PALOMA DE PLATA | Decision 854/2016-4
Date Published: Sep 28, 2017
THE BOARDS OF APPEAL
DECISION of the Fourth Board of Appeal of 8 March 2017
In Case R 854/2016-4
V&F, S.L. C/ Cambados, 9c 28050 Madrid Spain Applicant / Appellant represented by ARCADE & ASOCIADOS, C/ Isabel Colbrand, 6 - 5a planta, 28050 Madrid, Spain
v
BORCO-Marken-Import Matthiesen GmbH & Co. KG Winsbergring 12-22 22525 Hamburg Germany Opponent / Respondent represented by HARMSEN UTESCHER, Neuer Wall 80, 20354 Hamburg, Germany
APPEAL relating to Opposition Proceedings No B 2 272 659 (European Union trade mark application No 11 940 343)
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairperson), S. Martin (Rapporteur) and C. Bartos (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
08/03/2017, R 854/2016-4, PALOMA DE PLATA (fig.) / PALOMA et al.
Decision
Summary of the facts
1 By an application filed on 28 June 2013, the appellant sought to register the
figurative mark in the colours grey and black
2
for goods and service in Classes 32, 33 and 35.
2 On 12 November 2013, the respondent filed an opposition against the registration of the trade mark for all the goods applied for. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR. The opposition was based on the following earlier rights:
– European Union trade mark No 10 322 832 (‘earlier mark’)
PALOMA
filed on 7 October 2011 and registered on 11 February 2016 for
Class 32 - Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.
– European Union trade mark No 10 481 646
SIERRA PALOMA
filed on 9 December 2011 and registered on 30 May 2012 for
Class 33 - Alcoholic mixed beverages made using tequila (other than using anise).
3 By decision of 9 March 2016 (‘the contested decision’), the Opposition Division
upheld the opposition in part, namely for the following contested goods:
08/03/2017, R 854/2016-4, PALOMA DE PLATA (fig.) / PALOMA et al.
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Class 32 - Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages; Lithia water; Seltzer water; Waters [beverages]; Table waters; Aerated water; Preparations for making aerated water; Mineral water [beverages]; Preparations for making mineral water; Aperitifs, non-alcoholic; Whey beverages; Aloe vera drinks, non-alcoholic; Non-alcoholic fruit juice beverages; Powders for effervescing beverages; Isotonic beverages; Preparations for making beverages; Non-alcoholic beverages; Non-alcoholic honey-based beverages; Beers; Beer wort; Cider, non-alcoholic; Cocktails, non-alcoholic; Essences for making beverages; Non-alcoholic fruit extracts; Orgeat; Ginger ale; Fruit juice; Vegetable juices [beverages]; Kvass [non- alcoholic beverage]; Milk of almonds [beverage]; Peanut milk [non-alcoholic beverage]; Preparations for making liqueurs; Smoothies; Lemonades; Syrups for lemonade; Extracts of hops for making beer; Malt beer; Malt wort; Must; Fruit nectars, non-alcoholic; Pastilles for effervescing beverages; Soda water; Syrups for beverages; Sorbets [beverages]; Tomato juice [beverage]; Grape must, unfermented; Sarsaparilla [non-alcoholic beverage];
Class 33 - Alcoholic beverages (except beers); Hydromel [mead]; Piquette; Rice alcohol; Bitters; Anise [liqueur]; Anisette [liqueur]; Aperitifs; Arak [arrack]; Alcoholic beverages, except beer; Pre-mixed alcoholic beverages, other than beer-based; Alcoholic beverages containing fruit; Distilled beverages; Spirits [beverages]; Brandy; Cocktails; Curacao; Digesters [liqueurs and spirits]; Alcoholic essences; Alcoholic extracts; Fruit extracts, alcoholic; Gin; Kirsch; Liqueurs; Peppermint liqueurs; Nira [sugarcane-based alcoholic beverage]; Perry; Rum; Sake; Cider; Wine; Vodka; Whisky;
Class 35 - Retailing or wholesaling of all kinds of alcoholic and non-alcoholic beverages, spirits, juices, mineral waters and other non-alcoholic beverages.
4 The Opposition Division found a likelihood of confusion for the above part of the contested goods and services due to the similarity between the conflicting goods and services and the visual and aural similarities between the conflicting signs. In particular, the Opposition Division reasoned that the figurative element of the contested mark was its visually dominant element by virtue of its central position and size, but it did not completely overshadow the verbal elements and hence there was still visual similarity to an average degree to the earlier mark due to the common verbal element ‘PALOMA’. Said common verbal element also gave rise to an aural similarity between the conflicting marks since the figurative elements would not be pronounced. Conceptually, the conflicting marks were highly similar for the Spanish-speaking public, since both referred to the same bird, a dove.
Submissions and arguments of the parties
5 On 9 May 2016, the applicant filed an appeal against the contested decision, followed by the statement of grounds. The appellant requests that the decision be annulled and the opposition rejected in its entirety on the ground that the signs are visually dissimilar due to the figurative element of the dove dominating the visual impression of the contested mark. The signs are also aurally dissimilar due to the additional verbal element ‘de plata’ of the contested mark. That additional verbal element leads to a conceptual difference with the earlier mark. In the absence of a similarity between the conflicting signs, a likelihood of confusion does not exist.
6 In reply, the respondent endorses the Opposition Division’s analysis, and requests that the appeal be dismissed and the appellant ordered to bear the costs.
08/03/2017, R 854/2016-4, PALOMA DE PLATA (fig.) / PALOMA et al.
Reasons
7 The appeal is not well founded. The opposition succeeds as a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR exists for the goods and services which are the subject of the appeal.
Article 8(1)(b) EUTMR
8 According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
9 Since the earlier mark is a European Union trade mark, the relevant territory for analysing the likelihood of confusion is that of the European Union. The assessment of the likelihood of confusion is based on the Spanish-speaking part of the relevant public.
10 The goods and services relate to everyday products, namely alcoholic and non- alcoholic beverages, and target the public at large. The public’s level of attention will be average.
11 As correctly reasoned by the Opposition Division, the conflicting goods and services are partly identical and partly similar to various degrees. This reasoning was not contested by the appellant and is endorsed by the Board with explicit reference being made to it.
Comparison of the signs
12 The following signs are to be compared:
Contested mark Earlier mark
4
PALOMA
08/03/2017, R 854/2016-4, PALOMA DE PLATA (fig.) / PALOMA et al.
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13 The assessment of the visual, phonetic 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; 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).
14 The contested mark is a figurative mark consisting of a drawing of a dove above the words ‘Paloma de plata’ written in black stylized letters, the entire arrangement is set on a square grey background The earlier mark is the word mark ‘PALOMA’.
15 Visually, the contested mark is dominated by the drawing of the dove due to its size in relation to the smaller letters of the verbal element ‘Paloma de plata’. However, the verbal element is clearly visible and the black stylized letters are obviously intended to make a visual impression. The initial part ‘Paloma’ of the verbal element is identical to the earlier mark. In fact, the entire earlier mark is incorporated in the contested mark. Furthermore, for the Spanish-speaking consumer, the figurative element depicting a dove reinforces the verbal element ‘Paloma’ which in Spanish means a dove. Therefore, despite the size of the figurative element, the conflicting signs are similar at least to a low degree.
16 Aurally, the figurative elements have no impact on the pronunciation. Given the identity between the earlier mark and the initial part of the verbal element of the contested mark, the Board finds the conflicting signs to be aurally similar to more than an average degree.
17 Conceptually, for the Spanish-speaking public the signs refer to the same concept, namely a dove which translates into ‘paloma’ in Spanish. The figurative and verbal elements of the contested sign both point to the same bird, leaving no doubt what is meant. The addition of the words ‘de plata’ (‘of silver’ in English) does not change the meaning since obviously ‘de plata’ means the colour of the dove as depicted in the drawing but not another type of bird. Therefore, the Board finds the conflicting signs to be conceptually identical.
Global assessment of a likelihood of confusion
18 According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).
19 For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).
08/03/2017, R 854/2016-4, PALOMA DE PLATA (fig.) / PALOMA et al.
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20 As regards the figurative element, the Board recalls that 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; 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).
21 The Board also recalls that the goods in question are often ordered orally and that therefore particular importance must be attached to the above average aural similarity of the conflicting signs (15/01/2003, T-99/01, Mystery, EU:T:2003:7, §48).
22 The degree of inherent distinctive character of the earlier mark is average.
Increased distinctive character has not been claimed.
23 In view of the above average aural similarity and the conceptual identity of the conflicting signs, despite the low visual similarity, and the relevant consumer’s average level of attentiveness, given the earlier mark’s normal degree of distinctiveness, the Board agrees with the Opposition Division’s finding of a likelihood of confusion on the part of the relevant public for the goods and services subject to the appeal, even for the goods and services with a lower than average degree of similarity.
24 The appeal is dismissed and the contested decision confirmed.
Costs
25 As the appellant is the losing party within the meaning of Article 85(1) EUTMR, it must be ordered to bear the costs of the appeal proceedings. The Opposition Division correctly decided that each party must bear its own costs in respect of the opposition proceedings.
Fixing of costs
26 Pursuant to Article 85(6) EUTMR and the last sentence of Rule 94(3) CTMIR, the appellant is ordered to reimburse the respondent with the costs of representation in the amount established by Rule 94(7)(d) CTMIR, i.e. EUR 550 in respect of the appeal proceedings.
08/03/2017, R 854/2016-4, PALOMA DE PLATA (fig.) / PALOMA et al.
Order
On those grounds,
THE BOARD
hereby:
1. Dismisses the appeal;
2. Orders the appellant to bear the costs in the appeal proceedings;
3. Fixes the total amount of costs to be paid by the appellant to the
respondent at EUR 550.
Signed
D. Schennen
Signed
S. Martin
Signed
C. Bartos
Registrar:
Signed
H.Dijkema
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08/03/2017, R 854/2016-4, PALOMA DE PLATA (fig.) / PALOMA et al.