OPPOSITION No B 3 090 191

OMV Downstream GmbH, Trabrennstraße 6-8, 1020 Wien, Austria (opponent), represented by Schönherr Rechtsanwälte GmbH, Schottenring 19, 1010 Wien, Austria (professional representative)

a g a i n s t

AOL - Cozinha Portugal S.A, Cais da Rocha de Conde D’Óbidos, Edifício Lacs Sala 3.2, 1350-352 Lisboa, Portugal (applicant), represented by Gastão da Cunha Ferreira Lda., Rua dos Bacalhoeiros nº 4, 1100-070 Lisboa, Portugal (professional representative).

On 26/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 191 is upheld for all the contested services.

2. European Union trade mark application No 18 055 817 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 055 817 ‘VIRA’ (word mark). The opposition is based on, inter alia, Austrian trade mark registration No 279 205 ‘VIVA’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(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 Austrian trade mark registration No 279 205.

a) The services

The services on which the opposition is based are, inter alia, the following:

Class 43: Providing of food and drink, in particular in cafes, canteens, restaurants, snack bars and inns.

The contested services are the following:

Class 43: Serving food and drinks.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Serving food and drinks is identically contained in both lists (including synonyms).

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 services found to be identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

VIVA	VIRA
Earlier trade mark	Contested sign

The relevant territory is Austria.

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 signs are meaningless for the relevant public and are therefore distinctive.

Visually and aurally, the signs coincide in the letters ‘VI*A’ and differ in their third letters, ‘V’ and ‘R’ respectively. Aurally, as the signs’ differing consonant are located in their middle between identical vowel sounds, this difference would not offset the impact of their coinciding initial two and final letters.

As the signs have an equal number of letters, three of which appear in identical positions, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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, the earlier trade mark as a whole has no meaning for any of the services 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 services are identical. They target the public at large with an average degree of attention. The earlier sign has a normal degree of distinctiveness.

The signs are visually and aurally similar to an average degree, since they coincide in three out of four letters in the initial and final positions. Both signs are single four-letter words. The difference in the middle letters and sounds is not sufficient to counteract the similarities between the signs. Furthermore, the marks have no meaning that could help to differentiate them.

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). It is likely that consumers will not be aware of the one-letter difference between the signs when they encounter them in the market and will consequently not be able to safely distinguish between them.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Austrian trade mark registration No 279 205. It follows that the contested trade mark must be rejected for all the contested services.

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 extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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).

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

Tzvetelina IANTCHEVA

Sofía SACRISTÁN MARTÍNEZ

Francesca DRAGOSTIN

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.