NUXE vs Hanuxe. Tequila Revolución vs Revolution Vodka.

NUXE vs Hanuxe 

The company Lavita SLRs sought to register as a EUTM the word mark “Hanuxe”, for goods designated in classes 14, 18 and 25 (jewellery, leather and clothing, respectively).

NUXE is a French luxury cosmetic trade mark. Laboratoire Nuxe, the owner of the EUTM “NUXE” (word mark), filed an opposition before the EUIPO, to prevent the registration of the contested EUTM “Hanuxe”. The opposition was based on the earlier EUTM owned by the opponent. 

The grounds on which the opposition was based were the likelihood of confusion and trade mark with reputation, pursuant to article 8.1.b) of the European Union Trade Mark Regulation (EUTMR) and article 8.5 EUTMR, respectively. 

In the first place, regarding the comparison of the goods and services of the contested mark, jewellery in class 14, leather in class 18 and clothing in class 25 were found identical to the goods and services of the EUTM on which the opposition was based. 

As regards the comparison of the signs, the Opposition Division reminded that “the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks”. In this case, the outcome of the comparison was at follows: 

-        Visually and aurally, both signs coincided in the sequence of letters “NUXE”. This means that the earlier mark was contained in its entirely in the contested sign, differing only in the first letters “Ha”.  

-        Conceptually: for the relevant public, both signs were meaningless, and therefore the conceptual level was not relevant when assessing the similarity of the signs. 

As regards the global assessment of the likelihood of confusion, the Opposition Division of the EUIPO confirmed the existence of visual and aural similarity to an average degree, as both signs coincided in the letters “NUXE”. In the second place, although usually consumers pay more attention to the beginning of the mark, in this case the central and end of the contested sign were identical to the earlier one, which implied the coincidence of two out of three syllables of the word mark.

Moreover, the goods contained in both applications were identical.

As a result, the opposition was upheld by the Opposition Division, on the basis of the ground of article 8.1. b) EUTMR, thus confirming the existence of likelihood of confusion. For this reason, the EUTM application “Hanuxe” was rejected for all the classes requested, although it is still possible for the applicant to file an appeal against this decision.

TEQUILA REVOLUCIÓN

The company Horizons Group (London), sought in 2018 to register the word mark “Revolution Vodka” as a European Union trade mark (EUTM) for goods in Class 33 (Vodka). 

Tequila Revolución S.A.P.I. De C.V, filed an opposition against all the goods in the application. The opposition was based on the earlier word mark “TEQUILA REVOLUCIÓN”, registered in Class 32 (beer, water, juices), 33 (Tequila) and 43 (Restaurants, bars, snacks). The opposition was based on the grounds of: 

-       double identity – i.e., identity between both the signs concerned and the goods/services-, pursuant to article 8.1.a), and 

-       likelihood of confusion, pursuant to article 8.1.b) of the European Union Trade Mark Regulation (EUTMR). 

The Opposition Division of the EUIPO rejected the opposition request, hence the company appealed to the Boards of Appeal of the EUIPO (BoA), which upheld the decision of the Opposition Division and dismissed the appeal on the grounds that Tequila Revolución could not demonstrate the genuine use of their EUTM for the relevant period, as requested by the applicant. 

Tequila Revolución lodged an appeal before the General Court (GC).  

From its side, the GC reminded that the rightholder of the earlier EUTM (Tequila Revolución) on which the opposition was based, must submit the evidences to prove the genuine use of the EUTM for the 5 years period prior to the contested EUTM application, for all the goods/services and in the territory of the European Union.  As the “Revolution Vodka” mark was requested in 2018, Tequila Revolución should have proven an effective use of their EUTM during the 5 previous years. 

In the second place, as regards the genuine use of the earlier trade mark, the Court stated that Tequila Revolución did not submit the evidences for the relevant territory of the European Union. Moreover, they did not succeed in demonstrating the intensity of use of the EUTM. 

For instance, the evidences submitted related to a certificate issued in Mexico, which could not be considered as valid for the relevant territory, as well as an award from a wine contest held in Brussels in 1998, thus not applicable to the relevant period. 

In the third place, the Court held that the use of the earlier mark was symbolic or minimal, thus considered insufficient to constitute genuine use in the European Union. A trade mark is put to genuine use when it is used for all the goods and services for which it is registered and in this case, Tequila Revolución only submitted evidences for “Tequila”, but not for the remaining goods/services. 

Consequently, there were enough factors for the Court to consider that Tequila Revolución could not prove with the evidences submitted, the genuine use of the EUTM. Hence, the Court dismissed the appeal and confirmed the BoA’s decision rejecting the opposition.