OPPOSITION No B 3 087 907

Pagos del Rey, S.L., Autovía de Andalucía, Km. 199, Valdepeñas (Ciudad Real), Spain (opponent), represented by José María Sánchez Wolff, Avda/ Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

Foodex, 4 impasse des carrières, 75016 Paris, France (applicant), represented by Olivier Paquereau, 21 boulevard Haussmann, 75009 Paris, France (professional representative).

On 24/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 907 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 047 005 for the word mark ‘BLoomin’ SAKE’. The opposition is based on European Union trade mark registration No 15 117 997 for the word mark ‘BLUME’. 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.

1. The goods

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

Class 33: Wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wine. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. 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 is considered average.

3. The signs and the distinctiveness of the earlier mark

BLUME	BLoomin’ SAKE
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).

Bearing in mind that the contested goods are alcoholic beverages, the element ‘SAKE’ of the contested sign is likely to be understood throughout the European Union as a Japanese alcoholic drink that is made from rice. For instance, it is included in the English, German and Spanish dictionaries. Therefore, this element is non‑distinctive for the relevant goods.

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 element ‘BLUME’ constituting the earlier mark will be understood by the German‑speaking part of the public as ‘flower’ and it is meaningless for the remaining part of the public. In any case, it has no relation to the goods in question and, therefore, the distinctiveness of the earlier mark must be seen as normal.

The element BLoomin’ of the contested sign will be perceived by the English‑speaking part of the public as the adjective ‘blooming’, meaning ‘glowing, radiant’. Accordingly, this adjective qualifies the noun ‘sake’ that follows, and the whole meaning of the contested sign for the English‑speaking part of the public is that of ‘fantastic sake’. However, it is unusual to describe a drink as ‘blooming’. Therefore, the distinctive character of the element BLoomin’ is average in relation to the goods in question. For the remaining part of the public, it has no meaning and is also distinctive.

For the purpose of the present comparison, although the second element in the contested sign, ‘SAKE’, is non‑distinctive, it cannot be disregarded as it is part of a word mark where all the elements are perceived at once (i.e. there is no dominant element). Indeed, the contested sign is made up of two words and, at least for the English‑speaking part of the public, they will be perceived as an adjective that qualifies a noun. Accordingly, even if BLoomin’ is a more distinctive element than ‘SAKE’, the contested sign will not be shortened and both elements will be considered.

Taking into account the foregoing, the present comparison of the signs will take into account all possible scenarios.

Visually, the signs basically coincide in their first two letters ‘BL*’, since the letters ‘M’ and ‘E’ are also present in the contested sign although in different positions and elements. The signs differ in their vowel sequence, namely ‘U-E’ in the earlier mark versus ‘OO-I’ and ‘A-E’ in the contested sign. They also differ in their lengths and structures, namely a five‑letter word versus two words of seven and fours letters, respectively.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their first two letters ‘BL’. For the part of the relevant public for which the vowels ‘OO’ will be pronounced in a similar way to the vowel ‘U’, such as for the French‑ and English‑speaking part of the public, the sound of the respective letters ‘BLUM*’ of the earlier mark and ‘BLOOM*’ of the contested sign will be phonetically similar. However, the signs differ in the sound of the rest of the letters of this element, as well as in the pronunciation of the additional element in the contested sign, ‘SAKE’.

In any case, the earlier mark will be pronounced in one or two syllables, whereas the contested sign will be pronounced in four syllables. Consequently, the signs have different rhythms and intonations.

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

Conceptually, although the English‑speaking part of the public will perceive the meaning of the contested sign as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the relevant public.

For the German‑speaking part of the public, reference is made to the previous assertions concerning the semantic content conveyed by the marks, namely ‘BLUME’ and the element ‘SAKE’ of the contested sign. As the signs will be associated with a dissimilar meaning, the signs are conceptually not similar.

For the remaining part of the relevant public, although it will perceive the meaning of the element ‘SAKE’ of the contested sign as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the relevant public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, 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.

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 the present case, the goods are identical and target the public at large with an average degree of attention.

The distinctiveness of the earlier mark is normal.

The signs are visually similar to a very low degree and aurally similar to a low degree, as they only coincide in a few letters and their sound, as explained in section c) of the present decision. Indeed, the signs have different lengths, structures, rhythms and intonations. Furthermore, the signs are conceptually not similar for the relevant public.

Taking into account the abovementioned and contrary to the opponent’s observations, the relevant consumers will not associate the contested sign with the earlier mark. Market practice shows that whilst brand owners have different variations of their marks for different lines, they still maintain the root of their mark. As already stated, the opponent’s earlier mark is not included in the contested sign since they only coincide in a few letters.

Therefore, the Opposition Division considers that the similarities between the signs are clearly not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even if the goods are identical and taking into account the interdependence principle already mentioned, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lucinda CARNEY

Marta GARCÍA COLLADO

María Carmen SUCH SANCHEZ

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.