In Case T-249/13, the General Court had to review a very bubbly opposition between following parties and signs

The Opposition Division rejected the opposition, which was confirmed by the Board of Appeal.

First, the evidence regarding the acquired enhanced distinctiveness of the earlier marks was submitted for the first time before the BoA and was therefore inadmissible.

The GC confirmed that the BoA had correctly exercised its broad discretion to find that the evidence submitted outside the time­limits was irrelevant to the decision under Article76(2) of CTMR. For the sake of completeness, the figurative elements contained in the earlier marks were only weakly distinctive, and thus, even if found to have acquired an additional degree of enhanced distinctiveness through use, their total distinctiveness would still not be high (especially the earlier French TM representing n ‘x’-shaped element).

Secondly, in the contested mark, the figurative elements cannot constitute the dominant element in the overall impression created by that mark. By contrast, because of its position, its size, the fact that it appears twice and the contrast between its black letters and the white background on which it appears, the word element ‘dorato’ constitutes the dominant element of that mark.

Further, visually speaking, the only element of similarity between the marks at issue is that they have figurative elements representing a label for affixing to the neck of a bottle.

As the GC confirmed,in the alcoholic beverages sector, the use of labels consisting of ribbons, flags, or combinations of those elements, as well as bands intersecting at an angle with a circular element where the bands cross is not uncommon. To that effect, the Applicant provided various examples.

Furthermore, in contested mark, the upper right-hand part of the ‘x’ formed by the crossing of the two bands ends in a circular element which contains the word element ‘metodo natural di doppia fermentazione’, whereas, in the earlier marks, there is either no such element at the end or it appears in the upper left-hand part and contains, as regards one of those marks, the word element ‘m & c’ surmounted by a crown. Far from being an element of ‘symmetrical similarity’, as the opponent claims, it is an element of difference. Lastly, the word elements ‘m & c’, ‘réserve’, ‘impérial’ and ‘brut’ in some of the earlier marks are not in the mark applied for. Thus the signs are visually and aurally dissimilar.

Conceptually, for Italian-speaking consumers, the dominant word element ‘dorato’, means ‘gold’, whereas none of the word elements in the earlier marks conveyed that concept, and, secondly, for non-Italian speaking consumers, the mark applied for had no meaning, whereas the earlier marks contained laudatory elements, such as ‘brut’, ‘réserve’ or ‘impérial’. Thus there is no conceptual similarity between the signs at issue.

The opponent does not adduce any evidence to substantiate its claim that the figurative element in question will evoke a prestigious image of the goods concerned in the minds of consumers.In any event, even if that claim were properly substantiated, it would not prove that the earlier marks have a ‘conceptual’ meaning, but would relate to the image conveyed by the goods to which they are affixed. Further the consumers usually describe and recognise wine by reference to the word element which identifies it.

Therefore the General Court confirmed that due to the differences between the signs, there could be no likelihood of confusion according to Article 8(1) CTMR.