OPPOSITION No B 2 044 421
Quinta da Lixa – Sociedade Agrícola, Lda., Quinta da Lixa – Monte, 4615-658 Lixa, Portugal (opponent), represented by AB Patentiena – Gabinete Técnico de Patentes e Registos, Lda., Rua da Madalena, 214, 4º, 1100-325 Lisboa, Portugal (professional representative)
a g a i n s t
Gravel & Loam Wines Limited, Level 1, 22 Foster Street, Tower Junction, Christchurch, New Zealand (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of European Union
trade mark application No
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 goods on which the opposition is based are the following:
Class 33: Alcoholic beverages, except beers.
The contested goods are the following:
Class 33: Alcoholic beverages (except beers).
The contested alcoholic beverages (except beers), notwithstanding the different punctuation, are also included in the opponent’s list of goods. They are therefore identical.
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 considered average.
Earlier trade mark
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).
Both marks are word marks, the earlier mark being composed of one word and the contested sign of two. The words ‘ALBATROZ’ (the earlier mark) and ‘ALBATROSS’ (the second word of the contested sign) will be associated with ‘a very large, chiefly white oceanic bird with long, narrow wings, found mainly in the southern oceans’ (information extracted from Oxford Dictionaries online at http://www.oxforddictionaries.com/definition/english/albatross). ‘ALBATROZ’ (the earlier mark) is the correct spelling of the word ‘albatross’ in Portuguese, while the ending ‘SS’ of the second word in the contested sign will not obscure the association with the concept of ‘albatross’. Each of these elements is distinctive in relation to the goods at issue.
The Portuguese public would not associate the word ‘SHY’ of the contested sign with any meaning, as it is not a word of the basic English vocabulary. Having no meaning, this element is distinctive, just as the meaningful second element of the contested sign is.
It follows that neither of the marks has any element that could be considered clearly more distinctive than other elements. Furthermore, neither sign has an element that could be considered dominant.
Visually, the signs coincide in the letter sequence ‘ALBATRO*’, present in both signs, forming the initial part of the earlier mark and the second word of the contested sign. The earlier mark and the second word of the contested sign are both distinctive. However, they differ in the endings of these words, namely ‘Z’ in the earlier mark and ‘SS’ in the contested sign’s second word element, as well as in the additional word ‘SHY’ of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ALBATRO*’, present identically in both signs’ distinctive words. The pronunciation differs in the sound of the endings of these words, namely ‘Z’ in the earlier mark and ‘SS’ in the contested sign’s second word element, as well as in the additional word ‘SHY’ of the contested sign. With regard to the differing endings ‘Z’ and ‘SS’, it is important to note that this difference appears at the end, where it is less noticeable, as consumers tend to pay more attention to the beginnings of signs. Furthermore, the sounds ‘Z’ and ‘SS’, placed at the end of a word, are not strikingly different.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the public in the relevant territory will associate both signs with a bird, the albatross. The word ‘SHY’ of the contested sign will not be understood. As the signs will be associated with the same distinctive concept, they are conceptually 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.
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.
Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
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 the present case, it has been established that the goods are identical and that the signs are visually and aurally similar to an average degree, while conceptually they are highly similar. The signs will both be associated with the same distinctive concept of a bird, the albatross.
Both signs contain the letter sequence ‘ALBATRO*’, followed by different endings, ‘Z’ and ‘SS’. These differing letters appear at the ends of the signs, where, visually and aurally, this difference is less noticeable. Case law states that the aural perception of the signs is particularly important in establishing a likelihood of confusion between the marks for certain goods, especially those in Class 33 (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48). The goods at issue, namely alcoholic drinks, are likely to be purchased orally (in bars or nightclubs) and in such an environment the differences at the ends of the coinciding words are even less likely to be noticed. Moreover, when pronounced, these differing letters at the ends of the words do not sound strikingly different.
The remaining difference between the signs is the additional word ‘SHY’ of the contested sign. The Opposition Division considers that this difference, on its own or in combination with the differing endings of the signs, is not sufficient to safely exclude a likelihood of confusion. The word ‘ALBATROSS’ in the contested sign plays an independent distinctive role and therefore its presence in the earlier mark results in a degree of similarity that is likely to lead consumers to believe that the goods come from the same undertaking or related undertakings.
Account is also 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).
The Opposition Division considers that the overall similarity of the signs in combination with the average distinctiveness of the earlier mark is likely to cause confusion in the minds of the relevant public in relation to the identical goods. The fact that the goods are identical also brings into play the interdependence principle mentioned in the second paragraph of this section.
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 Portuguese trade mark registration No 488 725. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Pedro JURADO MONTEJANO
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.