VOLMER | Decision 2704909
Date Published: Oct 1, 2017
OPPOSITION No B 2 704 909
Volner SAS, Rue Gustave Eiffel, 77220 Tournan-en-Brie, France (opponent), represented by Pascal Goyard, 10 bis, avenue de la Grande Armée, 75017 Paris, France (professional representative)
a g a i n s t
Center Court NV, Boulevard des Canadiens 118, 7711 Dottignies, Belgium (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).
On 03/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 704 909 is upheld for all the contested goods, namely:
Class 33: Alcoholic beverages (except beer); Distilled beverages; Alcoholic extracts; Prepared alcoholic cocktails; Liquor-based aperitifs; Wine-based aperitifs; Preparations for making alcoholic beverages; Pre-mixed alcoholic beverages; Wine.
2. European Union trade mark application No 15 117 071 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 117 071, namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 3 880 382. 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 33: Alcoholic beverages (except beers).
The contested goods are the following:
Class 33: Alcoholic beverages (except beer); Distilled beverages; Alcoholic extracts; Prepared alcoholic cocktails; Liquor-based aperitifs; Wine-based aperitifs; Preparations for making alcoholic beverages; Pre-mixed alcoholic beverages; Wine.
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 33
Alcoholic beverages (except beer) are identically contained in both lists of goods.
The contested distilled beverages; prepared alcoholic cocktails; liquor-based aperitifs; pre-mixed alcoholic beverages are included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they are identical.
The contested wine-based aperitifs; wine are included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they are identical.
The contested alcoholic extracts; preparations for making alcoholic beverages are similar to a low degree to the opponent’s alcoholic beverages (except beer). They can be found in the same distribution channels, they can be produced by the same providers and they target the same relevant public.
- 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 to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention will be average.
- The signs
CHARLES VOLNER | VOLMER |
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 earlier mark is a word mark, ‘CHARLES VOLNER’. ‘CHARLES’ is a well-known masculine name that will be understood by the vast majority of the relevant public, because it exists as such (in English and French), or simply because it is generally known throughout the European Union. The second word has no meaning but, as it follows the name ‘CHARLES’, it might be associated with a surname by the majority of the relevant public.
The contested mark is a word mark, ‘VOLMER’, which has no meaning for the relevant public and is, therefore, distinctive.
The earlier mark has no elements that could be considered clearly more dominant or distinctive than other elements. Despite this, the public will still attach more trade mark significance to a relatively uncommon surname than to the rather common first name, and, therefore, will focus mostly on that surname as an identifier of the alcoholic beverages.
Visually, the signs are word marks that coincide in the string of letters ‘VOL*ER’. However, they differ in that the earlier mark is a two-word mark, which includes the additional first word ‘CHARLES’. They also differ in the fourth letters in the second word of the earlier mark and the sole element of the contested sign, ‘M’ and ‘N’ respectively.
Therefore, the signs are visually similar to an average 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 string of letters ‘VOL*ER’, present identically in both signs. The pronunciation differs in the sound of the letters ‛CHARLES’ and in the sound of the letters ‘N’ of the earlier mark and ‘M’ of the contested sign. As the pronunciation of the letters ‘M’ and ‘N’ in the middle of the words is very close, this difference will be aurally insignificant.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, in which the earlier mark will be associated with a name, ‘CHARLES’, by the majority of the relevant public, and the contested sign has no meaning. Since one of the signs will not be associated with any 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.
- 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
The goods are identical and similar to a low degree.
The signs are visually and aurally similar to an average degree. Both signs are word marks, and the contested sign consists in a single word that coincides with the second word of the earlier mark in five out of its six letters, written in the same sequence.
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).
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 (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48).
Furthermore, the General Court has held that, 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, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.
Bearing in mind that the highly similar elements ‘VOLNER’ and ‘VOLMER’ play an independent distinctive role in both signs, and considering the importance of the phonetic similarity for the goods at issue, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 880 382. 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
Gueorgui IVANOV | Patricia LÓPEZ FERNÁNDEZ DE CORRES | Dorothee SCHLIEPHAKE |
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.