OPPOSITION No B 3 095 978

Uvaguilera, S.L., San Gregorio, 2, Aranda de Duero (Burgos), Spain (opponent), represented by Kapler, Calle Orense, 10, 12ºD, 28020 Madrid, Spain (professional representative)

a g a i n s t

Badet Clement, 10 Rue Lavoisier, 21700 Nuits-saint-georges, France (applicant), represented by Cabinet Guiu - Jurispatent, 10, Rue Paul Thénard, 21000 Dijon, France (professional representative).

On 04/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 095 978 is upheld for all the contested goods.

2. European Union trade mark application No 18 084 321 is rejected in its entirety.

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

REASONS

On 27/09/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 084 321 ‘SEPTEMBRE’ (word mark), namely against all the goods in Class 33. The opposition is based on Spanish trade mark registration No 2 443 891 ‘SEPTIEMBRE’ (word 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 mark on which the opposition is based, namely Spanish trade mark registration No 2 443 891 ‘SEPTIEMBRE’ (word mark). 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 19/06/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 19/06/2014 to 18/06/2019 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.

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 25/05/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 30/07/2020 to submit evidence of use of the earlier trade mark. This time limit was then extended until 30/09/2020. On 02/09/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following.

 Annex 1: invoices addressed to several clients in Spain, dated between 2013 and 2019. The invoices refer, among others, to products under the earlier mark ‘SEPTIEMBRE’ and in the following forms: ‘Septiembre Tinto Roble 2018 (Lote S.Rb. 18-1)’, ‘Septiembre Rosado 2018 (Lote S.R. 18-1)’, ‘Septiembre Verdejo 2018 (Lote 063-19)’.

 Annex 2: a dossier of extracts from different websites and brochures, inter alia, the following:

o from the website http://riberadelduero.es, dated 2020, showing the picture of a bottle of wine under the mark ‘Septiembre’;

o from the Diario de la Ribera, dated 2020, with photographs of different wines under the mark ‘Septiembre’:

;

o from the website http://bebevino.es, referring to the wine ‘Septiembre Verdejo 2018’ and all its characteristics;

o from the online shop LICOREA.COM, showing the wine ‘Septiembre Roble 2016’;

o from the online shop sibara.es, showing the wine ‘Vino Tinto Septiembre Roble’;

o from the online shop cellartracker.com, showing the wine ‘Septiembre’.

 Annex 3: an informative brochure about the wines ‘Septiembre Verdejo 2016’, ‘Septiembre Rosado 2017’ and ‘Septiembre Roble 2018’.

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.

In particular, the applicant argued that Annexes 2 and 3 cannot be considered as valid evidence since they are not dated. 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, the printouts and the brochure show that the place of use is Spain. This can be inferred from the language of most of the documents (Spanish), the Spanish addresses mentioned in the invoices, and the reference to the country as the origin of the goods in some of the extracts. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

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

As correctly pointed out by the applicant, some of the evidence in the current case is dated outside the relevant period, namely some invoices dated in 2013 and early in 2014, and in Annex 2 some extracts dated in 2020. However, such use confirms use of the opponent’s mark within the relevant period. This is because it refers to use of the trade mark very close in time to the relevant period.

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 or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

Use of the mark need not be quantitatively significant for it to be deemed genuine. It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

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 applicant argued that the opponent did not prove the extent of use of its earlier mark as there is not enough proof of commercialisation of the opponent’s products under the earlier mark, referring, in particular, to the quantity of bottles sold as shown in the invoices submitted by the opponent.

In this regard, the commercialisation refers to the process of bringing new products or services to market. The broader act of commercialisation entails production, distribution, marketing, sales, customer support, and other key functions critical to achieving the commercial success of the new product or service.

Therefore, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 37). This does not necessarily mean that the opponent has to reveal the total volume of sales or turnover figures or has to submit a large number of invoices.

The documents submitted as evidence of use in the present case, mainly the invoices, together with the extracts from the websites where the products are offered and where pictures of the products themselves can be seen, clearly confirm that the opponent was seriously involved in the wine industry and provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Even if, as the applicant argued, the volume of invoices is not particularly high taking into account the market sector concerned, the invoices are dated throughout the relevant period and are not numbered sequentially, which show that they are only examples of sales and not the totality thereof. Therefore, although the evidence submitted by the opponent does not indicate very high sales, as mentioned by the applicant, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Consequently, the evidence taken in its entirety demonstrates convincingly that the opponent continuously invested in, promoted and expanded a relevant market share, in relation to wines under the earlier mark in Spain.

Nature of use – use as a trade mark

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

The evidence clearly shows that the trade mark ‘SEPTIEMBRE’ was used in relation to wines. Therefore, a clear link can be established between the sign and the goods themselves.

The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Nature of use – use of the mark as registered

According to Article 18(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 64(2) and (3) EUTMR, Article 18 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of this provision is to allow its proprietor to make variations in the sign that, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

The earlier mark is the verbal element ‘SEPTIEMBRE’.

Upon examination of the evidence submitted by the opponent, the Opposition Division notes that it was used in the following forms: ‘Septiembre Verdejo 2018’, ‘Septiembre Roble 2016’, ‘Vino Tinto Septiembre Roble’, ‘Septiembre Tinto Roble 2018 (Lote S.Rb. 18-1)’, ‘Septiembre Rosado 2018 (Lote S.R. 18-1)’, ‘Septiembre Verdejo 2018 (Lote 063-19)’ and:

.

The verbal element ‘SEPTIEMBRE’ overshadows the other verbal elements on the packaging and is clearly perceptible in all variations of the product packaging. Moreover, the remaining verbal elements are descriptive of the goods and, therefore, non-distinctive, as are the additions such as ‘VERDEJO’, ‘ROSADO’, ‘ROBLE’, which refer to the particular kind of wine as translated by the opponent. Similarly, the addition of a year and of the word ‘Lote’ followed by numbers and letters which refer to the ‘set’ or ‘batch’ constitute non-distinctive elements which do not alter the distinctiveness of the mark as registered since they describe respectively the year of production of the wine, and the set of units of these wines. The labels also include an indication of the origin of the goods such as ‘Ribera del Duero’ or ‘Rueda’, the alcohol content, and the ‘ml’ or ‘cl’ which are also non-distinctive for obvious reasons.

The labels contain other figurative elements, namely barely distinctive depictions of a leaf symbolising the vine leaf, or an abstract line. The use of these decorative elements does not call into question that the sign was used as registered or, at least, not in a way that altered its distinctive character.

The appearance of these additional indications on wine labels constitutes a very common practice in the wine sector and will not detract the public’s attention from the earlier mark itself. Furthermore, the distinctive character of the sign as registered is not affected by the use of colours as a background on wine labels.

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.

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 mark during the relevant period in the relevant territory for all the goods for which it is registered and on which the opposition is based, namely wines in Class 33.

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 are the following:

Class 33: Wines.

The contested goods are the following:

Class 33: Wine.

Wine is identically contained in both lists of 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 who will display an average degree of attention when purchasing them.

c) The signs

SEPTIEMBRE	SEPTEMBRE
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 earlier mark is the verbal element ‘SEPTIEMBRE’, and the contested mark is the verbal element ‘SEPTEMBRE’.

‘SEPTIEMBRE’ is a Spanish word that will be understood as referring to the ninth month of the year. However, even if the term ‘SEPTEMBRE’ is per se a fanciful word, it will however be understood by the relevant public as a misspelling of the Spanish word ‘SEPTIEMBRE’. Some consumers may consider it alludes to the time of the grape harvest. In any event, even if allusive, it is still distinctive.

Visually and aurally, the signs coincide in the letters ‘SEPT*EMBRE’ and in their sounds. They differ only in the additional letter ‘I’ of the earlier mark, as well as in its sound.

Therefore, the signs are visually and aurally highly similar.

Conceptually, the marks are identical because the relevant public would understand the word constituting the contested mark with the same meaning as the earlier mark given its close proximity.

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.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same or economically linked undertakings.

The goods are identical and target the public at large, whose degree of attentiveness is average. The earlier mark has a normal degree of inherent 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 signs are visually and aurally highly similar, and conceptually identical. They are composed of 10 letters (earlier mark) and nine letters (contested sign), and coincide in their first four letters/sounds and last five letters/sounds, and differ in the letter/sound ‘I’ of the earlier mark, as detailed above. However, this differing letter/sound is placed in the middle of the earlier sign and will be unnoticed.

Consequently, the difference between the signs, lying only in one letter/sound of the earlier mark, is not sufficient to counteract their similarities and to exclude the likelihood of confusion.

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

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

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.