OPPOSITION No B 3 070 184

Bodegas Lan, S.A., Paraje de Buicio s/n, 26360 Fuenmayor (La Rioja), Spain (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

Sca Laudun & Chusclan Vignerons, Chemin d'Orsan, 30200 Chusclan, France (applicant), represented by Marchais & Associés, 4 avenue Hoche, 75008 Paris, France (professional representative).

On 18/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 184 is partially upheld, namely for the following contested goods and services:

Class 33: Wine, Spirits [beverages], Digesters [liqueurs and spirits], Alcoholic beverages (except beers).

Class 35: Retail services in the field of wines, Fortified wine, Digestants, Alcoholic beverages.

2. European Union trade mark application No 17 938 008 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union figurative trade mark application No 17 938 008 . The opposition is based on European Union trade mark registration No 1 977 982, ‘AURA’ (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 and services

The goods on which the opposition is based are the following:

Class 33: Spanish wines.

The contested goods and services are the following:

Class 33: Wine, Spirits [beverages], Digesters [liqueurs and spirits], Alcoholic beverages (except beers).

Class 35: Retail services in the field of wines, Fortified wine, Digestants, Alcoholic beverages; Business management and organisation consultancy; Business management; Business administration; Sales promotion, for others, in the wine and alcoholic beverage sector; Organisation of shows, exhibitions and events for commercial or advertising purposes; On-line advertising on a computer network; Rental of advertising time on communication media; Rental of advertising space; Public relations services.

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.

Contested goods in Class 33

The contested wine; alcoholic beverages (except beers) include, as a broader category the opponent’s Spanish wines. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested spirits [beverages], digesters [liqueurs and spirits], are similar to the opponent’s Spanish wines. They coincide in their nature and method of use, are sold through the same channels of distribution and target the same public. Furthermore, they are goods in competition.

Contested services in Class 35

However, retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested retail services in the field of wines, fortified wine, alcoholic beverages are similar to a low degree to the opponent’s retail services in the field of wines, fortified wine, alcoholic beverages.

The contested business management and organisation consultancy; business management; business administration are intended to help companies manage their business. They involve activities associated with running a company and they are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. They are of a different nature (being services, not goods) and purpose, have different channels of distribution and providers and they target a different public. They are dissimilar to the opponent’s goods.

The contested sales promotion, for others, in the wine and alcoholic beverage sector; organisation of shows, exhibitions and events for commercial or advertising purposes; on-line advertising on a computer network; rental of advertising time on communication media; rental of advertising space; public relations services are dissimilar to the opponent’s Spanish wines. The contested services are broadly different types of advertising services which consist in providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies as advertising companies. They are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity, advertising is dissimilar to the goods or services being advertised. They are of a different nature (being services, not goods) and purpose, have different channels of distribution and providers and they target a different public. They are dissimilar to the opponent’s goods.

The contested retail services in the field of digestants and the opponent’s Spanish wine are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled, since the goods at issue are only similar.

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 identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

AURA
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘AURA’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark ‘AURA’, which will be understood by the relevant public as ‘the distinctive atmosphere or quality that seems to surround and be generated by a person, thing, or place’ ( information extracted from Oxford Lexico dictionary on 13/09/2019 at https://www.lexico.com/en/definition/aura). As this word has no direct meaning in relation with the relevant goods and services, it has an average degree of distinctiveness.

The contested sign is a figurative sign composed of the verbal elements ‘AURA SOLIS’, in an upper case, standard black font, which is underlined and topped by a figurative abstract depiction. The word ‘AURA’ has the meaning mentioned above, and an average degree of distinctiveness. The word ‘SOLIS’ is meaningless, and has therefore an average degree of distinctiveness in relation to the relevant goods and services. The figurative abstract element is meaningless and has an average degree of distinctiveness. The contested sign has no element that could be considered clearly more dominant or more distinctive than other elements. 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).

Visually, the signs coincide in the word ‘AURA’ which is the sole element of the earlier mark and the first verbal element of the contested sign. However, they differ in the additional verbal element ‘SOLIS’ and the figurative elements described above, of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AURA’, present identically in both signs, which constitute the earlier mark’s only element and the first verbal element of the contested sign. The pronunciation differs in the sound of the letters ‛SOLIS’ of the contested mark, which have no counterpart in the earlier mark. 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 catches the attention of the reader.

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, in particular in bars and restaurants, in which wines are ordered orally after their names have been seen on the wine list (judgments of 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).

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs will be perceived as ‘AURA’ and ‘SOLIS’ has no meaning, therefore 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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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 which 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 are partly similar and partly identical and the services are partly similar to a low degree and partly dissimilar. The public’s degree of attention may vary from average to high.

The signs are visually similar to an average degree, aurally similar to a high degree and conceptually identical, as the word ‘SOLIS’ of the contested sign will not be understood The sole element of the earlier mark is included in the contested sign as its first verbal element. When assessing the degree of visual, phonetic and conceptual similarity it can be appropriate to evaluate the importance attached to each by reference to the category of goods and the way they are marketed Judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323. In the case at hand, the relevant goods found identical or similar and services found similar to a low degree are in the field of drinks, in which, as stated before, the aural similarity has more impact, therefore the high degree of aural similarity of the signs has an important relevance when assessing the likelihood of confusion.

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (Judgment of 29/09/1998, C-39/97, Canon, EU:C:1998:442 para. 29). It is common for undertakings active on the market to use sub-brands, that is to say, signs that derive from a principal mark and that have an element in common, in order to distinguish the scope of one product from that of another. It is, therefore, conceivable that the target public, even if it does not directly confuse the signs, may still regard the identical and similar goods and the similar services designated by the conflicting signs as different product and services lines that come from the same undertaking or from economically linked undertakings. The relevant public may assume that the contested sign is a sub-brand of the earlier mark, ‘AURA’.

Bearing in mind the identity and similarity between the goods and the similarity to a low degree of the services, it is considered that the differences between the signs are not sufficient to outweigh their similarities, resulting from the common element ‘AURA’, which is an independent distinctive element in the contested sign and constitutes the entire earlier mark.

Considering all the above and the average degree of distinctiveness of the earlier mark, there is a likelihood of confusion on the part of the English-speaking part of the public, even in the case of the public’s heightened degree of attention, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. The opposition is also successful insofar as the services that are similar to a low degree are concerned, due to the signs´ significant similarities.

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Andrea VALISA

Aurelia PEREZ BARBER

Keeva DOHERTY

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.