OPPOSITION DIVISION
OPPOSITION No B 2 784 596
Instituto nacional de defensa de la competencia y de la protección de la
propiedad intelectual "INDECOPI", Calle de la Prosa 104, San Borja, Lima, Perú
(opponent), represented by Berenguer y Pomares Abogados, Calle Canalejas, 13 –
4º, 03001 Alicante, Spain (professional representative)
a g a i n s t
Multifood – Representação de Marcas de Restaurantes, S.A., Rua do Mar do
Norte
Lote 1.03.2.1B, 4º. B, Parque das Nações, 1990-143 Lisboa, Portugal, (applicant),
represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, P-1249-103 Lisboa,
Portugal (professional representative).
On 18/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 784 596 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 400 484. After a limitation of the application, the
opposition was maintained for all services in Class 43. The opposition is based on
the following rights:
Geographical Indication ‘PISCO’ , for fruit spirit protected by virtue of
Commission Regulation (EU) No 1065/2013 of 30/10/2013 amending Annex
III of Regulation (EC) No 110/2008 of the European Parliament and of the
Concil on the definition, description, presentation, labelling and the protection
of geographical indications for spirit drinks; and
Geographical Indication ‘PISCO’ protected by virtue of the International
Agreement between the EU and its Members States, of the one part, and
Colombia and Peru, of the other part of 26/06/2012 (OJ EU of 21/12/2012), in
connection to spirits.
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The opponent invoked Article 8(4a) EUTMR (currently Article 8(6) EUTMR).
DESIGNATIONS OF ORIGIN OR GEOGRAPHICAL INDICATIONS —
ARTICLE 8(6) EUTMR
The opponent lodged an opposition invoking Article 8(4a) EUTMR. The Opposition
Division notes that this article, originally introduced by Regulation (EU) 2015/2424
amending Regulation No 207/2009 on the Community trade mark, is currently Article
8(6) EUTMR, following the entering into force of Regulation 2017/1001. It remains
clear that the wording of that provision has not changed in the new Regulation.
According to Article 8(6) EUTMR, upon opposition by any person authorised under
the relevant law to exercise the rights arising from a designation of origin or a
geographical indication, the trade mark applied for must not be registered where and
to the extent that, pursuant to the Union legislation or national law providing for the
protection of designations of origin or geographical indications:
(i) an application for a designation of origin or a geographical indication had
already been submitted, in accordance with Union legislation or national law,
prior to the date of application for registration of the EU trade mark or the date
of the priority claimed for the application, subject to its subsequent registration;
(ii) that designation of origin or geographical indication confers the right to prohibit
the use of a subsequent trade mark.
A geographical indication identifies a product originating in a particular geographical
area, where a given quality, reputation or other characteristic of that product is
essentially attributable to its geographical origin.
The ground of refusal of Article 8(6) EUTMR is subject to the following requirements:
The opponent is authorised under the relevant law to exercise the rights
arising from a designation of origin or a geographical indication;
an application for a designation of origin or a geographical indication had
already been submitted, in accordance with Union legislation or national law,
prior to the date of application for registration of the EU trade mark or the date
of the priority claimed for the application, subject to its subsequent
registration;
that designation of origin or geographical indication confers the right to
prohibit the use of a subsequent trade mark.
These conditions are cumulative. Therefore, where one of those conditions is not
met, the opposition based on a protected geographical indication (“PGI”) according to
Article 8(6) EUTMR cannot succeed.
a)The right under applicable law
Geographical indications for spirit drinks protected under Regulation (EC)
No 110/2008 of the European Parliament and of the Council of 15 January 2008 on
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the definition, description, presentation, labelling and the protection of geographical
indications of spirit drinks fall under Article 8(6) EUTMR.
According to Article 15(1) of Regulation No 110/2008, for the purpose of this
Regulation a geographical indication is an indication that identifies a spirit drink as
originating in the territory of a country, or a region or locality in that territory, where a
given quality, reputation or other characteristic of that spirit drink is essentially
attributable to its geographical origin.
In the present case, the opponent relies on the geographical indication ‘PISCO’
protected by virtue of Commission Regulation (EU) No 1065/2013 of 30/10/2013,
which entered the geographical indication ‘PISCO’ for fruit spirit originating in Peru in
Annex III of Council Regulation (EC) No 110/2008 on the definition, description,
presentation, labelling and the protection of geographical indications of spirit drinks.
Furthermore, the opponent relies on the geographical indication ‘PISCO’ that is also
protected at the European Union level by virtue of the International Agreement
between the EU and its Members States, of the one part, and Colombia and Peru, of
the other part of 26/06/2012 (OJ EU of 21/12/2012), whereby ‘PISCO’ is included in
the Annex XIII ‘list of geographical indications’ in connection to spirits.
In order to prove its entitlement to protect its right, the opponent submitted the
following documents:
Resolution No 072087-DIPI issued by INDECOPI (Instituto Nacional de
Defensa de la Competencia y de la Proteccion de la Propiedad Intelectual) on
12 December 1990, granting the registration of the Denomination of Origin
“Pisco”. In the document it is stated that ‘PISCO’ is the product obtained from
the distillation of liquid resulting from the exclusive fermentation of ripe
grapes, produced on the coast of the Departments of Lima, Ica, Arequipa,
Moquegua and the valleys of Locumba, Sama and Caplina in the Department
of Tacna in accordance with the provisions of National Technical Standard
(No. 211-001).
Copy of the application for registration of the geographical indication ‘PISCO’
before the Directorate General for Agriculture and Rural Development of the
European Commission. The application for registration was filed on
27/07/2009 and in the technical file attached it is stated that the applicant is
the National Institute for the Defence of Competition and the Protection of
Intellectual Property, INDECOPI (Instituto Nacional de Defensa de la
Competencia y de la Proteccion de la Propiedad Intelectual). The name
‘PISCO’ geographically corresponds to the area surrounding the Pisco Valley
and a port of the same name located in the Ica Department Republic of Peru.
It is noted that in section 1 of this document, titled “IDENTIFICATION OF THE
APPLICANT”, the applicant is INDECOPI. Furthermore, in the document it is
stated that ‘According to the legislation on the industrial Property in force in
Peru, Denominations of Origin are property of the Peruvian State, which in
turn, as the owner, will grant authorization for the use of each denomination of
Origin. Within the Peruvian State, the authority competent to declare the
protection of a Peruvian designation of origin and grant authorizations of use
is INTECOPI’.
Copy of the Official Journal of the European Union of 12/05/2011, whereby
the main specifications of the technical file for ‘PISCO’ in connection with fruit
spirit were published. In the Official Journal it is stated that on 27/07/2009, the
Decision on Opposition No B 2 784 596 page: 4 of 12
Republic of Peru has applied for registration of ‘PISCO’ as a geographical
indication, however, in section 9 of this document, titled ‘Applicant’, it is stated
the name of the opponent, INDECOPI.
Copy of Commission Regulation (EU) No 1065/2013 of 30/10/2013,
amending the Annex III to Regulation (EC) No 110/2008 of the EU Parliament
and the Council on the definition, description, presentation, labelling and the
protection of geographical indications of spirit drinks. As established in this
Regulation, the geographical indication “Pisco” is added to Annex III as
protected geographical indication in product category 9, fruit spirit. In the
document it is also stated that ‘the Republic of Peru has applied for the
registration of ‘PISCO’ as a geographical indication’.
Copy of trade agreement between the European Union and its Member
States, of the one part, and Colombia and Peru, of the other part, published
on the Official Journal of the European Union of 21/12/2012, whereby, in
Appendix I of Annex XIII, ‘PISCO’ is indicated as geographical indication of
Peru in relation to spirits.
Copy of Peruvian Legislative Decree No 1033 approving the Law on
Organization and Functions of the National Institute for the Defense of
Competition and Intellectual Property Protection, whereby it is stated that
INDECOPI is a Peruvian ‘specialized public agency with legal capacity’.
According to Article 2(19((h) of the Legislative Decree 1033, INDECOPI is
entrusted with ‘administration of the licensing and protection of intellectual
property rights in all forms, in administrative jurisdictions, in accordance with
the current legislation’. As highlighted by the opponent, Article 36 states that
INDECOPI, as Distinctive Signs Directorate, shall ‘control and protect
granted, recognized and declared rights through appropriate procedures,
such as dispute settlement procedures and mechanisms’ with regard to, inter
alia, geographical indication.
In light of the foregoing, the Opposition Division considers that the opponent has
proven its entitlement to submit the present opposition. Clearly, INDECOPI is the
relevant organism authorised to exercise the rights arising from a designation of
origin or a geographical indication.
b)The opponent’s right vis-à-vis the contested trade mark
1. Geographical indication ‘PISCO’ for fruit spirits protected by virtue of
Commission Regulation (EU) No 1065/2013 of 30/10/2013 amending
Annex III of Regulation (EC) No 110/2008
The opponent invokes the provisions contained in paragraphs (a) to (d) of Article 16,
Regulation 110/2008.
According to Article 16 of Regulation No 110/2008, without prejudice to Article 10, the
geographical indications registered in Annex III will be protected against:
(a) any direct or indirect commercial use in respect of products not covered by the
registration insofar as those products are comparable to the spirit drink
registered under that geographical indication or insofar as such use exploits the
reputation of the registered geographical indication;
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(b) any misuse, imitation or evocation, even if the true origin of the product is
indicated or the geographical indication is used in translation or accompanied
by an expression such as ‘like’, ‘type’, ‘style’, ‘made’, ‘flavour’ or any other
similar term;
(c) any other false or misleading indication as to the provenance, origin, nature or
essential qualities on the description, presentation or labelling of the product,
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.
The opponent argues that the EUTM application will be understood by the public as
an indication of the geographical origin of the services in question, owing to the
indication ‘PISCO’ fully included in the contested mark ‘TAPISCO’. Furthermore, the
mark ‘TAPISCO’ may be perceived as a mix of two words, ‘tapas’ and the name of
the PGI ‘PISCO’, which conveys the message to consumers that the contested
services are ‘places where consumers may eat tapas and drink Pisco’. Therefore the
element ‘TAP’ makes it even more evident that the element of the sign ‘PISCO’ refers
to the Peruvian alcoholic beverage. The services covered by the EUTM application
are closely connected with the product protected by the PGI, which may be
considered as the object or the core business of the applicant’s services.
Furthermore, the contested mark exploits the goodwill and reputation of the protected
name ‘PISCO’. Since the contested EUTM incorporates the full designation, when
consumers are confronted with the applied sign, the image triggered in their mind will
undoubtedly be that of the product whose designation is protected. Finally, the trade
mark ‘TAPISCO’ consists of a misleading indication as to the origin or essential
qualities of the product and consumers will believe that the drinks offered through the
services covered under the contested mark are alcoholic drinks which correspond to
the nature, method of production and quality of the ‘PISCO’ product as defined in the
PGI’s product specification.
Following a restriction of the list of goods and services requested by the applicant,
whereby the goods initially applied for in Class 32 were deleted, the contested
services are the following:
Class 43: Cafés; restaurants; snack-bars; self-service restaurants; catering for
guests in canteens; cafés; bar services.
Direct or indirect commercial use for comparable products – Article 16(a) of
Regulation (EC) No 110/2008
Article 16(a) of Regulation No 110/2008 limits the protection to products ‘not covered
by the registration’. The essential function of a geographical indication is to prevent
the use of the indications for products not having the stated geographical origin, as,
as far as the special regulations for geographical indications for spirits and wines are
concerned, not having the characteristics of the product as required under the
relevant product specification. In particular, this provision grants protection in respect
of the direct or indirect commercial use for comparable products (to the spirit drink
registered under the PGI), not covered by the registration, or, alternatively, if the
reputation of the geographical indication is exploited.
In its observations, the opponent argues that the use of the contested mark would
imply a use of the mark for the spirit drinks that are served within the bar services or
Decision on Opposition No B 2 784 596 page: 6 of 12
cafés, restaurants, etc. covered by the contested mark. Furthermore, the opponent
refers to previous decisions of the Office.
As far as Article 16(a) Regulation No 110/2008 is concerned the question is to
establish whether the contested services and spirits are ‘comparable’.
The Court’s case-law has developed certain criteria for determining whether goods
are comparable. In particular, whether or not the products have common objective
characteristics, such as method of elaboration, physical appearance of the product or
use of the same raw materials (judgment of 14/07/2011, joined cases C-4/10 and C-
27/10, BNI Cognac, EU:C:2011:484, § 54). It must be emphasized, incidenter
tantum, 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).
In addition, factors such as whether the products are consumed, from the point of
view of the relevant public, on largely identical occasions, or whether or not they are
distributed through the same channels and/or subject to similar marketing rules, can
be taken into account in order to confirm comparability of the goods.
In the present case, it is deemed that the services of the contested mark are not
comparable to the goods covered by the PGI. The contested services, indeed, are
essentially services for providing food and drink, and include services such as
catering, cafeterias and bars. These services are provided by persons or
establishments and are intended to prepare and/or ‘serve’ food and drinks directly for
consumption by consumers, along with providing consumers with a place where they
can enjoy a drink or a meal and socialise. Other important elements of these services
are the level of personal attention, the expertise in the preparation and serving of
food and drinks and the general atmosphere of the facilities, which together provide
an additional value to the mere ‘purchasing’ of the goods that is, furthermore,
reflected in the price.
It is evident that the nature of fruit spirits, as protected by the geographical indication
and the nature of the contested services cafes, restaurants, snack-bars, self-service
restaurants, catering for guests in canteens, cafes, bar services are fundamentally
different. The PGI is registered for spirits which are tangible goods, whereas the
contested services are intangible. The skills required to produce and process spirits
are different from those needed to carry out the contested restaurants, bars and
catering services; therefore, they are usually rendered by different undertakings in
their corresponding fields. The goods covered by the PGI belong to the primary
sector and are essentially agricultural. The contested services are, in turn, very
distant from the natural environment and satisfy different needs. Although raw and
processed food may be transformed in the restaurant industry, here the focus is not
merely on the quality or properties of the ingredients, but rather on the quality of the
service itself, on providing people with a distinctive experience through culinary
speciality, on social interaction, etc.
The Opposition Division concludes that even if a certain link may be found between
the above-mentioned goods and services, given that spirits may be consumed in
restaurants, bars and cafes, the opponent's goods and the applicant's services are
not ‘comparable’ in the sense of Article 16(a) Regulation No 110/2008. As to the
reference made by the opponent to previous decisions, it is noted that the Office is
not bound by its previous decisions as each case has to be dealt with separately and
with regard to its particularities.
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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).
Exploitation of the reputation – Article 16(a) of Regulation (EC) No 110/2008
The second alternative for protection under Article 16(a) of Regulation No 110/2008 is
that there is a ‘direct or indirect commercial use in respect of the products not
covered by the registration (…) in so far as such use exploits the reputation of the
registered geographical indication’.
As to the exploitation of the reputation of the geographical indication, the opponent
submits the following evidence:
A report dated 17/02/2017 and prepared by the Statistical Management
Department – National Tendency of Economic Studies and Statistics of Peru.
This document contains the volume of Pisco exports to the European Union in
the time period between 2005/2016, with details per country, excluding the
United Kingdom.
Excerpts from the official website of the National Pisco Commission, showing
the estimate production of Pisco in the period 2000-2015 along with statistics
of Pisco export.
Copies of 5 invoices for the product Pisco issued to different companies in
Spain, Italy and France. The invoices cover the period 2015-2016.
Copies of several awards won by Pisco products in the Concours Mondial de
Bruxelles which was held in different European cities during the years 2011-
2015. This competition is held yearly and have as object wines and spirits.
Form the specification of the products awarded, it is noted that several of
these awards were granted to wines (e.g. ‘grand reserve tinto’, ‘espumante
brut’).
A table, originating from the opponent itself, listing approximately 220 awards
won worldwide by the ‘PISCO’ products in the years 2007-2016.
Copy of a presentation of the ‘Second European Pisco Promotional Tour’ held
on 24/11/2014, including picture of the promotional events and information of
activities carried out in the tour. As stated in this document, the tour has been
promoting the Pisco product in 5 European cities, Berlin, London, Madrid,
Milan and Paris.
Report of the event ‘Pisco es Peru’, held in Milan on 15/10/2014, including a
number of pictures of the event and the description of the activities and the
agenda of said event.
Brochures of the campaign ‘Pisco is Peru’ in several languages, namely
English, Spanish, French, Italia, German and Portuguese.
Printouts from the website peruvianenterprises.com, including pictures of
promotional events that were allegedly carried out in several cities in the
United Kingdom.
The Opposition Division notes that neither of the two scenarios of ‘direct use’ or
‘indirect use’ are present in the case at hand. Indeed, in order for a ‘direct use’ and
’indirect use’ to take place, the contested EU trade mark application shall consist
solely of the whole PGI (that is to say, the contested mark is identical to the protected
geographical indication), or the contested mark shall reproduce the whole PGI as a
Decision on Opposition No B 2 784 596 page: 8 of 12
separate element in addition to other word or figurative elements. In particular, there
can be a ‘indirect use’, for instance, in the case of a label where the contested sign
reproduces the PGI together with other elements and the PGI is visible and appears
as information, e.g. about the origin or type of the product. For an indirect use to take
place, there should be a logical separation of the PGI from the rest of the elements in
the contested mark for it to be identifiable.
The conflicting signs are both word marks consisting of the words ‘PISCO’ and
’TAPISCO’, respectively. It is obvious that the contested mark is not the exact
reproduction of the PGI. On the other hand, although the word TAPISCO includes the
PGI ‘PISCO’ in its entirety, it is artificial to conclude that the contested trade mark will
be dissected into TA and PISCO. Moreover, the Opposition Division considers that
the incorporation of PISCO into the trade mark does not lead the relevant public to
associate the contested mark or the services in respect of which it has been applied
for with the PGI ‘PISCO’ (see in this regard judgment of 14/09/2017, C-56/16P PORT
CHARLOTTE, ECLI:EU:C:2017:693, §115) for fruit spirits. The mark ‘TAPISCO’ will
rather be understood as a fanciful word with no precise meaning, as it does not exist
as such in any of the relevant languages, and it is not considered capable of
triggering in consumers’ mind the idea of the products covered by the PGI ‘PISCO’.
There is no objective reason to believe that consumers will identify ‘PISCO’ as a
separate element within the contested sign.
In the light of the foregoing, it is not necessary to verify whether the PGI PISCO has
a reputation. The Opposition Division considers that the contested trade mark will not
in any event exploit the reputation of the PGI PISCO. Consequently, the opponent’s
claim shall be dismissed.
Misuse, imitation or evocation of a PGI – Article 16(b) of Regulation (EC) No
110/2008
Article 16(b) of Council Regulation (EC) No 10/2008 addresses a typical abusive
means of referring to a geographical indication.
According to the Court, the concept of ‘evocation’ covers a situation where the term
used to designate a product incorporates part of a protected designation, with the
result that, when the consumer is confronted with the name of the product, the image
triggered in his or her mind is that of the product the designation of which is protected
(judgment of 14/09/2017, C-56/16P PORT CHARLOTTE, ECLI:EU:C:2017:693, §
122-123 and quoted case-law).
Consumers must therefore establish a link between the term used to designate the
services (i.e. the trade mark TAPISCO) and the product whose designation is
protected (PISCO fruit spirit), whilst it is necessary to take account of the presumed
expectation of the average consumer, who is reasonably well informed and
reasonably observant and circumspect.
The opponent claims that there is evocation of the earlier PGI because the EUTM
application incorporates the PGI so that when the consumer is confronted with the
applied sign the image triggered in his mind will undoubtedly be that of the product
whose designation is protected.
Despite the fact that the contested mark indeed incorporates the PGI PISCO, it is
considered that this alone is not sufficient for Article 16(b) to apply in the present
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case. Indeed, it is deemed not likely that the average consumer, confronted with
services such as cafés; restaurants; snack-bars; self-service restaurants; catering for
guests in canteens; cafés; bar services under the contested EUTM application will
associate it with a fruit spirit covered by the PGI. A link is not considered to exist
between the conflicting signs, given that the word ‘TAPISCO’ will be perceived as a
whole and, more specifically, as a fanciful designation to which consumers will not be
attributed any clear meaning. It will be seen as a fanciful word with no connection to
the products covered by the PGI.
Consequently, the opponent’s claim in this respect shall be dismissed.
Other misleading indications and practices – Article 16(c) and (d) of Regulation
110/2008
The opponent refers to Article 16(c) and (d) of Regulation 110/2008, and claims that
that consumers will believe the drinks offered through the contested services
distinguished under the challenged trade mark serve alcoholic drinks which
correspond to the nature, method of production and quality of the Pisco, as defined in
the PGI product specification, and will believe that the services in Class 43 include
the serving of the fruit spirits protected under the PGI Pisco.
Article 16(c) and (d) of Regulation 110/2008 refer to:
(c) any other false or misleading indication as to the provenance, origin, nature or
essential qualities on the description, presentation or labelling of the product, liable to
convey a false impression as to its origin; and
(d) any other practice liable to mislead the consumer as to the true origin of the
product.
The Opposition Division refers to its findings in the previous sections of this decision.
As it has been indicated above, the average consumer will not associate the EUTM
application with the PGI PISCO, therefore, and a fortiori, it will not consider that the
EUTM application conveys false or misleading information in connection with the
PGI.
It follows that the opponent’s claim in this respect shall be set aside.
2. Geographical indication ‘PISCO’ protected by virtue of the Trade
Agreement between the European Union and its Member States, of the
one part, and Colombia and Peru, of the other part
As regards the Trade Agreement between the European Union and its Member
States, on the one part, and Colombia and Peru of 26/06/2012, on the other part, (OJ
EU of 21.12.2012), invoked by the opponent, it contains rules for the protection of
geographical indications which roughly correspond to those in Council Regulation
(EC) No 110/2008.
Pursuant to its Article 211 (headlined ‘Relationship with Trademarks’), the Parties
shall ‘refuse to register or shall provide for invalidation of a trademark that
corresponds to any of the situations referred to in Article 210, paragraph 1, in relation
to a protected geographical indication for identical or like products, provided an
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application to register the trademark is submitted after the date of application for
protection of the geographical indication in its territory’.
Article 210, paragraph 1 (headlined ‘Scope of Protection of Geographical
Indications’) states the following:
“The geographical indications of a Party listed in the Appendix 1 of Annex XIII (Lists
of Geographical Indications), as well as those added pursuant to Article 209, shall be
protected by another Party at least against:
1. The geographical indications of a Party listed in the Appendix 1 of Annex XIII (Lists
of Geographical Indications), as well as those added pursuant to Article 209, shall be
protected by another Party at least against:
(a) any commercial use of such protected geographical indication:
(i) for identical or like products not compliant with the product specification
of the geographical indication; or
(ii) in so far as such use exploits the reputation of the geographical
indication;
(b) any other non-authorised use of geographical indications other than those
identifying wines, aromatized wines or spirits drinks that creates confusion, including
even in cases where the name is accompanied by indications such as style, type,
imitation and other similar that creates confusion to the consumer; without prejudice
to this subparagraph, if a Party amends its legislation in order to protect geographical
indications other than those identifying wines, aromatised wines and spirit drinks at a
higher level than the protection provided for in this Agreement, that Party shall extend
such protection to the geographical indications listed in Appendix 1 of Annex XIII
(Lists of Geographical Indications);
(c) in case of geographical indications that identify wines, aromatised wines or spirit
drinks, any misuse, imitation or evocation, at least, for products of this kind, even if
the true origin of the product 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;
(d) any other false or misleading indication as to the provenance, origin, nature or
essential qualities of the product, on the inner or outer packaging, or the advertising
material relating to the product concerned, liable to convey a false impression as to
its origin; and
e) any other practice liable to mislead the consumer as to the true origin of the
product.”
It is noted that there are no substantial differences between the provisions contained
in Article 210 of the Trade Agreement and Article 16 of Regulation No 110/2008 for
the protection of geographical indications which has been examined above.
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The same conclusions reached in the previous section while assessing the
opposition in the light of the relevant provisions contained in Regulation 110/2008 are
equally applicable, mutatis mutandis, to the geographical indication ‘PISCO’
protecting spirits by virtue of the Trade Agreement invoked by the opponent.
It follows that the opposition shall be rejected also in respect to this earlier right.
c) Conclusion
Considering the fact that the goods and services are not comparable and the
differences between the signs in question, the Opposition Division finds that the
conditions of Article 8(6) EUTMR are not fulfilled.
Therefore, the opposition is not well founded under Article 8(6) EUTMR.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Plamen IVANOV Claudia ATTINAÀ Elisa ZAERA CUADRADO
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
Decision on Opposition No B 2 784 596 page: 12 of 12
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.