PORTO & DOURO EXPERIENCES by DOUROAZUL | Decision 2690272

Date Published: Sep 25, 2017

OPPOSITION No B 2 690 272

Instituto dos Vinhos do Douro e do Porto, IP, Rua dos Camilos, 90, 5050-272 Peso da Régua, Portugal (opponent), represented by Pedro Sousa e Silva, Avenida da Boavista, 2300, 2º, 4100-353 Porto, Portugal (professional representative)

a g a i n s t

Douroazul - Sociedade Marítimo-Turística S.A., Rua de Miragaia número 103, 4050-387 Porto, Portugal (applicant), represented by Rita Gomes, Rua de Miragaia número 103, 4050-387 Porto, Portugal (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 690 272 is partially upheld, namely for the following contested services:

Class 39:        Operating of tours; Arranging of cruises; Boat cruises; Conducting of sightseeing tours; Sightseeing, tour guide and excursion services; Arranging transport services by land, sea and air; Travel agents services for arranging travel; Travel agency and booking services

2.        European Union trade mark application No 14 998 521 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 998 521 for the figurative mark , namely against all the services in Classes 35 and 39. The opposition is based on European Union trade mark registration No 10 110 567 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) in relation to the earlier European Union trade mark registration and 8(4a) EUTMR In relation with the protected designation of origin ‘PORTO’ and the protected designation of origin ‘DOURO’.

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 services

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

Class 35:        Advertising; Business management; Business administration; Office functions.

Class 43:        Services for providing food and drink; Temporary accommodation.

The contested services are the following:

Class 35:        Retail services connected with stationery; Retail services connected with the sale of clothing and clothing accessories; Retail services connected with the sale of furniture.

Class 39:        Operating of tours; Arranging of cruises; Boat cruises; Conducting of sightseeing tours; Sightseeing, tour guide and excursion services; Arranging transport services by land, sea and air; Travel agents services for arranging travel; Travel agency and booking 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.

Contested services in Class 35

The earlier services advertising; business management; business administration; office functions are aimed at supporting or helping other businesses to carry out or improve their business. These services are targeted at professional customers; for example, companies interested in restructuring their organisation or undertakings that need assistance and support in order to expand their commercial or industrial activity (29/08/2011, R 1614/2010-2, Avantis / avansis (fig.), § 62). The contested services are targeted at the public at large. In the normal sense of the words, the contested services are not a type of ‘business administration’ or ‘office function’ (12/01/2016, R 455/2015-2, B!G BUY (fig.) / BEST BUY (fig.) et al., § 35). The purpose of the contested services is to enable the selling of goods to consumers (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34), while the earlier services concerns the internal working of a business enterprise. Furthermore, these services are directed at different publics; indeed, the services covered by the contested mark are intended for the public at large, while the services covered by the earlier mark are exclusively intended for businesses which provide services to a professional public. Consequently, they cannot be considered substitutable nor in competition with each other (22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 56; 29/02/2012, T-77/10 and T-78/10, L112, EU:T:2012:95, § 117). In addition, complementarity is to be excluded in the present case since the public targeted by the contested services does not acquire the earlier services (see by analogy 22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 49). Moreover, the competing services are most likely to be rendered by different undertakings. Apart from being different in nature, the services under comparison have different purposes and distribution channels. The mere fact that the contested services may appear in advertisements is insufficient for finding a similarity. The contested services differ also in all relevant factors with regard to the earlier services in Class 43. Therefore, the contested services are dissimilar to the opponent’s services.

Contested services in Class 39

The contested operating of tours; arranging of cruises; boat cruises; conducting of sightseeing tours; sightseeing, tour guide and excursion services; arranging transport services by land, sea and air; travel agents services for arranging travel; travel agency and booking services and the earlier temporary accommodation can coincide in their providers, end users and distribution channels. Therefore, they are similar.

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 services found to be similar are directed at the public at large. The degree of attention may vary from average to high, depending on the specialised nature of the services and their price.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The common element ‘DOURO’ will be understood by the Portuguese-speaking public and part of the Spanish-speaking public in the West of Spain as referring to a region in Northern Portugal along the river Douro. For that part of the public the element ‘DOURO’ is non-distinctive since it could indicate the origin of the services provided. For a significant part of the public, especially the French-speaking public, it has no meaning and is distinctive.

The element ‘PORTO’ of the contested sign can refer to the Portuguese city ‘Oporto’ in many languages due to its identity or similarity in other languages, such as German or French, and therefore is non-distinctive for this part of the public for the relevant services since it can indicate the origin or place of the services provided. The element ‘EXPERIENCES’ will be understood by the English- and French-speaking public as referring to ‘knowledge or particular skill’ and, therefore, is non-distinctive.

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). The common element ‘DOURO’ is not meaningful in certain territories, for example, in those countries where French is understood. On the other hand, the French-speaking public does understand the verbal elements ‘PORTO’ and ‘EXPERIENCES’ of the contested sign. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public such as France since it is the best-case scenario for the opponent.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, the elements are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

The figurative element in form of a highly stylised letter ‘D’ which is barely legible in the earlier mark is distinctive as well as the figurative element of a kind of red cross in the contested sign. As regards the contested sign, the figurative element in form vertical bar is of a purely decorative nature and, therefore, non-distinctive.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the distinctive verbal element ‘DOURO’. However, they differ in the colours and the figurative element of the earlier sign and the additional non-distinctive verbal elements and the figurative elements and the colours 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 ‛DOURO’, present identically in both signs. The pronunciation differs in the sound of the non-distinctive words ‘PORTO’ and ‘EXPERIENCES’ of the contested mark. The highly stylised letter ‘D’ of the earlier mark, if recognized at all, will not be pronounced. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As explained above, the earlier mark has no meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The 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 services 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22). Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services.

In the present case, the contested services are partly similar and partly dissimilar to those of the earlier mark and are directed at the public at large whose level of attention varies from average to high. As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. The marks in dispute have been found to be visually similar to an average degree and aurally similar to a high degree. The signs differ mainly in non-distinctive verbal elements.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-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, even for that part of the public with a high level of attention due to the similarities of the signs. 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 services found to be similar to those of the earlier trade mark.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

THE PROTECTION OF THE GEOGRAPHICAL INDICATION ‘PORTO’ – ARTICLE 8(4a) EUTMR

According to Article 8(4a) EUTMR, upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:

(i) an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

(ii) that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

A geographical indication identifies a product originating in a particular geographical area, where a given quality, reputation or other characteristic of that product is essentially attributable to its geographical origin.

EU legislation distinguishes between ‘protected designations of origin’ (PDOs), where the quality or characteristics of the product are essentially or exclusively due to a particular geographical environment, and ‘protected geographical indications’ (PGIs), where a given quality, reputation or other characteristic of the product is essentially attributable to its geographical origin, without the stages of production, processing or preparation all necessarily taking place in the same area. In essence, PDOs have a closer link with the geographical area of production. The distinction, however, does not affect their scope of protection, which is the same for PDOs and PGI. Therefore, the term ‘geographical indication’ (GI) is used to refer to both PDOs and PGIs in general.

The ground of refusal of Article 8(4a) EUTMR are subject to the following requirements:

• The opponent is authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication;

• an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

• that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

These conditions are cumulative. Therefore, where one of those conditions is not met, the opposition based on a protected GI according to Article 8(4a) EUTMR cannot succeed.

1. The right under the applicable law

At EU level there is protection for GIs for the following categories of products:

(1) certain foodstuffs and certain non-food agricultural products (pursuant to Regulation No 1151/2012, the ‘Foodstuffs Regulation’);

(2) wines and sparkling wines (pursuant to Regulation No 1308/2013, the ‘Wines Regulation’);

(3) spirit drinks (pursuant to Regulation No 110/2008, the ‘Spirit Drinks Regulation’); and

(4) aromatised wine products (pursuant to Regulation No 251/2014, the ‘Aromatised Wines Regulation’).

According to the submitted evidence by the opponent the protected GI falls under the category of wine. Therefore, in the present case Regulation No 1308/20 is applicable.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought. With regard to European Union law the opponent is not obliged to provide the content (text) of the law invoked. However, the opponent has to provide particulars proving the fulfilment of the conditions under the relevant provisions of European Union law. The opponent must submit appropriate evidence of fulfilment of the conditions of acquisition of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument and evidence as to why use of the contested mark would be successfully prevented under the applicable law.

The extracts from the online EU database E-Bacchus accompanying the notice of opposition refers to the designation of origin ‘Porto’ / ‘Port’ / ‘Vin de Porto’ / ‘Port Wine’ / ‘Vinho do Porto’ / ‘Oporto’ / ‘Portvin’ / ‘Portwein’ / ‘Portwijn’, protected under EU legislation. As these variations of the name refer all to the same protected designation of origin and are considered equivalent, the Opposition Division will refer to the earlier sign only as ‘PORTO’.

According to the case-law of the European Union, the provisions of the EUTM Regulation on the protection of ‘protected geographical indication’ (‘PGI’) and ‘protected denominations of origin’ (‘PDO’) must be interpreted, insofar as possible, in accordance with the specific provisions of EU law, international treaties concluded by the European Union (in particular the TRIPs agreement) and the laws of the Member States, insofar as applicable. Moreover, the Court of Justice has confirmed that the EU regulations governing the conflict between trade marks and PGI and PDO products are directly applicable and have immediate effect (09/03/2010, C-27/10, Bureau National Interprofessionnel du Cognac, ECLI:EU:C:2010:131, § 40).

Regulation (EU) 2015/2424 amending Regulation No 207/2009 on the Community trade mark (‘Amending Regulation’) introduced Article 8(4a) EUTMR as a specific ground of opposition for GIs. Prior to that, GIs could form the basis of an opposition pursuant to Article 8(4) EUTMR as ‘another sign used in the course of trade’. However, in the absence of transitory provisions, Article 8(4a) EUTMR applies in oppositions filed on or after its entry into force (23/03/2016). Since the opposition at issue based on GIs was filed on 21/04/2016 - after the date of entry into force of Article 8(4a) EUTMR - the opposition will continue to be assessed under the conditions of Article 8(4a) EUTMR.

According to Office practice and EU case-law (08/09/2009, C-478/07, Bud, EU:C:2009:521, § 95-129), the EU system of protection of GIs for wines and spirits is exhaustive in nature and supersedes national protection for those goods (see Guidelines for Examination in the Office, Part C Opposition, Part C, Opposition, Section 4, Rights under Article 8(4) and 8(4a) EUTMR, page 29). Consequently, the designation of origin ‘PORTO’ protected under Portuguese national laws is not a proper basis for an opposition under Article 8(4a) EUTMR.

As regards the extract from the WIPO register of appellations of origin registered under the Lisbon Agreement, submitted along with the notice of opposition, it suffices to recall that protection under the Lisbon Treaty does not extend to the country of origin, here Portugal. Pursuant to Article 1(2) of the Lisbon Agreement, the protection is available only in other countries of the Lisbon Union, namely in countries other than the country of origin. As the notice of opposition only relied on an earlier right protected in Portugal, any protection under the Lisbon Agreement in any Member State other than Portugal cannot be taken into account (22/05/2015, R-1760/2014-4, PORTS1961 / PORT, § 22). Furthermore, a GI protected under an international agreement concluded by Member States (either among Member States or with third countries) cannot be invoked as an earlier right under Article 8(4) or 8(4a) EUTMR if it encroaches upon the exhaustive nature of EU law in the relevant areas (currently certain foodstuffs and other agricultural products, wines, spirit drinks and aromatised wine products).

Consequently, the examination of the opposition will continue on the basis of the designation of origin ‘PORTO’, protected under EU legislation under Regulation (EU) No 1308/2013.

Designations of origin and geographical indications for wines and other grapevine products protected under Council Regulation No 1234/2007 of 22/10/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation No 1308/2013 of 17/12/2013) fall under Article 8(4a) EUTMR.

This includes the names already registered under Council Regulation No 1493/1999 of 17/05/1999 on the common organisation of the market in wine and of Council Regulation No 479/2008 of 29/04/2008 on the common organisation of the market in wine.

According to the documents submitted by the opponent the designation of origin has already been registered since 1921 (see submitted WIPO-extract and extracts of the Portuguese law in the notice of opposition). Therefore, the designation ‘PORTO’ falls under the scope of protection of the Council Regulation. According to Article 93(1)(a) of Regulation No 1308/2013, ‘designation of origin’ means the name of a region, a specific place or, in exceptional cases, a country used to describe a product referred to in Article 92(1) fulfilling the following requirements:

• the quality and characteristics are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors;

• the grapes from which it is produced come exclusively from this geographical area;

• its production takes place in this geographical area; and

• it is obtained from vine varieties belonging to Vitis vinifera.

In the present case, the designation of origin ‘PORTO’ has been registered for wine. The registration was published in the Official Journal of the European Union. According to Article 103(2) of Regulation No 1308/2013, protected designations of origins and protected geographical indications and the wines using those protected names in conformity with the product specification shall be protected against:

1. any direct or indirect commercial use of a protected name:

(i) by comparable products not complying with the product specification of the protected name; or

(ii) in so far as such use exploits the reputation of a designation of origin or a geographical indication;

(b) any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the wine product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;

(d) any other practice liable to mislead the consumer as to the true origin of the product.

The opponent submitted sufficient evidence that it is entitled to protect the rights of the protected designation of origin ‘PORTO’, which may be used only for wine produced in the Demarcated Region of Douro (DRD), that the tradition made known under that name and which complies with the rules of the present regulation and further applicable regulation.

2. The opponent’s right vis-à-vis the contested mark - Compliance with the criterion of the applicable law under Article 103(2) of Regulation No 1308/2013

The first alternative of Article 103(2)(a) of Regulation No 1308/2013 grants protection in respect of the use for ‘comparable products not complying with the product specification’, or, alternatively, if the reputation of the geographical indication is exploited.

The earlier mark has been used for wine.

The contested services are:

Class 35:        Retail services connected with stationery; Retail services connected with the sale of clothing and clothing accessories; Retail services connected with the sale of furniture.

According to the Court’s case-law, products are comparable for the purposes of Article 103(2) of Regulation No 1308/2013 when they have common objective characteristics, such as the method of elaboration, the physical appearance of the product and the use of the same raw materials. Other factors which may be relevant are, from the perspective of the relevant public, the consumption on identical occasions and the identical channels of distribution and marketing methods (09/03/2010, C-27/10, Bureau National Interprofessionnel du Cognac, ECLI:EU:C:2010:131, § 54 to Article 16(a) of Regulation No 110/2008).

In the present case, the contested services in Class 35 are not comparable to wine. The services in Class 35 differ already in their nature. Furthermore, services cannot comply with the product specification. It must be emphasized that a ‘comparable’ product is not to be interpreted as meaning a ‘similar’ product in the sense of Article 8(1)(b) EUTMR (15/06/2016, R 1105/2015-4, PORTOBELLO ROAD NO 171, § 23).

The essential function of a geographical indication – as an IP right – is not to monopolise the name of a city or region. Any city or region serves as a place of protection of innumerable other goods. The essential function of a geographical indication is to protect the link between a product (and its characteristics) and a geographic origin. GIs are meant to protect the consumer’s expectations that a given product has the geographic origin indicated on the product.

The second alternative for protection under Article 103(2)(a) of Regulation No 1308/2013 is that there is ‘any direct or indirect commercial use of the protected name’ (Article 103(2)(a), header) and that ‘such use exploits the reputation of the geographical indication’ (Article 103(2)(a)(ii)).

As mentioned above, according to Article 76(1) EUTMR in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including providing all the necessary information for its sound application and the related evidence. The evidence to be submitted must allow the Opposition Division to safely determine that the conditions are fulfilled.

The opponent failed to submit any evidence with regard to the reputation of the geographical indication within the substantiation period. The evidence submitted after the end of the substantiation period cannot be taken into account. The opponent did also not invoke any other alternative of Article 103(2) of Regulation No 1308/2013.

Given that one of the necessary requirements of Article 8(4a) EUTMR is not met, the opposition must be rejected as unfounded with regard to the protected geographical indication ‘Porto’.

THE PROTECTION OF THE GEOGRAPHICAL INDICATION ‘Douro’ – ARTICLE 8(4a) EUTMR

The opponent invoked also the protected geographical indication ‘Douro’. However, since ‘Douro’ is only protected for wine and wine products the contested services are also not comparable. In addition, the opponent also failed to submit any evidence with regard to the reputation of the geographical indication ‘Douro’ within the substantiation period and did also not invoke any other alternative of Article 103(2) of Regulation No 1308/2013.

Given that one of the necessary requirements of Article 8(4a) EUTMR is not met, the opposition must also be rejected as unfounded with regard to the protected geographical indication ‘Douro’.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Claudia MARTINI

Martin EBERL

Frédérique SULPICE

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.