OPPOSITION No B 3 067 917

Roberto Marton, Via Lusore 18/F, INT 7, 30034 Mira, Italy (opponent), represented by Matteo Scaglietti, Via Paolo Ferrari No. 33, 41121 Modena, Italy (professional representative)

a g a i n s t

Daniel Soumikh, Papenreye 18, 22453 Hamburg, Germany (applicant).

On 28/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 917 is upheld for all the contested goods.

2. European Union trade mark application No 17 865 616 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 17 865 616 for the figurative mark . The opposition is based on Italian trade mark registration No 1 644 525 for the word mark ‘TONKA’. The opponent invoked Article 8(1)(a) and (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 (excepted beer).

The contested goods are the following:

Class 33: Spirits [beverages].

The contested spirits [beverages] are included in the broad category of the opponent’s alcoholic beverages (excepted beer). Therefore, these goods are identical.

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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

TONKA
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 common verbal element ‘TONKA’ is meaningless for the relevant public and is, therefore, distinctive. The verbal element ‘Gin’ of the contested sign is understood as a strong alcoholic drink. It is descriptive of the nature of the goods and is therefore non-distinctive, while the figurative element depicting a tree has no relation to the relevant goods and is therefore distinctive.

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; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

In the contested sign the verbal element ‘TONKA’ and the figurative element are considered more dominant than the other verbal element ‘Gin’.

Visually, the signs coincide in the distinctive verbal element ‘TONKA’. However, they differ in the non-distinctive and visually secondary verbal element ‘Gin’ and in the figurative element depicting a tree. These differing elements do not have counterparts in the earlier mark. However, they have less impact in the perception of the contested sign for the reasons explained above.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TONKA’, present identically in both signs. The pronunciation differs in the sound of the non-distinctive and visually secondary verbal element ‛Gin’ of the contested sign, when pronounced.

Therefore, the signs are aurally similar to a high degree when the element ‘Gin’ is pronounced and identical when it is not.

Conceptually, the verbal element ‘Gin’ and the depiction of a tree in the contested sign evoke a concept. Therefore, the signs are not conceptually similar. However, these elements have a limited impact on the consumers, as explained above, and they do not create a strong conceptual difference between the signs. The attention of the relevant public is attracted by the additional fanciful verbal element ‘TONKA’, which is meaningless.

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

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.

The goods are identical. They target the public at large with an average degree of attention.

The signs are visually similar to an average degree and aurally similar to a high degree when the element ‘Gin’ is pronounced and identical when it is not. In particular, the earlier mark ‘TONKA’ is totally included in the contested sign and coincides with its most distinctive verbal element, which is depicted in an easily perceptible manner and located in a central position. The only differences between the signs relate to the non-distinctive and visually secondary element ‘Gin’ and the figurative element depicting a tree, both in the contested sign. As already explained in section c), these elements will have less impact on the relevant public compared to the verbal element ‘TONKA’. Therefore, they are not capable of creating a sufficiently striking difference to safely exclude the likelihood of confusion between the signs.

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).

Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 644 525 for the word mark ‘TONKA’. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Irena LYUDMILOVA LECHEVA

Birgit FILTENBORG

Michele M. BENEDETTI - ALOISI

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.