OPPOSITION No B 2 517 038

Bodegas Volver, S.L., Plaza de Grecia, Ptl. 1 Local 1B, 45007 Toledo, Spain (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia, Spain, (professional representative)

a g a i n s t

Cielo e Terra S.P.A., Via IV Novembre 39, 36050 Montorso Vicentino (VI), Italy (applicant), represented by D'Agostini Group, Rivale Castelvecchio 6 31100 Treviso, Italy (professional representative).

On 04/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 517 038 is upheld for all the contested goods.

2. European Union trade mark application No 13 669 321 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 669 321. The opposition is based on European Union trade mark registration No 6 470 091 and Spanish trade mark registration No 2 802 171. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark No 6 470 091 and Spanish trade mark No 2 802 171.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 30/01/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union, and Spain respectively from 30/01/2010 to 29/01/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Class 33: Wines, liqueurs and other alcoholic beverages (except beers).

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 29/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/04/2016 to submit evidence of use of the earlier trade marks. On 04/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• 24 Invoices:

• 3 for 2010, 5 for 2011, 4 for 2012, 4 for 2013, 5 for 2014, 3 for 2015, issued to the following countries: Germany (6), Sweden (6), Spain (7), Latvia (2), Czech Republic (1) United Kingdom (1), Ireland (1)

• Showing the sales of cases or bottles of “paso a paso” red wine/tempranillo and “paso a paso" white wine/verdejo, at least 7 and at most 150, on average around 50 cases of 12 bottles (one case costs EUR 30)

• For amounts of around EUR 7300 (DE), 6300 (SE), 13 500 (ES), 1000 (LV), 2880 (UK), 2880 (IE) 300 (CZ)

• Two export invoices issued by the opponent to Andorra dated in 2012 showing sales of 5 and 10 cases of “paso a paso” wine.

• Export invoices issued by the opponent to the United States of America, in 2015 (3) for 50 to 396 cases, in 2014 (4) for 56 to 656 cases, in 2013 (5) for 50 to 656 cases, in 2012 (4) for 40 to 101 cases, in 2011 (6) for 50 to 202 cases, in 2010 (4) for 202 cases, altogether for around USD 200 000

• Invoices issued by companies based in Toledo and Alicante, Spain, to the opponent, dated in 2013-2015 for the purchase of wine bottle labels, wine bottle boxes, capsules for wine bottles, design of labels, all showing “PASO A PASO” in the product description

• German-language certificate issued in 2012 in Neustadt and der Weistrasse, Germany, awarding the MUNDUS VINI international wine price silver medal to “paso a paso” Tempranillo

• Robert Parker wine ratings, page 7 & 10 awarding 86-88 points to “Paso A Paso” Verdejo, Blanco, Tempranillo, and description of the wines, in English, including, among others, the following description: “The only difference between it and the 2011 Paso a Paso Tempranillo made from non-organic grapes is that the latter cuvee reveals slightly more wood in the aromatics. It possesses a similar flavour profile, weight and richness. Both are best drunk in their first two years of life. Bodega Volver, a joint project between Rafael Canizares and Jorge Ordonez, produces wines from three appellations, La Mancha, Alicante and Jumilla.”

• Newspaper article www.erobertparker.com dated 8th November 2013, including 2012 “Bodegas Volver Paso a Paso Verdejo Tierra de Castilla 85pts (An indigenous varietal that is making better and better wines in the hands of top Spanish producers)”

• Non-dated screenshots of advertisements of “PASO A PASO” wine bottles from online websites, most of them in English, one in German from essen&trinken.de, moreover one facebook and one twitter advertisement in Spanish. The term “PASO A PASO” is clearly visible on the wine bottles:

The invoices show that the place of use is the European Union. Invoices attesting to sales were submitted for the following EU Member States: Germany, Sweden, Spain, Latvia, Czech Republic, United Kingdom, Ireland. The currency mentioned in the invoices is furthermore the Euro. Therefore, the evidence relates to the relevant territory.

Moreover, the evidence in the present case also demonstrates that goods bearing the mark were produced in and exported from the relevant territory. Notably, some of the articles refer to wine being produced by Spanish producers and all the invoices are issued by the Spanish company “Bodegas Volver”. Even the invoices issued by Spanish companies showing orders of bottle labels, boxes, etc. are indications that the goods were produced in Spain and subsequently sold to the United States and Andorra.

The evidence thus clearly shows that the goods were exported from the relevant territory. According to Article 15(1), second subparagraph, point (b) EUTMR, affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes also constitute use within the meaning of paragraph 1.

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

All the evidence is dated within the relevant period.

The invoices, covering each year of the relevant period and attesting to several sales of wine in each year to different European Union Member States, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence furthermore shows use of the sign “PASO A PASO” as registered, on the invoices, in the articles, and on the wine bottles, together with terms such as “tempranillo”, “verdejo” and “blanco”, which merely describe the kind of wine sold and thus do not alter the mark’s distinctive character.

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, the evidence submitted by the opponent is sufficient to prove 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, only for the following goods:

Class 32: Wine.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

Therefore, the Opposition Division will only consider the abovementioned goods 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 No 6 470 091.

1. The goods

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

Class 33: Wines

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); wine.

Wine(s) are identically contained in both lists of goods.

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s wines. 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, wines and alcoholic beverages, are directed at the public at large. The degree of attention of the relevant consumer will be average.

3. The signs

PASO A PASO	3PASSO
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German, Swedish, Latvian, Czech, Polish, Hungarian, Finnish and Estonian speaking part of the relevant public.

Both signs are word marks, “PASO A PASO” (the earlier sign) and “3PASSO” (the contested sign), respectively. The earlier sign is meaningless in the relevant territory, except for the letter “A” signifying “and” in Czech, thus a non-distinctive addition. The number “3” will be perceived as such by the relevant public. Given that the goods at hand are alcoholic drinks, when they are ordered aurally, this number may be perceived as referring to their quantity, i.e. the number of drinks requested. In such a case the number “3” will be a non-distinctive element of the contested sign.

Visually, the signs coincide in “PAS” and the letter “O”; this coincidence appears twice in the earlier sign, in two individual elements, separated by a differing letter “A”. The signs also differ in the number “3” and the additional “S” letter of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs will strongly resemble in the syllables “PA-(S)SO” due to the coinciding sounds “P”,”A”,”S” and “O” and the minor difference in the pronunciation of single and double “S” sounds. These coinciding syllables appear twice in the earlier sign, separated by a differing “A” sound. The signs will furthermore differ in the pronunciation of “3”, notably “drei” (German), ”tre” (Swedish), "trīs” (Latvian), “tři” (Czech), “trzy” (Polish), “három” (Hungarian), kolme (Finnish), kolm (Estonian), which, especially when ordered aurally, will likely be perceived as non-distinctive in relation to the goods at hand.

Given that the aurally coinciding sounds will be repeated twice in the earlier sign, the signs are aurally similar to a high degree.

Conceptually, neither “paso” nor “passo” has a meaning for the public in the relevant territory. The signs will conceptually not be similar as far as the concept of “3” is concerned in the contested sign, or to the extent that “A” means “and” in “Czech”, although it is a non-distinctive element.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case the high degree of aural similarity between the signs is of particular importance, since the beverages at hand are often ordered orally, at sales points with an increased noise factor, such as bars or nightclubs; in these situations, the phonetic perception of the sign may also be influenced by factors such as the likely presence of various other sounds perceived by the recipient of the order at the same time. (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48).

Moreover, the General Court has held that in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, in particular in bars and restaurants, in which wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38).

In the present case, there is only a minor aural difference between the elements PASO/PASSO, repeated twice in the earlier sign. Neither the differing “A” letter nor the additional number “3” in the contested sign are sufficient to counteract the significant aural similarities.

In fact, when ordered aurally at sales points with an increased noise factor, whether or not the coinciding element PAS(S)O is repeated is unlikely to be a differentiating factor. Furthermore, when making drink orders the number “3” in the contested sign may be understood as merely referring to their quantity, rather than being part of a sign identifying the commercial origin of the goods.

Considering all the above, there is a likelihood of confusion on the part of the German, Swedish, Latvian, Czech, Polish, Hungarian, Finnish and Estonian-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union registration 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 Spanish registration invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Julie GOUTARD

Marianna KONDAS

Volker MENSING

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.