OPPOSITION No B 3 124 622

Castel Freres, 24, rue Georges Guynemer, 33290 Blanquefort, France (opponent), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (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 28/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 622 is partly upheld, namely for the following goods in Class 33: Alcoholic beverages (except beer); cider; wine; sparkling wines; still wine; piquette.

2. European Union trade mark application No 18 210 223 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods (in Class 33) of European Union trade mark application No 18 210 223 (figurative mark: ‘ ’). The opposition is based on, inter alia, Czech trade mark registration No 357 105 (word mark: ‘CASTEL’). 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 Czech Republic trade mark registration No 357 105.

a) The goods

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

Wines.

The contested goods in Class 33 are the following:

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

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.

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wines. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Wine is identically contained in both lists of goods.

The contested sparkling wines; still wine; piquette are included in the broad category of the opponent’s wines. Therefore, they are identical.

The contested cider has the same nature, method of use, distribution channels and public as the opponent’s wines. Furthermore, they are in competition. Therefore, they are similar.

The remaining contested preparations for making alcoholic beverages; alcoholic preparations for making beverages have a different nature and purpose. Furthermore, they are neither complementary nor in competition. Their distribution channels, producers and methods of use are also different. Consumers will not assume that these goods come from the same or economically linked undertakings. Although they can target the same public, this is not sufficient to make them similar. Therefore, they are dissimilar.

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 and at business customers with specific professional knowledge or expertise. The degree of attention is average.

c) The signs

CASTEL
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 stylisation of the mark is limited to an apostrophe-like symbol following the first two letters ‘Ca’ and a rather ordinary typeface. Since they are basic, the figurative elements are non-distinctive.

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

Both signs have no meaning for the relevant public and are, therefore, 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 differ in the non-distinctive typeface and apostrophe-like symbol of the contested sign. The earlier trade mark is completely included in the contested sign. The additional ending ‘le’ of the contested sign has no counterpart in the earlier mark. Furthermore, the double letter ‘l’ in the contested sign will be pronounced by the relevant public in a manner that is essentially identical to the single letter ‘l’ in the earlier trade mark. Therefore, the signs are visually and aurally similar to an above-average degree, at least.

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 enjoys enhanced distinctiveness 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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical, partly similar and partly dissimilar.

According to Article 8(1)(b) EUTMR, similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those goods.

Taking into account the at least average degree of visual and aural similarity, the fact that a conceptual comparison is not possible, the not more than average degree of attention of the public, the normal degree of distinctiveness of the earlier trade mark and the identity or similarity of the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

The applicant has not submitted any observations.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the following earlier trade marks, all for the same earlier trade mark and covering the same goods:

 Italian trade mark registration No 2016000103142;

 Austrian trade mark registration No 289 913;

 Danish trade mark registration No VR 2017 01121;

 Estonian trade mark registration No 56 344;

 Lithuanian trade mark registration No 75 475;

 Latvian trade mark registration No 73 072.

Since these marks are identical to the one which has been compared and cover the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michaela SIMANDLOVA

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.