CANCELLATION No 35 923 C (INVALIDITY)

Barrière Frères, Société par actions simplifiée à associé unique, 18, rue Lafont, 33290 Ludon Medoc, France (applicant), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Jinan Daru Trading Co., Ltd., Room 1-2503-02, Building 6, Longyuan Residential Area, 4569 Phoenix Road, High-tech District, Jinan, Shandong, People’s Republic of China (EUTM proprietor), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 24/01/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 17 931 616 is declared invalid for some of the contested goods, namely:

Class 33: Wine; liqueur wine; sparkling wine; quality sparkling wine; quality aromatic sparkling wine; aerated sparkling wine; semi-sparkling wine; aerated semi-sparkling wine; wine from raisined grapes; wine of overripe grapes; all the aforementioned complying with the definition/conditions of use of the traditional term for wines "Château"; baijiu [Chinese distilled alcoholic beverage]; vodka; spirits [beverages]; rice alcohol; piquette; brandy; whisky; distilled beverages.

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 33: Fruit extracts, alcoholic.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 931 616 ‘CHATEAU ROYAL BATEAU.’ The application is based on, inter alia, French trade mark registration No 3 429 980 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s French trade mark registration No 3 429 980.

1. The goods

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 goods on which the application is based are the following:

Class 33: Alcoholic beverages (except beers), wines.

The contested goods are the following:

Class 33: Wine; liqueur wine; sparkling wine; quality sparkling wine; quality aromatic sparkling wine; aerated sparkling wine; semi-sparkling wine; aerated semi-sparkling wine; wine from raisined grapes; wine of overripe grapes; all the aforementioned complying with the definition/conditions of use of the traditional term for wines "château"; baijiu [Chinese distilled alcoholic beverage]; fruit extracts, alcoholic; vodka; spirits [beverages]; rice alcohol; piquette; brandy; whisky; distilled beverages.

Contested goods in Class 33

The contested wine; liqueur wine; sparkling wine; quality sparkling wine; quality aromatic sparkling wine; aerated sparkling wine; semi-sparkling wine; aerated semi-sparkling wine; wine from raisined grapes; wine of overripe grapes; all the aforementioned complying with the definition/conditions of use of the traditional term for wines "Château"; baijiu [Chinese distilled alcoholic beverage]; vodka; spirits [beverages]; rice alcohol; piquette; brandy; whisky; distilled beverages are included in the applicant’s broader category alcoholic beverages (except beers). Therefore, they are identical.

The contested fruit extracts, alcoholic are goods used for making alcoholic beverages, which are intended for business customers. These goods and the applicant’s alcoholic beverages are sold on different points of sale and do not target the same public. They differ in their natures and in their purposes as the fruit extracts are ingredients whereas the applicant’s goods are finished products ready for consumption. Their producers are not the same. They are not in competition or complementary. By definition, goods intended for different publics cannot be complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48). Furthermore, there is no complementarity when one ingredient is needed for the production/preparation of another foodstuff. Complementarity applies only to the use of goods and not to their production process (11/05/2011, T- 74/10, Flaco, EU:T:2011:207, § 40 and decision of 11/12/2012, R 2571/2011-2, FRUITINI, § 18). Therefore, the contested fruit extracts, alcoholic are dissimilar to the applicant’s 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 with an average degree of attention.

3. The signs

	CHATEAU ROYAL BATEAU
Earlier trade mark	Contested trade mark

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is composed of the word elements ‘GRAND BATEAU’, in bold capital letters, and above, the device of a Viking ship, all integrated in a geometrical framework.

The word elements ‘GRAND BATEAU’ of the earlier sign will be perceived as ‘big ship’ by the relevant French public, and the image of a Viking ship will be perceived as such, reinforcing the meaning of the word ‘BATEAU’.

The word ‘GRAND’ is an adjective which qualifies the meaning of ‘BATEAU’, indicating that it is of a consequent size and therefore, is less distinctive than the word ‘BATEAU’. Neither the word ‘BATEAU’ nor the device of the ship describe or evoke the goods at issue (alcoholic drinks) or their usual characteristics and therefore, those elements are distinctive to a normal degree.

On the other hand, the framework where the word elements ‘GRAND BATEAU’ and the device of a ship are integrated is of a purely decorative nature, and therefore, it has a very low degree of distinctiveness.

The contested mark is the word mark ‘CHATEAU ROYAL BATEAU’.

Also in this case, the word ‘BATEAU’ will be perceived as ‘ship’ and since it has no relation to the relevant goods, it is distinctive to a normal degree.

The word ‘CHATEAU’ (château) means castle in French and is often used in the name of prestigious wines in France to indicate its quality. In the context of the relevant goods, it will be understood as a term relating to the name of the undertaking producing the beverages. Therefore, this element is non-distinctive for the relevant goods.

Moreover, the word ‘ROYAL’ will be perceived as ‘related to the royal family’ by the relevant public. This word could be seen as qualification for the word ‘BATEAU’ or ‘CHATEAU', but also it would be perceived by the relevant consumers as referring to the quality of the goods, indicating that they have an excellent quality as it is a laudatory term commonly used in the market. With this in mind, it is considered that the word ‘ROYAL’ has a low distinctive character.

The earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘BATEAU’ and differ in the remaining word elements of each sign which, as assessed above, have a lower distinctive character, or any.

Moreover, the signs differ in the figurative elements of the earlier sign. However, 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; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in sound of the letters ‛BATEAU’, present identically in both signs. The pronunciation differs in the sound of the remaining words of the signs which, as mentioned above, have a low distinctive character, or any. Therefore, the signs are aurally similar to a high degree.

Conceptually, the public in the relevant territory will perceive both signs as containing the word ‘BATEAU’, reinforced by the image of the ship of the earlier mark. The signs differ in the meaning of the adjectives ‘GRAND’ and ‘ROYAL’ and in the meaning of the non-distinctive element ‘CHATEAU’. Therefore, the signs are conceptually similar to a high degree.

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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, 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 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 of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments 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.

The goods are partially identical and partially dissimilar, and they are directed at the public at large with an average degree of attention.

The signs are aurally and conceptually similar to a high degree and visually similar to an average degree since they coincide in the most distinctive element of each sign ‘BATEAU’.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Furthermore, it should be borne in mind that the visual, phonetic and conceptual aspects of the marks do not always have the same weight according to the goods or services at issue. In the present case, 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).

Moreover, 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.

In conclusion, it is highly conceivable that consumers will not remember the differences existing between the signs and even if they realize that they differ in some less distinctive and graphic elements, they may 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 that it designates.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s French trade mark registration No 3 429 980.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed against these goods cannot be successful.

The applicant has also based its cancellation application on the EUTM registration No 5 087 416, registered for an identical mark to the one which has been compared. Since this mark is identical to the French mark and covers the same scope of goods, the outcome cannot be different for goods for which the cancellation application has already been rejected. Therefore, there is no likelihood of confusion for those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

Julie, Marie-Charlotte HAMEL

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.