Background of the case

On 10 February 2018, Unión Vinícola del Este SL applied for registration of the trade mark “Es Valentía” (word mark) for wines of the Utiel – Requena designation of origin and cavas in Class 33. Opposition to this application was filed by the Regulatory Council of Wines of Valencia Designation of Origin on 28 June 2018 on the grounds of likelihood of confusion and conflict with a prior geographical indication.

On 17 March 2020, the Opposition Division rejected the opposition in its entirety, finding that the identity or high degree of similarity of the goods and the medium degree of phonetic similarity were not sufficient to counterbalance the differences between the signs and the low degree of distinctiveness of the earlier collective mark. The Regulatory Council lodged an appeal against this decision on 12 May of this same year.

Decision of the Board of Appeal

In its decision, the Board of Appeal considers that the Opposition Division did not properly consider the arguments put forward by the opponent concerning the quasi-phonetic and visual identity of the terms ‘Valentía’ and ‘Valencia’, and the perception that the average European consumer would have of those terms. These elements must be examined ex officio and are essential in order to ensure a correct implementation of Article 8(6) of the Regulation 2017/1001.

As regards the comparison of the terms, the Board considers that the two signs are very similar visually and aurally, insofar as the protected name “Valencia” is included in the element “Valentía”, being the only difference the replacement of the “c” by the “t” and the addition of the word “Es” in front of it.

Firstly, as regards how the non-Spanish-speaking public would perceive the marks, the Board understands that for them, the phonetic and visual similarity could be very high. On the one hand, because for part of the public the presence of the accent would be irrelevant or could go unnoticed, which would not be sufficient to exclude any mental/conceptual association with the geographical name of Valencia. On the other hand, following the case-law of the European Union Court of Justice, given that the non-Spanish-speaking public will not be able to attach a conceptual value to ‘Es’ and ‘Valentía’, it will focus even more on their visual and phonetic dimensions.

Secondly, as regards the perception of the Spanish-speaking public, the Board accepts the argument put forward by the opponent, as the Spanish-speaking public will make a conceptual link between the term ‘Valentía’ and ‘Valencia’, understanding the former as a reference to the name of the city in Roman times and to the province which is characterised by the reputation of its wines protected by the PDO ‘Valencia’. Thus, the Court understands that the use of the word “valentía” not only does not exclude but reinforces the evocation of Valencia and its wines protected by the Designation of Origin.

Furthermore, the use of a capital letter in the first letter of ‘Valentía’ must be interpreted as a reference to a proper name and not to an adjective, which makes it more likely that consumers will associate the mark applied for with the protected designation of origin.

In view of the above, the Board considers that the mark applied for is an evocation of the Valencia PDO for some European consumers, and therefore upholds the opposition brought by the Regulatory Board and rejects the trade mark application.

Decision of the First Board of Appeal case R-885/2020-1, of 6 April 2021