|Applicant's Mark||Earlier Mark|
The Applicant, Cantina Tollo SCA, filed an EU trade mark application for the mark ALDIANO covering “alcoholic beverages (except beers)”. The application was opposed by ALDI based on an EU trade mark registration ALDI covering various goods and services including “alcoholic beverages (except beers)”. ALDI claimed that there was a likelihood of confusion.
Given the ALDI mark had been registered for more than five years at the relevant time, the Applicant requested ALDI to file evidence of use. ALDI supplied:-
- An Affidavit from an employee
- Two copies of draft labels for the wines BONUS Vino Blanco and Espiral Vinho Verde. The reverse of the labels contained a reference to ALDI.
- Three photographs of bottles and a box for the wines Espiral Vinho Verde, ROSSO TOSCANO and BONUS Vino Blanco.
The Opposition Division rejected the opposition on the grounds that the evidence did not show the ALDI mark had been genuinely used. The Board of Appeal agreed saying there was no evidence to show that the goods had been sold on the market.
On appeal, ALDI disputed the finding of the Board of Appeal that the products were not marketed under the ALDI mark but under the marks ROSSO TOSCANO, Espiral and BONUS and that the use of ALDI was only as the company name of the retailer. The General Court stated that it has been held that there is use when a third party affixes a trade mark which is its company name to the goods it markets. It rejected the Board of Appeal’s argument that there had been no use of the mark when the company name was affixed to packaging and said it was not relevant if the mark was small or not affixed to the front of the packaging.
Taken as a whole, the General Court found that they had information on the nature of the use of ALDI in relation to the wines ROSSO TOSCANO and Espiral by means of the Affidavit, advertisements, labels and photos. (The only evidence of use for BONUS Vino Blanco was the Affidavit and packaging which did not show actual marketing – the advertisement was not in the relevant five year period). They then went on to consider the extent of use.
The Applicant’s employee in his Affidavit had stated that the mark had been used in relation to three types of wine during the five year period and had been the subject of advertisements published in Spanish daily newspapers in 2011 and 2012. The Affidavit included a table of sales figures for the wine. In line with their normal practice in relation to evidence from a party to the proceedings the General Court stated that they would give evidential value to the information in the Affidavit provided it was supported by other evidence.
With regard to the advertisements, no details were given of the names of the newspapers nor the circulation figures. This therefore did not show the extent of the use of the mark according to the General Court. It also found that the invoices showed the sale of the wine to the Applicant and its Spanish distribution companies but not the marketing by the Opponent itself.
The Opponent claimed that it could not provide till receipts for the bottles of wine it sold because of the very high number of such receipts and also data protection issues. This was rejected by the General Court who said it would not have been difficult for the Opponent to provide copies of receipts, sales invoices or accounting documents.
The Court therefore agreed with the Board of Appeal that no use had been provided. The Opposition failed and ALDI were ordered to pay costs.