OPPOSITION No B 2 437 765

Viñedos del Contino S.A., Finca de San Rafael s/n, 01309 Laserna-La Guardia (Alava), Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Henkell & Co. Vinpol Polska Spółka z o.o., ul. Mazowiecka 48, 87100 Toruń, Poland (applicant), represented by Kancelaria Prawa Własności Przemysłowej i Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spółka Partnerska, ul. Reduta Żbik 5, 80-761 Gdańsk, Poland (professional representative).

On 26/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 437 765 is upheld for all the contested goods.

2. Community trade mark application No 13 021 902 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 021 902. The opposition is based on Community trade mark registration No 10 975 241. The opponent invoked Article 8(1)(b) and 8(5) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services

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

Class 16: Forms and Packaging materials made of paperboard, all services in this class; Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists’ materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers’ type; Printing blocks.

Class 32: Beers, ale and porter; Aerated and other non-alcoholic drinks; Syrups and other preparations for making

Class 33: Alcoholic beverages (except beers),Wine and alcoholic beverages containing wine.

Class 35: Procurement services for others (purchasing goods and services for other businesses), Presentation of goods on any communication media, for retail purposes; Advertising, including promotion relating to the sale of goods and services for others by means of the dissemination of advertising matter and the dissemination of advertising messages on computer networks, direct mail advertising, in particular for domestic or cross-border remote sales via catalogue; Import and export services, agencies and sole agencies; Retail trade in stores; Retail trade services in stores and via computer and telematic networks; All the aforesaid relating to wine, beverages and foodstuffs.

Class 39: Transport and storage of wine, beverages and foodstuffs, delivery of wine, transport; Packaging and storage of goods; Travel arrangement.

The contested goods are the following:

Class 33: Alcoholic beverages, including vodka, wine, brandy, rum, liqueurs, cocktails, aperitifs, fruit liqueurs, mead (hydromel), alcoholic beverages containing fruit, ciders, digesters (spirits); Alcoholic essences and extracts.

The earlier Community trade mark registration is registered for the entire class heading of Class 33 of the Nice Classification. It was filed on 19/06/2012. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods included in the alphabetical list of the class concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 10th edition (2012).

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 33

The contested alcoholic beverages, including vodka, wine, brandy, rum, liqueurs, cocktails, aperitifs, fruit liqueurs, mead (hydromel) refer to the broad category of alcoholic beverages (providing some examples) and are therefore identical to the opponent’s alcoholic beverages (except beer).

The contested alcoholic beverages containing fruit, ciders, digesters (spirits) are included in the opponent’s broad category of alcoholic beverages (except beer) and are also identical.

The contested alcoholic essences and extracts are included in the alphabetical list of goods of Class 33 of the 10th edition (2012) of the Nice Classification, for which the earlier Community trade mark is deemed to be registered. Therefore, these goods are also identical.

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, some of the goods found to be identical are directed at the public at large, for example alcoholic beverages. However alcoholic essences and extracts are usually directed at professionals who make alcoholic beverages and, considering the impact that these ingredients may have on the quality/taste of the final product, the degree of attention may be above average for these goods.

3. The signs

CONTINO	TOTINO
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the seven-letter word mark ‘CONTINO’ and the contested mark is the six-letter word mark ‘TOTINO’.

The marks at issue do not have any elements that are more dominant or more distinctive than others.

Visually, the signs coincide in their second letters (‘O’) and in their final four letters (‘TINO’), whereas they differ in their first letters (‘C’ versus ‘T’) and in the additional, middle letter ‘N’ of the earlier mark. In total, the earlier sign and the contested sign have five out of seven and six letters, respectively, in common.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark and the difference in the first letters of the signs is relevant. However, this difference is counterbalanced by the fact that the signs have five letters in common, in the same order and four of them in sequence, as well as by the signs’ similar lengths and structures.

In view of the above, the signs are considered similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‘O’ and in the syllables ‘TI/NO’. They differ in the sounds of their first letters and of the letter ‘N’ of the earlier mark. This letter ‘N’ does not, however, lead to an additional syllable in the sign. Therefore, both marks have three syllables and the marks have the same rhythm and intonation. Taking into account the above, and the fact that the marks have the same sequence of vowels, it is considered that they are similar to a high degree.

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.

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.

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.

5. Global assessment, other arguments and conclusion

The overall assessment entails a certain interdependence between the factors taken into account and, in particular, the similarity between the trade marks and between the goods and 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

The contested goods are all identical and the degree of attention will be average for some and above average for others.

The signs are visually similar to an average degree and aurally similar to a high degree. The earlier mark is intrinsically distinctive to a normal degree.

Some of the relevant goods are alcoholic beverages, which are usually purchased verbally in bars and restaurants, and therefore the high degree of aural similarity is relevant for these goods.

Account must be 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). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Neither of the signs has a meaning that could enable the public to distinguish easily between them.

In its observations, the applicant argues that there are many trade marks that, like the earlier mark, include the element ‘CONTI’, and it refers to a few Community trade mark registrations in Class 33. However, the applicant does not clarify how this is relevant to the present case and the Opposition Division fails to grasp the applicant’s intention; considering that the other mark does not include the element ‘CONTI’, it does not matter if ‘CONTI’ is a weak element in the earlier mark. At any rate, the mere existence of several trade mark registrations including the element ‘CONTI’ does not in any way demonstrate that the earlier mark is weak because, firstly, it does not reflect the situation on the market – that is, it does not show that all of these marks are in use – and, secondly, the earlier mark is not ‘CONTI’ but ‘CONTINO’, which is not included in any of the trade marks mentioned.

It follows that, considered cumulatively, the degree of similarity between the trade marks in question and the identity between the contested goods are sufficient to conclude that a significant part of the relevant public, even when it has a higher than average degree of attention, is likely to confuse the signs and believe mistakenly that the goods marketed under the signs in question come from the same undertaking or from economically linked undertakings.

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 Community trade mark registration. 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/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) CTMR.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Frédérique SULPICE

Catherine MEDINA

Pedro JURADO MONTEJANO

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.