OPPOSITION No B 2 706 128

Cervezas Moritz S.A., Ronda San Antonio, 39, 08011 Barcelona, Spain (opponent), represented by Currell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Patrick Kulcenty, Eglisweg 5, 73733 Esslingen, Germany (applicant), represented by Dosterschill & Kollegen, Fichtenstr. 11, 85570 Ottenhofen, Germany (professional representative).

On 12/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 706 128 is upheld for all the contested goods, namely

Class 32: Beers; mineral water [beverages]; aerated water; fruit drinks (non-alcoholic beverages); fruit syrups for making beverages; preparations for making beverages.

Class 33: Alcoholic drinks (except beers).

2. European Union trade mark application No 15 059 504 is rejected for all the contested goods. It may proceed for the remaining goods.

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 15 059 504 for the word mark ‘MIA SAN MIA’, namely against all the goods in Classes 32 and 33. The opposition is based on Spanish trade mark registration No 3 089 604 for the figurative trade 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.

1. The goods

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

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 32: Beers; mineral water [beverages]; aerated water; fruit drinks (non-alcoholic beverages); fruit syrups for making beverages; preparations for making beverages.

Class 33: Alcoholic drinks (except beers).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 32

The contested beers; mineral water [beverages]; aerated water; fruit drinks (non-alcoholic beverages); preparations for making beverages are identically contained in both lists of goods, despite some small difference in wording.

The contested fruit syrups for making beverages are included in the broader category of the opponent’s syrups. Therefore, these goods are identical.

Contested goods in Class 33

The contested alcoholic drinks (except beers) are similar to the opponent’s beers. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. Therefore, they have the same nature and relevant public. Furthermore, these goods have the same distribution channels; they are all served in restaurants and bars and are on sale in supermarkets and grocery stores, where they can usually be found in the same section. They also may originate from the same undertakings.

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 or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	MIA SAN MIA
Earlier trade mark (figurative)	Contested sign (word)

The relevant territory is Spain.

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 word element ‘LA’ at the beginning of the earlier mark is a definite article which lacks distinctiveness, as it merely serves to introduce the noun that follows it (15/11/2011, T‑276/10, COTO DE GOMARIZ, § 28 and the case-law cited).

The word element ‘SAN’ in the middle of the contested sign will be understood by the relevant public as ‘saint’. As this has no meaning that could be clearly linked to the relevant goods, it is distinctive.

The word ‘MIA’, present in both signs, will be perceived by the relevant public as a feminine possessive pronoun (‘mine’). This element has a normal degree of distinctiveness for the relevant goods, which are beverages, since it does not describe or evoke them in any concrete way, nor does it indicate anything about their quality. Contrary to the applicant’s arguments, Spanish consumers will not associate ‘MIA’ with the concept of, for example, ‘my beer’/’my water’/’my drink’. This is because, in both signs, ‘MIA’ appears on its own, not in conjunction with any certain product, and therefore, it is not clear what it refers to.

The earlier mark also contains a figurative element of a rectangular frame surrounding its verbal elements, which is a decorative shape with little, if any, distinctiveness. It follows that the verbal element ‘MIA’ constitutes the most distinctive element of the earlier mark, as pointed out by the opponent.

Visually, the signs coincide in ‘MIA’, which is the most distinctive element of the earlier mark and is repeated twice in the contested sign. They differ in the earlier mark’s element ‘LA’ and its figurative device, and the contested sign’s element ‘SAN’.

The applicant argues that the signs are visually different due to their differences in length, structure and beginning parts. Although it is true that consumers generally tend to take more note of a mark’s beginning than of its ending (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64), in the present case, the word ‘LA’ at the beginning of the earlier mark is a non-distinctive article and therefore, is unlikely to be paid much attention by consumers. Furthermore, although the contested sign is longer than the earlier mark, this is partially because the contested sign contains the earlier mark’s ‘MIA’ twice. With respect to the distinctive element ‘SAN’ of the contested sign, this is located in the middle of the sign, where it is less likely to catch consumers’ attention.

Therefore, as the contested sign contains the most distinctive element of the earlier mark twice, including at its beginning, it is considered that the two signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their distinctive word ‘MIA’, which is present twice in the contested sign. Their pronunciation differs in the sound of the earlier mark’s ‘LA’ and the contested sign’s ‘SAN’.

Therefore, and given what has been said above regarding the distinctiveness of the signs’ coinciding and differing elements, it is considered that the signs are aurally similar to an average degree.

Conceptually, the earlier mark will be understood as ‘mine’, while the contested sign will be literally understood as ‘mine, saint mine’, which, as a whole, conveys no specific or logical concept. Nevertheless, since the two signs both convey the concept of ‘mine’, which, as mentioned above, is distinctive for the relevant goods, they are considered conceptually similar to an average 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 will be understood by the relevant Spanish-speaking public as meaning ‘mine’. As this meaning is not descriptive, allusive or laudatory in relation to the relevant goods, 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 or similar to those covered by the earlier trade mark and target consumers whose level of attention is average. The distinctiveness of the earlier mark is normal, which affords it normal protection under this assessment. The signs at issue are visually, aurally and conceptually similar to an average degree.

Overall, it is considered that the differing elements of the signs are not sufficient to counteract their visual, aural and conceptual similarity, deriving from their common element ‘MIA’. Indeed, in view of the distinctiveness of this element and its presence in both signs, it is likely that consumers will believe that the signs derive from a common trade source.

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, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In the present case, both marks are likely to be associated with the distinctive concept pertinent to ‘MIA’ while the specific details (the other elements), if remembered, are not sufficient to safely exclude the likelihood of association between the marks.

It should further be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic perception of the signs and the average degree of similarity found between them is particularly important in this case (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48). In particular, when ordering the goods aurally, the figurative aspects of the earlier mark or the differences in the visual structure of the signs play no role.

In its observations, the applicant has referred 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.

Additionally, the previous case 08/06/2018, R 6/2018-5, MediWell (fig.) / Well and well et al. referred to by the applicant, and its outcome, are not directly comparable to the present case. In particular, in that case, the signs coincided only in a word element of low distinctive character, which is not the case here. Furthermore, unlike in that case, the signs at issue in the present case contain similar concepts which, in conjunction with the other factors analysed above justify the conclusion of likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration 3 089 604. It follows that the contested trade mark must be rejected for all the contested goods, but it may proceed for those goods which were not an object of this opposition.

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, he 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

Vita VORONECKAITE

Alexandra APOSTOLAKIS

Cindy BAREL

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.