Somerlust | Decision 2679804
Date Published: Sep 28, 2017
OPPOSITION No B 2 679 804
Winzerkeller Sommerach e.G., Zum Katzenkopf 1, 97334 Sommerach am Main, Germany (opponent), represented by Gleimpetri Patent- und Rechtsanwaltskanzlei, Pleichertorstraße 30, 97070 Würzburg, Germany (professional representative)
a g a i n s t
Delta Wines B.V., Exportweg 8, 2742 RC Waddinxveen, The Netherlands (applicant).
On 10/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 679 804 is upheld for all the contested goods.
2. European Union trade mark application No 15 175 854 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 15 175 854. The opposition is based on European Union trade mark registration No 5 834 701. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 32: Beers; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
Class 41: Arranging of wine seminars.
Class 43: Providing of food and drink; temporary accommodation.
The contested goods are the following:
Class 32: Alcohol free wine.
Class 33: Wine; Sparkling wines; White wine; Still wine; Natural sparkling wines; Sparkling white wines; Sparkling red wines; Low-alcoholic wine; Fortified wines; Cooking wine; Red wine; Rose wines; Sweet 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.
Contested goods in Class 32
The contested alcohol free wine and the opponent’s alcoholic beverages (except beers) in Class 33 are often sold side by side both in shops and bars and on drinks menus. These goods target the same public and may be in competition. Therefore, they are similar to a low degree.
Contested goods in Class 33
The contested wine; sparkling wines; white wine; still wine; natural sparkling wines; sparkling white wines; sparkling red wines; low-alcoholic wine; fortified wines; cooking wine; red wine; rose wines; sweet wines are all wines and are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.
- 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 or similar are directed at the public at large.
The degree of attention is considered average.
- The signs
SOMMERLUST | Somerlust |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
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 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, since the verbal elements of the signs have clear meanings in various languages – as they include, for example, the components ‘lust’, which has the same meaning in German as in English, and ‘sommer’, which means ‘summer’ in German and Danish and ‘to add up’ in French – the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and Portuguese-speaking parts of the relevant public, for which none of the word elements have a meaning.
Both signs are word marks and are composed of the same verbal elements, the only difference being that the earlier sign contains a double letter ‘m’ while the contested sign is spelt with one letter ‘m’. The verbal elements of both signs lack any meaning in the relevant territory; these elements are therefore distinctive in relation to the goods in question.
Visually, the signs differ only in one letter, namely the additional letter ‘m’ in the middle of the earlier sign. Since both marks are registered as word marks, the case of the letters actually used is immaterial. Therefore, the signs are highly similar visually.
Aurally, the pronunciation of the signs coincides in the syllables [lust], present identically in both signs, while it differs somewhat with regard to their first parts; [SOM’MER] in the earlier sign will be pronounced with a slightly longer sound than [SO’MER] in the contested sign. The signs are composed of the same number of syllables, which makes their length and intonation identical. Therefore, the signs are highly similar aurally.
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
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).
The signs are highly similar visually and aurally, and the goods are identical or similar to a low degree. The difference between the signs is confined to a single letter in the middle of the earlier sign that may easily go unnoticed.
Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Portuguese-speaking parts of the public. 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. In the present case, the high degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the goods. Consequently, even in relation to these goods, there is a likelihood of confusion.
Therefore, the opposition is well founded on the basis of the opponent’s mark, and the contested trade mark must be rejected for all the contested goods.
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
Marianna KONDÁS | Ferenc GAZDA | Solveiga BIEZA |
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.