Winesecret | Decision 2726134
Date Published: Oct 1, 2017
OPPOSITION No B 2 726 134
Viu Manent y Cia. Ltda., Av. Antonio Varas 2740, Ñuñoa, Santiago de Chile, Chile (opponent), represented by Durán - Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)
a g a i n s t
Eatglobe Ltd., Ustav Kolyu Ficheto 25B, 9009 Varna, Bulgaria (applicant).
On 03/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 726 134 is upheld for all the contested goods.
2. European Union trade mark application No 15 389 349 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 15 389 349. The opposition is based on European Union trade mark registration No 430 272. 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: Wine; Spirits.
The contested wine; spirits 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 are directed at the public at large. The degree of attention is considered average.
- The signs
Secret | Winesecret |
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).
Both signs are word marks, as shown above.
The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51).
In the present case, the contested sign will be perceived by the English-speaking part of the public as a combination of the words ‘wine’ and ‘secret’.
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.
The element ‘secret’ contained in both marks is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. The word ‘secret’ will be understood as referring to something not revealed, understood or explained; a mystery. As this element is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
However, the element ‘wine’ of the contested sign refers to a type of alcoholic beverage. Bearing in mind the relevant goods, this element is non-distinctive, since it is merely descriptive of the goods themselves (wine) or their characteristics (spirits, which can cover goods made from distilled wine).
Visually and aurally, the signs coincide in the distinctive element ‘secret’, which constitutes the entirety of the earlier mark. This element is wholly reproduced in the contested sign and plays an independent and distinctive role therein. The signs differ in the descriptive element ‘wine’ of the contested sign, which has no counterpart in the earlier mark. Considering what has been stated above about the coincidence in the distinctive element ‘secret’, visually and aurally, the marks are highly similar.
Conceptually, both signs will be associated with the meaning of the word ‘secret’ but the contested sign also includes the additional element ‘wine’, which is non-distinctive for the relevant goods as explained above. Consequently, conceptually, the marks are virtually identical.
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 contested goods are identical and they target the general public, whose degree of attention is average. Furthermore, the earlier mark has a normal degree of distinctiveness.
The marks under comparison are visually and aurally highly similar and conceptually virtually identical because the entire earlier mark is reproduced in the contested sign and the only difference is confined to a non-distinctive element.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 430 272. 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
Anna MAKOWSKA | Carlos MATEO PÉREZ | Oana-Alina STURZA |
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.