OPPOSITION No B 2 640 442

Rozès, S.A., Quinta de Monsul, Cambres, concelho de Lamego, Portugal (opponent), represented by Gevers & Ores, 41 avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

López Morenas, S.L., c/ Melilla, n°. 13, 06360 Fuente del Maestre (Badajoz), Spain (applicant), represented by Sonia Álvarez López, Núñez de Balboa, 31, 28001 Madrid, Spain (professional representative).

On 29/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 640 442 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 583 421. The opposition is based on French trade mark registration No 1 410 221 and Portuguese trade mark registration No 242 461. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

The applicant asserts that the opponent has failed in the substantiation of the earlier marks claimed as basis of the present opposition and, accordingly, the opposition should be considered as unfounded.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 21/01/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 26/05/2016.

As regards earlier French trade mark registration No 1 410 221

On 23/05/2016, within the time limit, the opponent filed a document with the indication ‘Translation into English of the extract of the official database of the INPI’ with data in relation to the earlier French trade mark registration. However, this document was not accompanied by the official document or certificate originating from the corresponding authority.

As notified to the opponent in the information sheet enclosed with the communication from the Office dated 21/01/2016, the Office will not take into account ‘any translations that are submitted without a copy of the original document, as it considers that a translation by itself does not have any independent probative value’.

Consequently, it is considered that the opponent did not submit any evidence concerning the substantiation of earlier French trade mark registration.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

As regards earlier Portuguese trade mark registration No 242 461

On 23/05/2016, within the time limit, the opponent filed an extract from TMView in relation to earlier Portuguese trade mark registration. The applicant questions the validity of this source as to substantiate the earlier mark. In accordance with the Trade mark Guidelines of the Office, ‘officially accepted databases include TMView for EUTMs and trade marks applied for or registered with the participating offices (as long as it contains the relevant data)’ (Part C: Opposition, Section 1: Procedural matters, Point 4.2.3.2.: Extracts from official databases). In the present case, the extract submitted is in the language of the proceedings and contains all the relevant data of the earlier trade mark. Even if the goods appear in a different language, these have been duly translated.

Consequently, earlier Portuguese trade mark registration No 242 461 is properly substantiated.

Therefore, the assessment of the present opposition continues as regards this earlier right.

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: Wines.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wines. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

SÃO PEDRO DAS ÁGUIAS	CASTELO DA AGUIA
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Both marks consist of expressions formed with Portuguese words.

The earlier mark will be understood as ‘Saint Peter of the eagles’ and the contested sign as ‘eagle’s castle’. The applicant claims that São Pedro das Águias is a Cistercian monastery and a Romanesque church located in the Douro Valley (Portugal), and submits some extracts from the internet website www.dourovalley.eu with information in relation to this region and showing the existence of these locations. The opponent responds that the consumer does not know necessarily this monastery, that the earlier mark will not be perceived as a whole and that the element ‘SÃO PEDRO’ is weakly distinctive in relation to wines, however this claim is not accompanied with any convincing argument or evidence. The Opposition Division considers that, bearing in mind that the relevant public is Portuguese, it is foreseen that a significant part of the consumers will associate the earlier mark with said monastery and/or church, and therefore the elements that form this mark are distinctive; for the remaining part of the public, as these elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

As regards the element ‘CASTELO’ of the contested sign, bearing in mind a tendency observed in the wine sector, namely the use of the concept of a castle in various trade marks and labels, the impact of the sole element, meaning ‘castle’, must be assessed as limited for the consumers who are used to encountering it in relation to the goods in question.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Therefore, the differences at the beginnings of the signs play an important role and a reduced weighting is given to the similarities which are in a secondary position.

Visually and aurally, the signs coincide in the string of letters and sounds ‘DA*_AGUIA*’, found in the final two words of both signs. However, they differ in the letter and sound of ‘S’ added at the end of each of these words in the earlier mark, which have no counterparts in the contested sign, and in the words and sounds that constitute the beginning of the signs, namely ‘SÃO PEDRO’ in the earlier mark and ‘CASTELO’ in the contested sign.

The opponent is of the opinion that the signs have rather similar lengths and letters in common (some inverted) in the same order. Firstly, the conflicting signs have a different number of elements (four words in the earlier mark and three words in the contested sign) and letters (17 letters in the earlier mark and 14 letters in the contested sign). Secondly, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will associate the earlier mark with the monastery and/or the church in the Douro Valley (Portugal), the signs are conceptually dissimilar. For the remaining part of the public that will not identify the earlier mark with any particular location, as the signs will be associated with a similar meaning in relation to the elements ‘DAS AGUIAS’ (in plural) of the earlier mark and ‘DA AGUIA’ (in singular) of the contested sign, the signs are conceptually similar to a low degree since the additional words at the beginning of the signs introduce different semantic contents.

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 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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and they target the public at large with an average degree of attention. The earlier mark has an average degree of distinctiveness.

The signs are visually and aurally similar to a low degree as they only coincide in part of their final elements. From a conceptual perspective, the signs are either conceptually dissimilar or similar to a low degree.

Considering all the above, notwithstanding the identity of the goods, the Opposition Division finds that the differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that the consumers believe that the respective goods come from the same or from undertakings that are economically linked. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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

Vanessa PAGE

Marta GARCÍA COLLADO

Saida CRABBE

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.