OPPOSITION No B 3 086 876

Polar Music International AB, Banérgatan 16, 115 23, Stockholm, Sweden (opponent), represented by Lane IP Limited, The Forum, St Paul’s, 33 Gutter Lane, London EC2V 8AS, United Kingdom (professional representative)

a g a i n s t

Bodegas Francisco Casas, Avenida de Portugal 175 Oficina, 28011 Madrid, Spain (applicant), represented by Casas Asin S.L., Av. San Francisco Javier, 9, Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018, Sevilla, Spain (professional representative).

On 08/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 876 is upheld for all the contested goods.

2. European Union trade mark application No 18 027 501 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 of European Union trade mark application No 18 027 501 for the word mark ‘VIÑA ABBA’. The opposition is based on the following earlier rights:

- International trade mark registration No 1 494 598 designating the European Union for the word mark ‘ABBA’;

- United Kingdom trade mark registration No 3 357 599 for the word mark ‘ABBA’.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to both earlier rights.

PRELIMINARY REMARK

The applicant claims that the earlier International trade mark designating the European Union No 1 494 598 for the word mark ‘ABBA’ cannot be considered earlier to the contested sign in the sense of Article 8(2) EUTMR, since the date of application of the contested mark is 26/02/2019, whereas the date of filing/registration of the earlier International trade mark is 30/05/2019.

In this regard, Article 8(2)EUTMR reads as follows:

2. For the purposes of paragraph 1, ‘earlier trade mark’ means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i) EU trade marks;

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property; (iii) trade marks registered under international arrangements which have effect in a Member State;

(iv) trade marks registered under international arrangements which have effect in the Union;

(emphasis added)

The priority date of the International trade mark registration basis of the opposition is 30/11/2018 (corresponding to the application date of the UK basic application), as can be seen in one of the documents submitted by the opponent (i.e. an extract from Madrid Monitor) together with the Notice of Opposition. Therefore, the International trade mark registration No 1 494 598 is earlier than the contested mark.

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 International trade mark registration No 1 494 598 designating the European Union for the word mark ‘ABBA’, since this one has a broader territorial scope of protection than the other earlier mark referred to above.

a) The goods

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

Class 33: Alcoholic beverages, (except beer).

The contested goods are, after the limitation carried out on 11/11/2019, the following:

Class 33: Wine.

The contested goods are included in the broad category of goods of the opponent. Therefore, they are identical.

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 are directed at the public at large. The degree of attention paid by consumers during the purchase of these goods is deemed to be average.

c) The signs

ABBA	VIÑA ABBA
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘VIÑA’ means ‘vineyard’ in Spanish. Taking into account the contested goods, from the perspective of the Spanish-speaking part of the public ‘VIÑA’ is considered non-distinctive, as it is a clear reference to the characteristics of the goods (i.e. their origin) The applicant even seems to agree on this point when it argues that the word ‘VIÑA’ ‘defines perfectly what is the origin of the product to be marketed’.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, since from this perspective the impact of the differing element ‘VIÑA’ is greatly reduced.

As regards the conceptual perception of the element ‘ABBA’, the opponent argues that ‘It is clear that the Subject Mark and the Opponent’s Marks will immediately convey to consumers a link to the world famous band ABBA. While the Opponent will go on to provide evidence of reputation in their marks which will help support this point, it is beyond doubt that consumers only associate the word ABBA with the musical band. Therefore the inclusion of ABBA within the mark, will immediately bring to mind the band and create a conceptual similarity between the marks. Accordingly, the Subject Mark and the Opponent’s marks must be considered at least highly conceptually similar’.

In this regard, the Opposition Division notes that, even assuming that the opponent´s argument was proven, and therefore it could be considered that consumers would associate ‘ABBA’ with the name of a music band, this fact, on its own, would not lead the public to assign any other meaning to the word ‘ABBA’ in itself . The term does not appear in Spanish dictionaries (see for instance https://dle.rae.es/abba checked on 31/08/2020). Therefore, the element ‘ABBA’ is meaningless for the Spanish-speaking consumers, and of average distinctive character in relation to all the goods involved. It constitutes the only element forming the earlier mark and the only distinctive element in the contested mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because, as claimed by the applicant, 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. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In the present case, the left part of the contested sign is a non-distinctive word, and the consumer´s attention will be focussed on the following word ‘ABBA’, namely the only distinctive term in the sign.

Visually, the signs coincide in ‘ABBA’, being the only element in the earlier mark and the only distinctive element in the contested sign. The signs are therefore considered visually highly similar.

Aurally, the signs coincide in the sound of ‘ABBA’, which constitutes the entirety of the earlier mark and the only distinctive element in the contested sign, and differ in the sound of the non-distinctive word ‘VIÑA’ in this later sign. Therefore, the marks are aurally highly similar.

Conceptually, reference is made to the findings above. Even if the differing word ‘VIÑA’ has a concept, this is non-distinctive and cannot indicate the commercial origin of the goods. Therefore, in the contested mark the attention of the relevant public will be attracted by the additional fanciful verbal element ‘ABBA’, which has no meaning. The earlier mark is formed only by the meaningless term ‘ABBA’. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

The Opposition Division notes that, assuming that consumers perceived the word ‘ABBA’ as the name of a music band, from this perspective the signs would be conceptually highly similar, since they would coincide in the concept of the music band and differ in that of the non-distinctive word ‘VIÑA’ of the contested mark.

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.

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 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

The signs are, overall, quasi-identical, since the only element forming the earlier mark is the only distinctive element in the contested sign. This leads to considering them visually highly similar, aurally similar to a high degree, and conceptually either highly similar or the conceptual comparison cannot be carried out (depending on the two scenarios described above).

The earlier mark is of average distinctive character.

The goods are identical. They are directed at the public at large, who will pay an average degree of attention during the purchase.

For all of the above, it is clear that consumers will not be able to differentiate the signs, since the only difference is found in a non-distinctive element, which is not capable of identifying the commercial origin of the goods. Therefore, considering the quasi-identity of the signs and the identity of the goods, a likelihood of confusion exists.

The applicant claims that its company has over 30 registered trade marks for Class 33 dating back to 1995 and that this ‘demonstrates the tradition of the Casas family in winemaking, (…) which supports the registration of ‘Viña Abba’ as a trade mark in Europe’. The applicant claims that a list of trade mark registrations in the name of Francisco Casas S.A. is attached as Exhibit 4. However, no attachments were submitted together with the applicant´s arguments. Nevertheless, the applicant´s claim did not refer to the existence of registered trade marks containing the term ‘ABBA’ or bearing any similarities with the signs herein involved. Therefore, this fact is irrelevant and is therefore set aside.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s International trade mark registration No 1 494 598 designating the European Union for the word mark ‘ABBA’.

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 due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Furthermore, as the earlier International trade mark registration No 1 494 598 designating the European Union 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).

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Eva Inés PÉREZ SANTONJA

María del Carmen SUCH SANCHEZ

Helen Louise MOSBACK

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.