OPPOSITION No B 2 453 309

Braida di Bologna Giacomo S.R.L., Strada Provinciale 27 N.9, Loc. Ciappellette, 14030 Rocchetta Tanaro (AT), Italy (opponent), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Turin, Italy (professional representative)

a g a i n s t

Branda, Suite 164, 56 Gloucester Road, Kensington, London  SW7 4 UB, United Kingdom (applicant), represented by Vilija Viešūnaitė, L. Stuokos – Guceviciaus str. 9, 01122 Vilnius, Lithuania (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 453 309 is upheld for all the contested goods, namely 

Class 33: Alcoholic beverages (except beers); Preparations for making alcoholic beverages.

2.        European Union trade mark application No 13 169 041 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 169 041, namely against all the goods in Class 33. The opposition is based on, inter alia, international trade mark registration No 799 153 designating (among other countries) the United Kingdom. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the earlier trade marks.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 799 153 designating the United Kingdom.

The request was submitted in due time. Since the contested application was published on 29/09/2014 the request is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the United Kingdom from 29/09/2009 to 28/09/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 33: Alcoholic beverages (except beers).

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 11/08/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/10/2015 to submit evidence of use of the earlier trade mark. On 19/10/2015, after the expiry of the time limit, the opponent submitted evidence of use.

On 27/10/2015 the Opposition Division rejected the opposition due to lack of proof of use.

On 25/11/2015 the opponent requested the continuation of proceedings. This request was granted by the Office on 08/01/2016 and the opposition decision of 27/10/2015 by the Opposition Division was declared void.

Therefore, the evidence to be taken into account is the following:

• Samples of labels: several alcoholic beverage labels show the earlier mark, the years 2009, 2010, 2011, 2012, 2013 and 2014, indications in English such as ‘contains sulphites’ and ‘product of Italy’, an indication of the volume (375ml, 700ml or 750ml) and alcohol content (5.5, 12.5, 13.0, 14.0, 14.5, 15.5, 16.0, 16 and 44% vol.). The type of product is sometimes indicated (for example ‘Grappa’). In other instances, together with the information contained in the brochures (next enclosure), it becomes clear that the labels refer to wines, e.g. ‘Barbera d’Asti 2009’.
• Brochures and promotional flyers: a promotional flyer in English (‘Braida and its Barbera wines’) shows bottles of wine, the earlier mark and the year 2012; an English brochure advertises various wine and grappa products, shows the earlier mark and refers to the company history until 2012; an undated bilingual (Italian-English) brochure on ‘Montebruna Barbera d’Asti’ wine which includes a reference to the earlier mark.
• Invoices: 12 invoices (three from 2012, 2013, 2014 and 2015 each) to a business client in London (Sommelier’s Choice Ltd.) with references to the earlier mark, wine products (for example ‘Rosso Braida 2006 – Monfer. Rosso DOC, box of 12 bottles – 0.75lt’ for EUR 9,600.00 in an invoice dated 10/05/2012) or a grappa product. Even if the grappa product in the invoices does not mention the earlier mark but merely indicates ‘Grappa di Bricco Uccellone 0,70lt 2009 44% alc.’ (e.g. in an invoice dated 07/10/2013), the respective grappa label (enclosure 1) features the earlier mark.
• Turnover and sales figures: in the opponent’s observations it is explained that this document shows ‘total sales of BRAIDA wines, in Europe’. For the UK yearly sales figures range from EUR 31,436 (in 2010) to EUR 42,101 (in 2014). The document is signed and bears the opponent’s stamp.

Some documents show that the place of use is the United Kingdom. This can be inferred from the language of the brochures and flyers (‘English’) and a London address in the invoices. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely the invoices and the yearly sales figures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used as registered or with negligible modifications that do not alter the distinctive character of the mark (such as “Braida” in inverted commas) for all the goods for which the mark is registered, as it is used for two different groups of goods (wines and grappa) within the category of alcoholic beverages (except beers).

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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.

1. 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: Alcoholic beverages (except beers); Preparations for making alcoholic beverages.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Alcoholic beverages (except beers) are identically contained in both lists of goods.

The contested preparations for making alcoholic beverages are similar to a low degree to the opponent’s alcoholic beverages (except beers), as the goods coincide in their distribution channels, relevant public and producers.

2. 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 or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

The degree of attention is considered to be average.

3. The signs

BRAIDA
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

The earlier mark is a word mark. In this case it is the word as such that is protected and not its written form. Therefore, it is immaterial if it is written in upper- or lower-case letters.

The element ‘BRAIDA’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a complex figurative mark in orange colour. It consists of the capital letter ‘B’ in a decorative frame and the word ‘Branda’ in slightly stylised letters as well as, in the line below, the words ‘EXPERIENCE IN BRANDS’ in significantly smaller standard letters.

The element ‘Branda’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. The Opposition Division disagrees with the applicant who argues that the word ‘Branda’ in the contested sign is weak as it ‘alludes to the well-known English word ‘brand’’. In this context the applicant also filed a list of trade marks registered or applied for in the EU which contain the element ‘Branda’. However, this evidence is neither adequate for proving that ‘Branda’ is perceived by the English-speaking public as an allusion to the word ‘brand’ nor that this element is weak. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘Branda’. Under these circumstances, the applicant’s claims must be set aside.

The element ‘EXPERIENCE IN BRANDS’ of the contested sign will be perceived as ‘knowledge in trade marks’. Bearing in mind that the relevant goods are alcoholic beverages, this element is a laudatory slogan and therefore non-distinctive for the goods.

The capital letter ‘B’ in a decorative frame and the word ‘Branda’ in the contested sign are the dominant elements as they are the most eye-catching.

Conceptually, although the public in the relevant territory will perceive the meaning of the slogan ‘EXPERIENCE IN BRANDS’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Visually, the signs coincide in the string of letters ‘Bra*da’ and differ in the respective fourth letter ‘i’ and ‘n’ and the orange colour. Moreover, the contested sign features an additional figurative letter ‘B’ as well as the laudatory slogan ‘EXPERERIENCE IN BRANDS’, which is, however, neither distinctive nor dominant.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /BR**-DA/ (grouped in two syllables), present identically in both signs. The pronunciation differs in the sound of the letters /AI/ of the earlier sign and /AN/ of the contested mark. Moreover, the contested sign differs in the additional sounds of the letters /B/ and /EXPERIENCE IN BRANDS/. However, since the slogan is depicted in much smaller letters, it is doubtful if consumers will pronounce it. In any case, the slogan is non-distinctive. Similarly, it is questionable whether consumers will pronounce the /B/ at the beginning of the contested sign, since it seems to be merely a repetition of the initial of the word ‘Branda’.

Therefore, the signs are highly similar if only the letters ‘Branda’ are pronounced in the contested sign. The signs are aurally similar to an average degree if all letters are pronounced.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed. 

4. 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods are in part identical and in part similar to a low degree. The attention of the general public is average.

It should be borne in mind that some of the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

The signs are visually and aurally at least similar to an average degree due to the similarities of the distinctive six-letter elements ‘BRAIDA’ and ‘Branda’, taking into account also the fact that ‘Branda’ is a dominant element within the contested sign. Moreover, if the public only pronounces the element ‘Branda’ in the contested sign (which seems rather likely), the signs are aurally even similar to a high degree.

Considering all the above, there is a likelihood of confusion at least on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the United Kingdom is sufficient to reject the contested application, there is no need to analyse the remaining part of the professional public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 799 153 designating the United Kingdom. It follows that the contested trade mark must be rejected for all the contested goods. As to the contested goods that are similar to a low degree, according to the interdependence principle the low degree of similarity of these goods is outweighed by the average degree of similarity of the signs, the normal distinctiveness per se of the earlier mark and the normal (i.e. not enhanced) degree of attention of the general public.

As the earlier international registration No 799 153 designating the United Kingdom leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Sigrid DICKMANNS

Beatrix STELTER

Claudia MARTINI

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.