1 October 2018
Alcoholic beverages (except beers), wines.
Alcoholic beverages (except beers); wine, sparkling wine, fortified wine.
In 2010, the applicant, Enoitalia SpA (an Italian wine company), filed an EU trade mark application for the words ANTONIO RUBINI in relation to "Alcoholic beverages (except beers), wines" (in class 33).
La Rural Viñedos y Bodegas SA Ltda (an Argentinean wine company) filed an opposition against ANTONIO RUBINI on the basis of their earlier rights in RUTINI and FELIPE RUTINI in the figurative form (above right), covering alcoholic drinks and wines.
As both La Rural's trade mark registrations were over 5 years old they, were subject to use requirements. The Argentineans were therefore required to submit evidence of EU use for the 5 years before the Italians filed their trade mark application. However, only 18 invoices between the years 2006 and 2010 were submitted showing the export of the RUTINI and FELIPE RUTINI wines from Argentina to different EU countries (in USD), accompanied with the corresponding export sheets and transport bills. This was not found to be sufficient evidence of use, most notably because it only included passing references to the brands in the invoices and that was not use in the figurative forms registered. As a result, the opposition was rejected and the Italian's EU trade mark for ANTONIO RUBINI was registered.
Shortly after the mark was registered, the Argentinean wine company filed an invalidity action based on the same earlier rights. This time they filed large volumes of EU focused evidence. This included sales figures, invoices, custom declarations, advertising materials, photographs, details of exhibitions and events (including many in Italy). Based on this detailed clear evidence, it was obvious that both marks relied upon by the Argentineans had been used in the EU for many years.
The EUIPO upheld the invalidity action on the basis that there was a likelihood of confusion between the marks, due to the fact that the goods in question were identical and that the signs at issue phonetically, visually and conceptually similar. It also indicated that the goods in question are aimed at the general public and that the level of attention in respect of those goods was average.
Enoitalia appealed to the Board of Appeal. It was argued by the Italians that the contested mark contains a common first name and common surname and therefore a consumer would perceive both equally rather than the surname which seemed to be the reasoning of the EUIPO to this date. Despite this, the parties had previously agreed that the first name in the disputed word mark ANTONIO was a common first name. That meant that RUBINI was clearly the distinctive element in the contested mark. The Board of Appeal found in favour of La Rural agreeing with the earlier decision that the signs at issue were similar overall due to the fact that the dominant element of the contested mark was RUBINI and that was almost identical to RUTINI. The Board of Appeal concluded that there was significant risk that consumers may believe that the mark ANTONIO RUBINI has the same commercial origin as the RUTINI marks. This was mainly the case because the RUBINI surname would attract more attention by the consumer than the first name since it is a common name, especially in Italy.
The Italians appealed further to the EU General Court ("GC"). The appeal was filed on the basis that they did not believe the trade marks to be sufficiently similar to establish a likelihood of confusion. Enoitalia claimed that the Board of Appeal incorrectly assessed the dominant and distinctive elements of the marks at issue and incorrectly applied the criterion relating to the overall impression in the comparison of those marks. They also claimed that the EUIPO had ignored the figurative elements surrounding the marks.
In short, the GC upheld the decision of the Board of Appeal. This was because the word element RUTINI is very similar to the second element RUBINI. Although the court did not ignore the first word ANTONIO in their assessment, they did not see that this was sufficient to reduce the visual and phonetical similarities between the marks. In relation to the figurative elements surrounding the earlier marks the court found that, when taken as a whole, the earlier marks would clearly be remembered by consumers as RUTINI. That is how they would remember or select their wine. The figurative element around the marks did not overshadow the large and centrally positioned verbal element.
This case is good news for brand owners since the Argentineans failed to submit sufficient evidence of use at the opposition stage, but still had the ability to file an invalidity action later, submit strong evidence, and remove the mark from the register.
While this is possible before the EUIPO, in other territories, including at national European offices, the costs of filing an invalidity action, can be quite significant. It is therefore strongly recommended that the best evidence is submitted at the first opportunity. To do otherwise could potentially be detrimental. After a few glasses of wine, it is easy to see how RUBINI and RUTINI could be confused.
by multiple authors