OPPOSITION No B 3 047 019

Bodegas Volver, S.L., Ctra. Pinoso - Fortuna, Km. 1, 03650, PINOSO ALICANTE, Spain (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009, Murcia, Spain (professional representative)

a g a i n s t

Guisheng Huang, No.290 Sihuang Section Sihuangxia New Road, Lugang Town, Chaonan District 515041 Shantou, Guangdong, China (applicant), represented by Metida Law Firm Zaboliene And Partners, Business center VERTAS Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 30/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 019 is partially upheld, namely for the following contested goods:

Class 33: Distilled beverages; cocktails; wine; spirits [beverages]; brandy; whisky; alcoholic beverages, except beer; sparkling wines; vodka.

2. European Union trade mark application No 17 507 617 is rejected for all the above goods. It may proceed for the remaining goods, namely fruit extracts, alcoholic in Class 33.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 507 617 for the figurative mark , namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 8 317 265 and on Spanish trade mark registration No 2 802 877, both for the word mark ‘VOLVER’. 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 both trade marks on which the opposition is based. As the goods of the earlier trade marks are identical (with some minor differences in the wording), the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 317 265, as its territorial protection is broader.

The date of filing of the contested application is 21/11/2017. 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 21/11/2012 to 20/11/2017 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 goods on which the opposition is based, namely the following:

Class 33: Wine, liqueurs and other alcoholic beverages (except beers).

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 24/08/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 29/10/2018 to submit evidence of use of the earlier trade mark. On 29/10/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 36 invoices addressed to different distributors of the opponent.

 More than 30 invoices and delivery notes issued to the opponent by suppliers of packaging materials, such as labels, corks for bottles, and boxes. The invoices and delivery notes contain references to the mark ‘VOLER’ and are mainly within the relevant period and for countries of the European Union.

 Pictures of labels and bottles of wine with the trade mark ‘VOLER’ on them, in different variations. The images of the bottles are accompanied by explanatory text in Spanish. These materials are not dated explicitly, but some of the labels show the year of the production of the wine.

Assessment of the evidence

All the evidence is in Spanish; however, the opponent is not under any obligation to translate the proof of use unless it is specifically requested to do so by the Office. Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely invoices, delivery notes and printouts, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. Moreover, the opponent has provided a quite exhaustive explanatory list of the documents’ content and type.

The invoices submitted, addressed to different customers of the opponent, show that the place of use is the European Union. This can be inferred from the language of the documents (Spanish), the currency mentioned (the euro) and the addresses, which are all in European countries such as Germany, Spain, Latvia and Sweden. Therefore, the materials, as a whole, show that the place of use is the European Union.

Regarding the time of use, most of the invoices, from and to the opponent, are dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the invoices are issued in the same year in which the relevant period starts (2012). Considering the nature and process of producing wine (which is one of the goods in question), it is normal for the opponent to sell throughout the whole of 2012 wine from previous years’ harvests. Moreover, from the description in the invoices, it is evident that the wine was produced in 2009. Therefore, considering usual market behaviour, there is no reason to exclude the documents dated earlier, as they refer to the same goods and confirm the sign’s long-term use.

Consequently, it is concluded that the time of use has been proven.

Concerning the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The purpose of proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trademark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 36-38). Use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39; 16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 51). Even minimal use can therefore be sufficient to qualify as genuine, on condition that it is deemed to be justified, in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 21). Furthermore, genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.

The documents show that the mark is used regularly and in the relevant territory. The number of units sold (evident from the sample of invoices submitted), while not very high in absolute terms, is sufficient to prove genuine use. The numbers of these financial documents are non-consecutive and are spread across the entire relevant period and demonstrate the frequency of use of the earlier mark during that period. The Opposition Division notes that the prices of the wines per bottle vary widely, from EUR 60 (invoice 01/06/2016) to EUR 3,84 (invoice 23/08/2017), and, as is evident from the printed materials, the wine under the mark ‘VOLVER’ has been given the ‘single vineyard’ appellation and a designation of origin (‘D.O. La Mancha’). Therefore, the evidence shows that the marks have been used in accordance with their function and that use, although not quantitatively significant, was not merely token.

The invoices and delivery notes for bottle caps and corks, as well as those for boxes, clearly show that the opponent had incurred expenses related to the production of the goods and their delivery on the market (in cardboard packages). The conclusion that these packaging materials are exclusively for goods under the trade mark ‘VOLVER’ is supported by the fact that the mark on the corks is and that on some invoices (e.g. 09/05/2014 from Adhesivas Ibi) there are references to ‘Volver Nacional’, which is also present in the invoices to some of the distributors as ‘Volver-2013-Nacional- 6B 75 cl’ (e.g. 12/05/2016 Mack&Schule AG, Germany). Therefore, although the ordering of packaging materials does not imply use by the relevant public, their quantity is indicative of the intention of the opponent to sell those goods, which, supported by the invoices for sale, leads to the conclusion that the goods were indeed on the market, irrespective of the amounts sold.

Assessed in combination, the invoices from and to the opponent provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the trade mark. Consequently, the extent of use is proved.

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 for which it is registered.

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between the goods (wine) and the opponent, as on all of the invoices submitted the opponent’s earlier mark is indicated in the field of the description of the goods as ‘VOLVER’. The description of the goods in the invoices issued by the opponent is such as to indicate that the goods mentioned are alcohol, for example:

(invoice of 18-07-2017) and

(invoice of 25/10/2017).

The indication of ‘vol’ and ‘%’ is a usual and widespread marker practice for the indication of alcohol content.

The sign is also used at the top of some of the invoices as and in the materials presenting the bottles and labels as , , and .

Overall it is clear that the sign ‘VOLVER’ is used as a trade mark and as a company name of the wine producer.

The use made of the earlier mark in the evidence submitted is clearly in line with the essential function of the trade mark, namely to indicate the commercial origin of the goods.

The opponent’s sign is registered as the word mark ‘VOLVER’. As is evident from the above, the sign appears as a word and as a figurative mark. In the invoices, the sign ‘VOLVER’ is accompanied by indication of the year of the harvest and the percentage of alcohol and volume, and there is also an indication of the particular type of wine under this trade mark as ‘MAGNUM’ or ‘Nacional’. However, all these elements are indications of descriptive character or are indications that refer to different types of wine under the trade mark ‘VOLVER’. They do not alter, in any case, the distinctiveness or the nature of the sign. The trade mark also has some different figurative depictions on the bottle labels and in the invoices, as shown above. However, despite the presence of a figurative element, the verbal element ‘VOLVER’ is clearly perceptible, and it plays an independent role and does not interact with the figurative element. This is especially evident in the label of ‘Volver 4 Meses’, where the verbal element is separated from the figurative device by additional elements.

The Court has held that several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438, § 34). Moreover, the Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied either where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C‑12/12, Colloseum Holding, EU:C:2013:253, § 36).

Therefore, considering that the verbal element ‘VOLVER’ is distinctive in relation to wines and that this verbal element remains clearly legible in the different signs included in the evidence, the signs above show use of the mark as registered or in acceptable variations of the earlier mark as registered, and such use constitutes use of the earlier mark under Article 18(1), second subparagraph, point (a) EUTMR.

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

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence, in its entirety, shows genuine use of the trade mark for wine in Class 33. There is no evidence at all regarding the other goods in Class 33 for which the mark is protected.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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.

The opposition is based on more than one earlier trade mark. However, as the use was proven for European trade mark registration No 8 317 265, the examination will focus on that in particular.

a) The goods

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

Class 33: Wine.

The contested goods are the following:

Class 33: Fruit extracts, alcoholic; distilled beverages; cocktails; wine; spirits [beverages]; brandy; whisky; alcoholic beverages, except beer; sparkling wines; vodka.

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.

The contested wine; alcoholic beverages, except beer; sparkling wines are identical to the opponent’s wine, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Wine is similar to the contested distilled beverages; cocktails; spirits [beverages]; brandy; whisky; vodka. 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.

The contested fruit extracts, alcoholic are dissimilar to the opponent’s wine. While it is true that these goods may be consumed in the same places and on the same occasions and may satisfy the same need, (and only after mixing them), for example enjoyment of a drink as an aperitif, the fact remains that they do not belong to the same family of alcoholic beverages. The relevant consumer perceives them as two distinct products. The goods are not normally displayed on the same shelves in the same areas of supermarkets and other outlets selling drinks.

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 or similar are directed at the public at large. The degree of attention is average.

c) The signs

VOLVER
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 verbal element ‘VOLER’ in the contested sign is depicted in black in a stylised typeface that resembles handwriting, which has a decorative function; however, the letters are clearly perceptible and can be read as ‘VOLER’. The verbal element ‘VOLER’ is a French word which means ‘to fly’. It may also be understood by the Italian-, Portuguese- or Spanish-speaking public due to the similarity with the equivalent words in these languages, namely ‘volare’, ‘voar’ and ‘volar’. However, it is meaningless in certain territories, for instance Bulgaria, Germany, Estonia, Greece, Cyprus, Latvia and Poland.

The earlier sign ‘VOLVER’ is also meaningless in those territories. Therefore, as the meaning affects the perception of the public and the assessment of likelihood of confusion, the Opposition Division finds it appropriate to focus on the above mentioned territories where both signs are meaningless, namely Bulgaria, Germany, Estonia, Greece, Cyprus, Latvia and Poland. The sign’s figurative element presents a dynamic depiction of a very large bird of prey flapping its wings and is distinctive in relation to the goods in question.

Consequently the verbal elements of the signs are distinctive for the relevant public.

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.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the figurative element of the contested sign, as a result of its size (larger than the verbal element), position (at the top of the sign) and dynamic depiction, is easily perceptible visually and clearly helps to establish the image of the contested mark that the relevant public will retain in mind. Consequently, neither of the elements of the contested sign can be considered clearly more dominant.

Visually, the signs coincide in the letters ‘VOL*ER’, notwithstanding the stylised font used in the contested sign. The difference between the verbal elements of the signs, the verbal element being the only element of the earlier mark, is only one letter, ‘V’, in the middle of the earlier mark.

The minor difference in the words would not be discernible except upon a very close analysis of the marks side by side. This, however, is not to be expected given the goods under consideration and the public’s average degree of attention.

However, they also differ in the figurative element of the contested sign, but this cannot be attributed more weight than the distinctive and clearly legible verbal element ‘VOLER’. The figurative element will not detract the consumers’ attention away from the verbal element.

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 ‛VOL‑ER’, present identically in both signs. The pronunciation differs only in the sound ‘V’ in the middle of the earlier mark.

Therefore, the signs are aurally similar to a high degree.

Conceptually, although the relevant public may perceive the meaning of the bird of the figurative element of the contested sign, the other sign has no meaning for the same public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partly identical or similar and partly dissimilar and are directed at the public at large with an average degree of attention. The earlier mark has a normal degree of distinctiveness. Both signs are visually similar to an average degree and aurally similar to a high degree, whereas conceptually they are not similar.

An important factor to be taken into account is the findings made with respect to the comparison of the signs. In order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarities between them and, where appropriate, to evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (12/01/2006, C‑361/04 P, Picaro, EU:C:2006:25, § 37).

Though it is clear that the visual impression cannot be overlooked, the aural coincidences between the signs may influence or taint this, given that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect recollection of them.

Moreover, where the goods are alcoholic beverages, it should be borne in mind that they are frequently ordered in noisy establishments (bars, nightclubs), and therefore the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

In light of this, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

Therefore, in the present case it is appropriate to attach particular importance to the phonetic similarity between the signs.

It is likely that the relevant consumer will order the particular goods in Class 33 orally in pubs, bars, discotheques or night clubs by reference to their verbal elements and not by describing the figurative element.

Therefore, the concept and the image of a bird are insufficient to neutralize the visual and aural similarity between the signs, since the consumer pays more attention to the verbal element and its pronunciation and considering also that the earlier mark contains only a word element.

To sum up, taking into account the relevant factors and their mutual interdependence, especially the fact that the goods are identical and similar to an average degree and that the signs are similar and even highly similar in those aspects that have greater importance in relation to the goods, the relevant public with an average level of attention could reasonably believe that the contested goods come from the same undertaking or from economically linked undertakings.

The Opposition Division considers that there is a likelihood of confusion for the relevant public for the identical and similar goods. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partially well founded on the basis of the opponent’s European trade mark registration No 8 317 265. It follows that the contested trade mark must be rejected for all the contested goods in Class 33 found to be identical or similar. It may proceed for the remaining goods.

The rest of the contested goods are dissimilar. As similarity of goods 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 applicant requested that the opponent submit proof of use of all earlier marks on which the opposition is based. This request is admissible also in relation to Spanish trade mark No 2 802 877 given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The evidence of use for this trade mark is the same as that listed above in relation to earlier European Union trade mark No 8 317 265, as the Spanish trade mark is registered for the same goods as European trade mark registration No 8 317 265. Consequently, even if these documents could provide sufficient indications with respect to place, time, extent and nature of use of earlier Spanish trade mark No 2 802 877, they refer to use for no broader a scope of goods than wine in Class 33. Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. No likelihood of confusion exists with regard to those dissimilar 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

Ewelina SLIWINSKA

Maria SLAVOVA

Jakub MROZOWSKI

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.