CANCELLATION No 14 464 C (INVALIDITY)

Lionel Osmin, 14 rue des Bruyères, 64160 Morlaas, France (applicant), represented by Olivier de Baecque, 3, rue du Louvre, 75001 Paris, France (professional representative)

a g a i n s t

Estriacus, S.L., Mas dels Frares, s/n, 43736 El Molar (Tarragona), Spain (EUTM proprietor), represented by Ponti & Partners, S.L.P, C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative).

On 20/12/2018, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 15 010 614 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 15 010 614 ‘COMTE PIRENNE’ (word mark). The application is based on French trade mark registration No 3 455 745 ‘PYRENE’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the marks because the goods covered by the marks are identical and the marks are highly similar from a visual, aural and conceptual point of view. According to the applicant the differing element of the contested sign ‘comte’ is a nobility title which is commonly used in relation to wines and will not be paid much attention. In order to prove this, the applicant filed copies of trade mark results from eSearch and INPI databases containing the elements ‘Comte’, ‘Baron’ and ‘Marquis’ and Wikipedia entries for ‘Chateau Mouton Rothschild’ and ‘Chateau Pichon Longueville Comtesse de Lalande’. The applicant requests that the contested trade mark should be declared invalid.

The EUTM proprietor argues that the application for invalidity is unfounded and should be rejected. It requested that the applicant submit proof of use of the earlier trade mark registration, on which the application is based. According to the EUTM proprietor, regardless of the supposedly low distinctiveness of the contested mark, there is a clear difference between the marks, as the earlier registration refers to several characters in Greek mythology whilst the contested trade mark refers to a person, real or imaginary, who holds a nobility title. Therefore, there is no likelihood of confusion in this respect. The precedents mentioned by the applicant are not relevant because in all the cases quoted by the applicant ‘the second element of the contested trade mark is identical to the prior rights’, which cannot be said about ‘COMTE PIRENNE’ and ‘PYRENNE’. The declaration of invalidity should be rejected.

The applicant submitted evidence as proof of use and refutes the arguments of the EUTM proprietor. The earlier trade mark is distinctive. The application should be upheld.

The EUTM proprietor did not file further observations.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based, namely French trade mark registration No 3 455 745.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 08/02/2017. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in France from 08/02/2012 to 07/02/2017 inclusive. The date of filing of the contested trade mark is 18/01/2016. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 18/01/2011 to 17/01/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the application is based, namely:

Class 32: Beers, mineral and aerated waters.

Class 33: Alcoholic beverages.

Class 43: Services for providing food and drink.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 19/06/2017, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 24/09/2017 to submit evidence of use of the earlier trade mark.

On 19/09/2017, within the time limit, the applicant submitted evidence as proof of use.

The evidence consists of the following:

• Proof 1: Printout from the French web site lacavedescontrebandiers.fr showing PYRENE wine from 2016 and 2015 available for sale, including information about the applicant.

• Proof 2: Printout from the French web site lacavedescontrebandiers.fr showing PYRENE wine from vintage 2016 available for sale.

• Proof 3: Printout from the French web site of ‘Club des Dégustateurs de Grands Vins’ showing an article in relation to the 2014 vintage of the PYRENE wine. Page 3 of the printout states that ‘the 2014’s vintage of this wine is as good as the precedents’.

• Proof 4: Printout from HACHETTE’s wine guide web site showing that the 2011 vintage of the PYRENE wine appeared in its edition of 2013, and that the 2014 vintage of the PYRENE wine appeared in the guide’s edition of 2016.

• Proof 5: Printout from HACHETTE’s wine guide edition of 2016 showing the 2014 vintage of PYRENE wine.

• Proof 6: Photograph of a PYRENE vintage 2015 bottle of wine and labels thereof.

• Proof 7: Advertisement in ‘LEADER PRICE’ catalogue dated March 2013 showing, amongst other products, an offer for the sale of PYRENE wine.

• Proof 8: Selection of several invoices dated in the period August 2010 to February 2013 itemising the sale of PYRENE wine.

• Proof 9: Label for PYRENE 2011 wine.

• Proof 10: Article from www.lecourierdesud.ca about the PYRENE wine, vintage 2015 entitled ‘PYRENE cuvée marine 2015: a real delight for a small price’.

The evidence shows that the place of use is France. This can be inferred from the language of the documents (French), the currency mentioned (EUR) and the addresses in the invoices. Therefore, the evidence relates to the relevant territory. Most of the evidence is dated within and throughout the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices as well as the indirect information coming from independent sources such as the press articles, wine guides and sales advertisements provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Therefore, the Cancellation Division considers that the applicant has provided sufficient indications concerning the extent of the use of the earlier mark.

The evidence shows that the mark has been used as registered and as a trade mark.

Taking into account the evidence in its entirety, the Cancellation Division finds that although the evidence is not exhaustive, it does reach the minimum level necessary to establish genuine use during the relevant period in the relevant territory.

The earlier mark is registered for goods and services in Classes 32, 33 and 43. However, the evidence filed by the applicant does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 64(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.’

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

In the present case, the evidence proves use only for wine. These goods can be considered to form an objective subcategory of alcoholic beverages. Therefore, the Cancellation Division considers that the evidence shows genuine use of the trade mark only for the following goods: wine.

Therefore, the Cancellation Division will only consider the abovementioned goods in its further examination of the application.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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

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.

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

Class 33: Wine.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

Contested goods in Class 33

The contested alcoholic beverages (except beer) include, as a broader category, the applicant’s wine. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

PYRENE	COMTE PIRENNE
Earlier trade mark	Contested trade mark

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are word marks. The marks have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s). As regards the earlier mark it is clarified here that although it appears in the registration certificate as , according to the practice of INPI (National Institute of Industrial Property of France), when the registration certificate does not provide data on the type of the mark or when it is mentioned that it is in standard characters, it is still considered as a word mark and will be examined as such in this decision.

The verbal element ‘pyrene’ of the earlier mark stands for a solid polynuclear aromatic hydrocarbon extracted from coal tar. However, this meaning is very specific and will hardly be known by the average French consumer. Whether understood or not, the verbal element ‘PYRENE’ of the earlier mark has no descriptive, non-distinctive, allusive or otherwise weak meaning in the relevant territory. Therefore, the inherent distinctiveness of the earlier mark is normal in relation to the goods. The same reasoning applies to the verbal element ‘PIRENNE’ of the contested mark which has no specific semantic meaning. As to the word ‘comte’ included in the contested trade mark, it means count (noblemen rank). This meaning is not descriptive, allusive or otherwise weak in relation to the relevant goods and therefore, the inherent distinctive character of ‘comte’ is normal.

The EUTM proprietor mentions in its observations that the earlier trade mark will be associated with ‘several characters in Greek mythology’. However, the Cancellation Division doubts that such meaning is known by the average French-speaking consumers. The EUTM proprietor did not file any proof or indicate any source as to where this information comes from. Therefore, in the absence of any proof thereof, this argument is rejected as not well-founded.

According to the applicant, the element ‘comte’ is commonly used in relation to wines and will not be paid much attention. In order to prove this, the applicant filed copies of trade mark search results from eSearch and INPI databases with marks containing the elements ‘Comte’, ‘Baron’ and ‘Marquis’ and Wikipedia entries for ‘Chateau Mouton Rothschild’ and ‘Chateau Pichon Longueville Comtesse de Lalande’. In this regard, the Cancellation Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. As to the Wikipedia extracts, one of the extracts does not refer to ‘comte’ at all, whereas the other extract does not demonstrate in any way that ‘comte’ and ‘comtesse’ are descriptive, allusive or weak in relation to any particular characteristics of the goods. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ‘comte’.

Visually, the signs coincide in ‘P*REN*E’, which is nearly the totality of the earlier mark and nearly the totality of the second verbal element of the contested sign. The differences are in the second letters ‘Y’ vs. ‘I’ and in the doubled ‘N’ of the contested trade mark, which has no counterpart in the earlier mark. The signs also differ in the element ‘comte’ of the contested mark, which has no counterpart in the earlier sign. Although this element is placed in the beginning of the contested trade mark, the mentioned difference in this additional verbal element does not significantly divert the consumers’ attention from the longer element ‘PIRENNE’, being normally distinctive and nearly reproducing the only verbal element of the earlier trade mark ‘PYRENE’. Bearing in mind the foregoing, it is concluded that the degree of visual similarity between the signs is lower than average.

Aurally, the degree of similarity is considered to be above average, since the pronunciation of the normally distinctive elements, ‘PYRENE’ of the earlier mark, and ‘PIRENNE’ of the contested sign, is identical. The only difference is in the sound of the shorter element ‘comte’ of the contested mark, which has no counterpart in the earlier sign.

Conceptually, for the average French consumer neither ‘PYRENE’ nor ‘PIRENNE’ of the signs has any meaning. As mentioned above, ‘compte’ will be associated with the noble rank ‘count’. In that sense, ‘Comte Pirenne’ of the contested sign may be associated with a count called Pirenne. However, it should be noted that ‘Pirenne’ is a rare word and it is not a widespread or widely known (sur)name in France. Therefore, in view of the above, since for the majority of the public the earlier sign will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the applicant’s goods. The relevant goods are directed at the public at large and the level of attention is average.

The signs are visually similar to a lower than average degree and are aurally similar to an above average degree. They are not conceptually similar.

In the present case, it is considered that the differences between the signs are not capable to offset the degree of similarity between the signs and a likelihood of confusion exists. The similarities between the signs are on account of the only verbal and inherently distinctive element of the earlier mark, which coincides almost entirely with the second verbal element of the contested sign. Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

It should be noted that the earlier mark is aurally identical to the inherently distinctive second verbal element of the contested sign. This is particularly relevant in the present case. This is because the relevant goods are beverages and these are frequently ordered in noisy establishments (bars, nightclubs), and thus the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

The General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue.

Considering all the above, in an overall assessment of all relevant factors, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17), the Cancellation Division finds that there is a likelihood of confusion on the part of the public in relation to identical goods.

Therefore, the application is well founded on the basis of the applicant’s French trade mark registration No 3 455 745. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

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

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

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

The Cancellation Division

Judit NEMETH

Liliya YORDANOVA

Plamen IVANOV

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.