OPPOSITION No B 3 124 394

Markant Services International GmbH, Hanns-Martin-Schleyer-Str. 2,
77656 Offenburg, Germany (opponent), represented by Weickmann & Weickmann Patent- und Rechtsanwälte PartmbB, Richard-Strauss-Str. 80, 81679 München, Germany (professional representative)

a g a i n s t

Azienda Agricola Castelle di Sagnella Maria Pina, Via Nazionale Sannitica 48, 82037 Castelvenere (BN) Italy (applicant), represented by Francesco Musella, Via dei Fiorentini N.10, 80133 Napoli, Italy (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 394 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services (in Classes 33 and 35) of European Union trade mark application No 18 210 223 (figurative mark: ‘ ’). The opposition is based on German trade mark registration
No 1 148 027 (word mark: ‘CASTELLUM’). 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 and services

The goods in Class 33 on which the opposition is based are the following:

Wines, except sparkling wines

The contested goods and services in Classes 33 and 35 are the following:

Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages; alcoholic preparations for making beverages; cider; wine; sparkling wines; still wine; piquette.

Class 35: Retail services relating to alcoholic beverages; retail services in relation to preparations for making alcoholic beverages; retail services in relation to alcoholic beverages (except beer); mail order retail services related to alcoholic beverages (except beer); wholesale services in relation to preparations for making alcoholic beverages; wholesale services in relation to alcoholic beverages (except beer).

Some of the contested goods and services are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness is average.

c) The signs

CASTELLUM
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 trade mark is a word mark, which is protected in all fonts and typefaces.

The contested sign is a figurative mark. However, the figurative elements are only a kind of apostrophe after the first two letters ‘Ca’ and also a rather standard typeface of the following word ‘Stelle’. Since they are basic, the figurative elements are non-distinctive.

The earlier mark has no meaning for the relevant public and is, therefore, distinctive. Some of the German consumers could make a reference to the German word Kastell, which is comparatively similar and can be found in a German Dictionary, see https://www.duden.de/rechtschreibung/Kastell. However, to avoid further conceptual differences between the signs, the Opposition Division will base its decision on the part of the public for whom there is no meaning. This is the best case scenario in favour of the opponent.

The apostrophe of the contested sign will be understood as an grammatical element and is, therefore, non-distinctive.

The element ‘Ca’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The element ‘Stelle’ of the contested sign will be understood by the relevant public as Ort, Platz, Punkt innerhalb eines Raumes, Geländes oder Ähnliches, an dem sich jemand, etwas befindet bzw. befunden hat, an dem sich etwas ereignet hat (https://www.duden.de/suchen/dudenonline/Stelle), which translates into the language of the proceedings as ‘place, point within a room, terrain or the like where someone is or has been, where something has happened’. Since it has no meaning for the goods and services, it is distinctive.

Visually and aurally, the earlier trade mark consists of one word, whereas the contested sign will be recognised as two words, because of the apostrophe that separates it into the elements ‘Ca’ and ‘Stelle’. Furthermore, the second verbal element ‘Stelle’ begins with a capital letter. Therefore, visually and aurally, there is a clear break between ‘Ca’ and ‘Stelle’ in the contested sign. In addition, the earlier trade mark has nine letters, whereas the contested sign starts with a short word of two letters, that introduces the next word ‘Stelle’, which has six letters. The apostrophe in the contested sign creates a break in the pronunciation that has no counterpart in the earlier trade mark. The German consumer will also recognise, although not understanding the element ‘Ca’, that the contested sign is a combination of the two words ‘Ca’ and ‘Stelle’ of two different languages. Moreover, there are differences between the signs that have to be taken into account. The endings ‘UM’ of the earlier trade mark and ‘e’ of the contested sign also differ. Since the contested sign will be recognised as two words, the matching letters will be perceived differently by the public and not as one element as in the earlier trade mark. Furthermore, the differing vowel sequences, ‘a-e-u’ of the earlier trade mark and ‘a-e-e’ of the contested sign lead to differences in the sound, rhythm and pronunciation. Therefore, the visual and aural similarity is below average.

Conceptually, the earlier trade mark has no meaning and the second element of the contested sign ‘Stelle’ has the abovementioned meaning in German. Since one of the signs has no meaning, the signs are conceptually dissimilar.

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 essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumers or end users by enabling them, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

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, § 19; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account the not more than below average degree of visual and aural similarity, the fact, that the signs are conceptually dissimilar, the average degree of attention of the public and the not more than average degree of distinctiveness of the earlier trade mark, there is – even for assumed identical goods and services – no likelihood of confusion. Since there is no likelihood of confusion in the best case scenario in favour of the opponent, this applies even more so in all other scenarios.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to prevent a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings. The opponent does not compare the opposing marks in the form specifically applied for, but instead uses a purely mathematical approach by counting the matching letters without taking sufficient account of the different overall impressions of the marks. It also overlooks the clear meaning of an essential part of the contested sign which the earlier mark lacks. Therefore, there are visual, aural and conceptual differences, which cannot lead to a likelihood of confusion. Enhanced distinctiveness has not been claimed.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

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

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

The Opposition Division

Renata COTTRELL

Peter QUAY

Karin KLÜPFEL

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.