CANCELLATION No 15225 C (INVALIDITY)

Consorzio di Tutela della Denominazione di Origine Controllata Prosecco, Piazza Filodrammatici, 3, 31100 Treviso, Italy (applicant), represented by Studio Legale Bird & Bird, Via Borgogna, 8, 20122 Milan, Italy, (professional representative)

a g a i n s t

WSC Wine & Spirit Company GmbH & Co. KG Ringstr. 2, 04749 Ostrau, Germany (EUTM proprietor), represented by Rechtsanwälte Rohwedder & Partner, Kaiserstr. 74,, 55116 Mainz, Germany (professional representative).

On 03/04/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 12 788 907 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 788 907 ‘Perisecco’, namely against alcoholic beverages (except beer) in Class 33.

The application is based on Italian collective trade mark registration No 1 550 925 , as well as on the protected designation of origin PROSECCO, registered in the European Union under registration No PDO-IT-A0516 (the earlier PDO).

The applicant invoked Article 59(1)(a) EUTMR in connection with Article 7(1)(j) EUTMR, Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR and Article 60(1)(d) EUTMR in connection with Article 8(6) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

As regards the grounds based on the earlier PDO, the applicant argues that the contested mark misuses, imitates and evokes the PDO PROSECCO in the sense of Article 103(2)(b) of Regulation (EU) No 1308/2013, and should therefore be invalidated.

In particular, the applicant claims the following:

• There is misuse of the PDO since the contested EUTM almost reproduces it and it is used for wine products produced in Germany, which do not and cannot comply with the product specification for the PDO wine PROSECCO.

• The contested EUTM imitates the PDO since it is intended to give the same impression, due to the substantial similarities between both. This is corroborated by the way in which the PERISECCO wine is presented and advertised by the EUTM proprietor, which shows its intent to create the false impression that the products carrying the contested EUTM have the same origin and qualities as the PROSECCO wine or contain PROSECCO wine.

• The contested EUTM evokes the PDO since, due to their high degree of similarity, the consumer will establish a mental link between them. This is reinforced by a number of circumstances regarding the presentation, marketing and promotion of the PERISECCO wine products, such as the use of the contested EUTM for a sparkling beverage, the shape of the bottle, as well as the use of Italian terms and other references to Italy, which also make evident the intention of the EUTM proprietor to deliberately create a link with the PDO.

As regards the ground based on the earlier Italian collective mark, the applicant claims there is a likelihood of confusion, due to the identity of the goods and the similarity between the signs, and taking also into account the reputation of the earlier mark.

In support of its arguments, the applicant submits a series of documents related to the PDO (product specification, graphic representation of the production area, Ministerial Decree recognizing the PDO, register extract from ‘E- BACCHUS’), to its entitlement (Italian Legislative Decree), to the reputation of the PDO and the earlier mark (brochures, presentation, information sheets, export figures, abstract from a market report, press clips, advertisements, sponsorships and other promotional actions, as well as a previous decision from the Spanish trade mark office acknowledging the reputation of the earlier mark), to the EUTM proprietor and the way in which it uses the EUTM (printout from its website showing the PERISECCO range of products, pictures of bottles and labels, abstracts from the company register, screenshot of the Facebook page), and to the way in which the link between both signs is perceived by third parties (printouts from articles found in Internet making a connection between the PDO and the contested EUTM). The applicant also submits a printout from the online database of the Italian trade mark office showing the registration of the earlier Italian collective mark.

In response, and as regards the grounds based on the earlier PDO, the EUTM proprietor questions the entitlement of the applicant to apply for a declaration for invalidity based on the PDO. It further claims that, contrary to the applicant’s arguments, the EUTM does not represent a misuse, an imitation or an evocation of the PDO. In particular, it explains that ‘secco’ has become a generic term for wines with a dry taste and for alcoholic or non-alcoholic semi-sparkling beverages of all kinds and that, for this reason, the fact that the EUTM and the PDO share this ending will not result in the use of the EUTM triggering an image of the PDO in the consumer’s mind. In addition, it argues that, if Article 102(1) of Regulation 1308/2013 were applicable, this could only lead to the invalidity of the EUTM for the goods listed in Annex VII Part II of said Regulation (wines, semi-sparkling wines or sparkling wines) and not for aromatized wine products.

As regards the grounds based on the earlier Italian mark, the EUTM proprietor claims that, due to the differences between the signs and the descriptiveness of the elements ‘prosecco’ and ‘secco’, there is no likelihood of confusion.

In support of its arguments, the EUTM proprietor submits the following documents:

• An extract of the OIV database which mentions ‘Prosecco’ as the name of a grape variety in several countries.

• An entry from an Italian-English online dictionary which translates ‘prosecco’ as ‘an Italian dry sparkling wine’.

• Annex XIV of Regulation (EC) No 607/2009 and Article 6(1) of Regulation (EU) No 251/2014, which mention ‘secco’ as a term used (in Italian) for wines with a low content of sugar.

• Extract from the database of the German trade mark office showing a series of trade mark registrations containing the term ‘Secco’.

• Press clips and internet extracts showing the use of “Secco” as a generic term in Germany and the United Kingdom for semi-sparkling wines.

In the subsequent reply and rejoinder, the parties reiterate their respective arguments. The applicant submits additional information about its entitlement, as well as an opposition decision from the UK trade mark office, while the EUTM proprietor submits another dictionary entry from an online Italian/English dictionary translating ‘secco’ as ‘dry’.

ENTITLEMENT OF THE APPLICANT

The EUTM proprietor has questioned the admissibility of the grounds invoked under Articles 59(1)(a) and 60(1)(d) EUTMR, due to the lack of evidence about the entitlement of the applicant to file an application based on these grounds.

For reasons of economy of proceedings, the Cancellation Division will first examine this question in relation with Article 59(1)(a) EUTMR. The entitlement to invoke the grounds under Article 60(1)(a) EUTMR will be examined at a later stage only if necessary.

Article 63(1)(a) EUTMR provides that an application for a declaration of invalidity based on Article 59 may be filed by any natural or legal person, or any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers or services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued.

The applicant has filed extracts from national law, with their corresponding translations into the language of proceedings, which clearly show that it has the capacity in its own name to sue and be sued (see, in particular, Article 17(4)(c) of Italian Legislative Decree No 61/2010 of 08/04/2010 on the protection of designations of origin and geographical indications and Article 41(4)(c) of Italian Law No 238 of 12/12/2016 on the organic discipline on vine cultivation and wine production and trade, listing as one of the tasks of a ‘Consorzio di tutela’, such as the applicant, that of acting in legal and administrative proceedings). This constitutes sufficient entitlement under Article 63(1)(a) EUTMR, which only requires the applicant to have the general capacity to sue and not a specific one regarding the PDO at issue.

Consequently, the application has to be considered admissible as regards the grounds invoked under Article 59(1)(a) EUTMR.

ABSOLUTE GROUNDS FOR INVALIDITY — ARTICLE 59(1)(a) EUTMR IN CONNECTION WITH ARTICLE 7(1)(j) EUTMR

In accordance with Article 59(1)(a) EUTMR, an EU trade mark shall be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Conflict with a PDO/PGI – Article 7(1)(j) EUTMR

Article 7(1)(j) EUTMR provides for the refusal of EUTMs that are excluded from registration pursuant to national or EU legislation or international agreements to which the EU or the Member State concerned is party, providing for protection of designations of origin and geographical indications. The current wording of this provision was introduced by Regulation (EU) 2015/2424 of 16/12/2015, but as it applies to the present case it is equivalent in substance to Article 7(1)(j) of Regulation (EC) No 207/2009, in the version in force at the date on which the contested EUTM was filed.

The documents filed by the applicant show that ‘PROSECCO’ is protected as a PDO for various grapevine products, including wine and sparkling wine, under Regulation (EU) No 1308/2013 establishing a common organisation of the markets in agricultural products (hereinafter Regulation (EU) No 1308/2013).

According to Article 102(1) of Regulation (EU) No 1308/2013, the registration of a trade mark that contains or consists of a PDO that does not comply with the product specification concerned or the use of which falls under Article 103(2), and that relates to a product falling under one of the categories listed in Part II of Annex VII (“the grapevine product categories”) must be refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin to the Commission and the designation of origin is subsequently protected.

Article 103(2)(b) of Regulation (EU) No 1308/2013 states that a PDO shall be protected against any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as "style", "type", "method", "as produced in", "imitation", "flavour", "like" or similar.

In the present case, the date of registration of the PDO ‘PROSECCO’ which appears in E-Bacchus (currently eAmbrosia) is 01/08/2009. The application for registration of the contested EUTM was filed on 14/04/2014, i.e. after the date of registration of the PDO at issue (and consequently also after the date of the submission of the application for said PDO). The first requirement for the application of Article 102(1) of Regulation (EU) No 1308/2013 is therefore fulfilled.

The Cancellation Division will now examine the second requirement, namely whether the contested EUTM consists of a misuse, imitation or evocation of the earlier PDO.

Evocation of the PDO PROSECCO

According to the Court, ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (04/03/1999, C-87/97, Cambozola, EU:C:1999:115, § 25; 26/02/2008, C-132/05, Commission v Germany, EU:C:2008:117, § 44 and 21/01/2016, C-75/15 Verlados, EU:C:2016:35, § 21). Consumers must establish a link between the term used to designate the product (i.e. the trade mark) and the product whose designation is protected (Verlados, § 22), whilst it is necessary to take account of the presumed expectation of the average consumer, who is reasonably well informed and reasonably observant and circumspect. The Court has clarified that such link between the term used to designate the product and the product whose name is protected must be sufficiently clear and direct and that a mere association with the protected geographical indication or the geographical area relating thereto is not sufficient (21/01/2016, C-75/15, Verlados, EU:C:2016:35, § 22, 07/06/2018, C-44/17, Glen Buchenbach, EU:C:2018:415, § 53).

In assessing whether such a link is established, the Court has considered the phonetic and visual relationship between the signs and any evidence that may show that such a relationship between the EUTM and the PDO is not fortuitous (Verlados, § 48), as well as the degree of proximity of the goods concerned, including the actual physical appearance or the ingredients and taste of the products covered by the EUTM and the PDO (Cambozola, § 27).

Finally, it should also be mentioned that the EU Regulations protect geographical indications and denominations of origin throughout the territory of the Union. As a result, the Court has ruled that in order to guarantee effective and uniform protection of those PGI/PDOs in that territory, it must be considered that the concept of the consumer covers European consumers and not merely consumers of the Member State in which the product giving rise to the evocation of the PGI/PDO is manufactured (Verlados, § 27).

The contested EUTM is registered for the broad category of alcoholic beverages (except beer), which includes any of the grapevine product categories of Regulation (EU) No 1308/2013, such as wine and sparkling wine. The goods covered by the contested EUTM are therefore deemed identical to those protected under the PDO. The argument of the EUTM proprietor claiming that they market aromatized wine products and not wines is not relevant given that the specification of the contested EUTM is not limited to cover only aromatized wines. In any event, considering the method of elaboration, the physical appearance and the use of the same raw materials, aromatized wines would still be considered as comparable to the grapevine products covered by the PDO PROSECCO (see in this regard the Guidelines for Examination in the Office, Part B, Section 4, Chapter 10).

In the present case, the signs at issue are the following:

PROSECCO	Perisecco
Earlier PDO	Contested trade mark

There is clearly a close phonetic and visual relationship between the signs at issue, given that they coincide in the letters P-R-SECCO, following the same sequence, and differ only in the letter ‘O’ which appears it the third position of the earlier PDO, and in the letters ‘E-I’ in the second and fourth position of the contested mark.

The EUTM proprietor has placed a strong emphasis in highlighting the non-distinctive character of the common ending of the marks ‘SECCO’ for the goods at issue. However, the evidence submitted in this regard only refers to a part of the relevant public (basically Italy, Germany and the UK), and it has not been proved that this word would be understood as descriptive by the rest of the public. The Cancellation Division also notes that the signs also coincide in the two consonants placed at the beginning (P-R), and considers it highly unlikely, in any event, that the average consumer in any of the Member States would dissect these signs and identify their endings as an independent element.

The evidence submitted by the applicant as regards the actual use of the EUTM by its proprietor further indicates that the close phonetic and visual relationship between the signs is not fortuitous. Despite the fact that neither the EUTM proprietor nor the beverages it sells come from Italy, the labels and advertising contain a number of Italian terms, such as ‘pinot griglio’ (one of the typical grape varieties for Prosecco) or ‘frizzante’ (semi-sparkling), and other references to Italy (‘this delicious aperitivo originates from the Northern Italian region of the Veneto’ – one of the main regions were Prosecco is produced). The bottles have also the same typical shape of Prosecco bottles (similar physical appearance).

The fact, pointed out by the EUTM proprietor, that the labels do indicate that the beverages in question have been produced in Germany is not relevant, since for the purpose of establishing that there is an evocation of a PDO, account is not to be taken of the fact that the disputed element is accompanied by an indication of the true origin of the product concerned (07/06/2018, C 44/17, SCOTCH WHISKY, EU:C:2018:415, § 60).

The two independent reviews of the EUTM proprietor’s products submitted by the applicant both start by clarifying that consumers should not think that Perisecco is the same as Prosecco (e.g. ‘Perisecco is a sparkling aromatized wine (don’t get too excited by the name, it’s in no way a Prosecco’ (…) ‘What a clever name – Perisecco – Is it a marketing ploy to cash-in on the popularity of Prosecco, one of the UK’s favourite sparkling wines?’), thus highlighting again that the average consumer is likely to make the mental link between the EUTM and the earlier PDO.

In the light of all these circumstances, and in particular of the identity of the relevant goods and the visual and phonetic similarities between PROSECCO and PERISECCO, it is concluded that the contested EUTM does constitute an evocation of the earlier PDO within the meaning of Article 103(2)(b) of Regulation (EU) No 1308/2013, and therefore that there is no need to examine the applicant’s further arguments about misuse and imitation.

Conclusion

Since it has been established that the contested EUTM consists of an evocation of the earlier PDO for identical goods, it is concluded that, pursuant to Article 102(1) of Regulation (EU) No 1308/2013, the contested EUTM is excluded from registration and should therefore be invalidated.

Consequently, the application is successful as regards the grounds invoked under Article 59(1)(a) EUTMR in connection with Article 7(1)(j) EUTMR and the contested EUTM should be declared invalid in its entirety.

Since the application is fully successful on the grounds of Article 59(1)(a) EUTMR, there is no need to further examine the other grounds of the application, namely Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR and Article 60(1)(d) EUTMR in connection with Article 8(6) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

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

The Cancellation Division

Elisa ZAERA CUADRADO

José Antonio GARRIDO OTAOLA

Richard BIANCHI

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 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.