OPPOSITION No B 2 567 553

Binderer St. Ursula Weinkellerei GmbH, Mainzer Str. 186, 55411 Bingen am Rhein, Germany (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative)

a g a i n s t

Amaffi Ltd, Georgiou Fasoulioti 41, Marianiki Court, Flat/Office 102, 3090 Limassol, Cyprus (applicant), represented by Dentons Europe Aarpi, 5 boulevard Malesherbes, 75008 Paris, France (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 567 553 is upheld for all the contested goods, namely 

Class 33:        Alcoholic beverages (except beers).

2.        European Union trade mark application No 13 857 396 is rejected for all the contested goods. It may proceed for the remaining goods.

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

Preliminary remark:

On 08/04/2016, the opponent withdrew the opposition against goods in Classes 3, 14 and 34. Consequently, the opposition will proceed in relation to only Class 33.

.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 857 396, namely against all the goods in Class 33. The opposition is based on, inter alia, German trade mark registration No 30 513 687. 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 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 German trade mark registration No 30 513 687.

The applicant requested that the opponent submit proof of use of German trade mark registration No 30 513 687.

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 22/05/2015 The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany, from 22/05/2010 to 21/05/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based. The German earlier trade mark is based, among others, on the following goods:

Class 33:        Alcoholic beverages (except beers), in particular 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 05/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/11/2016 to submit evidence of use of the earlier trade mark. On 28/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• An affidavit signed by the opponent’s managing director, Mr Peter Binderer, showing the global turnover of wines labelled with the trade mark ‘D’AMATI’, from 2010 to 2015. The total sales per year exceed EUR 5 million. Sales by country such as the Czech Republic, Hungary, Latvia, Lithuania, the Netherlands and Germany are shown in a diagram.

• Fourteen invoices sent to German customers and four invoices sent to customers in the Czech Republic, Hungary and Latvia. They are dated from 2010 to 2016; four of them are dated after the end of the relevant period (21/05/2015). The mark ‘D’AMATI’ is shown either on its own or in expressions such as ‘D’AMATI Vino Rosso di Sicilia’, ‘D’AMATI Insolia Chardonnay’, ‘D’AMATI Rosato di Sicilia’, all of which are in relation to wine.

• Three undated pictures of wine bottles showing the mark ‘D’AMATI’.

• An excerpt from a report by Nielsen, entitled Wein Total Report, dated January 2016 and written in German. No translation has been submitted. Therefore, it is not possible to draw any conclusions from it.

• Excerpts from publications related to the wine market, dated from 2010 to 2015, mentioning the trade mark ‘D’AMATI’ and written in German with an English translation. The goods mentioned in relation to the mark are wines.

The invoices, the affidavit and the excerpts from publications submitted show that the place of use is mainly Germany, as well as other countries such as Latvia and the Czech Republic. This can be inferred from the language of the documents (e.g. German, in the case of the excerpts from publications), the currency mentioned (euros) and some addresses in the countries mentioned. Therefore, the evidence relates to the relevant territory.

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 there is continuity in the opponent’s sales, as those sales refer to a time very close to the relevant period. Moreover, most of the invoices, the global turnover shown in the affidavit and the excerpts from publications are dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The documents filed, namely the invoices, the affidavit and the excerpts from publications, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The evidence shows use of the mark in several Member States, in particular Germany.

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 use of expressions such as ‘D’AMATI Vino Rosso di Sicilia’ or ‘D’AMATI Rosato di Sicilia’ does not alter the distinctive character of the mark in the form in which it was registered, since the mark ‘D’AMATI’ is followed by terms that are mainly descriptive and indicate the type of wine or its origin.

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 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.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 33:        Wine.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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.

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 German trade mark registration No 30 513 687.

1. The goods

The goods on which the opposition is based are the following:

Class 33:        Wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wine. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 to be average.

3. The signs

D’AMATI	AMAFFI
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both signs are word marks.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Accordingly, the elements, ‘D’AMATI’ and ‘AMAFFI’, of which the marks are composed have no meaning for the relevant public and are, therefore, distinctive.

Although the earlier mark, ‘D’AMATI’, has no meaning as a whole, it cannot be disregarded that part of the relevant German public may perceive the mark as the shortened Italian or French preposition ‘DE’ (‘of’ in English) followed by a fanciful term or a foreign family name. In this context, it must be taken into account that the preposition ‘D’ ’ is often used in combination with proper names. In the present case, the preposition ‘D’ ’ is grammatically subordinate to the following word and therefore enhances the importance of ‘AMATI’.

The Opposition Division finds it appropriate to continue the examination of the present opposition in relation to the part of the relevant German public that perceives ‘D’ ’ as a shortened preposition and will pay attention to the word ‘AMATI’.

Visually, the signs coincide in the sequence of letters ‘AMA*I’. However, they differ in the letters ‘D’*T’ of the earlier mark versus the letters ‘FF’ of the contested sign.

Taking into account that the relevant public, in the case of the earlier mark, will concentrate its attention in the term ‘AMATI’, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /A*I/ and in the syllable /MA/, present identically in both signs. Moreover, it must be taken into account that the vowel sequence /A*I*A/ is the same in both signs. The pronunciation differs in the sound of the letters /D/ and /T/ of the earlier mark and in the sound of the double letter /F/ of the contested sign, which have no counterparts in the confronted mark.

For the same reasons stated in the visual comparison, the signs are similar to an average degree.

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

The goods at issue are identical.

The signs are visually and aurally similar to an average degree. The similarities lie in the fact that the signs have the sequence of letters ‘AMA*I’ in common. They differ in the initial letter ‘D’ followed by an apostrophe and the letter ‘T’ of the earlier mark, and in the double letter ‘F’ of the contested sign. Furthermore, the initial letter ‘D’ ’ will be perceived as the preposition ‘DE’ with an apostrophe, drawing the public’s attention to the following word, ‘AMATI’. Accordingly, the public will focus its attention on the words ‘AMATI’ versus ‘AMAFFI’. In this case, the signs have the majority of their letters in common and the vowel sequence /A*A*I/, and the main differences between the signs are in their endings, to which consumers pay less attention.

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).

It should be borne in mind that 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.

Furthermore, likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods. Accordingly, a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, the Opposition Division finds that the identity between the goods in question has sufficient weight to offset the differences between the signs.

Taking into account the average distinctiveness of the earlier sign and the identity of the goods, the Opposition Division considers that there is a likelihood of confusion because the differences between the signs are confined to secondary elements (a preposition in the case of the earlier mark) and aspects (the differing letters are placed at the end of the signs).

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public considered under section c) of this decision. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 513 687. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 30 513 687 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

Isabel DE ALFONSETI HARTMANN

Ignacio IGLESIAS ARROYO

Volker Timo MENSING

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.