OPPOSITION No B 2 680 711

Berentzen-Gruppe Aktiengesellschaft, Ritterstr. 7, 49740 Haselünne, Germany (opponent)

a g a i n s t

Tequila San Matias De Jalisco S.A. de C.V., Calderón de la Barca nº 177, Col. Arcos Sur, Guadalajara, Jalisco 44100, Mexico (applicant), represented by JTV Patentes & Marcas, Ortega y Gasset 11-3°-D, 03600 Elda (Alicante), Spain (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 680 711 is upheld for all the contested goods.

2. European Union trade mark application No 14 898 308 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 898 308. The opposition is based on European Union trade mark registration No 2 889 640. 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

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Tequila.

The contested tequila is included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they 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

PUEBLO
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.

The element that the signs have in common, ‘PUEBLO’, is not meaningful in certain parts of the relevant territory, for example in the United Kingdom. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which the word element that the marks have in common does not have a meaning.

In view of the foregoing, the earlier mark will be perceived as a fanciful and distinctive term in English. 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 written in upper or lower case letters, or in a combination thereof.

The word element ‘PUEBLO’, in stylised upper case letters in the contested sign, is, therefore, also distinctive. Below ‘PUEBLO’, the contested sign also contains the word element ‘VIEJO’ (in the same font). For alcoholic beverages and tequila, ‘VIEJO’ (i.e. ‘old’ in Spanish) is weak for the English-speaking consumers of these products, since this Spanish word is commonly used in relation to the contested goods to indicate their maturing time. The rectangular label, on which the verbal elements ‘PUEBLO VIEJO’ are set, depicts a rural village in light grey (which does not convey any meaning in relation to the goods). However, 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).

Conceptually, the signs’ coinciding and distinctive word element, ‘PUEBLO’, does not convey a meaning for the English-speaking part of the public, while the word element ‘VIEJO’ is weak for the English-speaking part of the public (and will have less impact on the public’s conceptual perception of the contested sign). Nevertheless, the figurative label of the contested sign conveys the concept of a rural village, which makes the signs conceptually not similar overall.

Visually, the signs coincide in that they are composed of or contain the distinctive word element ‘PUEBLO’. They differ in the word element ‘VIEJO’ and in the figurative elements of the contested sign, which create certain visual differences between the signs as a whole. However, ‘VIEJO’ will be perceived as weak for the relevant goods, and the figurative elements have less impact on the consumer’s perception of the sign than its verbal elements (as explained above). Furthermore, ‘PUEBLO’ will be read first in the contested sign (since it is placed above ‘VIEJO’) and is the element that first catches the attention of the reader. Therefore, the Opposition Division finds the signs visually highly similar overall.

Aurally, the signs coincide in that ‘PUEBLO’ is the only element to be pronounced in the earlier mark and is the first element to be pronounced in the contested sign. The signs differ in the pronunciation of ‘VIEJO’ in the contested sign. However, since ‘VIEJO’ will be perceived as weak, and as having a secondary position in the sign, the signs are aurally highly 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 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods are identical. Moreover, the signs are visually and aurally highly similar and the earlier mark has a normal degree of distinctiveness. Furthermore, the degree of attention of the relevant public is deemed to be average. The signs are conceptually dissimilar. However, consumers of alcoholic beverages (and tequila) are used to seeing labels with figurative elements on the bottles of such products. Therefore, the additional concept conveyed by the contested sign’s figurative element cannot counteract the visual and aural similarities. 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).

Considering all the above, there is a likelihood of confusion on the part of the English-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 2 889 640. It follows that the contested trade mark must be rejected for all the contested goods.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Adriana VAN ROODEN

Christian RUUD

Boyana NAYDENOVA

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.