OPPOSITION No B 3 087 189

Groupe LFE B.V., Dierenriem 5, 3738 TP Maartensdijk, Netherlands (opponent), represented by Landmark B.V., Nijverheidsweg-Noord 86c, 3812 PN Amersfoort, Netherlands (professional representative)

a g a i n s t

Società Semplice Agricola Punto Zero, Galleria Ezzelino 5, 35139 Padua, Italy (applicant).

On 17/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 189 is upheld for all the contested goods.

2. European Union trade mark application No 18 031 917 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 18 031 917 for the figurative mark . The opposition is based on Benelux trade mark registration No 1 038 257 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.

a) The goods

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

Class 33: Wine, low-alcoholic wine and alcohol free wine.

The contested goods are the following:

Class 33: Wine; Grappa.

Wine is identically contained in both lists of goods.

The contested grappa is similar to the opponent’s wine. They have the same nature and method of use, and they are sold through the same channels of distribution. Furthermore, they target the same public and are goods 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 and similar are directed at the public at large. It is settled case-law that wines – and alcoholic drinks – target the public at large that displays an average degree of attention (13/10/2017, T‑434/16, CONTADO DEL GRIFO (fig.) / EL GRIFO (fig.) et al., EU:T:2017:721, § 29; 02/02/2016, T‑541/14, ILLIRIA (fig.) / CASTILLO DE LIRIA et al., EU:T:2016:51, § 23; 13/09/2013, T‑320/10, Castel, EU:T:2013:424, § 51; 16/12/2008, T‑259/06, Manso de Velasco, EU:T:2008:575, § 27).

The degree of attention will be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The common element ‘ZERO’ and the word ‘POINT’ are meaningful in certain territories, for example in those where French is understood. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

Both signs are figurative. The earlier mark is composed of the word ‘ZERO’ in a stylised upper-case grey font that is repeated below in a reverse mirror-like form. Between them, in a smaller size, is the word ‘POINT’ in a standard upper-case black font. The figurative elements of the sign have an average distinctiveness. The word ‘ZERO’ will be understood by the relevant public as it is a French word referring to the numeral 0 or nil. This term is commonly used throughout European Union countries to indicate that a beverage does not contain calories, sugar or alcohol (01/03/2011, R 380/2010‑2, ZYRO / zero). In this case, ‘ZERO’, therefore, alludes to some characteristics of the relevant goods and is weak for the French-speaking public in relation to all the goods. The word ‘POINT’ in French means a dot, location or position. Due to its central position, despite being smaller, it is a co-dominant element in the sign. As it is meaningless in relation to the relevant goods, it has an average distinctiveness in relation to them. As a whole, the sign ‘POINT ZERO’ has no particular meaning per se or would eventually be perceived as referring to the location of ‘ZERO’ goods.

The contested sign is composed of the words ‘PUNT’ and ‘ZERO’ in a standard upper-case black font. Between them is a yellow dot, which can be seen as decorative or as a repetition of the previous concept of ‘PUNT’. It has an average degree of distinctiveness. The word ‘ZERO’ has the same meaning as explained above and is weak in relation to the relevant goods. The word ‘PUNT’ will be associated with the same meaning as ‘POINT’ by the majority of the relevant public, due to their coinciding letters and the presence of the yellow dot. It has an average degree of distinctiveness. The verbal elements in the contested sign are co-dominant elements.

The verbal elements ‘POINT’ and ‘PUNT’ are the most distinctive verbal elements of both signs.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the word ‘ZERO’ and in three letters of their distinctive elements ‘POINT’ and ‘PUNT’. However, they differ in the figurative elements described above, in the mirrored repetition of the word ‘ZERO’ of the earlier mark and in the different position of the words. The earlier mark’s words are in three rows, whereas the contested sign’s elements are all on the same single row.

The signs are visually similar to the extent that they coincide in the word ‘ZERO’, which is weak, and in their three shared letters, ‘P’ and ‘NT’, which are in the first word of the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ZERO’ present identically in both signs and in the sound of the letters ‘P’ and ‘NT’. The pronunciation differs in the sound of the letters ‘OI’ of the earlier mark and ‛U’ of the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meanings, the signs are conceptually identical.

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. Considering everything stated in section c) of this decision, the distinctiveness of the earlier mark must be seen as low, as the element ‘ZERO’ is weak in relation to the relevant goods. In the present case, the earlier mark is registered and, therefore, it is considered to have at least a minimum degree of distinctiveness.

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 which 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).

The goods are partly identical and partly similar and the degree of attention on the part of the public is average.

The signs are visually similar to a low degree, aurally similar to a high degree, and conceptually identical. The signs coincide in their verbal element ‘ZERO’, which is weak and in the similar and distinctive words ‘POINT’ and ‘PUNT’.

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.

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).

The earlier mark has at least a minimum degree of distinctiveness. Even in the case that the distinctiveness of the earlier mark was considered to be lower than normal, the Court has emphasised on several occasions that a finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weaker distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

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 applicant argued that the opponent’s goods under its trade mark are only wines, not other types of alcohol drinks and filed a document showing the result of a Google search. However, when assessing likelihood of confusion, the signs have to be compared in relation to the goods and services covered by the earlier right and those for which registration is sought. The applicant questioned the intentions of the opponent when filing the opposition and submitted some evidence regarding a previous attempt to license its trade mark to the applicant. However, and given that the opponent substantiated its entitlement to file the opposition under Article 46(1)(a) EUTMR, these arguments are not considered to be relevant.

Considering all the above, the identity and similarity of the goods, the interdependence principle and the crucial factor of the importance of the high phonetic similarity for the relevant goods, there is a likelihood of confusion on the part of the French-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 Benelux trade mark registration No 1 038 257. 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Andrea VALISA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.