OPPOSITION No B 2 565 409

 

Viña la Rosa S.A., Coyancura 2283 – Oficina 602, Santiago, Chile (opponent), represented by Jacobacci & Partners, S.L.U., Calle Génova, 15 – 1°, 28004 Madrid, Spain (professional representative)

 

a g a i n s t

 

Meritxell Domingo Fontanet, Avda. Angel Guimerà, 60, E08700 Igualada, Spain (applicant), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative).

 

On 31/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 565 409 is partially upheld, namely for the following contested goods and services:

 

Class 33: Wines with the designation of origin Catalunya and other alcoholic beverages (except beers) produced in Catalonia.

 

Class 35: Retailing in shops and via global telematic networks of alcoholic beverages.

 

2.        European Union trade mark application No 13 892 864 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

 

3.        Each party bears its own costs.

 

 

REASONS:

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 892 864, namely against all the goods in Class 33 and some of the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 5 079 421. The opponent invoked Article 8(1)(b) EUTMR.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 079 421.

 

 

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, inter alia, European Union trade mark registration No 5 079 421 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 08/06/2015. 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 08/06/2010 to 07/06/2015 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:        Wines.

 

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

 

On 15/01/2016, within the time limit to submit arguments and evidence in support of the opposition, the opponent submitted its observations and evidence of use.

 

Following the applicant’s request for proof of use, on 31/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 31/05/2016 to submit evidence of use of the earlier trade mark. This time limit has been extended upon request of the opponent until 31/07/2016. On 29/07/2016, within the time limit, the opponent submitted evidence of use.

 

The evidence to be taken into account is, in particular, the following:

 

• Copies of pages which, according to the opponent, are the pages from catalogues with pictures and descriptions of the wines ‘VIÑA LA ROSA LA PALMA’, ‘VIÑA LA ROSA LA CAPITANA’ and ‘VIÑA LA ROSA DON RECA’. The mark appears on the bottles and at the bottom of the pages.
• Printouts from the internet sites www.snooth.com, www.vinopedia.com, with references and information about varieties of ‘VIÑA LA ROSA’ wines.
• Printouts from www.delhaizedirect.lu and www.gall.nl with various wines offered for sale, including ‘Don Reca Cuvée’, ‘La Capitana Chardonnay’, ‘La Palma Reserva Merlot’, La Palma Chardonnay’, ‘Viña la Rosa La Capitana’, ‘La Palma Chardonnay’, ‘La Palma Reserva Merlot’, ‘La Palma Merlot’.
• Pictures showing wines bearing the mark ‘VIÑA LA ROSA LA PALMA’ in a supermarket.
• Photographs showing the pictures of bottles of ‘VIÑA LA ROSA LA PALMA’ and ‘VIÑA LA ROSA LA CAPITANA’.
• Copies of samples of labels.
• Copies of sales statistics of ‘VIÑA LA ROSA’ wines in the European Union for 2011-2015.
• Copies of promotional materials concerning ‘VIÑA LA ROSA’ wines.
• Copy of pages of Gall & Gall magazine with advertisements of ‘VIÑA LA ROSA LA PALMA’ and ‘VIÑA LA ROSA LA CAPITANA’ wines.
• Copies of numerous documents attesting importation of various ‘VIÑA LA ROSA’ wines from Chile to customers in the Netherlands and Belgium. They are dated within 2011-2015.

 

The applicant argues in relation to some evidence submitted by the opponent that, because of its poor quality, it is difficult to assess whether the sign is used as registered. However, the Opposition Division notes that, despite the lower quality of some of the pieces of evidence, the elements which are relevant for the assessment of proof of use can easily be verified and if some elements are less legible in some pieces of evidence, they can be better assessed in other parts of the documentation. In particular, as far as the nature of use is concerned, it can be assessed not only on the basis of the documents with the pictures of wine bottles but also on the basis of other documents where the earlier mark appears. Furthermore, the copies of pages of catalogues submitted on 15/01/2016 are of better quality and the nature of use of the mark can also be verified there. Finally, in its observations the applicant analysed various pieces of evidence separately, explaining why, in its opinion, the requirements for proof of use are not met. This clearly proves that the pieces of evidence were sufficiently legible. Consequently, the Opposition Division considers that the assessment of proof of use may be carried out on the basis of the evidence on file.

 

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

 

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

 

The pages from the catalogues, printouts from the internet sites with the top level domain names ‘.lu’, ‘.nl’, promotional materials, pages from Gall & Gall magazine, and documents related to importation, show that the place of use is the European Union. This can be inferred from the language of the documents (English, Dutch), the country codes of the top level domain names, the currency mentioned (EUR) and some addresses in Belgium and the Netherlands. Therefore, the evidence relates to the relevant territory.

 

The evidence shows that the goods were imported from Chile to the Netherlands and Belgium. It is clear from the documents that the use occurred in the context of a commercial activity between businesses and not as a private activity. This clearly shows that the goods were imported to the relevant territory.

 

Consequently, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

 

Part of the evidence is dated within the relevant period.

 

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, some of the evidence of use falls lightly outside the relevant period, but cannot be ignored because the use it refers to is very close in time to the relevant period.

 

The documents filed, namely the importation documents, 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.

 

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

 

In the present case, the trade mark ‘VIÑA LA ROSA’ appears on the bottles, at the top of the main label or above. It is also at the top of the document with sales statistics of ‘VIÑA LA ROSA’ wines in the European Union for 2011-2015. Reference is also made, on the invoices submitted by the opponent, to the trade mark ‘VIÑA LA ROSA’ for wine, sometimes together with the terms ‘LA PALMA’, ‘LA CAPITANA’, ‘DON RECA’, etc.

 

Several signs may be used simultaneously without altering the distinctive character of the registered sign. The affixing of separate marks together on the same product, in particular the name of the winery and the name of the product, is a common commercial practice in the context of the labelling of wine products (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34). Therefore, the addition of ‘LA PALMA’, ‘LA CAPITANA’, ‘DON RECA’, etc. also does not constitute an alteration of the registered form. The relevant consumers will be aware that such wines are included within the line of products ‘VIÑA LA ROSA’. Consequently, ‘LA PALMA’, ‘LA CAPITANA’, ‘DON RECA’ will be perceived as separate trade marks, even if they may appear next to the sign ‘VIÑA LA ROSA’ in the invoices, promotional materials and/or product labels. Furthermore, the fact that the mark appears together with other, smaller elements which are typical for the labelling of wine, such as the year of production, do not alter the distinctive character of the mark in the form in which it was registered. The same is true for the additions which are just indications of characteristics of the goods.

 

The mark appears as registered, except for the fact that the evidence it is in black and white while the mark is registered with claim to colours: white, grey, black, red, brown. However, these colour differences do not constitute an alteration of the registered form as the colours are not the main contributors to the overall distinctiveness of the mark while the verbal and figurative elements coincide and are arranged in the same way and the contrast of colours is respected.

 

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

 

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.

 

 

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 and services

 

The goods on which the opposition is based are the following:

 

Class 33: Wines

 

The contested goods and services are the following:

 

Class 33: Wines with the designation of origin Catalunya and other alcoholic beverages (except beers) produced in Catalonia.

 

Class 35: Retailing in shops and via global telematic networks of alcoholic and non-alcoholic beverages.

 

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 33

 

The contested wines with the designation of origin Catalunya and other alcoholic beverages (except beers) produced in Catalonia are included in the broad category of the opponent’s wines. Therefore, they are identical.

 

Contested services in Class 35

 

Retail 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 retailing in shops and via global telematic networks of alcoholic beverages are similar to a low degree to the opponent’s wines which fall into the broad category of alcoholic beverages.

 

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 case of the contested retail services concerning non-alcoholic beverages and the opponent’s wines as they are not identical.

 

Therefore, retailing in shops and via global telematic networks of non-alcoholic beverages and wines 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.

 

 

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 a low degree are directed at the public at large.

 

The degree of attention is average.

 

 

3. The signs

 

 

 

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 signs are meaningful in Spanish. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

 

The expression ‘DE BARCELONA’ of the contested sign will be perceived as an indication that the goods and services originate from Barcelona (city in Spain). The word ‘VIÑA’ means ‘vineyard’ in Spanish and since ‘LA’ is a Spanish pronoun, the whole expression ‘VIÑA LA ROSA’ of the earlier mark will be perceived by the Spanish-speaking public as a reference to the vineyard named ‘ROSA’. Bearing in mind that the relevant goods and services are wines and retail of alcoholic beverages, the verbal elements other than ‘ROSA’ will attract less attention.

 

As a result, the most distinctive element of both signs is ‘ROSA’ which will be perceived by the Spanish-speaking public as a reference to a flower or as the female name. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

 

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

 

As to the figurative elements, they are rather decorative. The figurative element of the earlier mark is in the form of a label with an element resembling a seal surrounded by leaves. The figurative element of the contested sign cannot be clearly defined. It may bring an association with a flower, in which case it reinforces the concept of the word ‘ROSA’ referring to a flower.

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 word ‘ROSA’. They differ in the colours and graphical representation of their letters as well as the additional words and figurative elements described above. However, bearing in mind the foregoing assessment concerning the distinctive components of the signs, it must be concluded that overall the marks are visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of their most distinctive word ‘ROSA’. The pronunciation differs in sound of the additional words, namely ‘VIÑA LA’ of the earlier mark and ‘DE BARCELONA’ of the contested sign. These additional differentiating words are less distinctive.  Therefore, the signs are aurally similar to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. There are certain conceptual nuances created by the meaning of the elements other than ‘ROSA’. However, these other elements are less distinctive. As the signs will be associated with a similar meaning related to the most distinctive element ‘ROSA’, which they have in common, they are conceptually similar to an average degree.

 

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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, despite the presence of some less distinctive elements in the mark as stated above in section c) of this decision.

 

 

5. Global assessment, other arguments and conclusion

 

The goods are identical and the services are partially similar to a low degree and partially dissimilar. The signs are visually, aurally and conceptually similar to an average degree. The degree of attention of the relevant public is average.

Taking all the above into account, there is a likelihood of confusion because the differences between the signs are confined to less distinctive or secondary elements and aspects.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 079 421. 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 found to be identical to those of the earlier trade mark.

 

The opposition is also successful in relation to the contested services that are similar to a low degree to the opponent’s goods, since the low similarity of the goods and services is counterbalanced by the similarity of the signs resulting from the coincidence in ‘ROSA’ which is the most distinctive verbal element of each of the marks.

 

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.

 

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical goods and services similar to a low degree. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to the contested services found dissimilar to the opponent’s goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

The opponent has also based its opposition on the following earlier trade marks:

 

• Benelux trade mark registration No 867 914 for the word mark ‘VIÑA LA ROSA LA CAPITANA’;
• Benelux trade mark registration No 867 915 for the word mark ‘VIÑA LA ROSA DON RECA’;
• Benelux trade mark registration No 867 913 for the word mark ‘VIÑA LA ROSA LA PALMA’;
• Benelux trade mark registration No 642 853 for the word mark ‘VIÑA LA ROSA’.

 

Since these marks cover the same scope of goods as the one which has been analysed, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

 

 

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

 

 

Katarzyna ZANIECKA

Justyna GBYL

Begoña URIARTE VALIENTE

 

 

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.