OPPOSITION DIVISION
OPPOSITION No B 2 821 067
Viña Concha y Toro S.A., Nueva Tajamar 481, Piso 15, World Trade Center, Torre
Norte, Las Condes, Santiago, Chile (opponent), represented by Marks & Clerk LLP,
90 Long Acre, London, WC2E 9RA, United Kingdom (professional representative)
a g a i n s t
Bingliang Hu, via del Popolino, 2, 59100 Prato, Italy (applicant).
On 10/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 821 067 is rejected in its entirety.
2. The opponent bears the costs.
PRELIMINAY QUESTION
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 services of European Union trade
mark application No 15 174 006 ‘wine legend’ for services in Class 35. The
opposition is based on European Union trade mark registration No 3 199 395,
‘CASILLERO DEL DIABLO, WINE LEGEND’ and No 6 666 044 ,
both for goods in Class 33. The opponent invoked Article 8(1)(b) and Article 8(5)
EUTMR.
Decision on Opposition No B 2 821 067 page: 2 of 5
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when
the following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also
be prior to the filing of the contested trade mark; it must exist in the territory
concerned and for the goods and/or services on which the opposition is
based.
Risk of injury: use of the contested trade mark would take unfair advantage
of, or be detrimental to, the distinctive character or repute of the earlier trade
mark.
The fulfilment of all the above mentioned conditions may not be sufficient. The
opposition may still fail if the applicant establishes due cause for the use of the
contested trade mark.
In the present case, the applicant did not claim to have due cause for using the
contested mark. Therefore, in the absence of any indications to the contrary, it must
be assumed that no due cause exists.
The abovementioned requirements are cumulative and, therefore, the absence of
any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR
(16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).
According to the opponent, the earlier trade marks have a reputation in the United
Kingdom in respect of:
Class 33: Wines.
The opposition is directed against the following services:
Class 35: Business assistance, management and administrative services; business
analysis, research and information services; commercial trading and consumer
information services; advertising, marketing and promotional services.
The examination of the opposition will start on the premise that the earlier marks
have the highest degree of reputation for wines.
Decision on Opposition No B 2 821 067 page: 3 of 5
a) Risk of injury: the ‘link’ between the signs
In order to establish the existence of a risk of injury, it is necessary to demonstrate
that, given all the relevant factors, the relevant public will establish a link (or
association) between the signs. The necessity of such a ‘link’ between the conflicting
marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has
been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582,
§ 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an
additional requirement but merely reflects the need to determine whether the
association that the public might establish between the signs is such that either
detriment or unfair advantage is likely to occur after all of the factors that are relevant
to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07,
Intel, EU:C:2008:655, § 42):
the degree of similarity between the signs;
the nature of the goods and services, including the degree of similarity or
dissimilarity between those goods or services, and the relevant public;
the strength of the earlier mark’s reputation;
the degree of the earlier mark’s distinctive character, whether inherent or
acquired through use;
the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the
particular circumstances. Moreover, the existence of a ‘link’ may be established on
the basis of only some of these criteria.
The opponent’s goods are alcoholic drinks intended for the general public. They can
be served in restaurants and in bars and are on sale in supermarkets and grocery
stores. On the other hand, the applicant’s services include services rendered to a
professional public by persons or organisations principally with the object of helping
in the management of the business affairs, as well as services rendered by
advertising establishments primarily undertaking communication to the public.
By their nature, services are generally dissimilar to goods. This is because goods are
articles of trade, wares, merchandise or real estate. Their sale usually entails the
transfer of title in something physical, i.e. movables or real estate. Services, on the
other hand, consist of the provision of intangible activities. These goods and services
have a different nature, intended purpose and method of use. Their producers or
providers, distribution channels and relevant public are also different. Furthermore,
they are neither complementary nor in competition.
These contested goods and services have nothing in common. Their fields are not
directly related and they belong to different areas of activity. They have different
purposes and satisfy different needs and therefore, they have completely divergent
distribution channels. Consequently, these goods and services are so dissimilar that
it is not plausible to think that the public would be reminded of the earlier mark when
purchasing the contested services bearing the contested mark.
Decision on Opposition No B 2 821 067 page: 4 of 5
Furthermore, the establishment of such a link, while triggered by similarity (or
identity) between the signs, requires that the relevant sections of the public for each
of the goods and services covered by the trade marks in dispute are the same or
overlap to some extent.
According to the Court of Justice of the European Union, it is therefore conceivable
that the relevant section of the public as regards the goods or services for which the
earlier mark was registered is completely distinct from the relevant section of the
public as regards the goods or services for which the later mark was registered and
that the earlier mark, although it has a reputation, is not known to the public targeted
by the later mark. In such a case, the public targeted by each of the two marks may
never be confronted with the other mark, so that it will not establish any link between
those marks (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48).
The Court of Justice has also noted, that certain marks may have acquired such a
reputation that it goes beyond the relevant public as regards the goods or services
for which those marks were registered. In such a case, it is possible that the relevant
section of the public as regards the goods or services for which the later mark is
registered will make a connection between the conflicting marks, even though that
public is wholly distinct from the relevant section of the public as regards goods or
services for which the earlier mark was registered (27/11/2008, C-252/07, Intel,
EU:C:2008:655, § 51 and 52).
In the present case, there is no overlap between the relevant sections of the public
for the trade marks in dispute. As seen above, each trade mark targets a different
type of public. While the contested services are aimed at the professional public with
a high attentiveness, the goods of the earlier trade mark are aimed at the general
public with an average degree of attention. Given that the public for the contested
sign is completely distinct from the relevant section of the public of the earlier trade
mark, no association will be made between the signs.
The opponent’s argument that the opposing goods and services are similar because
the contested services of advertising or trading can relate to its goods, is not
sufficient to find a link between these two different sections of the public.
Therefore, taking into account and weighing up all the relevant factors of the present
case, the Opposition Division concludes that, even assuming that the earlier trade
marks have the highest degree of reputation for wines, it is unlikely that the relevant
public will make a mental connection between the signs in dispute, that is to say,
establish a ‘link’ between them. Therefore, the opposition is not well founded under
Article 8(5) EUTMR and must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail
insofar as based on grounds under Article 8(1)(b) EUTMR because the goods and
services are not similar.
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.
Decision on Opposition No B 2 821 067 page: 5 of 5
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. In the present case, the applicant did not appoint a
professional representative within the meaning of Article 120 EUTMR and therefore
did not incur representation costs.
The Opposition Division
Jessica LEWIS Loreto URRACA LUQUE Elena NICOLÁS GÓMEZ
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.