OPPOSITION No B 2 428 921
Instituto dos Vinhos do Douro e do Porto IP, Rua dos Camilos, 90, 5050-272 Peso da Régua, Portugal (opponent), represented by Pedro Sousa e Silva, Avenida da Boavista, 2300, 2º, P-4100-353 Porto, Portugal (professional representative)
a g a i n s t
Portos Renata, Tomasz Szukalscy Spółka Jawna, Złota 71, 62-800 Kalisz, Poland (applicant), represented by Kancelaria Patentowa Elżbieta Piątkowska, Skórzewo ul. Truskawkowa 12, 60-185 Poznań, Poland (professional representative).
On 05/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 428 921 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 021 852 for the word mark ‘PORTOS’, namely against all the goods and services in Classes 6, 7, 9, 19, 37 and 42. The opposition is based on an earlier sign used in the course of trade, namely the protected designation of origin ‘PORTO’, protected under EU legislation, Portuguese national law and the Lisbon Agreement for the Protection of Appellations of Origin. The opponent invoked Article 8(4) EUTMR.
PRELIMINARY REMARK
The extract from the online EU database E-Bacchus accompanying the notice of opposition refers to the designation of origin ‘PORTO’ / ‘PORT’ / ‘VIN DE PORTO’ / ‘PORT WINE’ / ‘VINHO DO PORTO’ / ‘OPORTO’ / ‘PORTVIN’ / ‘PORTWEIN’ / ‘PORTWIJN’, protected under EU legislation. As these variations of the name refer all to the same protected designation of origin and are considered equivalent, the Opposition Division will refer to the earlier sign only as ‘PORTO’.
According to the case-law of the European Union, the provisions of the EUTM Regulation on the protection of protected geographical indication (‘PGI’) and protected denominations of origin (‘PDO’) must be interpreted, insofar as possible, in accordance with the specific provisions of EU law, international treaties concluded by the European Union (in particular the TRIPs agreement) and the laws of the Member States, insofar as applicable. Moreover, the Court of Justice has confirmed that the EU regulations governing the conflict between trade marks and PGI and PDO products are directly applicable and have immediate effect (see judgment of 09/03/2010, C-27/10, Bureau National Interprofessionnel du Cognac, ECLI:EU:C:2010:131, § 40).
The distinction between PGI and PDO does not affect the scope of protection, which is the same for PDOs and PGIs. Therefore, the term ‘geographical indication’ (GI) is used to refer to both PDOs and PGIs in general.
Regulation (EU) 2015/2424 amending Regulation No 207/2009 on the Community trade mark (‘Amending Regulation’) introduced Article 8(4a) EUTMR as a specific ground of opposition for GIs. Prior to that, GIs could form the basis of an opposition pursuant to Article 8(4) EUTMR as ‘another sign used in the course of trade’. However, in the absence of transitory provisions, Article 8(4a) EUTMR applies in oppositions filed on or after its entry into force (23/03/2016). However, since the opposition at issue based on GIs was filed on 03/11/2014 – before the date of entry into force of Article 8(4a) EUTMR – the opposition will continue to be assessed under the conditions of Article 8(4) EUTMR.
According to Office practice and EU case-law (see judgment of 08/09/2009, C-478/07, Bud, EU:C:2009:521, § 95-129), the EU system of protection of GIs for wines and spirits is exhaustive in nature and supersedes national protection for those goods (see Guidelines for Examination in the Office, Part C Opposition, Section 4, Rights under Articles 8(4) and 8(4a) EUTMR). Consequently, the designation of origin ‘PORTO’ protected under Portuguese national laws is not a proper basis for an opposition under Article 8(4) EUTMR.
As regards the extract from the WIPO register of appellations of origin registered under the Lisbon Agreement, submitted along with the notice of opposition, it suffices to recall that protection under the Lisbon Treaty does not extend to the country of origin, here Portugal. Pursuant to Article 1(2) of the Lisbon Agreement, the protection is available only in other countries of the Lisbon Union, namely in countries other than the country of origin. As the notice of opposition only relied on an earlier right protected in Portugal, any protection under the Lisbon Agreement in any Member State other than Portugal cannot be taken into account (22/05/2015, R-1760/2014-4, PORTS1961 / PORT, § 22). Furthermore, a GI protected under an international agreement concluded by Member States (either among Member States or with third countries) cannot be invoked as an earlier right under Article 8(4) EUTMR if it encroaches upon the exhaustive nature of EU law in the relevant areas (currently certain foodstuffs and other agricultural products, wines, spirit drinks and aromatised wine products).
Consequently, the examination of the opposition will continue on the basis of the designation of origin ‘PORTO’, protected under EU legislation under Regulation (EU) No 1308/2013.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:
- the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;
- pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;
- the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.
- Prior use in the course of trade of more than mere local significance
For reasons of procedural economy it is assumed that the opponent’s sign was used in the course of trade of more than local significance in the European Union for wine before the filing date of the contested trade mark (23/06/2014).
- The right under the applicable law
The opponent based its opposition on the designation of origin ‘PORTO’ used in Portugal in the course of trade of more than local significance.
Designations of origin and geographical indications for wines and other grapevine products protected under Council Regulation No 1234/2007 of 22/10/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation No 1308/2013 of 17/12/2013) fall under Article 8(4) EUTMR.
This includes the names already registered under Council Regulation No 1493/1999 of 17/05/1999 on the common organisation of the market in wine or Council Regulation No 479/2008 of 29/04/2008 on the common organisation of the market in wine.
According to the documents submitted by the opponent the designation of origin has already been registered since 1921 (see submitted WIPO-extract and extracts of the Portuguese law in the notice of opposition). Therefore, the designation ‘PORTO’ falls under the scope of protection of the Council Regulation. According to Article 93(1)(a) of Regulation No 1308/2013, ‘designation of origin’ means the name of a region, a specific place or, in exceptional cases, a country used to describe a product referred to in Article 92(1) fulfilling the following requirements:
• the quality and characteristics are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors;
• the grapes from which it is produced come exclusively from this geographical area;
• its production takes place in this geographical area; and
• it is obtained from vine varieties belonging to Vitis vinifera.
In the present case, the designation of origin ‘PORTO’ has been registered for wine. The registration was published in the Official Journal of the European Union. According to Article 103(2) of Regulation No 1308/2013, protected designations of origins and protected geographical indications and the wines using those protected names in conformity with the product specification shall be protected against:
- any direct or indirect commercial use of a protected name:
(i) by comparable products not complying with the product specification of the protected name; or
(ii) in so far as such use exploits the reputation of a designation of origin or a geographical indication;
(b) any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar;
(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the wine product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;
(d) any other practice liable to mislead the consumer as to the true origin of the product.
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party shall provide evidence of its acquisition, continued existence and scope of protection of that right.
Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘to provide OHIM [EUIPO] not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (judgment of 05/07/2011, C-263/09 P, Elio Fiorucci, ECLI:EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to safely determine that a particular right is provided for under the law in question as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.
The opponent submitted sufficient evidence that it is entitled to protect the rights of the protected designation of origin ‘PORTO’, which may be used only for wine produced in the Demarcated Region of Douro (DRD), that the tradition made known under that name and which complies with the rules of Regulation No 1308/2013 and in conformity with the corresponding product specification of the protected designation of origin ‘PORTO’.
- The opponent’s right vis-à-vis the contested mark – Compliance with the criterion of the applicable law under Article 103(2) of Regulation No 1308/2013
The first alternative of Article 103 of Regulation No 1308/2013 grants protection in respect of the use for ‘comparable products not complying with the product specification’, or, alternatively, if the reputation of the geographical indication is exploited.
The earlier mark has been used for wine.
The contested goods and services are:
Class 6 Outdoor blinds of metal; Exterior top mounted roller shutters of metal, roller gates of metal for garages; Elements of metal for the manufacture of exterior and interior shutters and awnings.
Class 7: Transmission components, namely for garage gates and shutters, including powered by electric engines or powered hydraulically and pneumatically, drive mechanisms for segments of garage roller gates of metal and parts therefor.
Class 9: Automatic apparatus for preventing the movement of garage roller gates of metal, anti-theft alarms.
Class 19: Goods of plastic, including blinds, Mosquito nets; Elements, not of metal, for the manufacture of horizontal and vertical blinds; Insect screens, not of metal, Fittings for blinds, not of metal.
Class 37: Installation, repair and maintenance of top mounted roller shutters of metal, exterior shutters of metal and roller gates of metal for garages; Assembly and maintenance of transmission components and control mechanisms in the field of roller shutters and gates of metal for garages, and consultancy relating thereto.
Class 42: Design in the field of technical automation systems; Design of computer operating systems (smart installations).
According to the Court’s case-law, products are comparable for the purposes of Article 103(2) of Regulation No 1308/2013 when they have common objective characteristics, such as the method of elaboration, the physical appearance of the product and the use of the same raw materials. Other factors which may be relevant are, from the perspective of the relevant public, the consumption on identical occasions and the identical channels of distribution and marketing methods (see judgment of 14/07/2011, C-4/10 and C-27/10, Bureau National Interprofessionnel du Cognac, ECLI:EU:C:2010:131, § 54 to Article 16(a) of Regulation No 110/2008). It must be emphasized that a ‘comparable’ product is not to be interpreted as meaning a ‘similar’ product in the sense of Article 8(1)(b) EUTMR (see also decision of 15/06/2016, R 1105/2015-4, PORTOBELLO ROAD NO 171 / PORTO, § 23). The notion of a ‘comparable’ product must be one ‘comparable’ to wine in the sense that the specific protection for wines is affected. ‘Comparable’ products are e.g. products which are types of wine or presented under names alluding to wine (‘plum wine’) or which look like wine and could be held by consumers to be or to contain wine (see decision of 15/06/2016, R 1105/2015-4, PORTOBELLO ROAD NO 171 / PORTO, § 23)
In the present case, the contested goods and services differ already in their nature, purpose and distribution channels since they are industrial products and services and not any agricultural or beverage-related goods. The contested goods and services do not look like wine and it is obvious that they do not comply with the product specification. Therefore, the contested goods and services are not comparable to wine.
The essential function of a geographical indication – as an IP right – is not to monopolise the name of a city or region. Any city or region serves as a place of protection of innumerable other goods. The essential function of a geographical indication is to protect the link between a product (and its characteristics) and a geographic origin. Geographical indications or appellations of origin are meant to protect the consumer’s expectations that a given product has the geographic origin indicated on the product.
The second alternative for protection under Article 103 of Regulation No 1308/2013 is that there is ‘any direct or indirect commercial use of the protected name’ (Article 103(2)(a), header) and that ‘such use exploits the reputation of the geographical indication’ (Article 103(2)(a)(ii)). The Opposition Division observes that that second condition is to be understood in the same way as Article 8(5) EUTMR, namely as a protection of a reputation or goodwill in a sign against acts of unfair exploitation of that reputation.
This provision cannot be invoked, as the opponent failed to claim a reputation of its earlier sign in the notice of opposition. The only relevant indications in the notice of opposition were that the earlier sign is an appellation of origin and the quotation of the text of Article 8(4). Also in the three attachments nothing concerning a reputation of the geographical indication can be found.
The ground for opposition was only Article 8(4) EUTMR. Whereas it is in principle not excluded that a national or EU right falling under that provision confers protection beyond the limits of similarity of goods and services, such must be expressly claimed. From the notice of opposition (including all its attachments) it only transpires that the opponent invokes an appellation of origin for fortified wine. The function of an appellation of origin is to protect the geographic origin of a specific given type of product (e.g., wine) and not the geographic origin of all goods and services under the sun. To the extent that the relevant provisions governing the protection of geographical indications – none of which having been indicated in the notice of opposition – also contain provisions for ‘reputed’ signs, the existence of such a reputation would have to be expressly claimed in the notice of opposition. It cannot be accepted that an owner of a geographical indication would have less elements to indicate when attacking a mark filed for dissimilar goods and services than the owner of a registered EUTM when relying on Article 8(1)(b) and Article 8(5) EUTMR. Whereas it can be accepted that the opponent who invokes a geographic indication protected at EU level does not have to prove the relevant EU law, it cannot be accepted that the opponent extends the grounds and legal bases for opposition to those providing specific protection along the lines of Article 8(5) EUTMR in the further course of the opposition proceedings (see also decision of 15.06.2016, R 1105/2015-4, PORTOBELLO ROAD NO 171, § 23).
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.
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
|
Volker MENSING |
Martin EBERL |
Claudia MARTINI |
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.