Therefore, they are similar to a low degree.

The contested hospitality services [accommodation] are dissimilar to the opponent’s goods and services in Classes 33 and 35 since they do not have anything in common. These goods and services have different purposes, methods of use and natures. They are distributed via different channels and usually do not have the same commercial origins.

Contested services in Class 44

The contested cultivation of grapes for winemaking is similar to a low degree to the opponent’s wine in Class 33, since the production of wines is decisively influenced by how the vines are cultivated and cared for. The quality of a wine is to a great extent determined by the grape variety used and by how the vines are cultivated. Therefore, these conflicting goods and services are complementary (wineries and vineyards services are necessary for the production of wine). They also have a similar final purpose (e.g. the sale of wine) and may thus be deemed as having a competitive relationship to a certain extent. Moreover, they are usually provided by the same companies.

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.

The goods and services found to be identical or similar to a low degree target the public at large and, with respect to the wholesale services in relation to alcoholic beverages (except beer) and the cultivation of grapes for winemaking, business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average depending on the goods and services at issue (e.g. will be higher for services that target professional customers with specific knowledge and expertise).

c) The signs

	Sentio
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 is a figurative mark consisting of the verbal element ‘SENSI’ in standard upper-case letters, with the letter ‘N’ being stylised. The contested sign is the word mark ‘Sentio’, written in title case letters. In the case of word marks, the word as such is protected and not its written form; therefore, it is immaterial that the contested sign is depicted in title case letters.

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.

Given that the word ‘sensi’ of the earlier mark is meaningful in certain languages of the relevant territory, such as Italian, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public, for which this mark has no meaning and therefore there is no conceptual dissimilarity.

Neither of the verbal elements ‘SENSI’ and ‘Sentio’ has a meaning for the German-speaking part of the public in relation to the goods and services at issue and both are therefore considered distinctive.

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.

Visually, the signs coincide in the letters ‘SEN*I*’ of the sole element of both marks, (even considering the stylised nature of the letter ‘N’ of the earlier mark). However, they differ in the fourth letter, ‘S’ in the earlier mark and ‘T’ in the contested sign, and in the contested sign’s last letter, ‘O’, which has no counterpart in the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the syllable ‛SEN’, present identically at the beginning of both signs, and in the sound of the letter ‘I’, included in the second (and last) syllable of both signs. The pronunciation differs in the sound of the fourth letter, ‘S’ in the earlier mark and ‘T’ in the contested sign, although part of the public in the relevant territory might pronounce them in a similar way. This is because the German letter ‘s’ is pronounced like the English ‘z’ in most cases, and the sequence of letters ‘tio’ is normally pronounced as ‘tsio’, for example in the German words ‘Aktion’ and ‘sensationell’. The pronunciation further differs in the contested sign’s last letter, ‘O’, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 and services 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

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.

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).

In the present case, the goods and services are partly identical and similar to a low degree and partly dissimilar. The goods and services found to be identical or similar to a low degree are directed mostly at the public at large and partly at business customers with specific professional knowledge or expertise, as explained above in section b) of this decision; the degree of attention may vary from average to high.

While a conceptual comparison of the signs is not possible, they have been found to be visually similar to an average degree and aurally similar to at least an average degree insofar as they have four letters in common, of which the first three, ‘SEN’, occur identically at the beginning of both signs. The visual and aural differences between the signs are confined to the fourth letter, ‘S’ in the earlier mark and ‘T’ in the contested sign, — although, as explained in section c) above, part of the relevant public might pronounce them in a similar way — and in the contested sign’s last letter, ‘O’, which has no counterpart in the earlier mark.

In light of the minor differences described 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), and this holds even for the professional public displaying a higher degree of attention.

Moreover, as the goods (and services) found to be identical (and similar to a low degree) are alcoholic beverages (except beers) (and their production and sale), and, since these beverages 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).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 631 983. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

In its observations, the applicant refers to a previous decision of the General Court to support its arguments. Its reasoning and outcome should be duly considered when deciding upon a particular case. However, the previous case referred to by the applicant is not relevant to the present proceedings because the signs at issue are not comparable to the present ones. In the case referred to by the applicant (04/03/2010, C 193/09 P, ARCOL / CAPOL, EU:C:2010:121) the signs had more dissimilarities than similarities; by contrast, in the present case, the first three letters out of five of the earlier mark are identically and entirely reproduced in the contested sign, as explained above.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

Since the opposition is partially 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 and in relation to identical and similar (to a low degree) goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on European Union trade mark registration No 14 533 178 for the figurative mark . Since this complex mark contains a verbal element which is identical to the one which has been compared and covers the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

José Antonio GARRIDO OTAOLA

Valeria ANCHINI

Michele M. BENEDETTI-ALOISI

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.