OPPOSITION No B 3 047 277

Franz Haas S.R.L., Via Villa, 6, 39040 Montagna (Bolzano), Italy (opponent), represented by Jacobacci & Partners S.P.A., Piazza Mario Saggin, 2, 35131 Padova, Italy (professional representative)

a g a i n s t

Pelagia Theochari and Vasilis Pantazopoulos, Vesalius Strasse 32, 13187 Berlin,

Germany (applicant), represented by Argyro Αpostolaki, Kratinou 11-13, 10552 Athens, Greece (professional representative).

On 29/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 277 is partially upheld, namely for the following contested goods:

Class 33: Wine.

2. European Union trade mark application No 17 526 906 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 526 906 for the figurative mark , namely against all the goods in Classes 29, 30 and 33. The opposition is based on, inter alia, Italian trade mark registration No 1 440 489 for the word mark ‘MANNA’. 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 Italian trade mark registration No 1 440 489 for the word mark ‘MANNA’.

a) The goods

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

Class 33: Alcoholic beverages (except beer).

The contested goods are the following:

Class 29: Olives, [prepared]; olives, preserved; stuffed olives; dried olives; oils and fats; olive oil.

Class 30: Dried herbs; tea; tea-based beverages.

Class 33: Wine.

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 29

The contested goods comprise processed olives, edible oils and fats. Although the opponent’s alcoholic beverages (except beer) and the contested goods are all foodstuff in a broad sense, they have different natures, purposes and methods of use. They are not in competition. Even if olives are consumed together with wine in some countries, as claimed by the opponent, this does not make them complementary in the sense that the one is indispensable for the use of the other. Therefore, they are dissimilar.

Contested goods in Class 30

The contested goods comprise dried herbs. Although the opponent’s alcoholic beverages (except beer) and these contested goods are all foodstuffs in a broad sense, they have different natures, purposes and methods of use. They are neither in competition nor complementary in the sense that one is indispensable for the use of the other. Therefore, they are dissimilar.

As regards the contested tea and tea-based beverages and the opponent’s alcoholic beverages (except beer), even if they are all foods and beverages in a broad sense, these goods differ in their specific nature (alcoholic v non-alcoholic beverages), methods of production and intended use. They have different producers and usually different points of sale and are neither in competition nor complementary in the sense that the one is indispensable for the use of the other. Therefore, they are dissimilar.

Contested goods in Class 33

The contested wine is included in the broad category of the opponent’s alcoholic beverages (except 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.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention is average.

c) The signs

MANNA
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 composed of one element, ‘MANNA’. As a word mark, it has no elements that could be considered dominant.

The element ‘MANNA’ will be understood by the relevant Italian-speaking public as a substance miraculously sent by God as food to the Israelites in the desert or as an Italian surname. Since these meanings are not directly related to the relevant goods, this element has a normal degree of distinctiveness. Contrary to the applicant’s assertion, surnames are not per se devoid of distinctive character.

The contested sign is a figurative mark composed of a figurative element, depicted as a woman’s face in the centre of a circular, elaborate decoration of fruits, cereals and flowers, the verbal element ‘MANA’ written underneath in standard black upper-case letters and a significantly smaller verbal element ‘organic natural treasures’. The visual impact of the latter is very limited in comparison with the co-dominant verbal element ‘MANA’ and the figurative element.

The verbal element ‘MANA’ has no meaning for the relevant Italian-speaking public and, therefore, has a normal degree of distinctiveness.

Part of the relevant Italian-speaking public may understand the English meaning of the expression ‘organic natural treasures’, either due to the knowledge of English or to the proximity of the Italian equivalent words ‘tesori naturali organici’. This element is therefore non-distinctive in relation to the relevant products in Class 33, as it merely conveys a laudatory message describing their positive and appealing characteristics. It will be perceived as meaningless and, therefore, distinctive by the remaining part of the relevant public. This element is so small in comparison with the contested sign’s other elements that whether or not it will be perceived as distinctive has little bearing on the comparison.

The figurative element of the depiction of a woman’s face has no relation to the relevant goods; it is, therefore, distinctive to an average degree.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in that all the letters of the distinctive and dominant verbal element of the contested sign, ‘MAN*A’, are fully included in the earlier mark. The signs differ in the additional letter ‘N’ in the middle of the earlier mark, where the differences are not so noticeable, and in the remaining elements of the contested sign, namely the depiction of a woman’s face and the very small inscription ‘organic natural treasures’. These elements of the contested sign have a limited impact on its perception, for the reasons mentioned above.

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

Aurally, since it has been confirmed by case-law that consumers generally only refer to the dominant verbal elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and that they tend to shorten marks containing several words, the contested sign will aurally be referred to by only the verbal element ‘MANA’, pronounced as two syllables ‘MA-NA’.

The earlier mark will also be pronounced as two syllables, ‘MAN-NA’. The signs differ only in the sound of the repeated letter ‘N’ of the earlier mark.

Therefore, they are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the meanings of the earlier mark as explained above and part of this public may also understand the non-distinctive meaning of the English expression ‘organic natural treasures’ in the contested sign. Therefore, 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.

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

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.

The contested goods are partly identical and partly dissimilar to the opponent’s goods. The signs are visually similar to a below-average degree, aurally highly similar and conceptually not similar. The degree of attention of the relevant public is average. The distinctive character of the earlier mark is normal, which affords it a normal scope of protection under Article 8(1)(b) EUTMR.

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). Taking into account the identity of goods, this principle is clearly applicable in the present case.

Account must be 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).

Moreover, it should be borne in mind that the relevant goods are beverages and, since these 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 and the Opposition Division is of the opinion that the lack of conceptual similarity between the signs does not preclude likelihood of confusion in the present case.

The applicant claims that the likelihood of confusion between the signs at issue is virtually impossible because the products in question are sold through completely different distribution channels, at different points of sale and to different publics. The applicant’s goods of Greek origin are sold in Germany, whereas the opponent is active mainly in Italy.

However, likelihood of confusion and specifically the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Therefore, this argument of the applicant must be set aside.

In its observations, the applicant also argues that the elements ‘MANNA’ and ‘MANA’ have a low distinctive character given that many trade marks include these elements. In support of its argument the applicant refers to 1881 trade mark applications filed worldwide containing the word ‘MANA’ and 990 containing the word ‘MANNA’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the elements ‘MANA’ or ‘MANNA’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration No 1 440 489 for the word mark ‘MANNA’.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on the earlier international trade mark No 1 380 766 designating European Union for the word mark ‘MANNA’, covering alcoholic beverages (except beers); wines and sparkling wines; grappa in Class 33.

Regardless of the issue of the current status of this earlier right and its registration, since this mark is identical to the one that has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna BAKALARZ

Anna ZIOŁKOWSKA

Martin INGESSON

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.