OPPOSITION Nо B 3 072 161

 

Bodega Cuatro Rayas, S. Coop. Agroalimentaria, Camino de la Fuentecilla, s/n, 47491 La Seca (Valladolid), Spain (opponent), represented by Wolke, Patentes y Marcas, Calle Alejandro Ferrant, 9, 28045 Madrid, Spain (professional representative) 

a g a i n s t

 

Max Luz, Hopfauer Straße 12, 70563 Stuttgart, Germany (applicant), represented by Härting Rechtsanwälte PartGmbB, Chausseestr. 13, 10115 Berlin, Germany (professional representative).

On 13/11/2020, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 072 161 is partially upheld, namely for the following contested goods: Class 33: Alcoholic beverages (except beer).

2.	European Union trade mark application No 17 967 609 is rejected for all the above goods. It may proceed for the remaining goods.

3.	Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 967 609 ‘CAS DE LUZ’ (word mark). The opposition is based on Spanish trade mark registration No 2 996 803, ‘CASA DE LUZ’ (word mark) and Spanish trade mark registration No 3 101 393, (figurative mark). 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, namely Spanish trade mark registration No 2 996 803 ‘CASA DE LUZ’ and Spanish trade mark registration No 3 101 393.

Earlier Spanish trade mark registration No 3 101 393 was registered on 22/04/2014 while the contested application was filed on 12/10/2018. Therefore, the request for proof of use is inadmissible as far as it concerns this earlier mark.

The request was submitted in due time and is admissible as regards Spanish trade mark registration No 2 996 803 given that this earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 12/10/2018. The opponent was therefore required to prove that Spanish trade mark registration No 2 996 803 was put to genuine use in Spain from 12/10/2013 to 11/10/2018 inclusive.

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 beer).

 

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 22/11/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 27/01/2020 to submit evidence of use of the earlier trade mark. On 21/01/2020, within the time limit, the opponent submitted evidence of use. The opponent had also submitted evidence of use together with its statement of grounds of 20/06/2019.

The evidence to be taken into account is the following:

• 43 invoices from the years 2014 to 2019. All show use of the sign ‘CASA DE LUZ’. The invoices are in Spanish but self-explanatory. They indicate the number of bottles sold and the price of each lot with the term ‘BTS’ standing for ‘bottles’ (‘botellas’ in Spanish). The invoices were sent to different recipients, which are almost all located in Spain.

• Two pictures showing wine bottles on a shop shelf. In one picture the bottles have figurative labels bearing the sign ‘CASA DE LUZ’ which look as follows: and . In the other picture a number of different bottles with different labels are visible, one of which bears said figurative label with the sign ‘CASA DE LUZ’. Both pictures are undated.

• One page with screenshots from the website www.spanishterroir.com.au/wine.php, showing bottles of wine. The label is not legible. Below the photos of the bottles the sign ‘Casa de Luz’ is indicated. The screenshots are dated 12/06/2019.

• Two pages with hyperlinks to a number of websites on the internet, which all seem to be connected to shops selling wine online or restaurants. Many of them contain the sign ‘Casa de Luz’ in the domain address. The printouts from the websites submitted with the opponent’s submissions of 20/06/2019 show parts of the websites referred to in the hyperlinks. The rest of the hyperlinks were not submitted as print-outs.

• A number of print-outs from online wine shops showing a bottle with the above mentioned figurative label and the verbal elements ‘CASE DE LUZ’ as well as information about the wine and the opponent. The majority of the printouts is dated 17/06/2019 while some are undated. The printouts were all submitted twice together with the opponent’s statement of grounds of 26/06/2019.

Assessment of the evidence

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).

Regarding the hyperlinks to various websites, which were not submitted as print-outs by the opponent and where further information about the use of the earlier mark could allegedly be found, a mere indication of a website does not constitute evidence. The onus of supplying evidence is on the opponent and not on the Office or the applicant. It is clear that the nature of a hyperlink to a website does not allow the content and data to which it is meant to refer to be copied and transmitted as a document so that it can be sent to the other party to enable it to access that information. Furthermore, websites are easily updated, and most do not provide any archive of previously displayed material or display records that enable members of the public to establish precisely when any particular content was published. The authenticity and integrity of the information cited only by means of a hyperlink to a website cannot, therefore, be verified. Consequently, links to websites, which were not separately submitted as printouts, cannot be considered as valid items of evidence and cannot be taken into account.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark, which is subject to the use requirement, during the relevant period in the relevant territory.

Time and place of use

Most of the invoices are dated within the relevant period.

The overwhelming majority of the invoices shows that the place of use is Spain. This can be inferred from the language of the documents (‘Spanish’), the currency mentioned (‘Euro’) and the addresses of the recipients, which are almost all based in Spain. As regards rest of the evidence, some documents cannot be properly allocated to a territory, but many show ties to Spain as the printouts show Spanish language which suggests that the online wine shops are located in Spain or at least sell in Spain. In addition, the invoices represent the majority of the evidence. Therefore, overall, the evidence relates to the relevant territory.

Extent of use

As regards 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 invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The sales which are documented in the invoices for the relevant period of time from 2013 to 2018 amount to several hundreds of thousands of Euro, billed to various recipients throughout the territory of Spain. The same applies to the volume of goods sold, which is several hundreds of thousands, spread across a five year period. This commercial volume and the duration of the period in which those sales were reached, as well as the frequency of those sales are quantitatively significant. They clearly demonstrate that the opponent has seriously tried to acquire a commercial position in the relevant market.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use and use of the mark as registered

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.

The use evidence shows that the earlier word mark (Spanish trade mark registration No 2 996 803 ‘CASA DE LUZ’) has been used on the invoices in accordance with its function, namely as a trade mark, and as registered according to Article 18(1), second subparagraph, point (a) EUTMR.

The rest of the evidence contains photos showing bottles with a rectangular front label bearing the verbal element ‘CASA DE LUZ’ in its bottom half. The upper part shows small squares dotted all over the label in a rectangular pattern. On top the skyline of a city is visible. The verbal element ‘CASA DE LUZ’ appears two times on the bottles depicted in the evidence, once on the bottom half of the front label and once on the neck of the bottle. On the front label as well as on the neck that mark is separate from the other elements and easily recognisable.

The number ‘2018’ visible on some photos, and the indication ‘Verdejo Rueda’ close to ‘CASA DE LUZ’ on the main label and ‘Verdejo’ on the neck label, merely indicate the vintage and the name of the region as ‘Verdejo’ is a variety of wine grape that has long been grown in the Rueda region of Spain. These indications are therefore unsuited to indicate the origin of the goods and thus lack distinctiveness. The same reasoning applies to the verbal elements ‘denominación de origen’ which merely indicates that ‘Verdejo Rueda’ is protected by a regulatory classification system used primarily for Spanish wines. The use of those elements on the same bottle does not undermine the function of the mark ‘CASA DE LUZ’ as a means of identifying the products at issue.

Taking into account the evidence in its entirety, it is sufficient 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 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 beer). Therefore, the Opposition Division considers that the evidence shows genuine use of the earlier trade mark only for wines.

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 Spanish trade mark registration No 2 996 803, ‘CASA DE LUZ’.

a) The goods

 

Following the assessment of proof of use carried out above, the goods on which the opposition is based are the following:

Class 33: Wines.

The contested goods are the following:

Class 21: Glasses, drinking vessels and barware.

Class 32: Soft drinks; Preparations for making beverages. 

Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic beverages.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 21

The contested glasses, drinking vessels and barware and the opponent’s wines have nothing relevant in common. They have a different nature (alcoholic beverage vs household items) and serve a different purpose. Although, the contested goods and the opponent’s goods can be used together in the sense that wine can be drunk from glasses (which also belong to the more general term barware), this does not lead to a finding of similarity.

These goods are neither complementary nor in competition. Goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). There is a relationship between wine (Class 33) and wineglasses (Class 21) insofar as wineglasses are intended to be used for drinking wine. However, that relationship is not sufficiently pronounced to conclude that these goods are complementary and thus similar. Furthermore, the goods differ in method of use, are commonly distributed through different channels and typically do not originate from the same manufacturers (although there might be exceptions, which however, the Opposition Division considers to be rare).

It follows that they must be considered dissimilar.

Contested goods in Class 32

The contested soft drinks are dissimilar to the opponent‘s wines since they are of different nature and purpose. They are neither in competition nor complementary. It is unlikely that they will be produced by the same manufacturers, and they are generally distributed through different channels.

The contested preparations for making beverages are used to manufacture beverages ready-made for consumption. They are dissimilar to the opponent’s wine. Preparations for making beverages in Class 32 include concentrates, extracts for making non-alcoholic beverages. Taking into account that differences between the sectors of alcoholic and non-alcoholic beverages, it is unlikely that producers of alcoholic beverages would also be engaged in production of essences for making non-alcoholic beverages and vice versa; these products are sold in different sections of supermarkets and they target different consumers.

Contested goods in Class 33

The contested alcoholic beverages (except beer) include, 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.

The contested preparations for making alcoholic beverages and the opponent’s wine target different public (producers of beverages versus end users) and, therefore, are sold via different distribution channels. In line with this, they are usually manufactured by different entities. They also have a different nature, purpose and method of use. Furthermore, they are neither in competition nor complementary. Consequently, the are dissimilar.

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 to be average.

The applicant states that ‘the degree of attention of the relevant public for wines is high since consumers choose the product carefully and selectively’ and then continues by stating that ‘the consumer of alcohol as member of the general public will demonstrate at least an average level of attention when purchasing such goods’. These statements are contradictory as the public’s attention is either ‘at least average’ (and thus possibly high for a part of the relevant consumers) or just (and thus exclusively) high. In any case, wine is a product of every day mass consumption, which in the overwhelming majority is sold for low prices. It is normally widely distributed, ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafés. As such it is not chosen with a higher level of attention, contrary to what the applicant alleges. The applicant has not submitted any evidence to the contrary. The General Court judgement it quotes (19/01/2017, T-701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22) unequivocally states that consumers will demonstrate an average level of attention when purchasing alcoholic beverages, which includes wine. Consequently, the applicant’s argument must be discarded.

c) The signs

CASA DE LUZ	CAS DE LUZ
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 element ‘CASA’ of the earlier mark means ‘house’ in Spanish. ‘LUZ’ means ‘light’ but can also refer to the female forename ‘Luz’. The element ‘DE’ is the equivalent of the possessive conjunction ‘of’ in English. Consequently, the relevant consumers will understand the earlier mark either as ‘house of light’ or as a reference to indicate a person's business (for instance, a restaurant), followed by the name of the person (the female name ‘Luz’ here) concerned.

If the earlier mark is understood as ‘house of light’ this meaning bears no relation to the goods at issue. This expression is, therefore, distinctive. In the second scenario ‘CASA’ would refer to a business and ‘LUZ’ would be the distinctive indication of commercial origin and thus the more distinctive element. In this scenario, the expression as a whole is distinctive, too.

The applicant claims that the expression ‘Casa de Luz’ with the meaning ‘house of light’ is ‘highly common in the Spanish language and highly descriptive in relation to wine/alcoholic beverages’. It submits evidence in relation to this allegation (Appendix 5 submitted with its observations in reply of 06/11/2019). However, this evidence consist merely of a number of screenshots from internet websites showing the use of the expression ‘Casa de Luz’ in relation with music, the rental of apartments and so called ‘event spaces’ as well as what seems to be an organisation offering child support services. One screenshot concerns coffee products but not alcoholic beverages. Consequently, this evidence does not prove that the expression ‘Casa de Luz’ is commonly used in relation to or even descriptive for wine or alcoholic beverages in general and the applicant’s claim in this respect must be discarded.

The elements ‘DE LUZ’ of the contested sign have the same meaning as in the earlier mark. Reference is made to those findings which are equally applicable here. The element ‘CAS’ has no apparent meaning for the public in the relevant territory and none of the parties argues otherwise. Consequently, it is normally distinctive. It cannot be entirely excluded that a part of the relevant public would read the element ‘CAS’ in the contested sign a misspelling of ‘CASA’, in which case it would have a normal degree of distinctiveness as well.

Consequently, the majority of the relevant public will not be able to identify a clear meaning in the contested sign as whole but will only perceive the meaning of ‘DE LUZ’ in the sense of ‘of light’ or ‘of Luz’ if ‘LUZ’ is understood as a female forename. The part of the public which will read ‘CAS’ as misspelt ‘CASA’ will recognise the same meanings in the contested sign as in the earlier mark.

Visually, the signs coincide in their second and last words ‘DE’ and ‘LUZ’ and the letters ‘CAS’ in their first word while they only differ in the additional letter ‘A’ at the end of the first element ‘CASA’ of the earlier mark. Bearing in mind that the signs have almost the same length and that they share eight letters (all of them in the same order), the Opposition Division considers that there is a high degree of visual similarity.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CAS* DE LUZ’, present identically in both signs. The pronunciation only differs in the sound of the letter ‛A’ of the earlier sign, which has no counterpart in the contested mark. Therefore, the signs are aurally highly similar.

Conceptually, both signs are associated by the consumers in the relevant territory with the meanings set out above, namely ‘house of light’ in the earlier mark and ‘of light’ in the contested sign or ‘the business of Luz’ in the earlier mark and ‘of Luz’ in the contested sign. The signs share a concept to a certain extent as they both contain the term ‘light’ or the name ‘Luz’. That said, the public will also perceive the meaning of the ‘house’/’business’ in the earlier mark. However, this difference is not enough to override the conceptual unit created by ‘light’. In sum, the marks are conceptually similar to an average degree. For the part of the public which will perceive the contested sign as a misspelt ‘CASA DE LUZ’ (and understand one of the two potential meanings) 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.

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 mark as a whole has no meaning for 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, which are directed at the public at large whose degree of attention is considered to be average, are partly identical and partly dissimilar. The earlier mark has been found to be distinctive to a normal degree. The signs are visually and aurally highly similar while conceptually they are either similar to an average degree or identical.

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 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. Therefore, the fact that the aural similarity is high in the present case is particularly relevant in assessing the likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is partially well founded on the basis of the opponent’s Spanish trade mark registration No 2 996 803, ‘CASA DE LUZ’. It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services 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 opponent has also based its opposition on Spanish trade mark registration No 3 101 393 for the figurative mark mentioned further above which was not subject to the use requirement, as explained above. This other earlier right invoked by the opponent does cover a broader scope of goods, namely alcoholic beverages (except beer). However, the above mentioned explanations with regard to glasses, drinking vessels and barware in Class 21, soft drinks; preparations for making beverages in Class 32 and preparations for making alcoholic beverages in Class 33 apply to alcoholic beverages (except beer), too. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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

 

 

Martin MITURA

Christian STEUDTNER

María del Carmen COBOS PALOMO

 

 

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.