OPPOSITION Nо B 3 089 124

Juan Jose Tetas Marrugat, Dr. Pasteur, 6, 08720 Vilafranca del Penedes (Barcelona), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Societa’ Agricola Masseria Borgo Dei Trulli Scarl, Via Andrea Da Bari, 70, 70121 Bari, Italy (applicant), represented by Studio Ferrario S.R.L., Via Collina, 36, 00187 Roma, Italy (professional representative).

On 24/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 124 is upheld for all the contested goods.

2. European Union trade mark application No 18 039 700 is rejected in its entirety.

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

REASONS

On 16/07/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 039 700 (figurative mark). The opposition is based on Spanish trade mark registration No 2 121 664 ‘VIÑA MIREIA’ (word mark). The opponent invoked Article 8(1)(a) and (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, namely Spanish trade mark registration No 2 121 664, ‘VIÑA MIREIA’.

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.

The date of filing of the contested application is 25/03/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 25/03/2014 to 24/03/2019 inclusive.

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

Class 33: Wines, sparkling wines, liquors and spirits, 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 28/02/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 04/05/2020 to submit evidence of use of the earlier trade mark. On 03/05/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following.

 Printout of Bodegas Pinord’s website www.pinord.com regarding the history of the winery MURRAGAT D.O. cava.

 Information in English regarding the award won by Bodegas PINORD in 2013 as one of the 100 top wineries of the world according to Wine&Spirits Magazine. Gold medals for PINORD organic wine ‘+7’ and Chateldon wine. Both with no reference to the trade mark ‘VIÑA MIREIA’.

 Printout from the opponent’s website showing a ‘MIREIA’ wine bottle and product information sheet regarding Mireia wine with the following label:

.

 Price lists in Spanish, containing, inter alia, ‘VIÑA MIREIA’ wine for 2014-2019. The list contains the product description in Spanish and product pictures with the following label .

 Numerous invoices issued by the opponent to addressees in Madrid and Barcelona for, inter alia, El Corte Ingles S.A. They contain clear reference to ‘Pinord Mireia’. They are dated between 07/01/2014 and 30/04/2019. Most of them are dated within the relevant period. The quantities vary from a couple of boxes per invoices to hundreds of boxes.

 Award Berliner Wine Trophy 2013 silver medal for ‘VIÑA MIREIA’.

 Printouts from various distributors’ websites showing Mireia wine on sale, such as www.amazon.es, showing ‘Pinord Mireia’ wine (dated 03/05/2020), or www.uvinum.es, www.enterwine.com, www.grauonline.es, showing ‘Pinord Mireia 2019’ wine. The extracts are in Spanish.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. 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 (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, invoices, price lists, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. The same applies to internet printouts that merely show that the trade mark is present on the market in relation to the relevant goods.

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.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent himself but from another company.

According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of his marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euro) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely invoices together with internet printouts and price lists, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. A significant number of invoices, spread over the whole relevant period, demonstrate that the trade mark ‘MIREIA’, clearly depicted in the description of the goods on all the above invoices, has genuinely been used in Spain during the relevant period in relation to wine. Even though, as the applicant argues, the internet printouts do not show real sales of the goods, the numerous invoices are sufficient to prove the extent of use.

The applicant argues that invoices are addressed to distributors and there is no evidence that the distribution companies have put the goods on the market. In this respect, the producer-distributor-market chain is a common method of business organisation and it cannot be regarded as purely internal use. Moreover, in the present case, the distribution companies are independent companies. Where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered as use of the mark (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 73).

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 also 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 invoices and internet printouts, the trade mark ‘MIREIA’ is used together with ‘PINORD’.

In this regard, 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). It is quite common in some market areas for goods to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

Moreover, the use of a business, company or trade name can be regarded as use ‘in relation to goods’ where a party affixes the sign constituting its company name, trade name or shop name to the goods.

The opponent submitted pictures of the goods with the trade mark ‘VIÑA MIREIA’ clearly affixed on them as well as invoices displaying this trade mark (shortened to ‘MIREIA’) on them. It is clear that ‘PINORD’ will be perceived as a company name. Therefore, the Opposition Division considers that the opponent uses that sign in price lists, invoices and on the goods themselves in such a way that a link can be established between them and the goods at issue. Therefore, the additional mark seen on the goods is in fact an independent mark that refers to the company, the manufacturer or licensor.

The omission of ‘VIÑA’ on the invoices and some product labels also does not alter the distinctive character of the mark in the form in which it was registered. However, as it is a Spanish word for ‘vineyard’, it lacks distinctiveness in relation to wines.

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).

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.

a) The goods

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

Class 33: Wines.

The contested goods are the following:

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

Wines are identically contained in both lists of goods.

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.

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 average.

c) The signs

VIÑA MIREIA
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 ‘MIREIA’ of the earlier mark will be perceived as a female name. As it has no relation with the goods in question, it is distinctive.

This meaning can be also perceived in the element ‘MIREA’ of the contested sign, which, as such, has no meaning, but due to the close resemblance to the word ‘MIREIA’, can also be associated with the same female first name, at least by part of the relevant public. In either case, this element is also distinctive.

The element ‘ViÑA’ of the earlier sign will be associated with ‘vineyard’. Bearing in mind that the relevant goods are wines, this element is non-distinctive for these goods as it merely indicates the place where grape vines for producing wine are grown.

The figurative element of the contested sign, which is a black and white depiction of floral elements with some orange colouring, will not be associated with any particular meaning in relation to the relevant goods. It is considered distinctive to a normal degree.

The applicant argues that part of the figurative element, namely , represents a characteristic ancient building called ‘Saracen Trulli’, which is located in Puglia (Italy) and, as such, identifies the applicant. The Opposition Division considers that it is rather unlikely that the relevant Spanish public would recognise this element as an ancient Italian building. Moreover, as it is part of the figurative element, this makes the association even less likely. Therefore, this argument has to be set aside as unfounded.

The figurative element of the contested trade mark overshadows the verbal elements of the mark by virtue of its central position and size. The figurative element is the visually dominant element of the contested trade mark.

Visually, the signs coincide in their distinctive element ‘MIRE(*)A’. However, they differ in the non-distinctive element ‘VIÑA’ and the additional letter ‘I’ of the earlier sign. With regard to the additional letter ‘I’, this letter is placed in the final part of the coinciding element and as such it can easily go unnoticed by the relevant public. The signs also differ in figurative element of the contested sign, which occupies a significant part of the contested sign. However, 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). Moreover, even if the verbal element is much smaller, it is clearly visible in the contested sign where it plays an independent and distinctive role.

Therefore, the signs are similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MIRE(*)A’, present identically in both signs. The pronunciation differs in the sound of the letter ‛I’ and the non-distinctive word ‘VIÑA’ of the earlier sign.

Therefore, the signs are similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For part of the public, the signs will be associated with a similar meaning on account of the association with the same female first name. Therefore, the signs are conceptually highly similar.

For the remaining part of the public that will perceive ‘MIREA’ as meaningless, the signs are conceptually not 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 his 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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are identical and target the public at large, who have an average level of attentiveness.

The signs are visually similar to a below-average degree, aurally similar to an above-average degree and conceptually they are either highly similar or not similar. The differences between the signs lie mainly in the non-distinctive element ‘VIÑA’ of the earlier mark and the figurative element of the contested sign.

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).

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.

Therefore, given that the coincidences lie in the distinctive element of both marks and the differences between the signs lie mainly in their non-distinctive or figurative elements, the Opposition Division considers that the similarities cannot be offset by the dissimilarities and the relevant public would believe that the goods found to be identical come from the same undertaking or from economically linked undertakings.

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 Spanish trade mark registration No 2 121 664. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Anna BAKALARZ

Katarzyna ZANIECKA

Monika CISZEWSKA

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.