Jaume Mourisco Ayuso. Intellectual Property Lawyer | Litigation Department

Now that the Christmas season is over, it is a good time to discuss this case and analyse what happened to Freixenet, a company that is used to winning (and toasting to this success with its cavas and wines), but failed to do so on this occasion.

This case goes back to 9 May 2022, when Freixenet applied for the trademark “CB” before the EUIPO for goods in class 33, specifically, sparkling wines.

This application was detected by the company Alvear, based in Montilla (Cordoba), which filed an opposition to this application on 10 June 2022, alleging that there was a likelihood of confusion with its priority word mark (National Trademark 1030695), which was registered in class 33 for “wines, spirits and liqueurs”.

Freixenet’s defence included requesting the corresponding proof of use of the trademark that was the basis of the opposition, as it understood that this trademark was not being effectively used. However, in accordance with the EUIPO, Alvear provided sufficient proof of use, meaning that this use was proved and the opposition upheld.

Confident of their position and arguments, Freixenet filed an appeal against the EUIPO’s ruling as it considered that, on the one hand, it had not correctly assessed the proof of use provided as counterevidence and, on the other hand, in their opinion, the field in which the trademark was to be applied could not be considered similar.

Again, the EUIPO rejected Freixenet’s arguments in its Decision R 816/2024-1 and, again, Freixenet did not stand by idly, raising the matter to the General Court, where it put forward the same arguments as in the previous appeals defending its trademark application.

The General Court of the EU, having admitted and assessed the appeal, ratified the EUIPO’s judgement of case T-222/25, although it left a series of presents for those of us involved in the industrial property world.

Apart from the fact that the General Court considered the proof of use provided by Alvear to be sufficient in terms of effective use of the trademark forming the basis of its opposition, and ratifying the phonetic identify and strong visual similarity, it provided two points of note:

• It confirms the criteria regarding how a trademark can be used with variations relating to how it was originally registered;
• It confirms the applicable identity because it considers that the category “fino wine”, the product for which Alvear had mainly contributed use, cannot be taken as an autonomous subcategory within class 33, but rather it considers that said category falls within the general field of “wines”.

Regarding the use of a trademark differently to how it had been used, the GCEU recalls that the key lies in whether or not the variations made alter the distinctiveness of the trademark as registered. As such, in this case, the word mark had been registered as “C.B.”, and it was being used in a figurative form, albeit with the two full stops after each letter removed, i.e., as “CB”. The GCEU understands that removing these full stops does not entail a substantial variation, and as such it ratifies the fact that the trademark is being used in accordance with its registration.

With regards to the issue of whether or not it is an autonomous subcategory, the GCEU clarifies how goods and services categories should be compared, and in particular, what happens when a subcategory may or may not be taken as autonomous (more specifically, it provides clarity in the wine sector by specifying what falls within the general category “wines”).

The GCEU brings the concept of “partial use”, the aim of which is to prevent unavailable trademarks when they have not been used for a specific goods category, which cannot, in the words of the court, “result in depriving the holder of the trademark in question of all protection in relation to goods that, without being exactly identical to those for which effective use has been proven, are not substantially different thereto and belong to the same group that can only be divided arbitrarily.”

Thus, the GCEU concludes that the concept of “part of the goods or services” cannot be understood as all the commercial forms that are similar, but rather only to goods and services that are sufficiently different to be taken as a coherent category or subcategory that is clearly differentiated.

With this in mind, regarding what is and what isn’t an autonomous subcategory, the GCEU thus ratified the provisions of the EUIPO with regards to the fact that there was applicable identity between the “sparkling wines” for which Freixenet requested its trademark and Alvear’s “fino wine” as the GCEU considered that both fell within the general category of “wines”.

As such, this judgement provides particular clarity with respect to when a trademark is considered to be used or not in a manner that is different to its registration, and what the criteria are for determining when a good can be applicably considered a subcategory or not with a greater degree of certainty.

This being the case, Freixenet is sure to take greater precautions in future when applying for new registrations, especially to its field of application, as there could be (again, as in many other cases) a small David ready to stand up to Goliath.