OPPOSITION Nо B 3 090 467

 

Exportaciones Aranda, S.L., Carretera Nazaret-Oliva, 2, 46712 Piles (Valencia), Spain (opponent), represented by Vicente Codoñer Molina, c/ Moratín, nº 11, Pta. 19, 46002 Valencia, Spain (professional representative) 

 

a g a i n s t

 

Ανωνυμος Βιομηχανικη Εταιρεια Οινοποιϊα Ποτοποιϊα Αιγιου, Γεφυρα Μεγανιτη, Αιγιο, 25100 Αιγιο, Greece (applicant), represented by Παναγιωτης Περιβολαρης, Υψηλων Αλωνιων 24, 26224 Πατρα, Greece (professional representative).

On 12/02/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 090 467 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 042 207 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 18 042 207 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 2 706 273, (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 European Union trade mark registration No 2 706 273.

 

a) The goods

 

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

Class 33: Alcoholic beverages (except beer).

The contested goods are the following:

 

Class 33: Wines.

The contested wines are included in the broad category of the opponent’s alcoholic beverages (except beer). 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 whose degree of attention is average.

c) The signs

 

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

The elements ‘PHILOSOPHY’, ‘SYRAH’ and ‘RED WINE’ of the contested sign are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

 

The verbal element ‘FILOSOFO’ of the earlier mark has no meaning for the relevant public and it is, therefore, distinctive for the relevant goods in Class 33.

The earlier mark contains a representation of a head of an elderly man which is distinctive for the relevant goods. However, the figurative elements and aspects of the mark, the ornamentation, the colours, banal rectangular backgrounds, stylisation, shadow effects, will have less impact on the consumers. 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).

The verbal element ‘PHILOSOPHY’ of the contested sign will be perceived as ‘the study of the fundamental nature of knowledge, reality, and existence, and the basis and limits of human understanding’ (information extracted from Oxford English Dictionary on 10/02/2021 at https://www.oed.com/view/Entry/142505?rskey=vgU23S&result=1&isAdvanced=false#eid). As it is not descriptive, allusive or otherwise weak it is distinctive for the relevant goods in Class 33.

The verbal element ‘CAVINO’ of the contested sign has no meaning for the relevant public and it is, therefore, distinctive. However, contrary to the assertions of the applicant, due to its much smaller size and position within the sign it will not attract the attention of the relevant public and will have less impact on it.

The elements ‘RED WINE’, ‘SYRAH’ and ‘750 ml’ describe the relevant goods, the variety of grapes of which they are produced and the volume of the package in which they are offered. Consequently, these elements are non-distinctive. Moreover, due to their purely descriptive character it is highly likely that they will not be pronounced by the relevant consumers.

The figurative elements of the contested sign, a group of human figures playing musical instruments and drinking depicted in ancient Greek style, will be associated with a festive celebration. This composition is not descriptive in relation to the relevant goods as it does not describe a characteristic of the services or the goods at issue. Consequently, these elements have a distinctive character. The remaining figurative elements and aspects, colours, stylisation, frame, etc., which are merely decorative, are considered weak. Moreover, as mentioned above, when signs consist of both verbal and figurative components the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.

The earlier mark has no element that could be considered clearly more dominant than other elements. 

 

The elements ‘PHILOSOPHY’ and the festivity scene in the contested sign are co-dominant elements as they are the most eye-catching.

 

Visually, the signs coincide in the letters ‘(*)ILOSO(*)(*)’. They differ in the remaining letters, verbal and figurative elements, of weak or non-distinctive character or with less impact, as explained above.

 

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

 

Aurally, the pronunciation of the signs coincides in the sounds /f*losof/. The letter ‘I’ of the earlier mark can be pronounced either as /ai/ or as /i/; consequently, the earlier mark can be pronounced as either /failosofo/ or /filosofo/. The pronunciation differs in the sound of the final letters ‛O’ of the earlier mark and ‘Y’ of the contested sign. The pronunciation of the contested sign differs also in the elements ‘CAVINO’ and ‘SYRAH / RED WINE / 750 ml’. However, due to their secondary or non-distinctive character, the Opposition Division considers they will not be pronounced (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44).

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 a dissimilar meaning, the signs are conceptually not 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, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

According to case-law, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical. They target the public at large whose degree of attentiveness is average.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually similar to a low degree, aurally highly similar and conceptually not similar. In particular, the marks coincide almost entirely in the pronunciation of their distinctive verbal elements ‘FILOSOFO’, which constitutes the only verbal element of the earlier mark, and ‘PHILOSOPHY’, which is the co-dominant element of the contested sign.

The differences between the signs lie in the differing letters – ‘F’ and ‘O’ in the earlier mark and ‘PH’ and ‘Y’ in the contested sign, in the figurative elements and aspects of the signs and in the descriptive verbal elements of the contested sign ‘SYRAH’, ‘RED WINE’ and ‘750 ml’. As the differences between the signs are mainly confined to non-distinctive, weak or secondary elements and aspects, they cannot outweigh the similarities between the signs and are not sufficient to exclude a likelihood of confusion.

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). In this case, it is considered that the aural similarity between the signs, together with the identity of the goods herein involved, are clearly enough to counteract their dissimilarities, and to lead consumers to confusion as regards the commercial origin of those identical goods.

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.

  

The applicant argues that it has been using its company name as the trade mark ‘CAVINO’ since 1986 when it applied for a registration in Greece and that the trade mark is still valid. Furthermore, it explains that it owns various Greek, European Union and international trade mark registrations which include the element ‘CAVINO’ and that it exports various alcoholic beverages under these trade marks within and outside the European Union. Finally, the applicant claims that it has won several wine competitions with wines using the element ‘CAVINO’.

However, as stated above in section c) of this decision, the element ‘CAVINO’ although distinctive, is much smaller than the other distinctive verbal element, ‘PHILOSOPHY’ and, consequently, will have less impact on the relevant public.

Furthermore, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

 

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

 

Considering all the above, there is a likelihood of confusion on the part of the English-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 European Union trade mark registration No 2 706 273. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier right European Union trade mark registration No 2 706 273 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

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

 

 

Valeria ANCHINI

Tzvetelina IANTCHEVA

Begoña URIARTE VALIENTE

 

 

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.