OPPOSITION Nо B 3 060 300

AEG Presents Ltd, Almack House, 28 King Street, London SW1Y 6QW, United Kingdom (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1, 28010 Madrid, Spain (professional representative)

a g a i n s t

Bodegas Vinos De León, Vile S.A., C/ La Vega s/n, 24009 Armunia / León, Spain (applicant), represented by Hoffmann Eitle Patent- und Rechtsanwälte PartmbB, Arabellastr. 30, 81925 München, Germany (professional representative).

On 23/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 300 is upheld for all the contested goods.

2. European Union trade mark application No 17 902 410 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 17 902 410 COACHELLA (word mark). The opposition is based on European Union trade mark registration No 5 832 712, COACHELLA, and No 15 112 923, . The opponent invoked Article 8(1)(b) and Article 8(5) 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 European Union trade mark registration No 15 112 923 against which there are no pending cancellation proceedings.

a) The goods and services

The services on which the opposition is based are, inter alia, the following:

Class 41: Organisation, production and conducting of performing arts entertainments and festivals, including such services provided on-line from a computer database or the Internet; performance arts and musical entertainment services; festival services, performance of music, dance, comedy, theatre, poetry and circus entertainment, including such services provided on-line from a computer database or the Internet; conducting artistic and musical events; musical concert entertainment; performance and production of music award ceremonies; production and performance of radio and television programmes; production or performance of sound recordings, image recordings, videos, films, concerts and shows; recording studio services; the production or coproduction of entertainment events or concerts; recording and production services; entertainment; live music; provision of amusements; nightclubs; cultural and sporting activities; music and text publishing services; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet; operation of entertainment venues; issuing of concert tickets; management of concerts; information, advice and consultancy in respect of all the aforesaid services.

The contested goods are the following:

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the grounds that they appear in the same or different classes under the Nice Classification.

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.

The contested wine and alcoholic beverages (except beer) are similar at least to a low degree to the broad category of the opponent’s entertainment services in Class 41. Entertainment services, as a broad category, also includes wine-tasting seminars, wine-tasting training courses, wine-tasting events; events that are commonly offered by wine producers and wine distributors. Consequently, the services target the same relevant consumers who may believe that the undertakings offering these services are the same or economically linked. As wines are included in the broader category of alcoholic beverages (except beer) and this cannot be dissected ex officio by the Office, all the contested goods are similar to at least a low degree to the opponent’s entertainment services in Class 41 (12/11/2015, R 3134/2014‑1 & R 2785/2014‑1 – ARCO D’ARGENTO (fig.) /OCHO DE ARGENTO et al., § 28; 28/02/2020, R 963/2019‑4, Herdade da amada / Viñamada et al., § 16, 17). The applicant argues that there was no pair in the Office’s Similarity tool between goods in Class 33 and services of Class 41. However, this is only a tool to help the comparison of goods and services, it is not exclusive or exhaustive.

The applicant argues that per se goods and services are dissimilar. Although generally they are of a different nature, under certain circumstances, similarity between goods and services can be found. The degree of similarity will depend on how many factors are of relevance between the goods and services. It is not necessary that all factors apply as argued by the applicant, the combination of some factors may be sufficient. Even considering the applicant’s arguments concerning the lack of complementarity between the goods and services under comparison, this would not be sufficient to exclude any similarity between them.

For the case at issue, it is important to indicate that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and services covered by the marks. The actual or intended use of the marks for certain goods and services is not relevant for the examination of the applicability of Article 8(1)(b) EUTMR (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Therefore, only the wording indicated in the lists of goods and services matters in the comparison between the goods and services. The applicant’s argument on the use of trade marks in the wine sector is not successful in finding dissimilarity between the goods and services.

In this respect, the General Court’s judgments quoted by the applicant all refer to the comparison of goods and services different from the ones discussed in the present case. These judgments refer to the comparison between furniture and clothing (04/10/2017, 18/09/2014, T‑411/15, GAPPOL (fig.) / GAP et al., EU:T:2017:689, § 191-193); magazines and business management (26/09/2014, T‑490/12, Grazia, EU:T:2014:840, § 74-80); clothing and sporting activities (18/09/2014, T‑90/13, V, EU:T:2014:778, § 56); and in the last case between different services only (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 108). As explained above, the nature of the goods and services is only one of the relevant factors to be considered in the comparison.

With regard to the Flügel case (04/10/2018, T‑150/17, FLÜGEL / ... VERLEIHT FLÜGEL et al., EU:T:2018:641, § 77-84) addressed by the applicant in which the Court did not find any similarity between non-alcoholic beverages and alcoholic beverages, this has no correlation with the present case.

The applicant further refers to previous decisions of the Office to support its arguments of dissimilarity between the goods in Class 33 and the services in Class 41. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 and services found to be similar to at least a low degree are directed at the public at large. The degree of attention is considered to be average.

c) The signs

	COACHELLA
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 earlier sign is composed of a stylised verbal element ‘COACHELLA’. However, the stylisation is not of such a nature as to make the word illegible or to draw attention away from it (22/04/2009, R 252/2008‑1. THOMSON / THOMSON (FIG. MARK), § 35). Consequently, the stylisation is of a rather decorative nature.

The contested sign is a word mark, containing the same verbal element, ‘COACHELLA’.

Consequently, both signs comprise the identical word ‘COACHELLA’, which will not be associated with a meaning by most of the relevant public and is, therefore, distinctive. For the sake of completeness, the Opposition Division notes that part of the public may perceive ‘COACHELLA’ as a valley in the Colorado Desert of California, United States of America. From the perspective of the latter part of the public, the word would be of limited distinctiveness as it would be associated with the geographical origin of the goods and services in question.

Visually, the only difference between the signs is the stylised font of the earlier mark, whereas the contested sign is a word mark. Consequently, the signs are visually similar to a very high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides completely, as both have the same and sole verbal element ‘COACHELLA’. The signs are aurally identical.

Conceptually, neither of the signs has a meaning for most of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, for the part of the public that perceives the meaning of ‘COACHELLA’, the signs are conceptually identical.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in 'Global assessment’).

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 the services in question from the perspective of most of the public in the relevant territory. Therefore, for this segment of the public, the distinctiveness of the earlier mark must be seen as normal. For the segment of the public that would know COACHELLA, the distinctiveness of the mark would be limited, as explained above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of a 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, Sabèl, EU:C:1997:528, § 23).

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 very high degree, aurally identical and conceptually either identical (if understood) or neutral in the comparison (if not understood), whereas the goods and services are considered similar to at least a low degree.

Given that the signs consist of the same word element, ‘COACHELLA’, a moderate stylisation of the earlier sign is clearly not sufficient to allow consumers, especially taking into account their average degree of attention, to safely distinguish between the signs. The relevant consumer is likely to confuse the marks and believe that the same undertaking is responsible for the provision of the conflicting goods and services, even if they are similar to a low degree only. This conclusion applies also to the part of the public for which ‘COACHELLA’ may be of limited distinctiveness because in the latter case, the visual similarity and the phonetic identity will be reinforced by an identical concept.

The distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion; however, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark with a limited degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the services covered (13/09/2010, T‑72/08, smartWings, EU:T:2010:395, § 45; 10/07/2012, T‑135/11, Cloralex, EU:T:2012:356, § 35-37; 30/01/2014, C‑422/12 P, Cloralex, EU:C:2014:57, § 43-45; 27/02/2014, T‑25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38). In the present case, both signs include the same verbal element.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The signs in conflict have the same verbal element, ‘COACHELLA’, therefore, it may well be, that the relevant consumer considers the contested sign on goods similar to a low degree, to be a new product segment of the earlier mark.

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 European Union trade mark registration No 15 112 923. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The applicant argues that the earlier mark is in use in the United States and not in the European Union; however, as the earlier sign was registered on 25/07/2016, it is not under the obligation to prove use yet. As the earlier European Union trade mark registration No 15 112 923 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).

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(5) 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, 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

Astrid Victoria WÄBER

Gonzalo BILBAO TEJADA

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.