OPPOSITION No B 2 490 384

El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Masottina S.p.A, Via Custoza, 2, 31015 Conegliano (TV), Italy (applicant), represented by D'agostini Group, Rivale Castelvecchio, 6, 31100 Treviso, Italy (professional representative)

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 490 384 is upheld for all the contested goods.

2. Community trade mark application No 13 580 402 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 13 580 402. The opposition is based on Community trade mark registration No 10 197 655. The opponent invoked Article 8(1)(b) 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

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: Wine; Red wine; White wine; Sparkling wines.

The contested wine; red wine; white wine; sparkling wines are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are considered identical.

2. The signs

TIERRA DE ORO	ORO DI TERRA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 08/09/2008, C‑514/06 P, ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

Visually, the signs are similar to the extent that they share the word ‘ORO’, the sequence of the letters ‘T-*-E-R-R-A’ and the letter ‘D’. However, they differ in the order of the word ‘ORO’, in the additional letter ‘I’ of the word ‘TIERRA’ in the earlier mark, and in the letters of second elements ‘*E/*I’ of the earlier mark and the contested sign, respectively.

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 word ‘ORO’ which are present in both signs, in reverse order. The signs also coincide in the sequence of the letters ‘T-*-E-R-R-A’ and the letter ‘D’. However, they differ in the order of the word ‘ORO’, in the additional letter ‘I’ of the word ‘TIERRA’ in the earlier mark, and in the letters of second elements ‘*E/*I’ of the earlier mark and the contested sign, respectively.

Conceptually, the word ‘TIERRA’ of the earlier trade mark will be perceived by Spanish speaking public as ‘land or earth’. The word ‘ORO’ that the marks have in common will be perceived as meaning ‘gold’ by the public in the relevant territory. The element ‘DE’ is a preposition in Spanish which corresponds to the word ‘of’. Therefore, the public in the relevant territory will perceive the earlier sign as meaning ‘land of gold’. Although the element ‘TERRA’ of the contested sign does not have any meaning for the public in the relevant territory, it is likely to be perceived as a misspelling of the word ‘TIERRA’ by the Spanish public. The element ‘DI’ of the contested sign will be perceived as the equivalent of the Spanish preposition ‘DE’, that means ‘of’. Therefore, the contested sign may be associated with the meaning ‘gold of land’ by the public in the relevant territory.

Since the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

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.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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, 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. 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 level of attention will be average.

6. Global assessment, other arguments and conclusion

The goods are identical.

Both signs are word marks composed of three words. The signs are visually and aurally similar to the extent that they coincide in the word ‘ORO’, in the sequence of letters ‘T-*-E-R-R-A’ and the letter ‘D’. Although the signs are not conceptually similar, this fact is not sufficient to counterbalance the overall similarity between them resulting from their visual and aural coincidences.

Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks and must trust in their imperfect recollection of them. In addition, consumers tend to remember similarities rather than dissimilarities between signs.

When evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is also appropriate to take into account the category of goods and the way they are ordered and/or purchased. The degree of aural similarity is more relevant to goods normally ordered orally in bars, restaurants and pubs, such as alcoholic drinks. This particular method or customary way of ordering goods may mean that increased importance is attributed to the phonetic similarity between the verbal components of the signs, despite their visual differences.

The earlier mark has a normal degree of distinctiveness because it has no meaning for any of the goods in question from the perspective of the public in the relevant territory.

Finally, the Opposition Division must take into account the interdependence principle between the relevant facts, that is, that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods. In the case in question, the goods are identical. The lesser degree of similarity between the signs is offset by the identity of the goods.

In view of the foregoing, the Opposition Division is of the opinion that the differences between the marks are not sufficient to counteract their similarities, and in consequence the public is likely to believe that the goods come from the same undertaking or from economically linked undertakings.

Considering all the above, in particular the identity of the goods in question, there is a likelihood of confusion on the Spanish-speaking part of the public. As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 10 197 655. It follows that the contested trade mark must be rejected for all the contested goods.

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

Robert MULAC

Hasan Oguzhan KARSLI

Eamonn KELLY

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.