OPPOSITION No B 3 049 064

Pagos del Rey, S.L., Autovia de Andalucia, Km. 199, Valdepeñas (Ciudad Real), Spain (opponent), represented by José María Sánchez Wolff, Avda/ Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

Tenuta Gorghi Tondi S.a.s. di Annamaria e Clara Agata Sala - Società Agricola (o in forma abbreviata T.G.T. o T.G.T. S.a.s.), Via Sanità, 29/B, 91025 Marsala (TP), Italy (applicant), represented by Società Italiana Brevetti S.P.A, Piazza di Pietra, 39, 00186 Roma, Italy (professional representative).

On 25/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 064 is upheld for all the contested goods.

2. European Union trade mark application No 17 593 609 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 17 593 609 for the word mark DUME'. The opposition is based on European Union trade mark registration No 15 117 997 for the word mark BLUME and the Spanish trade mark registration No 2 494 644 for the word mark “BLUME”. 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 European Union trade mark registration No 15 117 997.

a) The goods

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

Class 33: Wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beers); wine; sparkling wines; sparkling wines; distilled beverages, namely marsala wine, grappa (brandies).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Wine is identically contained in both lists of goods.

The contested sparkling wines; sparkling wines; distilled beverages, namely Marsala wine are included in the broad category of the opponent’s wine. Therefore, they are identical.

The contested alcoholic beverages (except beers) include, as a broader category, the opponent’s wine. 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 distilled beverages, namely grappa (brandies) are similar to the opponent’s wine as they have the same nature. They usually coincide in relevant public, distribution channels and method of use. Furthermore, they are in competition.

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 or similar are directed at the public at large.

It is settled case-law that, firstly, the goods at issue, which are 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 and that, secondly, the consumer of alcohol is a member of the general public, who will demonstrate an average level of attention when purchasing such goods (see, to that effect, 19/01/2017, T-701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein).

c) The signs

BLUME	DUME'
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 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 earlier mark BLUME and the contested sign DUME’ are not meaningful in certain languages of the relevant territory, for example for the Spanish-speaking part of the public. The Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public for which the aural similarity of the signs is higher, as explained below, since this is the scenario in which the signs show more similarities and is thus where a likelihood of confusion would be most likely to arise.

Since the signs have no meaning for the relevant public they are distinctive.

The applicant refers to the presence of an accent at the end of the contested sign. However, that mark is not placed on the top of the ‘E’ but right after the letter and therefore it will be perceived as an apostrophe.

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.

Visually and aurally, the signs coincide in the letters ‘*UME’ and their corresponding sounds. The signs only differ in the letters/sounds placed at the beginning of the signs, namely ‘BL’ of the earlier right and ‘D’ of the contested sign. Visually the signs also differ in the apostrophe at the end of the contested sign although with a limited impact for the relevant public.

The average consumer normally perceives a sign as a whole and does not proceed to analyse its various details. Therefore, small differences in the (number of) letters are often not sufficient to exclude a finding of visual similarity, particularly when the signs have a common structure. Indeed, the signs have very similar lengths (i.e. the earlier right consists of five letters and the contested sign consists of four letters and an apostrophe).

The applicant claims that the signs are rather short and it is held that the fact that they differ in two letters, placed at the beginning of the signs, is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. However, each case must be judged on its own merits, having regard to all the relevant factors. In the present case, the signs coincide in most of their letters (i.e. three letters) placed in the same order. Furthermore, the pronunciation of the first syllables, ‘BRU’ and ‘DU’, is similar for the relevant public and they have the same rhythm and intonation.

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

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 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).

In the present case, the goods are partly identical and partly similar. They target the public at large with an average degree of attention. The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and aurally similar to a high degree. A conceptual comparison is not possible. Indeed, the sings have almost identical lengths and coincide in most of their letters placed in the same order. Although the signs mainly differ in their first letters, the syllables ‘BLU’ and ‘DU’ are aurally similar for the relevant public.

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.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings.

In the decision dated 27/03/2018 in opposition proceedings B 2 840 752 in the conflict between the earlier mark ‘BROMET’ and the contested application , the Opposition Division found that the pronunciation of the two consonants ‘BR’ in the earlier mark sounds quite strong and is completely different from the sound ‘N’ in the contested sign. Furthermore, the contested sign has a figurative element and therefore, because of its size, position and stylisation, it will not be overlooked by consumers, but will play a specific role in differentiating the contested sign.

In the judgement dated 20/09/2018 in case T-668/17, in the conflict between the earlier mark ‘MAICO’ and the contested application ‘EICO’, the Court found that the visual differences, albeit slight, were nevertheless sufficient for the signs at issue to convey different overall visual impressions. Furthermore, the Court found that the presence of the letter ‘M’ at the beginning of the earlier mark ‘MAICO’, which is immediately followed by the letter ‘A’, creates the first syllable ‘MAI’, which differs from the first syllable of the mark applied for ‘EICO’ and that the signs were therefore phonetically different.

However, the circumstances in the cases referred to by the applicant do not concur in the present case because, as explained above, the first syllables ‘BRU’ in the earlier mark and ‘DU’ in the contested sign are aurally similar for the relevant public and there are no figurative elements.

Considering all the above and in particular the highly aural similarity of the signs, 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 15 117 997. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European trade mark registration No 15 117 997 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right 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

Marta GARCÍA COLLADO

Matthias KLOPFER

Begoña URIARTE VALIENTE

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.