OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 496 415
Casa Agrícola Alexandre Relvas, LDA., Herdade da Madeira Nova de Baixo, 7170-107 Redondo, Portugal (opponent), represented by Furtado - Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisboa, PORTUGAL (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)
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of Community trade
mark application No
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.
The goods on which the opposition is based are the following:
Class 33: Wines.
The contested goods are the following:
Class 33: Wine; Red wine; White wine; Sparkling wines.
The contested wine is identically contained in both lists of goods.
The contested red wine; white wine; sparkling wines are included in the broad category of the opponent’s wines. Therefore, they are considered identical.
ORO DI TERRA
Earlier trade mark
The relevant territory is Portugal.
Visually, the signs are similar to the extent that they coincide in the element ‘TERRA’. However, they differ in their remaining elements, namely the element ‘ART’ and point of the earlier mark and the elements ‘ORO DI’ of the contested sign.
Aurally, the pronunciation of the signs coincides in the sound of the element ‘TERRA’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the element ‛ART’ of the earlier mark and the elements ‛ORO DI’ of the contested sign.
Conceptually, the elements ‘ORO’ and ‘DI’ of the contested sign have no meaning for the public in the relevant territory.
The element ‘ART.’ of the earlier mark has no meaning for the public in the relevant territory, however it may be perceived as an abbreviation.
Although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘TERRA’ included in both signs will be associated with ‘land or earth’. To that extent, the signs are conceptually similar.
Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.
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.
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.
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.
Global assessment, other arguments and conclusion
The goods are identical.
Both signs are word marks. The signs are similar on the coincidence in the element ‘TERRA’, which is of normal distinctiveness. Furthermore, this word is clearly perceptible as a separate word in both signs.
Taking into account that the element ‘ART’ of the earlier mark will be perceived as a simple abbreviation and the beginning ‘ORO DI’ of the contested sign will not be understood in the relevant territory, the common element ‘TERRA’ will grasp immediately the attention of the Portuguese consumer.
Furthermore, 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, they tend to remember similarities rather than dissimilarities between signs.
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 and services. 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, in particular, taking into account the similarities arising from the element ‘TERRA’, which plays an independent distinctive role in each sign and the identity of the goods in question, 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, 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 415 743. It follows that the contested trade mark must be rejected for all the contested goods.
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
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.