OPPOSITION No B 3 042 648

Terras De Alter - Companhia de Vinhos, Lda., Zona Industrial de Fronteira, Lote 22 a 28, 7460-263 Fronteira, Portugal (opponent), represented by Garrigues IP, Unipessoal Lda., Avenida da República 25 - 1º, 1050-186 Lisboa, Portugal (professional representative)

a g a i n s t

Casa Ermelinda Freitas – Vinhos Lda., Fernando Pó, C.P. 2501, 2965-621 Águas de Moura, Portugal (applicant), represented by Gastão Da Cunha Ferreira Lda., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative).

On 29/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 042 648 is upheld for all the contested goods.

2. European Union trade mark application No 17 452 913 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 17 452 913 for the word mark ‘FADO PORTUGUÊS’. The opposition is based on, inter alia, European Union trade mark registration No 4 104 865 for the word mark ‘FADO’. 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

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

Class 33: Alcoholic drinks, with exception of beer.

The contested goods are the following:

Class 33: Wine; rum; gin; whisky; liqueurs; cachaca; sake; grappa; brandy; vodka; natural sparkling wines.

The contested wine; rum; gin; whisky; liqueurs; cachaca; sake; grappa; brandy; vodka; natural sparkling wines are included in the broad category of the opponent’s alcoholic drinks, with exception of beer. 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.

It is settled case-law that, firstly, the goods at issue, which are all alcoholic beverages, are for everyday consumption and are normally widely distributed, ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafes. Secondly, the consumer of alcohol is a member of the general public, who will demonstrate an average level of attention when purchasing such goods (19/01/2017, T-701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein).

c) The signs

FADO	FADO PORTUGUÊS
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 a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57).

The common element ‘FADO’ and the element ‘PORTUGUÊS’ of the contested sign are meaningful in certain territories, for example in those countries where Portuguese and Spanish are understood. Consequently, to take into account the semantic content of these elements in the conceptual assessment, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public, the Portuguese- and Spanish-speaking part of the public for whom the signs bear additional coincidences (i.e. conceptual) that might not arise from the perspective of the rest of the relevant public.

The common element ‘FADO’ will be perceived as a song and as it has no meaning in relation to the relevant goods, it is, therefore, distinctive.

The words ‘FADO PORTUGUÊS’ constitute a grammatical unit, in which ‘PORTUGUÊS’ is an adjective linked grammatically to ‘FADO’. As a whole, this expression means ‘Portuguese song’ and is of average distinctive character for the goods involved. However, it cannot be entirely dismissed that the second verbal element of the contested sign ‘PORTUGUÊS’ could be seen as evocative of the characteristics of goods involved (for example, suggesting that these are drinks made in/or coming from Portugal) and is therefore of lower than average distinctive character.

Consequently, the most distinctive element of the contested sign is the element ‘FADO’, which, due to its position, will attract the consumers’ attention, since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Therefore, the coincidence in the signs’ beginning ‘FADO’ must be particularly taken into account.

Visually and aurally (irrespective of the different pronunciation rules in Portuguese and Spanish), the signs coincide in ‘FADO’ which constitutes the only verbal element of the earlier mark. They merely differ in the second verbal element ‘PORTUGUÊS’ of the contested sign, which– for the reasons explained above – will have less impact on consumers than the common distinctive word ‘FADO’.

Therefore, the signs are visually and aurally similar to a very high degree.

Conceptually, reference is made to the previous assertions concerning the meaning of the signs. Consequently, the signs are at least similar to a high degree since the only differentiating element PORTUGUÊS will either be taken as weak or as a reference to the origin of the ‘FADO’.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 goods are identical and target the general public whose level of attention is average.

The signs are visually, aurally and conceptually similar to a very high degree. The distinctiveness of the earlier mark is normal.

Likelihood of confusion covers situations 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods/services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consumers could be led to believe that the owner of the earlier mark has launched a new line of products, for example, made in or coming from Portugal.

Considering all the above, there is a likelihood of confusion on the part of the Portuguese- and 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.

As the earlier right, European Union trade mark registration No 4 104 865 ‘FADO’ leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier Portuguese mark 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

Vanessa PAGE

María Clara IBAÑEZ FIORILLO

Sylvie ALBRECHT

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.