The EUIPO upholds PRIO DONNAFUGATA's opposition against SPRIO SPRITZ's application for registration

The EUIPO recently upheld Opposition B 3142350 against the EU word trademark application no. 018334069 “SPRIO SPRITZ”, based on the Italian word trademark “PRIO DONNAFUGATA”, filed against goods in Class 33 (cocktails; aperitifs; wine-based beverages; alcoholic beverages with natural flavours).

Article 8(1)(b) EUTMR was used as the basis for the opposition, which provides grounds to reject the registration of the new trademark due to its identification with, or similarity to, the earlier trademark and the identity or similarity of the goods or services for which the two trademarks are applied, which would result in a likelihood of confusion / association for the public. This alleged similarity must be assessed globally by comparing the signs, the goods and the services and by assessing the distinctiveness of the earlier trademark, the distinctive and dominant elements of the conflicting signs and the relevant public.

In the present case, the Opposition Division focused on the terms “PRIO” and “SPRIO”, stating that, in the case of signs composed of two verbal elements, consumers tend to focus their attention on the first element, hence the greater importance of their comparison over the terms “DONNAFUGATA” and “SPRITZ”. The two terms “PRIO” and “SPRIO” were therefore considered to be normally distinctive and extremely similar visually and phonetically. On the other hand, with regards to the comparison on a conceptual level, the Division concluded that the terms did not have any meaning and therefore could not be compared. It then emphasised that, as the term “SPRITZ” has a descriptive element, its relevance was limited in the comparison of the signs, which were, in the end, considered to be similar overall.

Concerning the alleged similarity of the goods and services, the EUIPO pointed out that in the present case the relevant goods, which were identical for both registrations, were alcoholic beverages and that, since these are often ordered in noisy establishments such as pubs or nightclubs, the phonetic similarity between the signs was particularly significant.

In light of the visual and phonetic similarity of the elements “PRIO” and “SPRIO”, the fact that the elements “DONNAFUGATA” and “SPRITZ” were in second position and therefore less attention was paid to them by consumers, the non-distinctive character of the term “SPRITZ” and the environments where the goods of interest are normally consumed, the Opposition Division therefore held that for the identical goods in Class 33 there was a likelihood of confusion for consumers, and thus rejected trademark application no. 018334069 “SPRIO SPRITZ”.

The decision, which is currently being appealed before the First Board of Appeal of the EUIPO, reiterates and further consolidates several fundamental principles in the field of trademark opposition, once again focusing on the distinctiveness of the elements of a trademark and the need to carry out a global assessment of the likelihood of confusion in the light of all factors of comparison and interdependence of the same.