Evidence of use must be examined in overall context

European Union
In Bodegas y Viñedos Puerta de Labastida SL v Office for Harmonisation in the Internal Market (OHIM) (Case T-345/09, April 13 2011), the General Court has upheld OHIM’s decision to refuse an application for the registration of PUERTA DE LABASTIDA based on earlier marks containing the word 'Labastida'.

In June 2005 Bodegas y Viñedos Puerta de Labastida SL filed an application for the registration of PUERTA DE LABASTIDA for foodstuffs in Class 29, “wines from Labastida (Rioja Alavesa) and other alcoholic beverages (excluding beers)” in Class 33 and sales, import-export and related services in Class 35 of the Nice Classification. Labastida is a town in northern Spain, close to Bilbao and Pamplona.

On publication in March 2006, the application was opposed by Uníon de Cosecheros de Labastida, S Coop Ltda on the basis of earlier Spanish and Community trademark registrations for CASTILLO DE LABASTIDA and CASTILLO LABASTIDA, covering wines and other relevant goods in Class 33 and services in Classes 35, 39 and 43.

Puerta de Labastida made a formal request through OHIM for Uníon de Cosecheros de Labastida to provide evidence of genuine use of those marks, which had been registered for five or more years and were thus potentially vulnerable to revocation for non-use. Uníon de Cosecheros de Labastida subsequently provided documentary evidence. 

In May 2008 the Opposition Division of OHIM issued a decision confirming that the evidence showed genuine use in relation to wines in general and wines from Labastida, and refused the application for all goods and services other than edible oils and fats.

Puerta de Labastida appealed against the decision in July 2008. In May 2009 OHIM’s First Board of Appeal rejected the appeal, confirming that:
  • Uníon de Cosecheros de Labastida had shown genuine use of the earlier marks in Germany, Spain and the United Kingdom;
  • the respective goods and services in Classes 33 and 35 were identical; and
  • the earlier Class 43 services were similar to the Class 29 goods of the application. 
It concluded that the similarity of the marks led to a likelihood of confusion on the part of the relevant public and, in particular, that the identical element 'de Labastida' in the respective marks was likely to make the public believe that Puerta de Labastida's goods and services were connected to Uníon de Cosecheros de Labastida. Puerta de Labastida appealed to the General Court.

The General Court considered the evidence of use filed by Uníon de Cosecheros de Labastida, primarily copies of invoices (of which only 12 related to the relevant period and territory), copies of wine bottle labels, prints of web pages and undated copies of catalogues. Puerta de Labastida did not contest that the marks had been used, but did dispute, for example, that invoices referring only to 'CL' could constitute use of the earlier marks. Further, it argued that most of the evidence was undated or bore a date outside the relevant period.

The court disagreed and held that:
  • even if Uníon de Cosecheros de Labastida used 'CL', 'cast. labast.' and 'oak aged' on invoices, the catalogues filed in evidence showed use of these elements in conjunction with the marks as registered; and
  • even if the catalogues were undated or dated after the relevant period, they made it possible to confirm or appreciate better the extent of use of the mark in the relevant period. 
In support of this position, it added that Puerta de Labastida had filed no evidence to show that the initials of the registered mark appearing on the invoices might refer to another product or trademark.

Going on to examine the invoices in detail, the court held that, although only 12 invoices had been submitted, they were only to illustrate use, were not intended to be exhaustive and were addressed to different entities unconnected with Uníon de Cosecheros de Labastida. Therefore, they constituted evidence of genuine use.

With regard to the similarity of the marks, the court agreed with the board that the common element 'Labastida' made the marks visually, phonetically and conceptually similar: the words 'Castillo' and 'Puerta' which prefixed the respective marks would be easily understood by the average Spanish consumer, who would also grasp the conceptual similarity because of the geographical significance of the word Labastida.

Having considered the identity and similarity of the goods and services as decided by the board, and having agreed with the board entirely, the court concluded that, because the goods and services were identical or similar and the marks were similar, there was a likelihood of confusion between the marks. It thus rejected the appeal and ordered Puerta de Labastida to pay the costs.

This judgment shows that evidence of use need not exclusively be dated within the relevant period, bear any date at all or show the trademark in question, provided that the overall picture created by the evidence shows some use of the mark in the relevant period in connection with the goods or services and is thus genuine. This could be interpreted as an invitation to concentrate on quantity rather than quality, although that is most unlikely to be the court’s intention. At present, both marks appear to be in use in relation to wines from the region, so this judgment is perhaps not the end of the dispute between the parties.

Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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