OPPOSITION No B 3 063 556

Osborne Selección, S.A.U., Finca El Jaral, Carretera Malpica-Puebla Nueva, s/n, 45692 Malpica de Tajo (Toledo), Spain (opponent), represented by Aguilar I Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Guangzhou Ruihua Investment Management Co. Ltd., Room 1012 No. 222-3 Xingmin Road, Tianhe District, Guangzhou, People’s Republic of China (applicant), represented by Stevens Hewlett & Perkins, 1 St Augustine’s Place, BS1 4UD Bristol, United Kingdom (professional representative).

On 21/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 556 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 and services of European Union trade mark application No 17 873 506 , namely against all the goods in Class 33 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 6 982 847 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE REQUEST

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.

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.

1. The goods and services

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

Class 33: Alcoholic beverages (except beer); alcoholic essences; alcoholic extracts; alcoholic fruit extracts.

The contested goods and services are the following:

Class 33: Wine; fruit extracts, alcoholic; spirits [beverages]; aperitifs; alcoholic beverages, except beer; alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; baijiu [Chinese distilled alcoholic beverage]; cider; cocktails; digesters [liqueurs and spirits]; brandy; whisky; alcoholic essences; alcoholic extracts; rice alcohol; rum; vodka; hydromel [mead]; kirsch.

Class 35: Retail and wholesale services for alcoholic beverages.

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

The contested wine; fruit extracts, alcoholic; spirits [beverages]; aperitifs; alcoholic beverages, except beer; alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; baijiu [Chinese distilled alcoholic beverage]; cider; cocktails; digesters [liqueurs and spirits]; brandy; whisky; alcoholic essences; alcoholic extracts; rice alcohol; rum; vodka; hydromel [mead]; kirsch are identical to the opponent’s alcoholic beverages (except beer); alcoholic essences; alcoholic extracts; alcoholic fruit extracts, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35.

Therefore, the contested retail and wholesale services for alcoholic beverages are similar to the opponent’s alcoholic beverages (except beer).

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 and services found to be identical or similar are directed at both the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered 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 earlier trade mark is a figurative mark containing the verbal element ‘seven’, depicted in slightly stylised lower-case letters, and the figurative element of the seven colourful bulls above it. All the elements are depicted on a light beige rectangular background, which, especially taking into account the goods, resemble the label.

The verbal element ‘seven’ is a rather basic English word and, therefore, it is reasonable to assume that it will be understood by the majority of the relevant public in the relevant territory as referring to the numeral ‘7’. Nevertheless, it is not excluded that there may be a part of the relevant public who do not understand the word ‘seven’ and perceives this verbal element as meaningless.

The element ‘seven’ does not indicate the quantity, weight, serial number or other specific characteristics of the goods, nor is it allusive or otherwise weak in relation to the relevant goods. Therefore, its distinctiveness is average both for the public who understand its meaning and for the public who perceive it as meaningless.

The figurative element of the seven colourful bulls has no direct correlation with the relevant goods and its distinctiveness is average.

The contested sign is a figurative mark containing the two verbal elements ‘SIX’ and ‘SEVEN’, separated by a hyphen and both depicted in rather standard upper-case letters. The considerations as regards the meaning, perception and distinctiveness of the verbal element ‘SEVEN’ in the earlier mark apply equally for the contested sign. The verbal element ‘SIX’ is also a basic English word corresponding to numeral ‘6’. The majority of the relevant public in the relevant territory will understand the meaning of this verbal element. However, it is not excluded that part of the relevant public may perceive it as meaningless. The verbal element ‘SIX’ in the contested sign does not indicate the quantity, weight, serial number or other specific characteristics of the goods and services. It has a normal degree of distinctiveness independently of whether the relevant public perceives its meaning or perceives it as meaningless.

The contested sign also contains the figurative element of a black trapezoidal background with white undefined symbols in it, which could be perceived in various ways, such as the numbers ‘6’ or ‘8’ and ‘1’, or the letters, inter alia, ‘G’ and ‘A’. Independently of their perception on the part of the relevant public, these symbols are not related to the relevant goods and services and their distinctiveness is average.

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). However, the verbal element of the sign does not automatically have a stronger impact (31/01/2013, T‑54/12, Sport, EU:T:2013:50, § 40) and, in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the verbal element (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 37).

The figurative element of the seven colourful bulls in the earlier mark has a significant impact on the overall visual impression created by the earlier mark. They are quite elaborate and original and, overall, are memorable due to the concept evoked. Therefore, the verbal and the figurative elements of the earlier mark have at least equal impact on the consumer perceiving this mark. The figurative element of the contested sign is larger than the verbal element, however, it does not evoke a clear and unequivocal concept. It is not easy to describe it or to refer to it when encountering the contested sign. Therefore, the verbal elements ‘SIX-SEVEN’ of the contested sign will have a stronger impact on the consumers than the figurative element.

Both the earlier mark and the contested sign have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their verbal element ‘SEVEN’. However, they differ in their figurative elements, namely in the seven colourful bulls of the earlier mark versus the black trapezoidal background with undefined symbols (numbers or letters) in it, and in the contested sign’s verbal element ‘SIX’. The signs also differ in their depictions as well as in the typeface of the letters of the verbal elements. Overall, the only commonality between them lies in that they both contain the verbal element ‘SEVEN’. However, this verbal element is preceded by the differing verbal element ‘SIX’ in the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, in the case of the contested sign, the differing verbal element ‘SIX’ will first catch consumers’ attention (rather than the verbal element ‘SEVEN’).

Taking into account the similarities described above and the differences between the signs, the position of the verbal element ‘SEVEN’ in the contested sign as well as the impact of the figurative element in the earlier mark, the signs are visually similar at most to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘SEVEN’, present identically in both signs. The pronunciation differs in the sound of the letters ‘SIX’ of the contested sign, which have no counterparts in the earlier mark. However, the differing verbal element ‘SIX’ will be pronounced and heard first rather than the coinciding verbal element ‘SEVEN’. Furthermore, the signs differ in their length, rhythm and intonation.

Therefore, the signs are aurally similar to a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the relevant public who perceive the meanings of the verbal elements ‘SEVEN’ and ‘SIX’, the earlier mark evokes a concept of ‘seven bulls’ on account of the depiction of the bulls, while the contested sign evokes a concept of numerals ‘6’ and ‘7’ — although the figurative element of the contested sign does not convey any clearly defined concept. Consequently, although the signs coincide in the concept of the numeral ‘7’, the subject in the earlier mark, namely bulls, is completely different from the concept of numerals in the contested sign. Therefore, the signs are conceptually dissimilar for this part of the public.

For the part of the relevant public who do not perceive the meaning of the verbal elements ‘SEVEN’ and ‘SIX’, the figurative element of the seven colourful bulls of the earlier mark will, however, convey the concept of bulls and the figurative element in the contested sign will not convey any clearly defined concept. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

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

The relevant goods and services are partly identical and partly similar. They target both the public at large and business customers with specific professional knowledge or expertise. The degree of attention of the relevant public is considered average. The signs are visually similar at most to a low degree and aurally similar to a below-average degree. Conceptually, depending on the public, the signs are either not similar or dissimilar.

The signs coincide in the verbal element ‘SEVEN’. However, they differ in all other elements, as well as in their depictions. As explained above, the seven colourful bulls are memorable in the earlier mark while the figurative element of the contested sign is undefined and has nothing in common with the earlier mark. The figurative elements and the additional verbal element in the contested sign outweigh the similarity between the signs on account of the verbal element ‘SEVEN’.

The opponent argues that the phonetic similarity between the signs at issue is of particular importance since the relevant goods are mainly alcoholic beverages, which are frequently ordered verbally in noisy establishments (bars, nightclubs, etc.). However, the relevant goods are not only alcoholic beverages in Class 33 but also services in Class 35. Furthermore, when the goods are ordered at sales point with an increased noise factor, a particular importance to the phonetic similarity may be attached. However, this does not mean that the visual impression can be overlooked for the goods normally purchased verbally. The General Court has held that although preponderant importance had sometimes been accorded to the phonetic perception of marks for beverages, the phonetic dissimilarities of the marks did not merit particular importance where the specific beverages were widely distributed and sold not only in specialist shops, where they would be ordered verbally, but also in large shopping centres, where they would be purchased visually (03/09/2010, T‑472/08, 61 a nossa alegria, EU:T:2010:347, § 106).

Therefore, the considerable differences between the signs in the overall perception are particularly relevant, when assessing the likelihood of confusion between the signs, and they are sufficient to dispel any likelihood of confusion. Consequently, the fact that the signs coincide in the verbal element ‘SEVEN’ is not sufficient in itself to lead to a finding of a likelihood of confusion. The Opposition Division considers that the consumers will be able to safely distinguish between the signs.

Contrary to the opponent’s argument that the contested sign maybe perceived as a variation or a new edition of the earlier mark, there is no reason to conclude that consumers would, even if they did not confuse the marks directly, assume that the goods and services bearing the marks in question originate from the same undertaking, even though the goods are identical. The depictions of the marks are very different and the presence of the different elements in the signs create a very distinct overall impression. Therefore, consumers have no reason to assume that the marks are variants of each other designating different lines of goods and services.

The opponent refers to a previous decision of the Office, namely to the decision of 20/03/2015, B 2 364 779, 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 case referred to by the opponent is not relevant to the present proceedings because the signs are not comparable. Contrary to the case referred to by the opponent in which the contested sign was a two-word mark, which was meaningless for the relevant public (Spanish), and it was considered that the differing word did not counteract the overall similarity between the signs. In the present case, it is not only the differing word but the figurative elements also contribute to the completely different depictions between the contested sign and the earlier mark. Therefore, even if the previous decision submitted to the Opposition Division is to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, despite the identity and similarity of the goods and services involved, there is no likelihood of confusion, including likelihood of association on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) 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

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.