rosabella | Decision 2770538
Date Published: Sep 25, 2017
OPPOSITION No B 2 770 538
Miguel Torres S.A., Miquel Torres i Carbó, 6, 08720 Vilafranca del Penedès (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
G.D. Vajra di Vaira Aldo, Via Delle Viole 25, 12060 Barolo, Italy (applicant).
On 03/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 770 538 is upheld for all the contested goods.
2. European Union trade mark application No 15 521 388 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 15 521 388. The opposition is based on international trade mark registration No 1 295 994 designating Czech Republic, Ireland, Lithuania, Austria, Latvia, United Kingdom, Italy, Estonia, Benelux, Slovenia, Sweden, Portugal, Romania, Bulgaria, Slovakia, Denmark, Poland, Hungary, Greece, Croatia, Germany, Finland and France. 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 international registration designating a number of EU member states. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 295 994 designating Germany, Latvia and Poland.
- The goods
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages, except beers; wines, liqueurs, spirits, bandy.
The contested goods are the following:
Class 33: Wine.
Wine is identically contained in both lists of goods.
- 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. The degree of attention is considered to be average.
- The signs
ROSELLA | |
Earlier trade mark | Contested sign |
The relevant territories are Germany, Latvia and Poland.
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 is a single word mark consisting of the word ‘ROSELLA’.
The contested sign is a figurative mark consisting of the word ‘ROSABELLA’ depicted in fairly standard lower case letters.
The words ‘ROSELLA’ and ‘ROSABELLA’ will be associated with female given names by the relevant public, derived as a diminutive or a variation from the same root, ‘Rose’, and since they do not describe or allude to any of the characteristics of the goods, they are distinctive.
It follows that the signs are conceptually highly similar.
Visually and aurally, the signs coincide in the sequence of the letters/sounds ‘ROS*ELLA’. They differ in additional two letters/sounds ‘AB’ of the contested sign which have no counterparts in the earlier mark. However, it has to be noted that the additional letters/sounds appear in the middle of the word element ‘ROSABELLA’ and, therefore, will be less noticeable to the consumer who normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1007, C-251/95, ‘Sabel’, EU:C:1997:528, §23). Taking this into account, the signs are visually and aurally similar to a high degree.
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 the goods in question from the perspective of the public in the relevant territories. 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 case at hand, the goods were found identical. The earlier mark enjoys a normal degree of distinctiveness. Account must also be 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). Therefore, the difference of two letters/sounds in the middle, less noticeable part of the contested sign is not sufficient to outweigh the high degree of visual, aural and conceptual similarity.
Considering all the above, there is a likelihood of confusion on the part of the public in the relevant territories.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 295 994 designating Germany, Latvia and Poland. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier international trade mark registration No 1 295 994 designating Germany, Latvia and Poland 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 international trade mark registration No 1 295 994 designating other EU member states 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
Solveiga BIEZA | Arkadiusz GORNY | Ana MUÑÍZ RODRÍGUEZ |
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.