OPPOSITION No B 3 069 128

Nordbrand Nordhausen GmbH, Bahnhofstr. 25, 99734, Nordhausen/Harz, Germany (opponent), represented by Lucia Schwab, Matheus-Müller-Platz 1, 65343, Eltville am Rhein, Germany (employee representative)

a g a i n s t

Morgante S.L., Boticarios 3, planta 2, puerta izq., 02001 Albacete, Spain (applicant), represented by Jose Julián Fuentes Palancar, Bravo Murillo 9 – 48, 28015 Madrid, Spain (professional representative).

On 13/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 128 is upheld for all the contested goods.

2. European Union trade mark application No 17 932 601 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 932 601 , namely against all the goods in Class 33. The opposition is based on German trade mark registration No 302 017 014 544 ‘LAMA’ (word 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.

a) The goods

The goods on which the opposition is based: alcoholic beverages (except beers) in class 33 are identical to the contested goods: alcoholic beverages (except beer) in the same class.

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 found to be identical are directed at the public at large and their degree of attention is considered to be average.

c) The signs and the distinctiveness of the earlier mark

LAMA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word mark ‘LAMA’ will be understood by the German public as ‘a domesticated South American camelid, widely used as a meat and pack animal by Andean cultures since the Pre-Columbian era’ or as ‘a teacher of the Dharma in Tibetan Buddhism’.

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 has no meaning for the goods in question from the perspective of the relevant public. Therefore, its distinctiveness must be seen as normal.

The contested sign is composed of a label like element with a visually eye-catching colourful figurative element containing different patterns and the meaningless syllables ‘LA’ and ‘NA’ placed in vertical position on its right side written in capital letters depicting white dots in the last letter ‘A’. Regardless of the fact that the syllables are placed in such order, the relevant public will refer to it as ‘LANA’.

The colours and patterns of the elements are figurative aspects that, even if distinctive, will have a lower impact on consumers. This is because 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. 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, it is the verbal element of the contested sign that will have a higher impact on consumers.

Visually, the signs coincide in the letters ‘LA*A’. They differ in their third letter ‘M’ and ‘N’ respectively, although the difference between those letters on a visual level is remote. Further, they differ in the figurative elements of the contested sign. Taking into account that the figurative elements in the contested sign are visually eye-catching, the signs are, even if the difference between their verbal elements ‘LAMA’ and ‘LANA’ is difficult to perceive, only similar to a low degree.

Aurally, the difference between the verbal elements ‘LAMA’ and ‘LANA’ of both signs to which they will be referred to by the relevant public, is hardly perceptible, contrary to the applicant’s arguments. Therefore, they are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning(s) of the earlier mark as explained above, the other sign has no meaning in German. 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.

c) 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).

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).

The goods are identical and they target the public at large with an average degree of attention. The signs are visually similar to a low degree, aurally highly similar and conceptually not similar. The earlier mark has a normal degree of distinctiveness.

The applicant considers that the signs have substantial visual differences, due to the figurative elements in the contested mark and implying that the verbal element in the contested sign will be perceived as ‘LVNV’ taken that the two letters 'A' are represented as inverted 'V' wedges or that this element could simply be perceived as four capricious symbols in a grid. The Opposition Division does not share this view, since the average consumer will make the mental effort to pronounce the part of the contested sign that is composed of letters and will refer to the sign as ‘LANA’.

Furthermore, although the contested sign has a high degree of colorful graphic elements, these constitute little more than decorative effects since they do not form any recognizable picture that might leave a concrete impression in the mind of the consumer and although they form a dominant element in the sign, they do not take attention away from the word element ‘LANA’. The consumer will refer to the opponents’ drinks by name, namely ‘LAMA’ and the applicant’s drinks as ‘LANA’.

Furthermore, it should be borne in mind that, because of the fact that the relevant goods are beverages 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). As concluded above, the signs are aurally similar to a high degree.

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 German trade mark registration No 302 017 014 544. It follows that the contested trade mark must be rejected for all the contested goods.

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Loreto URRACA LUQUE

Cynthia DEN DEKKER

Christophe DU JARDIN

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.