OPPOSITION No B 2 696 360

Freixenet, S.A., Joan Sala, 2, 08770, Sant Sadurni d'Anoia (Barcelona), Spain (opponent), represented by Baker & Mckenzie Barcelona, Av. Diagonal, 652 Edif. D, 8ª Planta, 08034, Barcelona, Spain (professional representative)

a g a i n s t

FC Bayern München AG, Säbener Str. 51, 81547 München, Germany (applicant), represented by Beiten Burkhardt, Ganghoferstr. 33, 80339 München, Germany (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 696 360 is upheld for all the contested goods, namely all the goods in Class 33.

2. European Union trade mark application No 14 861 413 is rejected for all the contested goods. It may proceed for the remaining non-contested goods and services, namely all the goods and services in Classes 3, 4, 5, 8, 9, 11, 14, 15, 18, 20, 21, 26, 27, 28, 29, 30, 31, 32, 34, 39 and 44.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 861 413 for the word mark ‘Mia san mia’, namely against all the goods in Class 33. The opposition is based on, inter alia, European Union trade mark No 14 190 383 for the figurative mark . 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.

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 No 14 190 383, which was not a subject of the applicant’s proof of use request.

1. The goods

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

Class 33: Alcoholic beverages (except beer).

The contested goods are the following:

Class 33: Alcoholic beverages (except beers).

The contested alcoholic beverages (except beers) are identically contained in both lists of goods (including synonyms).

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

	Mia san mia
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 applicant argues that the coinciding word ‘Mia’ is descriptive or weak in some parts of the relevant territory. The applicant refers to its possible meanings in Spanish and claims that it could be recognized as a women’s magazine in Spain. However, without the need of examining whether these statements were proven; they clearly do not apply to all of the countries of the European Union. The word, ‘Mia’, indicates a female given name in certain parts of the relevant territory, for example in the United Kingdom (information extracted from BabyNames.co.uk on 25/10/2018 at www.babynames.co.uk/names/mia/), as has been acknowledged by the applicant. This meaning of the word ‘Mia’ is neither descriptive, allusive nor otherwise weak in relation to the goods in Class 33; therefore, for this public it is inherently distinctive to an average degree for the goods.

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. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the United Kingdom.

For the sake of completeness, the applicant has also mentioned that ‘MIA’ indicates ‘missing in action’ in the military jargon. However, it does not seem to describe the relevant goods in Class 33 in any way either; and this specialised military meaning will not be grasped by the public at large and, thus, it will not be taken into account.

The earlier trade mark is a figurative mark containing the word ‘Mia’, which is distinctive to an average degree for the relevant goods, as explained above, and depicted in the large typeface as if composed of colourful tiles. Above it, is the much smaller word ‘Freixenet’, which is meaningless for the relevant public and, thus, inherently distinctive to an average degree. It is depicted in a relatively standard gold typeface in italics. In the upper part of the opponent’s sign is an emblem in gold which does not have any particular meaning for the relevant public and will be perceived as a largely decorative element. 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; 19/12/2011, R 0233/2011-4, Best Tone, § 24; 13/12/2011, R 0053/2011-5, Jumbo, § 59).

The applicant argues that there is no reason to regard the element ‘Mia’ as the dominant element of the earlier sign. However, in the Opposition Division’s view, the word ‘Mia’ is clearly much larger and depicted in a colourful eye-catching stylisation, while the remaining elements are smaller, depicted in a less striking colour and a relatively standard typeface. Consequently, the word ‘Mia’ is the dominant element of the earlier sign, while the remaining elements are clearly secondary.

The contested sign is a word mark composed of the words ‘Mia san mia’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the contested sign is represented in upper or lower case characters, or in a combination thereof. For the same reasons, the contested word mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

The word ‘MIA’ of the contested sign has an inherently distinctive meaning, as explained above. The word ‘SAN’ is meaningless in the relevant territory and, thus, inherently distinctive to an average degree.

Visually and aurally, the signs coincide in the word ‘Mia’, which constitutes the dominant element of the earlier sign as well as the first and the third elements of the contested sign, ‘Mia san mia’. This element will produce an identical sound in both signs under comparison. They differ in the fact that in the contested sign the word ‘Mia’ is doubled and may be pronounced twice.

The signs differ visually and aurally in the distinctive element, ‘san’, located in the middle section of the contested sign, as well as in the sound it produces, which has no counterpart in the earlier sign. The earlier sign differs in the word ‘Freixenet’ which has no counterpart in the contested sign, but which is secondary within the overall impression created by the opponent’s sign; therefore, its impact on consumers’ visual and aural perceptions of the signs is limited and, in any case, lower than that of the coinciding word ‘Mia’. Moreover, the earlier sign differs from the contested sign visually in an emblem and in the stylisations of its verbal elements which, however, are considered less distinctive than the coinciding word, ‘Mia’. These purely figurative elements of the earlier sign, including its stylisation, are not subject to a phonetic assessment.

Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs are similar inasmuch as the coinciding word ‘Mia’ evokes an identical concept. The fact that the word ‘Mia’ is repeated in the contested sign does not change the resulting conceptual concurrence (07/02/2012, T-424/10, Dosenbach-Ochsner AG Schuhe und Sport / OHIM (representation of the elephants), ECLI:EU:T:2012:58, § 48-52). The signs differ in the concept of colourful tiles which compose the word ‘Mia’ in the earlier sign which, however, will only be perceived by a part of the public and is, in any case, less distinctive than the coinciding verbal element, ‘Mia’.

The remaining elements of the signs are either meaningless (the word ‘Freixenet’ in the earlier sign and ‘san’ in the contested sign) or do not evoke any clear concepts (an emblem in the earlier sign); therefore their impact on a conceptual comparison is very limited, if any. The fact that the relevant public is not in a position to understand the meanings of certain elements cannot neutralise the semantic concordance arising out of the fact that, as indicated above, identical distinctive concept evoked by the word ‘Mia’ in the earlier sign is conveyed by the two verbal elements of the contested sign. The mere fact that the signs additionally contain elements which have no meaning for the relevant public does not make it conceptually different overall from the earlier mark (12/11/2015, T‑450/13, Wisent / Żubrówka Bison Brand Vodka, EU:T:2015:841, § 128; 20/10/2011, T‑238/10, Horse Couture, EU:T:2011:613, § 40).

Therefore, the signs are conceptually similar to a high degree.

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

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

In the present case the goods are identical. The signs are visually and aurally similar to at least an average degree. As explained above in section c) of this decision, the signs are conceptually similar to a high degree. The earlier mark has a normal degree of distinctiveness for the relevant public.

The relevant public is the public at large displaying an average degree of attention.

In cases where the goods are identical, the differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them.

In the present case, the dominant element of the earlier sign, the word ‘Mia’, is entirely reproduced in the contested word mark, ‘Mia san mia’, where it constitutes its first and third elements. In both signs this coinciding element is inherently distinctive to an average degree. In addition, the fact that it is located at the beginning of the contested sign is of particular importance in the assessment of likelihood of confusion. It is settled case-law that 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.

The applicant argues that particular importance should be attached to the word ‘Freixenet’ of the earlier sign which has a strong distinctive character. In addition, the importance of this element is, in the applicant’s opinion, shown also by the trade mark strategy of the opponent. The Opposition Division agrees with the applicant that this element cannot be neglected; however, its importance should not be overestimated either. As explained above, this verbal element is much smaller than the coinciding word ‘Mia’ and it is depicted in a less striking colour against a white background. Therefore, it was found secondary and its impact on consumers’ perception is lower than that of the coinciding word ‘Mia’. The alleged fact that the opponent did not register the word ‘Mia’ as a separate mark does not influence the above conclusion, but is a matter of the opponent’s trade mark filing strategy.

The contested sign differs from the earlier sign in the normally distinctive word ‘san’. However, it is placed in the middle section of this sign which has less impact on consumers’ perception than the coinciding first element. The remaining differences, namely in an emblem and the stylisation of the verbal elements of the earlier sign, are less distinctive than the coinciding element and, in any case, must be considered less important in view of the fact that the contested sign is a word mark and may be stylised in various ways.

Bearing the above in mind, in the Opposition Division’s view, it is very likely that consumers will refer to the relevant goods by the word ‘Mia’, as it is the dominant element of the earlier sign and the first element of the contested sign. In addition, this coinciding element evokes the same distinctive concept in the signs and will, thus, be remembered by consumers more easily. Account is 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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Moreover, in case of the goods in Class 33, it is appropriate to attach particular importance to the phonetic similarity between the signs. If the goods covered by the marks in question are usually sold orally, greater weight will be attributed to any phonetic similarity between the signs (08/02/2007, T 88/05, ‘Nars’, § 68 and 23/11/2010, T-35/08, ‘Artesa Napa Valley’, § 62). In the wine sector, as well as in the sector for alcoholic beverages in general, unlike non-alcoholic beverages, consumers thereof usually describe and recognize a particular beverage by reference to the verbal element which identifies it, in particular in bars, discotheques, night clubs or restaurants, in which those beverages are ordered orally after their names have been seen on a menu or list (13/07/2005, T-40/03, ‘Julián Murúa Entrena’, § 6; 12/03/2008, T-332/04, ‘Coto D’Arcis’, § 38; 23/11/2010, T-35/08, ‘Artesa Napa Valley’, § 62). In this respect it should be noted that since the goods at hand are also consumed after being ordered orally, the aural similarity between the signs in question is in itself sufficient to give rise to a likelihood of confusion (15/01/2003, T-99/01, ‘Mystery’, § 48).

Indeed, at least some consumers will order the relevant goods orally in places such as pubs, bars, discotheques or night clubs, which may be quite noisy. Even if these consumers did refer to the contested goods by the entire expression, ’Mia san mia’, its first element ‘Mia’ will still have the strongest impact, simply because it will be perceptible best, while the remaining words may be less audible.

Consequently, the identified differences between the signs are not sufficient to counteract their visual, aural and conceptual similarities. Bearing in mind also the identity of the goods; the overall impressions produced by the signs on the public displaying an average level of attention is that they are similar to each other.

Moreover, 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, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, owing to the use of the same distinctive word ‘Mia’, that they are derived from the same undertaking or, at the very least, economically linked undertakings.

For the sake of completeness, the applicant argues that the opponent is a traditional company offering different kinds of wines and the applicant is the most famous German football club. While the opponent’s goods consist of ‘sparking beverages’, the applicant’s goods are merely merchandise goods and, as argues the applicant, consumers will not assume that these goods belong together. However, the test of a likelihood of confusion carried out by the Office is a prospective examination. The Office takes into account the goods and services covered by the earlier registration and the goods covered by the contested application. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58), unless a proof of use of the earlier right is requested. In the present case, the earlier right European Union trade mark No 14 190 383 is not yet a subject to a proof of use requirement; therefore, when considering whether or not the contested EUTM application falls under any of the relative grounds for refusal, it is the opponent’s right and its scope of protection as registered that are relevant. Consequently, the applicant’s claim must be dismissed as it has no impact for the purposes of the present assessment.

The applicant also argues that the phrase ‘Mia san mia’, which is a variation of the Bavarian slogan ‘wir sind wir’, is commonly known as the traditional slogan of the applicant and will be linked to it. However, in this respect the Opposition Division notes that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Moreover, the applicant argues that the earlier trade mark has a low distinctive character due to the fact that many trade marks include the word ‘Mia’. In support of its argument the applicant refers to several trade mark registrations in the EUIPO. However, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. The applicant also argues that these marks are actually used on the market to designate the goods in Class 33. However, it only submitted information from the trade mark register and did not provide any evidence of actual use. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘Mia’. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, because the signs are different.

Consequently, the Opposition Division concludes that there is a likelihood of confusion on part of the English-speaking part of the public in the United Kingdom, displaying an average degree of attention. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark No 14 190 383. 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.

It follows that the contested trade mark must be rejected for all the contested goods in Class 33. It may proceed for the remaining uncontested goods and services in Classes 3, 4, 5, 8, 9, 11, 14, 15, 18, 20, 21, 26, 27, 28, 29, 30, 31, 32, 34, 39 and 44.

As the earlier right European Union trade mark No 14 190 383 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) or to examine the evidence of use filed by the opponent with regard to one of these earlier marks.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Liliya YORDANOVA

Jakub MROZOWSKI

Gueorgui IVANOV

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.