OPPOSITION No B 3 061 261

Miguel Torres S.A., Miquel Torres i Carbó, 6, 08720 Vilafranca del Penedès (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (employee representative)

a g a i n s t

Tenuta Lilium Soc. Agricola SrL, C.da Rischiazzisnc – Villa Lilium, 73052 Parabita, Italy (applicant).

On 21/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 261 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 896 409 for the word mark ‘Aeterno’. The opposition is based on Spanish trade mark registration No M 2 743 684 for the word mark ‘ETERNO’. The opponent invoked Article 8(1)(b) EUTMR.

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.

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 trade mark on which the opposition is based for part of the goods, namely vinegar in Class 30.

The date of filing of the contested application is 07/05/2018. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 07/05/2013 to 06/05/2018 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.

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 04/03/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 09/05/2019 to submit evidence of use of the earlier trade mark. This deadline was extended until 09/07/2019. On 05/07/2019, within the time limit, the opponent submitted evidence of use. On 17/07/2019 the Office requested the opponent to resubmit the evidence by 22/08/2019 since some annexes were not included. On 18/07/2019, within the time limit, the opponent retransmitted the evidence of use. However, the opponent did not submit any of the abovementioned missing annexes, but only the same documents that were already filed on 05/07/2019.

Consequently, the evidence to be taken into account is the following:

• An extract from the website www.oliveoilfromspain.com/oofs/everything/olive, explaining the different varieties of olives, which produce different varieties of olive oils. The webpage gives information on different sorts of olives, where they originate from and their characteristics.

• An extract from the website www.thewinesociety.com/grape-varieties-list, explaining the different variety of grapes, which produce different varieties of wines. The opponent explains that in order to produce olive oil, as well as wine, the type of oil or wine is affected by the variety of the raw fruit, the maturity of the fruit, the characteristics of the soil and the cultivation area, the agricultural care, the production process, the winery or mill where they are produced, among other factors.

• An extract (Annex 1) from the website www.oliduero.com/en/our-olive-trees, where it is stated that “Oliduero, who follows organic farming principles, has its olive groves spread over different areas traditionally associated to the production of high-quality wine with designation of origin in Castilla y Leόn”.

• An extract from http://fattoriacastellodimonteriggioni.com/en/story, containing a brief story of this winery. Three images are displayed, two with a bottle of wine and one with a bottle of extra virgin olive oil with a description underneath of these products and their price.

• An extract (Annex 2) from http://www.oliveoilsource.com/events-current-upcoming, showing some upcoming events for olive oil tasting.

• Annex 3 showing pictures found over the internet of a gourmet store where oil and wine products are placed close to each other.

• Annex 4 mentioning some online stores that deal with the promotion and sale of olive oil and wine together, such as http://www.oilwineitaly.com/en/, http://www.vinosyaceites.com/ or http://mgwinegroup.com/category/wines-and-oils.

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

As indicated above, 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. The opponent is obliged not only to indicate, but also to prove each of these requirements. However, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

The use of the earlier mark must be established to the satisfaction of the Office and not merely assumed. Therefore, the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public.

​As mentioned above, the Opposition Division will examine the trade mark to see whether there is sufficient evidence of use for vinegar in Class 30.

As regards the nature of use this is not sufficient at all, since the already very scarce evidence only makes reference to wine and olive oil, mentioned in several websites, and no reference at all is made to vinegar. Furthermore, the trade mark ‘ETERNO’ is not even used in the documents or mentioned on the packages in the websites. Therefore, the nature of use has not been sufficiently proven.

For the sake of completeness, as regards the extent of use, there are no invoices filed at all and, therefore, it cannot be known if there have been any sales of the products. The fact that some products are offered on some websites, without even mentioning the name ‘ETERNO’, does not give any reason to believe that these goods were actually sold and under which name. Consequently, it cannot be concluded at all from the evidence whether any sales were made, much less whether any sales were made in Spain under the mark ‘ETERNO’.

In light of all the above mentioned reasons, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark ‘ETERNO’ was genuinely used in the relevant territory during the relevant period of time for vinegar in Class 30.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR insofar as it is based on vinegar in Class 30.

1. The goods

The goods on which the opposition is based, and for which no proof of use was requested, are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; ices; honey, treacle; yeast, baking-powder; salt; mustard; sauces (condiments); spices; ice.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

These contested goods, alcoholic beverages, except beer, have a different nature, purpose and method of use when compared to the opponent’s goods, which mainly include foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation (Class 29) or foodstuffs of plant origin prepared for consumption or conservation as well as goods intended for the improvement of the flavour of food (Class 30). Furthermore, they are not complementary, nor are they in competition with each other. In addition, they do not originate from the same undertakings, they are offered through different distribution channels and target a different relevant public.

The opponent pointed out in its observations that the Opposition Division stated in the following case: 19/12/2014, B 2 168 279, ‘ANNA EXTRA VIRGIN OLIVE OIL’/‘ANNA DE CODORNIU’, that all these type of goods can be produced in the same premises and by the same companies. In this decision is stated that there is a connection between part of the contested goods and the opponent’s wines for which the earlier marks have a reputation, namely the contested edible oils and fats, olive and all olive-based products in Class 29, vinegar in Class 30 and olive and all olive-based products in Class 31. According to the opponent, these goods can be produced by the same companies and are often cultivated in the same premises. The relevant public of the goods concerned is the same. Furthermore, these contested goods (for example, olives and olive oil which is included in the contested edible oils and olive-based products) and the earlier goods are typical products with a long tradition of production in Spain and are associated with the Spanish culture, since the country is famous with its soils and climate which provide excellent growing conditions for grapes and olives. Many people buy these goods as souvenirs. In this sense, a closer link can be established between the opponent’s reputed goods and the abovementioned applicant’s goods. However, the Opposition Division, as already explained in the previous paragraph, does not agree with these arguments of any similarity, as usually wines and all sorts of oils are not manufactured by the same kind of undertakings. In addition, in the abovementioned decision the earlier mark had a reputation and the Opposition Division found a link between these goods, but that link was because of the reputation of the earlier mark, which is not the case here; for the present case Article 8(5) EUTMR was not invoked. Moreover, the fact that some of the goods might appear in the same area of a supermarket, which is normally not even the case, is not sufficient either to find any similarity between these goods. Consequently, the opponent’s arguments have to be set aside.

As regards the comparison of the goods, the opponent also refers to some more previous decisions to support its arguments of likelihood of confusion, namely 09/06/2010, T- 38/09, RIOJAVINA/RIOJA and 12/12/2014, T-405/13, da rosa (figurative)/a rosa, in which is stated that wine (included in alcoholic beverages) is very similar to vinegar, as in fact vinegar is derived from wine, from its acetic fermentation.

The Office is not bound by previous decisions for example from the Court, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. As seen above in the part on the proof of use, the opponent has not proven use for the vinegar products and, therefore, the opposition cannot be examined as far as it was based on vinegar in Class 30. For this reason the Opposition Division finds that these decisions are not comparable with the case at issue and this argument has to be said aside.

2. 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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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, 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

Saida CRABBE

Chantal VAN RIEL

Helen Louise MOSBACK

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.