OPPOSITION No B 2 821 067

Viña Concha y Toro S.A., Nueva Tajamar 481, Piso 15, World Trade Center, Torre Norte, Las Condes, Santiago, Chile (opponent), represented by Marks & Clerk LLP, 15 Fetter Lane, EC4A 1BW, London, United Kingdom (professional representative)

a g a i n s t

Bingliang Hu, via del Popolino, 2, 59100 Prato, Italy (applicant).

On 16/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 821 067 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 15 174 006 ‘wine legend’ namely against goods in Class 33. The opposition is based on European Union trade mark registration No 3 199 395 ‘CASILLERO DEL DIABLO, WINE LEGEND’ and European Union trade mark registration No 6 666 044 . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

On 10/01/2018, the Opposition Division rendered a decision that resulted in the rejection of the opposition on the grounds that, even assuming that the earlier trade marks have the highest degree of reputation for wines, it was unlikely that the relevant public would make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

The decision was appealed (22/11/2018, R 452/2018‑2, Wine legend / CASILLERO DEL DIABLO, WINE LEGEND et al.). The Board considered that an evaluation of the strength of the marks’ reputation and of the degree of their distinctive character had not been undertaken. A global assessment taking into account these factors and the degree of similarity between the marks at issue and the nature and degree of proximity of the goods and services concerned had not been carried out either.

The Board’s decision annulled the contested decision insofar it rejected the opposition under Article 8(5) EUTMR and remitted the case to the Opposition Division for further prosecution.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 3 199 395.

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.

a) The goods and services

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

Class 33: Wines and sparkling wines.

The contested services are the following:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; commercial trading and consumer information services; advertising, marketing and promotional services.

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 opponent’s goods are alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. However, the applicant’s services include services rendered to a professional public by persons or organisations principally with the object of helping in the management of the business affairs, as well as services rendered by advertising establishments primarily undertaking communication to the public.

Commercial trading and consumer information services provide information and assistance for customers to make purchase decisions in the field of trade and business (08/06/2015, R 1881/2014‑2, V VIVI (FIG.MARK) / vivi et al., § 27; 29/09/2014, R 883/2014‑2, SERVICECLOUD, § 15; 16/05/2012, R 1143/2011‑2, SUNVOLT / SUN ULTRA et al., § 23; 26/03/2012, R 220/2011‑2, sunvolt (FIG. MARK) / SUNSOFT et al., § 24).

Nevertheless, the expression ‘commercial trading’ designates activities consisting of using the futures market primarily to hedge current business activities and that consumer information services designate services consisting of providing information to consumers in order to take a reasoned decision (of purchase) for them.

By their nature, services are generally dissimilar to goods. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, that is to say, movables or real estate. However, services are the provision of intangible activities.

The applicant’s services and the opponent’s goods have different purposes. In particular, they are usually not provided by the same undertakings and they are neither in competition nor complementary, even if they are related to some of the goods protected by the earlier mark. Finally, although the applicant’s consumer information services target the public at large and not business consumers, this fact alone is not sufficient to find these services similar to the opponent’s goods (01/07/2016, R 930/2015‑4, RabiddoG (fig.) / Rápido, § 10; 27/08/2018, R 82/2018‑5, RESET PRIORITY (fig.) / Reset et al., § 25).

Therefore, the contested goods and services have nothing in common. They belong to different areas of activity that are not directly related. They have different purposes and satisfy different needs and therefore they have completely divergent distribution channels. Consequently, these goods and services are dissimilar.

b) Conclusion

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.

The opposition will now be examined on the ground of Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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 will 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 for 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: 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.

c) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the United Kingdom for wines.

Reputation implies a knowledge threshold that 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 02/03/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in in the United Kingdom 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: Wines.

The opposition is directed against the following services:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; commercial trading and consumer information services; advertising, marketing and promotional services.

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 10/07/2017, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 A CD Rom with the following items:

o Item No 1: a trailer released in 2014 and available on the website http://www.winelegendmovie.com/english, The Wine Legend Casillero del Diablo.

o Item No 2: a TV spot, published on 07/09/2015, Wine Legend, Casillero del Diablo.

o Item No 3: a TV campaign of 2012, Casillero del Diablo Wine Legend Global.

o Item No 4: a commercial, published on 05/10/2011, Casillero del Diablo Manchester United.

 Appendix 1: an extract from the website www.imdb.com on the movie in item No 1 above, with a description of the storyline of the trailer that presents the century old legend of ‘CASILLERO DEL DIABLO’ as a modern day crime thriller.

 Appendix 2: extracts from the opponent’s website. One refers to the British magazine The Grocer, which recognised on 17/09/2013, the ‘WINE LEGEND’ trailer as its ‘Ad of the Week’ as well as to the ‘WINE LEGEND’S’ global advertising campaign. Another refers to several awards received in 2013 by ‘WINE LEGEND’ as advertising from publications and festivals in the UK and France.

 Appendix 3: an extract from the opponent’s website, showing ‘CASILLERO DEL DIABLO WINE LEGEND’ as one of the Official sponsors of the HSBC Women’s Champions Golf Tournament for 2014 and 2015.

 Appendix 4: extracts from the website www.excelsiorwines.com, showing a special edition of ‘CASILLERO DEL DIABLO’ wines labelled as ‘Manchester United Legendary Collection’ as well as press coverage in the UK online magazine www.mirror.co.uk, showing ‘CASILLERO DEL DIABLO’ as an official wine partner of the Manchester United Football Club for 2016.

 Appendix 5: copies of press releases from the online magazine www.harpers.co.uk for 2014, featuring ‘CASILLERO DEL DIABLO WINE LEGEND’S’ promotional campaign, which won the Best Consumer Campaign at the Harpers Awards 2014 as well as an article on the ‘WINE LEGEND’ UK tour that promoted the brand to one million UK consumers.

 Appendix 6: a press release from the online magazine www.thedrinksbusiness.com, dated 09/11/2015, highlighting the ‘WINE LEGEND’ TV campaign, which is said to have featured during various Channel 5 films, as well as on the Sky Channel Portfolio.

 Appendix 7: a copy of a case study, published on the website www.thinkbox.tv, discussing the partnership between the opponent and Sky TV to promote ‘CASILLERO DEL DIABLO’ and ‘CASILLERO DEL DIABLO WINE LEGEND’ wines where it is shown that in 2016, ‘CASILLERO DEL DIABLO’ was the sixth most popular wine brand in the UK.

 Appendix 8: an extract from the website www.cyt-uk.com, mentioning the awards that ‘CASILLERO DEL DIABLO WINE LEGEND’ campaign obtained in 2014.

 Appendix 9: extracts from Sainsbury’s online supermarket and photographs showing ‘CASILLERO DEL DIABLO WINE LEGEND’ on sale.

 Appendix 10: two pictures from the ‘WINE LEGEND’ campaign implementation, dated 2016, showing the opponent’s wines for sale.

 Appendix 11: articles from www.marieclaire.co.uk (undated) and the Evening Standard at www.standard.co.uk of 05/08/2013 featuring ‘CASILLERO DEL DIABLO WINE LEGEND’ wines.

 Appendix 12: extracts from the London-based communication agency Cube Communication www.cubecom.co.uk, showing images of the promotional campaign of the ‘CASILLERO DEL DIABLO WINE LEGEND’ wines.

On 10/05/2018, the opponent submitted to the Board of Appeal the following additional evidence that was considered admissible:

 A CD Rom with the following items:

o Item No 1: The Wine Legend Casillero del Diablo trailer, dated 2012.

o Item No 2: Wine Legend, Casillero del Diablo TV spot global campaign, dated 2015.

o Item No 3: Casillero del Diablo Manchester United commercial, dated 2011.

o Item No 4: UK-Channel 4 — Wine Legend, TV spot dated 2013.

o Item No 5: Casillero del Diablo Wine Legend Global TV campaign, dated 2012.

o Item No 6: Casillero del Diablo Wine Legend Global TV campaign, dated 2012 in the Netherlands.

o Item No 7: Casillero del Diablo Chilean Wine Legend TV spot, dated 2013 in the Netherlands.

 Exhibit 1: pictures of wine bottles bearing the mark ‘CASILLERO DEL DIABLO’, one of them on a poster in Dutch mentioning ‘Vin legenden’.

 Exhibit 2-1: copies of advertisements of ‘CASILLERO DEL DIABLO WINE LEGEND’ wines. Some are undated and some are dated in November and December 2013, in a publication titled ‘HBL’ in Dutch. Some other pictures were taken in public spaces such as undergrounds or supermarkets.

 Exhibit 2-2: copies of advertisements of ‘CASILLERO DEL DIABLO WINE LEGEND’ wines in The Irish Mail, dated 20/03/2016. Extracts from www.harpers.co.uk, dated 28/10/2014, mentioning that ‘CASILLERO DEL DIABLO’ enters the UK’s top 10 wine brands. Extracts from other webpages dated 2014 and 2015 on the ‘CASILLERO DEL DIABLO WINE LEGEND’ campaign.

 Exhibit 3-1: a document informing of the advertising street campaign of ‘CASILLERO DEL DIABLO’ in Belgium reaching 2.2 million people. It contains pictures of bottles on sale in shelves but there is no information on the dates of the campaign.

 Exhibit 3-2: a document informing of the advertising campaign of ‘CASILLERO DEL DIABLO WINE LEGEND’ in 2013 done by Richmond with pictures of bottles on sale on shelves in supermarkets such as Tesco, Dunnes or Londis.

 Exhibit 3-3: pictures of ‘CASILLERO DEL DIABLO’ bottles on sale on shelves in supermarkets such as Spar, Superquinn, Tesco, Dunnes or Londis. Some of the prices are marked in euros but there is no information on the dates.

 Exhibit 3-4: pictures of ‘CASILLERO DEL DIABLO WINE LEGEND’ bottles on sale on shelves in supermarkets in Ireland, in 2016. Extracts of a Facebook campaign of ‘CASILLERO DEL DIABLO WINE LEGEND’ in Ireland, in June 2016. Extracts of a street campaign in the UK of ‘CASILLERO DEL DIABLO WINE LEGEND’ mentioning 10 million viewers in 2014.

 Exhibit 3-5: a document informing of the advertising campaign in supermarkets in the UK of ‘CASILLERO DEL DIABLO WINE LEGEND’ in 2016.

 Exhibit 3-6: pictures of ‘CASILLERO DEL DIABLO WINE LEGEND’ bottles on sale on shelves in supermarkets in the UK with no dates.

 Exhibit 3-7: a document informing of the advertising campaign in supermarkets, press and media of ‘CASILLERO DEL DIABLO WINE LEGEND’ in 2013, in the UK.

 Exhibit 4: a list of the opponent’s ‘CASILLERO DEL DIABLO’ registrations worldwide with a translation of the expression ‘WINE LEGEND’ into several languages.

The abovementioned evidence indicates that the earlier trade mark has been intensively promoted from 2011-2016 and is generally known by the relevant public being the sixth most popular wine brand in the UK, in 2016. The opponent’s marketing efforts have received several awards from the press and had being aired on TV and at major sport events. The various references in diverse independent sources to the advertising campaign ‘Casillero del Diablo Wine Legend’ success suggest that the trade mark has a consolidated position in the market.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark ‘CASILLERO DEL DIABLO, WINE LEGEND’ 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. 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, for example, 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.

According to Article 8(5) EUTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for the EUTM, the relevant territory is the European Union. However, the Court has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice. The Court indicated that an EUTM must be known in a substantial part of the EU by a significant part of the public concerned by the goods and services concerned by that trade mark. When evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory (06/10/2009, C‑301/07, Pago, EU:C:2009:611).

On the basis of the above the Opposition Division concludes that the reputation of the earlier mark for wines is demonstrated at least throughout the United Kingdom, which constitutes a substantial part of the EU population. Therefore, reputation for wines is proven in the European Union.

d) The signs

CASILLERO DEL DIABLO, WINE LEGEND	wine legend
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

As the claim for reputation is considered proven throughout the United Kingdom, the analysis below can only focus on that public.

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).

Both signs are word marks. The earlier mark is the five-word mark ‘CASILLERO DEL DIABLO, WINE LEGEND’ and the contested sign is the two-word mark, ‘wine legend’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in upper- or lower-case letters.

The element ‘CASILLERO DEL DIABLO’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The common element ‘WINE LEGEND’ will be understood as ‘[a] traditional story sometimes popularly regarded as historical but not authenticated’ on ‘[an] alcoholic drink made from fermented grape juice’ by the relevant public (information extracted from Oxford English Dictionary online on 25/06/2019 at https://www.lexico.com/en/definition/legend and https://www.lexico.com/en/definition/wine).

Bearing in mind that the reputed opponent’s goods are wines, this element is non-distinctive for the goods as it is a laudatory expression that describes the allegedly legendary quality of the relevant goods. As regards the contested sign, bearing in mind that the relevant services relate to the business, trading and advertising sectors, the element ‘WINE LEGEND’ is weak for these services, as they can fall in any possible trade sector, including the wine sector and will be perceived as related to wines of legendary quality.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the words/sounds ‘WINE LEGEND’, present identically in both signs. However, they differ in the words/sounds of the distinctive element ‘CASILLERO DEL DIABLO’ in the beginning of the earlier mark, which has no counterpart in the contested sign.

Therefore, given the degrees of distinctiveness and the position of the elements in the marks, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as containing the laudatory expression ‘WINE LEGEND’, the signs are conceptually similar as far as this common element is concerned.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

e) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. 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 by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 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 degree of similarity between the signs is low, because the signs are visually and aurally similar to a low degree as the weak element ‘WINE LEGEND’ in the contested sign is entirely included as a non-distinctive element for wines in the earlier mark, and conceptually, the signs are similar in a weak or non-distinctive element depending on the goods or services covered.

Albeit the relevant reputed wines are dissimilar to the contested services relating to the business, trading and advertising, they are not restricted to any particular field and therefore, the contested services could fall in any possible trade sector, including the wine sector.

Consequently, there is a certain degree of proximity between these goods and services as all the contested services may fall in the wine trade sector. For example, the object of the contested services of advertising, marketing and promotional services may include a product such as wine, or the focus of the contested business assistance, management and administrative services may fall in the wine sector. Therefore, consumers might believe that they have the same commercial origin or come from related undertakings.

It follows that, having regard to the services in question in Class 35 and the opponent’s wine in Class 33, if they are provided under similar trade marks, the relevant consumers might believe that they have the same commercial origin or come from related undertakings (14/07/2011, R 1564/2010‑1, COLCHONERÍAS LA TIENDA HOME / EL CORTE INGLÉS LA TIENDA DEL HOGAR (fig.) et al., § 22).

The earlier trade mark enjoys some degree of reputation due to its intensive advertising campaign ‘CASILLERO DEL DIABLO, WINE LEGEND’.

However, the inherent distinctiveness of the earlier mark is not higher than average and it results from the distinctive words ‘CASILLERO DEL DIABLO’, rather than from the laudatory expression ‘WINE LEGEND’.

When consideration is given to the goods and services in question, it is clear that the similarities between the signs in dispute relate to elements that are not distinctive at least in the earlier mark. This is because the words ‘CASILLERO DEL DIABLO’ have no meaning for the relevant UK public, while the words ‘WINE LEGEND’ form a laudatory description of the relevant goods. Therefore, in view of the weak or non-distinctive character of the elements in question, the similarities between the contested sign and the earlier trade mark are unlikely to bring the earlier trade mark to the mind of the average consumer.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

The opponent has also based its opposition on EUTM No 6 666 044 , which is less similar to the contested mark due to its additional verbal and figurative elements, that are not present in the contested sign and covers the same goods. Therefore, the outcome cannot be different with respect to this other earlier mark.

COSTS

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

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Jessica LEWIS

Loreto URRACA LUQUE

Elena NICOLÁS GÓMEZ

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.