OPPOSITION No B 2 547 837
Bodegas Aragonesas, S.A., Carretera de Magallón, s/n, 50529 Fuendejalón, (Zaragoza), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)
a g a i n s t
Cleto Chiarli Società Agricola S.N.C. di Mauro e Anselmo Chiarli, Via Manin, 15, Modena, Italy (applicant), represented by Dr. Modiano & Associati S.P.A., Via Meravigli, 16, 20123 Milano, Italy (professional representative).
On 09/02/2017, the Opposition Division takes the following
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of European Union
trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition shall be rejected.
The applicant requested that the opponent submit proof of use of European Union trade mark No 285 742.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 15/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 15/04/2010 to 14/04/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 33: Alcoholic beverages (except beers).
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 15/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/04/2016 to submit evidence of use of the earlier trade mark. On 12/04/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Affidavit (in Spanish and an English translation thereof) from José Enrique Chueca Calavia, Managing Director of Bodegas Aragonesas, certifying that, from April 2010 to March 2015, the opponent had sold 398 525 bottles of ‘MOSEN CLETO’ products.
A document in German (without a translation into the language of the proceedings) showing the words ‘MOSEN CLETO’ and the years 2009 and 2013.
A screenshot from the opponent’s web site and an English translation thereof indicating that the wine from the bottle shown, labelled ‘Vintage 2009’, has received silver medals at two contests in Germany.
Thirty five invoices dated 05/01/2010 to 26/11/2015 (of which five are outside the relevant period) showing a product ‘MOSEN CLETO TINTO’, ‘12’ or ‘6’, ‘X 75 CL’, and sometimes also ‘SCOPERTA’, ‘RUSIA’, ‘2008’, ‘CRIANZA’, ‘POLONIA’, ‘DAVID PASTOR’ or ‘PAISES DEL ESTE’. The invoices are addressed to clients in Spain, other European Union Member States, Russia, Australia and countries in North America or Asia. The translation of the template for the invoices confirms that ‘tinto’ means ‘red wine’ and that it is sold in boxes of six or 12 bottles.
Four photographs of a bottle labelled ‘MOSEN CLETO CRIANZA’ and its specifications in English and Spanish.
The results of a Google search for ‘cleto, wine’ and ‘cleto, vino’.
A screenshot of a web page that offers ‘MOSEN CLETO’ wine for sale.
A screenshot of the Dictionary of the Real Academia de la Lengua española web page with a definition of ‘mosén’.
The applicant argues that the affidavit is irrelevant. However, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.
The applicant also argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
According to Article 15(1), second subparagraph, point (b) EUTMR, the following shall also constitute use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.
The evidence shows that the goods were manufactured in Spain and sold in some countries in Europe, the Americas, Asia and Australia. This clearly shows that the goods were exported from the relevant territory and, contrary to the applicant’s assertion, they are relevant.
Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.
Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).
In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the five invoices outside the relevant period are dated a few days before or after the relevant dates and, therefore, their dates are very close to the relevant period.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The documents filed, particularly the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
Contrary to the applicant’s opinion, use of the mark need not be quantitatively significant for it to be deemed genuine.
Although the invoices indicate a low frequency of use, they show use of the EUTM in several Member States, namely Belgium, the Czech Republic, France, Germany, Lithuania, Poland, Romania and Slovakia.
Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
The evidence shows that the mark has been used in the course of trade and in the form as registered.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
According to case-law, when applying the abovementioned provision, the following should be considered: if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories. (14/07/2005, T‑126/03, Aladin, EU:T:2005:288).
In the present case, the evidence proves use only for wine. These goods can be considered to form an objective subcategory of alcoholic beverages (except beers). Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for wine.
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 goods on which the opposition is based are the following:
Class 33: Wine.
The contested goods are the following:
Class 33: Wine; Piquette; wine-based drinks; Aperitifs with a wine base; Cider; Perry; Mead [hydromel]; Fruit (alcoholic beverages containing -); Cocktails; Pre-mixed alcoholic beverages, other than beer-based; Alcoholic beverages (except beers).
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.
Wine is identically contained in both lists of goods.
The contested piquette, a wine made from the second pressing of the marc, is included in the broad category of the opponent’s wine. Therefore, they are identical.
The contested wine-based drinks; aperitifs with a wine base are similar to a high degree to the opponent’s wine, as they have the same nature and are complementary. Furthermore, they may have the same end users, distribution channels and method of use.
The contested cider; perry; mead [hydromel]; fruit (alcoholic beverages containing -); cocktails; pre-mixed alcoholic beverages, other than beer-based; alcoholic beverages (except beers) are similar to the opponent’s wine. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings.
Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large. The degree of attention will vary from average to high considering the specific nature of the relevant goods.
Earlier trade mark
The relevant territory is the European Union.
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 non-Spanish- and non-Italian-speaking territories, such as Belgium, the Czech Republic, France, Germany, Latvia, Lithuania, Poland, Slovakia or Romania, where the words ‘MOSEN CLETO’ and ‘CLETO CHIARLI’ will be perceived as meaningless and where the opponent has proved its presence in the market.
The earlier mark is the phrase ‘MOSEN CLETO’ and the contested sign is the phrase ‘CLETO CHIARLI’.
Neither of the marks has any element that could be considered more distinctive or dominant (visually eye-catching) than other elements.
Visually, both signs are word marks consisting of two words. The signs coincide in the word ‘CLETO’, which is the second word in the earlier mark and the first word in the contested sign. The signs differ in the words ‘MOSEN’, which is the first word in the earlier mark and ‘CHIARLI’, which is the second word in the contested sign; these differing words have no counterparts in the other sign.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘CLETO’, present identically in both signs. The pronunciation differs in the sounds of the non-coinciding words, ‘MOSEN’ and ‘CHIARLI’. Although the coinciding sounds are in different positions, the lengths of the signs in terms of pronunciation are similar.
Therefore, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the earlier mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
The contested goods are identical or similar to various degrees to the opponent’s goods and they target the public at large, whose degree of attention is average to high. Furthermore, the earlier mark is considered to have a normal degree of distinctiveness in relation to the goods that are identical or similar.
Both signs are word marks made up of two independent words. The signs have one out of their two words in common and the non-coinciding words contain similar numbers of letters, five versus seven. Visually, the signs have the same structure; aurally, they have almost the same length; and the conceptual aspect has no influence on their similarity.
In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 30; 12/07/2006, T‑97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T‑34/04, Turkish Power, EU:T:2005:248, § 43).
The signs have the word ‘CLETO’ in common. The fact that each sign includes an additional verbal element, namely the words ‘MOSEN’ and ‘CHIARLI’, does not outweigh the strong similarities resulting from the coinciding element, ‘CLETO’.
As a rule, when one of the conflicting trade marks or a part thereof is reproduced in the other mark, the signs will be found similar, which, together with other factors, may lead to a likelihood of confusion.
Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Furthermore, consumers normally perceive a mark as a whole and do not analyse its details. This is particularly relevant when, as in the present case, the signs have no concept that could serve to deflect consumers’ attention from the word that the marks have in common.
Despite the differences between the word elements, there is a likelihood of confusion because the coinciding element plays an independent distinctive role in both signs.
The applicant argues that its EUTM application has reputation because of ‘its long and glorious tradition’ and filed various pieces of evidence to substantiate this claim.
The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
The previous cases referred to by the applicant are not relevant to the present proceedings because the words to be compared in each of them (Dorati v Dorada; Beck’s v Isenbeck; Eugene Perma v Perma Glam; Bagel Bimbo v Western Bagel; Bilbao Blue v Blue Joven; Boston v Boston Park and Total v TOTAL ΦΑΓΕ) had a meaning for the relevant public that could help consumers to differentiate between the signs. Therefore, the conclusions based on comparisons with these signs are not comparable to the present case.
Considering all the above, there is a likelihood of confusion on the part of the Czech-, Dutch-, French-, German-, Latvian-, Lithuanian-, Polish-, Slovak- or Romanian-, speaking parts 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 285 742. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.