OPPOSITION No B 2 765 736

Instituto dos Vinhos do Douro e do Porto, IP, Rua dos Camilos, 90, 5050-272 Peso da Régua, Portugal (opponent), represented by Pedro Sousa e Silva, Avenida da Boavista, 2300, 2º, 4100-353 Porto, Portugal (professional representative)

a g a i n s t

Sociedade de Vinhos e Sabores, Lda., Travessa de Santo Ildefonso Nº 1, 1200-806 Lisbon, Portugal (applicant), represented by PLMJ, Edificio Eurolex Av. da Liberdade 224, 1250-148 Lisbon, Portugal (professional representative).

On 15/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 765 736 is upheld for all the contested services.

2. European Union trade mark application No 15 380 603 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 15 380 603 for the figurative mark , namely against all the services in Classes 35 and 39. The opposition is based on the Portuguese trade mark registration No 453 716 for the word mark ‘VINTAGE’ and the Protected Designation of Origin (‘PDO’) ‘PORTO’. The opponent invoked Article 8(1)(a) and (b) and Article 8(6) (Article 8(4a) at the time of filing of the opposition) EUTMR).

On 07/08/2017 the Opposition Division rendered a decision that resulted in that the Opposition Division partially upheld the opposition for all contested services in Class 35. The opposition was rejected with regard to the contested services in Class 39 due to the dissimilarity of services according to Article 8(1)(a) and (b) EUTMR. The part of the order of the contested decision by which the opposition was granted and the application was rejected was not appealed and has become final.

In relation to Article 8(6) EUTMR, the Opposition Division concluded that the opposition was inadmissible.

The decision was appealed and the Board of Appeal decided in case R 1897/2017‑2 on 22/05/2018. The Board’s decision annulled the contested decision within the scope of review and remitted the case to the Opposition Division for a further examination of the opposition regarding the contested services in Class 39, in particular following the instructions on admissibility laid down herein in relation to Article 8(6) EUTMR. The Board considered that the Opposition Division erred when it declared the claim based on the alleged reputation of the PDO invoked by the opponent as inadmissible.

DESIGNATIONS OF ORIGIN OR GEOGRAPHICAL INDICATIONS — ARTICLE 8(6) EUTMR

According to Article 8(6) EUTMR, upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for must not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:

(i) an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

(ii) that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

a) The right under applicable law

Designations of origin and geographical indications for wines and other grapevine products protected under Council Regulation (EC) No 1308/2013 of 17 December 2013 establishing a common organisation of the markets in agricultural products) fall under Article 8(6) EUTMR.

This includes the names already registered under Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine or Council Regulation No 479/2008 of 29/04/2008 on the common organisation of the market in wine. At present, geographical indications for wines are protected under EU legislation under Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013, known as the ‘Wines Regulation’, establishing a common organisation of the markets in agricultural products (Regulation No 1308/2013 or the Wines Regulation), which replaced and repealed Regulation No 1234/2007, which had integrated through codification by Regulation No 491/2009 the abovementioned Regulation No 479/2008, which was repealed at the same time. Wine names referred to in Articles 51 and 54 of Council Regulation (EC) No 1493/1999 and Article 28 of Commission Regulation (EC) No 753/2002 are automatically protected under this Regulation (see Article 107 of Council Regulation No 1308/2013 of 17 December 2013). The Wines Regulation protects geographical indications that were already protected in a Member State on 01/08/2009 (or on the date of accession of a new Member State) subject to further conditions, and any further geographical indications applied for and registered pursuant to the EU system of protection thereafter.

According to Article 93(1)(a) of Regulation No 1308/2013, ‘designation of origin’ means the name of a region, a specific place or, in exceptional and duly justifiable cases, a country used to describe a product referred to in Article 92(1) of Regulation No 1308/2013 that complies with the following requirements:

 its quality and characteristics are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors;

 the grapes from which it is produced come exclusively from this geographical area;

 its production takes place in this geographical area; and

 it is obtained from vine varieties belonging to Vitis vinifera.

According to Article 103(2) of Regulation No 1308/2013, protected designations of origin and protected geographical indications and the wines using those protected names in conformity with the product specification will be protected against:

(a) any direct or indirect commercial use of a protected name:

(i) by comparable products not complying with the product specification of the protected name; or

(ii) insofar as such use exploits the reputation of a designation of origin or a geographical indication;

(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 or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the wine product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;

(d) any other practice liable to mislead the consumer as to the true origin of the product.

b) The earlier right

In the present case, the PDO ‘Porto’ was registered for wine under Regulation (EU) 1308/2013.

The opponent submitted a copy of the certificate of registration by the European Commission Directorate-General for Agriculture and Rural Development which shows that the designation of origin ‘Porto’ has been registered since 24/12/1991 under the file No PDO-PT-A1540. The copy was issued on 26/06/2015.

The opponent also submitted, inter alia, the following documents:

 Copy of Decree of 10/05/1907 and 16/05/1907 on the Regulation for Port Wine Trade.

 Copy of Decree-law No 173/2009 where it is stated that the opponent ‘has the essential mission of controlling, certifying, promoting and protecting the appellations of origin ‘Porto’ …’.

 Copy of Decree-law No 97/2012 where it is stated that the opponent’s mission consist of ‘protecting and defending the appellations of origin ‘Douro’ and ‘Porto’ …’.

 Copy of Decree-law No 212/2004 where it is stated under Article 5(3), inter alia, that ‘it is also prohibited the use, by any means, of names, trademarks, words, phrases or symbols or any false or misleading indication or suggestion, which may confuse the consumer about the origin, nature or essential qualities of the products’. Article 5(4) refers to the previous cited sub-paragraph and states that Article 5(3) also applies to products not belonging to the wine sector when the use without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the prestige of the appellation of origin or geographical indication.

c) The opponent’s right vis-à-vis the contested trade mark

The opponent based its opposition on the following arguments:

 The scope of protection of the Protected Designation of Origin ‘Porto’ is governed by Article 103(2) of Regulation No 1308/2013.

 The opponent is entitled to defend all interests of the designation of origin according to Article 5(3) and (4) of Decree-law No 212/2004

In light of the arguments and evidence submitted, the Opposition Division considers that the opponent is indeed entitled under the Portuguese law to exercise the rights arising from the designation of origin ‘Porto’.

The Opposition Division will next check whether the conditions set by Article 103(2) of Regulation No 1308/2013 are met.

It should first be indicated that the signs in conflict are the PDO ‘Porto’ while the contested sign is the figurative mark ‘ ’. The PDO ‘Porto’ is protected for wines, whereas the contested trade mark has been applied for wine distribution services in Class 39.

As to the direct or indirect use:

The first alternative of Article 103(2)(a) of Regulation No 1308/2013 grants protection in respect of any ‘direct or indirect commercial use’ for ‘comparable products not complying with the product specification’, or, alternatively, if the reputation of the geographical indication is exploited.

These requirements are cumulative. The opponent claims that its earlier right is reputed; therefore, it is necessary to assess if the contested sign uses directly or indirectly the PDO and the evidence of repute submitted by the opponent.

1. Direct use

Porto
Earlier PDO	Contested sign

A ‘direct use’ implies the reproduction of the name of the protected designation of origin. There is ‘indirect use’ when the name of the protected designation of origin appears in a complex trade mark in smaller characters as information about the origin or type of the product or as a part of the producer’s address, irrespective of its position or its size.

In the case at hand the protected designation of origin consists of the word ‘Porto’. The contested sign fully contains the word ‘Porto’. Even the further elements can refer to ‘Porto’, such as ‘Vintage’, the bottle and also the French words ‘PORTOS EN DIRECT DES PRODUCTEURS’ (in English: Port wines direct from the producers). Therefore, there is direct use of the designation of origin since the contested sign reproduces the whole protected designation.

2. Reputation

The opponent submitted, inter alia, the following evidence in order to prove reputation of the PDO:

 Extracts from books concerning port wine, such as: ‘The Oxford Companion to Wine’ by Jancis Robinson, Third Edition of 01/10/2006, page 536 et seq.; ‘The Wines and Vineyards of Portugal’ by Richard Mayson, London 2003; ‘Mieux connaître Les Vins du Monde’ by Jacques Orhon, Montréal 2000, page 140.

 Extract of ‘Wine Spectators Top 100’, List of 2010 and 2012, including several ‘Port’ wines.

 Declaration by the president of the opponent, Mr Manuel de Novaes Cabral, dated 30/05/2013, referring to the number of sales of the appellation of origin ‘Porto’ in Portugal in the years 2006 to 2012. The opponent is a Portuguese public institute. The declaration bears the seals of the opponent and the Portuguese Ministry for Agriculture, Sea, Environment and Regional Planning:

In Portugal in the year:	Litres:	Euros:
2006	13.087.133	63.304.299
2007	12.843.352	61.431.016
2008	12.505.875	59.392.977
2009	11.016.408	51.717.473
2010	12.090.632	55.181.955
2011	10.660.674	50.097.335
2012	11.033.852	52.052.871

 Turnover numbers for different EU Member States for the years 2006-2012 of ‘Porto Appellation of Origin dispatches and exports’ with the seals of the opponent and the Portuguese Ministry for Agriculture, Sea, Environment and Regional Planning. The turnover numbers were accompanied by a declaration by the president of the opponent, Mr Manuel de Novaes Cabral, dated 30/05/2013. The declaration bears the seals of the opponent and the Portuguese Ministry for Agriculture, Sea, Environment and Regional Planning.

 Press cutting, dated 24/02/2009, from the Spanish newspaper ‘Marca’ showing a football player with two bottles of port wine.

 Declarations of sales of different ‘Port’-wine producers for the years 2008-2012.

 Internet extract of 11/06/2013 of ‘Robert Parker’s 100-Point wines where two Port wines are listed.

The abovementioned evidence indicates that the earlier PDO has been used for a substantial period of time, although most of the data is nearly five years or even older than the application date of the contested sign. The sales figures and marketing efforts suggest that the trade mark has a consolidated position in the market. This has been shown especially by the turnover numbers which were issued by a government body. They have a very high probative value. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier PDO enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(6) EUTMR to be applicable depends on other factors relevant under Article 8(6) EUTMR such as, for example, the degree of similarity between the signs and the goods and services, etc.

3. The goods and services

The services for which the contested sign seeks registration are ‘wine distribution services’ in Class 39.

The earlier PDO protects ‘wines’.

Taking into account the nature of the goods protected and the object of the contested services, in conjunction with the elements that constitute the contested sign (direct use of the PDO together with the word ‘VINTAGE’ and the representation of a bottle of wine), it is likely that the consumer will make a connection between the PDO and the contested sign and the goods and services protected or for which registration is sought.

Moreover, there is a risk that the image of the sign with a reputation or the characteristics which it projects are transferred to the services covered by the contested trade mark, with the result that the marketing of those services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

As seen above, the earlier PDO is reputed and the contested sign makes a direct use of the PDO. Furthermore, the contested services (wine distribution services) somehow refer to the goods for which the PDO is protected for. In addition, the contested sign creates the image, through its verbal and figurative elements, that it trades with wines protected by the PDO and that its services are somehow approved by the body of the PDO.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier PDO.

Conclusion

Considering all the above, the Opposition Division finds the opposition is well founded on the basis of the opponent’s earlier PDO ‘Porto’ according to Article 8(6) EUTMR. Therefore, the contested trade mark must be rejected for all the contested services.

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

Octavio MONGE GONZALVO

Martin EBERL

Gonzalo BILBAO TEJADA

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.