MARVEL | Decision 2781568

Date Published: Sep 24, 2017

OPPOSITION No B 2 781 568

Chernomorsko Zlato AD, Promishlena zona, 8200 Pomorie, Bulgaria (opponent), represented by Vasil Pavlov Pavlov, 1, Stefan Stambolov Blvd., floor 1, 1303 Sofia, Bulgaria (professional representative)

a g a i n s t

Yi Ping Su, Room 602, No. 847, Hexiang West Road, Siming District, Xiamen City, Fujian Province, People’s Republic of China (applicant), represented by
Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Rumania (professional representative)

On 22/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 781 568 is upheld for all the contested goods.

2.        European Union trade mark application No 15 581 531 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 15 581 531 . The opposition is based on, inter alia, Bulgarian trade mark registration No 90 826 ‘VILLA MARVELLA’ (word mark)

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 Bulgarian trade mark registration No 90 826 ‘VILLA MARVELLA’ (word mark).

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 33: Alcoholic beverages (except beer); bitters; alcoholic energy drinks; alcoholic extracts; fruit extracts, alcoholic; alcoholic essences; fruit (alcoholic beverages containing -); anise [liqueur]; anisette [liqueur]; aperitifs; arrack [arak]; alcopops; brandy; vermouth; wine; white wine; grape wine; cooking wine; mulled wines; sparkling wines; fortified wines; red wine; low-alcoholic wine; kirsch; vodka; bitter liqueurs; distilled beverages; gin; digesters [liqueurs and spirits]; cachaca; cocktails; perry; curacao; liqueurs; whisky based liqueurs; cream liqueurs; mead [hydromel]; peppermint liqueurs; beverages containing wine [spritzers]; low alcoholic drinks; rice alcohol; piquette; fruit extracts [containing alcohol]; fruit (alcoholic beverages containing -); wine punch; rum punch; pre-mixed alcoholic beverages, other than beer-based; rum; cider; sake; sangria [alcoholic]; spirits [beverages]; whisky; malt whisky; scotch whisky; blended whisky; fermented spirit; sherry; rakia.

The contested goods are the following:

Class 33: Fruit extracts, alcoholic; distilled beverages; cider; cocktails; wine; spirits [beverages]; brandy; piquette; whisky; vodka.

The contested goods in Class 33 listed in the previous paragraph are identically included in the opponent’s list of goods.

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 are directed at the public at large, and the attention paid by consumers during the purchase of those goods is deemed to be average.

3. The signs

VILLA MARVELLA
Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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).

Regarding the concept and distinctiveness of the elements in the contested sign, the word ‘MARVEL’ is perceived as an invented term with no particular concept, and therefore as of average distinctive character. The Asian characters accompanying it are perceived as meaningless. The opponent argues that the Asian characters have little or no distinctive character. However, the Opposition Division notes that, since they are neither descriptive nor allusive of the characteristics of the goods and do not constitute commonplace or banal elements, their distinctiveness is average.

Therefore, the contested mark has no elements more distinctive than others.

Regarding the concept and distinctiveness of the elements in the earlier mark, the word ‘VILLA’ does not exist as such in Bulgarian. However, Bulgarian consumers will attribute it the concept of the Bulgarian word ‘вила’, transliterated in Latin characters as ‘vila’, meaning a large home or estate in the country. The reasons for such association are the highly similar spelling of ‘villa’ and the Latin transliteration referred to ‘vila’, and the identical pronunciation between ‘вила’/‘vila’ and ‘villa’. The word ‘MARVELLA’ in the earlier mark is perceived as an invented term with no particular concept, and therefore as of average distinctive character.

The word ‘Villa’ followed by by the name of a place or of a person is a structure used often in the names of wines and alcoholic beverages in general. In this context, the word ‘Villa’ is likely to be perceived as a reference to ‘castle’, ‘vineyard’ or similar, while it is the word(s) after it which fill focus the attention of the consumers, as an indication of the specific place or owner, whose product is branded with the respective mark (30/06/2015, T-489/13, VIÑA ALBERDI / VILLA ALBERTI, EU:T:2015:446, § 62 and 74).

Moreover, it is settled case-law that wines and other alcoholic beverages are often given names consisting of a term referring to a place or to its owner, which element is perceived as indicating the origin of the product concerned (16/12/2008, T-259/06, MANSO DE VELASCO, ECLI:EU:T:2008:575, § 64). Accordingly, ‘Villa’ in the earlier mark has a lower than normal degree of distinctiveness than the following word, ‘MARVELLA’, which will be perceived as indicating the origin of the goods.

Therefore, the most distinctive element in the earlier mark is ‘MARVELLA’.

Contrary to the opponent’s arguments, the signs have no elements more dominant (visually eye-catching) than others. The earlier mark is a word mark, and word marks have no dominant elements because by definition they are written in standard typeface. The length of the words or the number of letters is not an issue of dominance but of overall impression. The contested sign is formed by several elements, however, none of them stands out by its position, size, dimensions and/or the use of colours, which could affect its visual impact.

Although the Asian characters in the contested sign are likely to be understood by consumers as being the representation of words or letters, they are perceived as meaningless, and these elements will be paid the same kind of attention as if they were meaningless figurative components (i.e. as random combinations of small lines, in two groups).

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).

According to the above, despite the fact that the contested mark has no element more distinctive or dominant (visually eye-catching) than others, the impact of the verbal element ‘MARVEL’ in the contested mark will be stronger than the one caused by the Asian characters.

The opponent argues that the signs coincide in their beginnings. However, reading takes place from left to right, the earlier mark being ‘VILLA MARVELLA’, and the contested mark being ‘MARVEL’. Therefore, the signs do not coincide in their beginnings (i.e. ‘VILLA’ vs. ‘MARVEL’).

Visually, the signs coincide in the sequence of letters ‘M-A-R-V-E-L’, forming a significant part of the most distinctive element in the earlier mark (i.e. ‘MARVELLA’), and constituting the entire verbal element of the contested mark, (i.e. ‘MARVEL’).

According to the above, and to the reduced weight that the elements with less than average distinctive character and/or less visual impact have for consumers trying to identify the commercial origin of the marks (such as the element ‘Villa’ in the earlier sign and the Asian characters in the contested one), it is considered that the marks are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘M-A-R-V-E-L’, present identically in both signs.

They differ in the sound of the differing element ‘VILLA’ and in the ending ‘-LA’ of the word ‘MARVELLA’. It is to be noted also that doubled consonants are not typical for the Bulgarian language and it is therefore likely that part of the consumers pronounce the double ‘L’ in ‘MARVELLA’ as a single letter ‘L’. In such case, the most distinctive element in the earlier sign and the single word element of the contested one will differ only in one sound (ending letter ‘a’), i.e. ‘M-A-R-V-E-L-A’ versus ‘M-A-R-V-E-L’.

For all of the above, and taking into account the reduced weight that the element of less than average distinctive character has for consumers, it is considered that the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark will be associated with the concept of ‘VILLA’ (i.e. ‘вила’/‘vila’) referred to above. The contested mark is associated with the concept of the Asian characters, despite their specific meaning not being understood.

As the signs will be associated with a dissimilar meaning, 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, despite the presence of an element of lower than average distinctive character in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods involved are identical and target at the average consumers showing an average degree of attention.

The signs are visually and aurally similar to at least an average degree, and not conceptually similar. The earlier mark has a normal degree of distinctiveness.

As explained in section c) above, the signs coincide in a sequence of letters that constitutes the entire and only verbal element of the contested mark, ‘MARVEL’, and the beginning of the most distinctive word in the earlier mark ‘MARVELLA’, of which it constitutes a significant part.

Moreover, it is settled-case law that consumers of alcoholic beverages attach particular importance to the origin of the products, which generally makes it possible to assess the qualities of the product under consideration (16/09/2009, T-458/07, DOMINIO DE LA VEGA, ECLI:EU:T:2009:337, § 51). Upon taking into account the above-mentioned pattern of forming name of such product, it is obvious that consumers will attach greater importance to ‘MARVELLA’ in the earlier sign.

As explained above, the goods applied for are mass consumption goods, and the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. According to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this, consumers might believe that the identical goods come from the same or economically-linked undertakings.

Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity of the goods involved, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same or economically-liked undertakings.

In this case, the signs have been considered to be of at least average aural similarity, and the goods involved are alcoholic drinks.

In this regard, 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.

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 Bulgarian trade mark registration No 90 826 ‘VILLA MARVELLA’. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Bulgarian trade mark registration No 90 826 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 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

Teodora TSENOVA-PETROVA

María del Carmen SUCH SANCHEZ

Vít MAHELKA

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.