OPPOSITION No B 3 068 361

M Chapoutier (société anonyme), 18, avenue du Docteur Paul Durand, 26600 Tain l’Hermitage, France (opponent), represented by Cabinet Laurent & Charras, Le Contemporain 50, Chemin de la Bruyère, 69574 Dardilly Cedex, France (professional representative)

a g a i n s t

Long Wines S.L., Avda. del Monte 46, 28120 Ciudad Santo Domingo, Algete, Spain (applicant), represented by Padima, Explanada de España nº 11, Piso 1º, 03002 Alicante, Spain (professional representative).

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

DECISION:

1. Opposition No B 3 068 361 is upheld for all the contested goods.

2. European Union trade mark application No 17 929 722 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 17 929 722 for the word mark ‘PLEYADES’. The opposition is based on French trade mark registration No 98 722 643 for the word mark ‘LES PLEIADES’. 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, French trade mark No 98 722 643 for the word mark ‘LES PLEIADES’.

The date of filing of the contested application is 12/07/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 12/07/2013 to 11/07/2018 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: Alcoholic beverages (except beer); wines.

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 16/04/2019, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 21/06/2019 to submit evidence of use of the earlier trade mark. On 21/06/2019, 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.

The evidence to be taken into account is the following:

• ANNEX 1: Invoices.

More than 100 invoices issued by the opponent to different customers in France. The invoices are dated from 19/09/2013 to 10/07/2018, with samples from every year within the relevant period. These invoices, all in French, refer to goods under different marks, and the sign ‘LA PLEIADE’ appears in all of them in relation to wine (vin étranger). The currency mentioned is euros.

• ANNEX 2: Price lists.

A price list, entitled ‘L’UNIVERS M. CHAPOUTIER’, in French, listing the goods offered by the opponent showing a great variety of wines under different marks. The mark ‘LA PLEAIDE’ is also displayed as follows:

The document is undated, although it provides a date of validity until 30/06/2019. Moreover, there is an address in France at the bottom.

• ANNEXES 3 and 4: Brochures.

Two brochures, both in French and English, entitled ‘LA PLEIADE’ and ‘A meeting between the stars and a river…’ respectively, containing information about the wine under the said mark, such as grape variety, terroir and tasting. Both brochures include a picture of a bottle of wine. The brochures are undated and of an unknown source, although the opponent claimed they were produced by himself, M. CHAPOUTIER.

• ANNEX 5: Pictures of the goods.

Pictures of several bottles of wine ‘LA PLEIADE’ showing the front and back labels on three different vintages, namely 2013, 2014 and 2015. The name and address in France of the opponent appears on the labels.

On 08/11/2019, after expiry of the time limit, the opponent submitted additional evidence.

The applicant argued that the evidence submitted by the opponent on 08/11/2019 was late and therefore should not be taken into account.

In the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on 08/11/2019 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier trade mark.

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 mark is 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.

Place of use

The invoices clearly show that the place of use is France. This can be inferred from the language of the documents (French), the currency (euros) and the addresses of both the opponent and its customers. Therefore, the evidence relates to the relevant territory.

Time of use

The invoices are dated within the relevant period. Moreover, they are dated at regular intervals during the relevant period.

For the remaining evidence, namely the price list, brochures and pictures of the goods, it cannot be objectively concluded when they were used. However, these pieces of evidence have been taken into account primarily to additionally confirm the goods in relation to which the mark was used – wine – and that they were offered to the French public.

Therefore, it is proven that the mark has been used during the relevant period of time.

Extent of use

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

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents submitted by the opponent provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. This conclusion results, in particular, from the invoices as they contain information regarding the number of bottles of wine bearing the opponent’s mark, that have been sold to several undertakings in France at regular intervals during each year of the relevant period.

Therefore, the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Although the applicant considered that the amounts were small, it is more than token use and it also evidences continuous use of the trade mark during the relevant period. In fact, use of the mark need not be quantitatively significant for it to be deemed genuine. The purpose of the provision of proof of use is not to assess commercial success or to review the economic strategy of an undertaking, or to restrict trade mark 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, § 38).

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the mark is registered as ‘LES PLEIADES’ but the evidence submitted, as acknowledged by the opponent, showed that the earlier mark had been used in its singular form, ‘LA PLEIADE’.

According to the Office’s Guidelines (Part C, Opposition, Section 6, Proof of use), the use of plural or singular forms in meaningful words (e.g. by adding/omitting the letter ‘s’ in English or other languages) does not usually alter the distinctive character.

This principle is applicable in the present case since the use of the singular form of the earlier mark does not substantially alter the consumer’s visual or aural perception of the mark and does not lead to a different conceptual impression of the mark in the market. The mere deletion of the last letter ‘S’ in the most relevant element of the mark will probably go unnoticed by the relevant public, as will the corresponding change in the article, which merely introduces the noun that follows and has, therefore, less impact in the perception of the mark.

Therefore, this modification does not alter the distinctive character of the earlier mark in the form in which it was registered.

The applicant argued that the opponent ‘has not proved a genuine use of the opposing mark since most of the evidence –mainly the invoices– show the use of the sign ‘CAMBRIEN LA PLEIADE’, whereas the opposing mark is ‘LES PLEIADES’’. The applicant insisted on the fact that ‘CAMBRIEN’ is meaningless for the French consumers, and therefore distinctive in relation to the goods concerned. Furthermore, it is the first element of the opponent’s mark and this is where consumers focus their attention.

However, the Opposition Division considers that the word ‘CAMBRIEN’ cannot be considered part of the earlier mark but instead is a mere reference used, for example for internal use in the invoices or for information purposes in websites, to identify the appellation of origin or the name of the vineyard. The public will not find ‘CAMBRIEN’ on the goods, as evidenced by the pictures of the bottles of wine (Annex 5). Therefore, the applicant’s claim must be set aside.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

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, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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 mark.

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.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 33: Wines.

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.

1. The goods

The goods on which the opposition is based, and for which use has been proven, are the following:

Class 33: Wines.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); wine.

Wine is identically contained in both lists of goods (albeit in plural in the earlier mark and singular in the contested sign).

The contested alcoholic beverages (except beer) includes, as a broader category the opponent’s wines. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. 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 to be average.

The applicant claimed that the degree of attention of the relevant public for wines was high since consumers carefully and selectively choose the product. The Opposition Division notes that although the attention paid during wine purchase can vary depending on their price range, the most common scenario, which has to be taken into account, covers the general broad category of wines, for which the average consumers would be attentive to an average degree. Therefore, the applicant’s claim must be set aside.

3. The signs and distinctiveness of the earlier mark

LES PLEIADES	PLEYADES
Earlier trade mark	Contested sign

The relevant territory is France.

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).

Both signs are word marks.

The earlier mark is written in French and is comprised of the definite article ‘LES’ that merely introduces the word ‘PLEIADES’, which refers to a particular open star cluster also known as the Seven Sisters.

Since the earlier trade mark as a whole has no meaning in relation to the goods in question from the perspective of the public in the relevant territory – and given the lack of a claim for enhanced distinctiveness on the side of the opponent – the distinctiveness of the earlier mark must be seen as normal.

The contested sign is the same word, but in Spanish, ‘PLEYADES’. This slight difference in the spelling (just in one letter, I/Y) will not prevent the relevant public from perceiving the same meaning. This sign is, therefore, equally distinctive.

Visually and aurally, the signs have a significant number of letters (seven) in common in the same order at the beginning and at the end of each sign, namely ‘PLE*ADES’ and their sounds. However, they differ in the letters in the middle, ‘I’ in the earlier mark and ‘Y’ in the contested sign. These differing letters, despite the applicant’s opinion, will not create a significant difference in their pronunciation in French.

The signs also differ in the article ‘LES’ (and its pronunciation) present at the beginning of the earlier mark with no counterpart in the contested sign. However, this additional word will simply be perceived as subordinated to the noun it introduces, with limited impact on the overall perception of the mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Both signs will be perceived as referring to the same group of stars.

Therefore, the signs are conceptually identical.

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

4. Global assessment, other arguments and conclusion

The goods are identical. They target the public at large who have an average degree of attention.

The signs are visually and aurally similar to a high degree and conceptually identical. The earlier mark has a normal degree of distinctiveness.

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).

The differences between the signs are clearly not sufficient to outweigh the strong visual and aural similarity and the conceptual identity between them. Therefore, the relevant public may believe that the goods found to be identical come from the same undertaking or economically linked undertakings.

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

Furthermore, 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, especially taking the high aural similarity between the signs into account.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 98 722 643. It follows that 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 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Mads Bjørn Georg JENSEN

Sofía SACRISTÁN MARTÍNEZ

Tzvetelina IANTCHEVA

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.