OPPOSITION No B 3 051 746

Torres Priorat, S.L., Finca La Solteta, s/nº, 43737, El Lloar (Tarragona), Spain (opponent), represented by Curell Suñol, S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Global Vintners Holdings Limited, PO Box 398, Ground Floor, Neptune House, Marina Bay, Gibraltar (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative).

On 06/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 746 is upheld for all the contested goods.

2. European Union trade mark application No 17 775 008 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 775 008 for the word mark ‘SALMON CLUB’. The opposition is based on international trade mark registration No 893 132 designating Benelux, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovakia, Finland, Sweden and the United Kingdom and Spanish trade mark registration No M 2 674 817, both marks for the word mark ‘SALMOS’. 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 05/02/2018. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Benelux, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovakia, Finland, Sweden and the United Kingdom and Spain from 05/02/2013 to 04/02/2018 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. As regards the international trade mark registration No 893 132, the date of publication pursuant to Article 190(2) EUTMR takes the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an international registration designating the EU or its Member States must be put into genuine use in the Union or its Member States. As from that publication, the international registration has the same effects as a registered EUTM pursuant to Article 189(2) EUTMR.

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

Class 33: 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 29/11/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 04/02/2019 to submit evidence of use of the earlier trade marks. On 21/01/2019, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. For the sake of clarity, the Opposition Division will also maintain the structure and references to various documents provided by the opponent.

The evidence to be taken into account is, in particular, the following:

 Enclosure 1: invoices issued to clients in different EU countries, such as Sweden (2013-2014 and 2015-2017), Germany (2013-2014 and 2015-2017), Finland (2013-2014 and 2015-2017), Spain (2012-2017), Greece (2015-2018), Hungary (2015-2017), Ireland (2015-2017), Luxembourg (2015-2017), Lithuania (2015-2017), Switzerland (2017), Denmark (2015-2016), France (2016-2017), Italy (2015-2017), Bulgaria (2017), Austria(2015-2017), the Czech Republic (2015 and 2017), Cyprus (2016-2017), Estonia (2015), Latvia (2015-2017), the United Kingdom (2015-2017), Poland (2015-2017), the Netherlands (2015-2017) and Belgium (2015-2017). The invoices are in English and Spanish, demonstrate currencies, such as EUR, GBP, SEK, and refer to wines sold, inter alia, under the trade mark ‘SALMOS’.

 Enclosure 2: annual price lists mainly of wines corresponding to Germany, Sweden and Finland, dated between 2013 and 2018, and showing the trade mark ‘SALMOS’.

 Enclosure 3: three wine labels in Spanish, dated 2012 and 2015, showing the trade mark ‘SALMOS’.

 Enclosure 4: promotional materials such as wine reviews, press articles from wine magazines, excerpts from blogs and twits published in English, Finnish, German, Spanish and Swedish. Dated in the relevant period and showing references to the trade mark ‘SALMOS’.

Assessment of the evidence

Place of use

The documents submitted, such as the invoices, price lists, wine reviews and press articles, show that the place of use are European countries. This can be inferred from the language of the documents (English, Finnish, German, Spanish and Swedish), the currency mentioned (EUR, GBP, SEK) and some addresses in Austria, Bulgaria, Benelux, Cyprus, the Czech Republic, Germany, Denmark, Estonia, France, the United Kingdom, Greece, Finland, Hungary, Ireland, Italy, Lithuania, Latvia, Poland and Sweden. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

Extent of use

The documents filed, namely invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In addition, the remaining documents such as the price lists and promotional materials corroborate the information that could be adduced form the invoices.

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.

Nature of use — use as a trade mark

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

The evidence by the opponent shows the trade mark in relation to wines. Therefore, a clear link can be established between the sign ‘SALMOS’ and the goods themselves.

Therefore, the evidence shows use of the sign as a trade mark.

Nature of use — use of the mark as registered

Article 18 and Article 47(2) EUTMR require proof of genuine use in connection with the goods or services for which the trade mark is registered and which the opponent cites as justification for its opposition. Therefore, the opponent must demonstrate that the mark has been used as a trade mark on the market. As the function of a trade mark is, inter alia, to operate as a link between the goods and services and the person or company responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T‑105/13, TrinkFix, EU:T:2014:1070, § 28-38). The use of the mark on packaging labels and advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

A substantial part of the evidence submitted (i.e. the samples of labels, the printouts from wine reviews, wine magazines, blogs and tweets) clearly refers to the subject trade mark, in either its denominative form or with a slight stylisation . The use of a slightly stylised typeface constitutes an acceptable means of bringing the mark in question to the public’s attention and consequently does not affect the distinctiveness of the earlier mark.

The applicant argues that the earlier marks have not been used in the form in which they were registered because it includes additional elements that alter the distinctive character of the marks. The Opposition Division cannot share this opinion. It is common practice for wine labels to include additional elements such as indications of the production year, type of the wine, origin and/or name of the producer, which are usually considered non-distinctive. Moreover, these elements are visually separated from the trade mark name and cannot be seen as parts of the trade mark itself.

Therefore, the Opposition Division concludes that the mark has been used in accordance with Article 18(1)(a) EUTMR.

Use in relation to the registered goods

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 territories.

However, the evidence filed by the opponent does not show genuine use of the trade mark 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 wines. These goods can be considered to form an objective subcategory of alcoholic beverages (except beers). Therefore, the evidence shows genuine use of the trade marks only for wines.

The opponent did not submit any evidence regarding any other goods for which the earlier marks are registered. Therefore, the Opposition Division will consider only 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. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 893 132 designating Benelux, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovakia, Finland, Sweden and the United Kingdom.

a) The goods

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

Class 33: Wines.

The contested goods are the following:

Class 33: Wine.

The goods are identical.

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 is considered average.

c) The signs

SALMOS	SALMON CLUB
Earlier trade mark	Contested sign

The relevant territories are Benelux, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovakia, Finland, Sweden and the United Kingdom.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘SALMOS’ of the earlier mark is a Spanish word, the English equivalent is ‘psalms’. The verbal element ‘SALMON’ of the contested sign will also be understood by a part of the relevant public as the English word for ‘a type of a large edible fish popular for its pink flesh’. It has close equivalents in other relevant languages, such as French (saumon), Portuguese (salmão), Italian (salmone), Romania (somon).

However, part of the relevant public will perceive these elements as meaningless. Therefore, since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the relevant territory that will not perceive any meaning in relation to the verbal elements ‘SALMOS’ and ‘SALMON’ and for whom these elements are distinctive, that is, the Austrian-, Bulgarian-, Czech-, Estonian-, German-, Greek-, Hungarian-, Polish- and Slovak-speaking parts of the public.

The verbal element ‘CLUB’ of the contested sign can be regarded as a basic English term and will be understood by the relevant public and will be associated with, inter alia, an establishment providing entertainment to members and guests, for example a nightclub. Bearing in mind that the relevant goods are wines, it is considered that this element is weak for these goods as they are usually offered and served in nightclubs. In addition, this word may evoke the laudatory concept because the word ‘CLUB’ also means ‘a closed group or association of people with common aims or interests’, highlighting the prestigious and luxurious character of the goods at issue. As a whole, the expression ‘SALMON CLUB’ has an average degree of distinctiveness and refers to the other meaning of the word ‘CLUB’, as described above.

The signs are word marks. Consequently, neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the string and sound of the letters ‘SALMO’. They differ in the last letter ‘S’ of the earlier mark and in the letter ‘N’ and the verbal element ‘CLUB’ of the contested sign. However, the additional verbal element ‘CLUB’ is weak in relation to the relevant goods.

Consumers generally tend to focus on the beginning or first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that the signs have the same beginning is a factor that must be taken into account.

Consequently, the signs are similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element of the contested sign as explained above, the other sign has no meaning in that territory. 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 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 identical and the level of attention is average. For all the relevant territories, the signs are visually and aurally similar to an average degree. Conceptually, they are not similar. However, the conceptual aspect must be put in the context of the fact that the contested sign contains a non-distinctive verbal element ‘CLUB’.

The marks have five letters in common and only differ slightly in their last letters, that is, in their endings. The additional verbal element in the contested sign is weak in relation to the relevant goods and is also placed at its ending, the part of the sign that tends to be less perceivable by consumers as they usually tend to focus on the sign’s beginning.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Furthermore, the General Court has held that, in the wine 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.

The aural and visual similarities are average and the additional element placed at the end of the contested sign is considered weak. As mentioned above, consumers generally tend to focus on the beginning of the sign. Bearing in mind the identity between the goods, it must, therefore, be concluded that the differences between the signs are insufficient to outweigh their visual and aural similarities.

Considering all the above, there is a likelihood of confusion on the part of the Austrian-, Bulgarian-, Czech-, Estonian-, German-, Greek-, Hungarian-, Polish- and Slovak-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 893 132 designating Benelux, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovakia, Finland, Sweden and the United Kingdom. It follows that the contested trade mark must be rejected in its entirety.

As the earlier international trade mark registration No 893 132 designating Benelux, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovakia, Finland, Sweden and the United Kingdom, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

María Clara IBÁÑEZ FIORILLO

Arkadiusz GORNY

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.