OPPOSITION No B 3 076 524

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

Michel Oster and Walter J. Oster, Moselweinstr. 14, 56814 Ediger-Eller, Germany (applicants), represented by Schneiders & Behrendt PartmbB, Rechts- und Patentanwälte, Huestr. 23, 44787 Bochum, Germany (professional representative).

On 05/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 524 is upheld for all the contested goods, namely

Class 32: Beers; Mineral water [beverages]; Syrup.

Class 33: Spirits [beverages]; Liqueurs; Spirits.

2. European Union trade mark application No 17 391 401 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 391 401 for the figurative mark , namely against all the goods in Classes 32 and 33. The opposition is based on the protected designation of origin ‘PORTO’ for wines. The opponent invoked Article 8(6) EUTMR.

Preliminary remark:

In its notice of opposition of 22/02/2019 the opponent only contested the applicants’ goods in Classes 32 and 33, however, the opponent did not oppose the goods in Class 30. In its submission of 13/09/2019, the opponent tried to extend the opposition with regard to the goods in Class 30. The Opposition Division points out that the opponent cannot extend the opposition once the opposition period has expired (25/04/2019), Article 46 EUTMR in conjunction with Article 2(2)(i)EUTMDR. Therefore, the opposition is not admissible insofar as it is directed against the applicants’ goods in Class 30.

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 the 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.

The opponent refers in the notice of opposition and in its observations to the protection granted to the earlier right in the territory of Portugal. With respect thereto, the Opposition Division deems it useful to clarify that the EU system of protection of geographical indications for wines is exhaustive in nature and supersedes national protection for those goods with the result that any national rules granting any additional protection which supplements or supplants that granted under the Wines Regulation are not to be taken into account in the present proceedings (14/09/2017, C‑56/16 P, PORT CHARLOTTE, EU:C:2017:693, § 96).

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 and the opponent´s entitlement

The opponent invoked in the present case as an earlier right the protected designation of origin (PDO) ‘PORTO’. In the present case, the PDO ‘PORTO’ was registered for wines under Regulation (EU) 1308/2013. According to the opponent the scope of protection of the Protected Designation of Origin ‘PORTO’ is governed by Article 103(2) of Regulation No 1308/2013 and the opponent is entitled to defend all interests of the PDO ‘PORTO’.

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 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 under Article 3 it is stated that the ‘IVDP, I.P’s [the opponent] mission consists of […..] protecting and defending the appellations of origin ‘Douro’ and ‘Porto’ …’.

 Copy of Decree-law No 212/2004 where Article 4(4) ‘grants legal capacity to act in order to impede the unlawful use of such designations, to the respective certifying entity…’.

 Decision of the Portuguese Institute of Industrial Property of 18/05/2012. According to this refusal decision the opponent is entitled to act as a representative and legal guardian of the AO ‘Oporto’.

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’ and, in particular, to file the present opposition.

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

The opponent based its opposition, inter alia, 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 use of the contested sign would clearly exploit the reputation of the PDO ‘Porto’ as the contested sign includes a full reproduction of the protected PDO. The goods are frequently distributed through the same distribution channels and subject to similar marketing rules;

 The PDO is one of the most prestigious and famous PDOs in the world and enjoys exceptional reputation (the opponent backed this claim with references to numerous decisions, including from the EUIPO);

 The universal well-known character of the PDO ‘PORTO’ is the result of a long history, the origin of which dates back many centuries.

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

It should be indicated that the signs in conflict are the PDO ‘PORTO’ while the contested sign is the figurative mark, as reproduced under ‘Reasons’, ‘PORTOS’ and in much smaller letters ‘WALTER J. OSTER’. The PDO ‘PORTO’ is protected for wines, whilst the goods and services of the contested mark which are objected to in the current proceedings are goods in Classes 32 and 33.

The provision of Article 103(2)(a)(ii) of Regulation No 1308/2013 is directed at any direct or indirect commercial use of a PDO or a PGI and protects them against such use, both as regards comparable products which do not comply with the product specifications of the protected name and as regards products which are not comparable, in so far as that use exploits the reputation of that PDO. The extent of that protection is consistent with the objective, confirmed in recital 97 of Regulation No 1308/2013, of protecting PDOs and PGIs against any use intended to take advantage of the reputation enjoyed by products which comply with the relevant specifications.

The applicable rules protect those entitled to use the PDOs against improper use by third parties seeking to profit from the reputation which they have acquired. They are intended to guarantee that the product bearing them comes from a specified geographical area and displays certain particular characteristics. They may enjoy a high reputation amongst consumers and constitute, for producers who fulfil the conditions for using them, an essential means of attracting custom. The reputation of designations of origin depends on their image in the minds of consumers. That image in turn depends essentially on particular characteristics and more generally on the quality of the product. It is on the latter, ultimately, that the product’s reputation is based (14/09/2017, C‑56/16 P, PORT CHARLOTTE, EU:C:2017:693, § 81 with further references to case law quoted therein).

(1) As to the reputation

All registered geographical indications offer a guarantee of quality due to their geographical provenance. Therefore, the Office considers that geographical indications are intrinsically reputed within the meaning of Article 103(2)(a)(ii) of Regulation (EU) No 1308/2013. This is irrespective of whether a geographical indication has been registered on the basis of a claim in the application to its reputation being essentially attributable to its geographical origin (Article 93(1)(b)(i) of Regulation (EU) No 1308/2013). Consequently, opponents do not have to submit evidence of the reputation of the geographical indication. However, the opponent must submit convincing arguments and/or evidence regarding the exploitation of the reputation of the PDO.

(2) As to the use of the PDO

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. Therefore, it is necessary to assess if the contested sign uses the PDO and exploits its reputation.

PORTO
Earlier PDO	Contested sign

The relevant territory is the European Union.

As a preliminary remark, ‘direct and indirect use’ need to be defined/interpreted. According to the Court (07/06/2018, C-44/17, SCOTCH WHISKY, EU:C:2018:415, § 32), direct and indirect use merely refer to the physical manner in which the use of a GI appears on the market: ‘direct use’ implies that the GI is affixed directly to the product or its packaging, while ‘indirect use’ requires the GI to feature in supplementary marketing or information sources, such as an advertisement for the product or documents relating to it.

For the purpose of finding whether or not there is use of a GI, the Office will assess whether an EUTM contains a GI as a whole or a term that could be considered phonetically and/or visually highly similar thereto . According to the Court, ‘the word “use” … requires, by definition, that the sign at issue make use of the protected geographical indication itself, in the form in which that indication was registered or, at least, in a form with such close links to it, in visual and/or phonetic terms, that the sign at issue clearly cannot be dissociated from it.’ (07/06/2018, C-44/17, SCOTCH WHISKY, EU:C:2018:415, § 29).

In the case at hand the protected designation of origin contains the word ‘PORTOS’. The contested sign fully contains the PDO ‘PORTO’ and the word ‘PORTOS’ is in a dominant position. Furthermore, the addition of the letter ‘S’ in the contested sign will be perceived by part of the public, such as the German-speaking public, as the plural form of ‘PORTO’.

‘WALTER J. OSTER’ will be seen as the producer of ‘PORTOS’. The figurative element is a typical form of a label on beverages and is, therefore, non-distinctive. Therefore, there is use of the designation of origin of the public since the public will at least visually and aurally make a reference to ‘PORTO’ as a protected geographical indication.

(3) As to the exploitation of reputation

The Opposition Division notes that under Article 103(2)(a)(ii) of Regulation No 1308/2013 a further requirement for granting protection to PDOs in case of direct or indirect use has to be met, namely that such use exploits the reputation of a designation of origin or a geographical indication in relation to products non-comparable to those protected under the PDO. This depends on other factors such as the degree of similarity between the goods and the link between the reputation of the producers and the quality of the products.

The goods for which the contested sign seeks registration are the following:

Class 32: Beers; Mineral water [beverages]; Syrup.

Class 33: Spirits [beverages]; Liqueurs; Spirits.

The earlier PDO protects ‘wines’.

The opponent based its opposition on the following arguments:

 The goods to be compared have the same characteristics since they are all alcoholic beverages. Furthermore, they are consumed on occasions which are largely identical, as appetisers or digestives. Moreover, they are distributed through the same distribution channels;

 ‘PORTOS’ is the dominant element of the contested sign and is also the first part of the sign which may be more likely to catch the consumer’s attention;

 The use of the ‘s’ at the end of the word ‘PORTOS’ will be understood as a possessive. Therefore, consumers will understand the trade mark as ‘WALTER J. OSTER’S Porto’;

 The applicants would benefit from the frame of the PDO ‘PORTO’ since it has a significant prestige.

Taking into account the nature of the goods protected (wines) and the contested goods (being mostly alcoholic) drinks or that the goods can be used in conjunction with the protected goods (such as syrup), the coinciding distribution channels, in conjunction with the elements that constitute the contested sign (use of the PDO together with the words ‘WALTER J. OSTER’), it is likely that the consumer will make a connection between the PDO and the contested sign and the contested goods for which registration is sought.

Moreover, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the contested trade mark, with the result that the marketing of those goods is made easier by their association with the earlier reputed PDO (similar to the case where the earlier mark has 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 use of the PDO. Furthermore, the contested goods are somehow similar in their nature or method of use and as they are sold by the same distribution channels as the goods for which the PDO is protected for. In addition, the contested sign creates the image through its verbal element ‘PORTOS’ that the goods at issue have the same image of quality and tradition as the goods protected by 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 for the contested goods, the relevant consumers will be likely to associate it with the earlier PDO. Consequently, there is exploitation of the reputation of the PDO ‘PORTO’.

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 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.

Since the applicants are the losing party, they 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, 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

Renata COTTRELL

Martin EBERL

Vanessa PAGE

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.