Espíritu Santo | Decision 2642240

Date Published: Sep 22, 2017

OPPOSITION No B 2 642 240

Casa Santos Lima - Companhia Das Vinhas, S.A., Quinta Da Boavista, 2580-081 Aldeia Galega da Merceana, Portugal (opponent), represented by Furtado - Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisbon, Portugal (professional representative)

a g a i n s t

Château de Calvieres, 164, Place de la République, 30220 Saint-Laurent-d’Aigouze, France (applicant), represented by Duclos, Thorne, Mollet-Vieville et associés, 164, rue du Faubourg Saint-Honoré, 75008 Paris, France (professional representative).

On 05/09/2017, the Opposition Division takes the following        

DECISION:

1.        Opposition No B 2 642 240 is partially upheld, namely for the following contested goods and services:

Class 33: Alcoholic beverages (except beers); cider; digesters (liqueurs and spirits); wine; spirits [beverages].

Class 35:        Trading of wines; retailing of wine, alcoholic beverages (except beers); wholesaling of wine, alcoholic beverages (except beers), consultancy and organisation with regard to the trading of wines.

2.        European Union trade mark application No 14 585 541 is rejected for all the above goods and services. 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 14 585 541, , namely against some of the goods and services in Classes 21 and 35, and all the goods in Class 33. The opposition is based on the following earlier marks:

• Portuguese trade mark registration No 441 883 for the word mark ‘ESPÍRITO SANTO’;
• Portuguese trade mark registration No 376 314 for the word mark ‘QUINTA DO ESPÍRITO SANTO’.

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of Portuguese trade mark registrations No 441 883 for the word mark ‘ESPÍRITO SANTO’ and No 376 314 for the word mark ‘QUINTA DO ESPÍRITO SANTO’.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 26/10/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Portugal from 26/10/2010 to 25/10/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Portuguese trade mark registration No 441 883 for the word mark ‘ESPÍRITO SANTO’

Class 33:        Wines; brandies.

Portuguese trade mark registration No 376 314 for the word mark ‘QUINTA DO ESPÍRITO SANTO’

Class 33:        Wines.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 26/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 01/12/2016 to submit evidence of use of the earlier trade marks. On 30/11/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

General:

• A brochure describing the history of the opponent’s business. According to the information that can be extracted from the document, it is dated 2015.
• Images of bottles of wine displaying ‘QUINTA DO ESPÍRITO SANTO 2014’.

For 2010:

• About 20 invoices, all for the Portuguese market. The invoices show the sale of wine under the mark ‘Quinta do Espírito Santo’. Some invoices are dated before the relevant timeframe.
• A document entitled ‘Os melhores 285 Vinhos 2010’ (‘The best 285 wines 2010’), in which a bottle of wine bearing the mark ‘QUINTA DO ESPÍRITO SANTO’ is visible.

For 2011:

• About 30 invoices, all for the Portuguese market. All the invoices show the sale of wine under the mark ‘Quinta do Espírito Santo’.
• Images of the front and back labels, as well as images of bottles of ‘Quinta do Espírito Santo reserve 2011’.
• Technical sheets for two different wines sold under the brand ‘Quinta do Espírito Santo’ and the awards that each has won.
• A press article mentioning the wine and some related awards.

For 2012:

• More than 35 invoices, all for the Portuguese market. All the invoices show the sale of wine under the mark ‘Quinta do Espírito Santo’.
• Images of the bottles and labels. The mark is barely visible in some of the images.
• A press article in which ‘Quinta do Espírito Santo 2010’ is mentioned.

For 2013:

• More than 15 invoices, all for the Portuguese market. All the invoices show the sale of wine under the mark ‘Qta do Espírito Santo’.
• Images of labels with the following signs:  and .
• Images of bottles of wine with labels containing either the element ‘ESPÍRITO SANTO’ or ‘QUINTA DO ESPÍRITO SANTO’.
• Award certificates for the wine ‘QUINTA DO ESPÍRITO SANTO’.

For 2014:

• About 15 invoices, all for the Portuguese market. All the invoices show the sale of wine under the mark ‘Qta do Espírito Santo’, ‘Qta Espirito Santo’ or ‘ESPIRÍTO SANTO’.
• Images of labels with the following signs ,
• Images of bottles of wine with the sign ‘QUINTA DO ESPÍRITO SANTO’.
• Award certificates for the wine ‘QUINTA DO ESPÍRITO SANTO’.

For 2015:

• More than 15 invoices, all for the Portuguese market. All the invoices show the sale of wine under the mark ‘Qta Espirito Santo’, ‘QTA ESPIR.SANTO’ or ‘Espirito Santo’.
• Award certificates for the wine ‘ESPIRITO SANTO’.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, invoices or packaging, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

Place of use

The invoices show that the place of use is Portugal. Therefore, the evidence relates to the relevant territory.

Time of use

Almost all of the evidence is dated within the relevant period, except a few invoices that are dated before it. Therefore, there are sufficient indications as regards the time of use of the earlier marks.

Extent of use

In assessing the extent of the use of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

The documents listed above, in particular the invoices and the award certificates, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices demonstrate sales and they also encompass a continuous period of five years.

Most of the invoices are issued to the same customer. Nevertheless, despite the applicant’s arguments, use of the mark by a single client, which imports the products for which the mark is registered, can be sufficient to demonstrate that such use is genuine if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 24 et seq.). Genuine use is not excluded only because the use has been made with the same customer, as long as the trade mark is used publicly and outwardly and not solely within the undertaking which owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 50; 08/10/2014, T-300/12, Fairglobe, EU:T:2014:864, § 36).

Moreover, the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 36 to 38, and the case-law cited therein).

Therefore, even though the volume of sales included in the invoices is not particularly impressive, it is offset by the continuous use during the period.

The applicant argued that the invoices should be disregarded as the numbers of invoices mentioned in the lists of evidence differed from the number of invoices actually submitted. Nevertheless, this argument is immaterial, inasmuch as more invoices were submitted than in the lists of evidence.

Furthermore, the fact that some invoices have been submitted several times does not rule out the fact that, taken as a whole, the invoices show that bottles of wine labelled ‘(QUINTA DO) ESPIRITO SANTO’ were sold continuously for a five-year period.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier signs are used in such a way as to establish a clear link between the goods (wine) and the opponent, as on all of the invoices submitted the name of the opponent is clearly indicated, as well as the marks under which the wine is invoiced. In the photos submitted, the signs, especially ‘QUINTA DO ESPÍRITO SANTO’, are clearly visible on the bottles of wines, on the labels, etc. The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1), second subparagraph, point (a), ‘is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign is actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade’ (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

A finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added and/or omitted elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 31 and the case-law cited).

With regard to omissions in the mark when used, if the omitted element is in an accessory position in the presentation of the sign and not distinctive, the omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37). The same applies to additions to the mark as used.

Having regard to the aforesaid considerations, to decide whether or not the form of the mark as used constitutes use of the form of the mark as registered, the Opposition Division will have to establish if the possible differing elements between the marks as used and registered are negligible.

In the present case, the earlier marks are registered as follows (word marks):

• QUINTA DO ESPÍRITO SANTO;
• ESPÍRITO SANTO.

The word ‘QUINTA’ is the Portuguese word for ‘farm’. Therefore, in relation to the opponent’s goods, this element is non-distinctive. The same conclusion can apply to the word ‘DO’, which means ‘of’. Taken as a whole, ‘QUINTA DO’ is therefore non-distinctive and its omission or its addition is irrelevant in the present assessment.

Likewise, the presence of ‘Qta’ on some invoices is also irrelevant, because it will be immediately perceived by the relevant public as being the abbreviation for ‘quinta’.

It follows that the use of the sign ‘QUINTA DO ESPIRITO SANTO’, ‘ESPIRITO SANTO’ or even ‘Qta Espirito Santo’ constitutes use of the marks as registered or in a form essentially the same as that registered and, therefore, constitutes use of the mark under Article 15 EUTMR.

The same reasoning applies to the labels. Word marks are considered to be used as registered regardless of typeface, use of upper/lower case or colour. Therefore, the depiction of the marks on the labels constitutes use of the mark under Article 15 EUTMR.

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

Portuguese trade mark registration No 441 883 is registered for wines; brandies in Class 33, while Portuguese trade mark registration No 376 314 is registered for wines in Class 33.

The evidence submitted by the opponent does not contain any reference to brandies.

Therefore, in the present case the evidence shows genuine use of the trade marks for the following goods:

Class 33: Wines.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 Portuguese trade mark registration No 441 883 for the word mark ‘ESPÍRITO SANTO’.

1. The goods and services

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

Class 33:        Wines.

The contested goods and services are the following:

Class 21:        Bottles; accessories for bars and conditioning wine, and devices for serving wine, namely, spouts, bottles, drinking glasses, decanters, pitchers, pitchers, ice buckets, corkscrews, electric and non-electric; bottles; drinking glasses; wine glasses; brandy snifters; wine glasses; decanters; cooling devices for bottled beverages, namely ice buckets, champagne buckets, coolers for wine, portable coolers and parts and fittings therefor; thermally insulated jackets and containers for bottles; buckets including wine buckets and parts and fittings therefor; wine racks; anti-drip collars for bottle necks (drip stoppers); corkscrews, electric and non-electric; combination corkscrews (incorporating a bottle opener); devices for extracting corks from bottles; devices for removing protective foils from bottle corks, namely bottle openers.

Class 33:        Alcoholic beverages (except beers); cider; digesters (liqueurs and spirits); wine; spirits [beverages]; alcoholic extracts or essences.

Class 35:        Advertising; business management; business administration; direct mail advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; dissemination of advertising matter; trading of wines and spirits (beverages); public relations services; retailing of wine, accessories for conditioning wine, alcoholic beverages (except beers), ciders, digesters (liqueurs and spirits), spirits (beverages), alcoholic extracts or essences; wholesaling of wine, accessories for conditioning wine, alcoholic beverages (except beers), ciders, digesters (liqueurs and spirits), spirits (beverages), alcoholic extracts or essences; consultancy and organisation with regard to the trading of wines and spirits (beverages).

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 21

The contested bottles; accessories for bars and conditioning wine, and devices for serving wine, namely, spouts, bottles, drinking glasses, decanters, pitchers, pitchers, ice buckets, corkscrews, electric and non-electric; bottles; drinking glasses; wine glasses; brandy snifters; wine glasses; decanters; cooling devices for bottled beverages, namely ice buckets, champagne buckets, coolers for wine, portable coolers and parts and fittings therefor; thermally insulated jackets and containers for bottles; buckets including wine buckets and parts and fittings therefor; wine racks; anti-drip collars for bottle necks (drip stoppers); corkscrews, electric and non-electric; combination corkscrews (incorporating a bottle opener); devices for extracting corks from bottles; devices for removing protective foils from bottle corks, namely bottle openers are dissimilar to the opponent’s wines in Class 33.

Of course, the opponent’s wines and some of the contested goods, for instance devices for serving wine, wine glasses, are complementary because one is important for the use of the other. However, these goods do not have the same nature, method of use and purpose. They do not have the same usual origin or distribution channels (07/05/2009, C-398/07 P, Waterford Stellenbosch, EU:C:2009:288, § 35).

Contested goods in Class 33

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

Wine(s) are identically contained in both lists of goods.

The contested cider; digesters (liqueurs and spirits); spirits [beverages] are similar to the opponent’s wines, to the extent that the goods have the same nature and method of use. They are in competition and they have the same relevant public. Furthermore, they are often found side by side in the same outlets.

The remaining contested goods, alcoholic extracts or essences, are dissimilar to the opponent’s wines. While these goods may be consumed in the same places and on the same occasions and may satisfy the same need (albeit only after the contested goods are mixed), for example enjoyment of a drink as an aperitif, the fact remains that they do not belong to the same family of alcoholic beverages and that the consumer will perceive them as two distinct products. The goods are not normally displayed on the same shelves in the areas of supermarkets and other outlets selling drinks. Furthermore, the producers are also different.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested trading of wines; retailing of wine, alcoholic beverages (except beers); wholesaling of wine alcoholic beverages (except beers) are similar to a low degree to the opponent’s wines in Class 33.

The contested consultancy and organisation with regard to the trading of wines are similar to a low degree to the opponent’s wines in Class 33. These contested services are intended to help the trade of wines. Therefore, these services are complementary, and are likely to be provided/manufactured by the same companies.

The remaining services in Class 35 are dissimilar to the opponent’s goods in Class 33.

The remaining contested services of trading, retailing, wholesaling in relation to spirits, accessories for conditioning wine, digesters, alcoholic extracts or essences, ciders and the opponent’s wines in Class 33 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity.

Business management services are intended to help in the management of the business affairs or commercial functions of an industrial or commercial enterprise.

Business administration services are rendered by persons or organisations principally with the object of helping in the working or management of a commercial undertaking, or in the management of the business affairs or commercial functions of an industrial or commercial enterprise.

Therefore, the contested advertising; business management; business administration; direct mail advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; dissemination of advertising matter; trading of spirits (beverages); public relations services; retailing of accessories for conditioning wine, ciders, digesters (liqueurs and spirits), spirits (beverages), alcoholic extracts or essences; wholesaling of accessories for conditioning wine, ciders, digesters (liqueurs and spirits), spirits (beverages), alcoholic extracts or essences; consultancy and organisation with regard to the trading of spirits (beverages) and the opponent’s wines in Class 33 are dissimilar.

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 and services found to be identical or similar to various degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the field of wine.

The degree of attention will be average for the vast majority of the goods and services, and slightly enhanced for consultancy and organisation with regard to the trading of wines in Class 35.

3. The signs

ESPÍRITO SANTO
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 earlier mark consists of the word mark ‘ESPÍRITO SANTO’. It will be understood either as meaning ‘the Holy Spirit’, namely, in the Christian Church, God in the form of a spirit (information extracted from Cambridge dictionary, on 29/08/2017, at http://dictionary.cambridge.org/dictionary/english-portuguese/the-holy-spirit?q=holy+spirit) and/or as a reference to a famous Portuguese family named Espírito Santo (see, for instance, https://www.ft.com/content/a63a4a56-32c0-11e4-93c6-00144feabdc0), to which belongs the famous Portuguese bank called ‘Espirito Santo’, and/or as the name of one of the states of south-eastern Brazil.

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.

In the present case, the relevant public perceiving a reference to the aforementioned Brazilian region could tend to think that the earlier mark mainly indicates the geographical provenance of the goods and, to that extent, the distinctive character of the mark could be weak. Nonetheless, the Opposition Division considers that a substantial part of the relevant public, if not the majority, is not aware of this fact and will perceive the earlier mark not in this sense, but only in the other previously mentioned senses. Therefore, for reasons of procedural economy, the Opposition Division finds it appropriate to focus on the considerable part of the public that will not perceive any reference to the Brazilian region in the earlier mark.

For that part of the public, the signs are meaningless in relation to the goods and services and, to that extent, they have an average degree of distinctive character.

The contested sign is a figurative mark consisting of a figurative element depicting a devil at the top and the words ‘Espíritu Santo’ at the bottom. The devil has two wings, two horns and a long tail and is holding a trident. ‘Espíritu Santo’ is depicted in lower case, except the initial letters of both words, ‘E’ and ‘S’, which are in red upper case characters in stylised calligraphy.

When a mark is composed of verbal and figurative components, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

‘Espíritu Santo’, despite the misspelling, will also be perceived by the relevant public as referring to the Holy Spirit. The religious aspect being enhanced by the depiction of the devil, the Opposition Division considers it very unlikely that the public under analysis will perceive a reference to the famous Portuguese family.

The figurative and verbal elements are meaningless in relation to the goods and services at issue, so they have an average level of distinctiveness in relation to these goods and services.

The contested sign has no element that can be considered more dominant than any other.

Visually, the signs coincide in 12 out of their 13 letters. They differ in the last letter of their first word, ‘U’ in the contested sign and ‘O’ in the earlier mark. They also differ in the contested sign’s particular typeface and additional figurative element.

However, some differences should not be overestimated. First, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42). Therefore, the fact that one mark is in upper case and the other in title case is irrelevant.

Moreover, account should be taken of the fact that, in general, word elements are more significant to consumers than figurative elements.

Given the above, the marks are visually similar to, at least, an average degree.

Aurally, both signs will be pronounced ‘Shpí-ri-tu San-tu’, because in Portuguese the letter ‘O’ is pronounced ‘u’ if it is the last letter of the word.

Therefore, they are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will perceive the earlier mark as referring to the Holy Spirit, the marks are conceptually highly similar, because of the identical concept conveyed by the verbal element and the additional figurative element of the devil in the contested sign.

For the part of the public that will perceive the earlier mark as referring to the famous Portuguese family, the signs will be associated with dissimilar meanings. Therefore, for this part of the public, 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.

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

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, the conflicting signs are visually similar to, at least, an average degree and aurally identical. They are, for part of the public, conceptually similar to a high degree, and not conceptually similar for the remaining part of the public.

The opponent’s goods and services are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods.

As regards the goods found to be identical or similar to an average degree, 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 (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

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. Therefore, the fact that the signs are aurally identical plays a major role in the present assessment.

As regards the contested services found to be similar to a low degree to the opponent’s goods, it has to be recalled that assessment entails a degree of interdependence between the factors. Therefore, the fact that the signs are visually similar to at least an average degree and aurally identical is sufficient to outweigh the lower degree of similarity between the goods and services.

Moreover, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the substantial part of the Portuguese public under analysis and, therefore, the opposition is partly well-founded on the basis of the opponent’s Portuguese trade mark registration No 441 883. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. 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 goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

Portuguese trade mark registration No 376 314 for the word mark ‘QUINTA DO ESPÍRITO SANTO’, for wines in Class 33.

Since this mark covers the same scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothee SCHLIEPHAKE

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.