OPPOSITION No B 3 059 403

Miguel Torres S.A., Miquel Torres i Carbó, 6, 08720 Vilafranca del Penedès (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Iconic Wines AB, Blasieholmsgatan 4A 111 48, Stockholm, Sweden (applicant), represented by Noréns Patentbyrå AB, Narvavägen 12, 115 22 Stockholm, Sweden (professional representative).

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

DECISION:

1. Opposition No B 3 059 403 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 17 890 620 ‘Villa Valentina’. The opposition is based on European Union trade mark registration No 462 432 ‘SAN VALENTIN’. 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 beers).

The contested goods are the following:

Class 33: Wine.

Contested goods in Class 33

The contested wine is included in the broad category of the opponent’s Alcoholic beverages (except beers). 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 for which the degree of attention is average.

3. The signs

SAN VALENTIN	Villa Valentina
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 verbal elements of the earlier mark - ‘SAN’ and ‘VALENTIN’ – in combination mean ‘SAINT VALENTINE’ in Spanish. The Opposition Division considers that SAINT VALENTINE’S DAY (February 14^th) is well-known across the European Union as the day for the celebration of lovers.

As a consequence, the majority of the relevant public will perceive the verbal element ‘SAN VALENTIN’ as a reference to the name of this male saint due to its close equivalence in other languages in the European Union e.g. ‘Saint Valentin’ (in French), ‘San Valentino’ (in Italian) and ‘São Valentim’ in Portuguese. For the rest of the public, the earlier mark will be perceived simply as comprising two fanciful elements. In any event, as neither of these elements bears a relation to the relevant goods, they are distinctive.

The contested sign consists of the verbal elements ‘Villa’ and ‘Valentina’.

For the majority of the relevant public, the verbal element ‘Valentina’ will be understood as a female forename even though it cannot be excluded that for part of the public it will be perceived simply as a fanciful meaningless element. In any event, as it bears no relation to the relevant goods, it is distinctive.

The element ‘Villa’ is a term used to refer to a large house, especially one that is used for holidays and usually sited in Mediterranean countries. The Office takes the view that the word ‘Villa’ is understood across the European Union due to its common use and/or because it is identical or closely similar in other languages (e.g. ‘Villa’ in Dutch, English, French, German, Italian, ‘Vila’ in Czech, Lithuanian,).

As both the words ‘Villa’ and ‘Valentina’ are meaningful for a majority of the relevant public for this part of the relevant public, the contested sign will be perceived as having a univocal meaning, namely ‘the house of Valentina’.

The opponent argues that ‘Villa’ refers to a country house where wine is produced. In support of its argument, it includes images of a number of wine labels (all Spanish) featuring the word ‘Villa’ in conjunction with additional word(s). On this basis, the opponent argues that ‘Villa’ is allusive or even descriptive of the goods and, therefore, possesses low distinctive character. In support of its arguments, the opponent cites a decision of the Court in which it was held that the word ‘Villa’ “may be regarded as having only a low distinctive character for the marketing of wines from Italy” (11/11/1997, T-489/13, VILLA ALBERTI, EU T:2015:446: § 74).

Although the Opposition Division does not agree that ‘Villa’ is widely understood as being a reference to the place where wine is produced nevertheless this word possesses below-average distinctive character in respect of the relevant goods as it may evoke the concept of a place relating to wine production. However, the word combination ‘Villa Valentina’ is not descriptive of the contested goods and so the verbal elements as a whole possess normal distinctive character.

Visually, the signs coincide in the letter string ‘VALENTIN’ .They differ in the respective first verbal elements of the signs - ‘SAN’, ‘Villa’ - and in the final letter ‘a’ of the contested sign.

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 attracts the attention of the reader. It follows that, despite the fact that ‘Villa’ has below-average distinctiveness in respect of the relevant goods, the respective first elements ‘SAN’ and ‘Villa’ will make a visual impression on the relevant consumers even given that these elements are relatively much shorter than the respective second verbal elements ‘VALENTIN’ and ‘Valentina’.

For these reasons, the signs at issue are visually similar to a below average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark comprises four syllables /san/ /va-len-tin/ whereas the contested sign comprises six syllables /vi-lla/ /va-len-ti-na/. The sounds of the beginnings of both signs are completely different: /san/, /vi-lla/ and the consumer will not fail to notice the difference in their respective endings.

It follows that although the signs coincide in the sounds of the syllables /va-len/, the phonetic differences both in their respective beginnings and endings mean that they are aurally similar to a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the great majority of the relevant public, for which both signs at issue will be meaningful, the marks will be conceptually dissimilar because, for that part, the meanings will be different and distinct: male saint (of the earlier mark); ‘house of Valentina’ (of the contested sign).

For the remainder of the public – for which the earlier mark is meaningless – the marks will nevertheless be conceptually not similar on the basis of the perceived meaning of the word ‘Villa’ of the contested sign.

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).

The signs are visually similar to a below average degree, aurally similar to a low degree, and they are either conceptually dissimilar or conceptually not similar.

An examination of the similarity of the signs must take account of the overall impressions produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

In this case, the fact that for the majority of the relevant public the signs at issue are conceptually dissimilar is a decisive factor in the assessment of the likelihood of confusion because consumers are not likely to confuse two signs for which the meanings are both different and distinct and, for the rest of the relevant public, there is no likelihood of confusion either, because for that part of the public the marks are conceptually not similar and the overall differences between the signs outweigh the commonalities.

Considering all the above, the Opposition Division finds that 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Begoña URIARTE VALIENTE

Kieran HENEGHAN

Angela DI BLASIO

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.