OPPOSITION No B 3 016 881

Santiago Ruiz, S.A., Rua do Vinicultor Santiago Ruiz s/n, 36760, San Miguel de Tabagón (El Rosa Pontevedra), Spain (opponent), represented by J. Pereira da
Cruz, S.A., Rua Victor Cordon 14, 1249-103, Lisboa, Portugal (professional representative).

a g a i n s t

Domaine Porto Carras, S.A., Solomou 20, 17456 Athens, Greece (applicant), represented by Miltiadis Sekkas, Solomou 20, 17456 Athens, Greece (professional representative).

On 24/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 016 881 is upheld for all the contested goods.

2. European Union trade mark application No 17 249 418 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 17 249 418 .

The opposition is based on the Spanish trade mark registration No 1 783 243 ‘ZOE’ (word 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.

a) The goods

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic beverages.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 33

Alcoholic beverages (except beer) are identically contained in both lists of goods
(i.e. the same term in plural or singular form).

The contested preparations for making alcoholic beverages are similar to a low degree to the earlier alcoholic beverages (except beers) because they have the same method of use, and can coincide in end users and distribution channels.

b) 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 or similar to a low degree are directed at the public at large. The degree of attention of the customer during the purchase of the goods is deemed to be average.

c) The signs

ZOE
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 single word mark formed by ‘ZOE’. Since it is a word mark, the word as such is protected and not its written form. It is irrelevant whether the word mark is represented in small or capital letters.

The contested sign is formed by an oval frame formed by a double circle containing the verbal element ‘zoé’, written in a slightly stylised typeface, the expression ‘Sparkling Rosé Wine’ appears in smaller letters underneath ‘zoé’ and, at the bottom of the sign, appears a combination of letters and numbers (i.e. 750 ML · 12% ALC.VOL) . All of these elements contain decorations in the form of floral leaves, as background.

The element ‘Zoe’ in both the earlier and the contested sign will be perceived as a given name (female) by the relevant public. The expression ‘Sparkling Rosé Wine’ in this same sign consists of a combination of English and French terms. The word ‘Sparkling’ is used in English to indicate (adjective) that something is ‘foaming’ or ‘bubbling’, the word ‘Rosé’ is a French term used to refer to a particular type of wine and in particular to the colour (pale pink) of the product. Lastly, the term ‘Wine’ is the English word used to refer to an alcohol beverage made from fermented grapes. The combination of letters and numbers ‘750 ML · 12% ALC.VOL’ referred to above is a commonly used combination of figures and abbreviations that directly refers to the characteristics of the product, in particular to the content in millilitres (i.e. 750 ML) and the percentage of alcohol contained (i.e. 12%).

Regarding the distinctive character of the elements forming the marks, the coinciding elements ‘ZOE’ and ‘zoé’ in the earlier and contested sign, respectively, are perceived by the relevant public as a person´s name (female) and therefore, since they are neither descriptive nor allusive of the characteristics of the goods involved, they are of average distinctive character.

The elements ‘750 ML · 12% ALC.VOL’ in the contested sign are clear references to the characteristics of the goods involved, and therefore are void of distinctive character. Since they are not useful for consumers trying to identify the commercial origin of the goods, they will not be taken into consideration for the purpose of comparison of the signs.

The words ‘Sparkling Rosé Wine’ will be understood by the vast majority of consumers in the relevant territory as having the concepts described above, since they are commonly used in relation to the kind of products involved. However, it cannot be excluded that part of the relevant public will perceive them as meaningless terms. For the part of the public perceiving ‘Sparkling Rosé Wine’ as having the concepts referred to above, these are descriptive of the characteristics of the goods involved, and therefore void of distinctive character. For the part of the public perceiving them as meaningless terms, they are neither descriptive nor allusive of the characteristics of the goods involved, and are therefore of average distinctive character.

Lastly, the oval frame and the floral background in the contested sign, act as mere decorative elements, and are therefore of lower than average distinctive character, and of reduced impact.

Regarding the presence of dominant (visually eye-catching) elements in the signs, the earlier mark is a word mark and, as such, it does not have any element more dominant (visually eye-catching) than others. In the contested sign, the co-dominant elements are ‘zoé’ and the oval frame, since they are of much bigger size and/or stronger visual impact than the rest of elements.

The Opposition Division points out that when signs show both word and figurative components, the principle has been established that the word 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 most readily refer to a sign by its verbal component. Therefore, in this case, it must be noted that the figurative elements in the contested mark will have less impact than the verbal elements.

Lastly, it must be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly because the public reads from left to right and from top to bottom, which makes the part placed at the left and top of the sign (the initial part) the one that first catches the attention of the reader. Therefore, in this case, it is relevant to note that the coincidences between the marks are found in the first element read and pronounced in the contested sign.

Visually, the signs coincide in the verbal element ‘ZOE’/’zoé’, which is the only element forming the earlier mark, and it is entirely contained in the contested sign, in which it is the most distinctive element and one of the co-dominant elements. In addition, it is the first word read and pronounced in the latter mark.

The signs differ in the words ‘Sparkling Rosé Wine’ which are of less visual impact for the reasons explained above and at least for part of the public, void of distinctive character. They also differ in the oval shape and floral background, both considered of lower than average distinctive character, and of reduced impact, for the reasons explained above. Lastly, the marks differ in the typeface and accent on the letter ‘e’ in the contested sign. However, the typeface is only slightly stylised and not capable per se to help consumers to distinguish between the marks and the accent on the letter ‘e’ does not have a significant visual impact.

Taking into account the stronger impact of the coinciding elements and the reduced impact of the differing elements of the marks, for the reasons explained above, it is considered that the signs are visually similar to at least an average degree.

Aurally, ‘ZOE’/’zoé’ are pronounced identically or at least in a highly similar way, since the accent on the letter ‘e’ of the contested sign will not have an aural impact, or it will only slightly influence the pronunciation of the sign.

The aural differences are found in the elements ‘Sparkling Rosé Wine’. For the part of the public for which these words are void of distinctive character, it is likely that they will be omitted when referring to the sign. In this scenario, the marks are aurally similar to a high degree or identical, depending on the impact (if any) caused by the differing accent on the letter ‘e’ of the contested sign.

For the part of the public for which ‘Sparkling Rosé Wine’ is meaningless and distinctive, these elements will be pronounced. However, the earlier mark is still entirely contained in the contested sign, in which it is the first element read and pronounced. Therefore, in this scenario the marks 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 will be perceived as referring to the same person´s name, despite the differing accent. The signs differ in the concepts of the oval frame, floral background and, if understood, the words ‘Sparking Rosé Wine’. It is considered that the signs are conceptually similar to at least 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.

d) 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.

e) Global assessment, other arguments and conclusion

The goods compared have been considered partly identical and partly similar to a low degree. They are directed at the public at large, who will pay an average degree of attention during the purchase. The earlier mark is of average distinctive character.

The marks have been considered to be visually and conceptually similar to at least an average degree. Depending on the consumer´s perception of the signs, for the reasons explained above, the aural similarity of the signs will be similar to an average degree, highly similar or identical.

The coincidences between the marks have been found in elements that are either the only element forming the mark (i.e. in the earlier mark) or the element of greater impact within the sign (i.e. in the contested sign), for the various reasons explained above. In this same line, the differences between the signs have been found in elements of reduced impact, as already described.

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 average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

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).

In this case, for all of the above, it is considered that the coincidences between the signs, together with the identity or similarity to a low degree of the goods involved, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same or economically-liked undertakings.

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.

It is therefore relevant to note that, in the present case the goods involved are frequently ordered orally and in noisy establishments, and that the degree of aural similarity of the signs has been considered to vary from average to identical.

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 1 783 243. It follows that the contested sign 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

María del Carmen SUCH SÁNCHEZ

Sylvie ALBRECHT

María Clara IBÁÑEZ FIORILLO

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.