Wine-maker's opposition against EUTM of an elderly man's face found by EUIPO to be nothing more than sour grapes

recent decision of the Fifth Board of Appeal (the Board) of the EU Intellectual Property Office (EUIPO) found that there was no likelihood of confusion between two pictures of elderly men's faces, even though there were both registered as European Union Trade Marks (EUTMs) in respect of the same goods.    

Background

In December 2020, Tenuta Ulisse Società Agricola s.n.c. di Antonio Ulisse e C. (Ulisse), an Italian winery, filed an application (the Application) to register the following figurative mark for Wine as an EUTM in class 33: 


In April 2021, a Spanish winery, Vintae Luxury Wine Specialists S.L.U. (Vintae), filed an opposition (the Opposition) against the Application based on their EUTM registration for the following figurative mark, which was registered in a number of classes including class 33 (also for Wine):


The Opposition was based on Articles 8(1)(b) and 8(5) of the EU Trade Mark Regulation (EUTMR), which prohibit registration of marks as EUTMs where (a) they are identical or similar to earlier trade marks and there is a likelihood of confusion; or (b) the earlier trade mark has a reputation and use of the mark applied for, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark, respectively.

In November 2022, the Opposition Division rejected the Opposition on the grounds that there was no likelihood of confusion, and that it had not been established that the earlier mark had a reputation. 

In summary, the Opposition Division found that: 
  • the fact that the signs coincided in featuring the image on an old man could not give rise to more than a low degree of conceptual similarity, particularly given that each sign clearly showed a different person with a different mood and expression; and
  • despite showing at least some use of the earlier mark in relation to wine (in Class 33), including significant sales numbers (in excess of EUR 7m) since the product's launch, the evidence did not provide any clear indication of the degree of recognition of the earlier mark by the relevant public in the EU/Spain, or the extent to which it had been promoted.  
In respect of the second point, the Opposition Division placed particular weight on the fact that the Opponent could have submitted evidence from independent third parties attesting to the reputation of the earlier mark for wine, as well as opinion polls and market surveys, but had failed to do so. 

On 3 January 2023, Vintae filed an appeal to the Board (the Appeal). In particular, it argued that the two signs were in fact visually highly similar, and conceptually identical, as there is a connection between the characteristics of the wines and the ages of the people portrayed on the bottle labels, who are not models but in fact people involved in viniculture. 

The Board's Decision

Article 8(1)(b) EUTMR

Similarity

The Board began with the assessment of similarity pursuant to Article 8(1)(b) EUTMR. It agreed with the Opposition Division that the contested goods were identical, and that, according to settled case-law (El Señorito, T-576/17), wine in Class 33 primarily targets the public at large who is likely to display an average degree of attention. 

The Board further observed that Vintae's earlier mark had no dominant element, because it only had one element (namely a photographic portrait), and was inherently distinctive to an average degree. 

On the other hand, and although Ulisse's mark was also visually dominated by the portrait of an elderly gentleman, the verbal elements of the mark and their stylisation (i.e. the words "Don Antonio" and the logo of Tenuta Ulisse), would not go unnoticed despite being secondary elements. This was particularly the case because according to case-law, names carry great weight in the wine-growing world, and consumers recognise wines generally by reference to the word element which identifies the grower or estate (DON LUCIANO, T-268/18).

Visually, the Board found that the two signs, although both included portraits of elderly men, had contrasting visual elements that create distinct impressions; it found that Vintae's mark was "somber and somewhat start" contributing to an "overall austere aesthetic", whereas Ulisse's was "vibrant and lively". This assessment was based on elements such as the men's facial expressions and the underlying colour tones, leading the Board  to conclude that the signs were similar to a low degree overall.

Conceptually, the signs were found to merely convey the notion of an elderly man in general; however the sombre realism of the elderly man in Vintae's mark sharply contrasted the cheerful joviality of Ulisse's, and this would be discernible to consumers. The Board emphasised that, as had been noted by the Opposition Division, Vintae's mark was protected in respect of the specific image for which it was registered, and not the abstract idea or concept of an old man's portrait per se

Consequently, the Board concurred with the Opposition Division’s conclusion that the signs were only conceptually similar to a low degree. 

A bottle of Chat-eau de Kat

Distinctiveness

As mentioned above, Vintae had claimed that its earlier mark benefited from enhanced distinctiveness; this presupposed that at least a significant part of the relevant public would be familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) EUTMR. 

After analysing the all the evidence which had been submitted by Vintae, the Board agreed with the Opposition Division that, despite being extensive and voluminous, it did not allow any conclusions to be drawn as to the knowledge of the mark relied upon among the relevant public in the EU. For example, many of the exhibits (e.g. news articles, consumer reviews, magazine ads, commercial presentations) did not bear a date, nor did they indicate when and where and to whom they were distributed. 

While the documents submitted might have been sufficient to show a certain extent of genuine use under Article 47(2) EUTMR, in order to allow the Board to draw conclusions about the high degree of distinctiveness through use that had been claimed, Vintae should have filed documents regarding the actual impact of its product on the market, and data evidencing its market share; in short, documentation regarding the actual knowledge of the mark by the relevant public.

Likelihood of confusion

In the present case, given the low degree of visual and conceptual similarity and the absence of enhanced distinctiveness or reputation of the earlier mark, the Board found it "improbable" that an average attentive public would believe that the trade marks in question originate from the same undertaking or economically linked undertakings. There was therefore no likelihood of confusion. 

Article 8(5) EUTMR

The findings mentioned above in respect of distinctiveness were equally valid for an assessment of reputation for the purposes of Article 8(5) EUTMR. As the evidence submitted by Vindae was insufficient to show enhanced distinctiveness, it was also insufficient to show reputation. 

The Appeal therefore failed. 

Comment

This decision was interesting given the fairly unusual situation of comparing two person's faces as trade marks. It is, in this Kat's view, notable that the Board assessed the marks in such extensive detail, including their facial expressions, clothing, and age, as well as tonal considerations based on colour palettes, to find that there was only a low degree of visual similarity. It appears to certainly be the case that the use of the same simple motif (e.g. the face of an elderly man on a bottle of wine) will not in itself be sufficient for a finding of similarity under EU trademark law. 

Further, Vintae might be forgiven for feeling that it had produced sufficient evidence to prove reputation - particularly given the significant amount of sales it had shown. This decision is a useful reminder that the quality of the evidence can be more important than (just) the quantity, and seemingly "minor" omissions such as the failure to include dates on documents can be fatal to an opponent seeking to show enhanced distinctiveness or reputation. 
Wine-maker's opposition against EUTM of an elderly man's face found by EUIPO to be nothing more than sour grapes Wine-maker's opposition against EUTM of an elderly man's face found by EUIPO to be nothing more than sour grapes Reviewed by Alessandro Cerri on Saturday, November 30, 2024 Rating: 5

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