OPPOSITION No B 2 667 221

Achaval-Ferrer, S.A., Cobos 2601 - Perdriel Lujan De Cuyo - Mendoza CP5509, Argentina (opponent), represented by Ruo Patentes y Marcas S.L.P., C/ Padre Recaredo de los Ríos, 30. Entlo., 03005 Alicante, Spain (professional representative)

a g a i n s t

Niepoort (Vinhos) S.A., Rua Cândido dos Reis 670, 4400-071 Vila Nova da Gaia, Portugal (applicant), represented by Gastão Da Cunha Ferreira LDA., Rua dos Bacalhoeiros nº. 4, 1100-070 Lisboa, Portugal (professional representative).

On 20/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 667 221 is upheld for all the contested goods.

2. European Union trade mark application No 14 643 721 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 European Union trade mark application No 14 643 721. The opposition is based on European Union trade mark registration No 8 407 785. The opponent invoked Article 8(1)(b) and 8(5) 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

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

Class 33: Alcoholic beverages (except beers).

On 06/04/2016, the applicant limited the list of goods.

Therefore, the contested goods are the following:

Class 33: Wines with registered designation of origin of the Douro.

The contested wines with registered designation of origin of the Douro are wines from the Douro region of Portugal. Such goods (and wines of all kinds) are included in the opponent’s broad category alcoholic beverages (except beers). Therefore, these goods are identical.

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

QUIMERA	CHIMERA
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 Italian-speaking part of the relevant public, since the marks will be aurally more similar in this language than in others.

The earlier mark is the word mark ‘QUIMERA’. In Italian, the word ‘QUIMERA’ has no meaning and will be perceived as fanciful and distinctive.

The contested sign is the word mark ‘CHIMERA’. The majority of the Italian-speaking part of the relevant public will perceive ‘CHIMERA’ as conveying no meaning. However, for a smaller part of the public (e.g. consumers with enhanced knowledge of Greek mythology), the word ‘CHIMERA’ will be perceived as the creature ‘Chimera’ (‘a monstrous fire-breathing hybrid creature’) from Greek mythology. For the relevant goods, ‘CHIMERA’ (perceived as the mythical creature or not) has no meaning and is distinctive.

In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in upper or lower case letters, or a combination thereof.

Visually, the signs differ in their first two letters, that is, ‘QU’ and ‘CH’. However, they coincide in their five following letters, which are identical. Although consumers tend to pay more attention to the beginning of signs, since they read from left to right, account must be taken of the fact that the signs’ final five (identical) letters make up a significant part of the signs. Therefore, the Opposition Division finds the signs to be visually similar to an average degree.

Aurally, both signs will be pronounced as seven letters and three syllables, that is, ‘[QUI] [MER] [A]’ and ‘[CHI] [MER] [A]’. In Italian, the first syllable of the earlier mark will be pronounced in the same way as the first three letters of the English word ‘quid’, while the contested sign’s first syllable will be pronounced in the same way as the first two letters of the English word ‘kill’. Despite these differences in pronunciation, the signs’ second and third syllables will be pronounced identically. Overall, the Opposition Division finds the signs to be aurally similar to a high degree.

Conceptually, the majority of the Italian-speaking part of the public will not perceive a concept in either sign. For this part of the public, the conceptual comparison will not influence the comparison of the signs. For a smaller part of the public, the signs are conceptually not similar, since this part will associate the contested sign with the creature ‘Chimera’ from Greek mythology (and the earlier mark as having no meaning).

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 has also cited Article 8(5) EUTMR as a ground for this opposition. However, as explained below in section e) of this decision, this ground is not needed for the opposition to be successfully upheld.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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.

In the present case, the goods are identical. Although the signs differ in their first two letters, which cannot be disregarded, as the consumers will read and pronounce these two letters first in both signs, the signs are identical in their final five letters. This makes the conflicting word elements visually similar to an average degree and aurally similar to a high degree. Admittedly, for a small part of the Italian-speaking part of the public the signs are conceptually not similar. However, for the remaining (significant) part of the public, the conceptual aspect does not influence the comparison of the signs (since neither sign will be perceived with a meaning). Therefore, the majority of Italian-speaking consumers will rely on their visual and aural perceptions of the signs when comparing them. The fact that the signs are aurally similar to a high degree is particularly important, since the relevant goods are often ordered orally in ‘noisy’ environments, such as in bars and restaurants. Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Consequently, this is likely to lead consumers to believe that the identical goods at issue originate from the same manufacturer or related manufacturers.

Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking part of the public. As stated above in section c) of this decision, 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 No 8 407 785. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.

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

Adriana VAN ROODEN

Christian RUUD

Frédérique SULPICE

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.