OPPOSITION No B 3 090 164

Joseph Phelps Vineyards LLC, 200 Taplin Road, St. Helena, California 94574, United States of America (opponent), represented by Kahler Käck Mollekopf Partnerschaft von Patentanwälten mbB, Vorderer Anger 239, 86899 Landsberg am Lech, Germany (professional representative)

a g a i n s t

Pałac Zajączkowo Sp. z o.o. Sp.k., Zajączkowo 36, 62-045 Pniewy, Poland (applicant), represented by Arkadiusz Michalak, Ul. Masarska 9/6, 31-539 Kraków, Poland (professional representative).

On 28/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 164 is upheld for all the contested goods.

2. European Union trade mark application No 18 054 111 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 18 054 111 ‘Insigniis Leporis’ (word). The opposition is based on, inter alia, European Union trade mark registration No 3 412 293 ‘INSIGNIA’ (word). The opponent invoked Article 8(1)(b) and (5) 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 3 412 293.

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 goods include, as a broader category, the opponent’s wine. Therefore, since the Opposition Division may not dissect ex officio the broad category of the applicant’s goods, the goods under comparison are considered 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. The degree of attention is considered to be average, since the goods are not particularly expensive or require specific attention upon purchase for another reasons.

c) The signs

INSIGNIA	Insigniis Leporis
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.

In German ‘Insigne’ (das) (‘Insignien’ in plural), means insignia, i.e. a badge or a distinguishing mark of office or honour; an emblem of a nation, person, etc. Given the closeness of the word to ‘INSIGNIA’, which constitutes the earlier mark, and to ‘Insigniis’, included in the contested sign, it is possible that a part of the public sees these two elements as invented words, suggesting the same concept of insignia. This meaning is not related to the goods at issue. Nevertheless, since this word is rarely used and it has no connection whatsoever with the relevant goods, it is likely that another part of the public sees the mentioned elements of the marks as meaningless terms. Irrespective of the perception of these elements, they are normally distinctive for the German public. Even though the described perception might be relevant also for other EU Member States, which contain similar words denoting insignia, the Opposition Division considers it appropriate to focus the analysis on the perception of the German-speaking part of the public, such as the consumers in Germany and Austria, in order to avoid unnecessarily complicating the below analysis.

‘Leporis’ in second place in the contested sign is meaningless and, therefore, normally distinctive.

Visually and aurally, the signs coincide in (the sound of) the string of letters ‘INSIGNI*(*)’ of the first element of the contested sign and of the single element of the earlier mark. The signs differ in the last letter(s) of these elements, namely ‘A’ in the earlier mark and ‘IS’ in the contested sign, as well as in the second element ‘Leporis’ in the contested sign.

Account is taken of the fact that the coincidence is in the first verbal element (out of two) of the contested sign, where the earlier mark is almost entirely contained in it. Moreover, the identical string of letters is at the beginning of the compared elements, the difference being in their final one or two letters, respectively. In this respect, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

In the light of the foregoing, it is considered that the identified coincidence leads to an average degree of visual and aural similarity.

Conceptually, as acknowledged above, the earlier mark and the first element of the contested sign might evoke the same concept of insignia for a part of the relevant public, which will render the signs similar to a high degree. For another part of the public, none of the elements of the signs will evoke any meaning and the signs will therefore, be conceptually neutral.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, as seen above, even if the single element the earlier mark may evoke a meaning in the relevant public, it is not related to the goods in question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

In its submission, the opponent states that the earlier mark is highly distinctive per se. It should be emphasised in this respect that the mark’s inherent distinctiveness may not be higher than normal. Higher than a normal degree of distinctiveness may be reached only through use of the mark. Hence, the opponent’s claim for high inherent distinctiveness of the mark is set aside.

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).

In the case at hand the goods are identical and they target the general public showing an average degree of attention upon purchase. The signs are visually and aurally similar to an average degree and conceptually similar to a high degree for a part of the public and conceptually neutral for another part. The earlier mark enjoys normal distinctiveness.

Account is taken of the fact that the earlier mark is almost entirely incorporated in the first (out of two) element of the contested sign and that the differences in these elements pertain to their endings, which have lesser impact. For those who see conceptual associations in the coinciding elements with insignia, the fact remains that none of them is a complete reproduction of the German word. In other words, these consumers would be faced with an invented term created around the same concept of insignia. For those who do not see this meaning in the coinciding elements, they will be faced with two fanciful terms suggesting nothing specific.

Furthermore, 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). Therefore, given their invented nature, the minor differences in the ending of ‘INSIGNIA’ and ‘Insigniis’, might even remain unnoticed or even when perceived, consumers would be prone to directly confuse between them.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In this particular case, the single verbal element of the earlier mark is almost identically included as the first verbal element of the contested sign and consumers would likely confuse between both elements. Therefore, it is likely that the contested sign, which is formed with the addition of the second element ‘Leporis’, be perceived by the consumers as designating a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public, such as the consumers in Germany and Austria. 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 3 412 293. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Furthermore, as the earlier right analysed above 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).

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Eva Inés PÉREZ SANTONJA

Teodora Valentinova TSENOVA-PETROVA

Alicia BLAYA ALGARRA

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.