OPPOSITION No B 3 079 998

Naturquell, S.A., Ctra. Nacional 260, Km. 219, 25719 Estamariu (La Quera), Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Consell Regulador de la Denominació D’origen Penedès, Edifici Àgora - Plaça Àgora, 1. Pol. Domenys II, 08720 Vilafranca del Penedès (Barcelona) Spain (applicant), represented by Ponti & Partners S.L.P, C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 998 is upheld for all the contested goods.

2. European Union trade mark application No 18 022 808 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 18 022 808 for the word mark ‘PINNAE’. The opposition is based on European Union trade mark registration No 14 701 916 for the word mark ‘PINEO’. 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, inter alia, the following:

Class 32: Syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Alcoholic beverages (except beer(s)) are identically contained in both lists of goods.

The contested alcoholic preparations for making beverages are similar to the opponent’s other preparations for making beverages in Class 32 as they have the same nature. They usually coincide in their relevant public, distribution channels and methods of use. Both terms are broad categories which, in principle, can be considered similar because of very particular (other) goods within those categories being similar. Preparations for making beverages in Class 32 include, inter alia, non-alcoholic fruit extracts used in the preparation of beverages. Furthermore, alcoholic preparations for making beverages in Class 33 cover, inter alia, fruit extracts, alcoholic. When comparing these very particular goods they are similar in nature, method of use, distribution channels, relevant public and producer.

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. The degree of attention is considered to be average.

3. The signs and the distinctiveness of the earlier mark

PINEO	PINNAE
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 signs under comparison have no meaning for the public in the relevant territory and no arguments to the contrary were submitted by the parties. The verbal element in both signs are not related to the relevant goods and are therefore distinctive.

The same finding applies to the distinctiveness of the earlier mark as a whole since no claim for enhanced distinctiveness through use was submitted by the opponent. Consequently, the distinctiveness of the earlier mark must be seen as normal.

Visually and aurally, the signs coincide in their string of letters and their sound ‘PIN’ at the beginning of the signs and they differ in their endings ‘EO/NAE’.

Therefore, the signs are visually similar to at most an average degree and, since the double consonant ‘NN’ in the contested sign will not influence the pronunciation in most of the EU languages, the signs are aurally similar to an above average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory, as seen above. 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. Global assessment, other arguments and conclusion

The goods found to be identical and similar target the public at large with an average degree of attention. The signs are visually similar to, at most, an average degree and the aural similarity is above average based on the fact that the pronunciation of the single ‘N’ and the double ‘NN’ will be the same in most of the EU languages. Moreover, the signs have no meaning which could help to differentiate them.

The beginning of the signs, which constitutes at least half of the signs, namely ‘PIN’, is identical, and is also the part that consumers will focus on when they encounter the signs in the market. 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. There is no exception to this principle in this case, contrary to the claim by the applicant.

The relevant goods are beverages and, since these are frequently ordered in noisy establishments (e.g. 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.

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). In the present case it is likely that consumers will remember the identical beginnings of the signs when they encounter them in the market and will be less aware of their different endings.

The applicant refers to previous decisions of the Office 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.

The applicant claimed that the fact that the signs in question are rather short is very important and referred to the previous decision (18/02/2005, B 493 884, lotto (fig.) v LOTUS). Although in the case at hand the conflicting signs are five and six characters long, this previous decision dates back to fifteen years ago and is therefore not relevant to the present proceedings. According to the current Office Guidelines, the length of signs may influence the effect of the differences between them. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements. In contrast, the public is usually less aware of differences between longer signs. However, each case must be judged on its own merits, having regard to all the relevant factors. The Courts have not defined exactly what a short sign is. However, signs with three or less letters/numbers are considered by the Office to be short signs. Moreover, as already explained in section c), the current case-law emphasises that in word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, TRUBION/TriBion Harmonis (fig.), EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). Therefore, the Opposition Division cannot follow the same approach as in the previous case referred to.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

The same finding applies to the previous decision (02/06/2004, B 399 297, ASIANE v ARIANE), cited by the applicant. This decision is very outdated. The same holds true for the other cited cases (18/10/2006, B 822 678, INFOR (fig.) v W WINFOR; 29/07/2005, B 678 054, ÉPRIS (fig.) v (trade mark without text)).

The remaining cases referred to by the applicant, (19/09/2012, B 1 852 170, blinky v BLINK; 19/09/2011, B 1 612 863, LESON (fig.) v.Lescon (fig.)) are irrelevant to the present proceedings. Although the applicant referred to the abovementioned signs as word marks, they are in fact all figurative marks with additional fanciful figurative elements which differentiate them, as correctly stated by the opponent:

and .

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 701 916. It follows that the contested trade mark must be rejected for all the contested 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.

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

Valeria ANCHINI

Sylvie ALBRECHT

Sofía SACRISTAN MARTÍNEZ

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.