OPPOSITION No B 3 060 220

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

Be Brown London, s.r.o., Malohontská 2594, 979 01 Rimavská Sobota, Slovakia (applicant).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 220 is upheld for all the contested goods.

2. European Union trade mark application No 17 889 621 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 17 889 621 for the figurative mark . 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.

1. 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 33: Alcoholic beverages (except beer).

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

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 average.

3. 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 the word mark ‘MANNA’ in upper-case letters. It cannot be excluded that for part of the relevant public this word refers to the food miraculously produced for the Israelites in the desert in the book of Exodus. For others, it will be perceived as a family name. Since its meaning is not directly related to the relevant goods in a clear way that could impair its distinctiveness, it has a normal degree of distinctiveness. The contested sign is a figurative mark composed of the verbal element, ‘MANA’, written in standard upper-case letters. It is meaningless for the relevant public and it is distinctive to a normal degree.

Visually, the signs coincide in four out of five letters. The first three letters are placed in the same order in both signs and the last letter ‘A’ is also identical. The only difference is the additional letter ‘N’ placed in the middle of the earlier mark, which could be easily overlooked by consumers, as they tend to pay much less attention to letters that appear in the middle of signs. Therefore, the signs are visually similar to a high degree.

Aurally, the signs ‘MAN-NA’ and ‘MA-NA’ are similarly pronounced as two syllables. They differ in the pronunciation of the additional ‘N’ of the earlier mark. Therefore, the signs are aurally similar to at least an average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the earlier mark as explained above, the contested sign has no meaning in that territory. 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.

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 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.

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 identical and target the general public who will display an average degree of attention. The earlier mark has a normal degree of distinctiveness. The signs are visually highly similar and aurally at least similar to an average degree insofar as the contested sign reproduces the earlier mark, except for the additional letter/sound ‘N’ in the middle of the earlier mark. This difference has a marginal impact on the global impression created by the signs. The signs are conceptually not similar for the public that will associate the earlier mark with one of the meanings explained above in section c) of this decision. However, considering the visual and aural similarities, the concept in one of the signs will not be sufficient to rule out likelihood of confusion.

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.

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 1 440 489. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right ‘MANNA’ 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 rights 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

José Antonio GARRIDO OTAOLA

Valeria ANCHINI

Edith Elisabeth VAN DEN EEDE

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.