OPPOSITION No B 3 049 433

Bodegas Borsao, S.A., Carretera N-122, Km 63, 50540 Borja (Zaragoza), Spain (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia, Spain (professional representative)

a g a i n s t

Lochim Merchant Limited Partnership, 15 Athol Crescent, EH3 8HA Edinburgh, United Kingdom (applicant), represented by Studio Torta S.P.A., Via Viotti, 9, 10121 Torino, Italy (professional representative).

On 25/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 433 is upheld for all the contested goods.

2. European Union trade mark application No 17 589 301 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 17 589 301 for the figurative mark . The opposition is based on, inter alia, Spanish trade mark registration No 3 548 846 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 Spanish trade mark registration No 3 548 846 as it is, as far as can be seen in the relevant database, not undergoing cancellation (unlike the opponent’s EUTM 17 285 735), and is more similar to the contested mark than the other trade marks invoked.

1. The goods

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.

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

Class 33: Wines exclusively from the wine region of Campo de Borja.

After a limitation, the contested goods are the following:

Class 33: Red wine having the PGI ‘Terre Siciliane’; White wine having the PGI ‘Terre Siciliane’; Beverages based on wine having the PGI ‘Terre Siciliane’; Aperitifs based on wine having the PGI ‘Terre Siciliane’.

Both marks cover wine, and even though they are restricted to wine from different specific regions, which usually implies different producers, nevertheless they have identical natures, purposes, methods of use, relevant public and distribution channels. They are also in competition. Therefore, these goods are at least similar to a high degree.

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 at least highly similar 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 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 single element ‘BOLÉ’ of the earlier mark has no meaning and is therefore distinctive to an average degree. The visually dominant element ‘Volé’ of the contested sign may be perceived by the Spanish public as the past tense (first person) of the verb ‘to fly’, however given that it is not usual to have a conjugated verb as a trade mark and there is no context that would facilitate this perception, it is likely that the majority of the Spanish public would not immediately think of this concept, but would instead see the element as meaningless. In any case, even if the meaning were perceived, it has no relation to the goods at issue, and therefore this element is distinctive to an average degree.

The contested sign also has two smaller (and therefore secondary) verbal elements, ‘FEUDO’ and ‘MACCARI’ below the dominant one. These elements are likely to be perceived as a person’s name and surname or, in the context of the relevant goods, as the name of the winery that produces the ‘Volé’ wine. The contested sign also has a very small meaningless figurative element below the word ‘VOLÉ’ as well as the three dots placed above the initial ‘V’. These figurative elements, while they may be distinctive, will make little impact in the overall perception of the sign as they are inconspicuous. Furthermore, 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).

Visually, the signs coincide in ‘*OLÉ’ of the single verbal element of the earlier mark and the dominant verbal element of the contested sign. The signs differ in the first letters of the abovementioned elements, ‘B’ v ‘V’, the case used (upper case v title case), the slight stylisation of the letters (standard in the earlier mark and slightly more stylised in the contested one) and the additional elements of the contested sign. The most impactful visual difference between the signs is the difference in ‘B’ v ‘V’ as this difference appears at the beginning of the rather short words ‘BOLÉ’ and ‘Volé’, while the additional elements of the contested sign play a secondary role and do not impact the visual impression significantly.

Therefore, the signs are similar to at most an average degree.

Aurally, the public will refer to the signs identically or at least in a highly similar way. This is because the letters ‘V’ and ‘B’, according to Spanish pronunciation rules produce a very similar, if not identical sound (03/05/2019, R 2223/2018‑2, VIVI & LOU (fig.) / BIBI LOU (fig.), § 60 and the case-law cited therein) while the secondary elements ‘FEUDO MACCARI’ are unlikely to be voiced due to their small size, the fact that they are easily separable from the dominant element of the sign (18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48 and the case-law cited) and are also likely to be perceived as a reference to the wine maker rather than the trade mark.

Even assuming that some consumers might pronounce the remaining elements of the contested mark, the identity between the first and most influential verbal components of the signs leads to at least an average degree of aural similarity.

Conceptually, in the most likely scenarios the signs are not conceptually similar. In particular, the public would only perceive the fact that the contested sign contains a specific name while they would not perceive any conceptual similarity or difference that could stem from the remaining elements of the signs (as neither ‘BOLÉ’ nor ‘Volé’ would be seen as meaningful). Furthermore, if the concept of to fly (past tense, first person) is perceived in the contested sign but not in the earlier one, the signs are also not conceptually similar as the earlier mark would still lack concept.

Finally, if the signs are referred to aurally, due to the aural identity of the elements ‘BOLÉ’ and ‘Volé’, they could both be associated with the same meaning, thus making the signs conceptually at least highly similar.

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 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).

In the present case the goods are at least highly similar and target the public at large whose level of attention is average. The signs are visually similar to at most an average degree, aurally identical/highly similar, or at least similar to an average degree, while conceptually they may be either at least highly similar or not similar at all, depending on the perception of the public. The distinctiveness of the earlier mark is normal.

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.

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 fact that both signs designate wine from different regions does not, per se, exclude the likelihood that consumers could be confused. Depending on the knowledge and sophistication of the consumers of wine (which varies greatly among the general public), they could order the wine by referring to the name (in this case, BOLÉ or Volé), the geographical origin, the type (e.g., sweet, dry) or, as the applicant argues, the grape or kind. However, consumers would not necessarily use all of this information each time they order/buy wine. The various ways of ordering are equally possible, however in the current dispute between the trade marks at issue the only relevant question is whether the Spanish consumers, when seeing/hearing the wine labelled with the contested sign, could be led to believe that it is the same wine as that of the opponent or that it comes from an economically related source.

In light of the foregoing considerations, and given the visual, and especially aural, similarity between the signs, as well as the high degree of similarity between the goods, a likelihood of confusion exists. The difference in the first letters ‘B’ v ‘V’ of the single element of the earlier mark and the dominant element of the contested mark for the Spanish public is not striking, even if it appears at the beginning. This is because according to Spanish language rules, these two letters are aurally identical or at least highly similar, which makes consumers unlikely to recall exactly which letter represents the sound /b/ in the relevant words. The additional elements of the contested sign are secondary and therefore not sufficient to exclude the likelihood of confusion.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not entirely relevant to the present proceedings as they refer to trade marks where, unlike in the present case, there was no aural identity/high similarity between the differing first letters (e.g. SOHO v MOHO, MUMM v SUMM, PITU v LITU).

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 3 548 846. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 3 548 846 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), 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

Helen Louise MOSBACK

Vita VORONECKAITE

Carlos MATEO PÉREZ

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.