OPPOSITION No B 2 974 908

Grossão - Comércio de Bebidas, S.A., Avenida D. João II - Quinta dos Barões, Oliveira do Douro, Vila Nova de Gaia, Portugal, Vila Nova de Gaia, Portugal (opponent), represented by A.G. Da Cunha Ferreira, LDA., Avenida 5 de Outubro, 146-7º, 1050-061 Lisboa, Portugal (professional representative)

a g a i n s t

e-luscious B2C B.V., Badweg 48, 8401 BL Gorredijk, Netherlands (applicant), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 974 908 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 883 803 for the word mark ‘ONEWINE’, seeking protection for services in Class 35. The opposition is based on European Union trade mark No 9 821 331 for the word mark ‘ONWINE’, registered for services in Class 35. 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 mark on which the opposition is based, namely European Union trade mark No 9 821 331 for the word mark ‘ONWINE’.

The date of filing of the contested application is 19/06/2017. 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 19/06/2012 to 18/06/2017 inclusive.

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 relevant date mentioned above.

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

Class 35: Commercial information services about wines via the Internet; online marketing of wines.

According to Article 10(3) EUTMDR, 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 19/03/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 24/05/2018 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 24/07/2018 upon the opponent’s request. On 20/07/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Copies of invoices, dated between 2013 and 2017, issued by the opponent and by the former owner of the earlier mark (Onwine Comercio de Bebidas Lda), to clients in Portugal and other European Union countries. The invoices are of a considerable amount in total and refer to the sales of alcoholic beverages from the opponent’s stores, physical and online, and bear the trade mark ‘ONWINE’ on their cover page. The opponent points out that these invoices are only of an exemplary character and do not exhaust the opponent’s total turnovers for the respective years in relation to the ‘services provided’, in the wording used by the opponent.

• Advertising materials in various formats and used for various purposes, in particular:

• photos of the opponent’s store ‘ONWINE’ in Portugal, together with news (dated 2015) for the upcoming opening of another store bearing the same mark: . As may be seen throughout the evidence, the opponent operates under the name ‘onwine’, ‘the largest beverage megastore in the country’;

• fliers promoting free-of-charge workshops on beverages organised by the opponent (the opponent’s mark appears on the bottom of the fliers), namely workshop de gin, workshop de cachaça and workshop de rum: , all dated 2015 and 2017;

• several newsletters and extracts from internet publications (on Facebook or on the opponent’s website www.onwine.pt), containing information about various events organised or attended by the opponent, as well as references to special occasions throughout the year when products sold by the opponent could be purchased on various discount offers, in particular: wine tasting events, workshops (as the abovementioned), summer parties, Black Friday, Whiskey Day, Port Wine Day, Christmas, Easter, Women’s Day, Fathers’ Day, International spirit challenge awards (all dated between 2015 and 2016);

• extracts from the opponent’s website showing alcoholic products offered on sale, with their prices. The website bears further information about possibilities for online shopping from the territory of Portugal, as well as from other EU countries to which the opponent delivers products, namely Benelux, Denmark, Germany, Spain, France, Italy and the United Kingdom.

Assessment of the evidence

Preliminary remarks

Taking into account the nature of the above documents, the Opposition Division considers that their self-explanatory character along with the partial translation provided by the opponent are sufficient for the current assessment and for the purposes of drawing conclusions on the use of the trade mark in question.

Additionally, according to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. The fact that the opponent submitted evidence of use of its marks by a third party, namely some of the invoices, implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Time and place of use

The evidence shows that the place of use is mainly Portugal, as well as Belgium, France and Italy, albeit for smaller quantities of sales. This can be inferred from the language of the documents (Portuguese), the currency mentioned (euros) and some addresses in Portugal and the countries mentioned above, as seen in the invoices. Therefore, the evidence relates to the relevant territory of the EU, in particular Portugal. Moreover, all of the evidence is dated within the relevant period.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

After thoroughly examining the materials listed above, the Opposition Division takes the standpoint that the evidence demonstrates only that the mark ‘onwine’ has been used for retail services in relation to alcoholic beverages. This commercial activity does not consist of the mere act of selling goods, but in the services rendered around the actual sale of the goods, that is to say, the bringing together goods, for the benefit of the others, a variety of goods, namely alcoholic beverages in the present case, enabling consumers to conveniently view and purchase those goods.

The Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 34).

Considering the opponent’s business activity throughout the years, in particular the wide range of supportive promotional activities such as organisation of promotional events (free of charge), advertising using various means such as the official webpage, social media, printed material and particularly discount strategies, this is precisely what the abovementioned retail services encompass as supportive activities. Moreover, the solid amount of sales shown in the invoices serves to indicate that the opponent’s promotional approach regarding the goods sold is successful and generates income from the sales of those goods. To sum up, the significant sales figures are based on sales of alcoholic beverages, in the retail sense, or at best, wholesale.

However, the services for which the opponent has actually obtained protection are, in a more global sense, advertising and business services that help in the working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise. In other words, these types of services, namely marketing and commercial information services, are meant to provide insights and recommendations that are used by undertakings to enhance their management strategies, including by providing authentic data related to domestic and international clients. These types of services allow the undertakings to make better informed business decisions and are usually provided by commercial information or marketing agencies that target business undertakings, unlike the opponent’s sales services meant for the general public (retail) or at best wholesalers.

Moreover, following the applicant’s argumentation, the Opposition Division agrees that the category of commercial information services about wines via the Internet, also covered by the earlier mark, refers to providing a user/business people with materials (general or specific) about a matter or service, wine in the present case, but not advising the user on specific courses of action. This is obviously not the case with the real use of the mark ‘onwine’, which clearly stands for a commercial store that encourages the sales of, inter alia, wines and generates profit therefrom (as shown in the invoices).

Finally, it is evident that, even though the opponent may organise various workshops for promotional purpose and maintain other promotional activities, these efforts are in line with the commercial strategy selected by the opponent’s undertaking and are not individual services publicly offered to third parties with a commercial purpose. For example, the workshops are free of charge and meant for the end users of the goods, instead of being paid promotional activities organised for a specific market supplier. Overall, the services merely aim at boosting the sales of the opponent’s stores rather than increasing the sales of other undertakings.

Considering all the above, the services for which the mark has been actually used, which are retail, or at best wholesale, do not fall within any of the categories for which the earlier mark is registered. Therefore, the opponent has not shown use for the services for which the mark is registered, but for other services for which it has no protection.

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).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used for the services in respect of which it is registered and on which the opposition is based.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tzvetelina IANTCHEVA

Manuela RUSEVA

Valeria ANCHINI

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.