OPPOSITION No B 3 062 884

Fratelli Martini Secondo Luigi S.p.A., Via Ugo Foscolo 8, 20121 Milano, Italy (opponent), represented by Buzzi, Notaro & Antonielli d'Oulx, Corso Vittorio Emanuele II, 6, 10123 Torino, Italy (professional representative)

a g a i n s t

Мементо Ентърпрайз, ул."Димитър Димов" № 11 ет.4 ап.7, 1164 София, Bulgaria (applicant), represented by Antoaneta Milkova Stefanova, 8 Praga bul. fl.4 app.10, 1606 Sofia, Bulgaria (professional representative)

On 09/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 884 is partially upheld, namely for the following contested goods:

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

2. European Union trade mark application No 17 900 924 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 900 924 for the word mark 'CA`NTO', namely against all the goods in Class 33. The opposition is based on international trade mark registration No 1 115 473 designating the European Union for the word mark 'CANTI'. 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.

1. The goods

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

Class 33: Wines and sparkling wines.

The contested goods are the following:

Class 33: Cider; Preparations for making alcoholic beverages; Alcoholic beverages (except beer).

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 alcoholic beverages (except beer) include, as a broader category, the opponent’s wines. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cider is similar to the opponent’s wines since they have a similar nature, the same method of use and are in competition. Furthermore, they target the same relevant public and share the same distribution channels.

As regards the contested preparations for making alcoholic beverages the opponent argues that they are similar to the opponent’s wines and sparkling wines since their scope of use overlap and these goods therefore share the same nature and method of use, are intended for the same public, sold through the same distribution channels and are in competition. However, the contested preparations for making alcoholic beverages are preparations used for producing alcoholic beverages and therefore do not have the same nature or method of use as the opponent’s wines and sparkling wines which are finished alcoholic beverages ready to be consumed. Therefore, these goods are neither in competition nor target the same relevant public and they do not usually share the same distribution channels or originate from the same undertakings. Therefore, contrary to the opponent’s claims, these contested goods must be considered dissimilar 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 or similar are directed at the public at large (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 51).

As regards the degree of attention of the relevant public, the goods in the category of ‘alcoholic beverages’ include goods that are especially expensive and goods that are sold at a relatively low cost, occasionally including in cardboard packaging. However, the examination of the relevant public’s degree of attention cannot be based on either of these extremes but must rather take into account the average consumer who purchases a product of average quality (13/04/2011, T-358/09, Toro de piedra, EU:T:2011:174, § 29). Therefore, the degree of attention is considered to be average.

3. The signs

CANTI	CA`NTO
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 verbal element 'CANTI' of which the earlier mark consists is the plural of the Italian word 'canto' and also a conjugated form of the verb 'cantare' and will therefore have a meaning for the Italian-speaking public. However, for the remaining part of the public in the relevant territory, 'CANTI' will be perceived as a fanciful word without any meaning.

As regards the verbal element 'CA`NTO' of which the contested sign consists, the opponent argues that it will also be perceived by the Italian-speaking public as referring to the word 'canto' or a conjugated form of the verb 'cantare' and that the signs in dispute will therefore be associated with the same concept. However, this is contested by the applicant who claims that since 'ca’' is the short form for the word 'casa' in Italian, the Italian-speaking public will rather associate the initial part of the contested sign with this meaning and therefore be able to easily differentiate between the signs. In this respect, regardless of the possible meanings that may be conveyed by the contested sign to the Italian-speaking public, the verbal element 'CA`NTO' will be perceived as meaningless in other parts of the relevant territory, such as in Sweden, Denmark and Lithuania, where 'ca’' is not a short form for 'casa' (house) and the word 'canto' has no meaning. Moreover, as regards the applicant’s argument that the verbal element 'CA`NTO' is a contraction of the words 'casa memento', consumers will be unaware of the applicant’s intentions to make an acronym out of these two words when creating the mark and there is nothing in the contested sign as applied for that could suggest to the relevant public in parts of the relevant territory, such as in Sweden, Denmark and Lithuania, that the term 'CA`NTO' would consist of these two words, or an acronym of any other words. Therefore, it must be concluded that in parts of the relevant territory, such as in Sweden, Denmark and Lithuania, the relevant public will perceive the contested sign as consisting of the fanciful and meaningless word 'CANTO', simply depicted with an apostrophe between the letters 'AN.'

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the relevant territory where neither of the signs will be perceived as having any meaning, such as in Sweden, Denmark and Lithuania.

Since both 'CANTI' and 'CA`NTO' will be perceived as having no meaning for the part of the public under analysis, these verbal elements are distinctive to a normal degree.

Visually and aurally, irrespective of the different pronunciation rules used by the relevant public under analysis, the signs coincide in the letters/sounds 'CANT*', present identically in both signs, but differ in their respective last letter/sound 'I' as opposed to 'O'. The signs also differ in the additional apostrophe between the letters 'AN' in the contested sign, which will however produce no aural difference and will not have a significant impact on the overall impression produced by the sign.

Therefore, the signs are visually and aurally similar to at least an above average degree.

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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. According to the applicant, the distinctiveness of a mark is not permanent but variable and depends on how the mark is perceived by the relevant circle of customers which can only be assessed if there is evidence of use of the mark. In this respect, the applicant argues that since the opponent did not submit any evidence of use of the earlier mark and has not proven that it is known to the consumer, it is not characterised by any distinctiveness. These arguments of the applicant cannot succeed. Even if the distinctiveness of a mark may be enhanced through its use on the market, or reduced if it has become customary in the current language or established practices of the trade through generic use of the sign by others, the inherent distinctiveness of a mark is not assessed on the basis of its use but rather on its meaning for the relevant consumer and whether or not it is descriptive or otherwise allusive of the characteristics of the goods or services concerned. In the present case, the earlier trade mark has no meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 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.

Account should also be 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).

In the present case, the goods have been found partly identical or similar and partly dissimilar. The degree of attention of the relevant public is average.

The distinctiveness of the earlier mark is normal and the signs are visually and phonetically similar to at least an above average degree. Furthermore, for the part of the public under analysis, there is no conceptual difference between the signs which could help consumers to more easily distinguish between them.

Therefore, taking into account the principles of interdependence and imperfect recollection set out above, in view of the considerable overall similarity between the signs and the identity or similarity between some of the goods, the Opposition Division finds that there is a likelihood of confusion in relation to those goods on the part of the public in the relevant territory where neither of the signs will be perceived as having any meaning, such as in Sweden, Denmark and Lithuania. 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.

The applicant argues that the contested sign is known to consumers and has a high degree of distinctiveness both in Bulgaria and internationally whereas the earlier mark lacks any recognition on the market. Furthermore, the applicant claims that the relevant circle of consumers is different. Therefore, according to the applicant, there is no possibility for consumers to make a link between the two signs in dispute. In this respect, apart from the fact that the applicant did not submit any evidence to support its claims, the right to an EUTM begins on the date when the EUTM is filed and not before, and it is from that date on the EUTM has to be examined in opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Moreover, the examination of the likelihood of confusion which the Opposition Division is called on to carry out is a prospective examination and, for the reasons already set out in section a) of this decision, some of the goods at issue are identical or similar. Therefore, the relevant circle of consumers in relation to those goods cannot in any event be considered to be different in the prospective analysis of the likelihood of confusion between the signs. As a result, these arguments of the applicant cannot change the outcome reached above, namely that there is a likelihood of confusion on a part of the public in the relevant territory in relation to the goods concerned that are identical or similar.

Therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 115 473 designating the European Union. It follows 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 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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

Lena FRANKENBERG GLANTZ

Sam GYLLING

Kieran HENEGHAN

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.