OPPOSITION No B 2 603 267

Zimmermann-Graeff & Müller GmbH, Barlstr. 35, 56856 Zell/Mosel, Germany (opponent), represented by Rechtsanwälte Rohwedder & Partner Kaiserstr. 74, 55116 Mainz, Germany (professional representative)

a g a i n s t

Shenzhen Dahu Renjia Investment Management Co. Ltd., Yunhai Shanzhuang Jinsha Road, Dapeng Street, Dapeng New District, Shenzhen City, Guangdong Province, Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 14/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 603 267 is upheld for all the contested goods, namely:

Class 32: Beer; malt beer; ginger beer; beer wort; preparations for making beverages; essences for making beverages.

Class 33: Cider; wine; brandy; whisky; alcoholic essences; alcoholic extracts; alcoholic beverages, except beer; liqueurs; aperitifs; rum.

2. European Union trade mark application No 14 337 811 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 337 811, namely against all the goods in Classes 32 and 33. 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 European Union trade mark registration No 11 508 231. The opponent invoked Article 8(1)(b).

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

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), wine, spirits and liqueurs, beverages containing wine.

The contested goods are the following:

Class 32: Beer; malt beer; ginger beer; beer wort; preparations for making beverages; essences for making beverages.

Class 33: Cider; wine; brandy; whisky; alcoholic essences; alcoholic extracts; alcoholic beverages, except beer; liqueurs; aperitifs; rum.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 32

The contested beer; malt beer and ginger beer are similar to the earlier goods, which are types of alcoholic beverages. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings; they have the same purpose and are in competition.

The contested beer wort; preparations for making beverages and essences for making beverages do not contain any alcohol and are not beverages as such, but are used in the production of alcoholic beverages, such as beer and liqueurs. They are considered similar to a low degree to alcoholic beverages in general, since they might be manufactured by the same producer (e.g. some spirit producers also produce and market essences, extracts and flavours), they can have the same end users and they have the same distribution channels.

Contested goods in Class 33

The contested wine; alcoholic beverages, except beer; liqueurs are identically contained in both lists of goods.

The contested cider; brandy; whisky; aperitifs; rum are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

The contested alcoholic essences; alcoholic extracts are preparations containing alcohol (used as solvent) and the aromatic principles of a plant, spice, nut, herb or fruit, etc. Their nature and purpose differ from those of alcoholic beverages, since they are not beverages as such and are not manufactured by the same process (maceration or chemical synthesis versus distillation or fermentation). However, they are considered similar to a low degree to alcoholic beverages in general, in the same way as the abovementioned non-alcoholic preparations and essences, since they might be manufactured by the same producer (e.g. some spirit producers also produce and market essences, extracts and flavours), they can have the same end users (e.g. when used for preparing home-made alcoholic drinks and cocktails) and they have the distribution channels (they are usually found in liquor shops and in the same sections as spirits in supermarkets).

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, the goods found to be identical and (lowly) similar are directed at the public at large and at professionals in the alcoholic products industry. The degree of attention may vary from average to high.

As the goods of both marks target the general public and specialists, the likelihood of confusion will be assessed on the basis of the perception of the part of the public that pays less attention, as these are the people who are more prone to being confused. The degree of attention for the goods in question, namely alcoholic beverages, is considered to be average.

3. The signs

SAINTVAL
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 given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 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.

The earlier sign consists of the word ‘SAINTVAL’, which has no meaning in Spanish in relation to the goods in question and must be considered to have a normal degree of distinctiveness.

The contested mark consists of the words ‘DE SAINVAL’ in upper case letters, above which are two highly stylised letters ‘DS’, which are not immediately recognisable as such. At the top and bottom of the sign, a fleur-de-lis is depicted on a stylised line. All the elements that make up the sign are gold. The Opposition Division considers that the stylised letters are more visually eye-catching than the words ‘DE SAINVAL’, as their size makes them visually more prominent.

However, as described above, the letters are highly stylised in such a way that it is realistic to assume that only a part of the public will perceive the letters ‘DS’ as the initials of the word element ‘DE SAINVAL’. The word ‘DE’ in Spanish means ‘from’ or ‘of’, indicating a possible origin of the products, and therefore lacks distinctiveness. The word ‘SAINVAL’ has no meaning in Spanish.

Visually, the signs coincide in the letters ‘sain*val’ of the word elements ‘SAINTVAL’ and ‘SAINVAL’, and which are not particularly stylised in the contested sign. The signs differ in the non-distinctive word ‘DE’, the stylised initials ‘DS’ and the figurative elements of the contested sign.

However, in relation to the differences between the signs due to the figurative elements of the contested sign, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

With this in mind, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SAIN*VAL’, present identically in both signs. The signs differ in the fifth letter, ‘t’, of the earlier mark. Particularly in Spanish, the pronunciation of the fifth letter, ‘t’, is weakened by its position in the middle of the sign. The pronunciation differs in the sound of the element ‘DE’ and – when pronounced – in the initials ‘DS’ of the contested sign, which have no counterparts in the earlier sign.

Consequently, the signs are aurally highly similar.

Conceptually, as described above, the element ‘SAINVAL’ in the contested sign will not be perceived as having a meaning by the relevant part of the public. The element ‘DE’ in the contested sign will be perceived as a possible indicator of an origin, since it means ‘from’ or ‘of’. The figurative elements of the contested sign, namely the stylised lines and the fleurs-de-lis, are likely to be perceived as a type of emblem. The stylised letters ‘D’ and ‘S’ will be perceived as initials of the word element ‘DE SAINVAL’, which is below them. However, since the earlier sign lacks any meaning for the Spanish-speaking part of the public, the signs are not conceptually similar, since one of the signs will not be associated with any meaning.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 Spanish-speaking public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods are identical, similar or similar to a low degree to those covered by the earlier mark. The similarity between the signs arises from the distinctive word ‘SAINTVAL’, which constitutes the earlier mark, and the word element ‘SAINVAL’ in the contested sign. As explained in section c) of this decision, the signs coincide in the letters ‘sain*val’ and the difference in one letter in the middle of the word elements is likely to pass unnoticed by the relevant Spanish public. For this reason, the signs are aurally highly similar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. This assumption is reinforced for the Spanish-speaking part of the public because of the meaning of the word ‘DE’ in the contested sign.

Although the differences between the signs are confined to stylised elements, it is considered that – even if they are visually more eye-catching – they are insufficient to enable the average consumer to safely distinguish between the signs. As stated above, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, because the public tends to refer to a sign by its verbal element. Moreover, the use of emblem-type labels in relation to the contested goods is quite common on the market. It follows that the consumer will focus on the verbal elements ‘DE SAINVAL’.

In the present case, this is of particular relevance, as the nature of the goods is such that they can be selected from a restaurant menu or in a bar without the consumer having direct visual contact with the sign.

Considering the above, there is a likelihood of confusion on the part of the Spanish-speaking public. As stated above, 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 European Union trade mark registration 11 508 231. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 11 508 231 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 (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Michele M. BENEDETTI-ALOISI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.