DECISION

of the Second Board of Appeal

of 16 November 2015

In Case R 822/2015-2

Nelson Alfonso Egüed
C/ Islas de Cabo Verde, 62 ES-28035 Madrid Spain	Applicant / Appellant

represented by LERROUX & FERNÁNDEZ-PACHECO, Núñez de Balboa, 54, 3°, ES-28001 Madrid, Spain

v

Jackson Family Farms, LLC
421 Aviation Boulevard Santa Rosa California 95403 United States of America	Opponent / Respondent

represented by FIELD FISHER WATERHOUSE LLP, Riverbank House 2 Swan Lane, London EC4R 3TT, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 036 898 (Community trade mark application No 10 581 619)

The Second Board of Appeal

composed of T. de las Heras (Chairperson), C. Negro (Rapporteur) and C. Govers (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 23 January 2012, Nelson Alfonso Egüed (‘the applicant’) sought to register the figurative mark

for the following list of goods:

Class 18 − Bags, briefcases, trunks, travelling bags, school satchels, attaché cases, rucksacks, haversacks, shoulder belts (straps), travelling trunks and sets, key cases, beach bags, bags for climbers and campers; purses, not of precious metal, card cases (notecases), travelling trunks, leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; casings of leather, umbrellas, parasols and walking sticks, whips, harness and saddlery, curried skins, boxes of leather, school satchels, handbag frames, chin straps of leather, straps of leather, envelopes of leather, leather leashes, linings of leather for boots and shoes, leather thread, leather thongs;

Class 25 − Footwear, except orthopaedic; clothing and head gear; esparto shoes or sandals; boots; boot uppers; sabots; slippers; ankle boots; sandals; beach shoes; bath slippers; sporting footwear; gymnastic shoes; football boots; ski boots; sports shoes; heels; soles for footwear; inner soles; belts; swimming costumes; cyclists' clothing; wet suits for water skiing; blouses; sweaters; socks; stockings; neckerchieves; braces; underclothing; shirts; ties; sashes for wear; scarves; stoles; mufflers; skirts; swimsuit; beach clothes; hosieries; suits; uniforms; t-shirts; hats; hat frames [skeletons]; headgear; top hats;

Class 33 − Wine and alcoholic beverages (except beers) of all kinds.

2. The application was published in the Community Trade Marks Bulletin No 56/2012 of 21 March 2012.

3. On 21 June 2012, Jackson Family Farms, LLC (‘the opponent’), filed a notice of opposition against the contested mark, on the grounds laid down in Article 8(2)(c) and 8(4) CTMR and based on the following trade marks:

• Well-known trade mark BYRON (Article 6 bis of the Paris Convention) in all Member States of the European Union in respect of ‘wine’, in relation to Article 8(1) (b) CTMR.

• Non-registered trade name BYRON used in the course of trade in all Member States of the European Union in connection with ‘wine’.

4. The opponent directed its opposition against part of the goods of the application namely all goods in Class 33.

5. On 31 December 2012, the opponent limited its scope of the opposition by withdrawing the ground of opposition under Article 6 bis of the Paris Convention and requested to proceed on the basis of Article 8(4) CTMR only.

6. On 27 February 2015, the Opposition Division issued a decision on opposition No B 2 036 898 (‘the contested decision’), whereby it upheld the opposition for all the contested goods namely ‘wine and alcoholic beverages (except beers) of all kinds’ in Class 33. It allowed the application to proceed for the remaining goods. It ordered the applicant to bear the costs. The contested decision may be summarized as follows:

Non-registered mark or another sign used in the course of trade – Article 8(4) CTMR

• The opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom and it had the right to prohibit the contested mark under the tort of passing off. The evidence must show that the opponent’s sign has been used in the course of trade for ‘wine’. The opponent filed the following evidence:

• Annex 1: A copy of a British Airways Business Class wine list featuring a wine, Byron Pinot Noir 2010, Santa Barbara County, California, USA. The item is dated 12/12.

• Annex 2: An online invitation bulletin from the social networking website Meetup.com announcing a wine tasting event at Harrods Department Store in London, featuring a wine, Byron Pinot Noir Santa Barbara County GBP 17.95. The invitation was sent on 4 May 2011 and the event was held on 17 May 2011.

• Annex 3: Two separate Boutinot Ltd Wine Lists, one of which is dated 2010, whilst the other is not dated. Both include wines under the name ‘BYRON’. The goods are offered for sale in pounds. The goods are directed at the wholesale sector within the wine trade as is made clear on page 75 of the submitted evidence which states that the minimum order for many items, including the opponent’s wine, is 25 cases.

• Annex 4: Six invoices, showing sales of goods such as 09 BYR PN Santa Maria 750ml 14.6% Alc and 09 BYR Chard Nielson 750ml 14.3% Alc, and dated between 14 March 2011 and 19 January 2012. Four of the invoices relate to a company located in the UK (namely the company mentioned in the evidence filed under Annex 3) with shipment to a UK address, one relates to a company located in Luxembourg with shipment to a Luxembourg address and one relates to a company located in Cyprus with shipment to a Ukrainian address. The UK sales amount to approximately USD 45 000, whilst the other two invoices amount to less than USD 4 000 (sic).

• Annex 5: A seven page document entitled Byron Sales 1 September 2010 to 30 November 2011. The document lists sales of goods such as Byron ‘Santa Maria’ Pinot Noir, Byron ‘Santa Maria’ Chardonnay, Byron ‘Nielson Vineyard’ Pinot Noir, Byron ‘Nielson Vineyard’ Chardonnay, etc., to customers in the UK during this period. The document appears to be an internal company document.

• Annex 6: Three photographs showing bottles of wine with labels showing the word ‘BYRON’ and which the opponent claims show images of goods which appear in the invoices in Annex 4. The photographs are undated and do not indicate a source.

• Annex 7: A one page review of a wine called Byron, Reserve, Santa Maria Pinot Noir 1995 dated 1 October 1997. Other than the name of the reviewer, the source of the review, for example the magazine, newspaper or book in which it appeared, is not indicated. The review does indicate the name of a stockist for the wine, and this is followed by an inner London telephone number (valid at that time).

• Annex 8: An eight page extract from the website imbibe.com which is the digital publication of the Imbibe magazine. The website states that it is ‘for UK on-trade drinks professionals.’ The extract is dated March/April 2011 and concerns a review of wines from around the world made with Pinot Noir grapes. Mention is made of a Byron Pinot Noir 2008.

• Annex 9: A two page document entitled JFE Estates 9 litre depletions 1 May 2011 to 8 June 2011. The document lists sales of goods such as Byron ‘Santa Maria’ Pinot Noir, Byron ‘Santa Maria’ Chardonnay, etc. to customers in the UK during this period. The document appears to be an internal company document.

• Annex 10: A two page extract from the 1998 Annual Tasting event of California wines held on 20 March 1998. The second page shows wines being presented by the same stockist as mentioned in Annex 7 on stand 33, and includes wines under the name ‘Byron’.

• With the exception of Annex 1, all the evidence bearing dates is before the filing date of the contested application. Annex 1 which appears to be from December 2012 will therefore, not be taken into account for the rest of the analysis.

• The evidence filed shows that the place of use is predominantly related to the United Kingdom, with only very limited references to other territories. This can be inferred from the language of the documents (English), the currency mentioned in some of the evidence (pounds sterling), and the addresses and telephones numbers which appear in the evidence.

• All the evidence shows that the opponent’s sign has been used as a trade mark for ‘wines’.

• The invoices (Annex 4) show that goods of the correct type were sold under the relevant trade mark within the relevant territory for approximately one year before the relevant date. Whilst the values were not particularly large they were also not merely token sales. Furthermore, the sales were made to a customer who is, as is clearly indicated in the brochures (Annex 3), in the wholesale sector within the wine trade and is offering the opponent’s goods for resale. This is also supported by the evidence filed under Annexes 7, 8 and 10 which also shows, albeit not so clearly, that the goods are being sold or offered for sale by wholesalers to professionals working in the drinks sector. Finally, even though no source for the documents is provided, the sales figures in Annexes 5 and 9 show that customers range from wine shops to hotels and restaurants to public houses throughout the UK, which reinforces the fact that the customers are professionals working in the drinks sector. The brochure dated 2010 (Annex 3) shows that the goods were available and being offered for sale in that year. However, the evidence of use in the late 1990s, as shown in Annexes 7 and 10, are on their own insufficient to prove continued use going back to that date. Nevertheless, the evidence submitted in this case as a whole is sufficient to show that the opponent was using the mark at least one year before the relevant date.

• Therefore, the evidence, taken as a whole, clearly indicates that, as a result of the use that has been made of the sign, it has a material economic impact that is clearly spread over a significant geographic area.

The opponent’s right vis-à-vis the contested mark

• The opponent’s sign was used in the course of trade of more than local significance in the United Kingdom for ‘wine’ before the priority date of the contested trade mark. The evidence provided is sufficient to prove that the opponent enjoys goodwill for its goods in the mind of the purchasing public for the sign on which the opposition is based.

• ‘Wine’ is identically covered by both signs.

• The contested ‘alcoholic beverages (except beers) of all kinds’, in Class 33 includes, as a broader category, the opponent’s ‘wines’. Thus, they are considered identical to the opponent’s goods.

• The relevant territory is the European Union.

• Taking into account the visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar.

• The goods applied for are identical to the opponent’s goods. The signs also have relevant similarities, in particular they share the same verbal element, which gives them aural identity and visual and conceptual similarity. Under these circumstances there is a risk that the applicant’s goods will be taken to be the opponent’s.

The opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested mark

• Damage is the most likely result whenever, as in the present case, the opponent has demonstrated that it enjoys goodwill in the earlier sign and the contested sign is similar to the opponent’s mark, thus leading consumers to attribute the contested sign to the opponent. The opponent is not obliged to prove that it has suffered actual damage. It is sufficient that damage is likely. In the present case, it has been concluded that the goods in question are identical and that a significant number of the opponent’s customers would consider the goods offered by the applicant under the contested trade mark as originating from the opponent.

• Under those circumstances, it is likely that the opponent would lose sales because its customers would erroneously buy the applicant’s goods.

• In the absence of any indications to the contrary, it is found that the opponent is likely to suffer damage.

7. On 24 April 2015, the applicant filed a notice of appeal against the contested decision and on 29 June 2015 it submitted its statement of grounds.

8. No revision was granted pursuant to Article 62 CTMR and the appeal was remitted to the Boards of Appeal on 3 July 2015.

9. On 7 September 2015, the opponent submitted its observations in reply.

Submissions and arguments of the parties

10. The applicant requests the Board of Appeal to annul the contested decision and reject the opposition, allowing the registration of the contested mark for all the goods in Class 33. Furthermore, it requests that the opponent should be ordered to bear all the costs and the fees. It refers to its submissions made during the opposition proceedings. Its arguments before the Board may be summarized as follows:

Lack of proof of the continuous use of the sign in the course of trade

• In accordance with the Guidelines, Article 19(2) CTMIR and a decision from the Board of Appeal, the use of the non-registered trade mark has to be continuous and uninterrupted until the filing of the opposition.

• The most recent piece of evidence submitted by the opponent is dated on 10 January 2012 and from that date on there is no other valid proof of the continuous use of the sign before the filing of the invalidity action (sic), which is almost one year, taking into consideration also the time established in Article 19(1) CTMIR.

• Therefore, the opponent has failed to prove the continuous use of the invoked right and, consequently, the opposition should be rejected.

The non-fulfilment of the elements of the Anglo-Saxon legal phenomenon of ‘passing-off’

• None of the items of proof submitted evinces that the UK consumers have had effective knowledge of the existence of the trade mark, since they do not prove the number of sales for the goods protected by the sign to end consumers or the real extent of their commercial distribution.

The weakness of the evidence submitted for the purposes of Article 8(4) CTMR and the ‘passing-off’ legal phenomenon.

• The evidence submitted by the opponent, for the purposes of demonstrating the compliance of the requirements for the application of the Article 8(4) CTMR and the legal phenomenon of ‘passing-off’, is weak and insufficient.

• Regarding Annex 2, it is impossible to know if the event took place and its attendance rate.

• Regarding Annex 3, the mere list of wines does not prove that the products were effectively sold in the UK.

• Considering Annex 4, two of the invoices are not related to the relevant public since they are addressed to Luxembourg and Cyprus and cannot be taken into account. One of the invoices is illegible. Therefore, it cannot be considered issued at the relevant date or for the relevant products. The rest of the invoices do not prove the number of sales for the goods protected by the sign to end consumers or the real extent of their commercial distribution. Moreover, the number of sales is derisory. A total amount of about USD 30 000 in sales for a period of time of more than 15 years for a country with more that 60 million inhabitants of a product not prohibitively expensive for mass consumption, should not be considered a sufficient use of the sign for the purposes of Article 8(4) CTMR or for proving the level of awareness for the purposes of passing-off.

• Annexes 5 and 9 are just documents created by the opponent to reinforce the theory of an intensive use of the trade mark. Their probative value is quite poor.

• Considering Annex 6, the labelled bottles are not placed in a store or somewhere else that could evince that this is the way they are presented to consumers in the UK.

• Annexes 7 and 10 are dated in 1997 and 1998 respectively. There is no proof of the use of the trade mark for a period of time of more than ten years. The requirement of the continuous use of the sign is not fulfilled.

• Considering Annex 8, the opponent has not provided any information in relation to this editorial. Moreover, the opponent has not submitted any evidence whether this editorial is popular amongst consumers and/or about the traffic of this website. This is applicable also in relation to Annex 7, because the opponent has not provided information about Clive Coates. Therefore, it is not possible to ascertain that he is really a UK Master of Wines. Moreover, there is no proof of where the review was published and if it was available for consumers in UK. A relationship cannot be established between this item of proof and the use of the sign in the relevant territory.

• It is clear that the opponent has failed to prove enough use of its trade mark in order to invoke Article 8(4) CTMR and to demonstrate the required awareness among the relevant public (reputation) for the purposes of the legal phenomenon of passing-off, and therefore, the opposition should be rejected as unfounded.

11. The opponent requests that the appeal be dismissed, the contested decision confirmed and the applicant ordered to pay all costs incurred by the opponent. It refers to its submissions made during the opposition proceedings. Its arguments before the Board may be summarized as follows:

• The applicant has misdirected itself on the law as up to which date an opponent bringing opposition proceedings under Article 8(4) CTMR must prove continuous use of said trade mark. The relevant date up to which continuous use has been made of the mark being relied upon must be shown in the opposition proceedings is the date at which the opposed mark was filed (23 January 2012). Any evidence dated later than 23 January 2012 ought to be disregarded in opposition.

• The applicant has misdirected itself regarding the classical ‘trinity test’ for passing off (goodwill/ misrepresentation/likelihood of damage).

• Goodwill must be proven to successfully bring a claim for passing off. Any business which brings in custom, i.e. any business which has customers should be viewed as having goodwill. Relevant case-law is cited in support.

• The opponent has shown that they have made sales under their ‘BYRON’ trade mark. It follows that the opponent has customers for their ‘BYRON’ product and therefore the opponent must possess goodwill under their ‘BYRON’ trade mark.

• The two trade marks concerned are highly similar.

• The final part of the three part test is that the use by the applicant of ‘BYRON’ in relation to wine is likely to damage the opponent. It is not prescribed what this damage must be, nor that there must be proof of actual damage, just that damage is likely.

• In the circumstances, the opponent possesses goodwill in its ‘BYRON’ trade mark, and as the applicant’s mark is highly similar to that of the opponent and seeks to cover identical goods, on the balance of probabilities the opponent is likely to suffer damage.

• The opponent addresses the applicant’s comments on the evidence filed by the applicant in turn.

• Considering Annex 1, the opponent concedes the evidence filed post-dates the filing of the applicant’s mark but reiterates that inclusion on the wine list of one of the largest global airlines, British Airways, shows the goodwill and reputation built up and enjoyed in the mark by the opponent.

• Regarding Annex 2, it must be taken into account that the opponent’s sign was offered for sale in Harrods, one of the world’s largest and most well-known department stores. In addition, use in London, in case-law, was found to be use of more than mere local significance.

• About Annex 3, following previous decision, it is very likely that this magazine will have been distributed in different venues within the UK.

• About Annex 4, the opponent supplies ‘BYRON’ wine to Boudinot Ltd who in turn distributes the wine to retailers on the opponent’s behalf. This is a common and perfectly acceptable commercial arrangement. It should also be reiterated that the sales of the wine shown on the invoices to Boudinot is at a wholesale level, which is significantly lower than retail value. To gain a true appreciation of the scope of the reach of the opponent’s ‘BYRON’ product, it is necessary to refer to the list of customers Boudinot distributes wine to listed at Annex 9.

• Considering Annex 5 and Annex 9, it is a perfectly acceptable business practice for businesses to create and maintain their own records.

• About Annex 6, the images of the opponent’s ‘BYRON’ product as sold are intended to add to the invoices submitted at Annex 4 to evidence what the product codes relate to.

• Regarding Annexes 7 and 10, the fact that this evidence is dated 1997 and 1998 respectively and that later evidence is dated closer to the date the opposition was filed does not show a lack of continuous use.

• It is not necessary for the opponent to shoulder the burden of the cost of providing documentary evidence for each of the 14 years the mark had been used (1998-2012).

• Regarding Annex 8, the information about the ‘source’ of the items was provided in the opponent’s observations in reply dated 24 May 2013.

• There was sufficient goodwill in the opponent’s trade mark before the date of filing of the applicant’s ‘BYRON’ mark. Such goodwill makes it likely that consumers upon seeing the applicant’s goods would assume that they are the goods of the opponent, or that these are goods produced by the opponent company, or that at the very least they were produced by the applicant under licence from the opponent. Such a situation is likely to lead to damage to the opponent, or to the opponent’s trade mark.

• The Opposition Division’s decision was well founded and should stand.

Reasons

12. The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It is, therefore, admissible.

13. However, it is not well founded for the reasons given below.

Article 8(4) CTMR: non-registered sign used in course of trade ‘BYRON’

14. The opponent claimed rights in the non-registered trade name ‘BYRON’ used in the course of trade in the United Kingdom in relation to ‘wine’ in Class 33.

15. According to Article 8(4) CTMR, upon opposition by the proprietor of a nonregistered trade mark used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the EU legislation or the law of the Member State governing that sign (a) rights to that sign were acquired prior to the date of application of the contested mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

16. The purpose of Article 8(4) CTMR is to let prior national trade signs prevail over CTM applications to the extent that the significance of these signs, in the sense of their effective market position, is of more than a mere local scale. This requirement of economically relevant use follows from the CTMR and is a prerequisite for any nationally protected trade sign to be invoked against a CTM or an application for such a mark.

17. The requirements indicated above are cumulative, which means that they must all be met for the request based on Article 8(4) CTMR to succeed. If one of them is not fulfilled, then the request must be rejected (24/03/2009, T-318/06, General Optica, EU:T:2009:77, § 32, 33 & 47; 30/06/2009, T-435/05, Dr. No, EU:T:2009:226, § 35).

18. The conditions relating to use in the course of trade and to the significance of the sign relied on must be interpreted in the light of the uniform standards of EU law which are consistent with the principles underlying the system established by the CTMR (23/10/2013, T-581/11, Baby Bambolina, EU:T:2013:553, § 23 and case-law cited).

19. It should be noted that in order to be capable of preventing registration of a new sign, the sign relied on in support of the opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local. It is therefore for the opponent to provide evidence of actual and sufficiently significant use, and not only to prove that the use in the course of trade of a sign of more than mere local significance is likely. In those circumstances, the use of an earlier right cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of this trade mark (see, by analogy, judgment of 23.10.2013, T-581/11, Baby Bambolina, EU:T:2013:553, § 29).

20. Within the set time-limit therefore, the opponent submitted the following evidence and arguments before the Opposition Division:

• Annex 1: A document edited by British Airways and mentioning ‘Byron Pinot Noir 2010, Santa Barbara County, California, USA’. The origin of the document is understood because of the following statement: ’British Airways is exploring ways to counteract the effects of altitude on our taste buds. The wines on our menu today have been specially selected by our Master of Wine’. The document’s date is December 2012.

• Annex 2: An online invitation bulletin from the social networking website Meetup.com announcing a wine tasting event at Harrods Department Store in London, featuring a wine, Byron Pinot Noir Santa Barbara County GBP 17.95. The invitation was sent on 4 May 2011 and the event was held on 17 May 2011.

• Annex 3: Two different lists extracted from Boutinot Ltd wine catalogues, one of them being undated (where however ‘BYRON’ wines listed were produced in 2008-2009) while the other is dated 2010 (‘BYRON’ wines listed were produced in 2007-2008). These documents include many wines from various countries. In the undated catalogue, there are six types of wines of the opponent, sold in pounds sterling (their prices range from GBP 53.23 to GBP 101.83). In the catalogue of 2010, four types of ‘Byron’ wines are sold (their prices range from GBP 70.50 to GBP 101.10). The goods seem to be directed at the wholesale sector because the minimum order is 25 cases.

• Annex 4: Six invoices, showing sales of goods such as 09 BYR PN Santa Maria 750ml 14.6% Alc and 09 BYR Chard Nielson 750 ml 14.3% Alc, and dated between 14 March 2011 and 19 January 2012. Four of the invoices are sold to a company located in the UK and shipped to a UK address, although it should be mentioned that one of them is almost unreadable but it is possible to perceive the addresses. One invoice is sold to a company located in Luxembourg and shipped to a Luxembourg address and one is sold to a company located in Cyprus and shipped to a Ukrainian address. The sales of Byron wines shown in the invoices concerning the UK amount to approximately USD 45 000, whilst the other two invoices amount to less than USD 4 000.

• Annex 5: Sales report ‒ a seven page document entitled ‘Byron Sales 1 September 2010 to 30 November 2011’. According to this document which seems to come from an internal source, around 2 130 bottles of ‘Byron’ wine have been sold during this period to various UK customers (retailers and restaurants).

• Annex 6: Three photographs showing bottles of wine with labels showing the word ‘BYRON’ and which the opponent claims show images of goods which appear in the invoices in Annex 4. The photographs are undated and do not indicate a source.

• Annex 7: A one page document dated 1 October 1997, where Clive Coates rates one of the wines of the applicant, namely ‘Byron, Reserve, Santa Maria Pinot Noir 1995’. According to the opponent, Clive Coates is a recognised UK Master of Wines and one of the world’s leading wine authorities. The name of the stockist appears, unlike other information such as the newspaper or magazine where the document was published. The opponent describes this document as ‘IMBIBE editorial feature’.

• Annex 8: An eight page document extracted from the website imbibe.com, which is, according to the opponent, the UK’s leading publication for on-trade drink professionals. The website states that it is ‘for UK on-trade drinks professionals’. The extract is dated March/April 2011 and concerns a review of wines from around the world made with Pinot Noir grapes. Mention is made of a Byron Pinot Noir 2008.

• Annex 9: A two page document entitled ‘JFE Estates 9 litre depletions 1 May 2011 - 8 June 2011’. It is an internal company document showing the amount of sales of Byron wines to UK customers during that period. The sales amounts are expressed in pounds sterling and eight different wines are sold (at a total of more than GBP 6 800).

• Annex 10: A two page extract from the 1998 Annual Tasting event of California wines held on 20 March 1998. The stockist mentioned is the same as the one in Annex 7, and is located in London. Four different wines produced under Byron’s name appear in the document. The relevant ‘Recommended Retail Price’ is expressed in pounds sterling.

21. Furthermore, attached to its observations filed on 24 March 2013 before the Opposition Division, the opponent submitted, in reply to the applicant’s arguments, the following evidence:

• Exhibit 1: An internet extract in order to prove that, contrary to the applicant’s statement, Annex 1 actually comes from British Airways.

• Exhibit 2: Extracts from the Harrods website in order to prove the connection between Harrods and the opponent’s wines, which was contested by the applicant.

• Exhibit 3: Extract from Boutinot Ltd website showing a number of ‘BYRON’ wines offered for purchase in the United Kingdom, in order to prove the contested connection between the Boutinot wine lists and the actual sales of ‘BYRON’ wines indicated therein in the relevant territory.

• Exhibit 4: A new copy of the invoice claimed to be illegible by the applicant.

• Exhibit 5: Sample of internet searches of the listed UK customers from the sales report showing their details in the United Kingdom.

• Exhibit 6: Extract from www.imbibe.com showing that the contested claimed date of the article as March 2011 is correct.

22. Those additional items of evidence will be taken into account as they could be relevant for the outcome of the case and they constitute merely supplementary documents aimed at clarifying some specific issues put forward by the applicant and come to integrate the main evidence previously submitted.

Relevant date for the use in the course of trade

23. In the statement of grounds of appeal, the applicant states that the use of the sign on which the opposition is based has to be ‘continuous and uninterrupted’ until the filing of the opposition. This statement is not entirely correct, as it will be inferred from the explanation given here below.

24. On the one hand, according to the jurisprudence of the Court of Justice, the ‘use of more than mere local significance’ has to be before the filing date of the contested mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 164-169). That is, in this case, before 23 January 2012.

25. Therefore, the Opposition Division rightly stated that the opponent was required to prove that the sign on which the opposition is based was used in the course of trade prior to the filing date of the contested mark.

26. On the other hand, the earlier right relied on in support of an opposition must still exist at the time that the notice of opposition is filed, that is 21 June 2012. Indeed, Rule 19(2)(d) CTMIR expressly provides that, in the event that an opposition is based on Article 8(4) CTMR, the opposing party must provide evidence not only of the acquisition and of the scope of protection of that earlier right, but also of the continued existence of that right. This presupposes normally that the sign in question must still be in use at the time of the filing of the notice of opposition. Indeed, it is precisely the use of the sign in the course of trade which is the basis of the existence of the rights to that sign (23/10/2013, T-581/11, Baby Bambolina, EU:T:2013:553, § 26-27).

27. In the present case, the issue of the ‘continuous existence’ of the earlier right at the opposition date is not a crucial issue, given that there are only five months between the date of filing of the contested mark (23 January 2012) and the date of filing of the opposition (21 June 2012). As correctly mentioned in the contested decision, all the evidence submitted by the opponent, with the exception of Annex 1, predates the filing of the contested mark, being rather close to that date. The British Airways wine list (Annex 1) is dated December 2012, that is, after both the filing date of the applicant’s mark and the opposition date. However, it is useful to the extent that is shows that the opponent’s sign was actually still being used when the opposition was filed and also after that date.

Use of more than local significance

28. According to the case-law, the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, first, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) CTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in the light of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T‑318/06 - T‑321/06, General Optica, EU:T:2009:77, § 36-37; & 30/09/2010, T‑534/08, Granuflex, EU:T:2010:417, § 19).

29. The concept of more than local significance does not have to be exclusively understood as meaning that neither a city alone nor a province are in any case unsufficient to prove that this requirement is fulfilled (01/04/2011, R 354/2009-2, FORTRESS (fig.) / FORTRESS et al., §49 - 51.).

30. In the present case, the opponent provided various pieces of evidence. The Opposition Division rightly stated that the invoices (Annex 4) show that wine was effectively sold under the relevant trade mark ‘BYRON’ in the relevant territory, i.e. the United Kingdom, at least one year before the relevant date. In particular, four of the invoices, which are those of main relevance here, are sold to the company Boutinot Ltd, located in the UK and shipped to a UK address (Barking in the United Kingdom). Although their total amount of sales of ‘BYRON’ wine is not extremely high, it totals approximately USD 45 000, it indicates that sales were nonetheless of a certain consistency, taking into account that they cover a period of approximately one year. When these invoices are examined in conjunction with the other pieces of evidence filed, it can be inferred that the sales indicated therein are mere examples of sales made in the years preceding the filing of the contested CTM application.

31. In particular, the sales reports contained in Annex 5 (concerning the period from 1 September 2010 to 30 November 2011) and Annex 9 (detailing sales carried out in the period 1 May 2011 to 8 June 2011), even though they come from an internal source, appear prima facie reliable given that they are very detailed and contain a complete list of clients in the United Kingdom to which each of the ‘BYRON’ types of wines were sold (through the distributor Boutinot Ltd, as the opponent explains). Annex 5 even indicates the date of each invoice sent to each of those UK clients, indicating also the number of bottles sold in each invoice, totalling more than 2 130 units. The opponent gives information on the location of some of the customers listed: London, Yorkshire and Wales (see more detailed information under point 2 of the opponent’s observations of 31 December 2012). Exhibit 5 further incorporates some UK customers’ data.

32. It is true that, in general, documents coming from internal sources are of less evidential value than those of third parties and cannot therefore, on their own, constitute sufficient proof of use of the sign (see, to that effect and by analogy, 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156, § 39). However, in the present case, the sales reports are not the only documents submitted and, even if they are not sufficient, on their own, to prove the use of the earlier sign, they serve that purpose when assessed in conjunction with the further documents submitted, which can, in the Board’s opinion, substantiate the contents of those internal documents.

33. In fact, the sales in the UK which result from the invoices (Annex 4) were made to the company Boutinot Ltd, which appears to be dealing in the wholesale sector within the wine trade as it clearly emerges from the Boutinot Ltd Wine Lists provided as Annex 3, where a number of wines, including the opponent’s ‘BYRON’ wines, are offered for sale through a UK telephone number as well as the website www.boutinot.com. It is recalled that one of those wine lists (where ‘BYRON’ wines listed were produced in 2007 to 2008) was edited in 2010, that is, before the relevant date and that, even if the other Boutinot Ltd Wine List is undated, the fact the relevant ‘BYRON’ wines listed therein were produced in 2008 to 2009 gives a strong indication that those wines were equally being offered for sale before the relevant date, very likely in the following year with respect to the 2010 wine list.

34. The pictures of the bottles of ‘BYRON’ wines (Annex 6), despite being undated, are however relevant to the extent that they show how the sign ‘BYRON’ actually appears on the product sold. Furthermore, these pictures are claimed to refer to the products listed in the invoices produced as Annex 4 and are in particular linked to UK invoice No 264376 by way of matching codes.

35. The online invitation bulletin on Meetup.com announcing a wine tasting event at Harrods Department Store in London, featuring a ‘Byron’ wine (Annex 2) and the extract from the publication imbibe.com ‘for UK on-trade drinks professionals’ on a wine review mentioning ‘Byron’ wine (Annex 8), both of which are dated 2011, that is, before the relevant date, are also relevant to show use of the earlier sign in the United Kingdom. The above-mentioned documents are valid pieces of evidence coming from independent sources. The applicant claims that, with regard to Annex 2, it is impossible to know if the event took place and its attendance rate, and that, with regard to Annex 8, the opponent has not provided any information on the editorial Imbibe. However, the arguments of the applicant are not able to undermine the probative value of those documents, also considering that the connection between Harrods and the opponent’s wines is further shown in Exhibit 2, and that quite detailed information on the editorial Imbibe is further included in Exhibit 6 (see, in particular, under the title ‘Imbibe Live’ on the first page).

36. The Board confirms the Opposition Division’s approach that the items of evidence have to be considered overall and not following a piecemeal approach. The Board also endorses the Opposition Division’s finding that the gap between the dates of Annexes 7 and 10 (the end of 1990s) and the dates of the remaining ones (since 2010) does not allow to certify continued use going back to the late nineties. Nevertheless, the recent documents show that the opponent was using the sign ‘Byron’ during a period of approximately two years before the filing date of the contested mark.

37. Taking the evidence presented before the Opposition Division as a whole, the Board believes that it is objectively sufficient to demonstrate use of the non-registered sign ‘BYRON’ in the course of trade of more than local significance in the United Kingdom.

Passing off

38. As stated in the opponent’s observations of 31 December 2012, the criteria for a finding of passing off are summarized in the Board of Appeal decision No R 889/2007-1 as follows:

‘Passing off is a common law tort, developed by English jurisprudence. In order to successfully rely on it the cancellation applicant [here, the opponent] must prove that: (i) it has acquired a goodwill or reputation in the market under the non-registered mark and its goods are known by some distinguishing feature; (ii) there is a misrepresentation by the CTM proprietor [here to read: the applicant] (whether or not intentional) leading or likely to lead the public to believe that goods offered by the CTM proprietor are goods of the cancellation applicant; (iii) the cancellation applicant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the CTM proprietor’s misrepresentation. The principle is commonly referred to as the “classical trinity” of goodwill, misrepresentation and damage to goodwill (see Reckitt & Colman Products Ltd v Borden [1990] R.P.C. 341, HL).

Goodwill is the premium that would be paid in the acquisition of a business as a going concern over the fair value of its identifiable assets less liabilities assumed. It is what can accrue to a business or sign used in the course of trade as a result of the positive reputation that it has acquired. It has been referred to as “the attractive force which brings in custom” (see IRC v Muller’s Margarine [1901] A. A. 217 at 233) and is “what adds value to a business by reason of situation, name and reputation, connection, introduction to old customers, and agreed absence from competition, or any other things” (Lord Lindley cited by Byrne J. in Rickersby v Reay [1903] 20 R.P.C. 380).

Goodwill is normally proved by evidence of trading activities, advertising, consumers’ accounts etc. Genuine trading activities, which result in acquiring reputation and gaining customers, are usually sufficient to establish goodwill.

The “reputation” often referred to in relation to passing off does not necessarily have the same content as “reputation” within the meaning of Article 8(5) CTMR The English Courts are very unwilling to assume that a business can have no customers and, thus, no goodwill. Even small businesses can have goodwill. The level of goodwill is low only where the nature of the business is transient as for example in the case of a mobile fish and chip shop (Stannard v Reay [1967] R.P.C. 589; The Law of Passing Off, Wadlow, Sweet & Maxwell 2004). The standard of proof under English law is not the same as in the case of, e.g. acquired distinctiveness (Phones 4U Ltd v Phones4u.co.uk Internet Ltd [2007] R.P.C. 5). Thus, though a high degree of market recognition may point to the existence of goodwill, value may be added to a business and goodwill generated without attaining the level of recognition needed to establish acquired distinctiveness or reputation within the meaning of Article 8(5) CTMR.’

39. As rightly recalled by the opponent, the above-mentioned Board’s decision was upheld by the General Court, which also reasoned that goodwill may be reached without attaining the level of recognition needed to establish reputation within the meaning of Article 8(5) CTMR (09/12/2010, T-303/08, Golden Elephant Brand, EU:T:2010:505 §117).

40. The main data that must be taking into account is to determine whether or not the amount of sale is below the de minimis threshold (09/12/2010, T-303/08, Golden Elephant Brand, EU:T:2010:505 §117). In the aforementioned judgment, the Court stated that the cancellation applicant’s market share was 0.0168%. However, the Court stated that the mere fact that the market share was very small in comparison with the total amount of the relevant product (rice) imported into the United Kingdom is not sufficient to justify a finding that those rice sales were below the de minimis threshold.

41. In the present case, the analysis of the evidence has already been done (see paragraphs 28 to 37). It should be recalled that the Board finds that by the filing date of the contested mark, the opponent’s goods had been effectively present in the UK market for some time, on a more than local scale, generating transactions and sales.

42. As mentioned above, goodwill might be reached without attaining the level of recognition needed to establish reputation, and the main factor to be determined is whether or not the amount of sale is below the de minimis threshold. That is not the case here. As already observed, the UK sales indicated in the sample invoices to the wholesale company Boutinot Ltd show amounts of a certain consistency, considering the length of the period they cover. When those sample invoices are examined in conjunction with the further material submitted, which includes Boutinot sales reports to UK retailers, restaurants, hotels, etc., as well as photographs, magazine extracts and other information on ‘BYRON’ wines published on the Internet, the Board endorses the Opposition Division’s fondings and considers that the opponent was already engaged in genuine trading activities concerning ‘BYRON’ wines at the relevant date, with the consequence that it has established a goodwill.

43. The two others conditions, are, as mentioned above that there is a misrepresentation by the applicant leading or likely to lead the public to believe that goods offered by the applicant are goods of the opponent and that the opponent has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the applicant’s misrepresentation.

44. As clarified by the General Court in its ‘Golden Elephant Brand’ judgment (T-303/08, § 131 ss.) and cited by the opponent as follows:

‘On the merits, it should be pointed out that, in order to assess whether the presentation in question constituted misrepresentation, it is necessary to examine whether the sale of rice under the contested Community trade mark in the United Kingdom is likely to lead the public to attribute the commercial origin of that product to the intervener.

In this context, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial number of members of the relevant public will be misled into purchasing the applicant’s goods in the belief that they are the intervener’s (see, to that effect, Reckitt & Colman Products Ltd v Borden Inc. & Ors, cited in paragraph 93 above, paragraph 407). Moreover, it is clear from the national case‑law that the misrepresentation of goods by the defendant in an action for passing-off must be assessed with regard to the claimant’s customers and not the general public (Reckitt & Colman Products Ltd v Borden Inc. & Ors, cited in paragraph 93 above; see, also, to that effect, LAST MINUTE TOUR, cited in paragraph 91 above, paragraph 60) (09/12/2010, T‑303/08, Golden Elephant Brand, EU:T:2010:505 §131-132).’

45. The Board notes that the applicant does not enter into the merits of the issues of misrepresentation and damage, but rather focuses its grounds of appeal on arguing that the opponent failed to prove a sufficient level of use and awareness of its sign for the purposes of the legal phenomenon of ‘passing off’.

46. However, as explained above, the Board considers that the evidence provided by the opponent is sufficient to prove both the use of more than local significance as required by Article 8(4) CTMR and the goodwill as required by the common law tort of passing off.

47. As regards the ‘misrepresentation’ requirement, the Board fully endorses the Opposition Division’s reasoning and finding that, given the identity of the conflicting goods as well as the aural identity and the visual and conceptual similarities of the signs, there is a risk that the applicant’s goods will be taken to be the opponent’s.

48. The contested decision’s assessment of the ‘likelihood of damage’ requirement must equally be upheld. It has been concluded that, given the similarities between the signs in dispute and the identity of the goods in question, the opponent’s customers are likely to perceive the goods to be marketed under the contested trade mark as originating from the opponent. In fact, while ‘misrepresentation’ does not necessarily lead to damage being caused in all possible cases, damage is the most likely result whenever, as in the present case, the goods in relation to which the earlier sign enjoys a goodwill are identical to the goods covered by the later mark and the latter shows high similarities (and even phonetic identity) with the earlier sign, thus leading consumers to attribute the contested sign to the opponent. It is recalled that the opponent is not obliged to prove that it has suffered actual damage, it being sufficient that damage is likely. Bearing in mind the above, the Board considers, in line with the Opposition Division and in the absence of any convincing argument to the contrary brought forward by the applicant, that, in the present case, it is likely that the opponent would lose sales because its customers – who intend to buy its goods – would erroneously buy the applicant’s goods.

49. Therefore, it must be held that the Opposition Division was correct to find that the opposition was well founded on the basis of Article 8(4) CTMR.

50. For the reasons given above, the appeal is dismissed.

Costs

51. As the applicant is the losing party within the meaning of Article 85(1) CTMR, it must bear the costs incurred by the opponent in the appeal proceedings.

52. Pursuant to Article 85(6) CTMR and Rule 94(7)(d)(vi) CTMIR, the Board fixes the amount of representation costs in the appeal proceedings to be paid by the applicant to the opponent at EUR 550.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the costs of the appeal proceedings;

3. Fixes the total amount of the costs to be paid by the applicant to the opponent at EUR 550.

Signed T. de las Heras

Signed C. Negro

Signed C. Govers

Registrar: Signed H.Dijkema