Vividor | Decision 2717083
Date Published: Oct 1, 2017
OPPOSITION No B 2 717 083
Quargentan S.P.A., Via Valle 1, 37030 Roncà, Fraz. Terrossa (VR), Italy (opponent), represented by Mondal Marchii S.R.L., Via Olindo Malagodi 1, 44042 Cento (FE), Italy (professional representative)
a g a i n s t
Antonio Arraez Calabuig, C/Arcediano Ros 35, 46630 La Font de la Figuera, Spain (applicant), represented by Lehmann & Fernandez S.L., Calle Alvarez de Baena 4, 28006 Madrid, Spain (professional representative).
On 20/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 717 083 is upheld for all the contested goods, namely
Class 33: Alcoholic beverages (except beer).
2. European Union trade mark application No 15 235 311 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 the European Union trade mark application No 15 235 311. The opposition is based, inter alia, on the European Union trade mark registration No 11 409 943. 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 registration No 11 409 943.
- The goods
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beers); Brandy; Peppermint liqueurs; Rice alcohol; Spirits [beverages]; Bitters; Anise [liqueur]; Anisette [liqueur]; Aperitifs; Arak [arrack]; Alcoholic beverages, except beer; Alcoholic beverages containing fruit; Pre-mixed alcoholic beverages, other than beer-based; Distilled beverages; Cocktails; Curacao; Digesters [liqueurs and spirits]; Alcoholic essences; Alcoholic extracts; Fruit extracts, alcoholic; Gin; Hydromel [mead]; Kirsch; Liqueurs; Rum; Sake; Cider; Perry; Piquette; Wine; Vodka; Whisky.
The contested goods are the following:
Class 33: Alcoholic beverages (except beer).
Alcoholic beverages (except beer) are 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 will be average.
- The signs
VINIDOR | Vividor |
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. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Slavic part of the public, such as Polish-, Czech-, Slovak- and Bulgarian-speaking public, for which neither of the signs have meaning.
Both signs are word signs made up of single words ‘VINIDOR’ and ‘Vividor’. None of them have a meaning for the relevant public and, therefore, they are distinctive.
As a preliminary remark, it is to be noticed that in the case of word marks the use of upper or lower cases is irrelevant.
Visually and aurally the signs are equally long and coincide in six out of seven letters, whereas they differ only in one letter, positioned on the third place. The coincidence in two first letters corresponding aurally to one syllable is particularly relevant, because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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 and aurally similar to high degree.
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
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
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 present case the identity of goods goes hand in hand with a high visual and aural similarity.
It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).
Account is also taken of the facts that the earlier mark has average degree of distinctiveness, the degree of attention of the relevant public is average and that 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).
Considering all the above, there is a likelihood of confusion on the part of the Slavic part of the public, such as Polish-, Czech-, Slovak- and Bulgarian-speaking 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 409 943. It follows that the contested trade mark must be rejected for all the contested goods.
As the European Union trade mark registration No 11 409 943 leads to the success of the opposition and to the rejection of the contested trade mark in its entirety, there is no need to examine the other earlier right 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
Michaela SIMANDLOVA | José Antonio GARRIDO OTAOLA | Erkki MÜNTER |
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.