OPPOSITION No B 3 087 134

Señorío de San Vicente S.A., C/ Los Remedios 27, 26338 San Vicente de la Sonsierra, Spain (opponent), represented by P.E. Enterprise S.L., Gran Via 81, planta 5, Dpto. 9, 48011 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Union Vinicole des Coteaux d’Epernay ‘Champagne Vincent d’Astree’ Societe Cooperative Agricole, Rue Léon Bourgeois, 51530 Pierry, France (applicant), represented by Casalonga Alicante S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 134 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods (Class 33) of European Union trade mark application No 18 018 024 for the word mark ‘VINCENT D’ASTREE’. The opposition is based on Spanish trade mark registration No 2 059 418 ‘SAN VICENTE’ and international trade mark registration No 692 163 ‘SAN VICENTE’ designating Austria, Benelux, Denmark, Finland, France, Germany, Ireland, Italy and the United Kingdom. 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 marks, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

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

Class 33: Wine, liqueurs and other alcoholic beverages (except for beer).

The contested goods are the following:

Class 33: Alcoholic beverages (except beers).

The wording of the opponent’s wine, liqueurs and other alcoholic beverages (except for beer) means that the specification of the goods covers wine, liqueurs and all other alcoholic beverages except for beer. Therefore, the contested goods are considered to be identically covered in all lists of goods.

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 directed at the public at large. The degree of attention is average, as alcoholic beverages are everyday consumer goods, which are usually subject to widespread distribution, ranging from the food section of supermarkets, department stores and other retail sales outlets, to restaurants and cafés (24/11/2016, T‑250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 25).

3. The signs

SAN VICENTE	VINCENT D’ASTREE
Earlier trade marks	Contested sign

The relevant territories are Austria, Benelux, Denmark, Finland, France, Germany, Ireland, Italy and the United Kingdom in relation to the international trade mark and Spain in relation to the Spanish trade mark.

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).

In the case of a word mark composed of a first name and a surname, account must be taken of all the relevant factors of each case and, in particular, of the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on the distinctive character of that name (24/06/2010, C‑51/09 P, Barbara Becker, EU:C:2010:368, § 36, 38; 05/10/2011, T‑421/10, Rosalia de Castro, EU:T:2011:565, § 50 (not published)).

The issue of whether or not a verbal element is perceived as a common first name is also relevant for the purposes of assessing the distinctive character of that element (03/06/2015, T‑559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 34 (not published)).

In Spanish, the earlier marks refer to a religious figure or even a location (San Vicente de la Barquera, San Vicente del Raspeig, etc.). For the Italian consumers, they could also refer to a religious figure.

For the remaining parts of the public, the words ‘SAN VICENTE’ do not have a clear meaning. However, in the Opposition’s opinion, it is still likely that the aforementioned consumers would associate ‘VICENTE’ with the male first name ‘Vincent’ and ‘SAN’ as ‘Saint’, due to the similarity between these equivalents.

Nevertheless, these verbal components are distinctive, as they are not descriptive, allusive or otherwise weak in relation to the relevant goods.

The contested sign is the verbal elements ‘VINCENT’ and ‘D’ASTREE’, which will be seen by the relevant public as a male first name and a surname.

The first name ‘VINCENT’ is a frequently used first name in at least part of the relevant territories, such as by the English- and French-speaking parts of the public. It is also likely that ‘VINCENT’ will be recognised as a common first name by the rest of the relevant public, because it is frequently used in many of the relevant countries, and also because they have very similar equivalents that are also frequently used, such as Vicente in German, Vicente in Spanish and Vincenzo in Italian. The fact that Vincent Van Gogh is one of the most famous artists in the world also supports the assumption that the entire relevant public will recognise ‘VINCENT’ as a name.

In that regard, even if Vincent/Vicente, as a first name, is more common in countries such as Ireland, Italy and Spain rather than Finland, the mere fact that a first name is not very common within the population of one Member State or another does not necessarily mean that that first name will be perceived by the relevant public as rare in that Member State. Indeed, a first name that is relatively well known within the European Union or internationally will not be perceived by the relevant public as rare, even in Member States where that first name is not very common, in view of the numerous exchanges within the European Union and the current means of electronic communications (27/06/2019, T‑268/18, Luciano Sandrone / DON LUCIANO, EU:T:2019:452, § 73-74).

The word ‘D’ASTREE’ will be seen as a surname because it follows ‘VINCENT’ and the article d’ is quite common in French nobility or history. Therefore, many examples of this kind of surname are known by the entire relevant public (Jeanne d’Arc, d’Artagnan, etc.).

In light of the above, within the contested mark, ‘D’ASTREE’, an uncommon surname, will be seen as more distinctive than ‘VINCENT’, a widespread first name, by the relevant public.

Visually, the signs are only similar to the extent that the verbal elements ‘VICENTE’ and ‘VINCENT’ are very similar. However, these verbal elements differ in the letter ‘E’ of the earlier marks and the letter ‘N’ of the contested sign. In addition, the marks display clear differences, as they differ in the first verbal element of the earlier marks: ‘SAN’, and the second element of the contested sign: ‘D’ASTREE’. Therefore, even with the coincidence of the letters ‘VI-CENT-’, taking into account these differences and the fact that the similar verbal elements ‘VICENTE’ and ‘VINCENT’ are positioned differently in the marks in question, the signs are considered visually similar only to a low degree.

Aurally, the pronunciation of the words ‘VICENTE’ and ‘VINCENT’ are not identical, but they are indeed highly similar. However, they are positioned differently in the marks: the first element in the contested sign and the last element in the earlier marks, clearly affecting the aural aspect. Indeed, the contested mark is longer than the earlier marks and the signs end with different syllables. In addition, the earlier marks contain the word ‘SAN’ while the contested sign contains ‘D’ASTREE’, which is more distinctive. Therefore, the signs at issue are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The earlier marks will be perceived as referring to any person (some abstract unidentified person) named Vicente, or for some parts of the public, a Saint or a location, whereas the additional element ‘D’ASTREE’ in the contested sign provides a narrower determination that refers to a particular named person of the D’Astree family.

In view of the fact that the contested mark also evokes the concept of a surname, which supplements that of the first name, and which has more importance in the sign for the reasons explained above, the signs are conceptually similar only to a low degree.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade marks have a high degree of distinctiveness as result of its long-standing and intensive use in Spain in connection with alcoholic beverages. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

Preliminary remark on the opponent’s confidentiality claim

In accordance with Article 114(4) EUTMR, files may contain certain documents that are excluded from public inspection, for example the parts of the file for which the party concerned indicated a special interest in keeping confidential.

In the event that a special interest in keeping a document confidential in accordance with Article 114(4) EUTMR is invoked, the Office must check whether a special interest is sufficiently shown. Such a special interest must exist because of the confidential nature of the document or its status as a trade or business secret.

A request for confidentiality requires justification, that is, an explanation of the reasoning that supports it (24/04/2018, T‑831/16, ZOOM / ZOOM et al., EU:T:2018:218, § 21-24).

In the present case, the opponent has not given any reason as to why Article 114(4) EUTMR would be applicable with respect to its submissions. Likewise, the Opposition Division has not found any indication in the observations that could justify the existence of a special interest (31/01/2008, R 966/2007‑2, MAKO (FIG. MARK) / MALO, MALO (FIG. MARK), § 11-13; 03/03/2008, R 429/2007‑2, KINDERMEDIA KINDERMEDIA (FIG. MARK) / KINDER et al., § 22-24). It follows that the confidentiality request cannot be accepted. However, the Opposition Division will describe the evidence as generally as it is possible.

The opponent submitted the following evidence:

Exhibit 1: certificates issued by the Spanish Chambers of Commerce of Álava (dated 27/07/2018), Zamora (dated 12/07/2018) and La Rioja (dated 31/08/2018) in which it is stated that the ‘SAN VICENTE’ trade mark is widely known and reputed in the wine sector in Spain.

Exhibit 2: copy of the decision of the Spanish Patent and Trademark Office dated 21/03/2019, refusing Spanish trade mark No 3 721 207 ‘TERRAZAS DE SAN VICENTE’ in Class 33. This opposition was based on earlier rights: Spanish trade mark ‘SAN VICENTE’ (Class 33), and ‘SEÑORIO DE SAN VICENTE’ (Class 33). This opposition decision recognises the reputation of the prior trade marks.

Exhibit 3: copy of the decision of the Spanish Patent and Trademark Office dated 21/03/2019, refusing Spanish trade mark No 3 721 212 ‘BANCALES DE SAN VICENTE’ in Class 33. This opposition was based on earlier rights: Spanish trade marks ‘SAN VICENTE’ (Class 33), and ‘SEÑORIO DE SAN VICENTE’ (Class 33). This opposition decision recognises the reputation of the prior trade marks.

Exhibit 4: copy of the decision of the Spanish Patent and Trademark Office dated 14/01/2019 refusing Spanish trade mark No 3 721 166 ‘LA VEGA DE SAN VICENTE’ in Class 33. This opposition was based on the following earlier rights: Spanish trade marks ‘SAN VICENTE’ (Class 33), and ‘SEÑORIO DE SAN VICENTE’ (Class 33). This opposition decision recognises the reputation of the prior trade marks.

Exhibit 5: tasting notes of ‘SAN VICENTE’ wines, indicating that the wine had obtained excellent evaluations, all over 90 points, for vintages from 2010 to 2014. For example, Guía Proensa awarded 99 points to all those vintages; Robert Parker (the Wine Advocate) awarded 92 points to the 2011, 2012 and 2014 vintages and 93 points to the 2013; while Guía Peñín awarded 94 points to the 2013 and 2014 vintages.

The opponent also states in its observations that the opponent has owned the Spanish trade mark ‘SAN VICENTE’ for almost 30 years, since 1991.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through its use.

The statement of the Chamber of Commerce of Alava, Zamora and La Rioja, Spain indicates that the ‘the trade mark SAN VICENTE is well known in the wine and hotel market’.

First of all, the Office does not know the criteria used in the Chamber of Commerce’s categorisation of ‘well known’. Secondly, unless accompanied by collaborative evidence, this statement is a mere statement from the attestor’s point of view, which does not necessarily coincide with the perception of the general public at large.

A general statement with respect to the marks’ status in the wine sector in these cities does not allow the Opposition Division to draw a conclusion as regards the reputation of the earlier marks in relation to the particular goods in question.

The above conclusion is not called into question by the national judgment and decisions of the Spanish Patent and Trademarks Office submitted by the opponent. Although the opponent has provided these decisions/judgment as examples of where the opponent has successfully opposed other marks on account of the coincidence in the element ‘VICENTE’, none of the documents clearly establish that the earlier marks enjoy reputation or enhanced distinctiveness in relation to the particular goods in question.

This information, unless accompanied by collaborative evidence, is a mere statement from the attestor’s point of view, which does not necessarily coincide with the perception of the general public at large.

As regards the decision issued by the Spanish Patent and Trademark Office, it is noted that national decisions are not binding for the Office, in the sense that it is not mandatory to follow their conclusion (17/12/2010, T‑192/09, Seve Trophy, EU:T:2010:553, § 79). It is settled case-law that the probative value of national decisions will be considerably enhanced if the conditions of law and facts on the basis of which they were taken are made abundantly clear. This is because, in the absence of these elements, it will be more difficult both for the applicant to exercise its right of defence and for the Office to assess the decision’s relevance with a reasonable degree of certainty. In the present case, there is no information regarding the evidence submitted before the Spanish jurisdiction.

In summary, the Opposition Division considers that the evidence submitted does not demonstrate that these marks are widely known and recognised by the public in the relevant territory and does not contain information on the proportion of the relevant part of the public that, because of the marks ‘SAN VICENTE’, identifies the goods in question as originating from a particular undertaking.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical and the signs are similar to a low degree. In addition, the earlier marks have a normal degree of inherent distinctiveness.

In a situation involving a first name that the relevant public does not regard as rare, such as Vicente/Vincent, public will not expect only one producer to use that name as an element of a trade mark (03/06/2015, T‑559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 117).

In addition, given that the relevant public will ascribe greater distinctiveness to the element ‘D’ASTREE’ of the contested sign than to the element ‘VINCENT’, that the element ‘VICENTE’ (which is similar to ‘VINCENT’) is only one of two elements of the contested mark (which are placed in different positions), and in view of the significance of the other element present in the contested mark, there is no likelihood of confusion, even for the goods in question that are deemed identical (03/06/2015, T‑559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 131).

It is true that, by virtue of the principle of interdependence, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa. However, there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even for identical goods and where there is a certain degree of similarity between the marks at issue (03/06/2015, T‑559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 132; 27/06/2019, T‑268/18, Luciano Sandrone / DON LUCIANO, EU:T:2019:452, § 104).

Therefore, based on a global assessment of all the relevant factors, it is concluded that all the differences described above will not go unnoticed to the public and are sufficient to justify the conclusion that the consumers are unlikely to confuse or associate the signs in question, even in relation to identical goods.

Considering all the above there is no likelihood of confusion on the part of the public. 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, 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

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Peter QUAY

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 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.