OPPOSITION No B 3 048 622

Cristal Liminana Distillerie de la Méditerranée, 99/101 Bd Jeanne d'Arc, 13005 Marseille, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt CS 90017, 92665 Asnières-sur -Seine, France (professional representative)

a g a i n s t

Distillerie Franciacorta S.P.A., Via Tucidide, 56/bis - Torre 2, 20134 Milano Italy (applicant), represented by PGA S.P.A., Via Mascheroni 31, 20145 Milano, Italy (professional representative).

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

DECISION:

1. Opposition No B 3 048 622 is upheld for all the contested goods.

2. European Union trade mark application No 17 559 411 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods (Class 33) of European Union trade mark application No 17 559 411 for the word mark ‘CRYSTAL BLACK’. The opposition is based on French trade mark registration No 3 204 886 for the word mark ‘CRISTAL’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, 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.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the aforementioned French trade mark on which the opposition is based.

In the present case, the contested trade mark was filed on 05/12/2017. However, the contested trade mark has a priority date of 13/07/2017.

The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 13/07/2012 to 12/07/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 33: Alcoholic beverages (except beers and wines).

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 26/10/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 31/12/2018 to submit evidence of use of the earlier trade mark. This deadline has been extended until 28/02/2019 upon the opponent’s request. On 28/02/2019, within the given time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Several invoices issued by the opponent to third parties with address in France, i.a. to the retailers such as Carrefour, Auchan or Casino, between 2013 and 2017. The invoices are in French, however the reference to the earlier trade mark is clear, as they include the word ‘CRISTAL’ such as follows: . (Annex 1)

• Several purchase orders and delivery notes issued between 2015 and 2016. The documents are in French, however the reference to the earlier trade mark is clear, as they include, for example, the following indications ‘CRISTAL ANIS 100CL 45°X6’, ‘ANIS CRISTAL (KLP) LITRE 45°, ‘CRISTAL 100’, CRISTAL ANIS’. (Annex 2)

• Extracts from various leaflets, including i.a. the products bearing the mark ‘CRISTAL’ while the description such as CRISTAL ANIS’ is often included e.g. leaflets from retailers such as CASINO from July/August 2012, April and May 2013, METRO from July/August 2014. (Annex 3)

• A sample of orders from third parties from e.g. 2013, 2014 or 2015. These orders are addressed to the opponent, are in French, however it is very clear that they refer to the product named ‘CRISTAL’ as the description of the products includes e.g. the following: , . , , . In addition, a partial translation into English of some of those docuements has been provided by the opponent. (Annex 4)

• Press clips: Majority undated, in French however, from many it is possible to understand that they refer to the alcohol with the anis flavour and named ‘CRISTAL’. Often the photos of the product are included. Some of the articles are dated, for example, article published in the magazine ‘busi@ws’ is from July/August 2014. The photo of the product is included and the title is ‘CRISTAL LIMINANA’. Another article was published on the website http://www.mymarseille.com/lemag/2015/10/07/cristal-liminana-boissons-aniseesmarseillaises/, it is from 07/10/2015 and a reference to the brand ‘CRISTAL’ as well as the type of products is clear when the article starts as ‘Spécialisée dans le Cristal Anis…’. (Annex 4)

• Undated photos of the products on the shelfs, which according to the opponent are from various shops in France such as Casino, exhibitions such as Carrefour tradeshow in Paca region of France from 24/11/2014. These documents originate from the opponent. (Annex 5)

The applicant argues that the evidence submitted does not comply with Article 55 EUTMDR (referring to structured submission of the evidence). According to the applicant since the page numbering of the documents was missing it was extremely hard to evaluate them. Although, the evidence submitted could have include the page numbers, which would be more reader friendly, the fact remains that the opponent provided description of the attachments submitted and the attachments were numbered, which allowed the Opposition Division to identify the evidence as well as to establish to which ground or argument the respective evidence refers. Therefore, the applicant’s argument in relation to the lack of structure and indexing of the evidence submitted must be set aside.

The applicant furthermore argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, mainly the invoices, leaflets, orders and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. In addition, it is noted that the opponent provided a partial translation in relation to some of the submitted (and relevant) documents.

Apart from the above, the applicant also claims that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

It must be pointed out that the applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The aforementioned documents show that the place of use is ‘France’. This can be inferred from the language of the documents (French), the currency mentioned (Euro) and the addresses e.g. on the invoices and orders. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. Although some of the relevant evidence, for instance the photos of the products are undated, it has to be noted that, when assessed in its entirety the evidence contains sufficient proof that the goods bearing the earlier trade mark were distributed within 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 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, in particular the invoices and order notes in combination with the leaflets and the photos of the products bearing the earlier mark, provide the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period and prove that use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier French trade mark is registered as a word mark ‘CRISTAL’. A big part of the evidence (e.g. the invoices, the orders, the references in the press), shows the use of the mark as ‘CRISTAL ANIS’. Considering the goods at issue, the descriptive character of the word ‘anis’ is without any doubt (see https://www.larousse.fr/dictionnaires/francais/anis/3603?q=anis or https://dictionary.cambridge.org/dictionary/englishanise) as the element ‘ANIS’ will be perceived as an ingredient of a drink or as a type of a drink (namely as a French or Spanish liqueur flavoured with aniseed).

A part of the evidence shows the use of ‘CRISTAL BLEU’ or ‘CRISTAL ROSE’, however as the opponent points out, and also supports by providing some evidence, the colours are commonly used in relation to (alcoholic) drinks in order to refer to their colour. As such the words ‘bleu’ and ‘rose’ are descriptive. The leaflets show the products bearing a figurative mark, including the word mark concerned, nevertheless, the reference to either the word ‘CRISTAL’ or ‘CRISTAL ANIS’ is always present in the description of the relevant products. In addition, it is noted that a word mark may be used with different scripts and colours. Moreover, nothing in the stylisation of the mark on the shown goods prevents consumers from clearly reading the represented verbal component. The invoices or orders include a few other elements next to the word ‘CRISTAL’ such as ‘45°’, ‘VOL’ and ‘100CL’, yet it is clear that these are descriptive terms informing about the characteristics of the relevant goods.

Hence the addition of the abovementioned words to the word ‘CRISTAL’ or its use as a part of a figurative mark does not alter its distinctive character. Therefore, the Opposition Division considers that the evidence does show use of the earlier mark as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

Considering the above, the documents filed, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of its earlier trade mark.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of 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 sub‑categories 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 sub‑category or sub‑categories 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, § 45‑46.)

In the present case, the evidence proves use for anise [liqueur]. These goods can be considered to form an objective subcategory of the opponent’s alcoholic beverages (except beers and wines), namely spirits and liquors.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the spirits and liquors in Class 33. Consequently, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

The goods on which the opposition is based and for which the use has been proven, are the following:

Class 33: Spirits and liquors.

The contested goods are the following:

Class 33: Liqueurs based on liquorice.

The contested liqueurs based on liquorice are included in the broad category of the opponent’s spirits and liquors. Therefore, they are identical.

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 average, as alcoholic beverages are in general everyday consumer goods, which are usually subject to widespread distribution, ranging from the food section of supermarkets, department stores and other retail sales outlets, to restaurants and cafés (see, to that effect 24/11/2016, T‑250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 25 and the case-law cited or 19/01/2017, T‑701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 22 and the case-law cited therein).

3. The signs

CRISTAL	CRYSTAL BLACK
Earlier trade mark	Contested sign

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 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 word ‘CRISTAL’ forming the earlier mark is the French term used i.a. to refer to a glass containing a significant proportion of lead oxide, of higher density, refractive index, brightness and clarity, than other glasses. French consumers will attribute this same concept to the word ‘CRYSTAL’ in the contested sign (being highly similar in spelling and aurally identical to ‘cristal’ – see comparison below).

The applicant points out also to the following meanings of the word ‘cristal’ - solide dont la structure atomique est ordonnée et périodique dans les trois directions de l'espace, in English ‘a solid whose atomic structure is ordered and periodic in all three directions of space’ and ‘objet de cristal ou assimilé, et, en particulier au pluriel, verrerie de table: Des cristaux de Bohême in English ‘object of crystal or similar, and, in particular in the plural, table glassware: Bohemian crystals’ see https://www.larousse.fr/dictionnaires/francais/cristal/20534?q=cristal#20425.

The Opposition Division notes that even if the words ‘CRYSTAL’/’CRISTAL’ could be seen as evocative, when perceived in conjunction with the goods involved, these words are in no way descriptive of the characteristics of said goods, and therefore their evocative character, if perceived at all, does not affect their degree of distinctive character, which is considered average (this line of reasoning follows the judgment of 24/04/2007, C-131/06 P, CRISTAL CASTELLBLANCH, EU:C:2007:246.P, §54)

As regards the second verbal element ‘BLACK’ of the contested sign, it is noted that the word ‘black’ is an elementary, basic English word, and at the same time, a basic colour. As such, it is most likely that its meaning will be understood by the majority of the relevant public (see by analogy judgment of 28/09/2011, T‑356/10, Victory Red, EU:T:2011:543, §45). As already mentioned above the use of the colours, especially red, white or black is very common in relation to the goods at issue. Considering, that the relevant goods are liqueurs based on liquorice, which often are black/dark coloured liquors, this element is non-distinctive.

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, the signs coincide in the sequence of letters ‘CR-STAL’ of their verbal elements ‘CRISTAL’ and ‘CRYSTAL’, in the earlier and contested signs, respectively.

They differ in the letters ‘I’ and ‘Y’ of the terms referred to above, and in the non-distinctive verbal element ‘BLACK’ of the contested mark.

Bearing in mind that the first and distinctive verbal element of the contested sign is almost identical to the entire earlier mark, the Opposition Division finds that the signs at issue are visually similar to a high degree.

Aurally, French-speaking consumers will pronounce ‘CRISTAL’ and ‘CRYSTAL’ identically. The signs differ aurally in the sound of the second verbal element of the contested sign, ‘BLACK’, which however is non-distinctive. In addition, it is noted that when a mark includes more words, it will generally be abbreviated orally to something easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75) due to the economy of the spoken language. Accordingly, it cannot be completely disregarded that at least part of the relevant public will refer to the contested sign by its first word element ‘CRYSTAL’.

Therefore, the signs are aurally similar to a very high degree and, in case of the public which will omit the verbal element ‘BLACK’ when pronouncing the contested sign, the signs will be aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs have the concept of ‘crystal’. Since the additional concept of 'black' in the contested sign is non-distinctive, the signs are conceptually similar to at least a high degree.

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 opponent 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 in question 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 likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

As concluded above, the goods at issue are identical and target the public at large whose degree of attention is deemed to be average.

The marks are similar on account of the presence of the distinctive, nearly identical element, ‘CRI/YSTAL’, which conveys the same meaning in both marks. The additional verbal element ‘BLACK’ of the contested sign is non-distinctive and as such cannot indicate the commercial origin of the goods.

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

In this case, the level of aural similarity is very high, if not identical since it is very likely that the relevant consumers will refer to the contested sign as ‘CRYSTAL’, only.

Besides, it is noted that it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colors, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image.

Accordingly, it is very likely in this case that the relevant consumer may perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (see by analogy 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the relevant public may attribute the same (or an economically linked) commercial origin to the goods at issue.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘CRISTAL’ or ‘CRYSTAL’. In support of its argument the applicant refers to several trade marks registered at the EUIPO for the goods in Class 33.

The Opposition 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, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the aforementioned elements. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 204 886. It follows that the contested trade mark must be rejected for all the contested goods.

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

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

The Opposition Division

Tu Nhi VAN

Renata COTTRELL

Marta Maria CHYLIŃSKA

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.