OPPOSITION Nо B 3 122 292

 

Pernod Ricard Finland Oy, Fabianinkatu 8, 00130 Helsinki, Finland (opponent), represented by Waselius & Wist, Eteläesplanadi 24 A, 00130 Helsinki, Finland (professional representative) 

 

a g a i n s t

 

Carnival Plc, Carnival House 100 Harbour Parade, So15 1st Southampton, United Kingdom (applicant), represented by Guy Holland, Block B, The Crescent Building, Northwood, Santry, D09 C6x8 Dublin, Ireland (professional representative).

 

On 26/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 122 292 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 165 510 is rejected in its entirety.
3.	The applicant bears the costs, fixed at EUR 620.

REASONS

 

On 25/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 165 510 ‘MARABELLE’ (word mark). The opposition is based on Finnish trade mark registration No 224 193, ‘MARABELLO’ (word mark). 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.

 

 

a) The goods

 

The goods on which the opposition is based are the following:

 

Class 32 Beer; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; fruit concentrates and other preparations for making beverages.

Class 33 Alcoholic beverages (except beer).

 

The contested goods are the following:

 

Class 33: Alcoholic beverages, except beers; alcoholic preparations for making beverages; gin; gin cocktails.

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 contested gin; gin cocktails are included in the opponent's broad category of alcoholic beverages (except beers) in Class 33. Therefore, they are identical.

Alcoholic beverages, except beers are identically contained in both lists of goods.

The contested alcoholic preparations for making beverages are similar to the opponent's other preparations for making beverages in Class 32 as they have the same nature. They usually coincide in relevant public, distribution channels and method of use.

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 or similar are directed at the public at large. 

 

The public’s degree of attentiveness is average.

 

c) The signs

 

MARABELLO	MARABELLE
Earlier trade mark	Contested sign

 

The relevant territory is Finland.

 

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).

 

Both marks are word marks, respectively ‘MARABELLO’ (earlier mark) and ‘MARABELLE’ (contested mark). None of them has a meaning in Finnish. Thus, they are normally distinctive.

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.

 

Visually and aurally, the signs coincide in eight out of nine letters/sounds, namely their first eight letters/sounds ‘MARABELL-’ However, they differ in their last letters/sounds, namely ‘O’ in the case of the earlier mark and ‘E’ in the contested mark.

 Therefore, the signs are visually and aurally highly similar.

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.

 

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 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).

In the present case, the goods covered by the trade marks in dispute have been found partly identical and partly similar and target the public at large, whose degree of attention is expected to be average.

The distinctiveness of the earlier mark must be seen as normal, since it has no meaning in relation to the goods.

The signs are visually and aurally highly similar as they coincide in their first eight out of nine letters and sounds and differ only in the last ninth letter/sound of each sign. Furthermore, the signs have no meaning for which the conceptual aspect does not influence the present assessment.

Account is to be 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).

  

Due to the visual and aural high similarity and the absence of any dominant or non‑distinctive elements in the signs, a likelihood of confusion exists.

Therefore, the opposition is well founded on the basis of the opponent’s Finnish trade mark registration No 224 193. It follows that the contested trade mark must be rejected for all the contested goods.

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.

 

 

 

The Opposition Division

 

 

Andrea VALISA

Inês RIBEIRO DA CUNHA

Victoria DAFAUCE-MENÉNDEZ

 

 

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.