In Case R 414/2013-4, the Fourth Board of Appeal of the OHIM decided an appeal against the first instance decisions taken by the Opposition Division in a dispute between the trade marks ‘PAOLA’ (‘rum’) and ‘VILLA PAOLA’ (‘wines’).

On 17 May 2011, MAISON A.E. DOR (‘MAISON’) designated the European Community in international registration No. 1081570 for the word mark ‘PAOLA’, covering (following a restriction of goods) ‘rum’. VILLA ATUEL, S.A. (‘VILLA ATUEL’) opposed the application, based on its earlier Community Trade Mark no. 3275781 ‘VILLA PAOLA’ (word sign) for wines.

On 29 January 2013, the Opposition Division adopted a decision stating that the conflicting goods are similar (‘Despite a different production process, they have the same nature and pertain to the same category of alcoholic drinks intended for the general public. Both can be served in restaurants and in bars, are displayed in the same section of a supermarket, may be produced by the same undertakings and are in competition with each other’) and that the signs are visually, aurally and conceptually similar to the extent that they coincide in the word element ‘PAOLA’. Accordingly, a likelihood of confusion on the part of the relevant public was found and the opposition was upheld and consequently the trade mark application was refused.

MAISON appealed the decision. It claimed that the conflicting goods were different (in nature, method of production, way of consumption and in the taste, colour and smell of the products) and that the signs were dissimilar (different beginning, construction, rhythm, and pronunciation; further, it claimed that the element ‘PAOLA’ refers to a female name in the contested sign, whereas in the earlier mark it was a reference to a vineyard where the products were produced). No observations in reply were submitted by VILLA ATUEL.

On 14 January 2014, the Board of Appeal issued its decision. Following its prior decision of 18 July 2013, in Case R 233/2012-G, ‘PAPAGAYO ORGANIC / PAPAGAYO’, the Board held that there is only a very low degree of similarity between ‘wines’ and ‘rum’: although both products are alcoholic beverages, share the same distribution channels and are offered together and might be consumed together in one single drink (side note: this blogger can attest this fact), the ingredients from which wine and rum are produced as well as the production process of the two drinks are very different.

In respect of the comparison between signs, the BoA stated that the words ‘VILLA’ and ‘PAOLA’ must be considered as co-dominant, as it had not been demonstrated that ‘VILLA’ has a descriptive meaning in relation to ‘wines’. However, the fact that the contested mark was entirely incorporated by the earlier mark and that the sole difference between them was the additional word ‘VILLA’ in the earlier sign resulted in the two signs being visually and aurally similar to an average degree. From a conceptual point of view, the BoA found that none of the signs had a meaning and that, therefore, such point of view should be ignored.

Having found that there was a very low degree of similarity between ‘wines’ and ‘rum’ and an average degree of similarity between the opposing signs, the BoA proceeded to the overall assessment of the likelihood of confusion between the two trade marks. In its decision, it clarified that a likelihood of confusion does not necessarily exists in all cases where the signs and goods are similar to various degrees and that the finding of likelihood of confusion also depended on the distinctiveness of the earlier trade mark. Since no evidence to prove an enhanced distinctiveness of the earlier mark had been provided and that ‘rum’ and ‘wines’ have only few features in common, the Board held that average consumer will be able to safely distinguish the conflicting marks despite the coincidence in the element ‘PAOLA’.

Consequently, the Board of Appeal decided to annul the appealed decision and rejected the opposition in its entirety.