OPPOSITION No B 2 520 057

Rives Pitman S.A., Aurora,4, 11500 Puerto de Santa Maria (Cádiz), Spain (opponent), represented by Rodolfo De La Torre S.L., C/ San Pablo, nº15-3º, 41001 Seville, Spain (professional representative)

a g a i n s t

Temakinho, Ripa di Porta Ticinese 45, 20143 Milan, Italy (applicant), represented by Fumero S.r.l., Via Sant'Agnese 12, 20123 Milan, Italy (professional representative).

On 20/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 520 057 is upheld for all the contested goods, namely

Class 32: Beer and brewery products.

Class 33: Cachaça.

2. European Union trade mark application No 13 718 101 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 718 101, namely against all the goods in Classes 32 and 33. The opposition is based on, inter alia, Spanish trade mark registration No 682 049. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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 Spanish trade mark registration No 682 049.

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, inter alia, Spanish trade mark registration No 682 049.

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

The contested application was published on 10/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 10/02/2010 to 09/02/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 33: Liqueurs.

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 16/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 21/02/2016 to submit evidence of use of the earlier trade mark. On 19/02/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Documents 1-4: Undated photographs of bottles of liqueur. One of them displays this label: . Another one contains a series of bottles displayed below the titles ‘Los nuevos licores Sin / Alcohol free liqueurs’ and ‘Los nuevos licores / New liqueurs’;

• Document 5-6: Catalogue for the year 2015 and price lists of the opponent’s products for the years 2010-2015 containing, inter alia, goods defined as ‘AMOR LICOR RIVES’ under the category of ‘LICORES DE FRUTA (Fruit liqueurs)’;

• Documents 7-12: Several invoices dated in the period comprised between the years 2010 and 2015 issued by the opponent and addressed to clients in Spain regarding, inter alia, products listed as ‘AMOR LICOR 1X70’ or ‘AMOR RIVES SIN 1X70’;

• Documents 13-14: Certificate of sales signed by the opponent’s Secretary of the Administrative Board. This document is in Spanish and it is complemented by its translation into English. It contains information related to the sales of boxes of ‘Amor Licor’ in the period comprised between the years 2010 and 2015. The total yearly amounts regarding ‘Amor Licor’ vary from 48.244 EUR to 64.286 EUR.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

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).

The documents submitted before the Opposition Division relate to the relevant period. The appellant submitted a catalogue, price lists and invoices which entirely cover the period comprised between the years 2010 and 2015. Also, the certificate of sales falls within the relevant period.

As it is an earlier Spanish trade mark that is involved, the opponent is required to prove use in Spain. The invoices submitted are addressed at customers in Spain. Also, considering that the labels of the goods are in Spanish as well as the catalogue, which is written both in Spanish and English, it can be concluded that the opponent has provided sufficient evidence in relation to the place of use, i.e. Spain.

The nature of the use is clear from the labels submitted. Although the labels contain additional word or figurative elements, the earlier trade mark is clearly visible on the labels, without their distinctive character having been altered by the other elements such as the word ‘RIVES’, which, contrarily to the other additional elements, is normally distinctive. In particular, it must be kept in mind that it is not detrimental to the ‘genuine use’ of a trade mark if the latter is used together with other trade marks.

Even if the labels are not dated and, in themselves, cannot therefore be attributed to the periods concerned, they can be taken into account in the overall consideration of the evidence. In particular, the opponent submitted invoices that fall within the relevant period and bear the designation ‘AMOR LICOR’.

The extent of use is evidenced in the invoices and certificate of sales. The considerable turnover figures are consistent with the sale of considerable quantities of items and the invoices can be considered as sufficient examples of that.

Finally, the documents submitted by the opponent relate to a hazelnut liqueur, i.e. a type of good in respect of which the earlier trade mark is protected.

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 for liqueurs in Class 33.

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.

1. The goods

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

Class 33: Liqueurs.

After a limitation filed by the applicant on 01/12/2015, the contested goods are the following:

Class 32: Beer and brewery products.

Class 33: Cachaça.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 32

The contested beer and brewery products are similar to liqueurs. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings.

Contested goods in Class 33

The contested cachaça is a white Brazilian rum made from sugar cane. The opponent’s liqueurs are highly flavoured sweetened spirits intended to be drunk after a meal. These goods not only have the same nature and purpose, but they can also share their origin and distribution channels. Furthermore, it cannot be excluded that these goods might be in competition. Thus, these goods are deemed to be highly similar.

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 similar to different degrees are directed at the public at large. The degree of attention will be average.

3. The signs

AMOR LICOR	MAIS AMOR
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a word mark, namely ‘AMOR LICOR’. The contested sign is also a word mark. It consists of the words’ MAIS AMOR’.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

The contested mark has no elements that could be considered clearly more distinctive than other elements.

The element ‘LICOR’ of the earlier sign is the Spanish word equivalent to liqueur, which is used to designate a highly flavoured sweetened spirits. Bearing in mind that the relevant goods and services are alcoholic beverages, this element is non-distinctive for all these goods in Classes 32 and 33.

Visually, the signs coincide in the word ‘AMOR’. However, they differ in the word ‘MAIS’ of the contested sign and in the second word ‘LICOR’ of the earlier mark, which is a non-distinctive element.

Therefore, the signs are visually similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AMOR’, present identically in both signs. The word ‘AMOR’ is distinctive. The pronunciation differs in the sound of the letters ‛MAIS’ of the contested mark and ‘LICOR’ of the earlier mark. However, account must be taken on the fact that the word ‘LICOR’ is non-distinctive.

Consequently, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the word ‘AMOR’ as the equivalent of the word love, in the sense of an intense emotion of affection, warmth, fondness, and regard towards a person or thing. Account must be taken on the fact that for a part of the relevant public the word ‘MAIS’ will be perceived as meaningless. Considering that the word ‘LICOR’ is non-distinctive, for this part of the public the marks are conceptually highly similar to the extent that they share the word ‘LOVE’. The similarity of the signs will be also high for that part of the public for whom the word ‘MAIS’ will be perceived as the equivalent of the word mas, which in Spanish means more. This is due both to the fact that ‘MAIS’ is an existing word in Galician, a language spoken by a part of the relevant public and that it is rather similar to its equivalent in Spanish.

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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods covered by the trade marks in dispute have been found partly highly similar and partly similar.

The marks are similar to the extent that they share the distinctive element ‘AMOR’. As regards, the earlier mark, it also contains a non-distinctive element, namely the word ‘LICOR’, which for this reason will play a secondary role. On the contrary, the contested sign’s elements ‘MAIS’ and ‘AMOR’ play an independent distinctive role.

Also, 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).

The inclusion of the earlier verbal element ‘AMOR’ may create an association in the mind of the relevant public between the goods, with the result that the new trade mark consisting of the sign ‘MAIS AMOR’ might well be perceived as a variant of the earlier mark. Therefore, the relevant public might think that the origin of the goods marketed under the earlier mark ‘AMOR LICOR’ is the same as that of the goods marketed under the ‘MAIS AMOR’ mark, or at least that there is an economic link between the various companies or undertakings which market them.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 682 049. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 682 049 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 rights 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.

The Opposition Division

Gregor SCHNEIDER

Andrea VALISA

Michele M. BENEDETTI-ALOISI

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.