OPPOSITION Nо B 3 113 973

 

Groupement foncier agricole des vignobles de la baronne Philippine de Rothschild, Lieu-dit Le Pouyalet Château Mouton Rothschild, 33250 Pauillac, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur -Seine, France (professional representative) 

 

a g a i n s t

 

Xubin Xu, 17h, B#, Xinggui Garden, No. 2 Guimufang, Guiyuan Road, Luohu District, Null Shenzhen City, Guangdong Province, China (applicant), represented by Metida Law Firm Zaboliene And Partners, Business Center Vertas Gynéjų Str. 16, 01109 Vilnius, Lithuania (professional representative).

On 30/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 113 973 is upheld for all the contested goods, namely:

 

	Class 33: Vodka; alcoholic beverages, except beer; fruit extracts, alcoholic; digesters [liqueurs and spirits]; wine; liqueurs; spirits [beverages]; brandy; whisky; rum.
2.	European Union trade mark application No 18 172 315 is rejected for all the contested goods. It may proceed for the remaining services.

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

 

REASONS

 

On 12/03/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 172 315 for the figurative mark namely against all the goods in Class 33. The opposition is based on, inter alia, European Union trade mark registration No 1 997 261 for the word mark ‘AILE D'ARGENT’. 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 European Union trade mark registration No 1 997 261.

 

a) The goods

 

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Vodka; alcoholic beverages, except beer; fruit extracts, alcoholic; digesters [liqueurs and spirits]; wine; liqueurs; spirits [beverages]; brandy; whisky; rum.

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

The contested vodka; fruit extracts, alcoholic; digesters [liqueurs and spirits]; wine; liqueurs; spirits [beverages]; brandy; whisky; rum are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

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 whose degree of attention is average.

The applicant claimed that the level of attention of the public is higher than average. Contrary to the findings of the applicant, in the present case the public is deemed to pay a rather average level of attention while purchasing wines, e.g. in supermarkets, bars or restaurants (02/02/2016, T-541/14, ILLIRIA (fig.) / CASTILLO DE LIRIA et al., EU:T:2016:51, § 23; 07/10/2015, T-228/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:761, § 28; 16/12/2008, T-259/06, Manso de Velasco, EU:T:2008:575, § 27; 18/12/2008, T-287/06, Torre Albeniz, EU:T:2008:602, § 45). It is true that wines, especially some specific type of wines from certain regions etc., can indeed be very expensive and rare. However, there are also ‘wines’ sold for a relatively low price, even sometimes in carton packages. It is neither of those extremes on which the following examination shall be based, but rather on the perception of the average consumers buying average wine (see, to that regard, 30/09/2015, T-364/13, KAJMAN / Device of a crocodile et al., EU:T:2015:738, § 26; 13/04/2011, T-358/09, Toro de piedra, EU:T:2011:174, § 29). The applicant claimed that the relevant goods can target also the professional public, albeit without specifying which kind of professional public. In any event, while it may well be the case that the goods are also directed at the professional public in the food and beverages field, the degree of attention of this part of the public is also average for the same reasons as indicated above.

c) The signs

 

AILE D'ARGENT
Earlier trade mark	Contested sign

The relevant territory is 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is the word mark ‘AILE D’ARGENT’ and the contested sign is the figurative mark written in slightly stylized capital letters.

The marks’ verbal elements are not meaningful in certain parts of the relevant territory, for example in those countries where French is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-French-speaking part of the public, such as the German and Spanish-speaking public. Indeed, for this part of the public, the verbal elements of the signs at issue are meaningless and, therefore, distinctive to a normal degree.

 

The marks have no elements that could be considered more dominant than other elements.

Visually and aurally, the signs coincide in the verbal element (sound) ‘D’ARGENT’, which plays an independent and distinctive role in both marks. They differ in most of the letters of their verbal elements (sounds) ‘AILE’ and ‘ARCHANGE’ which coincide only in the first and the last letters, namely ‘A’ and ‘E’. Regarding the slight stylisation of the contested sign’s verbal elements, it is noted that, besides being merely decorative, it is so minimal that would not materially contribute to visually differentiating the signs.

While it is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark it must be stressed that this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. In the present case, it is considered relevant that the common verbal element ‘D’ARGENT’, with an an independent and distinctive role in both signs, forms nearly half of the contested mark and more than half of the earlier mark.

Taking into account all the above and the fact that the signs have the same structure - as they both consist of two juxtaposed verbal elements of which the common one occupies the same position in both signs - they are considered to be visually and aurally similar to a below average degree.

Conceptually, neither of the signs has a meaning for the public under analysis. 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 goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks 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).

The contested goods are identical and target the public at large and professional public whose degree of attention is average. The earlier trade mark has a normal degree of inherent distinctiveness for the relevant goods.

The signs in conflict are visually and aurally similar to a below average degree insofar as they coincide in the verbal element ‘D’ARGENT’. Conceptually, the signs do not trigger any association that may help to differentiate between them.

In the case at issue, as stated above, the common verbal element ‘D’ARGENT’ plays an independent and distinctive role in both signs and forms nearly half of the contested mark and more than half part the earlier mark. Therefore it will hold the consumers’ attention despite its position it the second part of the marks.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The Opposition Division considers that the differences between the signs are not sufficient to offset their similarities and that there is a likelihood of confusion, which includes the risk of association, on the part of the public under analysis.

Indeed, bearing in mind that the marks have the same structure and coincide in one of their distinctive elements placed in the same position in both marks, it is highly conceivable that that the relevant public, displaying an average degree of attention, may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark, considering that it will be applied to goods that are identical to those marketed under the earlier trade mark.

In other words, on account of the coincidence in the distinctive verbal element ‘D’ARGENT’, consumers may confuse the origins of the goods at issue, assuming that they come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish and German-speaking part of the public. 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.

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

As the European Union trade mark registration No 1 997 261 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

 

 

Martina GALLE

Angela DI BLASIO

Chiara BORACE

 

 

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.