OPPOSITION No B 2 574 864

Fratelli Branca Distillerie S.r.l., Via Broletto, 35, 20121 Milano, Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Senato, 8, 20121 Milano (MI), Italy (professional representative)

a g a i n s t

SC Alcorom SRL., Str. Principala, nr. 165, 447214 Martinesti, jud. Satu Mare, Romania (applicant), represented by Gabriel Dan Ivănescu, Str. Avram Iancu, nr 48A, sc. B, ap. 10, 500086 Brasov, Romania (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 574 864 is upheld for all the contested goods.

2.        European Union trade mark application No 13 718 341 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 13 718 341. The opposition is based on, inter alia, international trade mark registration No 419 778, designating Benelux, the Czech Republic, Germany, Spain, France, Croatia, Hungary, Austria, Portugal, Romania, Slovenia and Slovakia. The opponent invoked Article 8(1)(b) EUTMR.

The opposition is based several earlier rights. The Opposition Division finds it appropriate to first examine the opposition in relation to earlier international trade mark registration No 419 778, designating France.

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, inter alia, international trade mark registration No 419 778 ‘BRANCA’ (word mark), designating France.

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

The opponent argues that the proof of use request is inadmissible, because the applicant indicated, in its letter of 02/06/2016, that the evidence must show use of the opponent’s mark in relation to the contested goods. In that regard, the Opposition Division notes that whilst it is true that the applicant expressed the proof of use request by referring to the contested goods instead of the goods on which the opposition is based, the applicant’s request contains a clear reference to the provisions of Article 42(2) EUTMR as quoted above. Therefore, it is considered that the applicant made an explicit, unambiguous and unconditional request for proof of use, which was treated as such in the opposition proceedings.  

The contested application was published on 04/06/2015. The opponent was, therefore, required to prove that the trade mark on which the opposition is, inter alia, based was put to genuine use in France from 04/06/2010 to 03/06/2015 inclusive.

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, wines, spirits, liquors.

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 07/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/08/2016 to submit evidence of use of, inter alia, earlier international registration No 419 778, designating France. On 09/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• A selection of sample invoices issued by the opponent between 2010 and 2015. Out of the approximately 50 invoices submitted, six are addressed to a customer based in Paris, France. The relevant invoices are dated from 02/08/2010 to 04/06/2015 (one being outside of the relevant period) and show sales transactions involving a distilled alcoholic beverage (39% volume alcohol) referred to as ‘FERNET BRANCA’, among others. The unit prices are quite high. Depending on the volume of a bottle, the prices range between EUR 20 and over EUR 60. The physical volumes of sales per invoice range from tens of units to several thousands of units in varying volumes, exceeding 15.000 units in total. The monetary amounts are expressed in thousands of Euros, in several instances in tens of thousands of Euros. The total sales of these particular goods as shown in the evidence amount to EUR 489 790.

• Extracts from the opponent’s accounting records, showing the sales results from 2010 to 2015 in relation to alcoholic beverages under the trade marks ‘FERNET BRANCA’, ‘BRANCAMENTA’ and ‘STRAVECCHIO BRANCA’ in Germany, Finland, Spain, France, Sweden, Norway, the Netherlands, the United Kingdom, Portugal, Latvia, Greece, Iceland, Malta, Poland, the Czech Republic, Romania, Ireland, Hungary and Slovenia.

Six of the invoices submitted show that the place of use is France. This can be inferred from the customer-specific data indicated on the invoices. Therefore, the evidence contains sufficient indications regarding place of use.

Although one of the invoices is dated outside of the relevant period, the remaining five are dated well within the relevant period. As regards the invoice that is dated 04/06/2015, it has to be noted that it was issued on the day following the last day of the relevant period, which ended on 03/06/2015. Moreover, it is clear from the information included in the invoice that the sales were done as per an order placed on 16/04/2015, which is almost two months before the end of the relevant period.

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 of the relevant period confirms use of the opponent’s mark within the relevant period. This is because the relevant document refers to events (the production order) that took place within the relevant period.  

Therefore, the evidence contains sufficient indications regarding time 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 evidence, namely the invoices showing regular sales transactions involving high physical volumes of a distilled alcoholic beverage in each year of the relevant period, provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the opponent’s earlier mark.  

With regard to the territorial scope of use, it is noted that the invoices show commercial relations with one customer that is based in Paris, France, among other customers in other countries. Although the evidence suggests a commercial relationship with only one customer in the relevant territory, this factor has to be weighted in the context of the significant sales generated by the marketing of the distilled alcoholic beverage referred to as ‘FERNET BRANCA’. The quantities of the goods sold and the turnover figures are high. Also the relatively high price of the goods at issue, being for mass consumption, and the duration of the commercial relationship spanning the relevant period have to be taken into account. Moreover, the invoices are only examples which can be inferred from the non-consecutive numbering.

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).

In the present case, the relevant invoices leave no room for doubt that the use was public, outward and not merely token.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

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.

The invoices show that the opponent’s trade mark was used as a badge of commercial origin, in a trade mark sense. According to the product descriptions appearing on the invoices, use concerns a distilled alcoholic beverage referred to as ‘FERNET BRANCA’. In that regard it is recalled that the opponent’s earlier trade mark in question is the word mark ‘BRANCA’.

The term ‘FERNET’ is the name of a specific type of Italian amaro, a bitter, aromatic spirit. It can be reasonably assumed that the public in the relevant territory understands this meaning, as this word is rather commonly used on the market. Therefore, it is directly descriptive of the kind of alcoholic beverages, or more specifically spirits, liquors, invoked as the basis of the opposition. Since the term ‘FERNET’ is devoid of any distinctive character for the goods at issue, the addition thereof does not alter the distinctive character of the trade mark’s registered form.

In view of the above, the Opposition Division considers that the evidence shows use of the earlier mark essentially as registered.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the 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 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.

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 in relation to the trade mark ‘BRANCA’ proves use only for fernet. It can be considered to belong to an objective subcategory, namely bitters, included in each of the following broader categories: alcoholic beverages, spirits, liquors.

Therefore, the Opposition Division considers that the evidence shows genuine use of the opponent’s earlier trade mark only for bitters.

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

According to the conclusion drawn from the assessment of proof of use, the goods on which the opposition is based are the following:

Class 33:        Bitters.

The contested goods, after limitation, are the following:

Class 33:        "Rachiu" (Romanian fruit spirit), "tuica" (Romanian plum spirit), "palinca" (Romanian strong fruit spirit).

The opponent’s bitters show important commonalities with the contested goods, since they are all distilled alcoholic beverages and have the same nature and purpose. In that regard, it is irrelevant that the beverages have slightly differing alcohol content, contrary to what the applicant asserts. Even the more so, it is irrelevant that these beverages have different flavours. These goods are in competition and have the same methods of use (for instance, they can be consumed in cocktails, or served as a digestive). Although they do not originate from the same manufacturers and have somewhat different ingredients and production processes, these goods are directed at the same circles of public and move over the same distribution channels for instance specialised liquor stores, dedicated sections in supermarkets, ‘cash-and-carry’ outlets etc. The fact that ‘palinca’ is a protected geographical indication, as mentioned by the applicant, is incapable of altering the above findings. Therefore, the goods are highly similar.

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 relevant goods are directed at the public at large. The degree of attention is considered to be average.

The applicant argues in its observations that, since the contested ‘rachiu’, ‘tuica’ and ‘palinca’ are Romanian traditional beverages the majority of the relevant public for the contested goods consists of the Romanian consumers residing in Western Europe.

The Opposition Division notes that such considerations are not conclusive on their own, as the examination of the likelihood of confusion carried out by the Office is a prospective examination. For this reason, specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58). Therefore, the applicant’s arguments in that regard must be set aside.

3. The signs

BRANCA	BRAN
Earlier trade mark	Contested sign

The relevant territory is France.

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 words ‘BRANCA’ and ‘BRAN’ have no clear meaning in French. There are no identifiable components in the signs either. The relevant public will perceive them as fanciful terms with an average degree of distinctiveness. It follows that a conceptual comparison between the signs is not possible, thus the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the contested sign is fully included in the earlier mark. The signs only differ in the earlier mark’s letters ‘CA’ which are added to the shared letter sequence. Although in French the letter ‘N’ will render the vowel placed before it nasal and will not be clearly audible as such, the same effect will occur equally in the pronunciations of both signs.

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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that the shared letters are immediately recognisable in the initial part of the earlier mark has to be taken into account.

Moreover, the contested sign, being a mono-syllable word, coincides with the first syllable of the earlier mark.

As the shared letter/sound sequence is longer than the differing letters/sounds in the ending of the earlier mark and in the absence of any further differentiating factors, 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 has no meaning for 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 contested goods are similar to a high degree to the goods on which the opposition is based. The signs show an average degree of similarity both visually and aurally, without this impression being altered by any conceptual perception.

Based on the average degree of inherent distinctiveness of the earlier mark and taking into account the well-settled case-law that the average consumers only rarely have the chance to directly compare two trade marks and instead must rely on the imperfect recollection of those marks (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), it is considered that the differences identified between the signs are insufficient to enable the relevant public to safely distinguish between them, especially since the public’s attentiveness when choosing the goods at issue will not be enhanced.

In addition, it is important to bear in mind that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, the average degree of similarity between the signs is counteracted by the high degree of similarity between the goods at issue.

The applicant argues that there is a very long tradition of making the fruit spirits covered by the contested application which are named after the owner of the applicant’s company. The applicant registered the trade mark ‘Palinca BRAN’ in Romania in 2004. Moreover, the applicant has obtained traditional product certificates for ‘Rachiu BRAN’, ‘Tuica BRAN’ and ‘Palinca BRAN’, and has received a number of awards for its products. The applicant submitted various pieces of evidence to support these claims.

In that regard, the Opposition Division notes that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The assessment of likelihood of confusion is limited to the trade marks in question in the form that they are registered or applied for registration. Thus the applicant’s assertions that the bottles and the labels of the Romanian traditional spirit drinks produced by the applicant are completely different from those of the liquors produced by the opponent are irrelevant. What has to be taken into account are the word marks as compared in section c) of this decision. Therefore, the applicant’s arguments must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public and the opposition is well founded on the basis of the opponent’s international trade mark registration No 419 778, designating France. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier international trade mark registration No 419 778 designating France 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). Furthermore, there is no need to examine proof of use submitted by the opponent in relation to the other earlier rights.

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

Michele M. BENEDETTI ALOISI

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.