OPPOSITION No B 2 472 762

Domecq Bodega Las Copas, S.L., Manuel María González, 12, 11403 Jerez de la Frontera, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Mora-Figueroa Domecq S.L., Zurbano 76 6º, 28010 Madrid, Spain (applicant), represented by Esther Urteaga Pintado, C/ Príncipe de Vergara 31, 28001 Madrid, Spaim (professional representative).

On 11/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 472 762 is upheld for all the contested goods, namely alcoholic beverages (except beer) in Class 33.

2. European Union trade mark application No 13 389 606 is rejected for all the contested goods. It may proceed for the remaining services.

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

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 389 606, ‘MORA-FIGUEROA DOMECQ’, namely against all the goods in Class 33. The opposition is based on, inter alia, European Union trade mark registration No 552 729, ‘DOMECQ’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the earlier European Union trade mark registration No 552 729, ‘DOMECQ’, on which the opposition is based.

The contested application was published on 04/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 04/11/2009 to 03/11/2014 inclusive.

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

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely alcoholic beverages in Class 33.

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

On 14/06/2017, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 19/08/2017 to submit evidence of use of the earlier trade mark. This time limit was further extended until 19/10/2017. On 18/10/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Printouts of internet searches from different websites, such as www.wines-searcher.com, showing references to wines bearing the mark ‘DOMECQ’ and ‘PEDRO DOMECQ’ (‘manzanilla’ and ‘sherry’) and showing information about the products in Hungarian and Dutch. They are dated 17/10/2017. One of the printouts includes graphics regarding the evolution of the price for ‘Domecq Manzanilla Sherry’, the availability of these goods and the search rank over the time, from January 2016 to September 2017. Therefore, all the printouts refer to use after the relevant period.

• Article published in www.starchefs.com in May 2004 entitled ‘Domecq Sherry: The taste of Time’ explaining the history of the company.

• Articles published in internet (www.elmundovino.com; www.elpais.com; www.expansion.com; www.elmundo.es; www.diariodejerez.es; www.abc.es) concerning ‘Bodegas Domecq’ (history of the company and the different owners) and the group ‘Pernod Ricard’. They are all in Spanish and dated between 2005 and 2016.

• Opposition Division decision of 29/09/2010 in case B 1 439 605, ‘DOMECQ/ ‘MIGUEL DOMECQ’; decision of the Boards of appeal of 21/05/2007, R 749/2006-2, ‘DOMECQ/ALVARO DOMECQ’ and Decision of WIPO in case D2016-2262 regarding the domain name ‘domecq.wine’. All these decisions have been submitted in Spanish with partial translations into English regarding the parts of the decisions where references to the reputation of the trade mark ‘DOMECQ’ are made.

• Numerous invoices dated 2008, 2009, 2010, 2011, 2012 and 2013 for sales made in The Netherlands and Belgium (from Pernod Ricard Spain, former owner of the earlier mark, to Pernod Ricard Nederland B.V. and Pernod Ricard Belgium and from these companies to clients in the respective countries). In all the invoices, the goods are identified under the mark ‘DOMECQ’ and refer to different types of sherry (smooth medium dry, dry manzanilla, dry fino). The amounts of sales vary from about EUR 1 779 to EUR 42 000 per invoice.

• Price lists for The Netherlands corresponding to 2009, 2011, 2013 and referring to ‘Domecq fino’, ‘Domecq medium dry’ and ‘Domecq manzanilla’.

• Catalogues in Dutch, corresponding to 2010, 2011, 2012 and 2013 from different stores, such as Makro and Hanos, and showing pictures of wine bottles bearing the mark ‘DOMECQ’. In one of the catalogues, there is one bottle with the denomination ‘Pedro Domecq Medium Dry’.

• Examples of labels showing the mark ‘DOMECQ’, together with the indications ‘FINO’, ‘DRY SHERRY’ and an explanation of the product in English, French and Dutch.

The Opposition Division shares the applicant’s opinion, who considers that the opponent has demonstrated genuine use of its earlier mark in the relevant territory (the European Union) and during the relevant period (November 2009 to November 2014). The evidence submitted shows that relevant sales have taken place in Belgium and The Netherlands to a sufficient extent. The mark has been used in accordance with its function and as registered. The verbal element ‘DOMECQ’ is clearly identified in the evidence submitted and the elements added (‘medium dry’, ‘dry manzanilla’, ‘dry fino’, ‘sherry’) are merely descriptive of the type of wine and do not alter the distinctive character of the mark.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for different types of wine (‘sherry’, ‘fino’, ‘manzanilla’ and ‘medium dry’). These goods can be considered to form an objective subcategory of alcoholic beverages for which the mark is registered, namely wine. The evidence does not show use for any of the remaining goods covered by the broad category of alcoholic beverages. Therefore, the Opposition Division will only consider these goods (wine) in its further examination of the opposition.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 552 729.

1. The goods

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

Class 33: Wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wine. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. Relevant public - degree of attention

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

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

3. The signs

DOMECQ	MORA-FIGUEROA DOMECQ
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the marks will be associated with rather unusual surnames in part of the relevant territory, namely in the Spanish-speaking part. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

All the elements of the marks are fully distinctive for the relevant goods.

Visually and aurally, the signs coincide in the element ‘DOMECQ’, which is the only element of the earlier mark and is entirely reproduced at the end of the contested sign. They differ in the additional elements ‘MORA-FIGUEROA’ of the contested mark.

Therefore, the signs are visually and aurally similar to a below average degree overall.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to the same surname ‘DOMECQ’ (which is not a common surname); however, the contested sign will also be associated with an additional surname, also rather unusual, which is not present in the earlier mark. Therefore, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are identical and the degree of attention of the relevant public is average.

The only element of the earlier mark is fully included in the contested sign, where it plays an independent and distinctive role. Although the contested sign contains the additional surname ‘MORA-FIGUEROA’, which is also distinctive and is placed in the beginning of the sign, the signs are still visually, aurally and conceptually similar to a certain degree on account of the coincidence in the surname ‘DOMECQ’, which is an unusual surname for the public under analysis.

In view of the above, even if consumers are likely to be able to distinguish between the signs due to the additional surname ‘MORA-FIGUEROA’, since they will still also recall the same surname ‘DOMECQ’ in both signs, consumers are still likely to attribute the same commercial origin to the identical goods offered under the respective signs, or otherwise to commercial origins that are economically linked.

The applicant argues that its EUTM ‘MORA-FIGUEROA DOMECQ’ has a reputation and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

In view of the above, it follows that even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As the earlier European Union trade mark registration No 552 729 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Pedro JURADO MONTEJANO

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.