OPPOSITION No B 2 559 741

Vinos y Alcoholes Conquenses, S. Coop., Ctra. Honrubia, s/n, 16600 San Clemente (Cuenca), Spain (opponent), represented by Ars Privilegium S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

L”Astemia Pentita S.r.l., Via Crosia, 40, 12060 Barolo (CN), Italy (applicant), represented by Buzzi, Notaro & Antonielli d’Oulx, Via Maria Vittoria 18, 10123 Torino, Italy (professional representative).

On 13/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 559 741 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 018 501. The opposition is based on Spanish trade mark registration No 2 378 426. The opponent invoked Article 8(1)(b) EUTMR.

DINAMICO	DINAMICO
Earlier trade mark	Contested sign

The contested European Union trade mark application No 14 018 501 covers goods in Class 33, namely preparations for making alcoholic beverages; alcoholic beverages (except beer), in particular, bitters; aperitifs; wine; fruit (alcoholic beverages containing-); pre-mixed alcoholic beverages, other than beer-based; cocktails; spirits and liquors; brandy; digestives; liqueurs; rum; vodka; whisky; distilled beverages.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, 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.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark No 2 378 426.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 15/05/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 15/05/2010 to 14/05/2015 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 02/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 07/04/2016 to submit evidence of use of the earlier trade mark. On 06/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• EXHIBIT 1:

• Bottle labels and photographs of bottles (some examples are shown below).

• EXHIBIT 2:

• Certificate issued by Interprofesión del Consejo Regulador de Denominación de Origen la Mancha (Regulatory Board of the Designation of Origin La Mancha). The opponent explains in its submissions that the certificate confirms that ‘Vialcon SA (Vinos y Alcoholes Conquenses Sociedad Cooperativa Agraria) owns the trademark DINAMICO and this trademark is attached to this Designation of Origin’.

• EXHIBIT 3:

• Extracts, dated 06/04/2016, from the opponent’s website www.vialcon.net (an example is shown below). According to the opponent, the wines ‘CENCIBEL and AIREN (a variety of wine under the trademark DINAMICO)’ can be purchased on its website.

In addition, the opponent explained that ‘VIALCON is formed by 13 cooperatives, 5 444 winegrowers of Cuenca …, who together boast 20 980 hectares of vineyard’ and ‘average annual production stands at around 121 million kilos of grape, with the predominance of the Airén variety (DINAMICO trademark)’. The opponent also stated that ‘DINAMICO wine (the varieties Airén and Cencibel) is sold through 5 444 winegrowers’.

Assessment of the evidence – factors

In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof of the place, time, and extent and nature of use has to be considered in view of the entirety of the evidence submitted.

Regarding the time of use, the evidence submitted is either undated or dated outside the relevant period (i.e. from 15/05/2010 to 14/05/2015 inclusive). Three of the labels on which the earlier trade mark appears refer to ‘year 2003’ (Exhibit 1), and the certificate issued by the Regulatory Board of the Designation of Origin La Mancha is dated 01/04/2016 (Exhibit 2). The printout from the opponent’s website is dated 06/04/2016 and the other documents do not give any dates (e.g. the pictures of bottles in Exhibit 1).

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.

Concerning the extent of use, the opponent did not provide any information on the commercial volume or territorial scope of frequency of use. In its observations of 06/04/2016, it states only that ‘the wine CENCIBEL and AIREN (a variety of wine under the trademark DINAMICO) can be bought through their website’ and that the ‘average annual production stands at around 121 million kilos of grape, with the predominance of the Airén variety (DINAMICO trademark)’. It should be noted that apart from the evidence listed above, the opponent did not submit any other evidence, such as invoices, price lists, turnover and sales figures, press cuttings or advertisements, from which the Opposition Division could draw a conclusion as to the extent of use of the earlier mark.

Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22). The opponent merely asserts without proving that goods under the earlier mark were actually offered and/or reached consumers in Spain.

Conclusion

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).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory, namely Spain, during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.

COSTS

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benjamin Erik WINSNER

Michal KRUK

Denitza STOYANOVA-VALCHANOVA

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.