OPPOSITION No B 3 003 871

Capetta I. VI. P. S.p.a. – Industria Vinicola Piemontese, Corso Piave 140, S. Stefano Belbo (Cuneo) 12058, Italy (opponent), represented by Studio Torta S.p.A., Via Viotti 9, Torino 10121, Italy (professional representative)

a g a i n s t

Concept et Coordination, 4 Route de Saint Genes, Saint Caprais de Bordeaux 33880, France (applicant).

On 09/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 003 871 is upheld for all the contested goods.

2. European Union trade mark application No 17 160 722 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 17 160 722 for the word mark ‘CANETTA’, namely against all of the goods in Class 33. The opposition is based on Italian trade mark registration No 1 591 028 (Italian trade mark application No 2 014 902 240 800) and Italian trade mark registration No 1 302 784 (Italian trade mark application No 2 007 901 554 009). 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 Italian trade mark registration No 1 591 028 .

1. The goods

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

Class 33: Alcoholic beverages (except beers), sparkling wines, wines, alcoholic aperitives.

The contested goods are the following:

Class 33: Wine; wines.

Wines, wine are identically contained in both lists of goods (including synonyms).

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 average.

3. The signs

	CANETTA
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 figurative mark is composed of a graphical element and verbal element. It is devoid of any dominant elements. Beneath the figurative element, the verbal element ‘CAPETTA’ appears in bold, upper case letters of standard stylisation, save the connected bars of the letters ‘TT’. The term ‘CAPETTA’ is meaningless for the relevant public, at most denoting an Italian surname, and bears no relationship to the goods at issue, rendering this element distinctive.

As correctly highlighted by the opponent, it must be borne in mind that when signs are composed of figurative and verbal elements, the verbal element 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). The earlier sign’s figurative element is formed of two oval shapes, one of which is darker than the other. This abstract element conveys no meaning for the goods at issue. Whilst the graphical device of the earlier sign will be perceived by the public, within the sign considered as a whole, it performs an essentially ornamental function vis-à-vis the verbal element ‘CAPETTA’. In the case at hand, the public will more readily refer to the earlier mark by referencing the distinctive verbal element of the earlier sign, ‘CAPETTA’, depicted in bold.

The contested sign is composed of a single verbal element, ‘CANETTA’. In the case of word marks, it is the word as such that is protected and not their written form, therefore, their representation in upper or lower case letters is irrelevant. Additionally, as a word mark, the earlier sign has no elements that could be considered more dominant (visually eye-catching) than other elements. The term ‘CANETTA’ is devoid of meaning for the relevant public and not otherwise descriptive or allusive of the goods at issue; therefore, it is distinctive.

Visually, the distinctive verbal elements of the signs coincide in six of the seven letters in both marks, ‘CA*ETTA’, differing solely in one letter (‘P’ in the earlier and ‘N’ in the contested mark respectively), which appears in the same position and sequence in both signs (which are of identical length). The fact that signs coincide in their beginnings is significant, as consumers read from left to right and are therefore more impacted by the beginnings of signs. Furthermore, the difference in only one of the seven letters in total in both marks, occurring in the middle of the signs, may easily be overlooked by consumers.

Although the earlier sign features a graphic element which has no counterpart in the earlier sign, as previously mentioned, the stylisation of the earlier mark is overshadowed by the more important verbal element ‘CAPETTA’, which will attract the attention of and make more of an impact on the public than the figurative element. The visual similarity between the verbal elements of the marks offsets any visual differences.

Therefore, the signs are found to be visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters of the sole distinctive verbal element in both, ‛CA‑*ET-TA’, present identically in both signs. The pronunciation differs only in the sound of one letter in the same position in both signs, ‘P’ in the earlier sign and ‘N’ in the contested mark. This difference in one letter in the only element of the signs via which the public will refer to the marks, which occurs in the middle of the signs, could be overlooked by the public. Furthermore, the signs share the same rhythm and number of syllables.

Therefore, the signs are deemed aurally highly similar.

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 as a whole must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods have been found identical to those of the opponent. They are directed at the general public, whose degree of attention is average. The earlier mark has a normal level of distinctiveness.

As previously mentioned, the attention of the public when perceiving the earlier sign will be drawn to its verbal, rather than figurative, element (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Furthermore, the public will refer to the earlier sign via its distinctive verbal element ‘CAPETTA’. The distinctive verbal elements of both marks are identical in length and coincide in six of the seven total letters. The sole differing letter features in the same position and within the same string of letters in both. Indeed, the public may fail to notice a difference of one letter in the middle of the signs.

In addition to having been found visually similar to a high degree, the marks are also aurally highly similar, with the pronunciation of the distinctive verbal elements in both marks differing in only a single letter.

It should be 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.

It follows that the notable aural similarity between the signs is particularly significant when evaluating a likelihood of confusion, given the goods covered by the marks and the way in which the public will order them, as discussed above. A single letter difference appearing in the middle of two otherwise identical verbal elements could easily be misheard in the kind of noisy establishments where the goods at issue are habitually ordered.

As meaningless terms for the relevant public, ‘CAPETTA’ and ‘CANETTA’ are incapable of conveying any conceptual meaning, further impeding the public from safely distinguishing between the marks.

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).

Considering that both marks contain almost the same distinctive verbal elements (‘CAPETTA’ vs. ‘CANETTA’) and bearing in mind the impact of verbal components on the public’s perception of the marks and the identity of goods, the Opposition Division considers that the differences between the marks are not sufficient to offset the similarities.

Considering all the above, the Opposition Division finds that 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 Italian trade mark registration No 1 591 028. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right Italian trade mark registration No 1 591 028 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).

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

Gueorgui IVANOV

Ewelina SLIWINSKA

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.