OPPOSITION No B 3 045 690

Selección de Torres S.L., Rosario, 56, 47311, Fompedraza, Valladolid, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Casetta S.r.l., Piazza Alcide De Gasperi 45°, 35131, Padova, Italy (applicant), represented by Società Italiana Brevetti S.p.a., Stradone San Fermo, 21/B, 37121 Verona, Italy (professional representative).

On 15/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 045 690 is upheld for all the contested services, namely

Class 43: Serving food and drinks; hotel services; hotel services (accommodation).

2. European Union trade mark application No 17 490 616 is rejected for all the contested services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 490 616 for the word mark ‘MAGARI ESTATES’, namely against all the services in Class 43. The opposition is based on European Union trade mark registration No 15 686 397 for the word mark ‘BODEGA MAGARIN’. 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 services

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

Class 43: Wine bar services; wine bar services; rental of pavilions and meeting rooms; hiring of rooms for social functions; providing of conference rooms and exhibition facilities; catering; supply of beverages; catering; hotel services and the providing of food and drink.

The contested services are the following:

Class 43: Serving food and drinks; hotel services; hotel services (accommodation).

Serving food and drinks; hotel services; hotel services (accommodation) are identically contained in both lists of services (including synonyms).

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 services found to be identical are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

BODEGA MAGARIN	MAGARI ESTATES
Earlier trade mark	Contested sign

The relevant territory is 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 element ‘BODEGA’ is meaningful in certain parts of the territory, for example in those parts where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The element ‘BODEGA’ in the earlier mark will be perceived by the relevant public as ‘establishment, generally industrial, for the production of wines’ (https://dle.rae.es/?id=5jtPDms). Since the relevant services are wine bar and hotel services and services related to the provision of beverages and food, this element lacks distinctiveness for the relevant services since it refers to the place where these services are provided.

The elements ‘MAGARIN’, in the earlier mark, and ‘MAGARI’ and ‘ESTATES’, in the contested sign, have no meaning for the relevant public and are, therefore, distinctive for the services in question.

Visually and aurally, the signs coincide in the six letters/sounds ‘MAGARI’ which makes up the first element of the contested sign and the most distinctive element of the earlier mark. They differ in the last letter/sound of this element ‘N’ and also in the sounds/letters of the less distinctive element ‘BODEGA’ of the earlier mark, and ‘ESTATES’ placed at the end of the contested mark.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘BODEGA’ as explained above, this element is not sufficient to raise any relevant conceptual difference that will catch consumers’ attention given its non-distinctive character. The remaining elements of the marks are meaningless and therefore, 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 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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

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).

In the present case, the services are identical. They are directed at the public at large. The degree of attention is considered to be average. The signs are visually and aurally similar to an average degree on account of the coinciding letters ‘MAGARI’, which form nearly entirely the more distinctive element of the earlier mark and form the initial element of the contested sign. The difference in the additional and final letter ‘N’ in the earlier mark will easily go unnoticed by consumers, who 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)..

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 this case, 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).

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 15 686 397. It follows that the contested trade mark must be rejected for all the contested 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.

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

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

Martina GALLE

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.