OPPOSITION No B 2 576 984

Codorníu S.A., Casa Codorníu s/n, 08770 Sant Sadurní d’Anoia (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Explotaciones Hermanos Delgado, S.L., C/ Villarrobledo, 37, 13630 Socuellamos, Spain (applicant), represented by Abance Patentes y Marcas, S.L., Paseo de Eduardo Dato, nº 16, 28010 Madrid, Spain (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 576 984 is partially upheld, namely for the following contested goods and services:

Class 33: Organic wine.

Class 35: Retailing, wholesaling and sale via global computer networks of organic wine.

2. European Union trade mark application No 14 204 821 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 204 821. The opposition is based on European Union trade mark registrations No 1 093 921 for the word mark ‘ANNA DE CODORNIU’ and No 11 790 144 for the figurative mark and on Spanish trade mark registrations No 1 044 521 for the word mark ‘ANNA DE CODORNIU’ and No 2 891 566 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Spanish trade mark registration No 2 891 566 for the figurative mark , for which the opponent claimed repute in Spain.

The goods for which the opponent has claimed that the earlier mark has a reputation are the following:

Class 33: Wines.

The contested goods and services are the following:

Class 33: Organic wine.

Class 35: Advertising and retailing, wholesaling and sale via global computer networks of organic wine, import and export of organic wine.

Class 39: Distribution, transport, storage and packaging of organic wine.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a figurative mark consisting of the word ‘ANNA’ and a figurative element above it depicting the head and shoulders of a woman in profile with her head covered by a foulard.

The contested sign is a figurative mark, consisting of the words ‘Organic’, ‘Finca’ and ‘Ana’ written over three lines in a stylised cursive typeface. The word ‘Organic’ is depicted in smaller letters than the words ‘Finca’ and ‘Ana’, which are the same size.

The word ‘ANNA’, present in the earlier mark, will be perceived as a variant of the female given name ‘Ana’ by the relevant Spanish public, since this is the Latin form of a common name widely used in this form in countries across Europe and around the world, as are its variants ‘Anne’, originally a French version of the name, ‘Ann’, which was originally the English spelling, and ‘Ana’, which is the Spanish version of the name. It has also been the name of numerous saints and queens. The figurative element of the earlier mark, depicting a woman’s head and shoulders, will be perceived as such and will reinforce the perception of the earlier mark as a reference to a woman named Anna.

The word ‘Organic’ in the contested sign will be perceived by the relevant public as an adjective denoting something ‘of, relating to, derived from, or characteristic of living plants and animals’, ‘of or relating to animal or plant constituents or products having a carbon basis’ or ‘of, relating to, or grown with the use of fertilizers or pesticides deriving from animal or vegetable matter, rather than from chemicals’, as it is very similar to its Spanish equivalent, ‘orgánico’. Bearing in mind that some of the relevant goods and services are organic wine and services directly related to the sale of organic wine to consumers, it is considered that this element is weak in relation to organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35, as it informs the public about the nature of the goods, that is, that they are organically farmed, or grown using fertilisers or pesticides deriving from animal or vegetable matter. Consequently, the relevant public will not pay as much attention to this element as to the other, more distinctive, elements of the mark. As a result, the impact of this element is limited when assessing the similarity between the marks in relation to these goods and services.

The word ‘Finca’ in the contested sign will be perceived by the relevant public as ‘a villa, estate or ranch’, as this is the meaning of the word ‘Finca’ in Spanish. Bearing in mind that some of the relevant goods and services are organic wine and services directly related to the sale of organic wine to consumers, it is considered that this element is weak in relation to organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35, as the relevant public will understand ‘Finca’ as merely a reference to the place in which the wine is produced. Consequently, the relevant public will not pay as much attention to this element as to the other, more distinctive, element of the mark, namely the element ‘Ana’. As a result, the impact of this element is limited when assessing the similarity between the marks in relation to these goods and services.

The word ‘Ana’ in the contested sign will be perceived as a female given name by the relevant Spanish public.

For some of the relevant services (i.e. advertising of organic wine, import and export of organic wine in Class 35 and distribution, transport, storage and packaging of organic wine in Class 39), the contested sign has no elements that could be considered clearly more distinctive than other elements. For the rest of the relevant goods and services (i.e. organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35), the most distinctive element of the contested sign is the word ‘Ana’, since the words ‘Organic’ and ‘Finca’ are weak for these goods and services.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The words ‘Finca’ and ‘Ana’ are the dominant elements of the contested sign as they are the most eye-catching and they overshadow the smaller verbal element ‘Organic’.

Visually, the signs coincide in the letters ‘AN*A’, which are included in the only verbal element of the earlier mark, ‘ANNA’, and form the third verbal element of the contested sign, ‘ANA’. However, they differ in the additional letter ‘N’ of the verbal element of the earlier mark and in the remaining words of the contested sign, ‘Organic’ and ‘Finca’. They also differ in their graphic depictions.

As regards the figurative element of the earlier mark, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This principle is fully applicable to the present case, in which the relevant public will clearly read and pronounce the verbal element ‘ANNA’ in the earlier mark and will readily use it to refer to the mark. Moreover, the figurative element, which depicts a woman’s head, may reinforce the perception of the earlier mark as a reference to a woman named Anna.

As seen above, the words ‘Finca’ and ‘Ana’ will have a stronger impact on the visual perception of the contested sign than the smaller element ‘Organic’, since they are the dominant elements of the sign. Moreover, the words ‘Organic’ and ‘Finca’ will have less impact on the public’s perception of the contested sign for some of the relevant goods and services due to their limited distinctiveness, while for the rest of the services all the elements of the contested sign have a normal degree of distinctiveness.

Consequently, taking into account all the elements of the marks that influence the consumer’s visual perception of them, the marks are visually similar to an average degree in relation to the goods and services for which the words ‘Finca’ and ‘Ana’ of the contested sign have limited distinctive character, and are visually similar to a low degree in relation to the remaining services, for which all the elements of the marks are distinctive to a normal degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‘ANNA’ in the earlier mark and ‘ANA’ in the contested sign, which will be pronounced identically irrespective of the additional letter ‘N’ in the earlier mark. The pronunciation differs in the sound of the first words, ‘Organic’ and ‘Finca’, of the contested sign. However, due to their limited distinctiveness in relation to organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35, these differing words will play a less important role in the aural perception of the mark for these goods and services.

Consequently, the marks are aurally similar to a high degree in relation to the contested organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35, for which the words ‘Organic’ and ‘Finca’ have limited distinctiveness. The marks are aurally similar to an average degree for the remaining services, for which all elements of the marks have a normal degree of distinctive character.

Conceptually, as seen above, the words ‘ANNA’ in the earlier mark and ‘ANA’ in the contested sign will be perceived as variations of the same female given name. This perception is reinforced by the image of a woman’s head in the earlier mark. The additional words in the contested sign, ‘Organic’ and ‘Finca’, will be understood with the meanings given above and will play a less important role in the overall impression conveyed by the mark due to their limited distinctive character in relation to organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35. Consequently, the marks are conceptually similar to a high degree in relation to these goods and services on account of the distinctive elements ‘ANNA’ and ‘ANA’, which will be perceived as referring to the same female name. The marks are conceptually similar to an average degree for the remaining services, for which all elements of the marks have a normal degree of distinctive character.

As the signs have been found similar in at least one aspect of the comparison, the examination will proceed.

2. Reputation of the earlier trade mark

According to the opponent, earlier Spanish trade mark registration No 2 891 566 has a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 05/06/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 33: Alcoholic beverages (except beers).

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 27/10/2015, the opponent submitted the following evidence:

• Enclosure 1: videos containing six advertisements for cava (Spanish sparkling wine), in Spanish, marketed under the sign ‘ANNA DE CODORNIU’ (clearly shown on the labels of the advertised cava). The advertisements are said to have been shown on Spanish television channels during 2006-2012.

• Enclosures 2 and 3: documents referring to awards won by the brand:

• a certificate for a ‘Gold Medal’ award won by ‘Anna Codorniu’ Blanc de Blancs Reserva Brut cava, issued by Effervescents du Monde in 2014, and a document indicating that Effervescents du Monde is an international competition among the best sparkling wines in the world and referring to the sparkling wine ‘ANNA DE CODORNIU BLANC DE BLANCS BRUT RESERVA’ bearing the label as one of the world’s top 10 sparkling wines;

• a certificate for a ‘Gold Medal’ award for cava won by wine under the mark ‘Anna de Codorniu Brut’ at the international wine competition Brussels Worldwide Championship 2012;

• a ‘Berlin Silver’ award won by wine under the mark ‘ANNA DE CODORNIU’ at the international wine competition Berlin Wine Trophy 2012; and

• a silver prize won by ‘Anna de Codorniu’ Blanc de Noirs sparkling wine in 2013 in the Vinari Awards, Catalonia.

• Enclosures 4-6 and 12: a number of publications, press cuttings and printouts of articles containing various direct or indirect references to the well-known character of the opponent’s sign ‘ANNA DE CODORNIU’, extracted from various national and local newspapers in Spain and published during 2008-2013. The opponent’s ‘ANNA DE CODORNIU’ cava is referred to as, inter alia, ‘the most prestigious “cava” wine’ (Diario de Pontevedra, dated 30/11/2008); one of the ‘most outstanding Catalan wine-production proposals for accompanying the Christmas meals’ (Avui, dated 19/12/2008); ‘a “cava” wine ranging between the best in Spain’ (Club de Gourmets, dated 01/01/2009); and ‘one of the most emblematic wines’ (El Periódico de Catalunya, Gourmets supplement, dated 17/06/2010). Furthermore, various articles report on awards won by ‘Anna de Codorniu’ cava. Some articles also mention ‘Anna de Codorniu’ advertising campaigns (e.g. ‘Successful case: the Christmas campaign of “Anna de Codorniu” achieved an increase of the market quota’, MarketingNews.es, dated 18/01/2012).

• Enclosure 7: a brief history and chronology of the Codorniu family and the mark ‘ANNA DE CODORNIU’, according to which it is part of a tradition going back five centuries.

• Enclosure 8: an undated price list and an undated brochure containing references to 2000, showing a wine bottle bearing the mark ‘ANNA DE CODORNIU’. This enclosure also includes an extract from the opponent’s website http://www.codorniu.es, dated 04/05/2010, showing cava bearing the mark ‘ANNA DE CODORNIU’.

• Enclosure 9: a certificate issued by the Spanish company Carat España, S.A.U., which was responsible for advertising campaigns for the mark ‘ANNA DE CODORNIU’, containing detailed information on the expenditure made by the opponent on these campaigns during 2006-2012. The certificate does not mention particular goods or services in relation to which the trade mark has been advertised.

• Enclosure 10: a list of results of a Google search for ‘ANNA DE CODORNIU’, which brought up 162 000 results. The images visible among the results show what appear to be wine bottles.

• Enclosure 11: a list of prizes and medals won by the opponent’s mark ‘ANNA DE CODORNIU’ in a number of Spanish national and international wine competitions during 2010-2012 (e.g. ‘International Wine Challenge’ in 2009, ‘Berliner Wine Trophy’ in 2008, ‘Gold Guide of Spanish Wines 2010’ in 2010 and ‘Guide of Wines of Catalonia’ in 2010).

• Enclosure 13: a social media report dated April 2013, containing references to social network profiles and pages of the brand ‘ANNA DE CODORNIU’, as well as information on the number of visits to and fans and followers of the various social network profiles and pages at different times between 2006 and 2012. For example, the ‘ANNA DE CODORNIU’ Facebook fan page (created in December 2010) has 21 510 fans. All the social network profiles and pages of the brand are in Spanish and some of them display images of wine bottles.

• Enclosure 14: a table providing information on the market share and degree of recognition of products marketed under the mark ‘ANNA DE CODORNIU’ from various studies, said to have been carried out by the companies IRI Infoescan H+S España and TNS. For instance, sales of the opponent’s products are said to have constituted 16.4% of the total value of cava sold in Spain in March 2013 and the opponent’s brand recognition was 75.4% in January 2013.

• Enclosure 15: undated extracts from the Facebook fan page for the opponent’s mark ‘ANNA DE CODORNIU’, in Spanish, with translations into English, containing references to several social events where the opponent’s mark ‘ANNA DE CODORNIU’ was presented or promoted. It is clear from these extracts that some of the events were held in Barcelona, Spain. These documents do not mention particular goods in relation to which the earlier mark has been used.

• Enclosure 16: printouts from the opponent’s website www.elmundodeanna.com, in Spanish, with translations into English, of news updates and competition announcements, some of which refer to events held in Barcelona, Spain, dated between 15/02/2013 and 03/04/2013, mentioning the mark ‘ANNA DE CODORNIU’ in relation to cava.

• Enclosures 17-18: a set of images, advertising posters and product descriptions demonstrating use of the opponent’s mark ‘ANNA DE CODORNIU’ on wine bottles and labels.

• Enclosure 19: a research report entitled ‘A global and strategic vision of the “cava” wine market’, dated February 2013 and issued by the company TNS. The report contains information on the public’s spontaneous and assisted awareness of the mark ‘ANNA DE CODORNIU’, showing that awareness (spontaneous or assisted) increased from 72.4% in 2012 to 75.4% in 2013.

The majority of the evidence is formed of a variety of publications, press cuttings, video and print advertisements and printouts from various websites that show that the mark ‘ANNA DE CODORNIU’ was widely advertised in Spain at least between 2008 and 2014, that is, before the filing date of the contested mark, namely 05/06/2015.

The press cuttings refer to the opponent’s growth and performance, its investments in the trade mark ‘ANNA DE CODORNIU’, its promotional, communication and marketing strategies, and the medals and awards won by its mark. Some of the publications mention the opponent’s products under the mark ‘ANNA DE CODORNIU’ as some of the most outstanding Catalan wines or refer to the products bearing that mark as quality or gourmet wines. Some of the publications also mention festivals and events sponsored by the brand ‘ANNA DE CODORNIU’. These publications and press cuttings make various direct and indirect references to the well-known character of the opponent’s mark ‘ANNA DE CODORNIU’.

Furthermore, it can be inferred from the certificate issued by the company Carat España, S.A.U., that the opponent has spent a considerable amount of money on promoting its mark ‘ANNA DE CODORNIU’. The overview of the opponent’s global expenditure on marketing and promoting its mark includes the following results: EUR 2.39 million spent in 2006, EUR 2.88 million in 2007, EUR 2.19 million in 2008, EUR 2.64 million in 2009, EUR 4.15 million in 2010, EUR 2.80 million in 2011 and EUR 2.27 million in 2012. According to the certificate, the total amount spent on advertising and promotional activities during these seven years is EUR 19.31 million.

Although promotional activities are usually not sufficient on their own to establish that a mark has indeed acquired a reputation, in the present case these activities in various media show that the opponent has taken steps to build up a brand image and enhance trade mark awareness among the public. Therefore, the opponent’s intensive and widespread promotional campaigns are a strong indication that the mark has acquired a reputation among the consumers of the goods in question. The effects of this investment are reported in the TNS research on the cava market, which, although not fully translated, still clearly indicates a high degree of awareness of the opponent’s mark ‘ANNA DE CODORNIU’.

Moreover, the list of many national and international awards won by the mark ‘ANNA DE CODORNIU’ for cava (which is supported by the various international award certificates submitted by the opponent and by the references to such awards in the press cuttings) is also considered an important item of evidence for demonstrating reputation, together with the advertising investment figures, the number of articles appearing in different Spanish publications and the active presence of the earlier marks ‘ANNA DE CODORNIU’ in various social networks and on various websites.

It is, therefore, clear from the evidence submitted that the opponent has made considerable financial investments in marketing, advertising and promoting its ‘ANNA DE CODORNIU’ trade mark, inter alia, in the press, on television and using outdoor media. It has done so for a prolonged period and intensively across Spain.

Consequently, the evidence submitted by the opponent indicates that the trade mark ‘ANNA DE CODORNIU’ has been used for a substantial period in relation to cava, that is, Spanish sparkling wine. The abovementioned evidence suggests that it has a consolidated position in the market and demonstrates that the opponent has made intensive and long-standing use of its mark in Spain and that the mark ‘ANNA DE CODORNIU’ is widely known by the public in the relevant territory for sparkling wines.

The opponent claimed reputation for, inter alia, earlier Spanish trade mark registration No 2 891 566 for the figurative mark . As seen above, the documents submitted refer mostly to sparkling wines (i.e. cava) under the sign ‘ANNA DE CODORNIU’.

Use of a trade mark in a form other than that in which it is registered, or in conjunction with other marks, may lead to an alteration of the distinctive character of the mark under assessment. Cases may arise where the distinctive character is sufficiently altered that the reputation gained by the altered form of the mark does not exist also for the version of the mark as it appears on the register. However, the mere fact that a mark is used in an altered form does not prevent the registered form of the mark from gaining a reputation. The legal assessment of reputation remains the same, namely it is an assessment of whether or not the registered form of the mark has become known by a significant part of the public for the products or services covered by that trade mark.

The Court has held on numerous occasions that the mere fact that a mark was used in combination with other marks, or as subpart of a larger mark, does not affect the proprietor’s capacity to acquire rights in relation to the minor mark (see, in relation to acquired distinctiveness, 07/07/2005, C‑353/03, Have a break, EU:C:2005:432, § 25‑30).

In the present case, the actual use of the opponent’s marks on the market can be inferred from the documents submitted, where it is clear that the sign ‘ANNA DE CODORNIU’ is used as a reference to cava or is used together with the silhouette of a woman on labels of bottles of cava: . The evidence submitted does not demonstrate extensive use of the opponent’s mark on its own, but shows the name ‘ANNA’ in combination with the surname ‘DE CODORNIU’ in most cases.

Consequently, it has to be assessed whether or not the use of the sign together with the element ‘DE CODORNIU’ as shown in the evidence ( ) constitutes such a change in the distinctive character of the mark that the reputation gained by the altered form of the mark does not exist also for the version of the mark that appears on the register. Since it is claimed that the mark has a reputation in Spain, the assessment will focus on the relevant Spanish consumers.

The earlier mark as registered, , is composed of the name ‘ANNA’ and, above it, a drawing of a woman’s head. The name ‘ANNA’ is a female name and, although its variation with one ‘N’, ‘ANA’, is more common in Spain, the relevant Spanish consumers will see it in any event as a female name. The figurative element of a drawing of a woman will most probably be perceived as a depiction of the person to whom the name refers.

On the other hand, the sign used by the opponent on most of the labels of bottles of cava shown in the evidence, , is composed of the first name ‘ANNA’ in combination with the composite surname ‘DE CODORNIU’, and, above the verbal elements, the same drawing of a woman’s head. Most of the images of the products show that the opponent’s products have been marketed in the following way:

Nevertheless, some of the images of cava bottles and labels from 2014 show use of the sign also in the following way: . Some of the publications also refer to the opponent’s campaign ‘Anna es única’ (‘Anna is unique’). The word ‘ANNA’ is also featured independently on the neck of all the ‘ANNA DE CODORNIU’ cava bottles. It also forms part of the larger ‘ANNA DE CODORNIU’ mark, which is used on bottle labels in conjunction with the figurative device. The words ‘ANNA’ and the device of a woman’s head are used on their own in some cases, followed by the indication ‘CODORNIU’ below them, used as a separate ‘house mark’, and they are used in combination with ‘DE CODORNIU’ in other cases. As a result of the continuous and intensive use of the opponent’s signs, the brand has become one of the most valuable cavas on the market in Spain. The sign ‘ANNA’ with the figurative element of a woman’s silhouette appears in multiple places on the products and in advertising. Consequently, the addition of the element ‘De Codorniu’ does not prevent the mark as registered from gaining a reputation.

The Court has held that acquisition of distinctive character may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In such cases it is sufficient that, in consequence of such use, the relevant consumers actually perceive the goods or services designated by that mark as originating from a given undertaking (07/07/2005, C‑353/03, Have a break, EU:C:2005:432, § 25-30).

Applying those principles to the present case, and taking into account the evidence of widespread sales and marketing of the opponent’s products, it can be concluded that the altered form in which the mark has been used does not affect the distinctive character of the mark sufficiently to prevent it from gaining a reputation.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that earlier Spanish trade mark registration No 2 891 566 for the figurative mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation in relation to sparkling wines in Class 33. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

The goods for which the earlier mark has a reputation are the following:

Class 33: Sparkling wines.

The contested goods and services are the following:

Class 33: Organic wine.

Class 35: Advertising and retailing, wholesaling and sale via global computer networks of organic wine, import and export of organic wine.

Class 39: Distribution, transport, storage and packaging of organic wine.

In the present case, the signs under comparison are similar to the extent that the verbal element of the earlier mark, ‘ANNA’, and the third verbal element of the contested sign, ‘ANA’, are highly similar and constitute variations of the same female given name. These elements are independent and clearly recognisable elements in the marks. Furthermore, the earlier mark is inherently distinctive for the relevant goods and, moreover, enjoys a high degree of recognition and reputation for the abovementioned goods. The element ‘ANA’ of the contested sign is the most distinctive element of that mark in relation to organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35.

There is a connection between some of the contested goods and services, namely the contested organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35, and the opponent’s sparkling wines, for which the earlier mark has a reputation. The goods in question are identical, since the contested organic wine overlaps with sparkling wines, for which the earlier mark is reputed. The contested retailing, wholesaling and sale via global computer networks of organic wine in Class 35 consist of services around the actual sale of organic wine to consumers. This activity involves, inter alia, the selection of an assortment of goods offered for sale, in the present case organic wines, and offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor. Although the natures, purposes and methods of use of the opponent’s goods and these contested services are not the same, they are related, as they are complementary and the contested services are generally offered in the same places where the opponent’s goods are offered for sale. Furthermore, they target the same public. Consequently, these services are closely related to the opponent’s sparkling wines, for which the earlier mark is reputed. Therefore, it is likely that the contested mark would bring the earlier mark to the mind of the relevant public in relation to the abovementioned goods and services.

Regarding the remaining contested services, namely advertising of organic wine, import and export of organic wine in Class 35 and distribution, transport, storage and packaging of organic wine in Class 39, it is possible that the relevant section of the public for the goods and services covered by the conflicting marks is the same or overlaps to some extent. However, this circumstance does not mean that a link would necessarily be established in the consumer’s mind, since these services are not closely related to the opponent’s goods. For the purposes of assessing whether there is a link between the marks at issue, it may therefore be necessary to take into account the similarity between the signs and the strength of the earlier mark’s reputation. The earlier mark enjoys a reputation for sparkling wines in Class 33. The goods and services in conflict are of a different nature and have different purposes. They have completely divergent distribution channels, target consumers with different needs and are offered by different companies or suppliers. A person seeking advertising services, transport services or any of the other contested services mentioned above is unlikely to call to mind the opponent’s brand, which is reputed for sparkling wines. These sectors have little in common, and require different skills and infrastructure. For example, advertisers need to understand psychology, art and language, whereas winemakers understand terroir, botany and the chemical processes required to manufacture and age a wine. Similarly, the entities that produce wine do not provide storage or transport services. They may well require goods to be transported, often with the involvement of customs authorities in both the country of import and the country of export, but this is usually handled by an external company hired because it specialises in this field. Even when the contested services are provided by a wine-producing entity, the entity generally takes the form of a cooperative organisation, that is, a jointly owned community business, owned and managed by the people who use its services, and which operates among certain wine producers in order to provide to its members services at an economy of scale, services that they would not be able to avail themselves of independently. It is rare for an individual vineyard or a wine producer to also provide, for example, advertising or transportation services to third parties. Similarly, a vineyard is unlikely to use another vineyard’s storage facilities, since those facilities, namely cellars, in fact contribute to the wine itself, as a result of the environmental conditions during storage. Simply put, the contested services may be provided to wine producers, but they are not provided by wine producers. Therefore, any link between the two is unlikely to be formed.

The marks are similar due to the similar elements ‘ANNA’ and ‘ANA’. While this is sufficient to trigger a link between the marks in relation to identical goods and services or goods and services that are similar to a low degree, this similarity has a weaker effect in relation to the dissimilar services mentioned above. Moreover, in relation to these services, the contested sign contains additional distinctive elements that differentiate the marks, since the words ‘Organic’ and ‘Finca’ have a normal degree of distinctiveness in relation to these services. For the word ‘ANA’ to form a link between such dissimilar services, the reputed mark would have to have a very strong reputation. Although the earlier trade mark enjoys a reputation for sparkling wines, the degree of the earlier mark’s reputation demonstrated by the opponent does not imply that it is of such a strength that it could produce effects beyond the relevant market sector and trigger a link between signs in completely different areas of the economy, such as the abovementioned sectors. It is unlikely that, when intending to purchase the contested services in Classes 35 and 39 mentioned above, the relevant public would link them to a trade mark that has a reputation for wines. Therefore, it is unlikely that the contested mark would remind the relevant consumer of the earlier mark in relation to advertising of organic wine, import and export of organic wine in Class 35 and distribution, transport, storage and packaging of organic wine in Class 39.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark in relation to organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96). Consequently, the Opposition Division will further assess whether the opponent has submitted facts, arguments or evidence that could support the conclusion that the use of the contested trade mark in relation to organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35 would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark.

On the other hand, no such link exists in the mind of the relevant consumer when encountering the contested sign used for the rest of the contested services. Therefore, given that the relevant public is unlikely to establish a link between the trade marks at issue in relation to advertising of organic wine, import and export of organic wine in Class 35 and distribution, transport, storage and packaging of organic wine in Class 39, it is considered that the opposition is not well founded under Article 8(5) EUTMR and must be rejected in relation to these services.

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent claims that the relevant consumers would associate the contested sign with the well-known trade mark ‘ANNA’ and that the use of the contested trade mark without due cause would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark, since the opponent’s trade mark is highly reputed.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods and services, for which a link has been established:

Class 33: Organic wine.

Class 35: Retailing, wholesaling and sale via global computer networks of organic wine.

As seen above, the earlier trade mark was found to have a reputation for sparkling wines in Class 33.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

Consumers would associate the marks at issue with each other because the awareness of the consumers of the goods sold under the earlier mark is extremely high. The applicant would exploit through this association the reputation of the earlier mark, since it would not be necessary to incur significant advertising expenses to promote its mark. As a result, the applicant would unfairly avoid the high costs of introducing a new mark onto the market. The opponent claims, furthermore, that the applicant would ‘free ride’ on the attractive powers and reputation of the opponent’s mark, as these would be transferred to the mark applied for with the result that the marketing of those goods would be made easier by the association with the earlier mark. The opponent believes that consumers will purchase the goods bearing the contested mark solely because of the association with the image of the reputed earlier mark. Consequently, the applicant would benefit from the power of attraction, the reputation and the prestige of the earlier mark and would exploit the marketing effort made by the opponent in order to create and maintain the mark’s image.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

As seen above, there is a link between the signs. The signs are similar and there is a clear relationship between the reputed figurative mark for sparkling wines and the contested organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35; these goods and services may target the same relevant public.

Considering the similarity between the signs and the relationship between the goods and services at issue, there is a high probability that the use of the mark applied for, for the goods concerned, may lead to free-riding, that is to say, it would take unfair advantage of the reputation of the trade mark and the investments undertaken by the opponent to achieve that reputation. For example, the trade mark applied for could be more attractive to consumers due to the reputation of the earlier mark and, therefore, could facilitate the marketing of the abovementioned goods and services covered by the applicant’s mark, or the applicant might unfairly benefit from the reputation of the opponent’s mark. It seems inevitable that the image of the earlier mark and its reputation for quality wines, as demonstrated in the evidence submitted, would be transferred to the aforementioned goods and services of the applicant, if they were marketed under the contested sign, since a link might be established between them. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s mark in the minds of consumers.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark in relation to organic wine in Class 33 and retailing, wholesaling and sale via global computer networks of organic wine in Class 35.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark in relation to the goods and services for which a link has been established. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods and services:

Class 33: Organic wine.

Class 35: Retailing, wholesaling and sale via global computer networks of organic wine.

Therefore, the contested trade mark must be rejected for the abovementioned contested goods and services.

The opposition is not successful insofar as the remaining services are concerned.

The opponent has also based its opposition under Article 8(5) EUTMR on the following earlier trade marks: European Union trade mark No 1 093 921 and Spanish trade mark No 1 044 521, both for the word mark ‘ANNA DE CODORNIU’, and European Union trade mark No 11 790 144 for the figurative mark . For all these marks, the opponent has claimed reputation in Spain in relation to wines in Class 33.

The evidence for reputation of these earlier marks is that already analysed above, referring to the same goods, namely sparkling wines in Class 33. Consequently, even if these trade marks also have acquired a reputation in relation to sparkling wines in Class 33, the above considerations as regards the link between the opponent’s wines in Class 33 and the contested advertising of organic wine, import and export of organic wine in Class 35 and distribution, transport, storage and packaging of organic wine in Class 39 remain valid. These goods and services belong to completely divergent market sectors. Moreover, these earlier marks, while featuring the verbal element, ‘ANNA’, which is similar to the contested sign’s verbal element, ‘ANA’, all have other elements that further differentiate them from the contested sign. Therefore, it is unlikely that the contested mark would remind the relevant consumer of the abovementioned earlier marks in relation to advertising of organic wine, import and export of organic wine in Class 35 and distribution, transport, storage and packaging of organic wine in Class 39. No link exists in the mind of the relevant consumer when encountering the contested sign used for these services.

Consequently, the examination continues in relation to the remaining grounds of the opposition, namely Article 8(1)(b) EUTMR in relation to the services for which the opposition is not well founded under Article 8(5) EUTMR, namely advertising of organic wine, import and export of organic wine in Class 35 and distribution, transport, storage and packaging of organic wine in Class 39.

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.

1. The goods and services

The goods on which the opposition is based are the following:

European Union trade mark No 1 093 921 and Spanish trade mark No 2 891 566

Class 33: Alcoholic beverages (except beers).

Spanish trade mark No 1 044 521

Class 33: Sparkling wines, and, in general, wines, spirits and liquors.

European Union trade mark No 11 790 144

Class 33: Alcoholic beverages, excluding beer; wines and sparkling wines; liqueurs; spirits [beverages]; brandy.

The contested services for which the opposition is unsuccessful under Article 8(5) EUTMR are the following:

Class 35: Advertising of organic wine, import and export of organic wine.

Class 39: Distribution, transport, storage and packaging of organic wine.

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 advertising of organic wine consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Although the contested services may be provided to companies that manufacture the applicant’s goods in Class 33 (e.g. these goods may appear in advertisements), this is insufficient for a finding of similarity between these goods and services. Their natures and intended purposes are clearly different. Furthermore, they are neither in competition with each other nor complementary. In addition, the abovementioned contested services in Class 35 and the opponent’s goods will not have the same providers, since the contested services require knowledge that is fundamentally different from the knowledge necessary to manufacture the opponent’s goods. Therefore, the contested advertising of organic wine is dissimilar to the opponent’s goods in Class 33.

The contested import and export of organic wine relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services of goods. Their nature and intended purposes are clearly different. Furthermore, they are neither in competition with each other nor complementary. In addition, the applicant’s services in Class 35 and the opponent’s goods will not have the same providers, since the contested services require knowledge that is fundamentally different from the knowledge necessary to manufacture the opponent’s goods. Therefore, the contested import and export of organic wine and the opponent’s goods in Class 33 are dissimilar.

Contested services in Class 39

The contested distribution, transport, storage and packaging of organic wine are not considered similar to the opponent’s goods in Class 33. The contested services are mainly services intended to transport goods from one place to another and services necessarily connected with such transport, as well as services relating to the packing and storing of goods in a warehouse or other building for their preservation or safe keeping. The opponent’s goods in Class 33 are alcoholic beverages. Apart from being different in nature, given that the contested services are intangible whereas goods are tangible, they serve different needs. The contested services are provided by specialist companies whose business is not the manufacture and sale of the goods that are transported, distributed or stored. The purpose and method of use of these goods and services are different. They do not have the same distribution channels and they are not in competition. Therefore, they are dissimilar.

2. Conclusion

Article 8(1)(b) EUTMR states that ‘the trade mark applied for shall not be registered: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’ (emphasis added).

Therefore, according to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks enjoyed a high degree of distinctiveness for some of the goods. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

COSTS

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Frédérique SULPICE

Alexandra APOSTOLAKIS

Ric WASLEY

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.