CANCELLATION No 42 001 C (INVALIDITY)

Schmitt Söhne GmbH Weinkellerei, Weinstr. 8, 54340 Longuich, Germany (applicant), represented by Patentanwalt Dr.-Ing. Jörg Wagner, Trierpatent, Monaiser Str. 21, 54294 Trier, Germany (professional representative)

a g a i n s t

Yerbito S.R.L.S., Via Ricasoli 30, 50122 Firenze, Italy (EUTM proprietor), represented by Bugnion S.P.A., Via A. Gramsci 42, 50132 Firenze, Italy (professional representative).

On 22/07/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 18 120 718 , namely part of the goods and services in Classes 32, 35 and 43 and all the goods in Class 33. The application is based on European trade mark registration No 17 896 645 The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that goods and services are identical or similar, the public is the general public and the degree of attention might be lower than average. As for the signs, they coincide in the most distinctive element of the contested mark (the sun) given that all the denominations and the figurative element in the form of a drinking cup in this mark are not distinctive.

The EUTM proprietor replied that ‘Yerbito’ is a diminutive and, as such, an imaginative word; also, in view of its size and position, it is the more dominant element of the contested mark. Furthermore, the shape of the sun is barely visible, it is very different from the applicant’s mark, and there are many marks registered which have as their main component a ‘smiling sun’. The marks are dissimilar from all points of view, only the goods in Class 33 in dispute can be considered similar and the attention of the consumers is high. This means that there is no possible risk of confusion on the part of the relevant public.

In its reply the applicant limits the invalidity application in Class 32 maintaining it only for cocktails, non-alcoholic, and insists on the high similarity of the signs.

In its final observations the EUTM proprietor insists on its prior arguments and on the fact that the presence of the sun with a humanized face is barely noticeable in the contested mark and, therefore, there can be no risk that the consumers attribute the same origin to the goods and services.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH 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.

a) The goods and services

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The goods and services on which the application is based are the following:

Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages; cider.

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; wholesaling and retailing in relation to alcoholic beverages (except beers), alcoholic preparations for making beverages, cider.

After a limitation of the scope of the application in Class 32, the contested goods and services are the following:

Class 32: Cocktails, non-alcoholic.

Class 33: Aperitifs; cocktails; spirits [beverages]; liqueurs; wine.

Class 35: Retail services in relation to aperitifs; wholesale services in relation to aperitifs; catalogue retail services in relation to aperitifs; online retail services in relation to aperitifs; retail services in relation to cocktails; wholesale services in relation to cocktails; catalogue retail services in relation to cocktails; online retail services in relation to cocktails; retail services in relation to spirits [beverages]; wholesale services in relation to spirits [beverages]; catalogue retail services in relation to spirits [beverages];online retail services in relation to spirits [beverages]; retail services in relation to liqueurs; wholesale services in relation to liqueurs; catalogue retail services in relation to liqueurs; online retail services in relation to liqueurs; retail services in relation to wine; wholesale services in relation to wine; catalogue retail services in relation to wine; online retail services in relation to wine.

Class 43: Bar and restaurant services; providing food and drink.

Contested goods in Class 32

The contested cocktails, non-alcoholic are similar to the applicant’s alcoholic cocktails included in the general category of alcoholic beverages. There is a growing trend in the drinks market sector for companies that produce alcoholic beverages to also produce and offer non-alcoholic drinks as an alternative to alcoholic ones. Furthermore, some non-alcoholic drinks are intended to be consumed in the same circumstances as alcoholic ones by consumers who cannot, or choose not to, consume alcohol. Since consumers will perceive them as alternative products they must also be considered to be in competition. In addition, it is not uncommon for non-alcoholic cocktails to be sold in shops specialised in alcoholic drinks or in the same sections in supermarkets.

Contested goods in Class 33

The contested aperitifs; cocktails; spirits [beverages]; liqueurs are included in the broad category of the applicant’s alcoholic beverages (except beer), as are the contested wines. Therefore, the goods are identical.

Contested services in Class 35

All the contested wholesale and retail services are identical to the applicant’s wholesaling and retailing in relation to alcoholic beverages (except beers), as the latter include the former. As a clarification it must be added that the contested goods ‘cocktails’ are not specified to ‘non-alcoholic’ in this class and, therefore, they might be alcoholic and as such included in the retail of ‘alcoholic beverages’ of the applicant.

Contested services in Class 43

The alcoholic beverages (except beer) protected by the earlier mark include ‘wine’. It is not uncommon for companies that produce and sell these goods to also offer the services in Class 43 and therefore these goods and services are complementary in the sense that the ones are indispensable or important for the use of the others in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking. There is a low degree of similarity between these goods and services.

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 and services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The applicant argues that the degree of attention is low, whereas the EUTM proprietor contends that it is high. In the view of the Cancellation Division it is, on the whole, average, even in relation to drinks.

c) The signs

Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The Cancellation Division will start the assessment of the signs in relation to the public who is in principle more prone to confusion, the Spanish-speaking part of the public, given that they will understand most of the words contained in the contested sign, and for whom the terms are not distinctive. Also, it will take into account specifically the part of the Spanish-speaking public who will immediately grasp that the figurative item on which the rest of the elements are placed in the contested mark represents a container to drink the beverage called ‘mate’, a very popular infusion consumed in South America that originates from a plant called ‘yerba mate’.

The applicant argues that, being all the elements of the contested mark non-distinctive but for the sun, the conflicting marks are similar.

The Cancellation Division agrees that, in relation to some drinks such as ‘mate’, the word ‘mate’ in itself, the expression ‘yerba mate’ and the object on which the label is placed, in as much as it resembles the container used for the drink, are descriptive of the nature of the goods and of the object of the services. This, however, will not be the case with regard to other goods such as wine.

As the word ‘liquor’ is very similar to its counterpart in Spanish, ‘licor’, the consumers will have no problem to perceive this meaning and, therefore, it will be descriptive for goods such as liquors, and of the relevant services.

However, contrary to what the applicant states, not even in relation to some goods is the term ‘YERBITO’ descriptive; the relevant consumers might be reminded of ‘yerbita’ (the diminutive for ‘yerba’, meaning ‘herb’), but ‘YERBITO’ does not exist as such in the Spanish language. Furthermore, the term dominates the image visually because it is the biggest of all the denominations and it occupies the central position. Contrary to this, the sun, though distinctive, is relegated in the contested mark to a very secondary position, and it has been depicted in a way that differs from the representation found in the earlier mark. Consequently, visually and conceptually the dissimilarities between the marks are greater than the link produced by the common element and, hence, the marks are similar only to a very low degree.

The figurative elements cannot be pronounced and the earlier mark has no words. On the other hand, given that the term ‘YERBITO’ is the dominant in the contested mark, this will be the one used by the relevant consumers to refer to the mark; consequently, the marks cannot be compared aurally, and this aspect does not influence the likelihood of confusion.

In relation to the non-Spanish-speaking consumers, the gap between the signs will be even wider, as these consumers will only perceive the word ‘liquor’ as descriptive of some goods given that many of them will not know what ‘mate’ or ‘yerba mate’ or ‘yerbito’ mean, but even when they do, the considerations made above apply.

As the signs have been found similar (though to a very low degree) 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 and services 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

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 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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 lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

Though the earlier mark has an average degree of distinctiveness, its only common feature with the contested mark is the shape of the sun that, as seen above, occupies in the latter a very secondary position and it has been depicted in a different manner and colours. For the reasons given above the aural aspect does not influence the likelihood of confusion, and the marks are visually and conceptually only similar to a very low degree. This means that even in the presence of identical goods and services, the consumers will not think that they originate in the same undertaking or in companies with economic ties.

Consequently, the application filed under Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR must be dismissed.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

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

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

The Cancellation Division

Richard BIANCHI

María Belén IBARRA DE DIEGO

Ana MUÑIZ RODRÍGUEZ

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.