TY - JOUR
AU - Tong, Michelle S, H
AB - Abstract European Union Intellectual Property Office, Opposition No B 2 811 415, Viña Concha y Toro S.A. v Licores del Papa y El Diablo, S.A. de C.V, 11 October 2018 The European Union Intellectual Property Office rejected the opposition filed by the holder of the ‘Casillero del Diablo’, ‘Casillero del Diablo, Wine Legend’ and ‘Diablo’ trade marks against registration of ‘Papadiablo’ as an EU trade mark. Legal context Where a trade mark application is submitted to the European Union Intellectual Property Office (EUIPO), having passed the office’s initial examination on absolute grounds for refusal of registration of trade marks under Article 7 of the EU Trade Mark Regulation 2017/1001 (EUTMR), the application is thereby published. From the date of publication, an opposition period starts whereby third parties who believe the sign should not be registered are given three months to oppose registration. The opposition will be by a third party who owns an earlier right or mark and believes that registration of the new trade mark would conflict with their existing right or mark. This will be done under the relative grounds for refusal found under Article 8 EUTMR. Invoked in the present opposition were: Article 8(1)(b), which excludes registration of signs that are identical or similar to an earlier trade mark, for identical or similar goods or services covered by the earlier trade mark, where registration of the latter sign would cause a likelihood of confusion, including the likelihood of association with the earlier trade mark on the part of the public in the territory in which the earlier trade mark is protected. Article 8(5), which prohibits registration of a sign that is identical or similar to, and earlier trade mark, irrespective of the goods or services for which it may be identical or similar. Here, the opponent’s trade mark must have a reputation in the EU or, for national trade marks, in the relevant Member State, where such a registration would take unfair advantage or be detrimental to the distinctive character or repute of the earlier trade mark. The Opposition Division found it unnecessary to assess whether proof of use of the earlier marks was substantiated under Article 47(2) and (3) EUTMR, given that the opposition had failed under Article 8(1) EUTMR. However, if requested by the applicant, opponents to the application of a trade mark must bring evidence to show that the earlier mark has been put to genuine use in the territories in which it is protected in connection with goods and services for which it is registered. In the absence of such proof, any opposition will be rejected. Facts The holder of the ‘Casillero del Diablo’, ‘Casillero del Diablo, Wine Legend’ EUTMS, as well as of the UK trade mark registered for goods under Class 33 (wine, and sparkling wine) filed an opposition against registration of ‘Papadiablo’ as an EUTM for goods under Class 33 (mezcal) of the Nice Classification. Analysis Issue 1: likelihood of confusion The Opposition Division examined the opposition under Article 8(1) EUTMR in relation to the earlier trade mark ‘Casillero del Diablo’. First, regarding the issue of similarity of goods and services, the registered sign and contested application were based on the same Nice goods, ie Class 33 for alcoholic beverages: ‘wine, and sparkling wine’ for the opponent and ‘mezcal’ for the applicant. It concluded that the opponent’s ‘wines’ were similar to the contested ‘mezcal’. The relevant factors taken into account here, as discussed in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., C-39/97, EU: C: 1998: 442, included the similarity of: their distribution channels (both can be served in restaurants and bars); their sales outlets (both are on sale in supermarkets and grocery stores); and producers of the goods (both can originate from the same undertakings). Therefore, the opposition and the contested goods were found to be sufficiently similar, contributing to the likelihood of risk that the public might believe the goods in question come from the same or economically linked undertaking. The likelihood of confusion assessment under Article 8(1)(b) EUTMR is to be undertaken from the perspective of an average consumer of the category of products concerned. This notional person is deemed to be reasonably observant and circumspect, varying according to the category of goods or services in question, a test set in Sabel BV v Puma AG, Rudolf Dassler Sport, C-251/95, EU:C:1997:528. The Division found in the present opposition the goods were similar as they were directed to the public at large that only plays an average degree of attention to the relevant goods during purchase. Next, for examination of the signs, the Division assessed the likelihood of confusion in the relevant territory (EU), based on the global appreciation of the visual, aural or conceptual similarities of the signs in question as discussed in Sabel BV v Puma AG, Rudolf Dassler Sport, C-251/95, EU:C:1997:528. The Division concluded that the earlier sign of ‘Casillero del Diablo’ was visually similar to a low degree to the contested sign of ‘Papadiablo’, given that the common letters are not at the beginning of the signs, a position that the Division noted as being the general focus of consumers when encountering trade marks. Aurally, the signs were held to be similar only to a low degree, irrespective of the different pronunciation rules in the different parts of the relevant territory; for the meaning of the contested mark ‘Papadiablo’ is said to be distinctive as they are unrelated to the relevant goods. Lastly, the Division found that the signs were conceptually similar to an average degree for the Portuguese-, Spanish-, and Italian-speaking public in the relevant territories; however, for the rest of the public, neither sign bears meaning, and, therefore, further conceptual comparison of the marks are not possible. It was found that the earlier trade mark of ‘Casillero del Diablo’ had acquired a high degree of distinctiveness through its use on the market in the UK. However, it was that case that the earlier trade mark was not shown to have acquired the same high degree of distinctiveness through its use in the territories of Denmark, the Netherlands, Belgium and Sweden. Thus, the distinctiveness was assessed in those territories for which the mark did not have enhanced distinctiveness. The Division held that the earlier trade mark had no meaning for any of the goods in question from the perspective of the public in those relevant territories; therefore, the earlier mark only had normal distinctiveness according to the Division. The Division concluded that the existing differences between the marks were sufficient enough to distinguish safely between them and exclude any likelihood of confusion. It, thus, found that there were no sufficient grounds to hold that the relevant public would believe the goods in question come from the same or economically linked undertakings. The Division declined to discuss the other earlier rights invoked by the opponent on the grounds that they were less similar to the contested sign; it concluded that the outcome would not be different: there would be no likelihood of confusion between those earlier rights and the contested mark either. Issue 2: Reputation The Division assessed the opponent’s invocation of Article 8(5) EUTMR in respect of the earlier trade mark ‘Casillero del Diablo’, in respect of which reputation has been claimed in the territories of Benelux, Denmark, Sweden and the UK. The Division focused on assessing the ‘link’ between the earlier and contested signs, given that comparison was already made between them in the discussion for the grounds under Article 8(1) EUTMR. The requirement of a link, as established by the Court of Justice of the European Union in Intel Corporation Inc. v CPM United Kingdom Ltd, C-252/07, EU:C:2008:655, needs to be assessed on the basis of one or more criteria, including the degree of similarity between the signs and the strength of the earlier mark’s reputation. The Division found that the signs differed visually in length and structure and in their meaning. Thus, it was unlikely the relevant public would establish a ‘link’ between the signs. Therefore, the opposition was rejected. Practical significance This decision has reasserted the authority of several CJEU cases in determining the likelihood of confusion under Article 8(1) EUTMR. Certain factors highlighted in this opposition include the assessment of the degree of visual and aural similarities of the goods in the relevant territories. Furthermore, opponents must ensure that a ‘link’ be established between the signs in order to oppose successfully registration of a sign under Article 8(5) EUTMR. © The Author(s) 2019. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model)
TI - A reassertion of the law regarding relative grounds for refusal of registration of EU trade marks
JF - Journal of Intellectual Property Law & Practice
DO - 10.1093/jiplp/jpy190
DA - 2019-03-01
UR - https://www.deepdyve.com/lp/oxford-university-press/a-reassertion-of-the-law-regarding-relative-grounds-for-refusal-of-jkyUGnIQVT
SP - 174
VL - 14
IS - 3
DP - DeepDyve
ER -