OPPOSITION No B 2 638 008

Fratelli Martini Secondo Luigi S.p.A., Via Santa Radegonda 11, 20121 Milano, Italy (opponent), represented by Buzzi, Notaro & Antonielli D'Oulx, Via Maria Vittoria, 18, 10123 Torino, Italy (professional representative)

a g a i n s t

Les Cantinis di Sandro Persello, Via dei Prati 2, 33010 Colloredo di Monte Albano (Udine), Italy (applicant), represented by All Studio, Viale Venezia 277, 33100 Udine, Italy (professional representative).

On 22/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 638 008 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 550 313, namely against all the goods in Class 33 and some of the services in Class 43. The opposition is based on international trade mark registration No 1 115 473 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

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 and services

The goods and services on which the opposition is based are the following:

Class 33: Wines and sparkling wines.

Class 43: Services for providing food and drink; temporary accommodation.

The contested goods and services are the following:

Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages; wine; spirits and liquors; bitters; aperitifs; low alcoholic drinks; edible alcoholic beverages; alcoholic carbonated beverages, except beer; schnapps; brandy; distilled spirits of rice (awamori); korean distilled spirits (soju); peppermint liqueurs; spirits [beverages]; anisette [liqueur]; distilled beverages; extracts of spiritous liquors; gin; grappa; kirsch; ginseng liquor; blackcurrant liqueur; liqueurs; coffee-based liqueurs; scotch whisky based liqueurs; cream liqueurs; herb liqueurs; fermented spirit; flavored tonic liquors; rum; vodka; whisky; malt whisky; blended whisky; scotch whisky; sparkling wines; fortified wines; aperitifs with a distilled alcoholic liquor base; wine-based drinks; beverages containing wine [spritzers]; piquette; low-alcoholic wine; sparkling grape wine; cooking wine; table wines; fruit wine; sparkling fruit wine; sweet wines; still wine; natural sparkling wines; rose wines; white wine; mulled wines; grape wine; strawberry wine; yellow rice wine; red wine; liquor-based aperitifs; wine-based aperitifs; alcoholic aperitif bitters; alcoholic coffee-based beverage; alcoholic tea-based beverage; rum-based beverages; alcoholic beverages of fruit; fruit (alcoholic beverages containing -); pre-mixed alcoholic beverages, other than beer-based; alcoholic energy drinks; alcopops; prepared wine cocktails; alcoholic fruit cocktail drinks; alcoholic cocktails containing milk; prepared alcoholic cocktails; alcoholic cocktails in the form of chilled gelatins; cocktails; alcoholic fruit extracts; alcoholic cocktail mixes; rum punch; wine punch; alcoholic punches; alcoholic essences; alcoholic extracts.

Class 43: Providing food and drink; catering for the provision of food and beverages; bistro services; cocktail lounge buffets; food and drink catering for cocktail parties; wine tasting services (provision of beverages); providing of food and drink via a mobile truck; providing food and drink in internet cafes; providing food and drink in restaurants and bars; providing food and drink in bistros; providing food and drink catering services for exhibition facilities; delicatessens [restaurants]; arranging of wedding receptions [food and drink]; corporate hospitality (provision of food and drink); pizza parlors; pubs; preparation and provision of food and drink for immediate consumption; grill restaurants; cocktail lounge services; takeaway services; banqueting services; bar services; cafeterias; mobile catering services; wine bar services; canteens; hospitality services [food and drink]; restaurant services; hotel restaurant services; restaurant services incorporating licensed bar facilities; take-out restaurant services; restaurant services provided by hotels; club services for the provision of food and drink; mobile restaurant services; self-service restaurants; services for the preparation of food and drink; night club services [provision of food]; provision of information relating to the preparation of food and drink; provision of information relating to restaurants; snack-bars; serving of alcoholic beverages; serving food and drink for guests; serving food and drink in restaurants and bars; serving food and drink for guests in restaurants.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 and services assumed to be identical are directed at the public at large. The degree of attention is deemed average.

3. The signs

CANTI
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 earlier sign is a word mark whereas the contested sign is a figurative mark consisting of a figurative element which might be perceived as a wineglass in which a letter ‘L’ in script type is inserted and the verbal element ‘LES CANTINIS’ below. Part of the public will perceive a letter ‘C’ laid down, instead of a wineglass, and therefore associate the letters ‘LC’ to the verbal elements ‘LES CANTINIS’. The analysis below will go on for the part of the public that clearly associate the figurative element with a wineglass in which the letter ‘L’ appears inserted since this public is the more likely to be confused.

Taking into account that the relevant goods and services are related to drinks, the figurative element in the contested sign is weak for these goods and services. Therefore, the verbal elements ‘LES CANTINIS’ and the letter ‘L’ are considered the most distinctive elements in this mark.

Visually, the signs coincide in the sequence of letters ‘CANTI’ which constitute the sole word of the earlier mark and appear in the second verbal element of the contested mark. However, they differ in the additional word of the contested sign ‘LES’, as well as in the letters ‘NIS’ placed at the end of the second word, and in the figurative element of this sign, which includes the letter ‘L’. They differ in the overall appearance since the earlier mark is made up of only one word whereas the contested sign includes two words and one figurative element.

Taking into account that the marks have different beginnings and this is the part of the marks where consumers tend to focus, the marks are similar to a low degree.

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 letters ‘CANTI’, present in both signs. The pronunciation differs in the syllable ‘LES’ and the sound of the final letters ‘NIS’ of the contested sign. They further differ in the rhythm and intonation due to their difference in length. The Opposition Division considers unlikely that the public pronounces the letter ‘L’.

Therefore, the signs are similar to a low degree.

Conceptually, the earlier mark will be associated with the plural of the word ‘song’ by the Italian-speaking part of the public. For the remaining part of the public, this word mark has no meaning. Contrary to the opponent’s opinion, the contested sign’s verbal elements are meaningless even for the Italian-speaking public. The word ‘CANTINIS’ is sufficiently far away from ‘CANTI’ to be associated to the same concept or considered a misspelling. Indeed, verbal elements should not be artificially dissected and this word does not clearly permit to identify different components that should be considered as separate elements. However, the figurative element will be associated with a wineglass. Therefore, the marks are not conceptually similar.

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

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 and services 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. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In the present case, the goods and services have been assumed to be identical. The signs are, however, visually and aurally similar only to a low degree on account of the five letters the signs have in common, ‘CANTI’. However, these letters are placed in different positions in the sign (the only element of the earlier mark and the second word of the contested mark). Therefore, the first parts of the conflicting marks do not coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The coinciding letters are placed in the middle of the contested sign where they are more likely to be overlooked by consumers. This mark also includes an additional letter ‘L’ and a less distinctive figurative element and presents a different length and structure than the earlier mark consisting of only one verbal element.

Although the signs coincide in some letters, comparing the marks in overall terms, the Opposition Division finds that the additional elements of the contested mark are clearly perceptible and sufficient to compensate the similarities and to exclude any likelihood of confusion between the marks. The absence of likelihood of confusion even more so applies to the part of the public for which the figurative elements shows the letters ‘LC’ instead of a wineglass, since these letters would be normally distinctive for the relevant goods and services and would introduce an additional difference between the signs.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 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 Rule 94(7)(d)(ii) EUTMIR, 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

Martina GALLE

Begoña URIARTE VALIENTE

Benoit VLEMINCQ

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.