Henkell: proof of use – essential function of your mark

Henkell opposed registration of EUTM application number 10564573 PICCOLOMINI in the name of Ciacci Piccolomini d'Aragona di Bianchini Società Agricola (Ciacci) which sought registration for 'alcoholic beverages (except beers)' in class 33.

The trade mark relied on in the opposition was over five years old, so Ciacci requested proof of use.

Proof of use

Proof use was filed which included a statutory declaration from Henkell's marketing director referring to sparkling wines bearing the trade mark 'PICCOLO' for the years 2007-2001. Images of the products were filed along with:

• excerpts from price lists from 2007;
• export price list from 2008-2009;
• invoices showing sales from 2007-2012 into Greece, Italy and Finland; and
• an excerpt from a marketing leaflet.

The Opposition Division accepted this evidence and concluded that proof of use had been shown and upheld the opposition.

Appeal

Ciacci appealed to the Board of Appeal and claimed that:

1. 'Piccolo' formed part of internationally-used wine terminology and the average consumer would be aware of this term;
2. Consumers who did not understand 'piccolo' would not automatically believe it was a trade mark;
3. 'Piccolo' was clearly used descriptively ('piccolo' means 'small' in Italian) as it was used with other descriptive terms such as 'dry'; and
4. Henkell is by far the most dominant element, which would result in the assumption that it was the distinctive sign.

The Board of Appeal and the General Court agreed with these arguments and found that the trade mark had not been used in accordance with its essential function, which is to guarantee origin.

Factors which contributed to this decision included the opponent's house mark being the dominant element on the goods, 'piccolo' being used in close proximity with descriptive elements, and the term 'piccolo' only featuring on 200 ml (small-size) bottles.
The same was true with the invoices as 'piccolo' was being used in a descriptive manner. The opposition was refused on this basis.

In short

Trade marks should be used correctly throughout their lifetime. For those fortunate enough to have secured registration of trade marks which may be difficult to register in today's strict climate, this is even more important. Do contact us if you have any concerns about how you are using your registered trade marks or would like your use reviewed.

Case deteails at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Henkell & Co Sektkellerei KG, Ciacci Piccolomini d'Aragona di Bianchini Società Agricola and the EUIPO
Citation: T-20/15
Date: 14 April 2016
Full decision: http://dycip.com/t-20-15