OPPOSITION No B 2 615 139

Cesari s.r.l., Via Stanzano, 1120, 40024 Castel San Pietro Terme (Bologna), Italy (opponent), represented by Elena Marangoni, Viale Felice Cavallotti 3/A, 35124 Padova, Italy (professional representative)

a g a i n s t

Bodega Cooperativa de Pinoso, R.L.Coop. V., Pº de la Constitución, 82, 03650 Pinoso (Alicante), Spain (applicant), represented by PADIMA, Calle Gerona, 17, 1º A-B, 03001 Alicante, Spain (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 615 139 is partially upheld, namely for the following contested goods and services:

Class 32: Beer; Beer wort; Grape must, unfermented; Mineral water [beverages]; Aerated water.

Class 33:         Alcoholic beverages (except beer); Wine.

Class 35:         Wholesale services in relation to alcoholic beverages (except beer); Retail services in relation to alcoholic beverages (except beer); Wholesale services in relation to beer.

2.        European Union trade mark application No 14 462 287 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 462 287. The opposition is based on European Union trade mark registration No 826 818. The opponent invoked Article 8(1)(b) and Article 8(5) 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 27/08/2015. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 27/08/2010 to 26/08/2015 inclusive.

Furthermore, the evidence must show use of the trade mark, CA’ GRANDE, for the goods on which the opposition is based, namely the following:

Class 33:        Alcoholic beverages (except beers).

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.

After a request of an extension of time, on 23/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/11/2016 to submit evidence of use of the earlier trade mark. On 09/11/2016, 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.

The evidence to be taken into account is the following:

• Document 1: some extracts from the internet showing the results in images after searching for ‘cà grande wine’ (April 2016), an extract obtained from the opponent’s website (www.umbertocesari.it) showing a bottle of wine bearing the trade mark and the technical specifications of the product (April 2016), some extracts from the website www.vivino.com showing some images of a bottle of wine bearing the trade mark together with the indication ‘Sangiovese Superiore’  and the price (April 2016), an extract from the website www.wine-searcher.com showing a bottle of wine bearing the trade mark and information about the merchant selling this wine in Germany and the price (undated);
• Documents 2-7: Catalogues of the opponent’s products for the years 2008, 2009 and 2012 to 2015, with the content in Italian and English, showing, among others, a bottle of wine bearing the label  and specifying the sales conditions ‘for orders and deliveries outside Italy’ and some important facts and numbers of the opponent’s products (e.g. bottles sold);
• Document 8: some extracts from the opponent’s website (September 2016) about the wine ‘Sangiovenese DOC Superiore Ca’ Grande / Umberto Cesari’ and showing some images of the bottles bearing the label referred above, being available through the ‘e-shop’;
• Documents 9-12: some extracts from third parties’ websites where the trade mark is advertised and providing the ‘seller information’ and price, in Italy (www.roccadelvino.com, www.supercarnigollinelli.it and www.winesearcher.com) and Germany (www.televino.de) (November 2016);
• Documents 13-18: samples of advertising material, technical prints and articles on the product: (Doc. 13) a poster of the wine, (Doc. 14) technical specifications of the wine, (Doc. 15) gift pack catalogue (undated), (Doc. 16) an article from an Italian publication advertising the wine ‘CA’ GRANDE’ (January 2016), (Doc. 17) an article in Italian appeared on the magazine ‘Ville & Casali’ about the opponent and its products, mentioning the trade mark (2016), (Doc. 18) a flyer in Italian, French and English about the opponent’s products and showing the wine bearing the label shown above (undated);
• Documents 19-31: some extracts showing the participation of the opponent in the yearly presentations of the winery at the spirits fairs: Vinitaly in Italy (2014, and 2015), Prowein in Germany (2013 to 2016), Vinexpo in France (2015. Some images are provided showing the trade mark at the Prowein stand (Doc. 24) and some images of the stand showing the bottle bearing the label (undated).
• Document 32: an article in the Finnish magazine ‘Viniklubi’ (undated) showing some bottles of wine, among those, the wine bearing the label;
• Document 33: an article in the Finnish publication ‘Fabsy’ (December 2011) showing an image of the product bearing the label;
• Document 34: a Finnish wine blog (www.viinipiru.fi) describing the qualities of the wine ‘CA’ GRANDE Superiore’ (printed September 2016);
• Documents 35-37: some undated images of a wine-testing event showing bottles of wine bearing the label;
• Document 38: an advertising page of the opponent’s products in Dutch showing the bottle of wine bearing the label (undated);
• Document 39: sales turnovers and number of bottles of the wine ‘CA’ GRANDE’ sold in some Member States (2011 to 2016);
• Document 40: 20 invoices issued from 2011 to 2016 (17 within the relevant period) to clients in various Member States (Austria, Sweden, Germany, Netherlands, Finland, France and Belgium), showing the wine reference ‘CESASU’, specifying the product as ‘ROMAGNA/SANGIOV. DOC SUP. 750ML ROMAGNA/SANGIOVENESE DOC SUPERIO VINO ROSSO 12,50% VOL’ and indicating the quantity and price.

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). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, some advertising pages and articles (in Finnish and Dutch), as well as the invoices (in Italian), and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The catalogues, the sales turnovers and the invoices show that the trade mark has been used in various Member States and, therefore, the place of use is the European Union. This can be inferred from the languages used in the catalogues, Italian and English, and the specification of the sales conditions ‘for orders and deliveries outside Italy’, the currency mentioned in the documents (Euros) and some addresses of clients in various Member States (Austria, Sweden, Germany, Netherlands, Finland, France and Belgium). Therefore, the evidence relates to the relevant territory.

The applicant also argues that many of the documents are outside the relevant period of time. Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. In particular, the catalogue of the opponent’s products for the year 2008 (prior to the relevant period), the advertising material, technical prints and articles about the product bearing the trade mark printed on 2016, as well as some invoices issued on 2016 (after the relevant period), show that the trade mark has been used also very close in time to the relevant period.

The applicant has also undertaken a rather piecemeal approach to the evidence which goes against the global assessment as carried out by the Opposition Division. Indeed, all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information.

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, namely the catalogues, the sales turnover and the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency 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.

The applicant claims that the invoices do not specify the trade mark in question or the relevant goods. However, all the invoices describe the product as ‘ROMAGNA/SANGIOV. DOC SUP. 750ML ROMAGNA/SANGIOVENESE DOC SUPERIO VINO ROSSO 12.50% VOL’ and further specify the reference ‘CESASU’. The description of the product corresponds to the technical specifications of the product provided in some of the documents (Documents 1 and 14), namely that the Classification of the product is ‘Romagna DOC Sangiovenese Superiore’, the alcohol content is ’12.5% vol’ and the available size is ‘0.375 l. and 0.750 l.’ In addition, the catalogues, the articles and publications, as well as the extracts from different websites all show the bottle of wine bearing the label . Therefore, it is considered that the evidence contains a sufficiently clear reference to the goods offered under the trade mark ‘CA’ GRANDE’ and, therefore, the opponent has provided sufficient indications concerning the nature of the use of the earlier mark.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

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

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 wines. These goods can be considered to form an objective subcategory of alcoholic beverages (except beers). Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for 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 32: Beer; Beer wort; Grape must, unfermented; Mineral water [beverages]; Aerated water.

Class 33: Alcoholic beverages (except beer); Wine.

Class 35: Provision of assistance [business] in the operation of franchises; Import and export services; Wholesale services in relation to alcoholic beverages (except beer); Wholesale services in relation to non-alcoholic beverages; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to non-alcoholic beverages; Wholesale services in relation to beer.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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

Wine is an alcoholic drink made from fermented grape juice.

The contested beer; beer wort are similar to the opponent’s wine as they have the same nature. Further, they can have the same producer, end user and distribution channel.

The contested grape must, unfermented; mineral water [beverages]; aerated water are similar to a low degree to the opponent’s wine as they can have the same end user, distribution channel and method of use. Furthermore, they are in competition.

Contested goods in Class 33

Wine is identically contained in both lists of goods (albeit expressed in singular or plural).

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

Contested services in Class 35

Retail and wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested wholesale services in relation to alcoholic beverages (except beer); retail services in relation to alcoholic beverages (except beer) are similar to a low degree to the opponent’s wine.

The contested wholesale services in relation to non-alcoholic beverages; retail services in relation to non-alcoholic beverages; wholesale services in relation to beer and the opponent’s wine are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar (wine vs. beer) or dissimilar (wine vs. non-alcoholic beverages).

The contested provision of assistance [business] in the operation of franchises means providing business management services to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share.

The contested import and export services are not considered to be a sales service and thus cannot be subject to the same arguments as the comparison of goods with retail services. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods.

Therefore, the contested provision of assistance [business] in the operation of franchises; import and export services are dissimilar to the opponent’s wine in Class 33.

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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered average.

3. The signs

CA’ GRANDE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘GRANDE’ is meaningful in certain territories, for example, in Italy, Portugal, France and Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the territories where this element has no meaning and is, therefore, distinctive, for instance, on the Czech-, Hungarian- and Polish-speaking parts of the public.

In the case of the earlier word mark, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

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

The element ‘PINOSO’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. Contrary to the applicant’s opinion, the red square and the green thin frame are less distinctive figurative elements of a purely decorative nature. In fact, 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). Finally, the depiction of the letters ‘bp’ at the bottom of the contested sign will hardly be perceived clearly by the relevant public because of its high stylisation, which impedes its legibility, and tiny size, therefore, it will not be taken into consideration in the comparison of the signs.

The element ‘Grande’ in the contested sign is the dominant element as it is the most eye-catching by virtue of its central position and size.

Visually, the signs coincide in the element ‘GRANDE’, which is the dominant element in the contested sign. However, they differ in the initial element of the earlier mark, CA’, and the secondary elements of the contested sign, namely the red square containing the element ‘PINOSO’, the green frame, the colours and the stylisation of the elements ‘Grande’.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territory assessed, the pronunciation of the signs coincides in sound of the letters ‛GRANDE’, present identically in both signs. The pronunciation differs in the monosyllable ‛CA’ of the earlier mark and the sound of the letters ‘PINOSO’ of the contested sign. However, it is very probable that the element ‘PINOSO’ will not be pronounced, at least, by a part of the public since it is clearly secondary on the sign in comparison to the dominant element ‘Grande’.

The applicant argues that 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. In the present case, however, the initial element of the earlier mark is one syllable, ‘CA’, whereas the other element, ‘GRANDE’, is longer and the dominant element of the contested sign and, at least for a part of the relevant public, the only element that will be pronounced in the sign.

Therefore, for the part of the public that will pronounced the secondary element ‘PINOSO’ of the contested sign, the signs are aurally similar to an average degree, and for the remaining part of the public, they are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory assessed. 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 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.

According to the opponent the earlier trade mark has a reputation in Italy in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence to support this claim:

• Document 1: some extracts from the internet showing the results in images after searching for ‘cà grande wine’ (April 2016), an extract obtained from the opponent’s website (www.umbertocesari.it) showing a bottle of wine bearing the trade mark and the technical specifications of the product (April 2016), some extracts from the website www.vivino.com showing some images of a bottle of wine bearing the trade mark together with the indication ‘Sangiovese Superiore’  and the price (April 2016), an extract from the website www.wine-searcher.com showing a bottle of wine bearing the trade mark and information about the merchant selling this wine in Germany and the price (undated);

• Documents 2-7: Catalogues of the opponent’s products for the years 2008, 2009 and 2012 to 2015, with the content in Italian and English, showing, among others, a bottle of wine bearing the label  and specifying the sales conditions ‘for orders and deliveries outside Italy’ and some important facts and numbers of the opponent’s products (e.g. bottles sold).

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. In the present case the contested sign was filed on 13/08/2015, therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Italy prior to that date and for the goods for which the opponent has claimed reputation.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use. In particular, the extracts from the internet (undated or dated 2016) and the catalogues do not show the degree of recognition by the relevant public.

In order to prove that its mark has acquired distinctiveness through use/reputation the opponent should have filed evidence showing the market share held by the marks; the proportion of the relevant section of the public which, because of the mark, identifies the goods as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations. Alternatively, the opponent could provide information on advertising or promotion figures to show the long term and large scale investment made to bring the trade mark to the attention of the relevant consumers. These options to the opponent are not exhaustive. However, on the basis of the evidence filed, the opponent has failed to prove that the earlier mark, on which the opposition is based, has gained a level of awareness by the relevant public and, therefore, this is no indication that it has an enhanced degree of distinctiveness or reputation in the Italy.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The earlier mark enjoys a normal degree of distinctiveness and the relevant public has an average degree of attention.

The signs are visually similar to an average degree on account of the coinciding element ‘Grande’, which is the longest element in the earlier mark and the clear dominant element of the contested sign. Aurally, the signs are similar either to an average degree or highly similar, as explained above. The conceptual comparison of the signs is not possible.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

In its observations, the applicant argues that the element ‘GRANDE’ is present in many trade marks to distinguish the same goods and services. In support of its argument the applicant refers to a few European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘GRANDE’. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Czech-, Hungarian- and Polish-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

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 will 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.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It follows that the reputation of the trade mark has not been proven, since no enhanced distinctiveness was found and finding reputation requires even a higher level of recognition.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vanessa PAGE

Marta GARCÍA COLLADO

Richard BIANCHI

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.