OPPOSITION No B 3 010 686

Oenoforos AB, P.O. Box 24005, 104 50, Stockholm, Sweden (opponent), represented by Brann AB, Drottninggatan 27, 111 51, Stockholm, Sweden (professional representative)

a g a i n s t

Weiping Chen, Urbanización El Bosque, Bungalow 4, Ctra. de Godelleta, km. 4,1, 46370, Chiva, Valencia, Spain (applicant), represented by Ana María López de San Pedro, Calle los Doscientos 7 1A, 03007, Alicante, Spain (professional representative).

On 27/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 010 686 is upheld for all the contested goods.

2. European Union trade mark application No 17 205 311 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 17 205 311 for the figurative mark . The opposition is based on European Union trade mark registration No 9 193 021 for the figurative mark and European Union trade mark registration No 13 259 502 for the figurative 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 European Union trade mark registration No 13 259 502 for the figurative mark .

1. The goods

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

Class 33: Mulled wines, fortified wines and mulled fortified wines.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s mulled wines, fortified wines and mulled fortified wines. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case the opposition Divisions finds it appropriate to focus the comparison on the Spanish-speaking part of the public for which the marks are meaningful and, therefore, this has an impact on the conceptual comparison between the signs.

The earlier mark consists of the word ‘Lucia’ depicted in a high stylised typeface. It will be perceived by the relevant public as a female name and it is considered distinctive to an average degree for the relevant goods (mulled and fortified wines) as it has no relationship with those goods that could possibly impair its distinctiveness,

The contested mark is composed by the verbal element ‘Gato de Lucia’ and a figurative element depicting the silhouette of a cat. In both signs the elements are portrayed in a similar hand writing style.

The verbal element ‘Gato de Lucia’ will be perceived by the relevant public as ‘Lucia’s cat’ and therefore indicating that the cat pertains to Lucia. Taking into account the relevant goods, alcoholic beverages, it is considered distinctive to an average degree and where the words ‘Gato’ and ‘Lucia’ play an independent distinctive role in the sign. The figurative element of the depiction of a cat is also considered to have an average distinctive character for the relevant goods, as it has no connection to them or any of their essential characteristics.

Furthermore, the signs have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘Lucia’, which is the sole element in the earlier mark, and the similar typeface used in the verbal elements of the signs. However they differ in the additional verbal element ‘Gato de’ and the figurative element depicting the cat, both in the contested sign with no counterpart in the earlier mark.

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).

It is therefore considered that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the common word ‘Lucia’. As the figurative elements will not be pronounced, the signs only differ in the pronunciation of the additional words ‘Gato de’ present in the contested sign. Account is taken that the only word in the earlier mark is identically reproduced in the contested sign and plays a distinctive role.

It is therefore considered that the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs refer to a person named Lucia whilst the contested mark contains also the reference to a cat belonging to this person.

Therefore, they are 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.

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).

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, the goods are identical whereas the signs are visually similar to a low degree and aurally and conceptually similar to an average degree. The only word of the earlier mark is included in the contested sign where it plays an independent distinctive role, and this is not sufficiently counteracted by the contested sign’s additional elements as explained above. Furthermore, the identity of the goods is considered to be a factor that works in favour of a finding that consumers are likely to confuse the signs.

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.

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 covered are from the same or economically linked undertakings. In the present case, the contested sign includes the verbal element of the earlier mark. The additional verbal and figurative elements of the contested sign may be perceived as only a mere variation or modification of the brand ‘Lucia’.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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 European Union trade mark registration No 13 259 502 for the figurative mark . It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 13 259 502 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 rights 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

Catherine MEDINA

Jorge ZARAGOZA GOMEZ

Begoña URIARTE VALIENTE

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.