Case T‑32/10

Ella Valley Vineyards (Adulam) Ltd

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Opposition proceedings — Application for Community figurative mark ELLA VALLEY VINEYARDS — Earlier national and Community trade marks ELLE — Relative ground for refusal — Likelihood of association — Link between the signs — Reputation — No similarity of the signs — Article 8(5) of Regulation (EC) No 207/2009)

Summary of the Judgment

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services

(Council Regulation No 207/2009, Art. 8(5))

The figurative mark ELLA VALLEY VINEYARDS, consists of a black rectangle with a thin white border which reproduces the label on a wine bottle, with the words ‘ella’ and ‘valley’ written in white capital letters inside the rectangle, for which registration as a Community trade mark is sought for ‘Wines’ in Class 33 of the Nice Agreement and the national and Community figurative marks ELLE previously registered for ‘Periodicals’ and ‘Books’ in Class 16 of that agreement, are not sufficiently similar for the general public of the European Union to associate them. Thus, in the light of the differences existing between the signs at issue and notwithstanding the reputation of the earlier marks, there is no likelihood that that public might establish such a link.

The relevant public will perceive the expression ‘ella valley’, taken as a whole, without separating the verbal elements of which it is composed and, therefore, will understand it as referring to a place name indicating the origin of the wine. That expression constitutes the dominant element of the mark applied for. It follows that the overall assessment seeking to establish the existence of a link between the marks at issue must, in the present case, as far as concerns the visual, aural and conceptual similarity of the marks at issue, be made between the earlier marks and the mark applied for of which the dominant element is constituted by the expression ‘ella valley’, without the other elements being insignificant.

Visually, the signs at issue are only slightly similar. Although it is true that the first three letters of the mark applied for are identical to those of the earlier marks, that fact is not sufficient to offset the numerous differences existing between the signs at issue. Thus, while the earlier marks are composed of a four-letter word, the dominant element of the mark applied for is composed of two words presented on two lines and totalling ten letters. Furthermore, it should also be observed that the first word of ‘ella valley’ is not identical to the word ‘elle’ of the earlier marks and it is distinguished by the last letter. The verbal component ‘vineyards’ and the figurative components of the mark applied for add elements which distinguish between the signs at issue visually, although they are weak.

Aurally, the marks at issue also present differences which outweigh the elements of similarity. It should be held that the difference in length between the earlier marks, constituted by a four-letter word, and the mark applied for, constituted by a dominant verbal element composed of two words totalling ten letters and by a nine-letter word, produce a different sound and rhythm which cannot be offset by the fact that the first three letters of the verbal element constituting the earlier marks is identical to the first word of the dominant element of the mark applied for.

Conceptually, the signs at issue do not present a sufficient degree of similarity for the relevant public to establish a link between the marks at issue. The mark applied for is likely to evoke, on the part of the relevant public, a place name related to the origin of the wine marketed under that mark, whereas that is not the case as regards the earlier marks.

(see paras 26, 42, 47, 49-50, 52-53, 55-56)