OPPOSITION No B 2 537 408
Altia Latvia SIA, Kuldīgas iela 36a, Riga, 1083, Latvia (opponent), represented by Intelektuālā Īpašuma Juridiskā Firma Latiss, 44 Stabu Str. Office 21, Riga, 1011, Latvia (professional representative)
a g a i n s t
Podere Castorani S.R.L., Via Castorani 5, 65020 Alanno (PE), Italy (applicant), represented by Bugnion S.P.A., Via Sallustiana, 15, 00187 Roma, Italy (professional representative).
On 26/01/2017, the Opposition Division takes the following
1. Opposition No B 2 537 408 is upheld for all the contested goods.
2. European Union trade mark application No 13 854 138 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 854 138. The opposition is based on Latvian trade mark registration No M 46 060. 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 shall 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 shall be rejected.
The applicant requested that the opponent submit proof of use of earlier Latvian trade mark registration No M 46 060 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 26/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Latvia from 26/03/2010 to 25/03/2015 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 beer).
According to Rule 22(3) EUTMIR, the evidence of use shall 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 12/02/2016, in accordance with Rule 22(2) EUTMIR, the Office gave the opponent until 24/04/2016 to submit evidence of use of the earlier trade mark. On 22/04/2016, within the time limit, the opponent submitted evidence of use.
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 such data.
- Annex 1: a written statement in Latvian with a translation of it into English, dated 18/04/2016 and signed by Normunds Ozoliņš and Līga Kalcenaua, representing Altia Latvia SIA (the opponent), stating that the opponent is one of the largest alcoholic beverage distributors in Latvia and that it carries out the supply and sale of a wide range of alcoholic beverages, including the fruit wine ‘AMORINI’. The statement contains information on the opponent’s company figures, namely a table with sales volume figures for 2010–2015 and a table with the market share of the opponent’s ‘AMORINI’ wine during the same period.
- Annex 2: two undated photographs of a bottle of aromatised wine with the sign and indications about the product and the distributor in Latvian, with translations of them into English.
- Annex 3: a set of 182 non-consecutive waybills, dated between 09/03/2010 and 11/03/2015 (around three waybills are submitted for each month in the years in question), listing Altia Latvia SIA (the opponent) or the companies Mobil Plus ADV SIA and Mobil Plus SIA, all of which have addresses in Riga, Latvia, as the consignor of the goods. The waybills are issued to various entities with addresses in different Latvian cities and towns as the consignees. The documents refer to, inter alia, goods indicated as ‘AMORINI BIANCO (APERIT)’ and demonstrate sales of several bottles of wine per waybill.
- Annex 4: decisions of state authorities, dated 18/03/2015, confirming the merger and change of names of the companies Mobil Plus ADV SIA and Mobil Plus SIA to Altia Latvia SIA (the opponent), demonstrating that these companies are the same legal entity.
- Annex 5: three written statements in Latvian with translations of them into English, dated 22/03/2016 and 24/03/2016 and signed by representatives of the companies Garisones SIA, Interfive SIA and Lekon SIA, all of which have addresses in Latvia, stating that these companies purchased the alcoholic beverage ‘AMORINI’ from the opponent in the period 2010–2015 to trade the goods in Latvia.
As far as the written statements are 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 written statements are supported by the other items of evidence.
Place of use
The documents submitted demonstrate that the place of use is Latvia. The waybills are in Latvian and were issued directly by the opponent (a Latvian company) to different entities with addresses in Latvia.
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, namely Latvia.
Time of use
Most of the evidence, including the vast majority of the waybills, is dated within the relevant period (from 26/03/2010 to 25/03/2015 inclusive). Furthermore, the opponent also submitted undated photographs of products. These documents have to be seen in conjunction with the dated evidence and, therefore, may still be taken into consideration. Therefore, the evidence of use sufficiently indicates the time of use.
Extent of use
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 assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The documents filed, in particular the waybills, supported by the written statements from the opponent’s clients and the photographs, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.
The evidence submitted by the opponent to prove genuine use of the earlier mark relates to, inter alia, the distribution of goods with the earlier mark to different resellers in Latvia, that is, in the relevant territory. Bearing this in mind, the Opposition Division observes that the evidence submitted sufficiently demonstrates that there has been public and outward use of the mark. Outward use does not necessarily imply use aimed at end consumers. For instance, the relevant evidence can validly stem from an intermediary, whose activity consists of identifying professional purchasers, such as distribution companies, to whom the intermediary sells products it has had manufactured by original producers (21/11/2013, T-524/12, RECARO, EU:T:2013:604, § 25-26).
The waybills submitted are commercial documents that demonstrate registrations of transactions and means of payment, orders and confirmations thereof. These documents relate to the full duration of the relevant period and prove the frequency of use of the mark throughout the relevant period. They refer to the distribution of aromatised wine under the mark ‘AMORINI’ and provide information about the quantities of goods distributed, which gives sufficient indications about the steady commercial volume of use. Use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the fact that the waybills are non-consecutive must also be taken into consideration. From this, it can be inferred that these documents have been submitted merely as examples of sales and do not represent the total sales of goods under the earlier mark realised by the opponent during the relevant period. It is clear from the evidence that the opponent distributed goods bearing the earlier mark in the relevant market. This gives the Opposition Division sufficient information regarding the commercial activities of the opponent in the relevant period. In any case, the documents prove that use of the mark has been more than mere token use.
Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.
Nature of use
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 shall 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.
The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is 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).
It is appropriate to consider whether the mark as used contains differences from its registered form that would affect its distinctive character or, in spite of some differences, the mark as used and its registered form are essentially the same.
The earlier trade mark consists of the distinctive verbal element ‘AMORINI’. The mark is used as registered in the references to the goods at issue in the text of the waybills, and is followed by additional word elements used with the sign ‘AMORINI’, such as ‘BIANCO’ and ‘APERIT’. It is clear that these indications are used to designate the kinds of products offered by the opponent under the mark ‘AMORINI’. On the photographs, the element ‘AMORINI’ is shown in rather standard bold white letters on a blue background.
The depiction of the word ‘AMORINI’ in the way described above, , constitutes an acceptable means of bringing the mark in question to the public’s attention and, consequently, does not affect the distinctiveness of the verbal element ‘AMORINI’, which has been registered as a word mark.
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)(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, the evidence submitted by the opponent is sufficient to prove 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 earlier trade mark for all the goods covered by that 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 shall, 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.
According to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
In the present case, the evidence proves use only for aromatised wine. These goods can be considered to form an objective subcategory of alcoholic beverages (except beer), namely aromatised wine. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for aromatised wine.
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 goods
The goods on which the opposition is based and for which use has been proven are the following:
Class 33: Aromatised wine.
The contested goods are the following:
Class 32: Beer and brewery products.
Class 33: Alcoholic beverages (except beer).
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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.
Contested goods in Class 32
The contested beer and brewery products and the opponent’s aromatised wine in Class 33 have certain points in common. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the same general public. They can be served in restaurants and in bars and can be found in the same sections of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings. Therefore, the goods under comparison are considered similar.
Contested goods in Class 33
The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s aromatised 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.
- 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 are directed at the public at large. The degree of attention is deemed to be average.
- The signs
Earlier trade mark
The relevant territory is Latvia.
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 the word mark ‘AMORINI’.
The contested sign is a figurative mark, consisting of the verbal element ‘AMORINO’ in rather standard white letters, above which is a figurative element in gold or yellow, consisting of a fanciful, ornamental crown-like device and a winged figure, resembling a cupid. The verbal and figurative elements of the contested sign are depicted against a brown rectangular background.
The earlier mark, ‘AMORINI’, and the verbal element of the contested sign, ‘AMORINO’, do not exist as words for the relevant Latvian-speaking public. Nevertheless, the relevant public is likely to associate the beginning of both verbal elements, ‘AMOR’, with the Roman god of love, ‘Amors’ in Latvian. Therefore, the relevant public will associate the verbal elements of the marks with the concept of ‘love’.
The figurative element of the contested sign will be perceived as an ornamental device, depicting a crown or some other kind of jewellery and a cupid.
The meaningful elements of the marks under comparison do not describe or allude to any of the goods’ essential characteristics and are, therefore, of average distinctiveness.
Neither of the marks has any elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘AMORIN*’, present in both marks. The letters that the marks have in common are at the beginning of their verbal elements, which is the part that consumers generally tend to focus on when they encounter a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
The marks differ in the final letters of their verbal elements, namely ‘I’ in the earlier mark and ‘O’ in the contested sign.
They also differ in the additional figurative elements and stylisation of the contested sign, which have no counterparts in the earlier mark. However, it should be noted that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This principle is fully applicable to the present case, since the relevant public will clearly perceive the verbal element ‘AMORINO’ in the contested sign and will readily use it to refer to the mark.
Therefore, considering the commonality between the initial letters of the earlier mark, ‘AMORINI’, and the verbal element of the contested sign, ‘AMORINO’, the marks are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AMORIN*’, present identically in both signs, and differs in the sound of their final letters, namely ‘I’ in the earlier mark and ‘O’ in the contested sign, which are vowels in both cases. The marks are composed of the same number of syllables (four syllables) and, therefore, they have the same rhythm and length. Therefore, the signs are aurally similar to a high degree.
Conceptually, as seen above, the public in the relevant territory will perceive the earlier mark, ‘AMORINI’, and the verbal element of the contested sign, ‘AMORINO’, as being related to ‘love’. The figurative element of the contested sign will be perceived as a crown-like device or other ornamental device, containing a cupid, which may be associated with the concept of ‘love’ already present in the sign, since the cupid is commonly used to express the idea of love in a metaphorical or symbolic sense.
Consequently, the marks are conceptually similar to a high degree, as they have in common the concept of ‘love’, which is inherently distinctive in relation to the goods at issue.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods under comparison are identical and similar. The signs are visually similar to an average degree and aurally and conceptually similar to a high degree on account of the letters that they have in common, namely ‘AMORIN*’, present identically in the distinctive earlier word mark, ‘AMORINI’, and in the distinctive verbal element of the contested sign, ‘AMORINO’. The element ‘AMORINO’ in the contested sign is the only verbal element of that mark, which, contrary to the applicant’s arguments, will have a stronger impact on the consumer than the figurative components.
Account must also be taken of the fact that similarity on the phonetic level may have more weight than similarity on the visual level when the goods at issue are traditionally ordered orally. In the present case, the goods in question are alcoholic drinks and, in the places where these goods are consumed, for example bars and restaurants, they are ordered orally. The phonetic perception of the signs may also be influenced by an increased noise factor, such as the likely presence of various other sounds perceived simultaneously by the recipient of the order. Therefore, it is appropriate to attribute increased importance to the phonetic similarity between the signs under comparison.
Consequently, taking into account all the relevant factors, the marks under comparison convey similar overall impressions.
Therefore, considering that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion for the relevant consumers for identical and similar goods due to the visual, aural and conceptual similarities between the signs and the fact that the degree of attention of the relevant consumers in relation to the goods at issue will be no higher than average.
Therefore, the opposition is well founded on the basis of the opponent’s Latvian trade mark registration No M 46 060. It follows that the contested trade mark must be rejected for all the contested goods.
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
Octavio MONGE GONZALVO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.