OPPOSITION No B 2 925 835

Codorníu S.A., Casa Codorníu s/n, 08770 Sant Sadurní d’Anoia (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Thomas Imports LLC, Ste. 3D, 1327 W. Washington St., Chicago, Illinois 60607, United States (applicant), represented by Cabinet Plasseraud, 66, rue de la Chaussée d’Antin, 75440 Paris Cedex 09, France (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 925 835 is upheld for all the contested goods.

2. European Union trade mark application No 16 612 021 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 612 021 for the word mark ‘CHEVALIER I. THOMAS’, namely against all the goods in Class 33. The opposition is based on, inter alia, Spanish trade mark registration No 3 113 015 for the 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 Spanish trade mark registration No 3 113 015.

1. The goods

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

Class 33: Cava sparkling wines of Brut quality.

The contested goods, after a limitation made by the applicant on 21/12/2017, are the following:

Class 33: Sparkling wines of French origin protected by the appellation of origin Champagne.

The contested sparkling wines of French origin protected by the appellation of origin Champagne are highly similar to the opponent’s cava sparkling wines of Brut quality, as these beverages have essentially the same nature, that of sparkling wine. Furthermore, they have the same method of use and purpose, as well as the same distribution channels and target public. The goods may be produced by the same manufacturers in the wine industry and may be in direct competition with each other, depending on the pricing policy applied to each category of wines.

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 highly similar are directed at the public at large, as well as at specialised connoisseurs in the wine sector. The degree of attention is average.

3. The signs

	CHEVALIER I. THOMAS
Earlier trade mark	Contested sign

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 earlier mark is a complex figurative mark consisting of a bottle of wine with black labels, on which the elements ‘M. Chevallier’, ‘CARTE NOIRE’, ‘Brut’ and ‘CAVA’ are legible due to their large size. The label also contains other, hardly legible, elements such as ‘Product of Spain’, Methodé traditionnelle’, ‘Sparkling wine’, etc. These secondary elements are considered negligible in the overall impression created by the sign and are, in addition, only indications relating to the nature and characteristics of the goods; that is, they are of a descriptive nature, and the consumer will not pay them any attention. Furthermore, the words ‘BRUT’ and ‘CAVA’ in the earlier mark are also non-distinctive, as they make direct reference to the nature of the wine in question. The goods are sparkling wine (cava), and the shape of the bottle as well as the typical labelling near the bottom of the bottle and around its neck are considered common features in the wine sector; consumers are well accustomed to seeing them when choosing a bottle of wine from a shelf.

The contested sign is a word mark depicted in upper case letters. In the case of word marks, the words as such are protected and not their written form; therefore, it is immaterial whether the mark is depicted in upper or lower case letters. The contested sign obviously has no element that is dominant over any others.

The element ‘Chevallier’ of the earlier mark is a surname of French origin. The word originates from the Middle Ages and derives from the word for ‘a knight’. There are multiple variations of this name, including ‘Chevalier’, as in the contested sign. Due to the position of this element in the earlier sign as a whole, it can be assumed that the relevant Spanish public, regardless of its familiarity with the word, will perceive the verbal element ‘Chevallier’ as a surname. The letter ‘M’ preceding it may be seen as the initial of a first name beginning with the letter ‘M’. Since the expression ‘M. Chevallier’ does not have any direct relation to the nature or characteristics of the goods in question, namely sparkling wines, it is considered distinctive as a whole.

The element ‘CARTE NOIRE’ of the contested sign may be understood by part of the public as ‘black card’, this, given the nature of the goods, being a reference to a premium product, a product from an exceptional harvest. Bearing in mind that the relevant goods are sparkling wines, this element is weak for the goods. However, for most of the consumers this expression in its entirety will be meaningless and therefore also distinctive.

Taking into account the complex character of the earlier mark, it is assumed that, when referring to the origin of goods under this mark, consumers will use the distinctive and dominant — that is, most visually striking — element ‘M. Chevallier’.

It should be noted that the perception of signs made up of personal names may vary from country to country within the European Union. Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (the same person or a family link).

As stated above, the verbal element ‘Chevalier’ in the contested sign may be seen as a variant spelling of the surname ‘Chevallier’; in any event, the sign may be perceived by a significant part of the relevant public as a reversed name, that is, as a surname occupying the first and most important position in the sign followed by a first name and initial. The additional verbal elements, ‘I. THOMAS’, would in this case be perceived by the relevant public as an initial and the common male given name ‘Thomas’. Therefore, the entire contested sign will be perceived as the name of a person.

Even though all the elements are considered of normal distinctiveness, given that the verbal elements ‘I. THOMAS’ are preceded by the surname ‘CHEVALIER’, and in particular bearing in mind that Spanish speakers will attribute more importance to the surname than to the secondary initial and first name, the element ‘CHEVALIER’ will most probably prevail in the perception of the sign as a whole. That is to say, this element will have more impact on the overall impression of the sign and, given the principle of imperfect recollection, it will most likely be the element that will be retained in consumers’ minds after they have encountered the sign. This is further justified by the fact that consumers 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.

Visually and aurally, the signs coincide in the sequence of letters ‘CHEVA*LIER’. However, they differ in their remaining elements, in particular the first letter, ‘M’, of the dominant expression in the earlier mark’s verbal element, in its additional letter ‘L’ and in the remaining initial and first name in the contested sign. The signs further differ in the additional elements of the earlier mark, as described above. These elements are, however, secondary, weak or negligible. With regard to the pronunciation of the marks, as mentioned above, the relevant consumers will most likely refer to the earlier mark only by its dominant verbal element. Therefore, bearing in mind these findings, the signs are considered aurally and visually similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will both be associated with the concept conveyed by the element ‘CHEVAL(L)IER, they are 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 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 the presence of some weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods in question are highly similar and the degree of attention of the relevant public is considered average. The earlier mark has a normal degree of distinctiveness as a whole.

The conflicting signs are similar insofar as they have in common the verbal element ‘Cheval(l)ier’. As established above, this word is distinctive in relation to the goods and will have a slightly greater impact in the overall perception of the contested sign due to its role as a surname. The same applies to the earlier mark, where the impact of by the word ‘Chevallier’ will outweigh that of the initial ‘M’ preceding it. Furthermore, account must be taken of the fact that the relevant Spanish consumers may not recall the differing spellings of the coinciding elements in the signs, that is, they may not recall the omission of the additional letter ‘L’ in the contested sign.

In principle, when conflicting signs contain the same surname preceded by different first names, the outcome will very much depend on the perception of the surname in the relevant territory. The less common a surname is, the more likely it is that it will attract the consumers’ attention (regardless of whether the first names are common or not). In the present case, the surname ‘Cheval(l)ier’ is a rare surname for Spanish consumers and will most likely be associated with a French origin. Therefore, it cannot be completely ruled out that consumers, when encountering the contested trade mark, ‘Chevalier I. Thomas’, might confuse it with the earlier trade mark’s dominant element, namely ‘M. Chevallier’, which would lead to a likelihood of confusion.

Furthermore, 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

It should be also 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).

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 the present case, the relevant consumers, when referring to the earlier mark in such an environment, will omit the remaining elements of the mark and use the dominant element, ‘M. Chevallier’, which, as stated above, is confusingly similar to or at least likely to lead to an association with the contested sign.

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 No 3 113 015. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right examined above 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268), namely European Union trade mark registration No 14 202 791 for the word mark ‘DUCHÉ CHEVALLIER CARTE NOIRE’.

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

Marzena MACIAK

Manuela RUSEVA

Monika CISZEWSKA

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.