OPPOSITION No B 3 047 620

Vintes Wines, S.L., Carretera Pontón-Utiel, km 3.Derramador - Requena, 46390 Valencia, Spain (opponent), represented by Protectia Patentes Y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative)

a g a i n s t

Académie Internationale des Vins en Alsace, ZAC du Martelberg - 15 rue des Rustauds, 67700 Monswiller, France (applicant), represented by Michel Mall, 39, rue du Maréchal Foch, 67000 Strasbourg, France (professional representative).

On 14/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 620 is partially upheld, namely for the following contested goods and services:

Class 33: Wine-based drinks; Sparkling wines; Wine; Rice alcohol; Alcoholic beverages (except beer); Distilled beverages; Cider; Cocktails; Digesters [liqueurs and spirits]; Brandy; Spirits [beverages]; Yellow rice wine; Sparkling wines.

Class 35: Retailing or wholesaling and presentation on communications media of all kinds, for retail purposes, of wine, alcoholic beverages.

Class 43: Bar services; Catering; Wine tasting services (provision of beverages); Serving food and drinks.

2. European Union trade mark application No 17 489 014 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 489 014 ‘AIVA’, namely all the goods and services in Classes 21, 33, 35 and 43. The opposition is based on Spanish trade mark registration No 3 016 602 ‘AVIVA’ and international trade mark registration No 1 160 421 ‘AVIVA’ designating Benelux, Estonia, Finland, Latvia and Lithuania. 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 international trade mark registration No 1 160 421 ‘AVIVA’ designating inter alia Estonia and Finland, which was not subject to proof of use.

a) The goods and services

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

Class 33: Wines and sparkling wines.

The contested goods and services are the following:

Class 21: Coolers for wine; Wine coasters of precious metal, glass, wood or plastic; Wine jugs; Wine buckets; Pipettes [wine-tasters]; Wine glasses; Wine pourers; Corkscrews, electric and non-electric.

Class 33: Wine-based drinks; Sparkling wines; Wine; Rice alcohol; Alcoholic beverages (except beer); Distilled beverages; Cider; Cocktails; Digesters [liqueurs and spirits]; Brandy; Spirits [beverages]; Yellow rice wine; Sparkling wines.

Class 35: Advertising; Business administration consultancy; Business management and organization consultancy; Marketing advice; Consultancy services regarding business strategies; Planning of marketing strategies; Direct mail advertising; Presentation of goods on communication media, for retail purposes; Business management and organization consultancy; Organization of exhibitions for commercial or advertising purposes; On-line advertising on a computer network; Rental of advertising time on communication media; Publication of publicity texts; Dissemination of advertising matter; Company auditing (business analysis); Commercial information services relating to wine; Administration of the business affairs of franchises; Provision of assistance (business) in the establishment of franchises; Collection of commercial information; Computerised file management; Compilation of information into computer databases; Newspaper subscription services for others; Assistance in management of business activities; Import-export agency services; Retailing or wholesaling and presentation on communications media of all kinds, for retail purposes, of books, newspapers, catalogues, magazines, periodicals, guide books, instructional and teaching materials and printed lessons; Printed matter, teaching manuals, wine, alcoholic beverages, wine coolers, pipettes (wine tasters), wine glasses and corkscrews.

Class 43: Bar services; Catering; Wine tasting services (provision of beverages); Serving food and drinks; Accommodation bureaux [hotels, boarding houses]; Hotel services.

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 21

The contested coolers for wine; wine coasters of precious metal, glass, wood or plastic; wine jugs; wine buckets; pipettes [wine-tasters]; wine glasses; wine pourers; corkscrews, electric and non-electric are dissimilar to the opponent’s wines and sparkling wines. Even though they are to some extent complementary, this is not enough for finding similarity. They do not have the same nature, purpose or method of use. Neither do they have the same usual origin or distribution channels (12/06/2007, T-105/05, Waterford Stellenbosch, EU:T:2007:170, § 34; confirmed 07/05/2009, C-398/07 P, Waterford Stellenbosch, EU:C:2009:288, § 45).

Contested goods in Class 33

Wine/s; sparkling wines (listed twice) are identically contained in both lists of goods.

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wines. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested yellow rice wine is included in the broad category of the opponent’s wines. Therefore, they are identical.

The contested wine-based drinks are highly similar to the opponent’s wines. They have the same nature and methods of use, producers, distribution channels and relevant public. Moreover, they are in competition.

The contested rice alcohol; distilled beverages; cider; cocktails; digesters [liqueurs and spirits]; brandy; spirits [beverages] are similar to the opponent’s wines. They have the same nature and methods of use, distribution channels and relevant public. Moreover, they are in competition.

Contested services in Class 35

The contested services advertising; business administration consultancy; business management and organization consultancy; marketing advice; consultancy services regarding business strategies; planning of marketing strategies; direct mail advertising; presentation of goods on communication media, for retail purposes; business management and organization consultancy; organization of exhibitions for commercial or advertising purposes; on-line advertising on a computer network; rental of advertising time on communication media; publication of publicity texts; dissemination of advertising matter; company auditing (business analysis); commercial information services relating to wine; administration of the business affairs of franchises; provision of assistance (business) in the establishment of franchises; collection of commercial information; computerised file management; compilation of information into computer databases; newspaper subscription services for others; assistance in management of business activities do, even if the subject of, for example, the advertising, marketing, exhibitions or publications are wines and wine knowledge, not have any relevant points in common with the opponent’s goods.

The contested advertising services, for example, consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In doing so, many different means and products might be used. These services are provided by specialised companies that research their client’s needs, provide all the necessary information and advice for the marketing of their goods and services, and create a personalised strategy for advertising their goods and services through newspapers, websites, videos, the internet, etc.

The contested services listed above also cover, inter alia, different business management and business administration services. Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. Business administration services comprise services intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation. They consist of organising people and resources efficiently so as to direct activities toward common goals and objectives.

Therefore, these above listed contested services in Class 35 are not sufficiently related to the opponent’s wines and sparkling wines. Services are fundamentally different in nature and purpose from the manufacture of goods. In addition, the abovementioned contested services in Class 35 and the opponent’s goods will not have the same producers/providers and they are not complementary or in competition. The fact that the opponent’s goods may appear in for example advertisements is insufficient for finding similarity. Therefore, these goods and services are dissimilar.

The contested import-export agency services are also dissimilar to the opponent’s wines and sparkling wines. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they are preparatory or ancillary to the commercialisation of such goods. For these reasons, the opponent’s goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question might be the same is not a relevant factor for finding a similarity.

The remaining services in this Class are retailing or wholesaling and presentation on communications media of all kinds, for retail purposes, of books, newspapers, catalogues, magazines, periodicals, guide books, instructional and teaching materials and printed lessons; printed matter, teaching manuals, wine, alcoholic beverages, wine coolers, pipettes (wine tasters), wine glasses and corkscrews. Considering all these goods are in Class 35, the Opposition Division considers all the goods listed being goods for retail purposes, in spite of a semicolon in the list, which was obviously placed there by mistake.

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. 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 retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested retailing or wholesaling and presentation on communications media of all kinds, for retail purposes, of wine, alcoholic beverages (which include wines) are similar to a low degree to the opponent’s wines.

However, the contested retailing or wholesaling and presentation on communications media of all kinds, for retail purposes, of books, newspapers, catalogues, magazines, periodicals, guide books, instructional and teaching materials and printed lessons; printed matter, teaching manuals, wine coolers, pipettes (wine tasters), wine glasses and corkscrews are dissimilar to the opponent’s goods. They do not have the same nature, purpose or method of use, neither the same producers/providers nor distribution channels. Moreover, they are not complementary or in competition.

Contested services in Class 43

The contested bar services; catering; wine tasting services (provision of beverages); serving food and drinks are similar to a low degree to the opponent’s wines and sparkling wines. There is a clear degree of complementarity between these services and the opponent’s goods, because these drinks do not undergo a manual transformation process in order to be consumed but are rather just served in order for the consumer to drink them. Moreover, they have the same distribution channels and their producers can be identical.

The contested accommodation bureaux [hotels, boarding houses]; hotel services are dissimilar to the opponent’s wines and sparkling wines because they have no relevant points in common. They have a different nature, purpose and method of use. They are neither complementary nor in competition. They do not share the same distribution channels and are provided by different 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.

In the present case, the goods and services found to be identical or similar to various degrees are directed at the public at large and, regarding the services in Class 35, at the public at large or at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

AVIVA	AIVA
Earlier trade mark	Contested sign

The relevant territories are Estonia and Finland.

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).

None of the marks are meaningful in the relevant territories. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Finnish- and Estonian-speaking publics.

Both marks are word marks, ‘AVIVA’ and ‘AIVA’. None of these marks have a meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the letters ‘A*IVA’, constituting four out of five letters of the earlier mark and the entire contested sign. However, they differ in the second letter ‘V’ of the earlier sign.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in Finland and in Estonia, the pronunciation of the signs coincides in the sound of the letters ‛A*IVA’, present identically in both signs. The pronunciation differs in the sound of the single and second letter ‘V’ of the earlier mark, which has no counterpart in contested sign.

Therefore, the signs are aurally highly similar.

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.

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

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.

e) Global assessment, other arguments and conclusion

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).

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, the goods and services are partly identical, partly similar to various degrees and partly dissimilar. The marks are visually and aurally similar to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark enjoys a normal degree of distinctiveness and the relevant public are both the public at large and specialists with a degree of attention that varies from average to higher than average.

Account is 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Finnish- and the Estonian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 160 421 ‘AVIVA’ designating inter alia Estonia and Finland. 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, even to a low degree, to those of the earlier trade mark. The low similarity of these services outweighs of the considerable similarity of the signs.

The rest of the contested goods and 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 goods and services cannot be successful.

The opponent has also based its opposition on Spanish trade mark registration No 3 016 602 for the word mark ‘AVIVA’ and on the international trade mark registration No 1 160 421 ‘AVIVA’ designating Benelux, Latvia and Lithuania.

Since these marks are identical to the one which has been compared and cover the same scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and 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

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

Angela DI BLASIO

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.