OPPOSITION No B 3 054 341

Oenoforos AB, P.O. Box 24005, 104 50 Stockholm, Sweden (opponent), represented by Brann AB, Drottninggatan 27, 111 51 Stockholm, Sweden (professional representative)

a g a i n s t

Maxifood Handels und Vertriebs GmbH, An der Talle 22, 33102 Paderborn, Germany (applicant).

On 11/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 341 is upheld for all the contested goods.

2. European Union trade mark application No 17 874 811 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 17 874 811 , namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 14 448 071, CASTELMARE. 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 goods

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

Class 33: Alcoholic beverages (except beer); Wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic beverages; Cider; Pre-mixed alcoholic beverages; Spirits and liquors; Wine; Alcoholic jellies; Alcoholic carbonated beverages, except beer; Aperitifs; Baijiu [Chinese distilled alcoholic beverage]; Perry; Cocktails; Low alcoholic drinks; Bitters; Hydromel [mead]; Nira [sugarcane-based alcoholic beverage]; Rice alcohol; Fruit extracts, alcoholic; Alcoholic essences; Alcoholic extracts; Wine-based drinks; Beverages containing wine [spritzers]; Low-alcoholic wine; Alcoholic wines; Acanthopanax wine (Ogapiju); Wine-based aperitifs; Prepared wine cocktails; Japanese sweet grape wine containing extracts of ginseng and cinchona bark; Black raspberry wine (Bokbunjaju); Cooking wine; Cooking brandy; Fortified wines; Wines of protected geographical indication; Wines of protected appellation of origin; Wine punch.

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 33

Alcoholic beverages (except beer); wine are identically contained in both lists of goods.

The contested cider; pre-mixed alcoholic beverages; spirits and liquors; alcoholic carbonated beverages, except beer; aperitifs; baijiu [chinese distilled alcoholic beverage]; perry; cocktails; low alcoholic drinks; bitters; hydromel [mead]; nira [sugarcane-based alcoholic beverage]; rice alcohol; wine-based aperitifs; wine-based drinks; beverages containing wine [spritzers]; prepared wine cocktails; wine punch;cooking brandy are included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they are identical.

The contested low-alcoholic wine; alcoholic wines; acanthopanax wine (ogapiju); japanese sweet grape wine containing extracts of ginseng and cinchona bark; black raspberry wine (bokbunjaju); cooking wine; fortified wines; wines of protected geographical indication; wines of protected appellation of origin; are included in the broad category of the opponent’s wine. Therefore, they are identical.

The contested alcoholic jellies are made of a mixture of jelly and alcoholic beverages such as vodka or rum and are similar to the opponent´s alcoholic beverages (except beer) as they target the same relevant public and can have the same producers and distribution channels.

The contested preparations for making alcoholic beverages; fruit extracts, alcoholic; alcoholic extracts; alcoholic essences are lowly similar to the opponent´s alcoholic beverages (except beer). They have the same distribution channels and target the same public. Furthermore, they can originate from the same undertakings.

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.

The degree of attention is average, as wines and alcoholic beverages are everyday consumer goods, which are usually subject to widespread distribution, ranging from the food section of supermarkets, department stores and other retail sales outlets, to restaurants and cafes (24/11/2016, T-250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 25 and the case- law cited).

c) The signs

CASTELMARE
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 common element ‘CASTEL’ of both marks means ‘castle’ in Rumanian. Furthermore it is similar to the Italian word ‘castello’ and the Catalan word ‘castell’ which also mean ‘castle’. The element ‘MARE’ of the earlier sign means ‘sea’ in Italian and Romanian and can also be associated by the Spanish-speaking part of the public with the word ‘mar’ which also means ‘sea’. The element ‘MARCO’ of the contested sign might be perceived as a male given name.

In certain languages, such as Polish all verbal elements of both marks are meaningless and therefore distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the relevant public.

The earlier sign is a word mark and as such, it has no elements that could be considered more dominant (visually eye-catching) than other elements.

As regards the contested sign, it is composed of a distinctive verbal element and a less distinctive figurative element resembling a coat of arms. Such coats of arms/crown devices are common embellishments on wine and beverages labels and are seen as indications that the products are traditional products of high quality.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their beginnings, namely in the letters ‘CASTELMAR’. However, they differ in their endings, ‘E’ for the earlier and ‘CO’ for the contested sign respectively. They also differ in the figurative element of the contested mark, which is of limited distinctiveness, and which has no counterpart in the earlier word mark. ‘

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).

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.

Therefore, the signs are visually similar to a higher than average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛CA‑STEL-MAR’, present identically in the beginning of the verbal elements both signs. The pronunciation differs in the sound of the letter ‛E’ of the earlier sign, which has no counterpart in the contested mark and in the letters ‘CO’ of the contested mark which have no counterpart in the earlier. The purely figurative element of the contested sign is not subject to a phonetic assessment.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the verbal elements in the signs has a meaning for the public in the relevant territory. The figurative element in the contested mark will evoke the concept of a coat of arms. Since one of the signs will not be associated with any meaning, 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison '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, Sabel, EU:C:1997:528, § 23).

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 22).

In the present case, the goods have been found partly identical and partly similar to different degrees. The marks are visually similar to a higher than average degree, aurally highly similar and conceptually not similar.

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). In this case the level of aural similarity is high.

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 differences between the signs are not sufficient to prevent a likelihood of confusion, since it must be recalled that the consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (12/03/2014, T-592/10, BTS, EU:T:2014:117, § 46).

Considering all the above, there is a likelihood of confusion on the part of the Polish-speaking parts 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 14 448 071. It follows that the contested trade mark must be rejected for all the contested 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.

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, 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

Denitza STOYANOVA- VALCHANOVA

Aliki SPANDAGOU

Martin EBERL

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.