OPPOSITION No B 3 085 328

Comercializadora Isleña de Distribución, S.A., Carretera General del Norte km. 13, 38296 Los Rodeos (La Laguna), Spain (opponent), represented by José María Sánchez Wolff, Avda/ Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

Agrovia-Sociedade Agro-Pecuária S.A., Quinta Da Lapa-Arrifana, 2065-360 Manique Do Intendente, Portugal (applicant), represented by Gabriel Ferreira, Edifício Tecnovia - Casal do Deserto, 2740-031 Porto Salvo, Portugal (professional representative).

On 27/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 328 is upheld for all the contested goods.

2. European Union trade mark application No 18 027 702 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 18 027 702 (figurative mark). The opposition is based on Spanish trade mark registration No 1 577 657 ‘ANANA’ (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 the following:

Class 32: Beers; minerals and aerated waters and other non-alcoholic drinks; fruit drinks, fruit juices; syrups and other preparations for making drinks.

The contested goods are the following:

Class 32: Beer.

Class 33: Wine.

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 is identically contained in the opponent’s list of goods (in plural).

Contested goods in Class 33

The contested wine is similar to the opponent’s beers in Class 32. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. Furthermore, they have the same method of use and are in competition.

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 are directed at the public at large.

The degree of attention is considered average.

c) The signs

ANANA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 is a word mark composed of one verbal element, ‘ANANA’. This word does not have any meaning for the relevant public and is therefore normally distinctive in relation to the goods in question.

The contested sign is a figurative mark composed of a single verbal element ‘Nana’ in rather basic title-case orange letters in italics. The verbal element ‘Nana’ could be understood in the relevant territory as a lullaby. As this meaning is not related to any characteristics of the goods in question, it has a normal degree of distinctiveness.

Visually, the signs coincide in the letters ‘NANA’. However, they differ in the additional first letter ‘A’ of the earlier mark.

The signs also differ in the stylisation of the verbal element of the contested sign, namely the typeface and colour of the letters. However, this stylisation is purely decorative and is not considered particularly elaborate or sophisticated, so it will not distract the consumer’s attention from the word it embellishes.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NANA’, present identically in both signs. The pronunciation differs only in the sound of the additional first letter ‘A’ of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign’s verbal element as explained above, the other sign 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.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Account is taken of the fact 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).

As concluded above, the contested goods are identical or similar to the opponent’s goods and they target the public at large, who displays an average degree of attention. The earlier trade mark has a normal degree of inherent distinctiveness.

The conflicting signs are visually similar to an average degree, aurally similar to a high degree and conceptually not similar, as explained above in section c) of this decision. In fact, all the letters and sounds of the contested sign are included in the earlier mark, with the only difference being the first additional letter/sound of the earlier mark and the stylisation of the contested sign, which is of a decorative nature. Therefore, the Opposition Division is of the opinion that these differences are insufficient to counteract the overall similarity of the signs.

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).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 1 577 657. It follows that the contested sign 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

Begoña URIARTE VALIENTE

Martin MITURA

Anna BAKALARZ

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.