OPPOSITION No B 2 137 696
Grupo Osborne, S.A., Salvatierra, 6, 28034 Madrid, Spain (opponent), represented by Aguilar I Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)
a g a i n s t
Patrice Calvet U.K. Ltd, Cranbrook House, Wootton Village, Oxford OX1 5HP, United Kingdom (applicant), represented by Lehmann & Fernandez S.L., Calle Alvarez de Baena 4, 28006 Madrid, Spain (professional representative).
Class 35: Wine retail services.
Class 39: Packaging and storage of goods; bottling services.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods and services of
European Union trade mark application No
European Union trade mark registration (hereinafter EUTM) No 1 319 185 ‘TORO’, filed on 23/09/1999, registered on 24/04/2002 for i.a. goods in class 33;
EUTM No 1 500 917 , filed on 10/02/2000, registered on 05/11/2009 for i.a. goods in class 33;
EUTM No 2 844 264 ‘TORO’, filed on 13/09/2002, registered on 05/08/2010 for i.a. services in class 39;
Spanish trade mark registration (hereinafter Spanish TM) No 2 919 417 , filed on 16/03/2010, registered on 22/06/2010 for services in class 35.
The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (before its amendment by Regulation (EU) 2015/2424), if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use, provided the earlier trade mark has at that date been registered for not less than five years.
The decisive date for establishing whether a European trade mark has been registered for not less than five years at the date of publication of the contested trade mark, is, according to Article 15 and Article 42(2) EUTMR, its registration date. The relevant date for a national trade mark is the date of the completion of the registration procedure which is determined by each Member State according to their own procedural rules (judgment of 14/06/2007, C-246/05, Le Chef de Cuisine, EU:C:2007:340, § 31).
The applicant requested that the opponent submits proof of use in relation to the trade marks registered for services in classes 35 and 39. Only two of the earlier trade marks cover these services, namely EUTM No 2 844 264 and the Spanish TM No 2 919 417.
In the present case the contested trade mark was published on 13/11/2012.
Since the earlier EUTM No 2 844 264 was not registered for more than five years prior to the relevant date, the request for proof of use regarding this mark is inadmissible.
The request is also inadmissible as far as the earlier Spanish TM No 2 919 417 is concerned. Pursuant to Article 39 of the Spanish Law No. 17/2001 on Trademarks the relevant date for calculating the five years grace period in the cases where an opposition has been lodged is the date of the publication of the registration. According to the submitted registration certificate the relevant date is 02/07/2010. Therefore, the grace period had not yet expired at the date of publication of the contested mark.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on four earlier trade marks and the Opposition Division will start its examination in relation to all of them.
The goods and services
The goods on which the opposition is based are the following:
EUTM No 1 319 185:
Class 33: Distilled beverages.
EUTM No 1 500 917:
Class 33: Alcoholic beverages, except wine and beer.
EUTM No 2 844 264:
Class 39: Transport; packaging and storage of goods; travel arrangement.
Spanish TM No 2 919 417:
Class 35: Retailing, in shops and internet of all kind of articles.
The contested services are the following:
Class 35: Advertising; wine retail services; marketing studies; economical analysis and providing information with respect to the wine market.
Class 39: Packaging and storage of goods; bottling services.
As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested services in Class 35
The contested wine retail services are included in the broad category of the opponent’s retailing, in shops and internet of all kind of articles that are not limited to the sale of particular goods. Therefore, these services are considered identical.
All the remaining contested services in this class are however dissimilar to the opponent’s goods and services.
The contested advertising; marketing studies; economical analysis and providing information with respect to the wine market are aimed at supporting or helping other businesses to promote, carry out or improve their business. They are rendered by specialised professionals like business consultants and marketing agents, who study the particular needs of their clients (other undertakings), in order to assess and advise the best business strategy for the promotion of their goods and services, for the acquisition of market share, for the development of their business, etc.
The opponent’s services in Class 35 are retail services of all kinds of goods. These services consist of the bringing together, and offering for sale, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods at one stop. The opponent’s services in Class 39 are transport; packaging and storage of goods; travel arrangement. Transport services are rendered in order to move people or goods from one place to another. These services are provided by specialist transport companies. The services of travel arrangement are services provided by specialised companies whose purpose is to allow consumers to plan and book their travel destinations, transport, accommodation etc. Packaging and storage of goods refer to services whereby a company’s goods are packed and kept in a particular place for a fee.
When it comes to the opponent’s goods in Class 33, their nature is different to the above listed contested services. These services are provided by specialist companies whose business is not the manufacture and sale of the alcoholic beverages. Apart from also being different in nature, given that services are intangible, whereas goods are tangible, they serve different needs.
Considering the foregoing, the contested services of advertising; marketing studies; economical analysis and providing information with respect to the wine market in Class 35 are dissimilar to the opponent’s goods and services in Classes 33, 35, and 39. They differ in nature, purpose and method of use. Moreover they are not in competition with or complementary to each other in that one is indispensable or important for the other. They are provided by different service providers through different trade channels and target different publics with completely different needs.
Contested services in Class 39
Packaging and storage of goods are identically contained in both lists of services. Bottling services are included in the broad category of the opponent’s packaging of goods. Therefore, all of those services are identical.
As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at the services which have been found dissimilar cannot be successful.
There is, therefore, no need to proceed further with the comparison of the earlier EUTM No 1 319 185 and EUTM No 1 500 917 and the contested sign since, even if the marks were found similar, it would not alter the outcome of no likelihood of confusion on the part of the public in relation to the dissimilar services.
The examination of the present opposition will continue for the remaining two earlier rights.
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 services found to be identical can be directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price, the specialised nature and conditions of the services that are provided.
Earlier trade marks
The relevant territory is European Union for the EUTM No 2 844 264 and Spain for the Spanish TM No 2 919 417.
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).
Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.
The earlier EU trade mark is a word mark consisting of the word ‘TORO’. The earlier Spanish mark is a figurative mark, depicted in black on a white background, consisting of two elements, a figurative representation of a bull and, next to it, a word ‘TORO’, written in stylised upper case bold letters.
The contested sign is a figurative mark composed of the capital letters ‘TOROLOCO’ in a standard font and a figurative representation of a corkscrew in a form of a bull’s head above the verbal elements.
None of the marks have elements that could be considered clearly more distinctive than other elements.
Neither have any of the marks an element that could be considered more dominant (visually eye-catching) than other elements.
The word ‘TORO’, present in all marks, will be perceived by the relevant public as a bull (see http://www.oxforddictionaries.com/translate/spanish-english/toro?searchDictCode=english-spanish).
This element will also be understood as such in the contested sign. Although the relevant consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30). Thus, in the case at hand, consumers will clearly recognize two words in the contested sign ‘TORO’ and ‘LOCO’, while the latter means mad, insane, crazy (see http://www.oxforddictionaries.com/translate/spanish-english/loco). Neither of these words have a descriptive meaning in relation to the services in question.
Visually, the signs are similar to the extent that they coincide in the word ‘TORO’. On the other hand, they differ in the additional word element ‘LOCO’ included in the contested sign and the figurative elements present in the contested mark and the earlier Spanish mark.
As for the additional word element ‘LOCO’, given that it appears in the second part of the verbal element ‘TOROLOCO’ it is not the part that first catches the eye, the former part being the word ‘TORO’ (18/11/2014, R2462/2013-2 , TOROCOLO (fig. mark), § 21). Regarding the relevant figurative elements, these are similar to the extent that they include a bull’s head with horns (in the case of a Spanish mark as a part of the representation of a whole bull).
Considering the foregoing, the Opposition Division considers that there is an average degree of visual similarity between the marks in question.
Aurally, the pronunciation of the marks coincides in the sound of the letters ‛TORO’ present identically in all signs in question, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the word ‛LOCO’ of the contested mark which has no counterpart in the earlier marks. The figurative elements are not subject to pronunciation. Hence, the signs in question are aurally similar to an average degree.
Conceptually, ‘TORO’ will be understood as a bull and ‘TOROLOCO’ as a mad bull or crazy bull. The figurative elements in the relevant marks, a silhouette of a bull and a depiction of a bull’s head, simply reinforce the reference to a bull. At the same time the word element ‘TOROLOCO’ (crazy bull) in the contested sign reinforces the perception of its figurative element as a bull’s head and not as a corkscrew. The adjective ‘LOCO’, a reference to mental state of the bull, does not affect the recognition and comprehension of the word ‘TORO’ there. The relevant public will still perceive the reference of the sign to a bull even if as to a crazy bull.
Consequently, to the extent that all the signs will be clearly associated with the meaning of the word ‘TORO’, as defined above, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
Distinctiveness of the earlier marks
The distinctiveness of the earlier marks 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 marks are 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. In the present case, neither of the earlier trade marks has meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).
In the present case, some of the contested services are identical and some dissimilar and are directed at the public at large and at professionals whose degree of attention is deemed average to high.
The signs are visually and aurally similar to an average degree, and conceptually similar to a high degree.
The only verbal element of the earlier marks ‘TORO’ is included, in its entirety, in the contested mark. Neither the word TORO nor the word combination ‘TOROLOCO’ has a meaning for any of the services in question from the perspective of the public in the relevant territory.
As explained above the word ‘LOCO’ will not affect the recognition and perception of the word ‘TORO’ in the contested sign by the relevant public. Moreover, the figurative elements depicting a bull and a bull’s head, respectively, reinforce the reference to the word ‘TORO’ (a bull) included in all signs at hand.
An 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).
Therefore, it is very likely that the consumer, being exposed to the use of the contested sign in relation to identical services, and having an imperfect recollection of the earlier mark, would think that the services for which the contested mark is used are offered by the same undertaking as those provided under the earlier mark, or by an economically linked undertaking.
Although the degree of attention of the relevant public will vary from average to high, the Opposition Division considers that a likelihood of confusion still exists, given the degree of similarity found between the signs and the identity of the services concerned, especially taking into account the principle of imperfect recollection (see to that effect 16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 90, 17/10/2006, T‑483/04, Galzin, EU:T:2006:323, § 80).
It follows that the dissimilarities between the marks at issue, resulting from the differences in the figurative elements and the additional word element ‘LOCO’ in the earlier Spanish mark and the contested mark, respectively, are not sufficient to counteract, on a visual, phonetic and conceptual level, the similarity, deriving from the common element ‘TORO’, of the signs in question.
Therefore, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Considering all the aforementioned, the contested trade mark must be rejected for the services found to be identical to those of the earlier trade marks.
The rest of the contested services, namely advertising; marketing studies; economical analysis and providing information with respect to the wine market are dissimilar. As already stated above, since similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.