BERENGAR ORGANIC | Decision 2800798
Date Published: Sep 22, 2017
OPPOSITION No B 2 800 798
Treasury Wine Estates Americas Company, 610 Airpark Road, Napa, California 94558, United States of America (opponent), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative)
a g a i n s t
Explotaciones Hermanos Delgado, S.L., Calle Villarrobledo, 37, 13630 Socuellamos (Ciudad Real), Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative).
On 19/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 800 798 is partially upheld, namely for the following contested goods and services:
Class 33: Organic wine.
Class 35: Advertising, retailing and wholesaling via global computer networks of organic wine.
2. European Union trade mark application No 15 599 871 is rejected for all the above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 599 871 for the figurative mark , namely against all the goods and services in Classes 33 and 35. The opposition is based on, inter alia, European Union trade mark registration No 2 128 700 for the word mark ‘BERINGER BLASS’. 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 2 128 700 for the word mark ‘BERINGER BLASS’.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 33: Wines.
Class 35: Advertising, marketing and promotional services relating to alcoholic and non-alcoholic beverages and wine; wholesale and retail services relating to the sale, distribution and marketing of alcoholic and non-alcoholic beverages; direct marketing and direct selling services in relation to the supply of alcoholic and non-alcoholic beverages including by mail order and by electronic means; promotion services including arranging exhibitions and tasting events in respect of wines; the bringing together, for the benefit of others, of alcoholic and non-alcoholic beverages and wine, enabling customers to conveniently view and purchase those goods.
The contested goods and services are the following:
Class 33: Organic wine.
Class 35: Advertising, retailing and wholesaling via global computer networks of organic wine; Import and export of organic wine.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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.
Contested goods in Class 33
The contested organic wine is included in the broader category of the opponent’s wines. Therefore, they are identical.
Contested services in Class 35
The contested advertising via global computer networks of organic wine is included in the broader category of the opponent’s advertising services relating to alcoholic beverages and wine. Therefore, these services are identical.
The contested retailing and wholesaling via global computer networks of organic wine overlap with the opponent’s wholesale and retail services relating to the sale, distribution and marketing of alcoholic beverages. Therefore, these services are identical.
The contested import and export of organic wine are dissimilar to the opponent’s wines. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods either; they are preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question is the same is not a relevant factor for finding a similarity.
The contested import and export of organic wine are also dissimilar to the opponent’s services in Class 35.
As explained above, import and export services are not considered to be sales services, such as the opponent’s wholesale and retail services relating to the sale, distribution and marketing of alcoholic and non-alcoholic beverages; direct selling services in relation to the supply of alcoholic and non-alcoholic beverages including by mail order and by electronic means; the bringing together, for the benefit of others, of alcoholic and non-alcoholic beverages and wine, enabling customers to conveniently view and purchase those goods.
Furthermore, import and export services cannot be considered similar to the opponent’s advertising, marketing and promotional services relating to alcoholic and non-alcoholic beverages and wine; direct marketing services in relation to the supply of alcoholic and non-alcoholic beverages including by mail order and by electronic means; promotion services including arranging exhibitions and tasting events in respect of wines either. The nature, purpose and relevant public of these services are dissimilar, as well as their providers and methods of use. They are further not complementary, and are not in competition.
- 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, a part of the goods and services found to be identical and covered by both marks are directed at the public at large, while a part of the services, especially those related to advertising, are, in principle, directed at the professional public.
The degree of attentiveness may vary from average to high, depending on the price, specialised nature, and on the terms and conditions of the purchased goods and services.
- The signs
BERINGER BLASS | |
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 word elements constituting the earlier mark, ‘BERINGER’ and ‘BLASS’ do not have any meaning relating to the goods and services concerned, therefore they are both distinctive. Although the word element ‘BLASS’ may sound familiar to the English-speaking part of the public, it may only be perceived as an archaic word referring to a glowing flame of fire. This meaning cannot be associated with the goods and services at issue. Furthermore, since this is an archaic word, it is highly unlikely that consumers will be aware of its meaning. None of the word elements in the earlier mark is more distinctive or dominant than the other.
The word element ‘BERENGAR’ of the contested mark has no meaning for the relevant public, and is, therefore, distinctive.
The word element ‘ORGANIC’ in the contested sign is an internationally recognised word for ‘methods of farming and food production that use no or only a small number of artificial chemicals and methods’, or, in a broader sense, something that is ‘connected with, produced by, or obtained from living things’ (information extracted from Macmillan Dictionary on 06/09/2017 at http://www.macmillandictionary.com/dictionary/american/organic). As the English word ‘ORGANIC’ is very similar to its equivalents in many languages, for example to the Spanish word ‘orgánico’, the French word ‘organique’ or to the German word ‘organisch’, and since it has become widely used in relation to foodstuff and drinks, this element is weak in relation to organic wine in Class 33 and advertising, retailing and wholesaling via global computer networks of organic wine in Class 35, as it informs the public about the nature of the goods, that is, that they are organically farmed, or, for example, grown using fertilisers or pesticides deriving from animal or vegetable matter. Consequently, the relevant public will not pay as much attention to this element as to the other, more distinctive word element of the mark. As a result, the impact of this element is limited when assessing the similarity between the marks.
The figurative element of the contested sign depicts a castle with a vineyard in front of it, which is a rather weak element with respect to the relevant goods and services. Wine has been traditionally produced at vineyards on the countryside, and a castle in the background will be seen as referring simply to its good qualities or origin in general, such as in the case of the widely used word ‘chateau’ meaning ‘castle’ for French wines, indicating its traditional origins. In addition, due to the frequent use of the graphic depiction of this concept (a castle with a vineyard) on wine-labels, consumers have become used to seeing it and even tend to perceive it as a rather decorative element.
Moreover, 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).
Further, 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 and from top to bottom, which makes the part placed at the left and on top of the sign (the initial part) the one that first catches the attention of the reader.
None of the above described elements of the contested sign is more dominant than the other.
Visually, the signs coincide in the letter sequence ‘BER*NG*R’ of the most distinctive element of the contested mark and the first verbal element of the earlier mark. On the other hand, they differ in the fourth and seventh letter of this word element ‘BERINGER’/’BERENGAR’, in the second verbal element of the marks, ‘BLASS’ of the earlier mark and ‘ORGANIC’ of the contested sign, and in the figurative elements of the contested sign.
Bearing in mind that the most distinctive element of the contested sign is the word element ‘BERENGAR’, which shares six identical letters with the first word element of the earlier mark in the same positions, the signs are considered similar to a lower than average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters BER*NG*R, present identically in both signs. The pronunciation differs in the sound of their fourth and seventh letters ‘I-E’ and ‘E-A’, and further in the sound of the word ‘BLASS’ of the earlier mark and of the word element ‘ORGANIC’ of the contested sign.
Having regard to the fact that the word element ‘ORGANIC’ of the contested sign is a weak element and that the figurative elements of the contested sign will not be pronounced, the signs are aurally similar to an average degree from an aural point of view.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. Considering the concepts conveyed by the weak elements of the contested sign and the (rather unlikely) association with a meaning in the earlier mark, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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).
In the present case, a part of the relevant goods and services are identical, while the remaining contested services are dissimilar. The earlier mark has an average degree of distinctiveness, and the attention of the relevant public varies from average to high.
The signs at issue are similar to a lower than average degree visually, while they are similar to an average degree from an aural point of view. However, the marks are not similar conceptually.
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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Indeed, due to the almost identical word elements ‘BERINGER’-‘BERENGAR’, where the latter is the most distinctive word element of the contested sign, it is conceivable that the relevant consumer will confuse the signs, the differences in two letters going largely unnoticed by consumers.
In addition, as stated above, the higher similarity of the goods and services may outbalance a lower similarity between the signs. In the present case, regarding the goods and services found to be identical, even professional consumers displaying a higher level of attentiveness might confuse the signs with each other.
Considering all the above, with regard to the goods and services found to be identical, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 2 128 700 for the word mark ‘BERINGER BLASS’.
The rest of the contested services, namely import and export of organic wine in Class 35 are dissimilar to the opponent’s goods and services covered by the earlier mark examined above. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
The opponent has also based its opposition on European Union trade mark registration No 2 553 097 for the word mark BERINGER, European Union trade mark registration No 2 519 155 for the word mark BERINGER FOUNDERS ESTATE and on European Union trade mark registration No 2 567 857 for the word mark BERINGER VINEYARDS. However, these marks cover alcoholic beverages (except beers) in Class 33, and they do not cover any services at all, and these goods are clearly dissimilar to the remaining contested services applying the same reasoning as in the comparison with the opponent’s wines in Class 33, namely that the fact that the subject matter of the import/export services and the goods in question are the same is not a relevant factor for finding a similarity. Furthermore, these services are not complementary to the contested goods, they are aimed at a different public, and are produced/provided by different producers/service providers. Therefore, the outcome cannot be different with respect to the services for which the opposition has already been rejected, regardless of the perception of the signs, since this cannot overcome the dissimilarity of the goods and services as compared above.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Denitza STOYANOVA-VALCHANOVA | Alexandra APOSTOLAKIS | Lucinda CARNEY |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.