OPPOSITION No B 2 460 452

Hijos de Antonio Barceló, S.A., Carretera Nacional 122 Km. 325, 6, 47350 Quintanilla de Onésimo (Valladolid), Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Casa Agrícola HMR SA, Rua Soeiro Pereira Gomes, Lote 1-6ºB, 1600-196 Lisboa, Portugal (applicant), represented by Gastão Da Cunha Ferreira Lda., Rua dos Bacalhoeiros nº. 4, 1100-070 Lisboa, Portugal (professional representative).

On 27/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 460 452 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 of Community trade mark application No 13 260 906. The opposition is based on Community trade mark registration No 11 035 979. 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 33: Wine and alcoholic beverages (except beers).

Class 35: Commercial retailing, Wholesaling and sale via global computer networks of wine and alcoholic beverages.

Class 39: Distribution, transport; Packaging and storage of wine and alcoholic beverages.

The contested goods are the following:

Class 33: Alcoholic beverages (except beers).

Contested goods in Class 33

The contested alcoholic beverages (except beers) are identical to the opponent’s goods alcoholic beverages (except beers).

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, both signs are figurative trade marks. The earlier sign consists of the letter ‘P’ having a tilde on top and written in a rather standard font in black with an inner white contour. Below the letter is the smaller verbal element ‘PEÑASCAL’ written in standard uppercase letters. The verbal elements appear within a grey rectangle having five thin parallel white lines in its lower end. The contested sign consists of the stylised letter ‘P’, written in such manner that its vertical portion is detached from its rounded portion. In addition, the contested sign contains the verbal element ‘POUSIO’ which appears in the upper left corner of the letter ‘P’, written vertically, in much smaller size in a standard font. The point of similarity between the signs is that both contain a representation of the letter ‘P’ and that their smaller verbal elements ‘PEÑASCAL’ and ‘POUSIO’ both start with ‘P’ and contain an ‘S’. However, in spite of the fact that the big letter ‘P’ will be recognised in both signs, its representation differs in many aspects from a visual perspective: it is relatively standard in the earlier sign, has white inner contours and has a tilde on top, whereas the ‘P’ of the contested sign is more unusual and atypical. As regards the further coincidences in the letter ‘P’ and ‘S’ of the verbal elements ‘PEÑASCAL’ and ‘POUSIO’ of the signs, these coincidences are not relevant from a visual perspective as the verbal elements are positioned in completely different places within the signs and one is horizontal, while the other is vertical. Therefore, in view of the above findings, it is considered that the signs are visually similar only to a limited extent.

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 ‘P’ present identically in both signs, and to that extent the signs are aurally similar. The tilde placed on top of the ‘P’ in the earlier sign does not affect its pronunciation in any of the relevant languages since such letter does not exist. The signs differ in the sound of the verbal elements ‘PEÑASCAL’ of the earlier sign and ‘POUSIO’ of the contested sign. Although they share the initial letter ‘P’ and the letter ‘S’, this coincidence is not particularly relevant, as the overall consonant and vowel structure of the syllables is rather different, resulting in a different rhythm and intonation of pronunciation.

Conceptually, the signs have in common the concept of the letter ‘P’. However, it must be noted that due to the tilde on top of the letter ‘P’ in the earlier mark, part of the consumers may consider that this letter is not exactly the same as the letter ‘P’. The word element ‘peñascal’ included in the earlier sign will be associated with ‘rocky hill, rocky place’ (Collinsdictionary.com) by the Spanish-speaking part of the public. The verbal element ‘pousio’ of the contested sign will be associated with a ‘time period in agriculture in which fields are not planted or cropped’ (Dicionário da Porto Editora) by the Portuguese-speaking part of the public. However, neither of the verbal elements ‘PEÑASCAL’ of the earlier sign nor ‘POUSIO’ of the contested sign has a meaning for the remaining part of the public in the relevant territory. In addition, as regards the big letter ‘P’ included in the signs, it is reasonable to assume that it will probably be perceived by the relevant consumers as being the initial letter of the verbal element ‘PEÑASCAL’ of the earlier sign and of ‘POUSIO’ of the contested sign, as both words start with the same letter ‘P’. Consequently, in view of the above findings, the signs are similar to the extent they share the concept of the letter ‘P’. Nevertheless, as mentioned above the signs would differ in the concept of ‘peñascal’ for the Spanish-speaking part of the public and ‘pousio’ as regards the Portuguese-speaking part of the public.

Taking into account the abovementioned visual, aural and partial conceptual coincidences, it is considered that the signs under comparison are similar to the abovementioned extent.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

As regards the earlier sign, it should be noted that it is composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature. It is for this reason that the verbal elements are considered more distinctive than the figurative elements. Consequently, the additional figurative elements, namely the grey rectangle and the white parallel lines have only a limited impact when assessing the likelihood of confusion between the marks.

The contested sign has no elements which could be considered clearly more distinctive than other elements.

The stylised letter ‘P’ with the tilde on top is the dominant element of the earlier mark, as it is the most eye‑catching.

Similarly, the stylised letter ‘P’ is the visually dominant element of the contested sign because it overshadows the ‘POUSIO’ verbal element by virtue of its position and size.

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 trade mark has a reputation and enjoys a high degree of recognition among the relevant public in Spain in connection with part of the goods and services for which it is registered, namely in relation to all the goods in Class 33. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 18).

The opponent submitted the following evidence included in its letter of observations:

• A short history of the opponent company (the source is indicated by the opponent as the opponent’s webpage www.habarcelo.es but the extract itself in not enclosed; the date is not indicated either).

• Three screenshots displaying wines bearing the opponent’s trademark (the source is indicated by the opponent as ‘the opponent’s webpage’ but the extracts themselves are not enclosed; the date is not indicated either).

• A screenshot showing that the wine ‘PEÑASCAL Frizzante 5.5 Verdejo’ won a gold medal in 2013 in a contest that took place in Germany (the source of the screenshot is not indicated).

• A declaration dated 15/04/2015 signed by the financial director of the opponent company, in which he states the number of boxes and the number of bottles of wine sold under the brand ‘PEÑASCAL’ in the period January 2009 - March 2015.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

This is because all of the above listed materials are information coming from the opponent itself. The history of the opponent and the enclosed screenshots do not have any probative value: they are simply information and screenshots pasted in the observations of the opponent and bear no web address or date. Even if it is assumed that their source is the opponent’s webpage, they are insufficient and do not demonstrate that the earlier mark enjoys recognition among the relevant public. In relation to the declaration, the information included therein originates from the opponent and is not backed up by any additional evidence confirming the number of sales. Furthermore, the trade mark quoted therein is the brand ‘PEÑASCAL’ and it is not very clear whether it corresponds to the earlier trade mark on which the opposition is based.

Therefore, in the absence of any further evidence, such as surveys on the mark’s recognition, invoices, affidavits, press clips, advertisements etc., to prove that the sign enjoys a high degree of distinctiveness/reputation in Spain, the Opposition Division concludes that the opponent has failed to prove that the earlier trade mark has acquired a reputation and/or a high degree of distinctiveness through use.

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 relevant 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, despite the presence of some less distinctive figurative elements in the mark as stated above in section c) of this decision.

5. 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 to be average.

6. Global assessment, other arguments and conclusion

The goods have been found to be identical and their purchase and selection does not require a higher-than-average level of attention.

The opponent argues that the principal and dominant element in both marks is the stylised letter ‘P’ being much bigger than the other elements of the signs. However, although the stylised ‘P’ letter is the dominant element in both signs, this does not mean that the remaining elements are irrelevant. The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case, including the degree of similarity between the signs. The Court has also held that 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.

In the present case, the Opposition Division observes that, in spite of the abovementioned coincidences in the signs, there are substantial disparities between them. It must be noted that regardless of the aural and conceptual coincidence due to the common letter ‘P’, which is dominant in both signs, the representation of this element in the signs causes a sufficiently different visual impression. As it was pointed out, the two letters are stylised in a different way and their design and overall graphical representation is quite different. Furthermore, the overall structure and layout of the signs is rather different taking into account the positioning of the other verbal and figurative elements.

Moreover, in the present case, although the inscriptions ‘PEÑASCAL’ of the earlier sign and ‘POUSIO’ of the contested sign are much smaller, the consumers will notice them. Both words are distinctive and start with the letter ‘P’, which makes it reasonable to assume that the consumers will perceive the stylised letter ‘P’ as an abbreviation or as the initial letter of the verbal element that follows it or surrounds it. This is because the letter ‘P’ is rather short and stylised and will probably not be seen as the main indicator of trade origin.

Taking into account all the circumstances of the case, the Opposition Division finds that there is no likelihood of confusion on the part of the public. In spite of the limited visual similarity and certain aural and conceptual similarity between the signs, the similarities are eclipsed by the other clearly different elements in the signs. The additional different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks. The overall impression created by the signs is different and despite the identity of the goods, the Opposition Division considers that the similarities between the marks are not sufficient to trigger a likelihood of confusion.

The opponent refers to previous decisions of the Office to support its arguments. 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 CTMR, and not to the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because the signs are not comparable.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as based on Article 8(1)(b) CTMR.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) CTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) CTMR.

Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

Therefore, the opponent failed to prove the alleged reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) CTMR is not met, the opposition must be rejected as unfounded.

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 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 (7)(d)(ii) CTMIR, 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

Julia TESCH

Liliya YORDANOVA

Ewelina SLIWINSKA

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.