OPPOSITION No B 3 081 275

Rotkäppchen-Mumm Sektkellereien GmbH, Sektkellereistr. 5, 06632 Freyburg, Germany (opponent), represented by Lucia Schwab, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)

a g a i n s t

Comercial D Y P LTDA, Los Monjes 12.155, Comuna de las Condes, Santiago, Chile (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 25/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 275 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 of European Union trade mark application No 18 024 002 for the figurative mark . The opposition is based on, inter alia, German trade mark registration No 302 016 008 056 for the figurative mark . 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 German trade mark registration No 302 016 008 056.

a) The goods and services

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

Class 30: Coffee, tea, ice cream.

Class 33: Alcoholic beverages (except beers).

Class 43: Services for providing food and drink.

The contested goods are the following:

Class 32: Alcohol free wine; non-alcoholic beverages; must.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested goods are similar to the opponent’s coffee in Class 30. These goods are in competition and coincide in their distribution channels, relevant pubic and producers.

In relation to the opponent’s argument about the similarity between the contested goods and the opponent’s alcoholic beverages that also include mixed alcoholic beverages, it has to be noted that in Case T-150/17 of 04/10/2018, FLÜGEL / VERLEIHT FLÜGEL et al., EU:T:2018:641,§ 77-84, the Court found that a very large number of alcoholic and non-alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as premixed alcoholic drinks. To consider that those goods should, for that reason alone, be described as similar, when they are not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers, would put a large number of goods which can be described as ‘drinks’ into one and the same category for the purposes of the application of Article 8(1) EUTMR. Thus, it cannot be considered that an alcoholic drink and an energy drink are similar merely because they can be mixed, consumed or marketed together, given that the nature, intended purpose and use of those goods differ, based on the presence of, or absence of alcohol in their composition.

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 similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The verbal element of the contested sign is depicted in stylised hand-written font in white over a red background. The first letter ‘S’ is bigger, the lower line of the letter ‘Z’ is waived and larger, the penultimate letter is highly stylised and not clearly legible, and a line goes out from the upper part of the last letter ‘o’. For the purposes of this comparison, the Opposition Division will focus on the part of the public that will read the penultimate letter of the verbal element of the contested sign as ‘r’ and its verbal element as ‘Sinzero’. The latter is meaningless for the relevant public and distinctive. This is considered to be the most advantageous scenario for the opponent where there is one more identical letter, namely ‘r’. It is acknowledged that the verbal element could also be read as ‘Sinzevo’.

The earlier mark does not have any meaning as such for the relevant public. However, taking into account the visual and aural similarities between the sequence ‘SPRIZZ’ at the beginning of the earlier mark and the German word ‘spritz’, which is a wine-based cocktail, at least part of the public in question will associate the former with the latter. Bearing in mind that the relevant goods are beverages, the sign has a weak degree of distinctiveness for this part of the public. For the rest of the public, the sign has a normal degree of distinctiveness.

Albeit a figurative mark, the earlier mark does not possess any extraordinary stylisation. Its verbal element is depicted in standard type font where the ‘ZZ’ letters are bigger and there is an accent above the ‘o’.

Account is taken of the fact that 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 the first letter ‘S’ and in their last letters ‘ZERO’, although the earlier mark has an accent above the ‘o’. However, they differ in their remaining letters, ‘PR’ of the earlier mark and ‘N’ of the contested sign. It is true that the signs also share the letter ‘I’. However, this letter is placed on different positions in the signs, which makes it unlikely that the relevant public will notice it. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of them, but they cannot, for that reason alone, be regarded as visually or aurally similar. To this extent, the opponent’s argument that the contested mark is entirely included in the earlier mark with the exception of the letter ‘N’ must be put aside. Indeed, the signs in conflict share some letters, as described above, but only the last four build an identical string.

Furthermore, the signs differ visually in their stylisations. Though all the decorative aspects of the contested sign described above have a secondary role in the consumer’s overall perception of the sign (the red background is a non-distinctive common place stylisation), they do contribute to a different overall impression between the signs in conflict. Considering also that the main coincidence is at the end of the signs, which is the less prominent part, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‛I’ and in the syllables ‘ZERO’. It has to be pointed out that the consonants ‘SP’ of the earlier mark will be pronounced by the German public as {schp}. Hence the first sound of the earlier mark is different from the one of the contested sign, which is ‘S’. In addition, the earlier mark will be pronounced by the German consumers as SPRIZZ/ERO, whereas the contested sign as SIN/ZERO. This means that both the beginnings and the ends are quite different: SPRIZZ vs. SIN and ERO vs. ZERO. This, contrary to the opponent’s opinion, will not go unnoticed by the average consumer. Considering all these particularities, the Opposition Division finds the signs aurally similar to a very low degree.

Conceptually, for the part of the public that will perceive a meaning in the earlier mark, the signs are conceptually not similar. For the part of the public for which the earlier sign has no meaning, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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, but only stated that its mark is ‘well used for mixed beverages containing wine and water’ without providing any proof for this.

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 component in the mark for a part of the public, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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 goods in conflict are similar. They target the public at large whose level of attention will be average.

The signs are visually similar to a low degree and aurally to a very low degree only to the extent that they share some letters/sounds. Conceptually the signs are not similar for part of the public, while for another part the conceptual comparison is not possible and does not influence the outcome.

Even considering that that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), the fact that the conflicting marks have some letters in common in the same position is not sufficient in itself to conclude that these are similar, especially when they create a sufficient distance between the overall impressions given by the marks. The contrary would mean that similarity should be found whenever two sings share some identical string of letters without taking into account the impact of this coincidence in the overall perception of the signs considering other factors such as stylisation, pronunciation, etc.

In the case at hand 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).’

The opponent refers to previous decisions of the Court to support its arguments. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. Firstly, it has to be pointed out that in none of the cited cases the similarity between the signs in conflict is low. On the contrary, the signs are visually and aurally at least similar to an average degree and in all the cases except one, the goods and/or services are also partly identical.

- In T-353/09, ‘Mtronix vs. Montronix’ the goods and services have been found to be partly identical and partly similar to an average degree. In addition, the signs in conflicts are visually highly similar, aurally at least similar and conceptually similar.

- In T-186/14, ‘NOxtreme vs. X-TREME the goods and services are partly identical and partly similar to a high degree. The signs are conceptually, visually and aurally similar to an average degree.

- In T-501/12, ‘OSTASA vs. PENTASA’, the goods are identical.

- In T-624/11, ‘ONESTO vs. ENSTO’, the goods are identical, whereas the signs are visually and aurally similar.

- In T-462/09, RAGOLIZIA vs. FAVOLIZIA’, the goods are identical, whereas the signs are visually and aurally similar to a certain degree.

- In T-551/12, ‘REBELLA vs. SEMBELLA‘, the goods are partly identical and partly similar. The signs are visually and aurally similar.

- In T-312/15, MITOCHRON vs. MIVACRON, the goods are partly identical, partly similar, whereas the signs are visually and aurally similar.

- In T-553/10, FARMASUL vs. MANASUL, the goods are partly identical, partly similar, whereas the signs are visually and aurally similar.

- In T-423/08, HUNAGRO vs. UNIAGRO, the goods are highly similar, the signs are visually, aurally and conceptually similar.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on international trade mark registration No 1 317 231 for the figurative mark designating the European Union. This mark is registered for alcoholic beverages (except beers) in Class 33 and the opponent based its opposition on these goods. However, for the reasons explained above alcoholic beverages (except beers) in Class 33 are dissimilar to the contested alcohol free wine; non-alcoholic beverages; must in Class 32. According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition based on this mark 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

Valeria ANCHINI

Meglena BENOVA

Matthias KLOPFER

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.