OPPOSITION No B 3 114 543

Agave Loco LLC, 1175 Corporate Woods Pkwy Suite 218, 60061 Vernon Hills, United States of America (opponent), represented by FPS Partnerschaft von Rechtsanwälten Mbb, Grosse Theaterstrasse 31, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Christopher Kelt, Enrisstigen 1c, SE-181 62 Lidingö, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Box 4171, SE-203 13 Malmö, Sweden (professional representative).

On 22/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 114 543 is partially upheld, namely for the following contested goods and services:

Class 33: Wine; alcoholic beverages (except beer).

Class 35: Retail services relating to alcoholic beverages.

2. European Union trade mark application No 18 168 708 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 20/03/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 168 708 ‘CHÂTÅ VADÅ - ETT VIN MED HUS PÅ’ (word mark). The opposition is based, among others, on international trade mark registration designating the European Union No 1 225 264, ‘CHATA’ (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.

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 international trade mark registration designating the European Union No 1 225 264.

a) The goods and services

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

Class 29: Coffee creamer.

Class 30: Candy; coffee; coffee pods; coffee-based beverages, all of the aforesaid goods flavoured.

Class 33: Alcoholic beverages except beers.

The contested goods and services are the following:

Class 33: Wine; alcoholic beverages (except beer).

Class 35: Retail services relating to alcoholic beverages; import agency services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 33

Alcoholic beverages (except beer) are identically contained in both lists of goods.

The contested wine is included in the opponent’s broad category of alcoholic beverages except beers. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary, and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services relating to alcoholic beverages are similar to the opponent’s alcoholic beverages except beers.

The contested import agency services are dissimilar to all the opponent’s goods because, contrary to the assertions of the opponent, they have nothing in common. Import and export services are not considered to be a sales service and thus cannot be subject to the same arguments as the comparison of goods with retail or wholesale services. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. While these services are aimed at supporting or helping other businesses to do business and are preparatory or ancillary to the commercialisation of goods, they do not relate to the actual retail or wholesale of the goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. Although the subject matter of the import/export services and the goods in question are the same, this is not a relevant factor for finding similarity.

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 are directed at the public at large whose degree of attention is average.

c) The signs

CHATA	CHÂTÅ VADÅ - ETT VIN MED HUS PÅ
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements ‘CHATA’ and ‘CHÂTÅ’ are not meaningful in certain territories, for example in those countries where Italian is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public, for which these elements are distinctive.

The remaining verbal elements ‘VADÅ – ETT VIN MED HUS PÅ’ of the contested sign have no meaning for the relevant public in relation to the relevant goods and services. Therefore, they are also 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, the signs coincide in the verbal element ‘CHATA’. They differ in the diacritics added to the letters ‘A’ in the first element of the contested sign. However, as these specific diacritics are not typical in Italian, they may be overlooked by consumers. The signs further differ in the remaining verbal elements ‘VADÅ – ETT VIN MED HUS PÅ’ of the contested sign which have no counterparts in the earlier mark.

Therefore, the signs are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the elements ‛CHATA’ and ‘CHÂTÅ’, as the relevant public is not familiar with the diacritics of the contested sign. The pronunciation differs in the remaining verbal elements ‘VADÅ – ETT VIN MED HUS PÅ’. However, consumers generally tend to shorten marks containing several words. It cannot be discarded, therefore, that the contested sign will be only partially pronounced, especially taking into account that it conveys no meaning to the relevant Italian public.

Therefore, the signs are 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 claimed that the earlier trade mark is ‘highly distinctive’ but did not file any evidence in order to prove such a claim.

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

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

The goods and services are partly identical, partly similar and partly dissimilar. They target the public at large whose degree of attentiveness is average.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually similar to a below-average degree, aurally highly similar and the conceptual aspect does not influence the assessment of the similarity of the signs. In particular, the marks coincide in their distinctive verbal element ‘CHATA’ / ‘CHÂTÅ’, which is the only verbal element of the earlier mark and is reproduced in its entirety in the first element in the contested sign.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

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). Consequently, the identity and similarity between some of the goods and services compensates for the lower degree of visual similarity between the signs.

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion, as the signs are aurally similar to an average degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 225 264. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

1. international trade mark registration designating the European Union No 1 154 003, ‘CHATA’ (word mark), for mixed alcoholic beverages, namely, a cream-based horchata-flavored alcoholic beverage made with rum in Class 33;

2. international trade mark registration designating the European Union No 1 225 520, ‘RUMCHATA’ (word mark), for coffee creamer in Class 29, candy; confections; coffee; coffee pods; coffee-based and caffeinated beverages in Class 30 and alcoholic beverages except beers in Class 33;

3. international trade mark registration designating the European Union No 1 018 278, ‘RUMCHATA’ (word mark), for mixed alcoholic beverages, namely, a cream-based horchata-flavored alcoholic beverage made with rum in Class 33.

Since the first mark covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The other two earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain an additional syllable ‘RUM-’, which is not present in the contested trade mark. Moreover, they cover a narrower scope of goods. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DRAGOSTIN

Tzvetelina IANTCHEVA

Loreto URRACA LUQUE

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.