TERREO | Decision 2661612

Date Published: Sep 25, 2017

OPPOSITION No B 2 661 612

Bodega Mustiguillo, S.A., Crta N. 330 km 195, 46300 Utiel, Spain (opponent), represented by Alesci Naranjo Propiedad Industrial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professional representative)

a g a i n s t

Vinovalie, Zone d’Activité les Xansos, 81600 Brens, France (applicant), represented by Jerome Ferrando, 14 rue de la République, 34000 Montpellier, France (professional representative).

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 612 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 718 969. The opposition is based on, inter alia, European Union trade mark No 2 854 511 and Spanish trade mark registration No 2 209 038. 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 European Union trade mark No 2 854 511 and Spanish trade mark registration No 2 209 038.

1. The goods and services

The goods and services on which the opposition is based are the following:

European Union trade mark No 2 854 511 (earlier mark 1)

Class 33:        Wine, alcoholic drinks, sparklin, spiritous and champagne.

Class 35:        Retail sale services in store of wine, alcoholic drinks, sparklin, spirituous and champagne; import and export service related to these goods.

Class 39:        Distribution, storage and transport of wine, alcoholic drinks, sparklin, spirituous and champagne.

Spanish trade mark registration No 2 209 038 (earlier mark 2)

Class 33:        Wines and spirituous.

The contested goods are the following:

Class 33:        Wine; wines with the protected geographical indication ‘Comté Tolosan’, other than alcohol used as an ingredient in alcoholic beverages.

Wine (including in the plural form) is identically contained in the list of goods of the contested sign and in the lists of goods and services of earlier marks 1 and 2.

The contested wines with the protected geographical indication ‘Comté Tolosan’, other than alcohol used as an ingredient in alcoholic beverages are included in the broad category of the opponent’s wine(s). Therefore, they are identical.

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. The degree of attention is considered average.

3. The signs

Earlier mark 1 el terrerazo Earlier mark 2 (Earlier mark 1 and earlier mark 2 are collectively referred to as ‘the earlier marks’)
Earlier trade marks	Contested sign

The relevant territories are the European Union for earlier mark 1 and Spain for earlier mark 2.

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).

Earlier mark 1 is a figurative mark consisting of the words ‘FINCA TERRERAZO’, depicted in red upper case letters, and a figurative element resembling a drawing of a house, in the same red colour, above the word ‘TERRERAZO’. The Spanish-speaking part of the public will perceive the word ‘FINCA’ as meaning ‘country house, country estate, ranch’ (information extracted from Collins Dictionary on 26/06/2017 at https://www.collinsdictionary.com). Bearing in mind that the relevant goods are wines, which can be produced and sold in farm wineries, this element is weak in relation to these goods for this part of the public, as it will be perceived as a mere indication of the estate where the goods are produced. For the remaining part of the public, such as the Bulgarian-, Czech-, English-, Swedish- and Lithuanian-speaking parts of the public, the word ‘FINCA’ will be meaningless and its distinctiveness is normal.

The word ‘TERRERAZO’ is a geographical indication, referring to the geographical area of wine production (protected designation of origin (PDO) ‘El Terrerazo’, Article 107 of Regulation (EU) No 1308/2013), and at least part of the public in the relevant territories will be aware of it. Therefore, this part of the public will perceive ‘TERRERAZO’ as referring to the geographical origin of the goods. For the remaining part of the public, this word will be meaningless and, therefore, distinctive.

The figurative element of earlier mark 1 is likely to be perceived as an image of an old rural house. Bearing in mind that the relevant goods are wines and that use of images depicting farm houses is not unusual on wine labels, this element is considered weak, since it will be perceived by the relevant public (e.g. by the Spanish-speaking public) as an illustration reinforcing the meaning of the word ‘FINCA’.

Having regard to the fact 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, the verbal element ‘FINCA TERRERAZO’ will be attributed the most trade mark significance in earlier mark 1 by the relevant consumers.

Earlier mark 2 is a word mark, ‘el terrerazo’. ‘El’ will be understood by the relevant Spanish-speaking consumers as a definite article. The word ‘terrerazo’ will be perceived as indicated above. The distinctiveness of ‘el terrerazo’ will be low for the part of the public that perceives it as referring to a geographical indication and average for the remaining part of the public.

The contested sign is a figurative mark consisting of the word ‘TERREO’ written in slightly stylised black upper case letters. It could be perceived by, for example, the Italian-speaking part of the public as meaning ‘wan’ (information extracted from Collins Dictionary on 26/06/2017 at https://www.collinsdictionary.com) or by part of the Spanish-speaking public as ‘land, ground, terrain’, due to its similarity to the Spanish word ‘terreno’ (information extracted from Collins Dictionary on 26/06/2017 at https://www.collinsdictionary.com). For the remaining part of the public (e.g. the Bulgarian-, Czech-, English-, Swedish- and Lithuanian-speaking parts of the public), this word will be meaningless. In any case, the distinctiveness of the word ‘TERREO’ is normal, since it does not directly describe or allude to any characteristics of the relevant goods in a manner that could affect its distinctiveness in a material way.

Considering the possible perceptions of the marks under comparison indicated above, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the Spanish-speaking public that perceives the word ‘TERRERAZO’ in the earlier marks as meaningless and, therefore, distinctive. This part of the relevant public would be more likely to confuse the signs, in view of the coincidence in the letters ‘TERRE’, and this scenario therefore constitutes the opponent’s best-case scenario.

In its observations, the opponent claims that the earlier marks and the contested sign will all be associated with the same meaning (i.e. ‘land’) by the relevant Spanish-speaking consumers due to the coinciding element ‘TERRE’. While it is true that average consumers may break the word down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57), in the present case, the word ‘TERRERAZO’ in the earlier marks does not constitute a meaningful combination. Even though the contested sign, ‘TERREO’, might be perceived as alluding to the meaning indicated above, there is nothing to suggest that the relevant consumers will artificially break the word ‘TERRERAZO’ down into the elements ‘TERRE’ and ‘RAZO’, since neither of these elements has any clear meaning. Therefore, the Opposition Division considers that the word ‘TERRERAZO’ will be perceived as a whole, that is, as a single meaningless word, by the Spanish-speaking part of the public.

None of the marks under comparison has any elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, earlier mark 1 and the contested sign are similar to the extent that they coincide in the sequence of letters ‘TERRE***O’. However, they differ in all other aspects. Earlier mark 1 is composed of a figurative element and two verbal elements, ‘FINCA TERRERAZO’, of 14 letters in total and is more than twice as long as the contested sign, ‘TERREO’, which consists of 6 letters.

The opponent emphasises the similarity between the contested sign, ‘TERREO’, and the element ‘TERRERAZO’ of earlier mark 1. However, when assessing the similarity between two marks, the overall similarity must be taken into account, not just the similarity between the contested sign and one of the elements of the earlier mark. Even though the word ‘FINCA’ and the figurative element of earlier mark 1 have a lower degree of distinctiveness than the element ‘TERRERAZO’, considering their size and position they play an independent role in the overall visual composition of the mark and will be noticed by the relevant consumers. Moreover, since all three elements of the mark are in the same colour and form a single unique composition, it is reasonable to assume that earlier mark 1 will be perceived as a whole, taking into account all its elements.

Earlier mark 2 and the contested sign coincide in the sequence of letters ‘TERRE***O’. However, they differ in their lengths (earlier mark 2 consists of 11 letters, whereas the contested sign consists of 6), and in the first word, ‘el’, and the letters ‘raz’ in the word ‘terrerazo’ of earlier mark 2.

Although the contested sign, ‘TERREO’, is almost fully reproduced in the word ‘TERRERAZO’ of the earlier marks and their last letters, ‘O’, coincide, the additional three letters, ‘RAZ’, in the word ‘TERRERAZO’ are quite striking and create significant visual differences between the earlier marks and the contested sign, ‘TERREO’.

Considering all the above, the visual impressions created by earlier mark 1 and earlier mark 2 have clearly perceptible differences from that created by the contested sign. Therefore, earlier mark 1 and the contested sign are considered visually similar to a lower than average degree, and earlier mark 2 and the contested sign are considered visually similar to at least an average degree.

Aurally, the pronunciation of the earlier marks and the contested sign coincides in the sound of the letters /TERRE/ and the last letter /O/. The pronunciation differs in the sound of the letters /FINCA/ of earlier mark 1, the sound of the letters /EL/ of earlier mark 2 and the sound of the letters /RAZ/ of both earlier marks, which have no counterparts in the contested sign. The figurative element in earlier mark 1 is not subject to a phonetic assessment, since it will not be referred to orally by the relevant public.

The pronunciation coincides in the first two syllables, /TE-RRE/, of the contested sign, ‘TERREO’, and the word ‘TERRERAZO’ of the earlier marks. However, whereas the contested sign will be pronounced in three syllables, /TE-RRE-O/, the word ‘TERRERAZO’ of the earlier marks will be pronounced in four syllables, /TE-RRE-RA-ZO/, two of which, namely /RA-ZO/, due to their clearly distinguishable sounds /R/ and /Z/, will create clearly perceptible aural differences between the earlier marks and the contested sign. These differences give the marks different phonetic structures and stress patterns. Moreover, the repetition of the letter ‘R’ in the word ‘TERRERAZO’ creates the two sounds /ER-ER/ in the middle of the word, which is quite distinctive and gives this word a striking character, since such repetition is not common in Spanish. In addition, the sound of the preceding words, namely /FIN-CA/ of earlier mark 1 and /EL/ of earlier mark 2, are further phonetic differences between the earlier marks and the contested sign. Even considering the weight attributed to these elements, they will still be pronounced by the relevant consumers. Therefore, earlier mark 1 will be pronounced in six syllables, /FIN-CA-TE-RRE-RA-ZO/, and earlier mark 2 will be pronounced in five syllables, /EL-TE-RRE-RA-ZO/, and, therefore, the earlier marks will have different rhythms and intonations from the contested sign, pronounced as /TE-RRE-O/.

Considering all the above, earlier mark 1 and the contested sign are considered aurally similar to a low degree, and earlier mark 2 and the contested sign are considered aurally similar to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the word ‘FINCA’ and the figurative element of earlier mark 1.

Therefore, for the part of the public that will not associate the contested sign, ‘TERREO’, with any meaning, the signs are not conceptually similar. The same applies to the part of the public that may associate the contested sign with the meaning indicated above, since the signs will convey different meanings.

Since earlier mark 2 does not convey any concept, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs for the part of the public that does not perceive any meaning in the contested sign. For the part of the public that may associate the contested sign, ‘TERREO’, with the abovementioned 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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no clear meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some weak elements in earlier mark 1 as stated above in section c) of this decision.

5. 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/or 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).

As concluded above, the contested goods are identical to the opponent’s goods and they target the public at large with an average degree of attention. The degree of distinctiveness of the earlier marks is average.

The earlier marks and the contested sign are similar insofar as they have the letters ‘TERRE’ and the letter ‘O’ in common, which constitute all the letters of the contested sign and are the first five letters and the last letter of the distinctive element of the earlier marks. Visually, the contested sign is similar to a lower than average degree to earlier mark 1 and to at least an average degree to earlier mark 2. Aurally, the contested sign is similar to a low degree to earlier mark 1 and to a lower than average degree to earlier mark 2. Conceptually, the contested sign is not similar to earlier mark 1. The same applies to earlier mark 2, except for the part of the public for which the conceptual aspect does not influence the assessment of the similarity between the signs.

According to settled case-law, 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, the aural similarity between the signs is particularly relevant to the assessment of likelihood of confusion in the present case.

Considering the striking phonetic differences in the pronunciation of the earlier marks, as described in section c), which clearly distinguish them from the much shorter contested sign, as well as their visual differences and the fact that the signs under comparison do not have a conceptual link that would lead the public to associate them with each other, it can be concluded that the differences between the marks are clearly perceptible and counteract the similarities that arise from the fact that the marks have the sequence of letters indicated above in common.

Consequently, it can be concluded that, despite the similarities between the marks under comparison, the differences between them are sufficiently striking and will avoid a likelihood of confusion, including a likelihood of association, among the relevant public, even taking into account the public’s average degree of attention and the identity between the goods.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

The opponent refers to previous decisions of the Office to support its arguments, namely 30/11/2015, B 2 490 384, TIERRA DE ORO / ORO DI TERRA; 15/10/2015, B 2 430 430, TERRUNYO / TERRUÑO; 16/07/2014, B 2 251 422, TERRASOLA / terra solis; 23/01/2015, B 2 330 952, TERRAI / TERRA TERRAE; and 31/036/2014, B 2 103 441, TERRA DE RAIMAT / TERRA. However, in all these cases either the signs under comparison are of the same length or similar lengths or they consist of or contain identical and/or clearly perceptible meaningful words. Therefore, the opposition decisions cited by the opponent are not considered comparable to the present case and are not relevant to the present proceedings.

For the sake of completeness, the Opposition Division points out that there is no need to proceed further to a comparison of the signs for the part of the public that will perceive the meaning of the word ‘TERRERAZO’ in the earlier marks, since the outcome of the present decision would not be different. Indeed, if there is no likelihood of confusion for those consumers that do not perceive any meaning in the word ‘TERRERAZO’ in the earlier marks, a fortiori there is no likelihood of confusion for those consumers who will perceive it as having the abovementioned meaning, since, first, it will create additional conceptual differences between the earlier marks and the contested sign; and, second, the relevant consumers will perceive it as a geographical indication and the distinctiveness of this element will be very low. Since a lower degree of distinctiveness and/or the perception of a possible concept in the earlier marks are factors that would make a likelihood of confusion even less likely, the outcome of the present decision would not be different.

Following a similar line of reasoning, the Opposition Division finds it unnecessary to proceed further to a comparison of earlier mark 1 and the contested sign for the part of the public within the European Union that will not perceive any meaning in any of the verbal elements of earlier mark 1. For this part of the public, the word ‘FINCA’ will be of normal distinctiveness and, considering its position in the mark, will be the first element to attract consumers’ attention. Since a higher degree of distinctiveness of the element that has nothing in common with the contested mark will further increase the differences between earlier mark 1 and the contested sign, the outcome of the present decision would not be different.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 8 398 992 for the figurative mark .

However, this earlier right invoked by the opponent is less similar to the contested mark. This is because it contains a clearly dominant figurative element and the word ‘maestis’, which are not present in the contested trade mark. Moreover, the element ‘TERRERAZO’, due to its size and position, is not noticeable at first sight and/or is barely perceptible among the other elements of this complex sign and, therefore, is likely to be disregarded by the relevant public. In addition, the mark covers the same goods that have already been found identical to the goods of the contested sign. Therefore, the outcome cannot be different and no likelihood of confusion exists with respect to this earlier mark.

Given that the opposition is not well founded under Article 8(1)(b) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lena FRANKENBERG GLANTZ

Rasa BARAKAUSKIENE

Ana MUÑIZ 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.