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OPPOSITION DIVISION |
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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
DECISION:
1. Opposition
No B
Class 33: Organic wine.
Class 35: Retailing, wholesaling and sale via global computer networks of organic wine.
2. European
Union trade mark application No
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 
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.
The signs
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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.
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: