OPPOSITION No B 2 524 349

Intertrade Beverages, LLC, 8105 N.W. 77 Street, Miami Florida 33166, United States of America (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative)

a g a i n s t

Hacienda y Viñedos Marqués del Atrio, S.L., Ctra. de Logroño NA-134 Km. 86,200, 31587 Mendavia (Navarra), Spain (applicant), represented by Seain, S.L.P., C/ Vara de Rey, 5 bis, 1º 3, 26003 Logroño (La Rioja), Spain (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 524 349 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 745 311 ‘MARQUES DE VIDIAGO’, namely all the goods in Class 33. The opposition is based on the following earlier rights:

1. United States trade mark registration No 3 483 406 ‘MARQUÉS DE VIDIAGO’ (at the moment of filing the notice of opposition it was an application for registration No 77 224 394);

2. non-registered trade mark ‘MARQUÉS DE VIDIAGO’ used in the course of trade in The Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland;

3. well-known trade mark ‘MARQUÉS DE VIDIAGO’ in Estonia, The Netherlands, Czech Republic, European Union, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland.

The opponent invoked Articles 8(3) and 8(4) EUTMR, and Article 8(1)(a) and (b) in connection with Article 8(2)(c) EUTMR.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER – ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

• the signs are identical or only differ in elements which do not substantially affect their distinctiveness;
• the goods and services are identical or equivalent in commercial terms;
• the applicant is an agent or representative of the owner of the earlier mark;
• the application was filed without the consent of the owner of the earlier mark;
• the agent or representative fails to justify its acts.

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

Agent or representative relationship

The opponent submitted evidence to prove the claimed agent/representative relationship. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any sensitive commercial data. However, the confidentiality request is not applicable to facts which are already available to the public (for instance particulars of trade mark registrations).

The evidence to be taken into account is the following:

• Affidavit, signed on 24/05/2016 by the president of the opponent, describing how the trade mark at issue was adopted in the opponent’s company as a private label for wine that is produced and bottled by the applicant, and some events that led to the filing of this opposition. The affidavit is accompanied by numerous appendices including:

• Evidence in relation to the earlier mark on which the opposition is based, namely US trade mark registration No 3 483 406 ‘MARQUÉS DE VIDIAGO’ for wines with the filing date of 09/07/2009, and the registration date of 12/08/2008.

• Evidence in relation to the applicant’s Spanish trade mark registration No 2 700 289 ‘MARQUES DE VIDIAGO’ for alcoholic beverages (except beers) with the filing date of 14/03/2006.

• Many extracts from e-mail correspondence between the applicant, the opponent and some third parties, the earliest dated 23/03/2006. The correspondence deals with label designs and their modifications necessary to comply with the requirements of use of certain denominations of origin, product prices, order confirmations, payment guarantees, invoices and shipment documentation (concerning some deliveries to the U.S.A. and France), the opponent’s request to deliver a small quantity of goods to some restaurants in Spain as a sentimental gesture, exchanges of courtesies etc. The e-mail correspondence shows that, on 15/02/2015, the opponent informed the applicant of its concern in relation to the fact that goods bearing the sign at issue are sold online by third parties. The evidence contains extracts from text messages in which the opponent tries to clarify the situation and indicates that, whilst it had consented to the applicant registering the sign in order to comply with the requirements for use of a specified denomination of origin and accepted that the applicant sells the goods in certain territories, the opponent considered itself to be the owner of the trade mark.

• Three affidavits, signed on 26/05/2016, by persons related to the opponent, through family ties or business connections, who have knowledge about the creation of the trade mark at issue.  

The agent/representative relationship must be established prior to the filing date of the contested EUTM application. In the present case, the filing date of the contested EUTM application is 16/02/2015.

The Opposition Division clarifies that, contrary to what the applicant argues, the contested EUTM application claims seniority (and not priority) from Spanish trade mark registration No 2 700 289. Pursuant to Article 34(2) EUTMR, seniority has the sole effect that, where the proprietor of the EU trade mark surrenders the earlier trade mark or allows it to lapse, he is deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered. Therefore, the seniority claim has no impact in establishing the date from which the contested EUTM application takes effect.

In view of the purpose of the provision of Article 8(3) EUTMR, which is to safeguard the legal interests of trade mark proprietors against the misappropriation of their trade marks by their commercial associates, the terms ‘agent’ and ‘representative’ should be interpreted broadly to cover all kinds of relationships based on any business arrangement (governed by written or oral contract) where one party is representing the interests of another, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the EUTM applicant (13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64).

Therefore, it is sufficient for the purposes of Article 8(3) EUTMR that there is some agreement of commercial cooperation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark proprietor. It follows that Article 8(3) EUTMR may also extend, for example, to licensees of the proprietor, or to authorised distributors of the goods for which the mark in question is used.

Nevertheless, some kind of cooperation agreement has to exist between the parties. If the applicant acts completely independently, without having entered into any kind of fiduciary relationship with the proprietor, it cannot be considered an agent within the meaning of Article 8(3) EUTMR (13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64).

The burden of proof regarding the existence of a cooperation relationship lies with the opponent (13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 67).

Having examined the evidence submitted by the opponent it is clear that there was some business relationship between the parties in terms of the applicant bottling wine per the opponent’s orders. The evidence also shows that the opponent was involved in the modification of the label design in order to comply with the requirements for using denominations of origin.

However, the opponent failed to submit evidence that would be capable of demonstrating that the cooperation between the parties gave rise to a fiduciary relationship by imposing on the applicant a general duty of trust and loyalty as regards the interests of the opponent.

The contents of the correspondence suggest that the nature of the cooperation between the parties was that of a buyer and seller. Such a relationship could have been established without prior agreement between them. Besides bottling and delivering wine, the applicant was not involved in the promotion or distribution of the goods at issue that would reach the threshold of a commercial scale. There is no evidence of the applicant taking part in the opponent’s marketing strategy, or of the opponent providing business management assistance to the applicant in relation to the commercialisation of the goods under the trade mark at issue. The affidavits signed by the persons who are related to the opponent do not prove any agent-principal relationship between the parties either.

The applicant is the proprietor of the nearly identical Spanish trade mark, ‘MARQUES DE VIDIAGO’, which was filed for registration earlier than the opponent’s U.S. trade mark invoked as the basis of the present opposition, and predates any of the e-mail exchanges shown in the evidence. That casts even more doubt on the nature of the relationship and whether the opponent acted as a principal in them. Rather than an agent/representative relationship, at the time of filing the contested EUTM application the parties held parallel and independent rights to the marks in the U.S.A. and Spain. The fact that the opponent’s correspondence implies that it considered itself the owner of the trade mark at issue is incapable of changing that finding, as there is no convincing evidence of a business agreement between the parties in the relevant territory.

On the basis of the above, the Opposition Division concludes that the evidence submitted is insufficient to prove that the applicant is an agent or representative of the opponent.

As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(3) EUTMR.

In addition to Article 8(3) EUTMR, the opponent invokes other grounds in the notice of opposition. Although in its observations of 03/06/2016 the opponent stated that, for the sake of procedural brevity, it would not substantiate the grounds of opposition under Articles 8(1)(a) and (b) in conjunction with Article 8(2)(c) EUTMR, or Article 8(4) EUTMR, the opponent did not expressly withdraw these grounds.

Therefore, the Opposition Division will continue with the examination of the opponent’s claims based on the remaining grounds.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

Based on Article 8(4) EUTMR, the opponent invokes earlier non-registered trade mark ‘MARQUÉS DE VIDIAGO’ used in the course of trade in The Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for alcoholic beverages; preparations for making alcoholic beverages; wines.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered trade mark used in the course of trade in The Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

WELL-KNOWN TRADE MARK – ARTICLE 8(1)(a) AND (b) IN CONNECTION WITH ARTICLE 8(2)(c) EUTMR

Based on Article 8(1)(a) and (b) in connection with Article 8(2)(c) EUTMR, the opponent invokes earlier well-known trade mark ‘MARQUÉS DE VIDIAGO’ in Estonia, The Netherlands, Czech Republic, European Union, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for alcoholic beverages; preparations for making alcoholic beverages; wines.

Admissibility of a ‘European union well-known trade mark’

According to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

ii) where the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR, the indication of the Member State where the mark is well-known and either the indications referred to in point (i) of Rule 15(2)(b) EUTMIR or a representation of the mark (emphasis added).

The opponent seeks to rely upon, inter alia, a well-known trade mark under Article 8(1)(a) and (b) in connection with Article 8(2)(c) EUTMR. In the opposition notice, the opponent claims that the ‘Countries in which the trade mark is well-known’ are individual EU Member States and ‘the European Union’.  

Article 8(2)(c) EUTMR defines well-known marks as ‘trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention’ (emphasis added). It is clear that the protection of ‘well-known’ marks is recognised at a Member State level only. Further, the indication of the Member State where the mark is claimed to be well-known is an absolute admissibility requirement within the meaning of Rule 15(2)(b) EUTMIR. The European Union is not a valid indication of the Member State(s) in which the mark is well-known. Firstly, the ‘European Union’ is not a ‘Member State’. Secondly, there is no protection of well-known marks at a European Union level.

On 27/05/2015, the Office informed the opponent that the opposition was found admissible at least insofar as it was based on earlier United States trade mark application ‘MARQUÉS DE VIDIAGO’. The Office’s communication contained a note explaining that if the opposition was based on any other earlier rights, the examination of the admissibility of these other earlier rights had not yet taken place. This is in line with the practice established in Communication No 5/07 of 12/09/2007 of the President of the Office on changes of practice in opposition proceedings. Since the opposition was based on more than one earlier right and one of them was correctly identified (the US trade mark in relation to Article 8(3) EUTMR), the examination of admissibility in relation to the relative requirements proceeded based on that earlier right.

As the deficiency in relation to the missing absolute admissibility requirement of the well-known mark was not remedied before the expiry of the opposition period, the opposition must be rejected as inadmissible, insofar as it is based on a ‘European Union well-known mark’, pursuant to Rule 15(2)(b) and 17(2) EUTMIR.

The examination will proceed in relation to the opponent’s claim for a well-known trade mark in the individual Member States, as listed above.

Substantiation of well-known trade mark

As established above, according to Article 76(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.

In the present case, the evidence filed by the opponent has been summarised under Article 8(3) EUTMR.

The evidence submitted by the opponent is insufficient to substantiate the opponent’s earlier well-known trade mark in the relevant territories. Despite showing some use of the trade mark, the evidence provides very limited information on the extent of such use. The evidence does not provide any indication of an enhanced, let alone high, degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark is well-known within the meaning of Article 8(2)(c) EUTMR in the relevant territories.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this ground.

Consequently, the opposition is rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Pierluigi M. VILLANI

Solveiga BIEZA

Julie GOUTARD

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.