CANCELLATION No C 32 583 (INVALIDITY)

 

Villa Franciacorta di Bianchi Alessandro e Roberta Societa' Agricola S.S., Via Villa, 12, 25040 Monticelli Brusati (BS), Italy (applicant), represented by Eleonora Trigari, Via Zante, 15/H, 20138 Milan, Italy (professional representative)

 

a g a i n s t

 

Cooperativa Agricola de El Villar del Arzobispo S. Coop. V., Avda. Del Agricultor, 1, 46170 Villar del Arzobispo (Valencia), Spain  (EUTM proprietor), represented by J. Lopez Patentes y Marcas, S.L., C/. San Vicente, nº 83-3º-17, 46007 Valencia, Spain (professional representative).

 

On 26/06/2020, the Cancellation Division takes the following

 

 

DECISION

1.	The application for a declaration of invalidity is rejected in its entirety.
2.	The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed a request for  a declaration of invalidity against European Union trade mark No 9 813 718 ‘LAS VILLAS’ (word mark) (the EUTM), filed on 16/03/2011 and registered on 27/07/2011. The request is directed against all the goods and services covered by the EUTM, namely:  

Class 33: Wines.

Class 35: Wholesaling and selling via global computer networks of wine.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)(c)(d)(g)(j) and (k) EUTMR and also Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the word ‘villas’ is Spanish for ‘villages’, ‘small towns’ or ‘boroughs’ and ‘las’ is the Spanish plural definite article. It argues that the French equivalent of ‘las villas’ is ‘les villages’. It refers to six prior protected denominations of origin (hereinafter DPOs) protecting wine from France, Hungary and Spain, that contain the word ‘villages’, ‘villány’ and ‘villaviciosa’. The applicant puts forward that the contested mark evokes and misuses the PDOs because it contains their parts or translation of their parts, in addition to visual, aural and conceptual similarities between the contested mark and the PDOs or their parts, and the identity of the goods in question. As regards misuse, the applicant argues that the consumers may believe that the goods and services provided under the contested mark come from the French villages falling into the PDOs as the mark provides false indications of the geographical source of the goods and services. Moreover, the applicant refers to the registered traditional term for wine (hereinafter TTW) ‘VILLAGES’ and claims that the contested mark is likely to mislead consumers by giving them the impression that the wines bearing the contested mark qualify for those wines under the TTW ‘VILLAGES’. It contends that the contested mark is nothing but a direct and clear imitation of the TTW and consumers will associate the two due to the high visual and phonetic similarity and conceptual identity.

The applicant also argues that the mark lacks distinctiveness and is descriptive, as it simply means ‘villages’, it is formed by a part of PDOs and it describes geographical origin. According to the applicant, ‘las villas’ identifies 12 specific areas of wine production in the county of Priorat in Catalonia, Spain, which are part of Denominación de Origen (hereinafter DOQ) Priorat. Therefore, the mark describes the geographical origin of the wine as consumers will assume that the wine originates from one of the 12 towns. The applicant also mentions the project ‘Vinos de Villa’, approved by Consell regulador in Spain in 2009, that allowed the identification of the 12 zones of grape production in the DOQ Priorat. The applicant concludes that ‘LAS VILLAS’ does not identify one specific wine producer but all those producers which are settled in the 12 grape production areas within DOQ Priorat. The applicant also emphasizes the importance of leaving the term ‘LAS VILLAS’ free for use of other wine producers, in particular those settled in ‘las villas’. The applicant also puts forward that the singular variation of the contested mark, ‘VILLA’, has become customary in the current language because it is very commonly used on the wine market. It submits links to many websites connected to wines that include the word ‘villa’ in their names. In addition, 40 wines were registered as ‘Vinos de Villa’ under the project of DOQ Priorat. According to the applicant, consumers have been exposed to a wide use of the word ‘Villa’ in the wine sector and will perceive this as a reference to a winery/ wine resort or an estate with a vineyard. The applicant concludes that all the wines referred to on the websites and the Vinos de Villas existed well before the filing of the contested mark.

As regards Article 7(1)(g) EUTMR, the applicant argues that the mark will deceive the consumers because it directly refers to the Vinos de Villa and the region of the 12 ‘villas’ in DOQ Priorat and it also misuses the previously mentioned DPOs. The consumers will assume that the wines originate in DOQ Priorat or that they fulfill the qualities required from the wines labelled with the DPOs. The applicant puts forward that there is no guarantee that the EUTM proprietor’s products actually fulfill those requirements or that they originate in Priorat. Moreover, the applicant contends that it is unlikely that they do because the EUTM proprietor is not listed among the registrants of Vinos de Villa and it has its registered offices near Valencia, that is, 300 kilometers away from Priorat.

Finally, the applicant claims that the EUTM proprietor registered the contested mark in bad faith, for essentially the same reasons as mentioned above, namely the mark’s resemblance to the collective name for the villages forming DOQ Priorat and to the earlier DPOs and TTW. According to the applicant, the EUTM proprietor must have had knowledge of at least some of the earlier denominations, as they all concern the field of wines, in which the EUTM proprietor is active.

To support its arguments, the applicant submitted the following documents:

• Printouts from Google maps showing the distances between Villar del Arzobispo (the registered seat of the EUTM proprietor) and the villages in DOQ Priorat.

• Numerous website printouts showing wines that include the word ‘Villa’ in their name.

The EUTM proprietor argues that the contested mark originates from the Latin ‘Villa’ meaning ‘a country house’ or ‘a farm’. It claims that ‘LAS VILLAS’ is protected by denomination of origin ‘Valencia’. According to the EUTM proprietor, the applicant confuses the Catalan term ‘Vins de Vila’ within the DOQ Priorat with a dozen small towns that constitute a viticultural zone, identifying each wine region with the name of the town itself. It has nothing to do with the contested trade mark. The EUTM proprietor contends that the differences between the PDOs quoted by the applicant and the contested trade mark are so evident that no likelihood of confusion can arise. It argues that denominations of origin of different regions and countries are essential for the consumer, so the evocation indicated by the applicant cannot be confusing, since the PDOs represent different areas. The EUTM proprietor explains that the words ‘LAS VILLAS’ have origin in Latin and, therefore, the mark cannot be considered to be a translation of the French word ‘villages’. It concludes from this that the mark is distinctive. As for the alleged descriptive character of the contested mark, the EUTM proprietor puts forward that the description of the trade mark has a Spanish origin as can be seen in the photographs submitted, and a specific designation of origin, so the consumers know how to differentiate the origin of the products. Finally, the EUTM proprietor emphasizes that the mark is under the PDO Valencia so there can be no lack of quality as indicated by the applicant.

To support its arguments, the EUTM proprietor submitted the following documents:

• Certificate issued by the Regulatory Council for PDO Valencia, dated 19/12/2017 confirming that the EUTM proprietor was evaluated and certified for production of wines under the PDO Valencia, and the contested trade mark is one of the marks listed.

• List of certified and authorized bodegas for PDO Valencia, the EUTM proprietor is among them, including its mark ‘LAS VILLAS’.

• Technical sheets of the EUTM proprietor’s wines labelled with the mark ‘LAS VILLAS’, dated between 2010 and 2013.

• Photographs of wine bottles bearing the mark ‘Las Villas’ and of rolls of labels and boxes.

• Presentation ‘Bodegas El Villar’ dated 2013, presenting the EUTM proprietor’s vineyards.

• Certificate of registration of the contested mark.

The applicant reiterates its previous arguments. It emphasizes that the contested mark does not contain any distinctive element capable of distinguishing it from the earlier PDOs and TTW. It notes that likelihood of confusion includes likelihood of association and claims that it is likely that consumers will associate the contested mark with the PDOs and TTW. It underlines that the PDOs are European and enjoy protection in the entire EU. Therefore, the EUTM proprietor’s arguments that the PDOs quoted by the applicant are from different countries than Spain are irrelevant. It is also irrelevant that the EUTM proprietor’s wines are produced under the PDO Valencia. It concludes that the arguments of the EUTM proprietor, as well as the documents submitted by it, are off-topic. The subject of the assessment in the present proceedings is the contested mark as registered and whether or not the EUTM proprietor actually uses other elements on the wine bottles to identify characteristics of the products and indicate their Spanish origin, is irrelevant. In any event, the wines from DOQ Priorat are also Spanish. The point is not to see under which PDO different marks belong on the market. The applicant maintains that the mark should be declared invalid in its entirety.

The EUTM proprietor declares that it could not disagree more with the statements of the applicant. It notes that the applicant provided a lesson in etymological meaning of the word ‘villa’ to conclude that it means the same in all languages; however, the EUTM proprietor observes a particular interest of the applicant in the translation to French. It reiterates that the contested mark is a unique brand that evokes the production of a specific geographical area with its particularities with respect to other areas. The EUTM proprietor wants to differentiate its products from those of other entities by using the contested mark. It repeats its previous arguments, in particular that the PDOs refer to different countries or regions from the PDO Valencia, under which the mark is offered, and for this reason the consumers will not confuse the products of the EUTM proprietor with those labeled with the earlier PDOs. It repeats its remaining previous arguments and maintains that the invalidity application should be rejected.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services. 

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union. 

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the European Union trade mark, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings. 

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources. 

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

ARTICLE 59(1)(a) EUTMR IN CONNECTION WITH ARTICLE 7(1)(j) EUTMR

Article 7(1)(j) EUTMR provides for the refusal of EUTMs that are excluded from registration pursuant to national or EU legislation or international agreements to which the EU or the Member State concerned is party, providing for protection of designations of origin and geographical indications. The current wording of this provision was introduced by Regulation (EU) 2015/2424 of 16/12/2015, but as it applies to the present case it is equivalent in substance to Article 7(1)(j) of Regulation (EC) No 207/2009, in the version in force at the date on which the contested EUTM was filed.

Article 7(1)(j) EUTMR requires the refusal of EUTMs for, inter alia, wines if they contain or consist of a geographical indication identifying wines not having that origin. The concept of a geographical indication identifying wines, within the meaning of Article 7(1)(j) EUTMR must be read in the light of the relevant provisions of European Union law on determining and protecting geographical indications in this area (11/05/2010, T-237/08, Cuvée Palomar, EU:T:2010:185, § 74).

The geographical indications to which this Article is to be applied are PDOs and PGIs registered under the procedures provided for in the Regulation in force at the time which are substantially the same as Regulation (EU) No 1308/2013 of the Council for wines, whether of a Member State of the European Union or a third country.

Article 102 of Regulation (EU) No 1308/2013 establishes the following:

The registration of a trade mark that contains or consists of a protected designation of origin or a geographical indication which does not comply with the product specification concerned or the use of which falls under Article 103(2), and that relates to a product falling under one of the categories listed in Part II of Annex VII, shall be:

(a) refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin or geographical indication to the Commission and the designation of origin or geographical indication is subsequently protected; or

(b) invalidated.

Article 103(2)(b) of Regulation (EU) No 1308/2013 sets out the situations that infringe the rights deriving from a PDO:

A protected designation of origin and a protected geographical indication, as well as the wine using that protected name in conformity with the product specifications, shall be protected against:

(b) any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar.

According to the Court, ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (04/03/1999, C-87/97, Cambozola, EU:C:1999:115, § 25; 26/02/2008, C-132/05, Commission v Germany, EU:C:2008:117, § 44 and 21/01/2016, C-75/15 Verlados, EU:C:2016:35, § 21). Consumers must establish a link between the term used to designate the product (i.e. the trade mark) and the product whose designation is protected (Verlados, § 22), 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 Court has clarified that such link between the term used to designate the product and the product whose name is protected must be sufficiently clear and direct and that a mere association with the protected geographical indication or the geographical area relating thereto is not sufficient (21/01/2016, C-75/15, Verlados, EU:C:2016:35, § 22, 07/06/2018, C-44/17, Glen Buchenbach, EU:C:2018:415, § 53).

In assessing whether such a link is established, the Court has considered the phonetic and visual relationship between the signs and any evidence that may show that such a relationship between the EUTM and the PDO is not fortuitous (Verlados, § 48), as well as the degree of proximity of the goods concerned, including the actual physical appearance or the ingredients and taste of the products covered by the EUTM and the PDO (Cambozola, § 27).

Finally, it should also be mentioned that the EU Regulations protect geographical indications and denominations of origin throughout the territory of the Union. As a result, the Court has ruled that in order to guarantee effective and uniform protection of those PGI/PDOs in that territory, it must be considered that the concept of the consumer covers European consumers and not merely consumers of the Member State in which the product giving rise to the evocation of the PGI/PDO is manufactured (Verlados, § 27).

As regards misuse, the Office considers that an EUTM ‘misuses’ a PDO when it provides false indications as to the geographical source of the goods, with the result that it benefits from the perceived quality of the PDO.

In the present case, the applicant argues that the contested mark misuses and evokes the following PDOs, all protected for wine:

PDO-FR-A0259 ‘Anjou Villages Brissac’

PDO-FR-A0409 ‘Côte de Nuits-Villages / Vins fins de la Côte de Nuits’

PDO-FR-A0401 ‘Côte de Beaune-Villages’

PDO-FR-A0999 ‘Côtes du Roussillon Villages’

PDO-HU-A1381 ‘Villány / Villányi’

PGI-ES-A1419 ‘Villaviciosa de Córdoba’

It has to be assessed whether or not the name ‘LAS VILLAS’ for wine and wholesale of wine constitutes an ‘evocation’ or ‘misuse’ of the protected designations of origin listed above. In view of the nature of the goods and services at issue, namely wine and wholesale of wine, the relevant public is public at large consisting of average consumers who is reasonably well informed and reasonably observant and circumspect, and, as regards wholesale, business consumers. The relevant territory is the entire EU, as mentioned above.

As explained above, the existence of evocation means that, when consumers encounter the name ‘LAS VILLAS’, they will imagine that the product benefits from the above PDOs and will not see the relationship between the names as fortuitous. The applicant claims that ‘LAS VILLAS’ is a Spanish term that can be translated into French as ‘les villages’. This is not completely accurate. The French term ‘village’ denotes a simple settlement or locality, whereas the term ‘villa’ refers to a place which was granted some privileges and thus it was promoted from a ‘pueblo’ to a ‘villa’ (Real Academia Española). However, it did not rise enough to become a town (ciudad). In any event, in the current time and language the differences are vanishing and it is possible that the term ‘village’ can be considered a broad equivalent to the Spanish ‘villa’. However, even consumers who will be aware of this fact will not make the abovementioned link between the contested mark and the PDOs containing the word ‘VILLAGES’. The word ‘VILLAGES’ is not the geographically significant part of the PDOs. Consumers need information about which villages are concerned, they are aware that many villages and villas exist in the world and they will not connect two names merely because they both contain this word, when in all the cited PDOs specific names of the particular villages are given. The consumers who are not aware of the meaning of the words ‘VILLAGES’ and ‘VILLAS’ will make even less connection between the contested mark and the PDOs containing the word ‘VILLAGES’. The PDOs are complex names containing several words, none of which is identical or even significantly similar to the contested mark. The identity of the beginnings of one of the two / three elements of the names, which is not even their first element, when the endings of this element are different and so are all the remaining elements, may even go unnoticed by these consumers, let alone that they would lead to an evocation in their minds. The visual and aural differences are so significant that they clearly outweigh the similarity.

As regards the PDOs ‘Villány’ and ‘Villaviciosa de Cordoba’, again the different endings of the words ‘VILLAS’ versus ‘Villány’ and ‘Villaviciosa’ and the presence of additional differing elements (‘LAS’ and ‘de Cordoba’) put dissonance between the contested mark and the PDOs. The visual, aural and (for those who perceive concepts in any of the signs) also conceptual differences are sufficient to exclude the possibility of evocation. Consumers will not link these names and will understand that the products labelled with the contested mark do not have the qualities of the PDOs, even considering that the products are identical.

Therefore, taking all arguments into consideration, the Cancellation Division concludes that the contested trade mark ‘LAS VILLAS’ does not evoke any of the above listed PDOs. The contested sign and the PDOs are sufficiently different that, when consumers encounter the contested trade mark, the PDOs will not be triggered in their mind but, if it is noticed at all, the coincidence in several letters will be seen as totally fortuitous.

As for misuse, the contested mark does not give any specific geographic indications, so that it cannot provide false indications as to the geographical origin of the goods or services in question. In any case, since consumers will not connect the contested mark with any of the quoted PDOs, the contested mark can hardly benefit from the perceived qualities of any of them.

It follows from the above that the contested sign does not evoke any of the PDOs referred to by the applicant, nor does it correspond to them or consist solely of them. Moreover, it does not misuse them. Consequently, the contested trade mark’s relationship to the PDOs does not correspond to any of the situations referred to in Article 103(2)(b) of Regulation (EU) No 1308/2013. Therefore, the contested trade mark is not in conflict with the above listed PDOs pursuant to Article 7(1)(j) EUTMR and the application has to be rejected insofar as it was based on this ground.

ARTICLE 59(1)(a) EUTMR IN CONNECTION WITH ARTICLE 7(1)(k) EUTMR

According to Article 7(1)(k) EUTMR, trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine, shall not be registered.

This provision was introduced by Regulation (EU) 2015/2424 of 16/12/2015 and did not exist in Regulation (EC) No 207/2009, in the version in force at the date on which the contested EUTM was filed (16/03/2011). However, some grounds for refusal and invalidity introduced for the first time by Regulation (EU) 2015/2424 into the EUTMR are, as a matter of law, not new as they had already been applied before 23 March 2016, by virtue of other binding legislative texts of the EU. The legal ground that is currently comprised in Article 7(1)(k) EUTMR was already envisaged in Article 113(2) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 in conjunction with Articles 40 and 41 of Commission Regulation (EC) No 607/2009 of 14 July 2009 laying down certain detailed rules for the implementation of Council Regulation (EC) No 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products. Consequently, the contested trade mark could have been refused registration, already at the time of its filing, as a result of a conflict with an earlier traditional term for wine (TTW), and therefore, this ground is also admissible in the present case.

Protection of TTWs is provided for in Council Regulation (EU) No 1308/2013, in Chapter III of Commission Implementing Regulation (EU) 2019/34 and in Chapter III of Commission Delegated Regulation (EU) 2019/33 (1), which lay down certain detailed rules for the implementation of the Council Regulation (implementing and delegated acts).

The scope of protection of protected TTWs is narrower than that of GIs. Pursuant to Article 113(2) of Council Regulation (EU) No 1308/2013, TTWs are protected, only in the language and for the categories of grapevine products claimed in the application for protection of a TTW.

A specific provision on the relationship of traditional terms for wines with trade marks (a provision analogous to Article 102 of Council Regulation (EU) No 1308/2013 governing GIs) is found in Article 32 of Commission Delegated Regulation (EU) 2019/33. According to this provision:

The registration of a trade mark that contains or consists of a traditional term which does not respect the definition and conditions of use of that traditional term as referred to in Article 112 of Regulation (EU) No 1308/2013, and that relates to a product falling under one of the categories listed in Part II of Annex VII thereto shall be:

(a) refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the traditional term to the Commission and the traditional term is subsequently protected; or

(b) invalidated.

The applicant claims that the contested trade mark is in conflict with the registered traditional term for wine ‘VILLAGES’. According to the Bacchus database, this term is protected in French.

The most relevant condition of protection for the present case is that the traditional terms are protected only in the language claimed in the application (Article 113(2) of Council Regulation (EU) No 1308/2013). Therefore, even if the element ‘VILLAS’ of the contested mark could be considered to be a Spanish translation of the French term ‘VILLAGES’, this would not put the mark in conflict with the TTW. As traditional expressions are only protected in the language in which they are listed, the protection does not extend to their translations into other languages and, therefore, the expression ‘LAS VILLAS’ does not fall into the scope of the protection of the TTW referred to by the applicant.

According to Article 32 of Commission Delegated Regulation (EU) 2019/33, a trade mark will be invalidated only if it contains or consists of a traditional term. It is rather evident that the expression ‘LAS VILLAS’ does not contain or consists of the term ‘VILLAGES’ (bearing in mind that translations into languages other than French cannot be considered). Therefore, the conditions of the mentioned provision are not fulfilled.

It follows from the above that the contested mark was not registered contrary to the provision of Article 7(1)(k) EUTMR or 7(1)(j) of Regulation (EC) No 207/2009, which covered protection of TTWs vis-à-vis trade marks at the time of filing of the contested mark. The application must be rejected insofar as it was based on these grounds.

ARTICLE 59(1)(a) EUTMR IN CONNECTION WITH ARTICLE 7(1)(c) EUTMR - Descriptiveness

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as EU trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested mark is registered (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).

In accordance with case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (PAPERLAB, loc. cit., paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (11/04/2008, C‑344/07 P, Focus, EU:C:2008:222, § 21). The fact that a word might have different meanings in different contexts does not preclude the application of Article 7(1)(c) EUTMR, if the word is descriptive of the claimed goods and services in one of its possible meanings (15/11/2012, T‑278/09, GG, EU:T:2012:601, § 37).

The existence of the abovementioned relationship must be assessed, firstly, in relation to the goods covered by the contested mark and, secondly, in relation to the perception of the relevant public (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 30).

In the present case, the contested goods and services are wines in Class 33 and wholesaling and selling via global computer networks of wine in Class 35. The relevant public is public at large and, as regards the services of wholesale in Class 35, professional business public.

The contested mark is composed of Spanish words. The evidence and arguments submitted by the applicant refer to the meaning of the sign in Spanish. The Cancellation Division will, therefore, focus the assessment on the perception of the Spanish-speaking public of the EU.

According to the Spanish Royal Academy (www.rae.es), the words of which the contested mark is composed have the following meaning:

las ...definite article in the feminine plural form;

villas …plural of ‘villa’ – recreational house placed in the countryside or a settlement that has certain privileges by which it is distinguished from a village.

As said above, for the purpose of applying Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of the relevant meaning of the word sign at issue, whether, from the viewpoint of the public addressed, there is a sufficiently direct and specific relationship between the sign and the goods in respect of which registration is sought (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30).

The expression ‘LAS VILLAS’ will be understood, by the relevant public, as ‘the villas’ (as in recreational houses in the countryside), or as ‘the small towns’.

As regards the descriptive character of this mark, it cannot be considered as indicating origin because the meaning is too vague. Consumers do not imagine a specific origin under the term ‘the small towns’ or ‘the villas’, nor does this term describe any characteristics of the goods or services in question. Even if consumers were to interpret the sign in such a manner that when seen on wine, they would assume that the product comes from a small town or from a villa, this is not an indication of the geographical origin of the product.

The contested mark does not directly describe any characteristic or quality of the goods or services, but at most alludes to some characteristics of the goods, which will vary depending on different consumers’ perceptions, without clearly describing such characteristic of quality. The contested mark may invite consumers to make some associations such as that the products or services originate from a rural environment but this is, firstly, a mere allusion, and secondly, it does not even refer to any relevant characteristic of the products or services as there is no specific characteristic connected to wines or wholesale with wine which depends on whether the products or services originate from a village, a villa or a town. There is no sufficiently direct and specific connection between the mark and the contested goods and services to find that it is a clear and unequivocal description of them, or of one their characteristics or their quality.

It is unlikely that the relevant public will imagine immediately that the goods or services are rural or natural goods or services or that the goods sold under the mark were cultivated as they were historically because extra effort is required to perceive the goods as such. It is clear from settled case-law that Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive as regards certain characteristics of goods (31/01/2001, T-135/99, Cine Action, EU:T:2001:30, § 29).

The applicant claims that the mark will be associated with ‘Las Villas’, which, according to the applicant, is the collective name for the 12 villages in the Catalan region of Priorat. The applicant provided links to websites of the Denominación de Origen Calificada Priorat (DOQ Priorat).

As regards to the links provided by the applicant, in accordance with Article 95(1) EUTMR, in invalidity proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. In invalidity proceedings pursuant to Article 59, the Office shall limit its examination to the grounds and arguments submitted by the parties. That provision relates, inter alia, to the factual basis of decisions by EUIPO, that is, the facts and evidence on which those decisions may be validly based. It is not for the EUIPO decision-taking bodies to search the applicant’s website for the relevant data (04/10/2018, T 820/17, Alfrisa (fig.) / Frinsa F (fig.), EU:T:2018:647, § 61-63).

Online evidence is admissible only in a limited number of events, as provided in Article 16 EUTMDR in conjunction with Article 7(3) EUTMDR, and in particular in relation to substantiation of earlier national rights and proving the content of the national law. In all other cases the respective materials, even if available online, should be provided to the Office in a physical form (as printouts, screenshots or recorded on a digital carrier or in another appropriate form).

On the other hand, as already stated above, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources. 

In any event, the Cancellation Division, after examining the websites of DOQ Priorat, did not find any indications that ‘las villas’ is an expression used to refer to a specific geographic area. The only mention of ‘las villas’ found by the Cancellation Division was indeed a reference to the villages/towns in which the wine for DOQ Priorat is produced but not in the sense of a name of a geographical region but in the sense of an introduction to the list of the specific villages in DOQ Priorat. It is clear that outside of this very specific context, ‘las villas’ alone would not mean the reference to the villas of DOQ Priorat, but they would have to be specified as ‘las villas de DOQ Priorat’ to be identified. Therefore, the Cancellation Division did not find any indication (in any official document related to DOQ Priorat or on its websites) that ‘las villas’ would be a generally used reference to a specific geographic area. There is absolutely no indication that the relevant public uses the term ‘las villas’, or connects the term ‘las villas’, without further specification or context, with any particular set of villages or any specific geographic area.

The applicant refers also to the regulations of DOQ Priorat as regards the expression ‘las villas’ as a geographic region but the links provided by the applicant cannot be opened and the Cancellation Division did not find, in the regulations available online, any mention of ‘las villas’ in this sense. The applicant did not elaborate on this argument or quote from the regulations to specify how the regulations establish the term ‘las villas’ to be a geographic area.

It should be pointed out that the registration of geographical names as trade marks is excluded, firstly, solely where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with those goods or services in the mind of the relevant class of persons, or, secondly, where the geographical names are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services (25/10/2005, Cloppenburg, T-379/03, EU:T:2005:373, § 34).

However, in principle Article 7(1)(c) EUTMR does not preclude the registration of geographical names which are unknown to the relevant class of persons — or at least unknown as the designation of a geographical location — or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there or was conceived of there (25/10/2005, Cloppenburg, T-379/03, EU:T:2005:373, § 36).

In the present case, the mark ‘LAS VILLAS’ cannot be considered to be a geographical name known to the relevant class of persons as the designation of a place. The location of ‘LAS VILLAS’ is completely unknown. There are many ‘villas’, ‘villages’ and ‘small towns’ in the world. It remains unclear from which villas or small towns the goods and services originate, or where those villas or small towns would be located. As explained above, it was not shown that the relevant public connects the expression ‘LAS VILLAS’, without further indications, with the villages forming DOQ Priorat, as claimed by the applicant. The contested mark does not contain the name of a geographical location, and even less that of a famous or potentially famous one. Therefore, the alleged descriptive character of the contested mark cannot be based on the fact that it would be perceived as a geographical name.

The applicant also refers to a project of DOQ Priorat that works with the expression ‘Vinos de Villa’ (Vins de Vila) but again, the links provided do not lead to any relevant content and the applicant did not provide any other evidence that would support its argument that this project allowed the identification of the 12 zones of grape production in the DOQ Priorat as ‘las villas’.

It follows from all the above that it was not demonstrated that there is a sufficiently direct and specific connection between the meaning of the contested mark and the goods and services covered by it for it to be possible to find that it is a clear and unequivocal description of them, or of one of their characteristics or their quality. Therefore, the application must be rejected also insofar as it was based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(c) EUTMR.

ARTICLE 59(1)(a) EUTMR IN CONNECTION WITH ARTICLE 7(1)(d) EUTMR - Customary character

Pursuant to Article 7(1)(d) EUTMR, a sign that consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practices of the trade cannot be registered as a trade mark.

The assessment of the alleged customary use of a sign must be carried out in relation to the goods or services in respect of which the trade mark is registered and in relation to the perception of the sign by the relevant public (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 49). In addition, actual customary use, not mere potential use as in the case of descriptive character, must be established (see, by analogy, 21/04/2004, C-64/02 P, OHIM / Erpo Möbelwerk, EU:C:2004:645). Marks covered by Article 7(1)(d) EUTMR are excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the relevant goods or services (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 51).

The customary use of the sign must be proven at the relevant point in time, that is, the time of filing of the contested mark (16/03/2011).

The applicant submitted numerous website printouts showing wines in the names of which the word ‘villa’ is used. However, these websites are undated and a considerably long time passed between the submission of these websites in 2019 and the relevant date in 2011, so that it cannot be taken for granted that these wines existed at the time of filing of the contested mark. The applicant claims that they have been on the market long before the filing date of the contested mark but offers no proof for this allegation. Moreover, some of the websites relate to shops or wines outside of the EU territory and for many of them the territory of their market cannot be identified. Finally, the majority of the wines appear to be present on Italian or French market so that the consumers primarily exposed to the use of the word ‘VILLA’ would be Italian- and French-speaking consumers. For these consumers, the word ‘VILLA’ cannot be considered an equivalent to the contested mark ‘LAS VILLAS’, as they would not form the plural of the word in the same way as the Spanish. Therefore, even if it was considered that the term ‘VILLA’ is often used in connection with French and Italian wines, this conclusion cannot be extended to the expression ‘LAS VILLAS’ which forms the contested mark.

Therefore, the applicant failed to demonstrate that the mark, at the time of its filing, consisted exclusively of signs or indications which had become customary in the current language or in the bona fide and established practices of the trade.

Consequently, the application must be rejected insofar as it was based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(d) EUTMR.

ARTICLE 59(1)(a) EUTMR IN CONNECTION WITH ARTICLE 7(1)(b) EUTMR – Non-distinctiveness

According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

The applicant’s arguments regarding lack of distinctiveness of the EUTM are the same as those mentioned above and they are based on the assumption that the contested sign is descriptive. However, as has been seen above, descriptiveness of the contested sign for the goods mentioned above cannot be concluded. Therefore, no lack of distinctiveness of the contested EUTM can be affirmed on account of its alleged descriptiveness as regards those goods.

Moreover, the applicant argues that the word ‘VILLA’ is widely used in relation to wines. As regards this argument, the same applies as stated above in the section regarding Article 7(1)(d) EUTMR. The evidence filed by the applicant in the form of website printouts does not prove that the contested mark lacked distinctiveness for any EU public at the time of its filing.

Consequently, the applicant failed to prove its claim that the mark is devoid of distinctive character under Article 7(1)(b) EUTMR in relation to the registered goods and services and the application must be rejected also insofar as it was based on this ground.

ARTICLE 59(1)(a) EUTMR IN CONNECTION WITH ARTICLE 7(1)(g) EUTMR - Deceptiveness

Pursuant to Article 7(1)(g) EUTMR, trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services shall not be registered.

According to case-law, this ground for invalidity presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (04/03/1999, C‑87/97, Cambozola, EU:C:1999:115, § 41). Thus, a mere theoretical possibility that the public may be mistaken does not itself fall within an objection pursuant to Article 7(1)(g) EUTMR (decision of 17/04/2007, R 1102/2005-4, “SMARTSAUNA”, § 32).

In addition, Article 7(1)(g) EUTMR “implies a sufficiently specific designation of potential characteristic of the goods and services covered by the trade mark. Only where the targeted consumer is made to believe that the goods and services possess certain characteristics, which they do not in fact possess, will he be deceived by the trade mark.” (24/09/2008, T‑248/05, I.T.@Manpower, EU:T:2008:396, § 65).

When assessing whether a given trade mark is deceptive or not, account should be taken of market reality, meaning the way the goods are normally distributed and purchased, as well as of consumption habits and the perception of the relevant public. The relevant public is normally composed of reasonably well-informed, observant and circumspect persons. The average consumer is usually reasonably attentive, and should not be regarded as easily vulnerable to deception.

The applicant argues that consumers will expect the contested goods and services to originate from the area of Priorat or that they have the qualities required from goods offered under the PDOs referred to by the applicant and mentioned above. It argues that it is unlikely that these expectations would be fulfilled given that the registered seat of the EUTM proprietor is far away from the respective regions.

However, as was explained above, consumers will not connect the contested mark to any of the PDOs referred to by the applicant, nor will they expect that the goods under the mark should have the qualities associated with the PDOs. Consumers will also not link the contested mark to the area comprising DOQ Priorat and will not expect that the contested goods or services originate in that region. Consumers will not create the expectations as argued by the applicant and, therefore, they cannot be misled as to the origin or quality of the contested goods and services.

In fact, in general, there is no clear, objective and sufficiently specific message conveyed by the contested mark as a whole that would have any connection with the goods and services for which the mark is registered. Therefore, since consumers do not have any specific expectations upon encountering the mark, they cannot be deceived.

Even if it was considered that the presence of the term ‘las villas’ in the mark will cause the consumers to expect the contested goods and services be connected to villages or small towns, this would not lead to the conclusion that the mark can mislead the public. It is in general assumed that the mark will be used in a non-deceptive manner. In the present case, the contested goods and services may originate in villages or small towns or have any other connection with them and, therefore, non-deceptive use is possible.

Considering the above, the application must be rejected also insofar as it was based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(g) EUTMR.

ARTICLE 59(1)(b) EUTMR – Bad Faith

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The case-law shows four cumulative factors to be particularly relevant for the existence of bad faith:

• Identity/confusing similarity of the signs,

• EUTM proprietor’s knowledge of the use of an identical or confusingly similar sign,

• Dishonest intention on the part of the EUTM proprietor,

• Degree of legal protection enjoyed by both signs.

It is apparent from the wording used by the Court that these factors are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant was acting in bad faith at the time of filing the application (14/02/2012, T‑33/11, Bigab, EU:T:2012:77, § 20; and 13/12/2012, T‑136/11, Pelikan, EU:T:2012:689, § 26).

For an invalidity declaration to be pronounced on the basis of bad faith, however, there must be no doubt about the dishonest intentions of the EUTM proprietor at the time of filing. The applicant has the burden to prove the soundness of the facts on which it bases its allegation, in particular as regards the assumption that the EUTM proprietor acted dishonestly when filing the EUTM. Indeed, the European Union trade mark registration system is based on the ‘first-to-file’ principle laid down in Article 8(2) EUTMR. The application of that principle is moderated, inter alia, by Article 59(1)(b) EUTMR, under which, following an application to EUIPO or on the basis of a counterclaim in infringement proceedings, a European Union trade mark is to be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

Accordingly, where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the European Union trade mark proprietor had been acting in bad faith when it filed the application for registration of that mark (21/03/2012, T‑227/09, FS, EU:T:2012:138, § 31 and 32, and ‘BIGAB’, loc. cit., § 16 and 17). As a general rule, good faith is presumed until the opposite is proven and the burden of proof in this respect rests exclusively on the invalidity applicant (‘Pelikan’, loc. cit., § 57).

The applicant claims that the EUTM proprietor acted in bad faith because it must have known about the earlier PDOs, TTW and the area ‘Las Villas’ of DOQ Priorat. However, as was shown above, the contested trade mark is in no conflict with any of the invoked PDOs or the TTW and the applicant failed to show that the relevant public associates the expression ‘Las Villas’, without further context, with a specific region. Therefore, there are no earlier rights that can be damaged by the contested mark (from those mentioned by the applicant), no misappropriated rights, there is also no indication that the EUTM proprietor tried to abuse the trade mark system and overall it is not clear what the EUTM proprietor’s dishonest intention should be.

Consequently, it must be concluded that the applicant, who has the burden of proof, failed to demonstrate that the contested mark was applied for in bad faith. The application must be, therefore, rejected also as far as Article 59(1)(b) EUTMR is concerned.

CONCLUSION

In the light of the above, the Cancellation Division concludes that the application for invalidity should be rejected in its entirety.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

The Cancellation Division

 

Vít MAHELKA

Michaela SIMANDLOVA

Pierluigi M. VILLANI

 

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 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.