OPPOSITION Nо B 3 109 917

Comissão De Viticultura Da Região Dos Vinhos Verdes, Rua da Restauração, 318, 4050‑501 Porto, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249‑103 Lisbon, Portugal (professional representative)

a g a i n s t

Bodegas San Valero, Sociedad Cooperativa, Carretera Nacional 330, Km. 450, 50400 Cariñena (Zaragoza), Spain (applicant), represented by Sonia Del Valle Valiente, C/ Miguel Angel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative).

On 02/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 109 917 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 27/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 125 010 (figurative mark).

The opponent invoked Article 8(1)(b) EUTMR basing its opposition under this Article on the following earlier trade mark registrations:

 Portuguese trade mark registration No 140 300 for the word mark ‘VINHO VERDE’;

 international trade mark registration No 391 849 designating the following territories: Benelux, Germany, Spain, France, Italy, Hungary, Austria, Romania, for the figurative mark . The opponent also referred to ‘Portugal’, however, this is the basic registration and is not designated by the international registration and as such cannot be taken into account. This issue will be addressed later if relevant.

The opponent also invoked Article 8(6) EUTMR basing its opposition on the following protected designations of origin in Portugal:

 ‘VINHO VERDE’ for ‘ordinary wines from the respective demarcated region, rosé wines and sparkling wines’;

 ‘AGUARDENTE DE VINHO DA REGIÃO DOS VINHOS VERDES’ for ‘wine brandy of the Vinho Verde region’;

 ‘AGUARDENTE BAGACEIRA DA REGIÃO DOS VINHOS VERDES’ for ‘marc brandy of the Vinho Verde region’.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant on 22/08/2020. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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:

Portuguese trade mark registration No 140 300

Class 33: Ordinary wines from the respective demarcated region.

international trade mark registration No 391 849

Class 33: Green wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beers) excluding alcoholic beverages protected by the designation of origin ‘vinho verde’; wines, except those protected by the designation of origin ‘vinho verde’.

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.

The contested goods are different alcoholic beverages and wines, with a specified exception. Given that the opponent’s goods overlap with the broad category of the contested goods (despite the limitation) and that they cannot be dissected ex-officio, they are identical.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and the degree of attention is average.

c) The signs

Portuguese trade mark registration (earlier mark 1) VINHO VERDE international trade mark registration (earlier mark 2)
Earlier trade marks	Contested sign

The relevant territory is Portugal for earlier mark 1 and Benelux, Germany, Spain, France, Italy, Hungary, Austria, and Romania for earlier mark 2.

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).

Regarding earlier mark 1, in Portuguese, the word ‘VINHO’ is a noun meaning ‘wine’ and ‘VERDE’ is an adjective that means ‘green’. In connection with wines, the whole earlier mark ‘VINHO VERDE’ will be perceived by the Portuguese public as referring to a ‘green wine’, a ‘young wine’, that is a type of wine (22/04/2015, R 2081/2012‑1, bio-verde (fig.) / VINHO VERDE et al, § 31; 05/02/2016, R 476/2015‑5, DOROVERDE / VINHO VERDE et al., § 30, 93; 05/02/2016, R 472/2015‑5, TOMBOLINI DOROVERDE (fig.) / VINHO VERDE et al, § 28; 02/12/2016, R 424/2016‑2 BODEGAS JARAVERDE / VINHO VERDE et al, § 32).

Individually, as the Board pointed out in case 18/02/2021, R 1720/2020‑5, Delicious Green Eva Fricke (fig) / Vinho verde et al., both components of the earlier mark, namely ‘VINHO’ and ‘VERDE’, are equally weak (02/12/2016, R 424/2016‑2, BODEGAS JARAVERDE / VINHO VERDE et al.; 02/10/2020, R 282/2020‑5, Campo Verde / Vinho verde et al, § 18; 02/12/2016, R 0424/2016‑2, BODEGAS JARAVERDE / VINHO VERDE et al, § 33) and, contrary to the assertions of the opponent, there is no element that could clearly be found more distinctive than the other (05/02/2016, R 476/2015‑5, DOROVERDE / VINHO VERDE et al, § 34; 05/02/30216, R 472/2015‑5, TOMBOLINI DOROVERDE (fig.) / VINHO VERDE et al, § 32; 02/12/2016, R 424/2016‑2, BODEGAS JARAVERDE / VINHO VERDE et al, § 88).

Earlier mark 2, ‘VINHO VERDE’, may be understood as described above, at least by part of the public, for example in Spain, therefore those findings are relevant here. Furthermore, the word ‘VERDE’ means ‘green’, for example in Italian, Romanian and Spanish and is very similar to the equivalent French word ‘vert’. Therefore, the element ‘VERDE’ will be seen as an adjective describing the ecological nature of the relevant goods or as a mere qualifier of the other elements of the conflicting signs (21/05/2015, T‑420/14, Wine in Black / NOVAL BLACK, EU:T:2015:312, § 37). In this regard, this element is also of limited distinctiveness.

However, for speakers of other languages, the term may be meaningless; for example this is the case for German speakers, since the equivalent word ‘Grün’ is very different, and for the Dutch- and Hungarian- speaking parts of the public (groen and zöld, respectively). For these publics, ‘VERDE’ is distinctive.

The term ‘VINHO’ is also similar to ‘vino’ (Italian, Spanish), wein (German) and ‘vin’ (French, Romanian), ‘wijn’ (Dutch), which means that a significant part of this public will understand the term as such, and therefore it is non-distinctive. However, in countries like Hungary, the equivalent term is ‘bor’, which is different and therefore, it may be distinctive.

‘PORTUGAL’ is a descriptive term likely to be understood by the whole of the relevant public, either on account of use of the word as such or of very close linguistic equivalents (e.g. ‘Portogallo’ in Italian, ‘Portugalia’ in Romanian).

The contested mark is a complex figurative mark composed of verbal elements and a figurative device.

When consumers perceive a complex sign, they will break the verbal element down into elements that, for them, suggest a concrete meaning or that resemble known words (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51, 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). This mental process of finding the meaningful elements within a compound or breaking down an abstract word helps the consumer to remember and recall the sign later and helps to reduce the probability of an imperfect recollection.

The Spanish and Portuguese publics are likely to divide the verbal element ‘BODEGAVERDE’ of the contested mark into two different elements, ‘BODEGA’ and ‘VERDE’ given that the term ‘VERDE’ will be understood as explained above, and the Spanish public will identify the meaning of the term ‘BODEGA’ in relation to ‘wine’. Therefore, it is devoid of distinctive character in Spain as it is completely descriptive of the type of enterprise that makes ‘wine’; the Spanish word ‘bodega’ means ‘vineyard’, ‘winery’ or ‘wine cellar’, and wine makers are called ‘bodegas’ or ‘bodegueros’. This word will not be considered by Spanish consumers as fulfilling the function of distinguishing the wines of one undertaking from those of other undertakings.

For this part of the relevant public, taking into account the nature of the relevant goods, the element ‘VERDE’ of the contested sign will be considered weak, as it can be associated with specific types of certain alcoholic beverages, for example ‘VERDE’ in relation to wines, as in the present case, will be perceived by the Spanish and Portuguese public as referring to a type of wine or as an indication of wine produced in an environmentally friendly way.

However, for the remaining part of the relevant public, the term ‘BODEGAVERDE’ will be seen as a fanciful term without any meaning in any of the other relevant languages, (as far as the Opposition Division is aware). Furthermore, there is nothing in the contested mark, such as spaces, hyphens, full stops, or the combination of upper- and lower-case letters, that would lead consumers to dissect the contested mark. The verbal element ‘BODEGAVERDE’ will, therefore, be perceived as one unique element.

The verbal element ‘DE SAN VALERO’ will be understood by some consumers (such as Spanish consumers) as an indication of place, and the distinctiveness is limited. For the rest of consumers, the distinctiveness remains average.

In the contested sign, the depiction of the abstract figurative device (together with both letters ‘B’ and ‘V’) has an important place within the sign as it is positioned in the centre and occupies half of the area. The position of the verbal element ‘BODEGAVERDE’ is also important within the mark as it is portrayed in large standard black upper-case letters. These two elements occupy the major portion of the contested mark and are, therefore, striking in the overall impression of the mark. Lastly, the verbal element ‘DE SAN VALERO’, due to its size and position, is less dominant than the other elements.

In addition, although verbal elements generally have more of an impact than figurative elements as 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), the figurative element still plays an important role in the sign. In the present case, the figurative element placed in the middle part of the contested mark is a particularly striking feature.

Visually, the signs are similar since they coincide in the string of letters ‘VERDE’.

Nevertheless, there are many differences between them that are located at the beginning of the signs (17/03/2004, T‑183/02 and T‑184/02, Mundicor, EU:T:2004:79, § 81, and 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64-65), namely the word ‘VINHO’ of the earlier marks, the additional element ‘PORTUGAL’ of the earlier international registration and the word ‘BODEGA’ placed before the word ‘VERDE’ in the contested mark. In addition, in the contested sign, there is the figurative device, the additional letters ‘B’ and ‘V’, and the element ‘DE SAN VALERO’, which is of less visual importance.

Moreover, for a part of the relevant public, due to the weak or even non-distinctive character of the element ‘VERDE’, the consumers concerned will pay equal attention to all the other elements. Additionally, the marks have a clearly different structure, composition, length and contain letters that are not present in the other sign.

As a consequence, the signs have, at most, a low degree of visual similarity.

Aurally, it must be noted that the General Court has held that in the wine sector, consumers usually describe and recognise wines by reference to the verbal element that identifies them, in particular in bars and restaurants, where wines are ordered orally after their names have been seen on a wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julian Murua Entrena, EU:T:2005:285, § 56; and 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in these cases, the Opposition Division needs to attach particular importance to the phonetic similarity between the signs at issue.

Therefore, and irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs corresponds in the sound of their coinciding letters ‘VERDE’ and to that extent the signs are aurally similar.

However, these coinciding letters are preceded by different verbal elements and letters in each of the signs and therefore it is hard to perceive an aural coincidence between the marks.

The pronunciation differs in the sound of the letters ‘VINHO’ of the earlier marks (and the additional element ‘PORTUGAL’ of the earlier international registration (if pronounced by the relevant public given its position and size within the mark) and in the sound of the letters ‘BODEGA’ and ‘DE SAN VALERO’ (if pronounced), which have no counterparts in the earlier signs. Not only is the sequence of syllables different but also the signs’ intonation.

Therefore, the signs are aurally similar only to a low degree.

Conceptually, reference is made to the previous assertions. The element ‘VINHO’ means ‘wine’ and the element ‘VERDE’ means ‘green’ in Portuguese. In relation to wines, part of the relevant public, in particularly the Portuguese and Spanish publics, will perceive the earlier marks as referring to ‘green wine’ or ‘young wine’ (a type of wine) (from Portugal, in the case of the earlier IR).

As a whole, the contested sign has no meaning. However, part of the relevant public, in particular the Portuguese and Spanish public, will identify in the contested sign the term ‘BODEGA’ and the element ‘VERDE’ referring to the colour ‘green’ or to the concept of ‘ecological’. Therefore, the signs do not have a conceptual similarity merely because they share the concept of the term ‘VERDE’, as the semantic meaning of this weak and even non-distinctive element will be outweighed by the dissimilar meanings of the remaining elements, namely ‘VINHO’ of the earlier marks and ‘BODEGA’ and ‘DE SAN VALERO’ of the contested mark, for Spanish consumers.

For the public who does not identify the term ‘VERDE’ in the contested sign and understands the term ‘BODEGA’, the marks are considered to be conceptually dissimilar.

For the remaining part of the relevant public who does not associate any of the conflicting marks with a meaning, no conceptual comparison is possible.

As the signs have been found similar to a very low degree in the conceptual aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

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

On 09/11/2020, in its observations that present the proof of use requested by the applicant, the opponent claimed that the earlier trade mark rights of the opponent enjoyed a great reputation.

In this regard, the Opposition Division notes that according to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence. According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

In particular, if the opponent wishes to rely on a claim of enhanced distinctiveness of its earlier marks, it should make and substantiate its claim in due time, namely before the expiry of the substantiation period. In this case, following an extension of the time limit and opting out, the deadline was set at 22/06/2020.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient.

Article 8(1) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when no evidence with regard to the substantiation of the earlier mark concerned is submitted within the time limit set by the Office or where the evidence submitted is manifestly irrelevant or manifestly insufficient to meet the requirements laid down in Article 7(2) EUTMDR. It follows that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit when the evidence submitted within the time limit is manifestly irrelevant or manifestly insufficient.

In the present case, within the set time limit, the opponent did not file any evidence to prove its claim that its marks were particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Earlier marks enjoy a ‘presumption of validity’, made clear by the Court in its judgment of 24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’. In view of the considerations regarding the distinctiveness of the earlier marks’ elements for the relevant public, the degree of distinctiveness has to be established as very low for a significant part of the public, whilst it may be normal for another (see assertions made in section c)).

e) Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally and this implies some interdependence between the factors such as taking into account the similarity between the trade marks and between the goods or services covered. Indeed, a lesser degree of similarity between these goods or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). Additionally, the more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

Furthermore, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the relevant consumer is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

In the case in question, the goods are identical, and the relevant consumer is the public at large, displaying an average degree of attention. The distinctiveness of the earlier marks rests on their inherent distinctiveness, which is very low or normal, depending on the public.

The trade marks only show a low degree of visual and aural similarity due to the coincidence of the element ‘VERDE’, which does not, however, carry much weight for the part of the relevant public who will identify and understand the meaning of this term. For the part of the relevant public that understands the meaning of the elements ‘VINHO’ and ‘BODEGAS’, these terms refer to wines, and are also weak or even non-distinctive in relation to the goods concerned. Therefore, the semantic coincidence created by them should also not be given too much weight.

Furthermore, trade mark protection cannot and should not be awarded a scope of protection that encroaches upon the descriptive and non-distinctive application of any elementary verbal element, this legal reality could easily distort competition and, thus, does not appear to be in accordance with the preamble of the EUTMR, second paragraph, in particular the wording: ‘… not only must barriers to free movement of goods and services be removed and arrangements be instituted which ensure that competition is not distorted, but, in addition, legal conditions must be created which enable undertakings to adapt their activities to the scale of the Union …’; it may also be contrary to Article 12(1)(b) EUTMR (11/12/2013, R 2108/2012‑1, TPG POST / DP et al.).

As already explained, overall, the similarity between the signs is confined to the mere use of the word ‘VERDE’, placed at the end of the marks. However, the use of elements, namely the composition and the additional verbal elements in the contested mark and ‘VINHO’ in the earlier marks and ‘PORTUGAL’ in the earlier international registration, are of such a nature as to contribute to a very different overall impression in the conflicting marks.

Although the relevant public rarely has a chance to make a direct comparison between the signs but must place their trust in the imperfect recollection of the marks in question and even considering the identity of the goods in question, the Opposition Division finds that the marks in question, viewed as a whole, convey sufficiently different overall impressions and, as a result, consumers are unlikely, contrary to the opponent’s arguments, to confuse the marks, including believing that the goods originate from the same undertaking or from economically related undertakings.

In light of all the foregoing, notwithstanding the principles of interdependence and imperfect recollection, there is no reason to assume that the relevant public will be misled into thinking that the identical goods bearing the conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked.

In its arguments, the opponent refers to previous decisions such as 24/07/2011, B 1 722 134 where a likelihood of confusion was found between ‘VINHO VERDE’ and . However, the territories involved were different. Consequently, the findings are not applicable. In another case referred to by the opponent, 19/08/2011, B 1 403 296, the situation is the same in the sense that the signs coincided in ‘VERDE’, which, again, is not applicable to the case in question. As such these cases have no bearing on the current situation. Likewise, the judgments from the European Court of Justice (14/07/2011, C‑4/10 & C‑27/10, BNI Cognac, EU:C:2011:484) are not applicable as the signs at issue coincided in a term, which is not the case here.

Consequently, taking into account the aforementioned factors, the Opposition Division finds that there is no likelihood of confusion and the opposition must be rejected insofar as it is based on these earlier rights. Given the rejection of the opposition, the issues concerning the international registration as noted previously have no impact and can be set aside.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

The examination will now proceed on the basis of the remaining grounds invoked.

DESIGNATIONS OF ORIGIN OR GEOGRAPHICAL INDICATIONS – ARTICLE 8(6) EUTMR

The earlier rights invoked for this ground are:

 ‘VINHO VERDE’ for ‘ordinary wines from the respective demarcated region, rosé wines and sparkling wines’;

 ‘AGUARDENTE DE VINHO DA REGIÃO DOS VINHOS VERDES’ for ‘wine brandy of the vinho verde region’;

 ‘AGUARDENTE BAGACEIRA DA REGIÃO DOS VINHOS VERDES’ for ‘marc brandy of the vinho verde region’.

The opponent submitted registration certificates from the Portuguese national Office (INPI), showing registration at a national level. Within the time limit, no other documentation was submitted for these rights and nor was online substantiation claimed pursuant to Article 7(3) EUTMDR.

According to Article 8(6) EUTMR, upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication (GI), the trade mark applied for must not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:

(i) an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

(ii) that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

a) The rights under the applicable law

Designations of origin and geographical indications for, inter alia, wines and other grapevine products protected under Council Regulation (EC) No 1308/2013 of 17 December 2013 (the Wines Regulation) establishing a common organisation of the markets in agricultural products, fall under Article 8(6) EUTMR.

The Wines Regulation protects geographical indications that were already protected in a Member State on 01/08/2009 (or on the date of accession of a new Member State) subject to further conditions, and any further geographical indications applied for and registered pursuant to the EU system of protection thereafter.

Geographical indications for spirit drinks protected under Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks (repealed and replaced by Regulation (EU) 2019/787 of the European Parliament and of the Council of 17 April 2019) also fall under Article 8(6) EUTMR.

As is the case with wines, the spirit drinks Regulation protects geographical indications that were already protected in a Member State on 01/08/2009 (or on the date of accession of a new Member State) subject to further conditions, and any further geographical indications applied for and registered pursuant to the EU system of protection thereafter.

Geographical indications and designations of origin, protected under the laws of Member States may be a basis for opposition under Article 8(6) EUTMR only to the extent that no uniform EU protection is in place for the given category of goods. Indeed, the EU system of protection in this area is exhaustive in nature and supersedes national protection. This arises from the findings of the Court in the judgment of 14/09/2017, C‑56/16 P, Port Charlotte, EU:C:2017:693, § 75-96.

As noted above, this opposition is based on three Portuguese designations of origin covering both wine and spirit drinks. However, in view of the aforementioned wines and spirit drinks regulations, the opponent should have provided the Opposition Division with the relevant documentation proving registration pursuant to the uniform EU system of protection within the time limit.

The registration certificates at national level, as provided by the opponent together with the notice of opposition, are not sufficient. National geographical indications of Member States can only be a basis for opposition under Article 8(6) EUTMR if no uniform EU protection is in place. This is not the case for wines or spirit drinks because, as indicated above, there is uniform EU protection in place, and this has superseded the national system. As a result, geographical indications for wines or spirit drinks within a Member State cannot be used as basis for an opposition under Article 8(6) EUTMR.

According to Article 95(1) EUTMR, in proceedings before it, the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought. It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence. Therefore, in order to substantiate its right, the opponent must provide the Office with the necessary facts and evidence regarding the existence of its right.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(e) EUTMDR, in order to substantiate its rights, the opponent must provide the Office with the necessary facts and evidence regarding the validity and the scope of protection of its right. Depending on the GI, documents such as publication and registration in the Official Journal (for Regulation (EU) No 2019/787, Regulation (EU) No 1151/2012 and Regulation (EU) No 251/2014) or an extract from the official register (for Regulation (EU) No 1308/2013) will be deemed sufficient if they contain sufficient data to determine all the relevant particulars of the earlier right (e.g. protected name, application or registration date, goods protected by the GI).

On 09/09/2020, the opponent, in order to support its argument (i.e. after the expiry of the time limit for the substantiation) filed an extract from the Register of protected designations of origin and protected geographical indications for one of the earlier geographical indication invoked, namely ‘VINHO VERDE’ as protected by the Designation of Origin (‘PDO’) from Portugal under Article 107 of Regulation (EU) No 1308/2013, in respect of wines.

The question that now arises is whether or not the Opposition Division should accept this information and evidence filed after the time limit.

According to Article 95(2) EUTMR, the Office may disregard facts or evidence that are not submitted in due time by the parties concerned. Although, according to Article 8(5) EUTMDR, first sentence, the Office may exercise its discretionary power, this is only possible if the late facts or evidence supplement relevant facts or evidence submitted by the opponent in due time (‘initial facts or evidence’). However, in the case in question, the initial evidence, the registration certificates from INPI (the Portuguese national Office), showing registration at national level are not relevant in this regard and are manifestly insufficient.

The opponent submitted for the first time the extract from the Register of protected designations of origin and protected geographical indications for one of the earlier geographical indication invoked. This is an entirely new piece of evidence and cannot be considered belated evidence as described above. That is to say that no discretionary power is available.

Therefore, the evidence submitted on 09/09/2020, after expiry of the time limit, cannot be taken into account.

Given that the opponent did not meet the aforementioned requirements, the opposition is not well founded under Article 8(6) EUTMR.

The opposition as a whole must, therefore, be rejected as unfounded.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE HOLLAND

Gonzalo BILBAO TEJADA

Andrea VALISA

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.