OPPOSITION No B 3 056 858

Bodegas San Valero, Sociedad cooperativa, Carretera Nacional 330, Km. 450, 50400 Cariñena (Zaragoza), Spain (opponent), represented by Sonia del Valle Valiente, c/ Miguel Ángel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

1031023 B.C. Ltd., N406 – 5811 Cooney Road, V6X 3M1 Richmond, Canada (applicant), represented by Loesenbeck Specht Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative).

On 30/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 858 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 890 405 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 515 941 for the figurative mark . 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.

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: Wine.

The contested wine is included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they 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. Wines are alcoholic beverages, for everyday consumption and normally widely distributed, ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafes. The consumer of alcohol is a member of the general public, who will demonstrate an average level of attention when purchasing such goods (19/01/2017, T-701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 trade mark contains a figurative element in black and white resembling a rounded brushstroke starting and ending on the right side, where the stroke is thicker, with slight fragments along the rounded figure. For part of the relevant public, this device is meaningless while another part may perceive it as a quick and spontaneous brushstroke due to the imperfect form of the circle and the daub on its right side. In both cases, the element has an average degree of distinctiveness due to the absence of any link, whether direct or indirect, with the goods.

Above this figurative element are placed, along two lines, the word ‘ORIGIUM’ in capital letters and the figure ‘1944’ below in smaller size. The word ‘ORIGIUM’ does not exist in Spanish as such and, therefore, for the majority of the relevant public this element will be meaningless and will have a normal degree of distinctiveness in relation to the goods at issue. Even if, as mentioned by the opponent, ‘ORIGIUM’ is the Latin word for ‘origin’ and, due to the coincidence in the first letters with its equivalent in Spanish ‘origen’, a part of the relevant public might associate this term with ‘the point or place where something begins, arises or is derived’ (information extracted from the Oxford Dictionary on 26/07/2019 at https://www.lexico.com/en/definition/origin), this remote allusion does not affect distinctiveness in a material way and the element is, in any case, considered to have a normal degree of distinctive character.

The relevant public will interpret ‘1944’ as referring to the year that the undertaking started to commercialize the relevant products since this is a very common element on labels of all kind of beverages, especially for wines. This expression merely gives commercial information about the products and consequently has a low degree of distinctiveness.

The contested sign is a purely figurative mark consisting in a rounded device resembling a brushstroke in yellow with the top left section of the stroke in grey. This grey part contains two smaller strokes that point towards the centre. For part of the relevant public, this element is meaningless while another may perceive it as brushstrokes of two colours. In any case, the figurative element does not refer or relate to the goods in question and, therefore, it is distinctive.

In its observations, the opponent includes pictures of the actual use in the market of the earlier mark ,and the applicant also submits an attachment with the possible use of the trade mark applied for along with additional verbal elements. In this regard it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. In contrast to trade mark infringement situations — where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial — the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner.

For this reason, specific marketing strategies, as the labeling of the goods, are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58) and, therefore, the comparison must be made between the signs as they were registered or as they appear in the application for registration (09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, §38). Thus, the evidence submitted by the parties in this regard is irrelevant when assessing the likelihood of confusion.

Contrary to the opponent’s observations, the figurative element of the earlier mark is not the main element. Due to its size, position and visibility in the earlier mark, the verbal element ‘ORIGIUM’ is co-dominant with the figurative element, in comparison with the figure ‘1944’ which is written in a notably smaller size in the middle of those elements. As stated above, the actual or intended use of the signs is not relevant for the examination and, therefore, the fact that the opponent’s mark is used in different proportions than as applied for is irrelevant.

Furthermore, 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). Therefore, the fact that the earlier mark contains a verbal element is relevant for the present comparison.

Visually, the signs coincide to the extent that both contain a rounded brushstroke. However, as described above, the representation of the devices differs significantly: apart from the yellow and grey colours, the contested sign gives the impression of a more accurate and precise stroke without the fragments along the rounded device of the earlier mark. The grey part on the top left with two additional smaller inward strokes of the contested sign adds more visual differences between the signs. Additionally, the distinctive element ‘ORIGIUM’ serves as an additional differentiating factor, whereas the impact of the differing element ‘1944’ is reduced due to its smaller size and its low degree of distinctiveness. Based on all the foregoing, the signs must be considered to be similar to a very low degree.

Aurally, the contested sign is purely figurative and, as such, it is not subject to a phonetic assessment. Therefore, no aural comparison is possible.

Conceptually, the earlier mark will be, at least, associated with the concept evoked by its verbal elements, being the element ‘1944’ of low distinctiveness and, therefore, with a limited impact on the assessment. Reference is made to the previous assertions concerning the semantic content conveyed by the marks. In case the respective devices of both signs are meaningless, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

If the figurative elements in both signs are perceived as brushstrokes, the signs are conceptually similar to a very low degree due to the difference in the verbal elements of the earlier mark.

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, despite the presence an element of a low distinctive character in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods at issue are identical and the relevant public has an average degree of attention. However, the signs only show a very low degree of visual similarity, with the aural and conceptual aspects playing very limited or no role in the assessment. The overall figurative layout of the signs is different, and the possible concept evoked of a brushstroke, because of the imperfect circular stroke in both marks, is not sufficient and it is, therefore, incapable of counteracting the significant differences.

It is also to be noted that the co-dominant and distinctive verbal element ‘ORIGIUM’ of the earlier mark has a stronger impact on the consumer than the figurative component. In this sense, 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 the present case, it may be appropriate to attach particular importance to the presence of the verbal element ‘ORIGIUM’ in the earlier mark.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Eva Inés PÉREZ SANTONJA

Cristina SENERIO LLOVET

Helen Louise MOSBACK

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.