OPPOSITION No B 2 304 734

Einig-Zenzen GmbH & Co. KG, Carl-Friedrich-Benz-Str. 8, 56759 Kaisersesch, Germany (opponent), represented by Splanemann Patentanwälte Partnerschaft, Rumfordstr. 7, 80469 München, Germany (professional representative)

a g a i n s t

Stellar Winery (Proprietary) Limited, Off N7, Traval 8147, South Africa (applicant), represented by Beck Greener, Fulwood House, 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 304 734 is upheld for all the contested goods.

2.        European Union trade mark application No 12 142 121 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 142 121. The opposition is based on European Union trade mark registration No 1 919 273. 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 trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 18/10/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 18/10/2008 to 17/10/2013 inclusive.

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

Class 33:

Wines.

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 31/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 31/07/2016 to submit evidence of use of the earlier trade mark. On 28/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Sales figures: documents (Annexes 1 and 2) containing figures for volumes of sales to customers in various EU countries (Annex 1) and countries outside the EU (Russia, Japan and China), corresponding mainly to the relevant period (from 2009 to 2014). A detailed summary is shown in the table included in the affidavit, reproduced below. These documents relate to sales of products bearing the trade mark ‘HEAVEN’ in combination with other verbal elements. Translations into the language of the proceedings were submitted.

• Samples of product labels: several wine bottle labels (Annex 3) bearing the trade mark ‘HEAVEN’ in combination with other verbal elements and figurative devices. The labels are undated.

• Price lists: two documents (Annexes 6 and 7) submitted to a customer as marketing material, dated as valid from 01/01/2009 and 10/01/2011, each containing a list of products; in the first document, three lines, or items, in the list include the trade mark ‘HEAVEN’ in combination with other verbal elements in relation to the relevant goods; in the second document, there are five such lines in the list.

• Catalogues: two excerpts from the opponent’s catalogues were also submitted (Annex 8), undated and making reference to relevant goods bearing the trade mark ‘HEAVEN’ in combination with other verbal elements.

• An affidavit (Annex 9) signed on 27/06/2016 by Ludwig Götz, General Manager of the Einig-Zenzen GmbH & Co. KG (the opponent), who provides an overview of the sales and marketing activities of the company. The affidavit includes a declaration that the earlier trade mark ‘HEAVEN’ has been used as a trade mark on white, red and sparkling wines distributed in several EU countries and also exported to countries outside the EU, such as Russia, Japan and China, during the relevant period between October 2008 and October 2013. This statement is supported by details of sales figures, wine bottle labels, price lists sent to customers and excerpts from catalogues. The affidavit also includes a table summarising the quantity of products sold in several countries during the relevant period, as follows:

As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The sales figures, product labels, price lists and catalogues show that the earlier mark has been used in various countries within the EU, such as Germany, Cyprus and Latvia. This can be inferred from the language of the documents (German), the currency mentioned (euros), some addresses in Germany and the sales figures. All this is also supported by the details included in the affidavit. Therefore, the evidence relates to the relevant territory.

Moreover, according to Article 15(1), second subparagraph, point (b) EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

The evidence shows that the goods were manufactured in Germany and sold in Russia, Japan and China. This clearly shows that the goods were exported from the relevant territory.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because Annex 2 gives a summary of sales from 01/2010 to 06/2014; therefore, the latest months of this period, which fall outside the relevant period, are nonetheless very close in time to it.

The documents filed 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 for all the goods for which the mark is registered. The applicant argues that the opponent’s goods appear to be German table wines. The Opposition Division notes that the evidence shows that the earlier sign has been used as a trade mark for white and red wines produced in Germany. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong (see, in this regard, 14/07/2005, T-126/03, Aladin, EU:T:2005:288), the Opposition Division considers that the evidence shows genuine use of the trade mark for all the goods for which the mark is registered, namely wines in Class 33.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the registered earlier trade mark ‘HEAVEN’ appears affixed to the goods with additional verbal elements, such as ‘RED’ or ‘GOLD’, and a figurative device of the Virgin or Madonna. These additional verbal elements are descriptive, as they allude to the characteristics of the goods, such as their type; that is, ‘RED’ is used to refer to red wine and ‘GOLD’ to refer to white wine or highlight that the wine is of the highest quality. It is therefore considered that the sign has been used as registered because its distinctive character is not significantly altered by the addition of the abovementioned verbal elements. The same applies to the figurative device of the Virgin or Madonna, which reinforces the concept of ‘HEAVEN’ as a holy place with religious connotations.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR, the purpose of which is to avoid imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

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:

Wines.

Following a limitation by the applicant, the contested goods are the following:

Class 33:

Organic wines of South African origin.

The contested organic wines of South African origin are included in the broad category of the opponent’s wines. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

HEAVEN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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, ‘HEAVEN’.

The contested sign is a figurative mark that, as a whole, depicts a stylised label consisting of the verbal elements ‘HEAVEN’, shown in the centre of the sign in grey upper case letters in a standard font, and ‘ON EARTH’, immediately below and also in the centre, using the same typeface but in a significantly smaller size. The verbal elements are inside a black rectangle that is in turn contained inside a larger device in grey; above the black rectangle is a pattern of stars inside smaller dark rectangles and below it is another embellishment. The pattern of stars is repeated at the bottom of the label immediately above a black band. The same star that is repeated in the pattern is depicted in a larger size above the contested sign, inside a black rectangle with a grey border.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there are numerous elements, such as the pattern and the embellishment below the black rectangle containing the verbal elements, that are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

The element ‘HEAVEN’ in both marks will be understood by the part of the relevant public with a knowledge of English as the English word referring to, in some religions, the place where God lives, where good people go when they die and where everyone is always happy. It is usually imagined as being high up in the sky (information extracted from Collins Dictionary on 25/04/2017 at www.collinsdictionary.com). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. For the remaining part of the public, this element has no meaning and is also distinctive.

Similarly, the element ‘ON EARTH’ of the contested sign will be understood by the part of the relevant public with a knowledge of English as the English phrase ‘on earth’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. For the remaining part of the public, this element has no meaning and is also distinctive.

Overall, the contested sign’s verbal elements, ‘HEAVEN ON EARTH’, would be understood by the part of the relevant public with a knowledge of English as referring to heaven made reality right now in life, a metaphorical way of referring to something that is ideal or a paradise. The expression might be used to emphasise that something is extremely pleasant or that it causes great joy.

The contested sign is composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal elements are more distinctive than the figurative elements.

The element ‘HEAVEN’ in the contested sign is the dominant element as it is the most eye-catching due to its size and position.

Visually, the signs coincide in ‘HEAVEN’; this component is found at the beginning of the earlier mark and is its most dominant element. It also constitutes the entire earlier mark. However, the signs differ in the words ‘ON EARTH’, which are not dominant, as explained above, and in the figurative devices, which, as also explained above, are of limited distinctiveness or even negligible.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

It is also important to consider that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left or the top of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /HEAVEN/, present identically in both signs, and placed at the beginning of the earlier mark, in which it is also the dominant element. It is also important to consider that this coinciding element constitutes the entire earlier mark. The pronunciation differs in the sound of the letters /ON-EARTH/ of the contested sign, which are not dominant and have no counterparts in the earlier mark.

Therefore, considering also that consumers tend to focus on the beginning of a sign when they encounter a trade mark, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public with a knowledge of English, as the signs will be associated with a similar meaning, they are conceptually similar to an average degree.

For the remaining part of the public, neither of the signs has a meaning; since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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5. Global assessment, other arguments and conclusion

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.

The applicant claims that the characteristics of the wines and the relevant markets for the opponent’s and the applicant’s products are different. This argument, however, is immaterial; the comparison in section a) above demonstrated that the goods are clearly identical.

The public’s degree of attention is deemed average. The signs are aurally similar to a high degree and visually similar to an average degree for the entire relevant public, and, for the part of the public with knowledge of English, they are even conceptually similar to an average degree. The earlier mark’s degree of distinctiveness is average.

Account is also 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 earlier mark ‘HEAVEN’ is fully included in the contested sign as its first verbal element. Furthermore, it is its most dominant element. The figurative elements of the contested sign are negligible or clearly less distinctive than the verbal elements, and the additional words ‘ON EARTH’ are visually less dominant and cannot compensate for the commonalities between the signs, which result from an element that plays an independent distinctive role in both signs.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

It should be borne in mind that the relevant goods are wines and, since these are frequently ordered in noisy establishments such as bars, 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. Therefore, the fact that in the present case the signs are aurally similar to a high degree is particularly relevant.

In its observations, the applicant argues that it has been using the contested sign in the market of the relevant territory since 2005 and that, therefore, the contested sign has safely coexisted with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 919 273. It follows that the contested trade mark must be rejected for all the contested goods.

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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

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Zuzanna STOJKOWICZ

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.