OPPOSITION No B 3 102 673

El Grifo, S.A., El Islote, 121, 35550 San Bartolomé de Lanzarote, Lanzarote, Spain (opponent), represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B,
28020 Madrid, Spain (professional representative)

a g a i n s t

Eirini Daskalaki, null, Siva Dimou Palianis Irakleiou Kritis, Greece (applicant), represented by Panagiotis Perivolaris, Ypsilon Alonion 24, 26224 Patra, Greece (professional representative).

On 11/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 673 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 (in Class 33) of European Union trade mark application No 18 087 717 (figurative mark: ‘ ’). The opposition is based on, inter alia, Spanish trade mark registration No 600 709 (word mark: ‘EL GRIFO’). 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 Spanish trade mark registration No 600 709.

a) The goods

The goods in Classes 33 on which the opposition is based are the following:

Spirituous wines and liquors.

The contested goods in Class 33 are the following:

Wines.

The contested wines include, as a broader category, the opponent’s spirituous wines.

Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 public’s degree of attentiveness is average.

c) The signs

EL GRIFO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 trade mark is a word mark, which is protected in all typefaces.

The contested sign is a figurative mark. The figurative elements are a label-like representation set at a slight angle with a fine double frame. On the top of the contested sign is the word ‘Silva’ with the letter ‘l’ in a stylised design. Below is the word ‘DASKALAKI’ in much smaller letters. Further below is the word ‘Grifos’ in italics and a brown antique-looking drinking vessel. With a slightly larger space below is the word sequence ‘DRY WHITE WINE’, and below it ‘WITHOUT SULFITS’. On the lower left side of the depiction, the word sequence ‘Natural Wine’ is written vertically.

The earlier trade mark ‘EL GRIFO’ will be understood by a part of the relevant public to mean ‘GRIFFON’, which refers to a legendary animal. Moreover, the Spanish-speaking public will understand the word ‘GRIFO’ to mean ‘tap’, see decision of the Boards of Appeal of 25/05/2016, R 2218/2015-2, ‘CONTADO DEL GRIFO (fig.) / EL GRIFO (fig.) et al.’, paragraph 31. In any event, the word ‘GRIFO’ has an average distinctive character with regard to the goods at issue.

The same reasoning applies to the word ‘Grifos’ in the contested sign. The brown antique-looking drinking vessel is suitable as a container for storing or drinking wine and is, therefore, weak. The word combination ‘Silva DASKALAKI’ will be understood by the Spanish public as a foreign name or as a meaningless word combination. Since it has no meaning in relation to the goods, it is distinctive. All the remaining verbal elements of the contested sign, namely ‘DRY WHITE WINE WITHOUT SULFITS’ and ‘Natural Wine’ will be understood by the Spanish public with these meanings, although not all of them are a part of basic English vocabulary. However, they will be understood, because the relevant public is used to seeing these words in relation to wine or because they are similar to Spanish words (e.g. natural or sulfite). Since they refer to the content of the goods and to their natural origin, they are non-distinctive. This is the best case scenario for the opponent, because being non-distinctive, the impact of these elements for the outcome of the comparison of the signs is limited.

The figurative element of the contested sign in its entirety has at least some degree of distinctiveness.

In the contested sign, although the word ‘Silva’ is written in the largest font, the verbal element ‘Grifos’ and the brown antique-looking drinking vessel are the co-dominant elements as they are the most eye-catching.

Visually, the signs differ in the abovementioned figurative elements of the contested sign. Despite being partly weak or non-distinctive, they must be considered to a certain degree. This is even more so for the distinctive and additionally dominant elements of the contested sign, namely ‘Silva’ and ‘Grifos’. In addition, the other verbal element ‘DASKALAKI’ must be considered. Therefore, the contested sign has several elements which have no counterpart in the earlier trade mark. The verbal element ‘GRIFO’, which is written differently and has a different grammatical form in both signs, does not alter the conclusion that the signs are visually similar only to a very low degree.

Aurally, the figurative elements will not be pronounced. The contested sign has more than 10 elements which have no corresponding element in the earlier trade mark. Although they are partly non-distinctive or weak, they must be considered to a certain degree. Due to the high number of words, the contested sign sounds longer than the earlier trade mark. Even in the best case scenario for the opponent, that only the dominant elements of the contested sign will be spoken, namely ‘Silva’ and ‘Grifos’, none of the elements coincide, the beginning is different and much longer in the contested sign and the signs are of different lengths, namely seven letters in the earlier trade mark and 11 letters in the contested sign. Furthermore, the consumer will refer to the contested sign aurally as ‘SILVA’ due to its size and position. Therefore, the signs have a different rhythm, sound, and pronunciation, which leads at best to a below-average degree of aural similarity.

Conceptually, the Spanish consumer will recognise the same concept in the verbal elements ‘Grifo’/‘Grifos’. However, the name, the brown antique-looking drinking vessel and the other additional verbal elements are only part of the contested sign, which reduces the degree of similarity accordingly. Therefore, in the best case scenario for the opponent, there is at best a below-average degree of conceptual similarity.

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.

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumers or end users by enabling them, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account the very low degree of visual similarity, the at best below average degree of aural and conceptual similarity, the fact that the dominant word ‘Silva’ and the also dominant element of the brown antique looking drinking vessel in the contested sign have no corresponding element in the earlier trade mark, the average degree of attention of the public, the not more than average degree of distinctiveness of the earlier trade mark, there is – even for identical goods – no likelihood of confusion. Since in the best case scenario in favour of the opponent there is no likelihood of confusion, this applies even more so for all other scenarios.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to prevent a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings. As far as the opponent in particular refers to the judgement of the General Court ECLI:EU:T:2017:721 of 13/10/2017, ‘CONTADO DEL GRIFO/EL GRIFO’, it has to be considered, first, that the contested sign has much less word elements, namely three, than in the present case. Second, the signs are identical as regards ‘EL GRIFO’, which is given not in the present case. Third, the additional word ‘CONTADO’ has been found weak for the Italian-speaking public, which is also not the case here with the consequence of a higher degree of similarity between the signs. All in all, in the quoted case is the additional element weak, whereas in this case the additional elements are partly distinctive and clearly recognisable on the label of the trade mark. Therefore, a different starting point leads to different results.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the earlier European Union trade mark registration No 11 212 602 (figurative mark: ‘ ’). This other earlier right invoked by the opponent is less similar to the contested mark. This is because its contains the additional depiction of a mythical animal. Therefore, the outcome cannot be different with respect to this earlier right.

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

Gonzalo BILBAO TEJADA

Peter QUAY

Claudia MARTINI

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.