OPPOSITION No B 3 079 462

Bodegas Murviedro, S.A., Ampliación-P.I. El Romeral s/n, 46340 Requena (Valencia), Spain (opponent), represented by Adelaida Espinosa Cuartero, c/ San Cristobal, 5-5ª, 46003 Valencia, Spain (professional representative)

a g a i n s t

Moser & Ragucci GbR . John Lorenz Moser und Raphael Ragucci, Kaiserin-Augusta-Allee 28, 10553 Berlin, Germany (applicant), represented by Christopher Mueller, Schulze Küster Müller Mueller Jangl Leopoldstrasse 87, 80802 München, Germany (professional representative).

On 31/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 462 is upheld for all the contested goods, namely

Class 33: Pre-mixed alcoholic beverages, other than beer-based; cocktails; potable spirits; pre-mixed alcoholic beverages; spirits [beverages]; wine coolers [drinks]; alcopops; vodka; alcoholic energy drinks; spirits and liquors; alcoholic beverages (except beer); sparkling wines.

2. European Union trade mark application No 18 024 308 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 024 308 ‘Karneval Vodka’ (word mark), namely against all the contested goods in Class 33. The opposition is based on European Union trade mark registration No 3 613 064 ‘CARNAVAL’ (word 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.

a) The goods

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

Class 33: Wines.

The contested goods are the following:

Class 33: Pre-mixed alcoholic beverages, other than beer-based; cocktails; potable spirits; pre-mixed alcoholic beverages; spirits [beverages]; wine coolers [drinks]; alcopops; vodka; alcoholic energy drinks; spirits and liquors; alcoholic beverages (except beer); sparkling wines.

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 alcoholic beverages (except beer) includes as a broader category the opponent’s wines. Since the Office cannot dissect ex officio the broader category of the contested goods, they are identical to the opponent’s goods.

The contested sparking wines are included within the broader category of the opponent’s wines. Therefore, they are identical.

The opponent’s wines are highly similar to the contested wine coolers [drinks] as they have the same nature. They usually coincide in producer, relevant public, distribution channels and method of use. Furthermore they are in competition.

The remaining contested goods pre-mixed alcoholic beverages, other than beer-based; cocktails; potable spirits; pre-mixed alcoholic beverages; spirits [beverages]; alcopops; vodka; alcoholic energy drinks; spirits and liquors are at least similar to the opponent’s wines as they have the same nature. They usually coincide in relevant public, distribution channels and method of use.

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 or similar (to varying degrees) are directed at the public at large for which the degree of attention is average.

c) The signs

CARNAVAL	Karneval Vodka
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 earlier mark consists of the word ‘CARNAVAL’. In the case of word marks without any unusual capitalisation of its letters, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

Given that ‘CARNAVAL’ word is closely similar to the English word ‘carnival’ it will be perceived by the English-speaking part of the relevant public as referring to a festive occasion or period marked by merrymaking, processions, etc: esp in some Roman Catholic countries, the period just before Lent (information extracted from Collins English dictionary on 12/03/2021 at https://www.collinsdictionary.com/dictionary/english/carnival). Furthermore, on the basis that this word is either identical with, or closely similar also to, the corresponding word in other languages of the European Union (e.g. ‘carnaval’ in French and Spanish, ‘carnevale’ in Italian, ‘Karneval’/’KARNEVAL’ in German, Czech, Slovak, Swedish), it will be understood by all or, in any event, the vast majority of the relevant public in the European Union as having the said meaning. As this meaning bears no direct reference to the goods in question, it is normally distinctive.

The contested sign consists of the words ‘Karneval’ and ‘Vodka’. For the reasons set out in the previous paragraph, the word ‘Karneval’ will be understood by either all or, in any event, the vast majority of the relevant public, as described above and, as this meaning bears no direct reference to the relevant goods, it is normally distinctive.

The word ‘Vodka’ will be understood by the relevant consumers as referring to the well-known alcoholic drink bearing that name. For the contested goods wine coolers [drinks] and sparkling wines the word ‘Vodka’ will be perceived as being merely a reference to a type of alcoholic drink and not as an indicator of trade origin such that it is weakly distinctive, while for the rest of the contested goods, for which it is merely descriptive of their contents, it is non 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 the letters ‘*ARN*VAL’ of the words ‘CARNAVAL’ and ‘Karneval’ respectively, differing in the first letters, ‘C’ and ‘K’, and fifth letters ‘A’ and ‘E’ of those words respectively as well as in the additional word ‘Vodka’ of the contested sign.

Taking into account that the said word ‘Vodka’ of the contested sign is non distinctive of some of the relevant goods and weakly distinctive of the rest thereof and comes in second place in that sign, as well as the fact that for at least part of the relevant public, the letters ‘C’ and ‘K’ are interchangeable, especially at the start of words, so that the visual impact of this letter difference is somewhat diminished, the Opposition Division considers that the signs at issue are visually similar at least to an average degree.

Aurally, while for some of the relevant public the sound of the words ‘CARNAVAL’ and ‘Karneval’ is so closely similar as to be likely to be perceived as being virtually identical (e.g. the English speaking part), for another part of the relevant public the sound of these two words is, in any event, highly similar.

Subject to the above, the signs differ in the sound of the additional word ’Vodka’ of the contested sign. However, the aural impact of this word is reduced given its non-distinctive or weakly distinctive nature for the relevant goods. On this basis, the signs are considered to be aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the vast majority of the relevant public, the signs coincide in the meaning of the word ‘CARNAVAL’/’Karneval’ differing in the meaning of the additional word ‘Vodka’ of the contested sign which is, however, lacking in distinctive character or otherwise weakly distinctive. On this basis, the signs are considered to be conceptually highly similar.

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.

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).

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 signs at issue have been found to be visually similar to at least an average degree, and aurally and conceptually similar to a high degree. The goods are partly identical and partly similar to varying degrees. The earlier mark is normally distinctive of the goods in question and the degree of attention is average.

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). It is a relevant factor in the assessment of confusion, therefore, that in the present case the signs at issue are aurally similar to a high degree.

Taking all the relevant factors into consideration the Opposition Division considers that the strong overall similarities between the signs outweigh the differences that pertain to the additional word ‘Vodka’ of the contested sign, which is non distinctive of some of the goods and weakly distinctive of the rest, as well as the different letters at first and fifth positions of the words ‘Carnaval’ and ‘Karneval’ respectively which do not, however, detract from the highly similar perception given by those two words from the perspective of the relevant consumer.

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 613 064 ‘CARNAVAL’. It follows that the contested trade mark must be rejected for all the contested goods.

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

Vít MAHELKA

Kieran HENEGHAN

María del Carmen SUCH SÁNCHEZ

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.