OPPOSITION No B 2 572 835

MHCS, 9, avenue de Champagne, 51200 Epernay, France (opponent), represented by Fidal, 4-6 avenue d'Alsace, 92982 Paris La Défense, France (professional representative)

a g a i n s t

Prinz zur Lippe – Markenzeichen GmbH, Heiliger Grund 2, 01665 Meißen/OT, Proschwitz, Germany (applicant), represented by Zwipf Rosenhagen Rechtsanwälte Partnerschaft, Palaisplatz 3, 01097 Dresden, Germany (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 572 835 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 180 095 for the figurative mark , namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 515 569 for the word mark ‘MOËT’ and in relation to part of the registered goods in Class 33. 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 09/06/2015. 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 09/06/2010 to 08/06/2015 inclusive.

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

Class 33:        Alcoholic beverages (with the exception of 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.

On 26/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 01/12/2016 to submit evidence of use of the earlier trade mark. The opponent already submitted evidence on 15/01/2016 in order to demonstrate the high reputation of the earlier mark and on 21/10/2016, within the time limit, the opponent replied to the request of proof of use by referring to said evidence and providing a list of documents.

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:

• Annex 1.1 – French press kit: this document is a press review compiling extracts (dated 2009, 2014 and 2015) from several French newspapers, namely France-Soir, Parismatch, Balthazar, the online French newspaper www.marieclaire.fr, M the World’s magazine, Les Echos, La Tribune de Genève, Le Figaro and the French online magazine www.be.com. These extracts refer to the earlier word mark ‘MOËT’ and also to the brand ‘Moët & Chandon’, indicating the reference ‘since 1743’. The mark also appears on bottles of champagne with the labels  and .

• Annex 1.2 – Italian press kit: this document is a press review compiling extracts (dated 2014) from four Italian newspapers, namely Glamour, L’Uomo Vogue, L’Espresso and La Repubblica. The extracts refer to the earlier mark and its use on bottles of champagne as indicated above.

• Annex 1.3 – German press kit: this document is a press review compiling extracts (dated 2014) from three German newspapers, namely Falstaff, Welt Am Sonntag and Bunt. The extracts refer to the earlier mark and its use on bottles of champagne as indicated above.

• Annex 2 – France M&C Cinema Events report 2014: this document shows pictures of three French film festivals in 2014 (Cannes, Cabourg and Deauville) for which the trademark ‘MOËT’ has been partner. It shows bottles of champagne bearing the earlier mark and some marketing products showing the trade mark (walls, tables, ice buckets and columns).

• Annex 3 – Italy Moët @ Tennis Rome 2014 report: this document shows the use of the earlier mark on bottles of champagne and marketing products such as walls, plant pots, tennis accessories and furniture at the Italian event ‘Internazionali tennis d’Italia’ in 2014.

• Annex 4 – Germany Tennis Report 2013 BMW Open: this document shows the earlier mark on bottles of champagne in a German tennis event and for various related marketing products such as furniture and aprons.

• Annex 5 – Lifeball 2015: this document shows the earlier mark on bottles of champagne and various marketing products at the charity event ‘Life Ball’ held in Vienna (Austria).

• Annex 6 – Two affidavits: dated 30/12/2015 and signed by Gérard Monnet, the administrative and financial director of MHCS. The first affidavit contains the promotional and advertising budget for the products ‘Moët & Chandon’ in the European Union for the years 2012 to May 2015; the second affidavit contains the turnover corresponding to the French, German and Italian markets, as well as the European Union market, for the years 2012 to May 2015.

The extracts from the press (Annexes 1.1, 1.2 and 1.3) and the reports from cinema and sport events (Annexes 2, 3, 4 and 5) show that the place of use is the European Union. This can be inferred from the languages of the documents (French, Italian and German), the currency mentioned (euros) and the indication of some cities from some Member States, namely Austria, France, Germany and Italy. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely the two affidavits (Annex 6) specifying the promotional and advertising budget for the products under the trade mark ‘Moët & Chandon’ in relation to the European Union from 2012 to May 2015, as well as the turnover for the products bearing the trade mark ‘Moët & Chandon’ in relation to France, Germany, Italy and the whole territory of the European Union from 2012 to May 2015, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Even though this information originates from the opponent rather than from an independent source, it is sufficiently conclusive in view of the other items of evidence submitted by the opponent. In particular, the extracts from the French, Italian and German press (Annexes 1.1, 1.2 and 1.3) and the Cinema Events report 2014 (Annex 2) outline the extraordinary long history of the earlier mark as a leading brand for champagne that has been widely involved and advertised in some of the most prestigious film festivals in the European Union with the support of internationally known movie stars and reputed chefs. Additionally, the opponent has sponsored some important tennis events in Italy and Germany (Annexes 3 and 4), showing the earlier trade mark on bottles of champagne as well as on furniture and marketing accessories. Moreover, the successful tennis player Roger Federer was appointed the ambassador of the trade mark ‘Moët & Chandon’ in 2014 to promote the brand.

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, 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. 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 earlier mark is a word mark. The evidence shows that the sign has been used alone or accompanied by the expression ‘& Chandon’, that is for instance  and , which also represent an acceptable usage as it does not alter the distinctive character of the mark in the form in which it was registered.

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

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

Contrary to the opponent’s opinion, 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 champagne. These goods can be considered to form an objective subcategory of alcoholic beverages (with the exception of beers), namely sparkling wines. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for sparkling 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:         Sparkling wines.

The contested goods are the following:

Class 33:         Wine; spirits [beverages]; liqueurs; alcoholic beverages (except beer); sparkling wines.

Sparkling wines are identically contained in both lists of goods.

The contested wine includes, as a broader category, the opponent’s sparkling wines. Therefore, they are identical.

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s sparkling wines. Therefore, they are identical.

The contested spirits [beverages]; liqueurs are similar to the opponent’s sparkling wines as they have the same nature. They target the same end user and they coincide in distribution channels and method of use. Furthermore, they are in competition.

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 or similar are directed at the public at large. The degree of attention is considered average.

3. The signs

MOËT
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 earlier mark will be perceived as a surname by part of the French-speaking part of the relevant territory, whereas it will be meaningless for the rest of the public. In any case, the element ‘MOËT’ is distinctive in relation to the relevant goods.

The word ‘Poet’ of the contested sign will be understood by the English-speaking part of the public as ‘a person who writes poems’, but it will also be understood in the part of the relevant territory for which the English term has a close equivalent word in the relevant languages (e.g. in Italian, Polish, Portuguese and Spanish – poeta -, in French – poète – and in Lithuanian – poetas -).

The figurative element of the contested sign will be perceived by the relevant public as a sketch of a man from the 19th century. Consequently, for the part of the public that will understand the word element, there will most probably be an association with the figurative element as representing a poet. The opponent claims that this drawing will be perceived as an ornamental element within the sign since in the field of alcoholic beverages, this kind of old style sketch is very usual and submits some images of wine labels extracted from the internet search engine Google to conclude that this element is descriptive. However, the Opposition Division considers that the evidence submitted by the opponent has no bearing on the present case as to affect the distinctiveness of the figurative element of the contested sign. Therefore, since the opponent has not adduced any convincing argument or evidence as to why the figurative element of the sign should be attributed a less distinctive character, it is concluded that this element is distinctive for the goods in question.

Contrary to the opponent’s opinion, the contested sign has no elements that could be considered clearly more dominant than other elements, as neither of the two elements that form the sign is visually outstanding compared to the other one.

Notwithstanding the above, 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).

Visually, the signs coincide in the string of letters ‘*oet’, however the common letter ‘e’ portrays a dieresis (¨) in the earlier mark and not in the contested sign. The signs further differ in their initial letters, ‘M’ in the earlier mark and ‘P’ in the contested sign, the latter being highly stylised and depicted in upper case. The contested sign also contains, in the first and central position, a figurative element consisting of an old sketch of a man.

The difference as regards the first letters of the signs is clearly perceptible and of considerable importance, firstly due to the principle that consumers usually focus and place more importance on the first part of a sign, given that they read from left to right, and secondly, visually the letters themselves have a completely different structure: the letter ‘M’ in the earlier mark is made up of four straight lines, whereas the letter ‘P’ in the contested sign is the biggest letter, and it is depicted in a highly stylised cursive style typeface, thus rendering it even more visually striking. Therefore, and contrary to the opponent’s opinion, their shape differs significantly.

Further to the above, the verbal elements of the signs are not particularly long and when considering their length it should also be borne in mind that consumers generally tend to be more aware of differences in such cases and, given the prominent, foremost positioning of the letter ‘P’, this is even more true to the case at hand.

Even though both signs have four letters, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, despite sharing a sequence of letters, since the differing aspects of the signs are clearly perceivable at a glance, on the whole the signs are visually similar to a very low degree.

Aurally, the previous assertions concerning the beginnings of the signs and their lengths also hold true here. Further to this, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters that they have in common, ‛*oet’, and this is even the case despite the letter ‘e’ portraying a dieresis (¨) in the earlier mark. The pronunciation differs in the sounds of the initial letters of the signs, ‛M’ of the earlier mark and ‘P’ in the contested sign.

Therefore, taking into account the foregoing, the signs are aurally similar to an average degree.

Conceptually, for part of the French-speaking part of the relevant territory, the earlier mark will be perceived as a surname and the contested sign as ‘a person who writes poems’. Since the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.

For the remaining part of the relevant territory, the contested sign will have a meaning at least because of the presence of the figurative element, whereas the other sign lacks any meaning in that territory. Therefore, for this part of the public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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, Germany and France in connection with part of the goods for which it is registered, namely for alcoholic beverages (with the exception of beers). 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 same evidence to prove genuine use and reputation of the earlier mark. Therefore, the submitted documents have already been listed above in the ‘Proof of Use’ section.

The extracts from the French press (Annex 1.1) originate from national and local independent sources and mention the long history of ‘Moët & Chandon’ (more than 200 years), the fact that it is a worldwide leader of wines production from the Champagne region in France and refer to its presence in 144 countries around the world. They also refer to the presence of ‘Moët & Chandon Grand Vintage 2006’ (a bottle of champagne) in the menu of a gala celebration held in the Cannes Film Festival with the participation of internationally famous celebrities. The trade mark ‘Moët & Chandon’ for champagne is mentioned together with very reputed trade marks in their own fields, such as the American store Bloomindale’s and the famous drink Coca-Cola, but also among the most important brands of champagne placed in the Champagne region, such as ‘Mumm’, ‘Laurent-Perrier’ and ‘Dom Pérignon’ (bottles of champagne bearing the corresponding labels are shown). In 2014, the world top tennis player Roger Federer has been the global brand ambassador for ‘Moët & Chandon’, attending an important event, a gala dinner in Épernay, the capital of the Champagne region, to launch an innovative food-and-wine tasting experience, together with some reputed chef talents. Also in 2014, ‘Moët & Chandon’ has been present in the 40th edition of the Deauville Film Festival with the assistance of relevant movie celebrities.

The extracts from the Italian press (Annex 1.2) originate from various independent sources and they refer also to the great tradition and historical legacy of ‘Moët & Chandon’ (referred to as ‘la Maison’). They highlight the outstanding recognition of ‘Moët & Chandon’ in the champagne industry by using flattering words such as ‘colossus’, ‘excellence’, ‘synonym of successful and glamourous champagne since 1743’, ‘the most popular champagne in the world’ and ‘the elegance of the champagne’. There is an article dated 2014 showing the tennis player Roger Federer holding a bottle of ‘Moët & Chandon’. A dinner party was held in Venice in August 2014 to celebrate ‘the great cinema’ with ‘Moët & Chandon’ as the main sponsor of the event and recognised as ‘inseparably linked to the world of cinema’.

The extracts from the German press (Annex 1.3) acknowledge as well the international recognition of the trade mark ‘Moët & Chandon’ for champagne, being classified as one of ‘the world famous Houses’. Bottles of ‘Moët & Chandon Impérial’ and ‘Moët & Chandon Grand Vintage 2004 rosé’ have been present in the menu of a dinner event in Munich in 2014. A press article from the website of the German newspaper Falstaff informed about an auction organised to support the AIDS research in May 2014 during the Cannes Film Festival, where 21 bottles of ‘Moët & Chandon Vintage Brut Champagne’ were auctioned with the collaboration of international movie stars. In February 2014, ‘Moët & Chandon’ celebrated the international film soundtrack in Berlin. The trade mark of champagne ‘Moët & Chandon’ is referred to as ‘the biggest House in Champagne’.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands of champagne, as has been shown by the presence of the earlier mark in important social events with the presence of international celebrities from the world of cinema (international film festivals), sports and reputed chefs and artists. Although the opponent has not provided direct quantitative evidence of market share or public recognition of the sign at issue (through opinion polls, for instance), the numerous references in the documents to the fame of ‘MOËT’ coming from different sources and the widespread coverage of the earlier mark in events of international relevance give sufficient indirect indications of the awareness of the relevant consumers of the sign. The prestige associated with the earlier mark in relation to champagne is sufficiently shown through the material provided by the opponent. The sales figures and marketing expenditure shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition and reputation among the relevant public in Italy, Germany and France for champagne.

5. Global assessment, other arguments and conclusion

To summarise, the goods are partly identical and partly similar and the earlier mark has a high degree of recognition in Italy, Germany and France. The degree of attention of the relevant public is average.

As found in the comparison of signs, the verbal elements are both composed of four letters and they coincide in the latter three, except for the dieresis (¨) placed on top of the letter ‘E’ in the earlier mark, which is visually striking. The coincidence in a string of three letters is not necessarily an indicator of a likelihood of confusion. In this respect, as explained above, the length of the signs is important as this may influence the effect of the differences between them since the shorter the sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may be sufficient to clearly distance the signs. This is particularly pertinent in this case since the signs are fairly short and in this sense the difference in their first letters is, as explained above, especially striking from a visual perspective. Furthermore, the contested sign contains a distinctive figurative element in the first position and the stylisation of the verbal element is particularly high in the case of the initial letter, ‘P’.

The signs are aurally similar to an average degree and conceptually not similar.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. In particular, the opponent refers to conflicts in relation to word marks, whereas in the present case the contested sign combines a figurative element, which is distinctive, and a highly stylised verbal element. Furthermore, the cases referred to by the opponent only differ in their initial letters and are visually similar (‘B/D’) in the conflict between ‘BIAX/DIAX’, aurally similar (‘V/B’) in Spain in the conflict between ‘VIAL/BIAL’ and (‘X/Z’) throughout the European Union in the conflict between ‘XOOM/ZOOM’. However, in the present case, the letters ‘M/P’ are easily distinguishable from a visual and aural perspectives, and the verbal elements of the signs also differ in the presence of the dieresis (¨) placed on top of the letter ‘E’ of the earlier mark, which is visually striking. In the remaining cases referred to by the opponent, neither of the signs has a meaning, as in the conflict between ‘MUMM/XUMM’, or they are conceptually similar, as in the conflict between ‘MATRIA/PATRIA’. On the contrary, the verbal elements in the present case are not conceptually similar.

As stated by the opponent, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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).

However, in the present case, the identity and similarity of the goods cannot offset the clear differences between the signs, especially from the visual and conceptual perspectives.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared 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.

2. 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.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed for sparkling wines in Class 33 and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The relevant factors noted above have been largely assessed in the previous section on ‘Likelihood of confusion’; the goods were found identical and similar, the signs similar to the extent that they coincide in ‘*oet’ and a high degree of recognition and reputation was found for champagne in Class 33.

Despite the earlier mark’s reputation, with respect to the similarity between the signs, as indicated above, this is due to three common letters but, however, one of those portrays a dieresis (¨), which is visually striking and a clear aspect of differentiation. Therefore, the coincidence in some letters does not necessarily mean that the relevant public is likely to establish a link between them. The signs have a different beginning, which is reinforced by the high stylisation of the first letter in the contested sign. Furthermore, the verbal elements are fairly short and in this sense reference is made to the arguments in the previous section which set out the importance of the differences between the marks.

Although the degree of similarity required in order to establish a link under Article 8(5) EUTMR may be lower than that required for a finding of likelihood of confusion, under Article 8(5) EUTMR, the signs must nevertheless display a sufficient degree of similarity in order for the later mark to bring to mind the earlier mark. If the signs are not sufficiently similar, the possibility of the consumer forming a link will not exist.

As has been discussed above, the differing letter at the beginning of the respective signs in this case has a very significant impact on the overall impression of the marks. Additionally, the contested sign firstly presents a distinctive figurative element that will be perceived by the entire relevant public and together with the word ‘Poet’ will most likely be associated by a significant part of the relevant public with an old sketch of a poet. Consumers seeing the signs as a whole will not break them down into components and somehow perceive a link merely because they contain the letters ‘oet’ in both. This would result in an artificial dissection of the signs in a way that would not reflect the manner in which consumers perceive such signs. Not only do the different first letters endow the signs with different concepts but they alter them sufficiently from a visual and aural stance.

Overall, the Opposition Division considers that it is not plausible to conclude that the relevant consumer will perceive a link with the earlier mark when confronted with the contested sign. In short, the visual, aural and conceptual differences between the signs that have been set out above, mean that the contested sign is not likely to act as a conduit that will lead the mind of the relevant consumer to the earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

Moreover, the opponent certainly cannot contend that unfair advantage would be a necessary consequence flowing automatically from use of the contested sign, in view of the earlier mark’s reputation and, in the present case, its similarity to the contested sign. As a rule, general allegations of unfair advantage, as made by the opponent, are not sufficient in themselves.

In view of the cumulative nature of the requirements of this provision there is no need to examine further the remaining factors.

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 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

Ric WASLEY

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.

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.