OPPOSITION No B 1 977 175

Sociedade Agricola da Quinta de Soutelos, LDA, Lugar de Soutelos-Canedo, 4890-143 Celorico de Basto, Portugal (opponent), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229 Lisboa, Portugal (professional representative)

a g a i n s t

Abrera S.A., Carretera Barcelona Km. 341, 50172 Alfajarín (Saragossa), Spain (applicant), represented by Pilar Azagra Sáez, Las Damas 17, Pral. Centro, 50008 Saragossa, Spain (professional representative).

On 19/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 977 175 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 of European Union trade mark application No 10 417 814, namely against all the goods and services in Classes 33, 35 and 39. The opposition is based on Portuguese trade mark registration No 382 280. 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.

1. The goods

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

Class 33: Alcoholic beverages with the exception of beer.

The contested goods and services, after the limitation made by the opponent on 29/05/2014, are the following:

Class 33: Spanish wines.

Class 35: Import, export, promotion, commercial retailing and retailing via global computer networks of wine; advertising; direct mail advertising; business organisation consultancy; commercial management assistance and consultancy and commercial and industrial management assistance and consultancy; commercial management assistance in relation to franchising; commercial and business investigations; business enquiries; business inquiries; efficiency experts; efficiency experts; business management for performing artists.

Class 39: Storage, unloading, packaging and packing, transport, delivery and distribution of wine.

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 33

The contested Spanish wines are included in the broad category of the opponent’s alcoholic beverages with the exception of beer. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to the services rendered in connection with different forms, exclusively consisting of activities around the actual sale of goods, such as wholesaling, mail order sales and online trade services in Class 35 of the contested sign.

Consequently, the contested commercial retailing and retailing via global computer networks of wine are similar to a low degree to the opponent’s alcoholic beverages with the exception of beer, which, as a broader category, also includes wine.

Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of the goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods at issue are the same is not a relevant factor for a finding of similarity. Therefore, the contested import and export are dissimilar to the opponent’s alcoholic beverages with the exception of beer.

The remaining contested services are promotion of wine; advertising; direct mail advertising; business organisation consultancy; commercial management assistance and consultancy and commercial and industrial management assistance and consultancy; commercial management assistance in relation to franchising; commercial and business investigations; business enquiries; business inquiries; efficiency experts; efficiency experts; business management for performing artists.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

Similarly, the contested promotion of wine is usually performed by specialised advertising/promotional companies that market all types of goods. Furthermore, the contested direct mail advertising is a form of advertising.

The contested business organisation consultancy; commercial management assistance and consultancy and commercial and industrial management assistance and consultancy; commercial management assistance in relation to franchising; commercial and business investigations; business enquiries; business inquiries; efficiency experts (listed twice in the applicant’s list of services); business management for performing artists are all commercial management-related services, business information services or efficiency experts services in Class 35 that are usually rendered by companies specialising in these fields, such as managers, business consultants and efficiency experts. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share and to improve their business organisation.

Apart from being different in nature from the opponent’s goods, given that services are intangible whereas goods are tangible, they serve different needs. The purpose of all the above services is different from the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are marketed through different distribution channels and target different publics. Moreover, they are neither in competition nor complementary to each other. Therefore, these services are dissimilar to the opponent’s alcoholic beverages with the exception of beer.

Contested services in Class 39

The contested storage, unloading, packaging and packing of wine refer to services whereby a company’s merchandise is packed, unload and/or kept in a particular place for a fee. Those services are not similar to the goods in Class 33 which could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and they are not in competition. Therefore, these services are dissimilar to the opponent’s alcoholic beverages with the exception of beer.

The contested transport and delivery of wine is not considered similar to alcoholic beverages with the exception of beer in Class 33. These services refer to a fleet of trucks or ships used to move goods from one place to another. These services are provided by specialist transport/delivery companies whose business is not the manufacture and sale of those goods, but the transport of them. The nature, purpose and method of use of these services and goods are different. They do not have the same distribution channels and they are not in competition. Therefore, they are dissimilar.

The contested distribution of wine is a service whereby a company’s merchandise is kept in a particular place for a fee and transported from one place to another with the aim of the goods being sold by another undertaking as part of the process of supplying goods to retailers. It targets alcoholic beverage (wine) producers and retailers and not the general public. The nature, purpose and method of use of this service are different from those of alcoholic beverages (except beers). They do not have the same providers/producers or distribution channels and they are not in competition. Therefore, these services are dissimilar to the opponent’s goods.

2. 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 found to be identical or similar to a low degree are directed at the public at large, as well as the professional public. The degree of attention when purchasing alcoholic beverages (except beer) and wine is usually average, as is the case for retail services related to these goods.

3. The signs

D’ALDEIA
Earlier national trade mark	Contested sign

The relevant territory is Portugal.

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.

The contested sign is a figurative mark consisting of the word ‘ALDEYA’ in standard white upper case letters on a square black background. The verbal element ‘ALDEYA’ has a border of white lines and is surrounded by white ornamental motifs.

Neither the earlier nor the contested mark has any elements that could be considered more dominant (visually eye-catching) than other elements. The earlier mark has no elements that are clearly more distinctive than other elements.

The contested sign is composed of the verbal element ‘ALDEYA’ and figurative elements that have limited distinctiveness, such as the square black background, the border of white lines and the white ornamental motifs of a decorative nature.

The verbal element ‘ALDEYA’ of the contested sign is an invented word; nevertheless, as its pronunciation is very similar to that of the Portuguese word ‘aldeia’ (‘al.dei.a; aɫˈdɐjɐ’) (information extracted from Infopedia Portuguese Dictionary at http://www.infopedia.pt/dicionarios/lingua-portuguesa/aldeia), meaning ‘village’ (information extracted from Collins Portuguese-English Dictionary at http://www.collinsdictionary.com/dictionary/portuguese-english/aldeia), this concept might be associated by the relevant public with the contested sign. Taking into consideration that the relevant goods are Spanish wines and the services are commercial retailing and retailing via global computer networks of wine in Class 35, the verbal element ‘ALDEYA’ is weak for these goods and services, as it indicates that they concern wine that is not produced by the wine industry, but rather from small village manufacturers.

The earlier mark consists of the word ‘ALDEIA’ preceded by the letter ‘D’ with an apostrophe that indicates the omission of the letter ‘e’ of the preposition ‘de’, which means ‘of, from’ (information extracted from Collins Portuguese-English Dictionary at http://www.collinsdictionary.com/dictionary/portuguese-english/de_1); this sign will be associated by the Portuguese-speaking public with its meaning: ‘of, from village’. Bearing in mind that the relevant goods are alcoholic beverages with the exception of beer, this element is weak for these goods, as it indicates that they come not from the wine industry, but rather from small village manufacturers.

Visually, the signs coincide in the letter sequence ‘ALDE’ and the last letter ‘A’. However, they differ in the first letter ‘D’ and the apostrophe in the earlier mark and the penultimate letter of each sign, that is, the letter ‘I’ in the earlier mark and the letter ‘Y’ in the contested sign. Furthermore, the signs are different because of the figurative elements of the contested sign, such as the non-distinctive square black background with white decorative motifs and border.

Since the signs coincide in the five letters ‘ALDE*A’ out of seven letters in the earlier mark and out of six letters in the contested sign, the signs are considered visually similar to an average degree.

Aurally, for the Portuguese-speaking public, the pronunciation of the signs coincides in the sound of the letters ‘aɫˈdɐjɐ’ (‘ALDEIA’) and, although the signs differ in the sound of the penultimate letter ‘I’/‘Y’ in the verbal elements ‘(D’)ALDEIA’ and ‘ALDEYA’, this sound will be almost the same. Nevertheless, the signs differ in the sound of the letter ‘D’ with an apostrophe (‘de’).

Therefore, the signs are aurally similar to a high degree.

Conceptually, while the Portuguese-speaking public will perceive the earlier mark, ‘D’ALDEIA’, as having the meaning ‘de aldeia’/‘of, from village’, this public may also associate the verbal element of the contested sign, ‘ALDEYA’, with the word ‘aldeia’ and the concept of a village.

The signs can be associated with the same concept (‘village’). However, in the earlier mark it may refer to the origin of the goods and in the contested sign it may refer to a place; therefore, in both cases it is weak for the goods and services in question. Therefore, they are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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, considering what has been stated in section c) of this decision, as the earlier trade mark as a whole means ‘of, from village’ and in relation to the protected goods, alcoholic beverages with the exception of beer, it will be associated by the Portuguese-speaking public with its meaning, the distinctiveness of the earlier mark must be seen as low for these goods.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 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).

As seen above, the contested goods are identical and some of the contested services are similar to a low degree or dissimilar to the opponent’s goods. The relevant goods/services target the public at large and/or a professional public, whose degree of attention will be average.

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).

The signs are visually and conceptually similar to an average degree and aurally similar to a high degree. The verbal elements of the signs, ‘D’ALDEIA’ and ‘ALDEYA’, have five letters (‘ALDE*A’) in common out of seven letters in the earlier mark and out of six letters in the contested sign. Both signs refer to the concept of ‘village’ due to the verbal elements ‘ALDEIA’ in the earlier mark and ‘ALDEYA’ in the contested sign, which, by virtue of their aural resemblance, can be associated with the same concept by the relevant Portuguese-speaking public.

Nevertheless, the verbal elements of both marks will be weak for the Portuguese-speaking public, as they clearly refer to the origin (provenance) and quality of the goods that are the subject of the services, and, because they indicate that the alcoholic beverages with the exception of beer, or the wines, come from small village manufacturers rather than from the wine industry, these goods can be expected to have particular characteristics in terms of taste, colour and aroma. This is particularly relevant for the wine that is marketed by the opponent and the applicant.

Consequently, the distinctiveness of the earlier trade mark, as it is based only on the verbal element ‘D’ALDEIA’, which is associated with the meaning ‘de aldeia’/‘from, of village’, is low for all the protected goods, that is, alcoholic beverages with the exception of beer. This factor, in the opinion of the Opposition Division, has a significant influence on the assessment of the existence of likelihood of confusion in the present case.

Furthermore, the initial part of the earlier mark (D’) is visually quite striking and influences the visual and aural perception of the signs. Moreover, this part will be perceived as the preposition ‘de’ (‘of, from’) and, in connection with the word ‘aldeia’, it refers to a meaningful and specific expression, ‘de aldeia’, although this expression is not written in the most common way in Portuguese and, consequently, is likely to be remembered by the public. In addition, as regards the verbal element of the contested sign, the letter ‘Y’ of the word ‘ALDEYA’ is not normal in Portuguese and therefore it will be instantly perceptible in the invented word ‘ALDEYA’ and will be remembered by the Portuguese-speaking public, thus differentiating both signs, since it is visually remarkable, taking into account the usual letter ‘I’ in the word ‘ALDEIA’ in the earlier mark. In addition, the figurative elements of the contested sign, although decorative and not particularly distinctive, are additional elements that will help the relevant public to differentiate the signs.

Taking into account, on the one hand, the low degree of distinctiveness of the earlier mark for the goods in question on the relevant market (wines) and the additional elements of the earlier mark, that is, the letter ‘D’ and the apostrophe, which are clearly perceptible and meaningful for the relevant public (‘de’), and therefore differentiate the signs from the conceptual point of view, and on the other hand the letter ‘Y’ in the contested sign, which is striking for the Portuguese-speaking public, and the additional, although not particularly distinctive, figurative elements, there is no likelihood of confusion between the marks.

Taking into account all the above and the fact that the goods are identical and some of the services are similar to a low degree, even when attaching more importance to the aural similarity, there is no likelihood of confusion on the part of the Portuguese-speaking public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Richard BIANCHI

Karin KUHL

Zuzanna STOJKOWICZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.