OPPOSITION No B 2 509 886
Comissão de Viticultura da Região dos Vinhos Verdes, Rua da Restauração, 318, 4050-501 Porto, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)
a g a i n s t
Yealands Estate Wines Ltd., 534 Seaview Road, Seddon, Marlborough 7285, New Zealand (applicant), represented by Lynde & Associes, 5, rue Murillo, 75008 Paris, France (professional representative).
On 27/06/2017, the Opposition Division takes the following
- The decision adopted by the Opposition Division on 05/12/2016 is hereby revoked and replaced by the present decision.
- Opposition No B 2 509 886 is rejected in its entirety.
- The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods (in Class 33 Wines) of European Union trade mark application No 13 641 477 (word mark: “GREENSHELL”). The opposition is based on Portuguese trade mark registration No 140 300 for the word mark ‘VINHO VERDE’, international trade mark registration No 391 849 for the figurative mark “” designating Benelux, the Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Romania, Slovenia and Slovakia, Portuguese designation of origin No 10 ‘AGUARDENTE DE VINHO DA REGIAO DOS VINHOS VERDES’ and Portuguese designation of origin No 3 ‘VINHO VERDE ‘. The opponent invoked Article 8(1)(b), 8(5) and 8(4) EUTMR.
REVOCATION OF DECISION OF 05/12/2016
On 20/01/2017, the Office informed the parties in the present proceedings that it intended to revoke the decision of 05/12/2016 taken in opposition proceedings No B 2 509 886.
The reason was that the proceedings that had led to this decision contained an obvious error attributable to the Office, namely that the Office stated that the opponent had not submitted or cited the relevant national law as required by Article 8(4) EUTMR; however, this was not in fact necessary because the earlier right was a PGI.
In accordance with Article 80 EUTMR, the Office gave the parties two months to submit any observations. Neither party filed any observations in response.
Therefore, the decision taken on 05/12/2016 in opposition No B 2 509 886 is revoked.
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 international trade mark registration No 391 849 designating Benelux, the Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Romania, Slovenia and Slovakia.
- The signs
Earlier trade mark
The relevant territories are Benelux, the Czech Republic, Germany, Spain, France, Italy, Hungary, Austria, Romania, Slovenia and Slovakia.
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 contested sign is a word mark, and word marks are protected in all different typefaces. The earlier trade mark consists of the words ‘VINHO VERDE’ written next to each other in a bold typeface above the smaller word ‘PORTUGAL’.
The element ‘PORTUGAL’ of the earlier sign will be perceived as an indication of geographical origin. Bearing in mind that the relevant goods are green wine, that is, a type of Portuguese wine, this element is non-distinctive for these goods.
The element ‘VINHO’ of the earlier sign will be perceived as a reference to wine products, namely by the Italian-, Spanish-, Czech-, Slovakian- and Slovenian-speaking parts of the public (as, in these languages, the word for wine is ‘vino’). Bearing in mind that the relevant goods are green wine, this element is non-distinctive for these goods. For the remaining part of the public, it has no meaning.
The element ‘VERDE’ of the earlier sign will be perceived by at least part of the relevant public as a reference to the colour green, for example by Italian speakers (as, the word is identical in Italian, ‘verde’) and French speakers (as the French word for green is ‘vert’). Bearing in mind that the relevant goods are green wine, this element is non-distinctive for these goods. For the remaining part of the public, it has no meaning.
The element ‘GREEN’ of the contested sign will be perceived as a basic English word denoting the colour green. Bearing in mind that the relevant goods are green wine, this element is non-distinctive for these goods.
The earlier mark has no elements that could be considered clearly more dominant than other elements.
Visually, the earlier mark is a figurative mark formed of three words, ‘VINHO’, ‘VERDE’ and ‘PORTUGAL’, in standard upper case letters, with the word ‘PORTUGAL’ slightly smaller than and positioned underneath the words ‘VINHO VERDE’. In contrast, the contested mark is formed of the word ‘GREENSHELL’. Therefore, the signs are visually dissimilar.
Aurally, the signs are pronounced in accordance with the pronunciation rules of each of the relevant languages. The earlier sign consists of 18 letters and 3 separate words, while the contested sign consists of 10 letters and 1 word. The signs do not have any syllables in common and do not have the same number of words or the same length, and, therefore, they will be pronounced differently, irrespective of the different pronunciation rules of the relevant languages. Therefore, the signs are aurally dissimilar.
Conceptually, for the part of the public that understands the word ‘VINHO’ of the earlier trade mark, the signs are not similar. However, this cannot be taken into account, because this element is non-distinctive for that part of the public. The same applies to the non-distinctive element ‘PORTUGAL’ of the earlier trade mark. The only elements of the signs that coincide in their meaning, although in different languages (‘VERDE’ and ‘GREEN’), are also non-distinctive for a part of the public. Therefore, they cannot be taken into account in the conceptual comparison either. For the rest of the public, there are no elements that could create conceptual similarities. The contested mark will be seen as a whole, so the public will understand it as ‘GREENSHELL’ or not at all. Since this word is meaningless, it has no impact on the conceptual comparison.
As the signs coincide in only irrelevant aspects, they are dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Contrary to the opponent’s opinion, this finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
Given that the opposition is not well founded under Article 8(1)(b) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
The opponent has also based its opposition on earlier Portuguese trade mark registration No 140 300 for the word mark ‘VINHO VERDE’. Since this mark has the same elements as the one that has been compared above and the perception of the Portuguese consumers would be the same, the outcome cannot be different.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
• The signs must be either identical or similar.
• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08, & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
As the signs coincide only in irrelevant aspects, they are dissimilar.
As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C 552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).
NON REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
• Portuguese designation of origin No 3 ‘VINHO VERDE;
• Portuguese designation of origin No 10 ‘AGUARDENTE DE VINHO DA REGIAO DOS VINHOS VERDES’;
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:
• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;
• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;
• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.
Furthermore, even if the Office were to consider the above cited requirements under the relevant regulations fulfilled, the sign ‘VINHO VERDE’ is dissimilar to the contested sign under Article 8(1)(b) EUTMR. Under that Article, the other sign, ‘AGUARDENTE DE VINHO DA REGIAO DOS VINHOS VERDES’, is – taking into account the additional words – just as dissimilar to the contested sign as the sign ‘VINHO VERDE’; therefore, the outcome cannot be in favour of the opponent. Even considering the proof of use in the course of trade of the appellation of origin, the contested sign ‘GREENSHELL’ does not evoke or imitate the appellation of origin and, therefore, Article 8(4) EUTMR does not apply. The same applies with regard to ‘VINO VERDE’, which has already been examined above. ‘Verde’ is a non-distinctive element and only the combination ‘vinho verde’ is protected. The fact that the word ‘PORTUGAL’ is missing does not lead to a different conclusion, since it is non-distinctive.
This result corresponds with the content of the decision of the Boards of Appeal in 05/02/2016, R 476/2015-5, Doroverde/Vinho Verde et al..
Therefore, the opposition is not well founded under Article 8(4) EUTMR.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.