OPPOSITION No B 3 049 140

Bodegas Cerrolaza SL, Carretera de Navarrete, 38, 26372 Hornos de Moncalvillo (La Rioja), Spain (opponent), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 bis, 3 - 1, 48010 Bilbao (Bizkaia), Spain (professional representative)

a g a i n s t

Marvanejo - Gestão de Investimentos, S.A., Rossio do Meio Rua Principal à Fonte Nova, 7350‑205 Elvas, Portugal (applicant), represented by A.G. Da Cunha Ferreira, LDA., Avenida 5 de Outubro, 146-7º, 1050‑061 Lisboa, Portugal (professional representative).

On 23/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 140 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 650 722, namely against wine in Class 33. The opposition is based on earlier Spanish trade mark registration No 1 668 199 ‘VIÑAMADA’ and on Spanish trade name No 259 152 ‘VIÑAMADA’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark on Spanish trade name No 259 152

In the present case, on 04/04/2018, the opponent filed the notice of opposition against the contested application. The opponent indicated in the notice of opposition that the opposition is based on Spanish trade mark application/registration No 259 152 for the word mark ‘VIÑAMADA’ and the ground of the opposition is Article 8(1)(b) EUTMR. Furthermore, in the notice of opposition the opponent made reference to evidence accessible online from a source recognised by the Office (Article 7(3) EUTMDR).

The opponent attached to the notice of opposition a printout from the database of the Spanish Patent and Trade Mark Office from which it is evident that the right identified with No 259 152 ‘VIÑAMADA’ is not a trade mark, but a trade name. Furthermore, the Opposition Division accessed the relevant online official database (i.e. the database of the SPTO), accessible through TMView, and confirmed that the right invoked in the notice of opposition is a trade name.

A trade name is not a trade mark according to Article 8(2) EUTMR and the relevant opposition ground for such rights does not fall under Article 8(1) EUTMR, as claimed by the opponent in the notice of opposition. Therefore, the claim to the trade name as a basis of the opposition is inadmissible.

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.

Preliminary remark

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T 296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

1. 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: Wine.

The contested wine is included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, the goods are identical.

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.

The goods at issue target the public at large (27/06/2013, T‑89/12, R, EU:T:2013:335, § 44). The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). Therefore, in relation to these goods, the level of attention paid by the relevant public will be normal.

3. The signs

VIÑAMADA	QUINTA DA AMADA
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 Spanish consumer will naturally break down the earlier mark, ‘VIÑAMADA’, and, will perceive it as a combination of the words ‘VIÑA’ and the letters ‘MADA’. The word ‘VIÑA’ will be understood as referring to ‘terreno plantado de muchas vides’. (information extracted from Real Academia Española Dictionary on 10/12/2019 at https://www.rae.es/), which in English means ‘vineyard’, that is, an area of land where grapevines are grown in order to produce wine. Therefore, as the relevant goods are various kinds of alcoholic beverages, including wine, it is considered that this element is weak for alcoholic beverages that are produced from grapes grown in vineyards (such as wine) as it alludes to their nature or place of production. However, the element ‘MADA’ is meaningless and therefore distinctive.

In Spain ‘QUINTA’ means, inter alia, ‘casa de campo’ (information extracted from Real Academia Española Dictionary on 10/12/2019 at https://dle.rae.es/quinto), which means ‘country house’. It is often seen on a bottle of alcoholic beverage in the same way that ‘chateau’ appears on the label of French wines. The term evokes the image of a traditional country house or estate, which consumers prefer as the place of production of such goods rather than places less bucolic, such as towns, cities, industrial areas or factories. In this sense it tends to be laudatory. Therefore, even for goods not closely linked to wines, ‘QUINTA’ is not strongly distinctive (13/07/2016, R 2573/2015-2, QUINTA BOTANICA / THE BOTANICALS et al.).

The contested sign also includes the element ‘DA’, which has no meaning in Spanish, but it could be seen as the preposition ‘de’ (‘of’ in English). Given its nature, its impact in the overall perception of the signs may be rather limited. The third verbal element of this sign, ‘AMADA’, which means ‘persona amada’ (‘dear’ or ‘beloved’ in English) (information extracted from Real Academia Española Dictionary on 10/12/2019 at https://www.rae.es/), will be seen as the name of the country house. Bearing in mind the relevant goods, it is distinctive to an average degree.

Contrary to the opponent’s argument, as both signs are word marks, they have no elements that could be considered more dominant (eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters/sounds ‘-(A)MADA’. However, they differ in ‘VIÑ(A)’ of the earlier mark and in the first two verbal elements, ‘QUINTA DA’, of the contested sign.

Furthermore, the marks differ significantly in their lengths, as the earlier mark is composed of one word whereas the contested sign of three. Consequently, when pronounced, the marks will have different rhythms and intonations.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, the signs are conceptually not similar. As previously stated, the earlier mark contains the concept of ‘VIÑA’ (weak) and the contested sign will be seen as a country house called ‘AMADA’.

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 weak element (VIÑA) in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion is constituted by the risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings. The appreciation of the likelihood of confusion on the part of the public depends on numerous elements, including the association which can be made with the registered trade mark, the degree of similarity between the trade mark and the sign and between the goods and services identified: it must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16, 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-18).

As previously stated, the signs coincide visually and aurally in some letters, creating only a low degree of similarity and conceptually they are not similar. The degree of attention of the relevant public is considered to be average.

Although the signs coincide in the string of some letters, which are at the end of the only word of the earlier mark and form the third word of the contested sign, the marks important differences. Furthermore, these differences between the marks lie in the length and rhythm, with the contested sign being composed of three verbal elements.

Indeed, the string of letters ‘-AMADA’ of the earlier mark, which coincide with the third verbal element of the contested sign, does not play an independent role in the mark and have to be artificially split from the components VIÑA+MADA.

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). However, as mentioned above, phonetically the marks differ considerably.

Therefore, the Opposition Division considers that the dissimilarities between the signs in question prevail over their similarities and are sufficient to offset even the identity between the goods, and hence to exclude any likelihood of confusion between the marks.

In its observations, the opponent argues that the contested trade mark has a low distinctive character given that many trade marks include ‘QUINTA DA’. In support of its argument the opponent submitted some extracts from TMView showing some of these trade mark registrations. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘QUINTA DA’. Under these circumstances, the opponent’s claims must be set aside.

Moreover, the opponent 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). While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1)(b) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Peter QUAY

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.