OPPOSITION No B 3 086 429

Caves d'Esclans, 4005 route de Callas, 83920 La Motte, France (opponent), represented by IP Sphere, 8, cours Maréchal Juin, 33000 Bordeaux, France (professional representative)

a g a i n s t

Terra Firma Winery, S.L., Avenida de las Naciones 37, local 6, 28320 Pinto/Madrid, Spain (applicant).

On 30/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 429 is upheld for all the contested goods.

2. European Union trade mark application No 18 034 320 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 18 034 320 for the word mark ‘Domaine du coq’. The opposition is based on, inter alia, French trade mark registration No 4 425 207 for the word mark ‘COQ’. 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 4 425 207.

a) The goods

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

Class 33: Wines.

The contested goods are the following:

Class 33: Wine.

Wine is identically contained in both lists of goods (including singular/plural).

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.

The degree of attention is considered to be average.

c) The signs

COQ	Domaine du coq
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 element ‘COQ’ included in both signs is the French word for ‘rooster’, which has no direct meaning in relation to the relevant goods for the relevant public and is, therefore, distinctive.

The element ‘Domaine du’ of the contested sign will be understood as ‘estate of’ by the relevant public. Bearing in mind that the relevant goods are ‘wine’, this element is weak, at best, for these goods, since it denotes the place of cultivation and production of wine as ‘estate’ means ‘a large piece of landed property’. The Opposition Division therefore agrees with the opponent’s claim that said element will not attract the consumer’s attention because it is commonly used in the field of alcoholic beverages to indicate origin (02/12/2015, T-414/13, KENZO ESTATE, ECLI:EU:T:2015:923, § 33, confirmed by 30/05/2018, C-85/16P, ECLI:EU:C:2018:349; 16/09/2009, T-458/07, Dominio de la Vega, EU:T:2009:337,§ 50).

Visually and aurally, the signs coincide in ‘COQ’, which is normally distinctive. However, they differ in ‘domaine du’ of the contested sign, which is weak at best.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to a rooster, the signs are conceptually highly similar. The additional concept in the contested sign merely reinforces the main distinctive concept, as it refers to an estate of a rooster.

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, apart from an unsubstantiated claim that the distinctiveness per se of the earlier trade mark must be considered to be ‘strong’.

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.

e) Global assessment, other arguments and conclusion

In the present case, the goods are identical and target the general public with an average degree of attention.

The signs are visually and aurally similar above average and conceptually highly similar, due to the complete reproduction in the contested sign of the earlier mark’s only element ‘COQ’, which is normally distinctive in relation to the goods at issue. The mere addition of the weak at best element ‘domaine du’ is not sufficient to dispel a likelihood of confusion.

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). This is particularly applicable in the present case, where the goods are identical.

Moreover, 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 undertaking or economically linked undertakings.

In the present case, 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 public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 425 207. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier French trade mark registration No 4 425 207 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, 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

Tzvetelina IANTCHEVA

Valeria ANCHINI

Meglena BENOVA

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.