OPPOSITION No B 2 503 087

Concilio S.p.A., Zona Industriale, 2, 38060 Volano (TN), Italy (opponent), represented by Mondial Marchi S.r.l., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative)

a g a i n s t

Bodegas Victorianas, S.A., Carretera de Yécora s/n, 01320 Oyón (Álava), Spain (applicant), represented by González Vacas, S.L., Sagasta 4, 28004 Madrid, Spain (professional representative)

On 17/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 503 087 is upheld for all the contested goods.

2. Community trade mark application No 13 602 404 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 13 602 404. The opposition is based on, inter alia, Community trade mark registration No 5 457 775. The opponent invoked Article 8(1)(a) and (b) CTMR.

DOUBLE IDENTITY – ARTICLE 8(1)(a) CTMR

Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 5 457 775.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); wine.

Alcoholic beverages (except beer) are identically contained in both lists of goods.

The contested wine is included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they are considered identical.

2. The signs

CONCILIO	CONCILIO
Earlier trade mark	Contested sign

The signs are identical.

3. Conclusion

The signs were found to be identical, since they are both composed of the verbal element ‘CONCILIO’ and all the contested goods are identical. In the present case, given the identity of both the signs and the goods, the opposition must be upheld according to Article 8(1)(a) CTMR.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 5 457 775. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Community trade mark registration No 5 457 775 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

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

Eamonn KELLY

Francesca DINU

Plamen IVANOV

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.