An EUTM application was filed by Ciacci Piccolomini d’Aragona di Bianchini Società Agricola (“Ciacci”) for the word mark PICCOLOMINI in class 33 for “alcoholic beverages (except beers)”. It was opposed by Henkell & Co. Sektkellerei KG (“Henkell”) on the basis of its earlier EU work mark PICCOLO in classes 33 (“alcoholic beverages (except beers), in particular wines, still wines, sparking wines, herb wines and vermouth, spirits”) and 42 (“providing of food and drink; temporary accommodation”) on the basis of a likelihood of confusion.
During the opposition proceedings, Henkell was required to prove genuine use of its mark PICCOLO which, according to the Opposition Division, it did and so the opposition was upheld in its entirety. The Opposition Division’s decision was appealed by Ciacci, however, resulting in it being annulled by the First Board of Appeal. The Board held that the term “piccolo” formed part of internationally used wine terminology and that even those consumers who did not understand the term would not automatically assume it to be a trade mark. It also pointed out that the sign PICCOLO was used by Henkell in a descriptive manner or in an abbreviated form, and was featured exclusively together with other descriptive terms such as “dry” or with the company name “Henkell”.
Henkell, appealed to the General Court that the evidence filed during the course of the opposition proceedings was sufficient to prove that there had been genuine use of the earlier mark.
It argued that, contrary to what the Board of Appeal had found, the earlier mark had been used as a trade mark and not only in a descriptive manner. Evidence of use submitted included images of sparkling wine bottles, excerpts from price lists showing a range of bottles bearing the word mark and invoices to companies based in Greece, Italy and Finland concerning the delivery of bottles of “HENKELL TRO. DRY SEC PICC”.
The General Court held, however, that the way in which the earlier mark was used on the product did not make it possible to conclude that the mark had been used as a trade mark. The term “piccolo” was not displayed on the goods or on the packaging in a prominent way which attracted the consumer’s attention, with the term “henkell” being instead the dominant element.
Furthermore, the term “piccolo” was used in the price lists and invoices simply to describe the size of the bottle and was automatically associated with 0.2 litre bottles in the same way that “magnum” was used to designate a 1.5 litre bottle. With regards to the invoices in particular, the fact that the abbreviated term “picc” always appeared after the words “trocken dry sec” or “tro. dry sec”, which all describe the sweetness of the wine in different languages, therefore suggests that the term “piccolo” was itself descriptive and was not another indication of the commercial origin. It was therefore concluded that the evidence did not prove to the requisite legal standard that the earlier mark was put to genuine use during the relevant period.
Accordingly, the General Court upheld the Board of Appeal’s decision that the earlier EUTM had not been genuinely used during the relevant period. The mark was secondary to the company name “henkell” on both goods and packaging and it was this company name that would be perceived as an indication of commercial origin.