OPPOSITION No B 2 916 149

Fernando António Da Mota Marinho, Rua De Agilde, Nº1671, 4615-813, Agilde, Portugal (Opponent), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229, Lisboa, Portugal (professional representative)

a g a i n s t

Luc Liebens, Voenhofstraat 3, 3700, Tongeren, Belgium (applicant), represented by Consenso Advocaten, Henry Fordlaan 47, 3600, Genk, Belgium (professional representative).

On 25/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 916 149 is upheld for all the contested goods.

2. European Union trade mark application No 16 474 207 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 474 207 . The opposition is based on Portuguese trade mark registration No 398 961   .The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested the submission of proof of use as part of its observations of 08/01/2020 (page 2, bottom of the page) and has thus not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 beer.

The contested goods, following a limitation of which the opponent was duly informed, are the following:

Class 33: Gin; vodka.

The contested goods belong to the opponent’s broad category of alcoholic beverages, except beer, therefore, the 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 to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

From the onset, it is noted that, contrary to the applicant’s assertion, a substantial part of the Portuguese public would not recognize the contested sign as being formed by the juxtaposition of two English words, rather, they will perceive it as one verbal element. For procedural economy, the Opposition Division will focus on this substantial part of the relevant public in the comparison of the signs.

The earlier mark is figurative, albeit it essentially consists of a minimally stylized verbal element ‘infusa’ in standard typeface with its first two letters being of darker shade of grey or black than the remaining letters. This word as such is meaningless but it may be perceived as alluding to ‘infusão’ which means ‘infusion’ (https://www.wordreference.com/ptes/infusao; 08/06/2020). Infusion refers to the process of preparing herbal tea with boiling water and, in the context of the goods at issue, it does not directly relate to or describe the goods, therefore, the earlier mark, being as a whole meaningless in any event, has a normal degree of distinctiveness. It is to be noted that, contrary to the applicant’s assertion, the average Portuguese consumer is unlikely to know the meaning of ‘infusa’ as a traditional pot, and neither has the applicant provided evidence thereof since a copy of a wine label cannot be regarded as showing that consumers in Portugal are familiar with this term.

The contested sign is also figurative and consists of the verbal element ‘INFUSIT’ represented vertically, in black uppercase letters with the exception of its fourth letter which is in red font and perceived by the public as a ‘U’ upside down. This is all the more likely since consumers are accustomed to unusual representation of letters or words as it is a common marketing or advertising feature. The verbal element ‘infusit’ is meaningless albeit some of the consumers may recognize ‘infus-’ as alluding to ‘infusion’. In such case, reference is made to the findings in the previous paragraph. In both cases, namely if this allusion is perceived by part of the public and not perceived by the other part, the contested sign’s verbal element has a normal degree of distinctiveness whereas the use of colours and inverted letter afford the sign some degree of distinctiveness albeit they also serve as decorative features.

On the basis of the foregoing, it can be concluded that the verbal elements composing the signs in conflict are, at most, allusive of the same concept. Consequently, they must be assessed on an equal footing with regard to these verbal elements’ distinctiveness and consequent role in the signs.

Visually, the signs coincide in the letter sequence ‘INFUS’ and differ in their endings ‘A’ / ‘IT’ as well the ‘U’ being upside down in the contested sign. They also differ in their slight stylization and use of colours. This also means that the only verbal element in the contested sign reproduces the earlier mark’s verbal element save its last letter. This coincidence in five out of the signs’ total of six and seven letters, in the same order, is not sufficiently offset by the differences, also because, 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 233/2011-4, BEST TONE (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, JUMBO (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Overall, the signs must be considered to be similar to an average degree.

Aurally, as explained above, nearly the whole of the verbal element of the earlier mark is reproduced in the contested sign. The different endings have a limited aural impact as consumers read from left to right and top to bottom. The coincidences also afford the signs a very similar rhythm and intonation. Consequently, the signs are similar, at least, to an average degree.

Conceptually, neither of the signs as a whole has a meaning for the relevant public as defined above. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. This holds true even if the signs were to be perceived as allusive to the concept of ‘infusion’ in which case they are on equal footing from a conceptual perspective.

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, despite it having an allusive character, as stated above in section c) of this decision.

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).

The goods under comparison are identical while the signs are visually similar to an average degree and aurally at least to an average degree. Furthermore, the conceptual aspect plays no role in the assessment since both signs are, at most, allusive of the same concept and, thus, are to be assessed on an equal footing in any event. As explained above, nearly the whole of the earlier mark’s verbal element is incorporated into the contested sign, which may lead consumers to believe that the identical goods come from the same or linked undertakings. This is all the more likely because the goods at issue are alcoholic beverages and the aural similarity is particularly relevant since these goods are frequently ordered in noisy establishments (bars, nightclubs) (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48). Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

In its observations, the applicant asserts that the opponent’s mark refers to a winery in Portugal where wines are served in a traditional way. In this regard, it is recalled that the examination of the likelihood of confusion carried out by the Office is a prospective examination. For this reason, specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods 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). Therefore, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion for a substantial part of the relevant public as defined above in section c) of this decision, which is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration invoked. 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, 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

Nicole CLARKE

Ferenc GAZDA

Cristina CRESPO MOLTÓ

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.