OPPOSITION Nо B 3 126 488

 

Bodegas Alto Moncayo SA, Residencia Paraíso 1, Esc B, 1°E, 58008 Zaragoza, Spain (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia, Spain (professional representative)

a g a i n s t

Societa' Agricola Aldegheri Graziano, Flaviano e Gianluca S.S., Via Vallese, 1, Colognola ai Colli (VR), Italy (applicant), represented by Mondial Marchi S.r.l., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative).

On 20/07/2021, the Opposition Division takes the following

 

DECISION:

 

1.	Opposition No B 3 126 488 is partially upheld, namely for the following contested goods:

 

	Class 33: Wine; Grappa.
2.	European Union trade mark application No 18 224 300 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 21/07/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 224 300, ‘AQUILONIS’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 16 528 531, ‘AQUILON’ (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 16 528 531, ‘AQUILON’.

 

a) The goods

 

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

 

Class 33: Wine.

The contested goods are the following:

 

Class 29: Extra virgin olive oil.

Class 33: Wine; Grappa.

 

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.

 

Contested goods in Class 29

Contrary to the opponent’s view, the contested extra virgin olive oil are dissimilar to the opponent's wine. Indeed, these goods have nothing in common in terms of nature, purpose and method of use. They do not normally coincide in their producers and do not share the same distribution channels. While they may be found in the same outlets such as supermarkets, they are clearly displayed in different departments. Furthermore, these goods are neither complementary nor in competition.

Contested goods in Class 33

Wine is identically contained in both lists of goods.

 

The contested grappa is similar to the opponent's wine. Indeed, grappa is made by distilling the skins, pulp, seeds, and stems (i.e. the pomace) left over from winemaking after pressing the grapes. Hence, they coincide in nature and coincide further in method of use. They are in competition and are sold to the same public through the same distribution channels.

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. The degree of attention is deemed average

 

 

c) The signs

 

AQUILON	AQUILONIS
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 ‘AQUILON’ may be perceived at least by part of the public referring to the Roman god of the North Wind either because the spelling of the earlier mark corresponds entirely with the name of this god in some of the languages of the relevant territory (e.g. in English and French) or because its spelling is close to the equivalent of this name in other languages of the territory (Aquilón or Aquilo in Spanish, Áquilo in Portuguese, Aquilone in Italian, Aquilo in Dutch and in German, etc…). It cannot be excluded that at a part of the public would also associate the contested sign, ‘AQUILONIS’, with the aforementioned god on account of its close spelling with the different equivalents of this god’s name in the different languages of the relevant territory. Be it as it may, neither the earlier mark nor the contested sign has a meaning in relation with the relevant goods and hence, they are distinctive to a normal degree.

In view of the foregoing, it cannot be excluded that at least part of the public associates signs at issue with the same concept and hence, to this extent, they are conceptually identical, even though the conceptual aspect does not influence the assessment of the similarity of the signs in relation to the part of the public for which neither of the signs has a meaning.

It should be noted that 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. Also, the length of the signs may influence the effect of the differences between them. Indeed, the shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, while in short words small differences may frequently lead to a different overall impression, the public is less aware of differences between long signs such as the signs at issue. Taking this into account, and given that the earlier mark is entirely reproduced at the beginning of the contested sign whereas the signs merely differ in the last two letters of the contested sign (i.e. ‘-IS’), they are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs differs in any event in the sound of the last two letters of the contested sign. Then, depending on the specific pronunciation rules in the different languages of the relevant territory, the signs may either coincide entirely in the sound of their common letters ‘AQUILON’ (e.g. in German), or coincide largely in the sound of these letters with a slight difference in the length of the letter ‘O’ (e.g. in Dutch and in Italian) or in the sound of the letters ‘ON’ (e.g. in French where they form a nasal sound in the earlier mark whereas they are spelled out in the contested sign). Consequently, at least for these parts of the public, the signs are highly 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, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

 

In the present case, part of the goods at issue are identical or similar and part are dissimilar. They are directed at the public at large with an average degree of attention. The distinctiveness of the earlier mark must be seen as normal and the signs are, at least for part of the public, conceptually identical. Visually, they are highly similar and aurally they are too, at least for part of the public. The earlier mark is entirely reproduced at the beginning of the contested sign and even if the additional final letters of the contested sign may also introduce some aural differences in the way that the common letters are pronounced as explained above, these differences and the visual and aural differences in those final letters themselves are not enough to offset the significant similarities between the signs. Indeed, 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 addition, account is taken of the fact that 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 528 531, ‘AQUILON’.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on Spanish trade mark registrations No 2 495 315, ‘AQUILON’ (word mark) and No 2 784 551, (figurative mark), both for the following goods:

Class 33: Wines, liqueurs and other alcoholic beverages (except beers).

In comparison with the earlier mark analysed above, these earlier rights cover additional goods, namely liqueurs and other alcoholic beverages (except beers). These goods are clearly different to the remaining goods applied for in the contested trade mark, i.e. the goods in Class 29 for the same reasons as those detailed above in relation to the comparison with wines. Indeed, the contested extra virgin olive oil have just as little in common with liqueurs and other alcoholic beverages (except beers) as with wines in terms of nature, purpose and method of use. The goods at issue do not normally coincide in their producers and do not share the same distribution channels. While they may be found in the same outlets such as supermarkets, they are clearly displayed in different departments. Furthermore, these goods are neither complementary nor in competition. Hence, the remaining contested goods, extra virgin olive oil, are also dissimilar to the opponent's liqueurs and other alcoholic beverages (except beers). Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; 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

 

 

Félix ORTUÑO LÓPEZ

Martina GALLE

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.