OPPOSITION No B 2 924 648

Ambra S.A., Puławska 336, 02-819 Warszawa, Poland (opponent), represented by JWP Rzecznicy Patentowi Dorota Rzążewska Sp. K., ul. Żelazna 28/30, 00-833 Warszawa, Poland (professional representative)

a g a i n s t

The Company of Urban Wines and other Liquids Sweden AB, Kämpagatan 3, 53236 Skara, Sweden (applicant), represented by Marks & Us Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 12/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 924 648 is partially upheld, namely for the following contested goods:

Class 33: Alcoholic beverages (except beer).

2. European Union trade mark application No 16 555 708 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 555 708 ‘POGGIO FIORE’ (word mark). The opposition is based on the following earlier trade marks:

 European Union trade mark registration No 9 221 375 ‘FIORE’ (word mark),

 European Union trade mark registration No 9 221 417 .

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 trade marks on which the opposition is based.

The date of filing of the contested application is 05/04/2017. 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 from 05/04/2012 to 04/04/2017 inclusive.

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 relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

EUTM No 9 221 375:

Class 33: Wine.

EUTM No 9 221 417:

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers), wine.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 19/01/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 24/03/2018 to submit evidence of use of the earlier trade marks. On 23/03/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Annex 1: Screenshots from the opponent’s website mentioning that the opponent’s company has been active in the area of production and distribution of wine since 1994, that it has become the market leader in Poland in several segments (e.g. sparkling wines, table wines, on-line wine sales) and that in 2003 it started operating in other Central and Eastern European countries.

 Annex 2: Screenshots from the opponent’s website concerning the export activities of the company.

 Annex 3: Dozens of invoices for the sale of thousands of ‘FIORE’ products to various Polish clients, dated 2012-2018.

 Annex 4: Print-outs of the opponent’s website obtained from the internet archive Wayback Machine, dated in January 2015 and June 2016. They show that ‘FIORE’ is a flavoured sparkling wine. Both the word mark ‘FIORE’ and the figurative mark ‘Fiore’ are depicted in the documents.

 Annex 5: Number of leaflets in Polish advertising the ‘FIORE’ flavoured sparkling wine. One is dated in 2010 and the rest are undated.

 Annex 6: Two invoices for the sale of dozens of ‘FIORE’ products to a client in Austria, dated 2013.

 Annex 7: Several invoices for the sale of thousands of ‘FIORE’ products to clients in Czechia, dated between June and November 2012.

 Annex 8: Several invoices for the sale of thousands of ‘FIORE’ products to a client in Slovakia, dated between June and December 2012.

 Annex 9: Several invoices for the sale of thousands of ‘FIORE’ products to a client in Lithuania dated between June 2012 and July 2013.

 Annex 10: Several invoices for the sale of hundreds of ‘FIORE’ products to a client in Estonia dated between July and October 2012.

 Annex 11: Invoice for the sale of hundreds of ‘FIORE’ products to a client in Latvia dated June 2013.

 Annex 12: Opponent’s product catalogue showing, among other things, the ‘FIORE’ flavoured sparkling wine. Both the word mark ‘FIORE’ and the figurative mark ‘Fiore’ are depicted in the document.

 Annex 13: Print-out from the Polish website ‘handel extra’ mentioning the ‘FIORE’ flavoured sparkling wine. It is dated in August 2011.

 Annex 14: Print-out from the Polish website ‘alkowiki’ with information about the ‘FIORE’ flavoured sparkling wine and its photograph, dated in 2016. Both the word mark ‘FIORE’ and the figurative mark ‘Fiore’ are depicted in the document.

 Annex 15: Print-out from the Polish website ‘Bangla’ with information about the ‘FIORE’ flavoured sparkling wine and its photographs, dated in 2013. Both the word mark ‘FIORE’ and the figurative mark ‘Fiore’ are depicted in the document.

 Annex 16: Report titled ‘Action Focus Online’ with a number of supermarket leaflets in Polish offering the ‘FIORE’ flavoured sparkling wine and featuring its photographs, dated in 2012-2018. Both the word mark ‘FIORE’ and the figurative mark ‘Fiore’ are depicted in the document.

 Annex 17: One page from a document of an unknown origin, referred to by the opponent as ‘Nielsen Retail Audit’, showing a table with sales volumes (and other figures) concerning the ‘FIORE’ flavoured sparkling wine in Poland. The table shows monthly sales of thousands of litres of ‘FIORE’ between December 2015 and January 2018.

Upon the request of the applicant and, subsequently, of the Office, the opponent submitted a partial translation of the evidence of use on 01/08/2018.

The applicant criticises the fact that the opponent submitted only a partial English translation of the relevant documents. Nevertheless, such a partial translation of evidence of use is acceptable and it is in line with the Office’s request of 30/05/2018 where it was stated: ‘Please translate this evidence of use into the language of the proceedings, bearing in mind that it is up to you to decide whether a complete translation of all the evidence is necessary’. It is considered that the parts of the evidence that have been translated, together with the evidence that is either in English or is self-explanatory, make the whole body of evidence sufficiently clear and intelligible for the applicant and also for the Opposition Division. Consequently, the applicant’s argument must be dismissed.

Furthermore, 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 marks are 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.

Practically all the documents show that the place of use is in various countries of the European Union, and in particular in Poland. This can be inferred from the language of the documents (Polish), the currency mentioned (EUR) and some addresses in Poland, Austria, Czechia, Slovakia or Lithuania. Therefore, the evidence relates to the relevant territory.

Although some of the documents are dated outside the relevant period, as correctly pointed out by the applicant, there is still a large of the evidence which is dated within the relevant period.

The documents filed, namely the invoices taken together with the website print-outs and the leaflets, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the earlier mark ‘FIORE’ has been used in accordance with its function and in the form as registered for the relevant goods. The same applies to the earlier figurative mark ‘Fiore’.

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; 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 marks during the relevant period in the relevant territory.

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

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 flavoured sparkling wine which can be considered to form an objective subcategory of the opponent’s wine in Class 33 (earlier EUTM No 9 221 375) and alcoholic beverages (except beers), wine in Class 33 (earlier EUTM No 9 221 417). Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for flavoured sparkling wine in Class 33 for both earlier trade marks.

In this context, the applicant argues that the opponent proved use only for juicy drinks in Class 32, i.e. for non-alcoholic juicy drinks. Although the goods are identified in the invoices as ‘Fiore Juicy Strawberry’ or ‘Fiore Juicy Peach’, it is clear from the descriptions and photographs of the goods in the other documents submitted by the opponent that the goods are flavoured sparkling wine, namely a sparkling wine (an alcoholic beverage) with, for example, a strawberry or peach flavour. Consequently, the opponent’s argument must be set aside.

As stated above, the opponent proved genuine use for flavoured sparkling wine in Class 33 for both earlier trade marks. For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier word mark ‘FIORE’ No 9 221 375.

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.

a) The goods

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

Class 33: Flavoured sparkling wine.

The contested goods are the following:

Class 32: Soft drinks.

Class 33: Alcoholic beverages (except beer).

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

In case T-150/17 of 04/10/2018, FLÜGEL / ... VERLEIHT FLÜGEL et al., EU:T:2018:641, § 77-84, the Court found that:

‘a very large number of alcoholic and non-alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as premixed alcoholic drinks. To consider that those goods should, for that reason alone, be described as similar, when they are not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers, would put a large number of goods which can be described as ‘drinks’ into one and the same category for the purposes of the application of Article 8(1) EUTMR.

Thus, it cannot be considered that an alcoholic drink and an energy drink are similar merely because they can be mixed, consumed or marketed together, given that the nature, intended purpose and use of those goods differ, based on the presence of, or absence of alcohol in their composition …. Furthermore, it must be held that the undertakings which market alcoholic drinks premixed with a non-alcoholic ingredient do not sell that ingredient separately and under the same or a similar mark as the premixed alcoholic drink at issue.’

Moreover, in case T‑175/06 of 18/06/2008, Mezzopane, EU:T:2008:212, § 79-91, the Court confirmed as regards wine, on the one hand, and mineral and aerated waters and other non-alcoholic drinks, on the other, that the very nature of those goods differs in terms of the presence or absence of alcohol. Wines are alcoholic beverages and, as such, clearly distinct from non-alcoholic beverages, both in shops and drinks menus. Moreover, wine is generally intended to be savoured and is not designed to quench thirst, whereas non-alcoholic beverages are generally intended to quench thirst. The average consumer is used to the distinction between alcoholic and non-alcoholic drinks, and such a distinction is necessary, since some consumers do not wish to or cannot consume alcohol. For the relevant consumer, the presence or absence of alcohol and the difference in taste between wine and non-alcoholic beverages outweigh the fact that the end-users and method of use are the same. As regards the complementary nature of the goods in question, it must be stated that there is no close link between those goods in the sense that the purchase of one is indispensable or important for the use of the other. The difference in taste and in the presence or absence of alcohol makes that the goods are not interchangeable and, therefore, are not in competition. Finally, the Court states that the average consumer will consider it normal for the goods at stake to come from different companies. The goods cannot be regarded as belonging to the same family of beverages and they are not likely to have a common commercial origin.

In view of all the above, and contrary to the opponent’s arguments, the contested soft drinks in Class 32 and the opponent’s flavoured sparkling wine in Class 33 must be considered dissimilar.

Contested goods in Class 33

The contested alcoholic beverages (except beer) include, as a broader category, the opponent’s flavoured sparkling 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.

b) 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.

c) The signs

FIORE	POGGIO FIORE
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 applicant claims that the common element ‘FIORE’ means ‘flower’ in Italian and that the same meaning will be grasped by the public speaking Spanish, Portuguese, French and English. The applicant asserts that this element is non-distinctive. On the other hand, the opponent claims that the element ‘POGGIO’ of the contested sign also has a meaning in Italian and that this element is weak. Consequently, in order to avoid unnecessary considerations regarding the perception of these elements, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the EU public not speaking the aforesaid languages.

For this part of the public in the EU, neither ‘FIORE’ nor ‘POGGIO’ have a meaning and are, therefore, distinctive.

In its observations, the applicant claims that the beginning of the signs, to which consumers pay highest attention, is different in the present case. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

Visually, the entire earlier mark ‘FIORE’ is included in the contested sign where it forms a separate distinctive element. However, the marks differ in the additional element ‘POGGIO’ of the contested sign which has no counterpart in the earlier trade mark.

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 coincides in the sound of the letters ‘FIORE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘POGGIO’ of the contested sign which have no counterparts in the earlier trade mark.

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

Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) 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 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.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly dissimilar. The earlier trade mark’s degree of distinctiveness is average. The degree of attention of the relevant public, namely the public at large in the present case, will be average.

The marks are visually and aurally similar to an average degree and have no conceptual aspect to be taken into account. The earlier trade mark ‘FIORE’ is totally included in the contested sign where it plays the role of a separate distinctive element.

Moreover, 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, it is likely that due to the presence of the identical word ‘FIORE’ in the contested sign, the relevant public will assume that the identical goods in Class 33 come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the EU public not speaking Italian, Spanish, Portuguese, French and English. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 221 375 for the word mark ‘FIORE’. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As identity/similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the earlier figurative EUTM No 9 221 417. This earlier trade mark is less similar to the contested mark because it contains figurative elements which are not present in the contested trade mark. Moreover, following the assessment of proof of use, it covers the same scope of goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Victoria DAFAUCE MENENDEZ

Vít MAHELKA

Cindy BAREL

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.