OPPOSITION No B 3 074 741

Distillerie De La Tour, 4 rue des Distilleries, BP 40069, 17800 Pons, France (opponent), represented by IP Sphere, 8, cours Maréchal Juin, 33000 Bordeaux, France (professional representative)

a g a i n s t

Domus Capital SA, Rua Bouça dos Estilhadouros 205, 4445-044 Alfena (Porto), Portugal (applicant).

On 11/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 074 741 is upheld for all the contested goods.

2. European Union trade mark application No 17 879 508 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 17 879 508, ‘VODKA NAU’, namely against all the goods in Class 33. The opposition is based on, inter alia, French trade mark registration No 4 277 784 . 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 French trade mark registration No 4 277 784.

a) The goods

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

Class 33: Alcoholic beverages (except beers); wines; wines protected by an appellation of origin; wines protected by a geographical indication.

The contested goods are the following:

Class 33: Distilled beverages; spirits [beverages]; potable spirits; vodka.

The contested distilled beverages; spirits [beverages]; potable spirits; vodka are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

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 are directed at the public at large and at business customers in the fields of catering services, restaurant and bar services, etc. The degree of attention is considered to be average.

c) The signs

	VODKA NAU
Earlier trade mark	Contested sign

The relevant territory is France.

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 figurative mark composed of the verbal element ‘NAUD’, written in fairly standard upper-case letters, and the verbal elements ‘NOBLE AND UNUSUAL DISTILLERY’ underneath it, written in much smaller typeface. There is also a figurative element above the verbal elements, which might be seen by the relevant public as depicting a fanciful tree. The contested sign is the word mark ‘VODKA NAU’.

The word ‘VODKA’ in the contested sign merely indicates the type of goods, namely, a distilled alcoholic beverage obtained from cereals; it is, therefore, non-distinctive in relation to the relevant goods. The word ‘NAU’ does not convey any clear meaning for the public in the relevant territory and has an average degree of distinctiveness. Consequently, the word ‘NAU’ is the only distinctive element in the contested sign.

The verbal element ‘NAUD’ of the earlier mark does not have any meaning from the perspective of the relevant public in the relevant territory. Despite the fact that the element ‘NAUD’ is explained by the laudatory phrase ‘NOBLE AND UNUSUAL DISTILLERY’, it will be seen as meaningless by the relevant consumers, as it cannot be generally assumed that the relevant public in France will understand the meaning of the whole phrase. Although the words ‘NOBLE’ and ‘DISTILLERY’ are the same or very close to the equivalent French words (‘noble’ and ‘distillerie’), the English word ‘UNUSUAL’ is completely different from its French equivalent (‘inhabituel’) and, as it cannot be considered to be a basic English word, it is unlikely that the relevant consumers will understand its meaning. Moreover, taking into account the laudatory nature of the word ‘NOBLE’, the descriptive nature of the word ‘DISTILLERY’ and the clearly secondary position of the phrase ‘NOBLE AND UNUSUAL DISTILLERY’, the verbal elements, regardless of whether all or only some are understood, will be perceived as merely providing information in relation to the goods in question and not as indicating their commercial origin. Therefore, the earlier mark will be referred to by the relevant consumers by its meaningless element ‘NAUD’, which has an average degree of distinctiveness.

The figurative element of the earlier mark does not directly refer or allude to any characteristics of the goods in question; therefore, it has an average degree of distinctiveness. However, account must be taken of the fact that 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). Therefore, despite the higher position of the figurative element, the relevant public is likely to focus its attention on the most distinctive verbal element ‘NAUD’ of the earlier mark.

Visually, the signs coincide in the sequence of letters ‘NAU’, which constitute the entire distinctive element of the contested sign and three out of four letters of the distinctive verbal element ‘NAUD’ of the earlier mark. The signs differ in the last letter ‘D’ of the aforementioned verbal element, the figurative element and the secondary elements ‘NOBLE AND UNUSUAL DISTILLERY’ of the earlier mark, as well as in the non-distinctive word ‘VODKA’ of the contested sign. Although these elements create some perceptible visual differences between the signs, weighing their impact and taking into account their distinctiveness, an at least lower-than-average degree of visual similarity can be established between the marks.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NAU’, present identically in both signs. The pronunciation may differ slightly in the sound of the letter ‘D’ at the end of the verbal element ‘NAUD’ of the earlier mark, if this letter is pronounced by the relevant consumers. Although the earlier mark also contains the phrase ‘NOBLE AND UNUSUAL DISTILLERY’, the relevant public will probably skip it when referring to the earlier mark, on account of its smaller size and clearly secondary role in the overall impression of the mark. The pronunciation also differs in the verbal element ‘VODKA’ of the contested sign which, however, has little impact due to its non-distinctive nature. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by some of the elements of the earlier mark and the contested sign. The most distinctive verbal elements in both marks do not convey any concepts and, to that extent, the conceptual aspect does not influence the assessment of the similarity of the signs. As the meaningful verbal elements are non-distinctive, have a limited degree of distinctiveness or are clearly secondary, they are unable to create any conceptual differences between the signs. However, the figurative element of the earlier mark may be perceived as conveying the abovementioned concept and, taking into account its degree of distinctiveness, it has some effect on the conceptual comparison of the signs, despite its lesser impact as opposed to the verbal element ‘NAUD’ (as explained above). Therefore, the signs are not similar conceptually.

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, despite the presence of some non-distinctive or secondary elements in the mark, as stated above in section c) of this decision.

e) 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/or 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As concluded above, the goods are identical and they target the public at large and the professional public who has an average degree of attention. The degree of distinctiveness of the earlier mark is average.

The signs are visually similar to at least a lower-than-average degree, aurally highly similar and not similar conceptually. The coincidence between the signs lies in the fact that the most distinctive element of the contested sign reproduces almost entirely the most distinctive verbal element of the earlier mark (with the exception of its last letter). Admittedly, there are some clearly perceptible visual and conceptual differences between the earlier mark and the contested sign due to the presence of the figurative element in the earlier mark and the differing verbal elements in both signs. However, their impact from an aural point of view is minimal as both signs will, most likely, be referred to by the relevant consumers in a very similar way (as explained above).

Moreover, it should be borne in mind that the relevant goods, found to be identical, 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.

Therefore, taking into account all the relevant factors, including the identity of the goods, as well as the abovementioned principle of interdependence, it is highly conceivable that the relevant consumers may perceive the contested sign as a simplified version of the earlier mark, designed to designate a particular kind of alcoholic beverage produced by the opponent, and will be led to believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.

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 well founded on the basis of the opponent’s French trade mark registration No 4 277 784. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier French trade mark registration No 4 277 784 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 right 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) EUTMIR, 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

Claudia ATTINÀ

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.