OPPOSITION No B 3 064 418

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

Adega Antiga do Juncal - Sociedade Agrícola Lda, Edifício Sol Jardim, Bloco 1 – Loja 2, Bairro Vila Morena, 2560-619 Torres Vedras, Portugal (applicant), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229 Lisboa, Portugal (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 418 is upheld for all the contested goods.

2. European Union trade mark application No 17 900 023 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 17 900 023 for the word mark ‘BORDÃO DE BRONZE’. The opposition is based on, inter alia, European Union trade mark registration No 11 157 351 for the word mark ‘BORSAO’. 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 11 157 351 for the word mark ‘BORSAO’.

1. The goods

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

Class 33: Wine, spirits and liqueurs.

The contested goods are the following:

Class 33: Wine; Alcoholic beverages (except beer).

Contested goods in Class 33

Wine is identically contained in both lists of goods.

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s spirits and liqueurs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 identical are directed at the public at large.

The applicant argued that the relevant Portuguese consumer displays a higher level of attention in relation to the relevant alcoholic beverages. However, it did not provide any evidence to substantiate this claim. Taking into account that the goods at issue are mass consumption products directed at the public at large, the degree of attention is considered to be average.

3. The signs

BORSAO	BORDÃO DE BRONZE
Earlier trade mark	Contested sign

The earlier European Union trade mark registration No 11 157 351 is protected in the territory of the European Union, which is the relevant territory in the present case (not Portugal, as claimed by the applicant).

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘DE BRONZE’ of the contested sign is a meaningful expression in French and will be perceived as a qualifier of the preceding element ‘BORDÃO’, as explained below in detail. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The earlier mark and the contested sign are both word marks, ‘BORSAO’ and ‘BORDÃO DE BRONZE’, respectively. As word marks, they have no elements that could be considered dominant (eye-catching).

The element ‘BORSAO’ of the earlier mark is meaningless for the analysed public and therefore has a normal degree of distinctiveness.

The element ‘BORDÃO’ of the contested sign is also meaningless and has a normal degree of distinctiveness. The element ‘DE BRONZE’ is a grammatically correct French expression and will be understood by the relevant French-speaking public as ‘made of brass’. As this meaning is not related to the relevant goods it also has a normal degree of distinctiveness.

However, although the words ‘BORDÃO’ and ‘DE BRONZE’ are equally distinctive in the contested sign, the French-speaking consumers will understand the expression ‘DE BRONZE’ as a description, a qualifier of the preceding distinctive and meaningless word ‘BORDÃO’. Hence, they will focus their attention on the first element in the contested sign.

Moreover, 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.

Visually, the signs coincide in the letters ‘BOR*AO’ of the initial verbal element of the contested sign and the only element of the earlier mark.

The signs differ in one letter within these elements, ‘D’ v ‘S’, placed in their middle part, where the difference is not so obvious. They also differ in the tilde above the letter ‘A’ of the contested sign. The signs also differ in the additional verbal elements of the contested sign ‘DE BRONZE’ (made of brass), perceived as a qualifier of the initial element ‘BORDÃO’.

Therefore, the signs are visually similar to an average degree.

Aurally, since the relevant public is not familiar with the use of a tilde and will not modify the pronunciation of the letter ‘A’, the pronunciation of the signs coincides in the sound of the letters ‛BOR*AO’, present identically in both signs, in the initial verbal element of the contested sign and in the only element of the earlier mark. These elements have, moreover, the same number of syllables and the same vowel structure.

The signs differ in the sound of one letter in these elements, ‘D’ v ‘S’, placed in their middle part, where the difference is not so obvious. The signs also differ in the sound of the additional verbal elements of the contested sign ‘DE BRONZE’ (made of brass), perceived as a qualifier of the initial element ‘BORDÃO’.

Therefore, the signs are aurally similar to an above-average degree.

Conceptually, since the earlier mark is meaningless and the contested sign conveys the meaning of the word ‘DE BRONZE’, the signs are conceptually not 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 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 goods are identical. The degree of attention of the relevant public is average. The inherent distinctiveness of the earlier mark is normal and the signs are visually similar to an average degree, aurally similar to an above-average degree and conceptually not similar for the public under analysis, on account of the element ‘DE BRONZE’. However, the meaning of this element merely describes and points to the main element of the contested sign, ‘BORDÃO’, which is conceptually neutral.

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). Taking into account the identity of the goods, this principle is clearly applicable to this case.

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).

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).

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.

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.

Indeed, taking into account the high aural similarities between the independent distinctive elements of the signs, ‘BORSAO’ v ‘BORDÃO’, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 157 351. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 11 157 351 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) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Anna BAKALARZ

Anna ZIÓŁKOWSKA

Christian STEUDTNER

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.