OPPOSITION No B 3 053 327

S. Martinelli & Company, 227 East Beach Street, 95077 Watsonville, United States of America (opponent), represented by Zenz Patentanwälte Partnerschaft mbB, Rüttenscheider Str. 2, 45128 Essen, Germany (professional representative)

a g a i n s t

Jose Maria Aycart Valdes, Edif. Parking Escalinata, Avd. Virgen del Carmen s/n, 11201 Algeciras, Spain (applicant), represented by Consiangar, S.L., Calle Albasanz, 72-1º 1, 28037 Madrid, Spain (professional representative).

On 25/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 053 327 is partially upheld, namely for the following contested goods:

Class 32: Beer; mineral waters; syrups and other preparations for making beverages.

2. European Union trade mark application No 17 860 107 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 860 107 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 3 580 719 for the word mark ‘MARTINELLI’S’. 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 3 580 719.

a) The goods

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

Class 32: Fruit drinks and fruit juices including aerated fruit juices; non-alcoholic (unfermented) ciders; syrups and other preparations for making beverages; non-alcoholic fruit extracts and non-alcoholic fruit nectars.

The contested goods are the following:

Class 32: Beer; mineral waters; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beer, hard cider, wine and apple wine).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 32

Syrups and other preparations for making beverages are identically contained in both lists of goods.

The contested beer and the opponent’s non-alcoholic (unfermented) ciders can have the same production process. These drinks can be served in restaurants and in bars and be on sale and be found in the same area of supermarkets, even though some distinction can also be made, for example, according to their respective subcategory. These goods may originate from the same undertakings and are in competition. Therefore, these goods are at least similar.

The contested mineral waters and the opponent’s fruit drinks are similar. They have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are in competition.

Contested goods in Class 33

Contrary to the opponent’s arguments, the applicant’s alcoholic beverages (except beer, hard cider, wine and apple wine) differ from the opponent’s goods in Class 32 as they have a distinct nature and intended purpose, based on the presence or absence of alcohol in their composition. They usually come from different undertakings and target a distinct public.

According to settled case-law, although a very large number of alcoholic and non‑alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as premixed alcoholic drinks, to consider that those goods should, for that reason alone, be described as similar, when they are not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers, would put a large number of goods which can be described as ‘drinks’ into one and the same category for the purposes of the application of Article 8(1) EUTMR. Thus, it cannot be considered that alcoholic drinks and non‑alcoholic drinks are similar merely because they can be mixed, consumed or marketed together, given that the nature, intended purpose and use of those goods differ, based on the presence of, or absence of alcohol in their composition. Furthermore, it must be held that the undertakings which market alcoholic drinks premixed with a non‑alcoholic ingredient do not sell that ingredient separately and under the same or a similar mark as the premixed alcoholic drink at issue (04/10/2018, T‑150/17, FLUGEL / ... VERLEIHT FLUGEL et al., EU:T:2018:641, § 80-81). Therefore, they are not similar.

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 are directed at the public at large. The degree of attention is considered to be average.

c) The signs

MARTINELLI’S
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).

Both marks include the word ‘Martinelli’, followed by the letter ‘s’, which makes the sign applied for plural, and, combined with an apostrophe, puts the earlier mark in the possessive form. A significant part of the relevant consumers (such as German-, Italian-, Portuguese- or Spanish-speaking parts of the public) will perceive the signs as a surname of Italian origin. Nevertheless, whether understood or not, these elements have no specific, descriptive, allusive or otherwise weak/non-distinctive meaning in relation to the relevant goods and, therefore, their inherent distinctive character is normal. Therefore, the inherent distinctive character of the earlier mark is normal.

The contested sign depicts a figurative element that consists of two connected branches of leaves. In this regard, its distinctiveness will be limited for the relevant goods because it conveys that they are organic or environmentally friendly. The contested sign also contains other graphic elements (colours, background and typeface) that are not distinctive, as they are likely to be perceived by consumers, essentially, as mere decorative elements, and not as indicating the commercial origin of the goods. The word element is bigger than the additional figurative element. 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG. MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Visually, the signs coincide in the letters ‘MARTINELLIS’. They differ merely in the apostrophe of the earlier mark, in the figurative element, and in the stylisation of the letters in the contested sign, which will not distract the consumers’ attention away from the word since it merely serves as embellishment. The figurative element is also of limited distinctiveness as explained above. Therefore, the signs are visually highly similar.

Aurally, the figurative element in the contested sign will not be pronounced. Hence, the pronunciation of the signs coincides in full, as the apostrophe in the earlier mark will not result in a significant audible difference. They are aurally identical.

Conceptually, the only difference between the signs at issue concerns elements which have no significance in term of distinctiveness. Despite the presence of the apostrophe in the earlier mark, the signs could refer to the same concept. Thus, the signs are conceptually similar to a high degree.

For the consumers, if any, that do not see the verbal elements as an Italian surname, the only concept grasped will be the figurative device of the contested sign. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 are identical, similar and dissimilar. They target the public at large.

Furthermore, the earlier mark has an average degree of inherent distinctiveness for the relevant public. The signs are visually similar to a high degree and aurally identical. Conceptually, for a large part of the public, the signs are similar to a high degree, and, for other parts, not conceptually similar.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or similar goods, are likely to think that they come from the same undertaking or from economically linked undertakings. In particular, considering that the differences between the signs mainly lie in figurative aspects, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 3 580 719.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods (Class 33) are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks.

 European Union trade mark registration No 3 580 768 for the figurative mark .

 European Union trade mark registration No 3 580 776 for the figurative mark .

Since these marks cover the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Gonzalo BILBAO TEJADA

Martin EBERL

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.