OPPOSITION No B 3 082 464

Société Jas Hennessy & Co., Société anonyme, Rue de la Richonne, 16100 Cognac, France (opponent), represented by Baker & Mckenzie, 1, rue Paul Baudry, 75008 Paris, France (professional representative)

a g a i n s t

Caribbean International, Inc., Bourbon House, Bourbon Street P.O. Box 1695, Castries, Saint Lucia (applicant), represented by Wuesthoff & Wuesthoff Patentanwälte PartG mbB, Schweigerstr. 2, 81541 München, Germany (professional representative).

On 21/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 464 is upheld for all the contested goods.

2. European Union trade mark application No 18 015 214 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 (Class 33) of European Union trade mark application No 18 015 214 for the word mark ‘MADE IN PARADISE’. The opposition is based on French trade mark registration No 1 252 050 and Irish trade mark registration No 103 768, both for the word mark ‘PARADIS’. 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.

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 French trade mark registration No 1 252 050.

1. The goods

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

Class 33: Alcohols and eaux-de-vie, liquors, spirits and various aperitifs.

The contested goods are the following:

Class 33: Rum; liquors; alcoholic beverages, except beer.

The contested goods are identical to the opponent’s goods, either because they are identically contained in both lists, including synonyms, (liquors; alcoholic beverages) or because the opponent’s goods (alcohols) include the contested goods (rum).

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 mainly directed at the public at large. The degree of attention may vary from average (in relation to inexpensive alcoholic beverages for mass consumption) to high (in relation to expensive, sophisticated beverages and/or those that are purchased infrequently).

3. The signs

PARADIS	MADE IN PARADISE
Earlier trade mark	Contested sign

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 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 consists of the French word, ‘PARADIS’, which will be associated by the relevant public with, inter alia, ‘heaven; idyllic place or condition that fulfils all one’s desires or aspirations; a place or condition of great happiness where everything is exactly as you would like it to be’ (see for example https://www.larousse.fr/dictionnaires/francais/paradis/57870?q=paradis#57531, https://dictionary.cambridge.org/dictionary/english/paradise). That concept has no clear meaning in relation to the goods at issue and enjoys an average degree of distinctiveness.

The contested sign comprises three English words ‘MADE IN PARADISE’. The expression ‘Made in’ is so common that it will be understood also by the relevant French consumers as referring to a place of origin, that is, to the place where the goods come from, an indication of the origin of the products or of their place of manufacture. The English word ‘PARADISE’ is very close to the French word ‘PARADIS’, and as such it will be perceived in the same manner as in the earlier mark. Taking into account that the relevant goods are alcoholic beverages, which usually bear the expression ‘Made in’ on their labels, the public is accustomed to seeing this non-distinctive element and will pay little or no attention to it, focusing instead on the other, distinctive, element of the sign, ‘PARADIS’.

It is of relevance to point out in the present case that according to case-law, the fact that the public generally pays greater attention to the beginning of a mark than to the end does not apply in all cases and may not, in any circumstances, call into question the principle that the examination of the similarity of the marks must take account of the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 10/12/2008, T‑228/06, Giorgio Beverly Hills, EU:T:2008:558, § 28 and the case-law cited).

Visually and aurally, the signs coincide in the sequence of letters ‘PARADIS’, that forms the entire earlier mark, and is included in the beginning of the contested sign’s last verbal element. They differ in the rest of the contested sign’s elements, namely the words ‘MADE IN’ and the additional letter ‘E’ in the word ‘PARADISE’.

As from the aural point of view, it is noted that the earlier mark will be pronounced as /paradi/, hence without the last letter ‘S’. The word ‘PARADISE’ in the contested sign would be pronounced the French way without the letter ‘E’ and with the letter ‘S’ as the last letter. The expression ‘MADE IN’ would be pronounced in two syllables most likely, using the English pronunciation /mƐi-din/.

Bearing in mind the foregoing as well as the distinctive character of the signs’ elements, the Opposition Division finds that the two signs at issue are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the presence of the additional verbal elements in the contested sign, the Opposition Division finds the two signs conceptually similar to at least a high degree. This due to the above findings regarding the recognition of the element ‘PARADISE’ in the contested sign and the fact that the additional verbal elements will not change its meaning significantly. While the earlier mark will be perceived as ‘paradise’, the contested sign will be perceived as ‘something made in (originate from) paradise’, hence both marks will refer to the same place.

Therefore, the meaning of the word ‘paradise’, will be clearly perceived in both signs at issue.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

As concluded above, the goods at issue are identical and target the public at large whose degree of attention is deemed to vary from average to high.

The marks are similar on account of the presence of the distinctive, nearly identical element, ‘PARADIS(E)’, which conveys the same meaning in both marks. The additional verbal elements of the contested sign do not change this perception significantly.

Account has to be also taken of the fact that 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). The identity of the conflicting goods in the case at hand is considered sufficient to outweigh the differences between the signs.

Besides, it is noted that it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colors, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image.

Accordingly, it is very likely in this case that the relevant consumer may perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (see by analogy 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public, even in case of higher level of attention, may attribute the same (or an economically linked) commercial origin to the goods at issue.

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 French trade mark registration No 1 252 050. It follows that the contested trade mark must be rejected for all the contested goods.

As the aforementioned 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Furthermore, since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark/s due to their extensive use as claimed by the opponent. The result would be the same even if the earlier mark/s enjoyed an enhanced degree of distinctiveness.

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

Tu Nhi VAN	Renata COTTRELL	Marta Maria CHYLIŃSKA

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.