OPPOSITION Nо B 3 121 113

Sociedade dos Vinhos Borges, S.A., Rua Infante D. Henrique, 421, 4439‑909 Rio Tinto, Portugal (opponent), represented by Garrigues IP, Unipessoal Lda., Avenida da República, 25 - 1º, 1050‑186 Lisboa, Portugal (professional representative)

a g a i n s t

Terraustral SA, Hernando de Aguirre 1915, Providencia, 7510816 Santiago, Chile (applicant), represented by A2 Estudio Legal, Calle Javier Ferrero, 10, 28002 Madrid, Spain (professional representative).

On 07/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 113 is upheld for all the contested goods.

2. European Union trade mark application No 18 192 913 is rejected in its entirety.

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

REASONS

On 15/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 192 913 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 9 838 806 ‘AT’ (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 European Union trade mark registration No 9 838 806 ‘AT’ (word mark).

a) The goods

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

Class 33: Vinho verde.

The contested goods are the following:

Class 33: Wines.

The opponent’s vinho verde is ‘an alcoholic beverage, namely a young Portuguese wine, not allowed to mature’ (information extracted from Oxford English Dictionary on 01/06/2021 at https://www.lexico.com/definition/vinho_verde).

Therefore, the contested wines include, as a broader category, the opponent’s vinho verde. Since the Office 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 and the degree of attention is average.

c) The signs

AT
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 earlier mark is a word mark, ‘AT’.

The contested sign is a figurative mark comprising the letters ‘TA’ and the verbal component ‘WINES’ in a rather standard brown font on a black circular background. The verbal elements are surrounded by a fine brown circular line and some spots and drops in the same colour.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The stylisation of the contested sign’s verbal elements and figurative elements will merely be perceived as a graphical way of bringing the verbal element to the public’s attention, and its impact on the comparison of the sign will, therefore, be limited. In addition, the letters ‘TA’ are the most eye-catching and, therefore, dominant elements. Finally, the black circular background is non-distinctive because it will be perceived as a label depicting a simple geometrical shape.

The verbal component ‘WINES’ of the contested sign refers to ‘an alcoholic drink made from fermented grape juice’ (information extracted from Oxford English Dictionary on 01/06/2021 at https://www.lexico.com/definition/wine). This component is basic English vocabulary in the relevant market sector and is likely to be understood in the whole European Union.

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.

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese- and Spanish-speaking parts of the public. For this public, the verbal component ‘WINES’ of the contested sign will be understood as explained above and is, therefore, devoid of any distinctiveness. For this public, the letter combinations ‘AT’, of the earlier mark, and ‘TA’, of the contested sign, have no specific meaning in relation to the relevant goods and are, therefore, distinctive.

Visually, the signs coincide in the letters ‘AT’, which are reversed in each sign, ‘AT’ versus ‘TA’, respectively. These letters comprise the only verbal element of the earlier mark and the distinctive and dominant verbal element of the contested sign. The signs differ in the contested sign’s additional verbal component ‘WINES’, which is non-distinctive, and in the stylisation of the contested mark and its figurative elements, which are not particularly elaborate or sophisticated and, therefore, will not lead the consumer’s attention away from the verbal element itself.

Therefore, the signs are visually similar to at least a low degree.

Aurally, the earlier mark will be pronounced in Portuguese and Spanish as a sequence of two letters /AT/, or as the initials /A-TE/. The letters ‘TA’ in the contested sign, due to their position within the sign, will be pronounced separately by the majority of the relevant public, as the initials /TE-A/. Another part of the public will pronounce them as /TA/.

Although the additional verbal component of the contested sign, ‛WINES’, has no counterpart in the earlier mark, it will most likely not be pronounced when referring to the contested sign aurally, due to its descriptive nature and reduced size within the sign.

Therefore, contrary to the applicant’s view, the signs are aurally similar to at least a below-average degree.

Conceptually, the verbal elements ‘AT’ and ‘TA’ of the marks will be perceived by the relevant public as meaningless words. In addition, the remaining verbal component ‘WINES’ of the contested sign conveys an additional concept. However, due to its non-distinctive character, it has a very limited impact overall.

Therefore, the signs are not conceptually similar.

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, contrary to the applicant’s view, the distinctiveness of the earlier mark must be seen as normal.

In its observations, the applicant argued that the earlier trade mark has a low distinctive character given that many trade marks include the letters ‘A’ and ‘T’ (alone or in combination with other letters). In support of its argument, the applicant referred to some trade European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letters ‘A’ and ‘T’. Under these circumstances, the applicant’s claims must be set aside.

e) Global assessment, other arguments and conclusion

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 undertaking or economically linked undertakings.

The goods are identical and target the public at large. The relevant public’s degree of attention is average.

The marks coincide in the letters ‘AT’, which are reversed in each sign, ‘AT’ versus ‘TA’, respectively. As stated above, this comprises the only element of the earlier mark and the distinctive and dominant element of the contested sign. The additional elements of the contested mark are non-distinctive or non-dominant. The marks also differ in the stylisation of the contested sign, which, as mentioned above, is merely decorative for the relevant public. Therefore, the signs are visually similar to at least a low degree, aurally similar to at least a below-average degree and conceptually not similar.

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). In this case, the identity between the goods offsets the abovementioned differences between the signs.

In addition, 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).

Contrary to the applicant’s view, the inverted order of the letters in the signs, and the additional figurative elements in the contested sign, are not sufficient to allow consumers to distinguish between them when they encounter them on identical goods in the market. Consequently, despite the shortness of the signs, and taking into account their similar structure and that they comprise the same letters, the Opposition Division considers that the similarities between them are sufficient to lead to a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the Portuguese- and Spanish- speaking parts 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 838 806. It follows that the contested trade mark must be rejected for all the contested goods.

For the sake of clarity, as the European Union trade mark registration No 9 838 806 leads to the success of the opposition and to the rejection of the contested sign 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

Victoria DAFAUCE MENÉNDEZ

Fernando AZCONA DELGADO

Sylvie ALBRECHT

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.