ViniProtect BIO | Decision 2690959
Date Published: Oct 1, 2017
OPPOSITION No B 2 690 959
Laffort Holding, 7, rue Franc Sanson, 33100 Bordeaux, France (opponent), represented by Ipside, 7-9 Allées Haussmann, 33300 Bordeaux, France (professional representative)
a g a i n s t
2B FermControl GmbH, Rempartstr. 2, 79206 Breisach, Germany (applicant).
On 28/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 690 959 is upheld for all the contested goods.
2. European Union trade mark application No 15 245 186 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 15 245 186. The opposition is based on European Union trade mark registration No 11 211 067. 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
The goods on which the opposition is based are the following:
Class 1: Chemicals, namely oenological preparations used in the production of wine.
The contested goods are the following:
Class 1: Wine finings.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
The contested wine finings are included in the broad category of the opponent’s chemicals, namely oenological preparations used in the production of wine. These goods 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 are directed rather at the professional public with specific knowledge or expertise in the winemaking sector. The degree of attention will be higher than average. It must be assumed that purchases of these goods are made at a specialist outlet and consumers would be expected to pay a higher degree of attention because these products are considered chemicals and result in a wine quality.
- The signs
VINOPROTECT | ViniProtect BIO |
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).
Neither of the marks, as a whole, has a concrete meaning in relation to the goods concerned in the relevant territory and, although the consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign they will break it 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). Therefore, it is likely that the element ‘VINO’ and ‘Vin’, respectively, will be perceived by the relevant public from the wine industry, as a reference to wine (vino in Croatian, víno in Czech, vino in Italian, vino in Slovenian, vino in Spanish, vin in Danish, Swedish, French and Romanian). Thus, this element is weak for the goods at stake, i.e. goods used in winemaking. Hence, a part of the public will not pay as much attention to this element as to the other, more distinctive, element of the marks, especially the word ‘PROTECT’.
Insofar as the term ‘PROTECT’, present in both marks is concerned, it will be understood by at least part of the relevant public as a word in their own language (English-speaking public) referring to preventing someone or something from being harmed or damaged (see Collins English Dictionary online) or as a word that is similar to the equivalent in their language (proteger in Spanish and Portuguese, protéger in French). Its distinctiveness in relation to the goods at stake might be considered as normal.
The element ‘BIO’ of the contested sign will be perceived by most of the relevant public as a commonly used abbreviation for the word ‘biological’. This element will be associated with life and living things. Thus, it has a weak distinctive character, since products used in winemaking can have organic constituents, and not be made of artificially produced chemical components. Hence, most of the public will not pay as much attention to this element.
Visually, the signs coincide in the letters ’VIN*PROTECT’. However, they differ in the letters in the fourth position of each word, ‘O’ versus ‘I’ and the additional term ‘BIO’ of the contested sign of which it can be said that it is weak.
The first and last parts of the earlier mark and the first element of contested sign, respectively, coincide and the only different letter of these elements falls in the middle, where it can be easily overlooked by the consumer. Furthermore, the first parts of the conflicting marks coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /V-I-N-*-P-R-O-T-E-C-T/ present in both signs. They differ in the pronunciation of the letters ‘O’, versus ‘I’ of which can be said that they are both vowels and they differ in the additional verbal element /BIO/ of the contested sign. Since this element is weak, it will have a limited impact of the consumer’s aural perception of the marks.
Therefore, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole have no meaning in the relevant territory, a part of the public will perceive the meanings of one or more components of the marks which will be associated with the meaning explained above. To that extent, the signs are conceptually at least similar to average 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 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 weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).
In the present case, the goods have been found identical and the level of attention of the professional public is rather high. The signs are visually and aurally similar to a high degree, whereas from the semantic perspective the marks are similar to an average degree.
The signs differ in the letter in the fourth position and the additional element ‘BIO’ of the contested sign. To this extent it should be stressed that the word ‘BIO’ has less impact, because it is rather weak in relation to the goods at stake and it is placed at the end of the mark, therefore, it will not influence the comparison as such.
It is conceivable that the relevant consumer will perceive the contested sign as a sub-brand of the opponent’s mark, bearing the additional term ‘BIO’, being a variation of the earlier mark configured in a different way according to the type of goods which it designates, namely those of a more biological quality compared to those of the opponent. It is quite possible for an undertaking to use sub-brands, that is to say signs that derive from a principal mark and which share with it a common element in order to distinguish various lines from one another. It is, therefore, conceivable that the targeted public may regard the goods designated by the trade marks in conflict as belonging to two ranges of goods coming, nonetheless, from the same undertaking.
Account is 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). Having said that, it is stressed that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
In light of the foregoing, there is a likelihood of confusion on the part of the public, even taking into account that the level of attention is rather high Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 11 211 067. It follows that 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
Chantal VAN RIEL | Klaudia MISZTAL | Saida CRABBE |
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.