OPPOSITION No B 2 876 681

Terra Moretti S.P.A., Via Bellavista, 5, 25030 Erbusco (BS), Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Berchet, 9, 35131 Padova, Italy (professional representative)

a g a i n s t

Aresti Chile Wine S.A., Santa María Nº6350, Of. 105. Vitacura, Santiago, Chile (applicant), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative).

On 06/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 876 681 is upheld for all the contested goods.

2. European Union trade mark application No 16 218 224 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 218 224 ‘ALTOS DE BELLAVISTA’. The opposition is based on International trade mark registration No 122 15 45, designating the European Union . 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; wines; sparkling wines.

The contested goods are the following:

Class 33: Wine

Contested goods

The contested wine is identically contained in both lists of goods, albeit with slightly different wording.

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.

Although wine is a frequent purchase, the degree of attention may be average to high, depending on the price and/or sophistication of the wine.

3. The signs

	ALTOS DE BELLAVISTA
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements are not meaningful in certain territories, for example in those countries where Italian or Spanish is not understood. Consequently, and as English is the language of proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the territory that does not speak Italian or Spanish such as the English language-speaking part of the public in Ireland, the United Kingdom and Malta.

As the verbal elements have no meaning for the relevant public, they are distinctive in respect of the goods.

The contested sign is made up of the words ‘altos de bellavista’. Being a word mark, it is the words themselves that are protected and not their written form.

The earlier mark is composed of the distinctive verbal element ‘Bellavista’ in a slightly stylised, bold and dark font. It is set below a stylised letter ‘B’ in a white script set against a contrasting oval background, which appears as a simple label. The letter ‘B’ reinforces the initial letter of the word below it, and the figurative and stylistic elements are of a purely decorative nature. Therefore, the word element is more distinctive than the remaining elements.

There are no dominant elements. In this regard, it should, however, be noted that 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).

Visually, the signs coincide in the verbal element ‘Bellavista’, which is distinctive. They differ in the extra letter ‘B’ set above this verbal element in the earlier sign, which merely reinforces the initial letter of the word below it, the stylisation of the verbal elements and the simple oval background, which have no counterpart in the contested sign, but which are purely decorative. They further differ in the first two words of the contested sign. The applicant correctly points out that consumers tend to focus on the beginning of signs. However, this tendency may be displaced where the initial elements are relatively short and lead up to a longer verbal element, which is distinctive in and of itself.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the verbal element ‘Bellavista’, which is distinctive and which will be pronounced as four syllables. The extra letter ‘B’ of the earlier sign, which merely emphasises the initial letter of the verbal element below (a fairly standard feature in marks), will not be pronounced. The pronunciation differs in the sound of the words ‛altos de’ of the contested mark, which have no counterpart in the earlier sign, and which will be pronounced as two syllables followed by one syllable. These initial elements are short relative to the pronunciation of the rest of the sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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.

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), and that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

The goods are identical and the signs are similar to an average degree, from both a visual and aural point of view. The earlier sign, which is distinctive, is essentially contained in the contested sign as an independent distinctive element. The consumers’ level of attention may vary from average to high.

Indeed, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, or a variation of the earlier mark, configured in a different way.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking, general public, regardless of the level of attention paid or the way in which the goods or sold or ordered. 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 International trade mark registration No 122 15 45. It follows that the contested trade mark must be rejected for all the contested goods.

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

Loreto URRACA LUQUE

Keeva DOHERTY

Michal Kruk

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.