OPPOSITION Nо B 3 085 847

 

Condado Portucalense - Sociedade De Vinhos, Lda., Zona Industrial Das Corredouras, Armazém T, 2630-355 Arruda dos Vinhos, Portugal (opponent)

 

a g a i n s t

 

Bartex Bartol Spółka Z Ograniczoną Odpowiedzialnością Sp. K., Paproć 111, 64-300 Nowy Tomyśl, Poland (applicant), represented by Romuald Suszczewicz "patentbox" Kancelaria Patentowa, Ul. Piekary 6/17, 61-823 Poznań, Poland (professional representative).

On 14/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 085 847 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 18 052 517 ‘VIONELLI’ (word mark). The opposition is based on inter alia,  national trade mark registration (Portugal) No 572 340, ‘VIOLINO’ (word mark). The opponent invoked Article 8(1)(a) and 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 national trade mark registration (Portugal) No 572 340, ‘VIOLINO’ (word mark).

 

a) 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) cover wines, amongst other alcoholic beverages, and hence they overlap with the opponent’s wine. 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.

  

It is settled case-law that, firstly, the goods at issue, which are all alcoholic beverages, are for everyday consumption and are normally widely distributed, ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafés and that, secondly, the consumer of alcohol is a member of the general public, who will demonstrate an average level of attention when purchasing such goods (see, to that effect, 19/01/2017, T-701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein). In the present case, therefore, the goods found to be identical are directed at the public at large. The degree of attention is average.

 

c) The signs

 

VIOLINO	VIONELLI
Earlier trade mark	Contested sign

 

  

The relevant territory is Portugal.

 

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 consists of the word ‘VIOLINO‘ and the contested mark consists of the word ‘VIONELLI‘. The earlier mark has a meaning in the relevant territory, as it is the Portugese word for violin. The contested mark does not have a meaning in Portugese, however, it is likely that the it will be perceived as a surname of Italian origin.

Visually, the signs coincide in their first three letters, ‘VIO’ as well as the letters ‘LI’, though their position is not the same within the marks. The marks differ in other letters of the mark, that is, ‘NO’ and ‘NEL’. The earlier mark is comprised of six letters and the contested mark is comprised of seven letters. The length of the signs may influence the effect of the differences between the marks. In this case, the similar length of the signs means that the public will not easily notice the differences. Indeed, the identical beginning of the marks and the same letters at the middle/end of the marks give a similar overall impression of the marks.

Considering the visual similarities of the marks and bearing in mind that the consumers usually focus on the beginning of marks, they are considered visually similar to an average degree.

Aurally, the signs coincide in the sound of the first three letters ‘VIO’ as well as the sound of the letters ‘LI’ towards the middle/end of the marks and they differ in other letters of the marks, as mentioned above. Furthermore, the marks both have four syllables and have a similar rhythm and intonation. Considering the aural similarities, the marks are considered aurally similar to an average degree.

 

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

 

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

 

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 goods are identical and they target the public at large, whose degree of attention is average. The distinctiveness of the earlier mark is normal. The marks have been found visually and aurally similar to an average degree and conceptually dissimilar, as the earlier mark has a specific meaning in the relevant territory, as it is the Portugese word for violin. The contested mark does not have a meaning in Portugese, however, it is likely that the it will be perceived as a surname of Italian origin.

Where at least one of the signs at issue has a clear and specific meaning that can be grasped immediately, the resulting conceptual difference may offset the visual and aural similarity between the signs (12/01/2006, C‑361/04, Picaro, EU:C:2006:25, § 20). This is the so-called principle of ‘neutralisation’. That impact of conceptual difference is taken into consideration when making the overall assessment of similarity between the signs (05/10/2017, C‑437/16 P, CHEMPIOIL / CHAMPION et al., EU:C:2017:737, § 44; 04/03/2020, C‑328/18 P, BLACK LABEL BY EQUIVALENZA (fig.) / LABELL (fig.) et al., EU:C:2020:156, § 75). This is applicable to the case at hand.

This ‘neutralisation’ argument must be used with caution, taking into account all the facts of the case. In the applicable case, the clear concept of the earlier mark as well as the reference to a family name, in the contested mark make a possible confusion between the marks unlikely.

Consequently, the Opposition Division considers that the meaning that will be attributed to the word elements in both signs by Portuguese consumers creates a significant conceptual difference between the signs that is sufficient to counteract the visual and aural similarities and exclude likelihood of confusion.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

  

The opponent has also based its opposition on the following earlier trade mark:

 

 

national trade mark registration (Portugal) No 601 478,  .

 

 

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains a figurative element which serves to underline the conceptual meaning of the word in the mark and thus, making the marks even more conceptually dissimilar. Moreover, they cover the same goods. Therefore, the outcome cannot be different with respect to the other earlier right invoked.

   

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

 

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

 

 

Vanessa PAGE HOLLAND

Dagný Fjóla JÓHANNSDÓTTIR

Inés GARCÍA LLEDÓ

 

 

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.