OPPOSITION No B 3 071 103

Diego Zamora S.A., Avda. de Colón 143-149, 30205 Cartagena (Murcia), Spain (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia, Spain (professional representative)

a g a i n s t

Oktan Energy-Wina, Hryniewieckiego 1, 70-606 Szczecin, Poland (applicant), represented by Paweł Brzeziński, Swarożyca 15a/3, 71-601 Szczecin, Poland (professional representative).

On 05/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 103 is upheld for all the contested goods.

2. European Union trade mark application No 17 950 208 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 17 950 208 ‘Zmora’. The opposition is based on, inter alia, European Union trade mark No 17 009 127 . The opponent invoked Article 8(1)(a) EUTMR.

Preliminarily Remark:

In the notice of opposition of 13/12/2018 the opponent based the opposition only on Article 8(1)(a) EUTMR. In its observations filed on 04/06/2019 the opponent subsequently claimed Article 8(1)(b) EUTMR as a ground for the opposition. This subsequent claim cannot be taken into account since it was made after the end of the opposition period, which finished on 13/12/2018.

However, regarding the relation between Article 8(1)(a) and (b) EUTMR, according to the Office’s practice explained in the Guidelines:

‘Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.’

Therefore, taking this principle into account the Opposition Division will nevertheless examine the proceedings under 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.

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 No 17 009 127.

a) The goods

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

Class 33: Wines complying with the specifications of the protected designation of origin 'Tierra del Vino de Zamora'.

The contested goods are the following:

Class 33: Wine.

The contested wine includes, as broader category, the opponent’s wines complying with the specifications of the protected designation of origin 'Tierra del Vino de Zamora'. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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. The degree of attention is considered to be average.

c) The signs

	Zmora
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 sign’s verbal elements ‘ZAMORA’ and ‘ZMORA’ are meaningless (and therefore distinctive) for a substantial part of the Italian, German and French-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The earlier mark verbal element ‘COMPANY’ is an English word that will be understood by the relevant consumers, since it is commonly used in trade to identify a business organisation. This element is non-distinctive as it merely refers to the opponent’s enterprise.

In addition, the figurative element of the earlier mark reproduces a stylized letter ‘Z’, which is distinctive since it is not related to the relevant goods. In this regard, however, it has to be recalled that 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). This principle is particularly applicable in the current proceeding, insofar as the subject figurative element will be perceived as a mere reproduction of the first letter of the below verbal element.

Finally, the figurative element and the verbal element ‘ZAMORA’ of the earlier mark are the sign’s co-dominant (visually eye catching) components.

Visually, the signs coincide in the letters ‘Z*MORA’ whereas they differ in the earlier trade mark' second letter, ‘A’, in the component ‘COMPANY’ and in its figurative element and stylizations.

Therefore, and taking into account the above assertion on the degree of distinctiveness of the sign’s component, these are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘Z*MORA’ whereas it differs in the earlier trade mark second letter, ‘A’. The pronunciation of the signs also differs in the sound of the earlier trade mark’s verbal component ‘COMPANY’ and in that of the stylized letter ‘Z’. However, it is unlikely that the relevant public will pronounce these elements since they are non-distinctive and less relevant respectively.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘COMPANY’ of the earlier mark as explained above, the other sign has no meaning in that territory. 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.

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 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 non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case the goods have been found identical. They target the general public that will pay an average degree of attention.

The signs under comparison have been found visually similar to an average degree, whereas aurally similar to a high degree insofar they coincide in the sequence of letters ‘Z*MORA’.

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). 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.

The signs are not conceptually similar. However, this factor plays a limited impact in the assessment of likelihood of confusion since this difference derives from a non-distinctive component.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods are likely to think that they come from the same undertaking or from economically linked undertakings.

The applicant arguments that the earlier trade mark ‘is used to specify the company name, not the particular product’ must be set aside, since it is not substantiated. The applicant also states that the use of its mark pre-dates that of the earlier marks. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM application has to be examined with regard to opposition proceedings.

Considering all the above, there is a likelihood of confusion on a substantial part of the Italian, German and French-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark No 17 009 127. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right 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).

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

Anna ZIOLKOWSKA

Aldo BLASI

Cristina SENERIO LLOVET

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.