OPPOSITION No B 2 592 676

Miguel Torres S.A., Miquel Torres i Carbó, 6, 08720 Vilafranca del Penedès (Barcelona) Spain (opponent), represented by Curell Sun̈ol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Imagine, S.L., c/. Roca i Batlle 21, 08023 Barcelona, Spain (applicant).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 592 676 is upheld for all the contested goods.

2.        European Union trade mark application No 14 336 564 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 336 564. The opposition is based on, inter alia, European Union trade mark registration No 462 309 for the word mark ‘Sangre De Toro’. The opponent invoked Article 8(1)(b) and 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 marks on which the opposition is based, inter alia, the European Union trade mark No 462 309.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 10/07/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union, from 10/07/2010 to 09/07/2015 inclusive.

Furthermore, the evidence must show use of the trade marks 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.

On 28/07/2016, according to Rule 22(2) EUTMIR, after an extension of the time limit, the Office gave the opponent until 03/12/2016 to submit evidence of use of the earlier trade marks. On 28/10/2015 (evidence for reputation) and 25/10/2016, 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, in particular, the following:

(Evidence submitted on 25/10/2016)

• Enclosure A Invoices:

58 invoices spanning from 30/07/2010 to 15/04/2015 showing sales of wine with the trade mark ‘Sangre De Toro’. Most of the invoices are within the relevant timeframe. A majority of them are issued to different addresses in Spain but there are also invoices issued to other European Union countries such as Italy, France and Germany.

• Enclosure B Press clips:

Two press clips from the United Kingdom published in 2012 in two different newspapers The Independent and The Telegraph reviewing the wine ‘Sangre De Toro’ from the manufacturer Torres.

An article from Global Traveler a USA based magazine published in 2013 naming the red wine ‘Sangre De Toro’ from Torres as one of the best wines on airplanes.

An article from The Post, a United Kingdom based newspaper (Bristol), published in 2015 naming the red wine ‘Sangre De Toro’ from Torres as the wine of the week.

An article from Yorkshire Post, a United Kingdom based magazine, published in 2015, referring to the wine ‘Sangre De Toro’ from the manufacturer Torres.

An article from The Press, a United Kingdom based newspaper (York), published in 2015, reviewing the wine ‘Sangre De Toro’ from Torres.

An article from Daily Mail, a United Kingdom based newspaper, published in 2015, reviewing the wine ‘Sangre De Toro’ from Torres.

An article from The Shropshire, a United Kingdom based newspaper, published in 2015, reviewing the red wine ‘Sangre De Toro’ from Torres.

An article from Suffolk and Norfolk Life, a United Kingdom based newspaper (York), published in 2015 (outside the relevant timeframe), reviewing the red wine ‘Sangre De Toro’ from manufacturer Torres.

An article from Observer Food Monthly, a United Kingdom based newspaper, published in 2016 (outside the relevant timeframe), reviewing the wine ‘Sangre De Toro’ from manufacturer Torres.

An article from The Guardian, a United Kingdom based newspaper, published in 2016 (outside the relevant timeframe), reviewing the red wine ‘Sangre De Toro’ from manufacturer Torres.

An article from S Magazine, from an unknown country, with an unknown publishing date, reviewing the wine ‘Sangre De Toro’ from manufacturer Torres.

An article from Weinguide_Verkaufshits, a German based newspaper published in 2015, reviewing the wine ‘Sangre De Toro’ from manufacturer Torres.

An article from Het Nieuwsblad, a Dutsch based newspaper, published in 2012, reviewing the wine ‘Sangre De Toro’ from manufacturer Torres.

 

• Enclosure C

Shipment schedules: Shipment schedules from 2012 to 2016 showing the exports of the red wine ‘Sangre De Toro’ to a number of European Union countries such as Belgium, Denmark, France, England and Scotland and the Netherlands.

(Evidence submitted on 28/10/2015)

• Enclosure 1-3 Press clips: a number of press clips from different Spanish newspapers and magazines from 2008 to 2014 referring to the company Torres and their trade mark ‘Sangre De Toro’ for wine.

• Enclosure 4 Awards: A list of awards that the wine ‘Sangre De Toro’ has received from 2006 and every year until 2014.

• Enclosure 5 Sales figures: Sales figures from 2004 to 2013 showing the sales volume of the wine ‘Sangre De Toro’.

• Enclosure 6 Description: Description of the product sold under the trade mark ‘Sangre De Toro’ which is wine.

• Enclosure 7 Newsletter: A newsletter (Club Torres) from 2011 from the opponent (Torres) in English, mentioning among other things, a wine under the trade mark ‘Sangre De Toro’.

Most 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, the evidence outside the relevant time period does not constitute real proof of use, however it merely supports the evidence referring to the period within the timeframe.

The invoices dated 30/07/2010 to 15/04/2015, the press clips and shipment schedules demonstrate that the trade mark has been used in the European Union. This can be inferred from the addresses of the invoices that include places in Spain, Italy, France and Germany. Therefore, the sign is used in the relevant territory of the European Union.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

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.

Use of the mark need not be quantitatively significant for it to be deemed genuine.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. They show that the opponent has sold a considerable amount of wine in the relevant territory during the relevant timeframe.

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 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 it does readily reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

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

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 shall, 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).

The invoices from the period 2010-2015 show that the mark ‘Sangre De Toro’ was used in sales as a trade mark for wine. This is supported by the newspaper and magazine articles, most of which are dated within the relevant period, all mentioning ‘Sangre De Toro’ as a trade mark for wine. There is no description in the material submitted, of the sale of alcoholic beverages in general with the trade mark ‘Sangre De Toro’. Therefore, the Opposition Division considers that this evidence, when taken together, shows use of the trade mark ‘Sangre De Toro’ for wine.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for:

Class 33:        Wine.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition which was also not contested by the applicant in its observations of 20/02/2017.

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.

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 462 309 ‘Sangre De Toro’.

1. The goods

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

Class 33:        Wine.

The contested goods are the following:

Class 33:        Alcoholic beverages (except beer).

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.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention will be average.  

3. The signs

Sangre De Toro	SANGRE DE ESPAÑA
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).

Both signs are word marks, which are protected in all different typefaces.

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 elements ‘Sangre De’ are not meaningful in certain territories, for example, in those countries where Spanish is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English and Swedish-speaking part of the public such as in the United Kingdom and Sweden. Likewise the element ‘Toro’ in the earlier mark will not be understood by the relevant public.

However, the element ‘ESPAÑA’ which is the Spanish word for ‘Spain’, will be understood by all the relevant public. This is because the goods in question usually bear the name of their country of origin in its original language, which the consumer has come to known, even if he does not speak said language. Therefore, this element will merely be understood as an indication of geographical origin and is non-distinctive for the goods in question.

Visually and aurally, the signs coincide in the elements ‘Sangre De’ in the beginning of both marks. However, they differ in the element ‘Toro’ of the earlier sign and in the non-distinctive element ‘ESPAÑA’ of the contested sign.

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.

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

Conceptually, although the public in the relevant territory will perceive the meaning  ‘ESPAÑA’ of the contested sign, as explained above, the other sign has no meaning in that territory. 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 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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

Taking into account the above average visual and aural similarities between the signs, the identical beginning of the signs, the normal degree of distinctiveness of the earlier trade mark, the average degree of attention of the public and the identity between the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

Considering all the above, there is a likelihood of confusion on the part of the English and Swedish-speaking part of the public. 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.

Since the opposition is 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include SANGRE. In support of its argument the applicant refers to several trade mark registrations in the European Union.

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 ‘SANGRE’. Under these circumstances, the applicant’s claims must be set aside.

As the earlier European Union trade mark registration No 462 309 ‘Sangre De Toro’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tobias KLEE

Magnus ABRAMSSON

Martin EBERL

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.