OPPOSITION No B 3 064 449

Casa Ermelinda Freitas - Vinhos, Lda., Fernando Pó, C.P. 2501, 2965-621 Águas de Moura, Portugal (opponent), represented by Gastão Da Cunha Ferreira, Lda., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

Shiyi Zheng, Via Ponte all'Asse 21, 50019 Sesto Fiorentino (FI), Italy (applicant) represented by Stefano Fanfani, Via Giovanni Bovio 19, 50136 Firenze, Italy (professional representative).

On 17/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 449 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against, initially, some of the goods and services of European Union trade mark application No 17 939 216 for the figurative mark , namely against all the goods and services in Classes 32, 33 and 35 which, following the division of the application on 15/01/2019, now constitute all the goods and services of the contested application. The opposition is based on the European trade mark registration No 13 001 946 for the word mark ‘VINHA DA VALENTINA’. 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 and services

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

Class 33: Alcoholic beverages (except beer).

The contested goods and services are the following:

Class 32: Beer and brewery products; soft drinks; fruit-based beverages; juices; waters; syrups for beverages; preparations for making beverages.

Class 33: Preparations for making alcoholic beverages; alcoholic beverages (except beer); spirits and liquors; wine; fortified wines; sparkling wines; cider; pre-mixed alcoholic beverages.

Class 35: Retail services relating to alcoholic beverages; mail order retail services related to alcoholic beverages (except beer); retail services via global computer networks related to alcoholic beverages (except beer); retail services via catalogues related to alcoholic beverages (except beer), retail services via global computer networks related to alcoholic beverages (except beer); retail services via catalogues related to alcoholic beverages (except beer).

Some of the contested goods and services are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is average.

3. The signs

VINHA DA VALENTINA
Earlier trade mark	Contested sign

The relevant territory is 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 mark as a whole will be perceived by the Portuguese-speaking part of the public as meaning ‘Valentina's vineyard’ in which 'VALENTINA' will be understood as a female given name whereas ‘VINHA’ means 'vineyard' and 'DA' represents the possessive form. For this part of the public, 'VINHA DA' is weak in respect of the relevant goods since it will be perceived as indicating the place of production of the relevant goods (in the possessive form).

The remaining part of the public will also associate 'VALENTINA' with a female given name because it exists as such or is close to its equivalents in the relevant European languages (e.g. 'Valentina' in Italian and Spanish, 'Valentine' in French, 'Walentyna' in Polish, 'Valentini' in Greek), the remaining elements of the earlier mark have no meaning whatsoever for this part of the public. In any event, for the non-Portuguese-speaking part of the public, none of the elements of the sign bear any relation with the relevant goods and therefore, they are distinctive to a normal degree.

The contested sign is a figurative mark consisting of some rather detailed figurative elements and the verbal element ‘MARCHESI VALENTINI’ in standard uppercase letters. The Italian-speaking part of the public will perceive these verbal elements either as a surname (VALENTINI) preceded by a nobility title (in plural), ‘MARCHESI’ (marquis, marquess) or as a combination of two surnames.

Although the Greek-speaking part of the public will recognise 'VALENTINI' as the Greek female given name corresponding to 'VALENTINA' in other languages such as Portuguese, Italian and Spanish (as explained above) and that the remaining non-Italian speaking part of the public may see a reference to this female given name for the same reasons as in relation to the earlier mark, it remains that 'MARCHESI' has no meaning in Greek or in any other language but Italian, and that non-Italian-speaking part of the public (whether Greek-speaking or not) is rather more likely to perceive 'MARCHESI VALENTINI' as a whole as a combination of two Italian surnames because of the rather typical and generally known endings in 'I' in both words and the repetition of the initials of these words in the figurative element as explained below. In any event, as it bears no relation to the relevant goods and services, this element is distinctive to a normal degree.

The figurative element of the contested sign will be perceived as containing the stylised initials of the words 'MARCHESI VALENTINI' placed in a circle. It has been established by case-law that initials are generally less distinctive that the word elements they refer to. Finally, Asian characters, such as those placed in between two purely decorative dashes in the contested sign, are not in use in the relevant territory and therefore they are considered as figurative elements of a decorative nature. Therefore, and taking further into account that the circle is also of a purely decorative nature, 'MARCHESI VALENTINI' is the most distinctive element of the sign.

Visually, the signs coincide in the letter string ‘VALENTIN’ but they differ for the remainder, namely the figurative elements of the contested sign, the respective first verbal elements of the signs - ‘VINHA DA’, ‘MARCHESI’ - and the respective final letters ‘A’/’I’ of the elements ‘VALENTINA’ and ‘VALENTINI’.

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 regardless of their respective distinctive character for different parts of the relevant territory, the first verbal elements ‘VINHA DA’ and ‘MARCHESI’ of the signs, together with the remaining differences between the signs clearly contribute to the visual impression caused by the signs on the relevant consumers. Therefore, the signs at issue are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‘VALENTIN’ placed in the final word in both signs whereas it differs in the sound of the respective initial elements ‘VINHA DA’ and ‘MARCHESI’, as well as in the respective final letters 'A' and 'I'. Considering the differences between the signs lay essentially at the beginning of the signs, in particular the distinctive element 'MARCHESI', and that the coinciding sounds are placed at the end of the signs, the signs are aurally similar only to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. While it is true that the non-Italian-speaking part of the public may perceive a reference to the same female given name in both signs, it remains that on account of the additional elements of the signs, 'VALENTINA' in the earlier mark will be associated with this name whereas 'VALENTINI' in the contested sign is rather more likely to be associated with a foreign surname (even if the Greek female given name is transliterated identically), on account of the presence of the preceding word 'MARCHESI'.

On the other hand, the Italian-speaking part of the public will clearly associate 'VALENTINA' in the earlier mark with a female given name and 'VALENTINI' in the contested sign with a surname. In view of the foregoing, although 'VALENTINA' and 'VALENTINI' do share the same root as argued by the opponent, the conceptual connection between the signs is very much conditioned by the remaining elements of the signs and as a consequence, the signs are, at best, conceptually similar to a low degree.

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, despite the presence of a weak element in the mark for part of the public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

As seen above, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark for part of the public. The goods and services are assumed to be identical and are directed at the public at large and at business customers with specific professional knowledge or expertise, with an average degree of attention. The signs have been found visually and aurally similar to a low degree and conceptually at best similar to a low degree in their respective elements 'VALENTINA' and 'VALENTINI'. However, these commonalities lay in the signs' final word elements and the signs contain clearly perceptible visual, aural and conceptual differences at their beginnings.

It should be borne in mind that 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). Furthermore, 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). In relation to the contested services, these are not tangible and therefore, the phonetic perception also particularly relevant. 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 view of the foregoing, even assuming that the goods and services are identical, it can be concluded that the differences between the signs are sufficiently striking and that they outweigh commonalities in the signs so that likelihood of confusion, including a likelihood of association, can be safely excluded for the relevant public with an average degree of attention. 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

Martina GALLE

Martin INGESSON

Anna ZIÓŁKOWSKA

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.