OPPOSITION No B 3 085 604

Vinicola Decordi Del Borgo Imperiale - Cortesole S.P.A., Via delle Brede, 6, 26045, Motta Baluffi (Cremona), Italy (opponent), represented by Jacobacci & Partners S.P.A., Piazza Mario Saggin, 2, 35131, Padova, Italy (professional representative)

a g a i n s t

The Company of Urban Wines and Other Liquids Sweden AB, Kämpagatan 3, 53236 Skara, Sweden (applicant), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 21/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 604 is partially upheld, namely for the following contested goods:

Class 32: Beer and brewery products.

Class 33: Alcoholic beverages [except beers].

2. European Union trade mark application No 18 019 312 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 019 312 ‘DÉCOR’. The opposition is based on European Union trade mark registration No 765 792 ‘DECORDI’. 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

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 32: Non-alcoholic beverages; Beer and brewery products; Preparations for making beverages.

Class 33: Alcoholic beverages [except beers]; Preparations for making alcoholic beverages.

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 32

The contested beer and brewery products are similar to the opponent’s alcoholic beverages (except beers). Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. The contested brewery products, apart from some by-products of the beermaking process, such as beer wort and malt wort, also cover such drinks that were brewed (went through a process of steeping, boiling and fermentation), like ale. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Beers, brewery products and alcoholic beverages can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings.

The contested preparations for making beverages include concentrates and extracts for making beverages, other than those in Class 33. These contested goods are considered dissimilar to the opponent’s goods. While the contested goods are essentially ingredients for making beverages, offered both to general public and manufacturers, the opponent’s goods are ready for consumption and aimed essentially at end consumers. Accordingly, these products are made available through different distributions channels and they target different consumers. It is unlikely that producers of alcoholic beverages excluding beer would also be engaged in the production of preparations for making beverages and vice versa. As a result, these goods diverge in their usual origin. Moreover, they differ in their methods of use and purpose. The mere fact that one good is needed for the preparation of another good is not sufficient to establish a degree of similarity because the rule of complementarity applies only to the use of goods and not to their production process.

The contested non-alcoholic beverages are beverages for quenching thirst. These goods are considered dissimilar to alcoholic beverages (except beers) covered by the earlier mark. First of all, an average consumer will not expect the conflicting goods to come from the same undertaking. Secondly, the manufacturing processes of these beverages differ: while alcoholic drinks are made through fermentation or distillation, while non-alcoholic beverages are not. Moreover, the goods will be made available through different sales outlets and in different sections of supermarkets (29/01/2019, R1720/2017-G, ‘Iceberg’, § 65-73 and case-law quoted therein).

Contested goods in Class 33

Alcoholic beverages [except beers] are identically contained in both lists of goods.

The contested preparations for making alcoholic beverages include extracts, essences for making alcoholic drinks while the opponent’s goods are the ready-made alcoholic beverages. The goods have different nature, purpose and methods of use, they are not complementary nor in competition nor do they share the same distribution channels. Furthermore, the goods target different publics. It follows that these goods are dissimilar.

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 or similar are directed at the public at large.

The degree of attention is average, contrary to the arguments of the applicant.

3. The signs

DECORDI	DÉCOR
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 marks are word marks. The earlier mark DECORDI as a whole has no meaning. It cannot be excluded that part of the Italian public would perceive it as a little known surname. For the economy of proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that perceives the mark with no meaning since a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word DÉCOR in the contested mark refers to style or scheme of interior decoration, furnishings at least in English, French and Dutch. The word is understood throughout the relevant territory because of this or because it has close equivalents in all relevant languages (dekor in German and Swedish, dekoor in Estonian, among others). However, the word has no descriptive or allusive connection with any of the goods and therefore is distinctive.

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.

Visually, the signs coincide in their first five letters DÉCOR, considering the accent mark on E as an insignificant difference visually since the capital letters are sometimes written with an accent, sometimes not, and the letter remains E in any case. The marks differ in the last letters DI of the earlier mark. The marks are not short marks, contrary to the arguments of the applicant. The contested mark is encompassed in the beginning of the earlier mark.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the pronunciation of the letters D_COR. The pronunciation of the letters E/É is highly similar if not identical, contrary to the arguments of the applicant, considering the placement of these letter in the overall composition of the mark. The marks differ in the pronunciation of the last letters DI of the earlier mark.

The presence of the acute accent ( ´ ) above the second letter of the contested sign will not result in any substantial phonetical difference as it will be pronounced as ‘E’ in a similar manner as the letter E in the earlier sign, and which may only be more stressed in some languages.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign as explained above, the other sign as a whole 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.

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.

5. Global assessment, other arguments and conclusion

The goods are partially identical and similar, and partially dissimilar. The marks are visually similar to at least an average degree, aurally similar to an average degree and conceptually not similar.

The earlier mark and the contested sign have been found to be aurally and visually similar due to the coincidence in the sequence of the letters DECOR. They differ in the letters DI and the accent mark on the letter E. However, these differences can be easily overlooked, and, in any event cannot outweigh the prevailing coinciding letters perceived by the public. The signs are not short signs contrary to the arguments of the applicant, since they contain five letters or more. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting goods which are identical or similar come from the same or economically linked undertakings.

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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.

The category of goods and services involved may increase the importance of one of the different aspects of similarity between signs (visual, phonetic and conceptual) because of how goods and services are ordered and/or purchased. The visual similarity between signs may also have an increased importance where the goods are ordinary consumer products that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for.

Where goods are ordered orally, the phonetic perception of the sign may also be influenced by factors such as the likely presence of various other sounds perceived by the recipient of the order at the same time. Such considerations are relevant where the goods in question are normally ordered at sales points with an increased noise factor, such as bars or nightclubs. In such cases, attaching particular importance to the phonetic similarity between the signs at issue may be appropriate. These considerations came into play in the finding of likelihood of confusion between the marks below for certain goods in Classes 32 and 33 (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Nevertheless, the broad principle above does not mean that the visual impression can be overlooked for goods normally purchased orally contrary to the arguments of the applicant. Indeed, the General Court has held that although preponderant importance had sometimes been accorded to the phonetic perception of marks for beverages, the phonetic dissimilarities of the marks did not merit particular importance where the specific beverages were widely distributed and sold not only in specialist shops, where they would be ordered orally, but in large shopping centres as well, where they would be purchased visually (03/09/2010, T‑472/08, 61 a nossa alegria, EU:T:2010:347, § 106).

The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same as is the case here, due to the different factual circumstances between the present case and the cases referred to by the applicant.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public 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 rest of the contested goods 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 goods 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Rosario GURRIERI

Erkki Münter

Christophe DU JARDIN

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.