OPPOSITION No B 3 123 600

Cantina Viticoltori Ponte di Piave S.C.A., Via Verdi n.50, 31047 Ponte di Piave, Italy (opponent), represented by Mondial Marchi S.R.L., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative)

a g a i n s t

The Wine Team Global AB, Blasieholmsgatan 4A, 111 48 Stockholm, Sweden (applicant), represented by Advokatfirman Vinge KB, Smålandsgatan 20, 111 87 Stockholm, Sweden (professional representative).

On 30/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 123 600 is upheld for all the contested goods.

2. European Union trade mark application No 18 212 020 is rejected in its entirety.

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

REASONS

On 09/06/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 212 020 for the figurative mark . The opposition is based on, inter alia, Italian trade mark registration No 1 199 258 for the word mark ‘PONTE’. 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 Italian trade mark registration No 1 199 258 for the word mark ‘PONTE’.

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: Wine.

The contested wine is 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.

The degree of attention is average.

c) The signs

PONTE
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 composed of the verbal element ‘PONTE’. The contested sign is a figurative mark composed of the verbal elements ‘PONTE D’ELSA’, written in an upper-case, bold and fairly standard typeface at the top of the sign with two horizontal lines above and underneath the letter ‘D’. Underneath the words ‘Prodotto d’Italia’ are written in a fairly standard, title case, gold and italic typeface. At the bottom there is a figurative element depicting a bridge surrounded by water and a landscape.

The Italian word ‘PONTE’ means ‘bridge’ . It has no particular meaning in relation to the relevant goods and is distinctive.

The words ‘PONTE D’ELSA’ mean ‘bridge of Elsa’ in Italian. The word ‘bridge’ has no particular relation to the relevant goods and is distinctive. ‘Elsa’ will be understood by part of the relevant consumers as referring to a very small town in Tuscany with approximately 3.500 inhabitants, but most of the public will understand ‘Elsa’ as a female’s first name. It is therefore distinctive. The Italian words ‘Prodotto d’Italia’ mean ‘product of Italy’ and only indicate that the goods originate from Italy and this wording is therefore non-distinctive. The figurative element in the form of a bridge, surrounded by some water and a landscape, reinforces the meaning of the word ‘PONTE’ and is distinctive. The small horizontal lines above and under the letter ‘D’ merely serve a decorative purpose and have a very limited impact on the comparison.

Furthermore, the Opposition Division considers that in the contested sign, the wording ‘PONTE D’ELSA’ and the figurative elements at the bottom part are clearly more dominant than other elements, due to their position, size and dimensions.

In any case, 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, because the public will more easily refer to the signs by their verbal element (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This applies to the figurative elements in the contested sign.

Visually, the signs coincide in the word ‘PONTE’ meaning that the whole of the earlier mark is contained as the first element in the contested sign. The marks differ in the words ‘D’ELSA’, ‘Prodotto d’Italia’ and the figurative elements of the contested sign.

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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. The fact that the first word coincides, is relevant for the comparison.

Therefore, bearing in mind the above principles and assertions on the distinctiveness and dominance of the elements contained in the signs, they are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘PONTE’, present identically in the signs. However, the marks differ in the pronunciation of the words ‘D’ELSA’.

Although the contested sign also contains the wording ‘Prodotto d’Italia’, it is settled case-law that a consumer, when referring to a mark, is likely to pronounce the dominant part of it and will tend to shorten marks containing several words (03/07/2013, T-206 / 12, LIBERTE american blend, EU: T: 2013: 342, § 44, 30/11/2011, T-477/10, SE © Sports Equipment, EU: T: 2011: 707, § 55). As already stated, this expression plays a secondary role (neither dominant nor distinctive) within the sign and will most probably not be pronounced at all.

Therefore, bearing in mind the above principles and assertions on the distinctiveness and dominance of the elements contained in the signs, they are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to a bridge (a bridge in general in the earlier mark and a specific bridge in the contested sign), reinforced by the depiction of a bridge in the contested sign, the signs are conceptually highly similar. The remaining concepts, such as ‘Prodotto d’Italia’ and the figurative elements, are either non-distinctive (‘Prodotto d’Italia’) or convey some additional concepts in the contested sign that are not shared by the earlier mark.

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 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 (including a likelihood of association) 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.

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 that 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. 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, 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).

The goods are identical. The relevant public is the public at large whose level of attention is average. The earlier mark as a whole has a normal degree of inherent distinctiveness.

The marks are visually similar to a below average degree, aurally similar to an average degree and conceptually similar to a high degree. The whole of the earlier mark ‘PONTE’ is entirely included as the first verbal (and also distinctive) element of 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).

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. In the present case, the Opposition Division considers that it is very probable that the relevant consumer, will perceive the contested mark as a sub-brand, a variation of the earlier mark or vice versa, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In addition, the Opposition Division points out that a complex mark and another mark which is identical or similar to one of the components of the complex mark can be considered to be similar if that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (see, inter alia, 23/10/2002, T-6/01 Matratzen, EU:T:2002:261, § 33; 13/04/2005, T-286/03 Right Guard Xtreme Sport, EU:T:2005:126, § 60, 70-73; 07/07/2005, T-385/03 Biker Miles, EU:T:2005:276, § 39). This applies also to the case at hand. The word ‘PONTE’, together with the word ‘D’ELSA’, are the verbally dominant elements in the contested sign, the word ‘PONTE’ being placed at the beginning, where the consumer focuses more its attention, and, moreover, usually the verbal elements of a mark have more impact than the figurative ones, as fully explained above.

Furthermore, account should be taken of the fact that the average consumer only rarely has 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).

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, in this case the identity of the goods in Class 33 offsets the lesser 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.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 199 258 for the word mark ‘PONTE’. It follows that the contested trade mark must be rejected for all the contested goods.

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 earlier right, Italian trade mark registration No 1 199 258 for the word mark ‘PONTE’, 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).

According to the applicant, in its observations of 28/01/2021, the trade mark ‘PONTE’ has a low degree of distinctiveness, taking into account the generic nature of ‘PONTE’, which is often used in connection with wine and similar goods. Furthermore, they point out that the word ‘PONTE’ can be found in many trade marks for alcoholic beverages; a search of EUTM registrations containing ‘PONTE’ in Class 33, gave 28 search results and a search in TMView gave 314 trade mark registrations containing ‘PONTE’ within the EU in Class 33. The applicant refers to several of these trade marks in its exhibits 1 and 2.

However, 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 element ‘PONTE’. Furthermore, the term ‘PONTE’, ‘bridge’ in English, has no particular relationship with the relevant goods and has inherently a normal degree of distinctiveness. Under these circumstances, the applicant’s claims must be set aside.

The applicant also points out that the contested sign is dominated by the word ‘ELSA’, which is the name of the bridge shown in the picture of the landscape within the sign. As has already been pointed out above, both the words ‘PONTE D’ELSA’ and the figurative elements at the bottom are more dominant and distinctive than the wording ‘Prodotto d’Italia’. In case of figurative marks that combine word and figurative elements, the words have normally more impact than the figurative elements and in this case the bridge emphasises the word element ‘PONTE’. Therefore, also this argument of the applicant has to be set aside.

Finally, the applicant, in its observations of 28/01/2021, refers to a previous decision of the Court to support its arguments of no likelihood of confusion (14/09/2017, C-56/16 P, ‘PORT CHARLOTTE’). The decision concerned the declaration of invalidity of European Union word mark ‘PORT CHARLOTTE’ based on earlier designations of origin with the word ‘Porto’ and ‘Port’. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). The case mentioned by the applicant relates to the examination of Article 8(6) EUTMR with different applicability criteria so it cannot be comparable to a case where the applicable criteria are those of Article 8(1)(b) EUTMR. For this reason, the Opposition Division finds that this decision is not comparable with the case at issue.

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

Helen Louise MOSBACK

Chantal VAN RIEL

Maria del Carmen COBOS PALOMO

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.