OPPOSITION No B 3 046 776

Volner SAS, Rue Gustave Eiffel, 77220 Tournan-en-Brie, France (opponent), represented by Pascal Goyard, 10 bis avenue de la Grande Armée, 75017 Paris, France (professional representative)

a g a i n s t

Guisheng Huang, No.290 Sihuang Section, Sihuangxia New Road, Lugang Town, Chaonan District, 515041 Shantou, Guangdong, China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center VERTAS Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 17/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 776 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 507 617 for the figurative mark , namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 3 880 382 for the word mark ‘CHARLES VOLNER’. 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.

1. The goods

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Fruit extracts, alcoholic; distilled beverages; cocktails; wine; spirits [beverages]; brandy; whisky; alcoholic beverages, except beer; Sparkling wines; vodka.

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.

The contested distilled beverages; cocktails; wine; spirits [beverages]; brandy; whisky; alcoholic beverages, except beer; sparkling wines; vodka are included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they are identical.

The contested fruit extracts, alcoholic are similar to a low degree to the opponent’s alcoholic beverages (except beer). They can be found in the same outlets, they can be produced by the same manufacturers and they target the same relevant public.

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 or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will be average.

3. The signs

CHARLES VOLNER
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 word mark, ‘CHARLES VOLNER’. ‘CHARLES’ is a well-known masculine name that will be understood by the relevant public, either because it exists as such in their languages (English and French) or because it is generally known throughout the European Union and there are many well-known people with this name, e.g. Prince Charles. The second word has no meaning but, as it follows the name ‘CHARLES’, it will be regarded as a surname by the majority of the relevant public. Therefore, it is reasonable to assume that ‘CHARLES VOLNER’ will be perceived as a first name and surname by the relevant public in the European Union, because of its structure. The English and French public may pay more attention to the family name, as ‘CHARLES’ is a common name, but the remaining part of the public, despite recognising the name, will not have this perception, as both parts of the sign are foreign names so neither of them will be more distinctive. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are depicted in upper or lower case characters, or in a combination thereof. For the same reasons, word marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark consisting of a figurative element and a verbal element. The verbal element is depicted in black in a stylised typeface that resembles handwriting, which has a decorative function, and because of that this word can be perceived in different ways by the relevant public. The vast majority of the public will see the verbal element as ‘Voler’, ‘Uoler’ or ‘Noler’, but it is just possible that some may perceive it as ‘lloler’ or ‘Moler’. For the French-speaking part of the public, the meaning of ‘voler’ is ‘to fly’ (information extracted from Collins Dictionary on 29/11/2018 at https://www.collinsdictionary.com/dictionary/french-english/voler), and also for some of the consumers in Italy, Portugal and Spain it may convey the same meaning inasmuch as in the languages of those countries the equivalent words are very close, namely ‘volare’, ‘voar’ and ‘volar’. However, for other parts of the public, for example in Bulgaria, Poland, Romania and the United Kingdom, the word is meaningless, however its first letter is read.

The figurative element of the contested sign presents a dynamic depiction of a very large bird of prey flapping its wings, which supports and enhances to some degree, the understanding of the word as ‘to fly’ for the part of the public mentioned above.

The elements of the contested sign do not describe any characteristic of the goods in question; therefore, they are distinctive.

The opponent argues that the word components of the signs should be regarded as having a stronger impact on consumers than the figurative elements. However, as follows from case-law, where a sign consists of both figurative and word elements, it does not automatically follow that the word element must always be considered dominant. In the case of a composite mark, the figurative element may rank equally with the word element (12/11/2015, T‑450/13, Wisent / Żubrówka Bison Brand Vodka, EU:T:2015:841, § 74 and the case-law cited therein). In the present case, the depiction of a bird of prey in flight in the contested sign, as a result of its size (larger than the verbal element), position (at the top of the sign) and dynamic depiction, is easily perceptible visually and clearly helps to establish the image of the contested mark that the relevant public will retain in mind. Consequently, neither of the elements of the contested sign can be considered clearly more dominant.

To focus on the best-case scenario for likelihood of confusion to arise, the Opposition Division will take into account the perception of the signs from the perspective of those consumers for whom the signs have more in common and fewer differences. In this case, the part of the public that perceives the contested sign as containing the meaningless word ‘Voler’ will find aural and visual commonalities between the marks and will not be influenced by the conceptual difference in the meaning of the word; that will not be possible from other perspectives. Therefore, the Opposition Division will proceed with the analysis and comparison of signs by taking into account this part of the relevant public.

Visually, the signs coincide in the letters ‘VOL*ER’, notwithstanding the stylised font used in the contested sign.

However, they differ in the first verbal element of the earlier mark, namely ‘CHARLES’, and in the impressive image of the raptor, depicted in detail at the top of the contested sign, and the letter ‘N’ in the middle of the word element of the contested sign. Although, in principle, verbal elements tend to have more impact than figurative components of a mark, this cannot be applied to all cases, as already noted above (12/11/2015, T‑450/13, Wisent / Żubrówka Bison Brand Vodka, EU:T:2015:841) and, in any event, it does not mean that the figurative elements should be all but ignored. In the present case, the figurative element of the contested mark is distinctive, rather original, memorable and visually very significant. Even though the verbal element is the one by which consumers will refer to the mark, they will not overlook or ignore the figurative element, especially as the figurative element has a major impact on the overall visual impression created by the mark.

Moreover, 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 and in the current the initial part of the earlier mark is completely different and has no counterpart in the contested sign.

Considering the above, the visual impression created by the contested sign has clearly perceptible differences from that created by the earlier mark and therefore the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘VOL*ER’, present identically in both signs. The pronunciation differs in the sound of the letters ‛CHARLES’ and ‘N’ of the earlier mark, which have no counterparts in the contested sign.

Therefore, the signs are aurally similar to a below average degree.

Conceptually, the earlier mark, ‘CHARLES VOLNER’, as explained above, will be regarded as a first name and a surname, that is, associated with a person, by the relevant public.

In the contested sign, there is no reason for the verbal element to be seen as a surname and it will be perceived as an entirely meaningless expression. Moreover, the impressive image of a bird of prey relates the contested sign foremost to the idea of a bird, of flight, because of the position of the wings, or even of predation, because of the nature of the bird.

Therefore, as the signs will be associated with different meanings, the signs are not conceptually similar.

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.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik,EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical or similar to a low degree, the distinctiveness of the earlier mark is normal and the degree of attention of the relevant public is average. For the relevant public, which is composed of the public at large and business customers with specific professional knowledge or expertise, the signs are visually similar to a low degree, aurally similar to a below average degree and conceptually not similar.

In the present case, it is considered that the differences between the signs are enough to counteract the similarities between them. The fact that they have some visual and aural features in common is insufficient to conclude that there is a likelihood of confusion between the marks, when seen as a whole, despite the identity between some of the goods at issue. The relevant public will perceive the contested sign as referring to a bird in flight, whereas the earlier mark will definitely be regarded as a first name and surname, and thus associated with a person. According to case-law, the conceptual differences can be such that they counteract the visual and aural similarities if at least one of the marks at issue has, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (14/10/2003, T‑292/01, Bass, EU: T:2003:264, § 54). In the present case, both marks evoke different clear and specific concepts, which will enable consumers to distinguish between them. Moreover, the first name in the earlier mark, the part that is first read and pronounced when perceiving the mark, and therefore of greater impact, is entirely different and has no counterpart in the contested sign. Even the English-speaking part of the public, for which the first name may be less distinctive than the surname, will be able to differentiate the signs, even for identical goods, as, considering the different structures, the differences still outweigh the similarities, as the word in the contested sign will not be perceived as a surname and the second word in the earlier mark, because of the mark’s structure, will be.

Considering all the above, it is concluded that the differences between the marks, in particular the conceptual difference, are sufficient to outweigh the similarity between them and, despite the identity between the majority of the goods, there is no likelihood of confusion between the marks on the part of the public.

Therefore the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Maria Slavova

Jakub MROZOWSKI

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.