FRAGA DO CORVO | Decision 2594425 - DUCA DI SALAPARUTA S.p.A. v. GRANDES PAGOS GALLEGOS DE VITICULTURA TRADICIONAL S.L.
Date Published: Sep 25, 2017
OPPOSITION No B 2 594 425
Duca di Salaparuta S.p.A., Via Vincenzo Florio, 1, 91025 Marsala, Italty (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121, Milano, Italy (professional representative)
a g a i n s t
Grandes Pagos Gallegos de Viticultura Tradicional S.L., Colon 18, 36201 Vigo, Spain (applicant), represented by Asociados Pymark S.L., Londres 67 2º, 3º, 08036 Barcelona, Spain (professional representative).
On 27/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 594 425 is partially upheld, namely for the following contested goods and services:
Class 33: Wine; alcoholic beverages (except beers).
Class 35: Retailing in shops, wholesaling and sale via the Internet of wine and alcoholic beverages.
Class 43: Services for providing food and drink.
2. European Union trade mark application No 14 268 701 is rejected for all the above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 268 701, namely against all the goods and services in Classes 33 and 43, and against part of the services in Class 35. The opposition is based on European Union trade mark registration No 1 307 446. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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, namely the European Union trade mark registration No 1 307 446.
The request was submitted in due time and is admissible as the earlier trade mark was registered on 18/10/2000, that is more than five years prior to the relevant date mentioned above (27/07/2015).
The contested application was published on 27/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 27/07/2010 to 26/07/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 33: Wines.
According to Rule 22(3) EUTMIR, 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 and services in respect of which it is registered and on which the opposition is based.
On 30/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/09/2016 to submit evidence of use of the earlier trade mark, deadline that was extended upon request of the opponent until Saturday 05/11/2016. On 07/11/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is, in particular, the following:
- Affidavit from Augusto Reina, the president of the company Duca Di Salaparuta S.p.A, stating that the trade mark ‘CORVO’ dates from 1824. Moreover, information on the evolution of the products under the mark ‘CORVO’ is provided together with representations of bottles of wine on which the mark ‘CORVO’ can be seen. Moreover, sales figures of products under the mark ‘CORVO’ for a ‘total turnover of sold products’ for the years 2011 to 2015 in the European Union are provided. Advertising expenditures for the years 2011 to 2015 are set out in the statement.
Attached to the witness statements are the following exhibits:
- Thousands of invoices originating from the opponent and addressed to clients in Germany and Italy, dated from 2010 to 2015 and in relation to the sale of ‘CORVO’ wines among other products.
- Sample of two labels of a bottle of wine in which the mark ‘CORVO’ can be clearly seen.
The applicant argues that the labels, and the invoices filed by the opponent are not translated and therefore cannot be taken into consideration as valid means of evidence. 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 (Rule 22(6) EUTMIR).
In this regard, according to Rule 22(6) EUTMIR, where the evidence supplied pursuant to paragraphs 1, 2 and 3 is not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of that evidence in that language, within a period specified by the Office. It is left to the discretion of the Office whether the opponent has to submit a translation of the evidence of use into the language of the proceedings.
Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.
The applicant argues 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.
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.
As far as ‘the affidavit’ and the labels are concerned, it is true that they are not properly dated. However, the labels indicate the date of the grape harvest, which is within the relevant period and therefore are considered as validly indicating the time of use of the mark. As regards the affidavit, the fact that it does not have a date does not mean that such statement does not have any probative value at all, moreover when references to the relevant period are made.
All in all, the final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.
The invoices show that the place of use is Germany and Italy and therefore the European Union. This can be inferred from the language of the documents (Italian in some of the invoices), and in all the addresses in Germany and Italy. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The documents filed, namely invoices and the information on the affidavit, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
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.
Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which 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 42(2) and (3) EUTMR, Article 15 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 European Union trade mark registration No 1 307 446 is registered as the word mark ‘CORVO’. Admittedly, the use shown by the opponent relates indeed to the mark as registered but also demonstrates use as follows ‘CORVO ROSO’, ‘CORVO BIANCO’, ‘CORVO ROSA’ among others. However, the representation of the mark as such does not affect the distinctive character of the word mark ‘CORVO’ as registered since the words that follow the term ‘CORVO’ correspond to different varieties of wine and therefore, constitute use of the mark under Article 15 EUTMR.
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).
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
The evidence shows that the mark has been used as registered for all the goods for which the mark is registered.
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.
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.
- The goods and services
The goods on which the opposition is based are the following:
Class 33: Wines.
The contested goods and services are the following:
Class 33: Wine; alcoholic beverages (except beers).
Class 35: Retailing in shops, wholesaling and sale via the Internet of wine and alcoholic beverages; Import-export.
Class 43: Services for providing food and drink; Temporary accommodation.
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.
Contested goods in Class 33
Wines are identically contained in both lists of goods.
The contested alcoholic beverages (except beers) include as a broader category the opponent’s wine. Therefore, they are considered to be identical.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retailing in shops, wholesaling and sale via the Internet of wine and alcoholic beverages are similar to a low degree to the opponent’s wines.
The contested import and export relate to the movement of goods and normally require involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35 they are considered as business administration and they do not relate to the actual retailing or wholesaling of the goods (commercial functions). For these reasons, wines are to be considered dissimilar to import and export services.
Contested services in Class 43
The provision of food and drinks in Class 43 mainly covers services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended to serve food and drinks directly for consumption. The mere fact that food and drinks are consumed in a restaurant is not a sufficient reason to find similarity between them (judgment of 09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45 anddecision of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, in certain situations these goods and services can be complementary (judgments of 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). Goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking.
The mere fact that food and/or drinks are essential to the services of restaurants, bars, cafeterias, etc. does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking (e.g. salt in restaurants).
On the other hand, consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours, beer in pubs). In such cases, there is a low degree of similarity.
In view of the foregoing and the case-law, the contested services for providing food and drink in Class 43 are similar to a low degree to the opponent’s wines to the extent that they can coincide in producer/provider and distribution channels. Furthermore they are complementary.
Conversely, the remaining contested services temporary accommodation relates to the hospitality industry and, accordingly, its purpose is to provide accommodation. They are not complementary to the earlier goods because even where a hotel offers food and drinks or when it has a bar on its premises this is a secondary activity which, moreover, is often provided by another undertaking. Being aware, and having the expectation, that different commercial origins are generally involved regarding the competing goods and services the public will make a clear distinction between them. The abovementioned factors, coupled with the different nature, prompt the conclusion that the goods and services at issue are dissimilar.
- 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 and services found to be identical and similar to a low degree are directed at the public at large. The degree of attention may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods and services.
- The signs
CORVO | FRAGA DO CORVO |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The elements ‘FRAGA’, ‘DO’ and ‘CORVO’ are meaningful in certain territories, for example, in those countries where Portuguese is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese-speaking part of the public.
The element ‘CORVO’, common to both marks, will be understood as a large black bird which makes a loud, harsh noise (information extracted from the Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/crow and https://www.collinsdictionary.com/dictionary/portuguese-english/corvo on the 18/07/2017) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
As regards the elements ‘FRAGA’ and ‘DO’ of the contested sign, they will be understood respectively as a steep rocky cliff or part of a mountain by the relevant public (information extracted from the Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/crag on the 18/07/2017), and ‘DO’ as the preposition ‘of’. Therefore, the meaning of the contested mark is a cliff of crows. As the expression is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
The contested sign has no elements that could be considered clearly more distinctive than other elements.
The contested mark has no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the verbal element ‘CORVO’ present in both marks.
They differ in the additional elements ‘FRAGA DO’ of the contested sign.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CORVO’ which are present identically in both signs. They differ in the sound of the additional elements ‘FRAGA DO’ of the contested sign, which have no counterparts in the earlier sign.
Therefore, the signs are similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning to the extent that they both include the word ‘CORVO’, the signs are similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The goods and services are identical, similar to a low degree and different. The marks are similar to the extent they both contain the word ‘CORVO’ which is the only element of the earlier sign and plays an independent and distinctive role in the contested mark. The additional words ‘FRAGA DO’ of the contested mark are not sufficient to outweigh the visual, aural and conceptual similarities arising from the coinciding element ‘CORVO’.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Moreover, 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/services covered are from the same or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates.
In its observations, the applicant argues that there are many trade marks that include the element ‘CORVO’ and therefore that its mark should be able to be registered. In support of its argument the applicant refers, among others, to several trade mark registrations in Portugal, Spain and Italy.
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 data concerning a register 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 ‘CORVO’. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Portuguese-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark as the degree of similarity between the marks is sufficient as to offset the low degree of similarity between some of the goods and services.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Francesca DRAGOSTIN | Cristina CRESPO MOLTO | Michaela SIMANDLOVA |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.