LEPIERE | Decision 2769464
Date Published: Sep 25, 2017
OPPOSITION No B 2 769 464
Unideco S.A., Gran Via Corts Catalanes, 644, 08007 Barcelona, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)
a g a i n s t
Cantine Riondo S.P.A., Via Cappuccini, 6, 37032 Monteforte d'Alpone, Italy (applicant).
On 12/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 769 464 is upheld for all the contested goods.
2. European Union trade mark application No 15 511 991 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 15 511 991. The opposition is based on, inter alia, international trade mark registration No 272 839 designating, inter alia, the Czech Republic, Slovakia and Slovenia. 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 international trade mark registration No 272 839 designating, inter alia, the Czech Republic, Slovakia and Slovenia.
- The goods
The goods on which the opposition is based are the following:
Class 33: Sparkling wines.
The contested goods are the following:
Class 33: Wine; white wine; red wine; grape wine; beverages containing wine [spritzers]; wine-based aperitifs; prepared wine cocktails; alcoholic beverages (except beer); preparations for making alcoholic beverages; pre-mixed alcoholic beverages; aperitifs; low alcoholic drinks; alcoholic carbonated beverages, except beer; cocktails; alcoholic beverages of fruit; alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; alcopops; alcoholic fruit cocktail drinks; prepared alcoholic cocktails; alcoholic cocktail mixes; sparkling wines; aperitifs with a distilled alcoholic liquor base; wine-based drinks; piquette; low-alcoholic wine; wines of protected appellation of origin; wines of protected geographical indication; sparkling grape wine; cooking wine; table wines; fruit wine; sparkling fruit wine; sweet wines; still wine; natural sparkling wines; rose wines.
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.
Sparkling wines are identically contained in both lists of goods.
The contested wine; alcoholic beverages (except beer); low alcoholic drinks; alcoholic carbonated beverages, except beer; white wine; red wine; grape wine; piquette (a type of sour alcoholic drink; esp. (in later use) wine made from the second pressing of the marc); low-alcoholic wine; wines of protected appellation of origin; wines of protected geographical indication; cooking wine; table wines; fruit wine; sweet wines; rose wines; aperitifs include, as broader categories, or overlap with, the opponent’s sparkling wines. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested sparkling grape wine; sparkling fruit wine; natural sparkling wines are included in the broad category of the opponent’s sparkling wines. Therefore, they are identical.
The contested still wine is highly similar to the opponent’s sparkling wines, as both categories of goods refer to types of wine, which have the same purpose, method of use and are usually produced by the same undertakings. These goods are usually distributed through the same channels of trade to the same relevant public and are offered in the same sections in supermarkets or together on menus in restaurants and bars. Furthermore, they may be in competition.
The contested beverages containing wine [spritzers]; wine-based aperitifs; prepared wine cocktails; pre-mixed alcoholic beverages; cocktails; pre-mixed alcoholic beverages, other than beer-based; alcopops; alcoholic fruit cocktail drinks; prepared alcoholic cocktails; alcoholic cocktail mixes; wine-based drinks; aperitifs with a distilled alcoholic liquor base; alcoholic beverages of fruit; alcoholic beverages containing fruit are pre-mixed beverages based on wine or other alcoholic drinks, such as liquors. These goods are at least similar to the opponent’s sparkling wines, as they have very similar natures, target the same general public and have the same method of use. They are normally offered through the same channels, such as restaurants and bars, although they can be distinguished to some extent by subcategory, and they may be in competition.
The contested preparations for making alcoholic beverages are similar to a low degree to the opponent’s sparkling wines. The goods under comparison have the same distribution channels, method of use and target the same relevant public.
- 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 and similar to various degrees are directed at the public at large and partly at professionals in the food and beverage provision field. The degree of attention is deemed average.
- The signs
DELAPIERRE | LEPIERE |
Earlier trade mark | Contested sign |
The relevant territories are the Czech Republic, Slovakia and Slovenia.
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).
Both marks are word marks. It cannot be excluded that a part of the public in the relevant territories may recognise the earlier mark ‘DELAPIERRE’ as a surname of French origin, while it will perceive the other sign as meaningless. Nevertheless, another relevant part of the public will not attribute any meaning to the verbal elements, constituting the marks under comparison. In any case, these words are not descriptive or of limited distinctiveness for the relevant goods and are, therefore, of average distinctiveness.
For reasons of procedural economy, the analysis below will focus on the parts of the relevant Czech, Slovak and Slovenian public that do not perceive any meanings in the marks under comparison.
Visually, the signs coincide in the sequence of letters ‘(**)L*PIER(*)E’, present in the same order in both marks. They differ in the additional first two letters ‘DE’ of the earlier mark, in the vowels between the letters ‘L’ and ‘P’, namely ‘A’ in the earlier mark and ‘E’ in the contested sign, as well as in the repeated letter ‘R’ in the earlier mark. Despite the differences in the beginnings of the marks, it should be noted that the second letter in both marks is the same, namely ‘E’.
Therefore, taking into account the fact that the marks have seven letters in common, six of which are present in the same order, it is considered that the marks are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides partly in the second syllable of the earlier mark (‘LA’) and in the first syllable of the contested sign (‘LE’) and in their last syllables ‘PI-E-R(R)E’ and differ in the additional first syllable ‘DE’ of the earlier mark. Although the earlier mark contains an additional letter ‘R’, its aural impact will be hardly perceptible and will only slightly, if at all, modify the aural impressions of the signs.
Therefore, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public 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.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods under comparison are partly identical and partly similar to various degrees. The earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant goods.
The signs are visually and aurally similar to an average degree on account of the letters that they have in common, ‘(**)L*PIER(*)E’. Although the beginning of a sign is generally more important in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity between the signs must take account of the overall impression produced by those signs. In the present case, the coincidence of the marks in seven letters and their respective sounds, six of which are present in the same order, is rather relevant. Account is taken also 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).
Moreover, the marks under comparison will not be associated with any meaning and will be perceived as fanciful words. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.
Consequently, it is considered that the similarities between the signs are sufficient to lead to a likelihood of confusion between the marks on the part of the Czech, Slovak and Slovenian publics which perceive both marks as meaningless and fanciful terms.
This finding is true even for the goods that are similar to only a low degree, since the impact of the differences between the signs is not sufficient to overcome the similarity between them, which outweighs the low degree of similarity between some of the goods.
Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 272 839 designating the Czech Republic, Slovakia and Slovenia. It follows that the contested trade mark must be rejected for all the contested services.
As the above mentioned earlier right 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 designated territories of international trade mark registration No 272 839 and 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 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Benjamin Erik WINSNER | Boyana NAYDENOVA | Frédérique SULPICE |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.