OPPOSITION No B 2 632 373

Masia Serra, S.L., Mare De Deu De Montserrat, 2, 2. 3., 17600 Figueres (Girona), Spain (opponent), represented by Sonia Del Valle Valiente, c/ Miguel Angel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

Andreas Oster Weinkellerei KG, Weingartenstr. 1, 56812 Cochem, Germany (applicant), represented by Rechtsanwälte Rohwedder & Partner, Kaiserstr. 74, 55116 Mainz, Germany (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 632 373 is upheld for all the contested goods.

2.        European Union trade mark application No 14 691 091 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 14 691 091. The opposition is based on Spanish trade mark registration No 2 681 013. The opponent invoked Article 8(1)(a) and (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 27/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 27/10/2010 to 26/10/2015 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:        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 30/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/11/2016 to submit evidence of use of the earlier trade mark. Following a request by the opponent, the time limit was extended until 30/11/2016. On 04/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Printouts from the opponent’s website (http://en.masiaserra.com), in English, providing brief information on its wine cellar. They list, inter alia, wines bearing the indications ‘IO 2012’, ‘IO 2013’ and ‘IO 2013- MAGNUM’, which appear on the bottle or in the text in relation to wine produced by the opponent.
• Excerpts from brochures that appear to originate from the opponent, having text in Spanish, English and Catalan. They depict bottles of wine, with the following signs appearing either on the labels of bottles or alongside the depiction of the bottles:  (partial), , ,  and . The brochures also refer to the sign ‘IO’ either individually or in combination with numerals, such as 2011, 2012 and 2013, in relation to wine. Further information is provided about the alcohol content, the volume of the bottle (75 cl) and the opponent’s name as the producer. The materials point to the years 2007, 2008, 2009, 2011, 2012 and 2013.
• An excerpt from a magazine, undated, listing ‘IO 07’ in third place in what appears to be a ranking of wines.
• A certificate in Catalan, dated 21/09/2016, along with a list of wines. The certificate and the list appear to originate from ‘EMPORDÁ Consell Regulador De La Denominació D’Origen’. The opponent explains that the certificate provides information that the said wine belongs to the Denomination of Origin ‘Empordá’. ‘2007 Masia Serra Io’ appears in the list of wines. The opponent also submits a printout from www.doemporda.cat, dated 08/07/11, containing what appears to be a list of wines, inter alia, ‘2007 Masia Serra Io’.
• Printouts from www1.agenciatributaria.gob.es, in Spanish, bearing a date of printing of 13/02/2015, from what appears to be an electronic system for obtaining information on the movement of goods for which special taxes are paid. The name of the product ‘MASIA SERRA-IO’ appears on some of the pages. The opponent explains that the excerpts show that the producer of the wine branded ‘IO’ has ‘paid the tax control to export wine’.
• A brochure in Danish, dated 09/11/2011, and depicting a wine menu including, inter alia, IO 2007.
• Ten invoices, dated between 24/05/2011 and 20/03/2015, and two invoices, dated outside the relevant timeframe. The invoices referring to the relevant period were issued by the opponent, in Catalan or English, to companies in Spain (Barcelona and Figueres), Switzerland and the Netherlands for cases (boxes) of bottles of, inter alia, the following products: ‘IO 2007’, ‘IO 2008’ and ‘IO 2011’. On some of the invoices the volume of the bottle (75 cl) is also provided. The amount invoiced regarding the pointed goods varies between over EUR 200 (over 30 bottles) and over EUR 1 900 (over 300 bottles) per invoice.

Preliminary remarks

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR).

However, taking into account the nature of the documents that have not been translated and the link between them, they are considered relevant to the present proceedings. It is true that some of the submitted materials are in Spanish, Catalan and Danish; however, some of them also contain corresponding text in English and, for the others, reference can be made to the images and names of the products and the signs depicted. Furthermore, the invoices submitted, although some of them are in Catalan, are structured in the same way as the invoices in English, which provides sufficient indication of how the invoice should be read. The invoices refer to the names of products, images of which are given in the submitted printouts, and thus the nature of the product can be understood. Therefore, the Opposition Division considers that there is no need to request a translation.

Furthermore, 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.

Place of use

The evidence shows that the place of use is Spain. This can be inferred from the languages of a large number of the documents (Spanish and Catalan), the currency mentioned (euros) and some addresses in cities in Spain (Barcelona and Figueres).

Some of the invoices issued by the opponent are also addressed to companies in Switzerland and the Netherlands.

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. This applies by analogy to national trade marks.

The evidence shows that the goods (wines) were developed in Spain and some of them were sold in Switzerland and the Netherlands. This clearly shows that the goods were exported from the relevant territory for these particular cases. 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.

Therefore, the evidence relates to the relevant territory.

Time of use

Ten of the invoices, most of the submitted printouts, the Danish brochure and some of the presentation material are dated (or refer to dates) within the relevant period. It is, therefore, concluded that the submitted evidence suffices to demonstrate that the use was made in the relevant timeframe.

Extent of use

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).

The invoices submitted provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use, as they indicate quantities that are not in any way insignificant and that were sold throughout a period of almost four years in the relevant timeframe in Spain, as well as indicating export of the goods.

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.

Use as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between the goods (wines) and the opponent. The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Use of the mark as 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.

In the present case, the invoices submitted depict the earlier right as registered, but with some additional indications, such as the indication of the year (2010, 2011, 2012). However, these additions are commonplace for the relevant goods, as they usually indicate that the wine comes from the grapes harvested that year (or the year of production) and are therefore descriptive.

The same signs used on the invoices are also used on the rest of the submitted evidence, with some additional indications, such as ‘IO 2013- MAGNUM’ or ‘MASIA SERRA-IO’. The use of additional indications (e.g. ‘MAGNUM’) is not an uncommon business practice, as a certain product can have different varieties, and these may need to be indicated to facilitate communication between the trading parties. Companies commonly use a single trade mark for a whole product type or range and produce sub-brands for separate lines of products within this range. It is also common for the name of the producer to be added (‘MASIA SERRA’ in this case). The additional indications do not alter the fact that the earlier trade mark is clearly used in the submitted material. Furthermore, it is clear that the invoiced goods (in bottles of a certain volume) correspond to those depicted in the rest of the evidence submitted, as the same indications of the products are used throughout the evidence.

The evidence submitted also depicts signs, such as ,  and . In its submissions, the applicant argues that these signs do not show the use of the mark as registered, as they will be perceived as sequences of numbers.

The sequence used on the submitted material indicates certain years (2011, 2012 and 2013), which will clearly be perceived as a year reference, because consumers are accustomed to seeing year indications (as explained above) in relation to the relevant goods. The consumers of these goods will even search for this information, as it often indicates the quality of the wine and justifies the price (as many wines improve with age).

Furthermore, the earlier mark is clearly depicted in a rather standard typeface on the labels of the bottles as well as on the submitted invoices. Even if the upper case letters ‘IO’ could resemble the number ‘10’, this is not a justification for the opponent to be stripped of protection, as the sign is clearly recognisable on all the submitted evidential material. In addition, the letter ‘I’ is depicted in a different way from the numeral ‘1’, as can be seen in the examples above (e.g. ). Furthermore, on most of the material submitted in which the signs listed above are depicted, there is also text in regard to wines including the sign ‘IO’ (word) either on its own or with the year. Therefore, the applicant’s argument has to be set aside.

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.

Use in relation to the registered goods

The evidence shows that the mark has been used as registered for the registered goods, namely wines.

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.

The contested goods are the following:

Class 33:        Wine.

The contested wine is the singular form of the opponent’s wines. The goods 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

IO	io!
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 the earlier mark and the contested sign are word marks, the first one consisting of the sole element ‘IO’ and the contested one consisting of the sole element ‘io!.’ In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial.

The element ‘IO’ of the earlier mark has no particular meaning for the relevant public and is, therefore, distinctive.

The element ‘io!’ of the contested sign has no particular meaning for the relevant public; however, the exclamation mark will be perceived as such, namely as the punctuation mark used after an exclamation (to draw attention to it). The element ‘io!’ of the contested sign is distinctive for the relevant goods.

Visually, the signs coincide in the letters ‘IO’, which are the only letters in both signs. They differ in the exclamation mark of the contested sign, which has no counterpart in the earlier mark.

Taking into account what has been said above about the distinctiveness of the elements of the signs, the signs are considered visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛IO’, present identically in both signs. The exclamation mark, being a punctuation sign, is unlikely to be pronounced.

It follows that the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Even though the exclamation mark will be interpreted as such, it does not add any particular 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 (and even identical) 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

As has been concluded above, the contested goods are identical to the opponent’s goods. The degree of attention will be average when choosing the relevant goods.

Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. It was also established above that the signs are visually similar to a high degree and aurally identical, due to the commonalities between the sequences of letters ‘IO’. The signs differ in the exclamation mark of the contested sign.

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, as the signs in question are aurally identical.

Therefore, due to the commonalities between the signs, deriving from their high visual similarity and aural identity, when consumers encounter the signs at different times, they may assume that the goods in question have the same origin or at least economically linked origins.

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 Spanish trade mark registration No 2 681 013. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

André Gerd Günther BOSSE

Irina SOTIROVA

Loreto URRACA LUQUE

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.