RIPASSA ZENATO - 254154

• Administrative Decision Number: 254154
• Date: 13 August 2019
• opponent: Camera di Commercio Industria
• Section: Trade Marks Act, 1996 - 2018 - Current

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DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS

IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for registration of Trade Mark No. 254154 and in the matter of an

Opposition thereto.

Cantina Broglie 1 S.R.L. Applicant

Camera di Commercio Industria, Artigianato e Agricoltura di Verona Opponent

The Application

1. On 14 January, 2016 CANTINA BROGLIE 1 S.R.L of Via Dell l'Artigianato 16, I-37019

Peschiera Del Garda, Fraz Broglie (VR), Italy (hereinafter “the Applicant”) made an application

to convert its European Union Trade Mark (EUTM) application, in respect of the sign depicted

below (hereinafter “RIPASSA ZENATO”), to an Irish trade mark for “Alcoholic beverages

(except beers)” in Class 33. The application date is deemed to be the original EUTM application

date of 7 May, 2007.

2. The application was accepted for registration and advertised accordingly under No. 254154 in

Journal No. 2302 dated 9 March, 2016.

3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was filed

on 7 June, 2016 by Camera di Commercio Industria, Artigianato e Agricoltura di Verona of

Corso Posta Nuova 96, I-37122 Verona, Italy (hereinafter “the Opponent”). The Applicant filed

a counter-statement on 2 September, 2016 and evidence was, in due course, filed by the parties

under Rules 20 and 21 of the Trade Marks Rules, 1996 (“the Rules”).

4. No further evidence was filed and neither party elected to be heard or to file written submissions

in lieu of being heard. So, respecting the wishes of both parties, I decided the matter on the

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materials filed up to and including Rule 21 stage. The parties were notified on 24 April, 2019

that I had decided to dismiss the opposition and to allow the mark to proceed to registration. I

now state the grounds of my decision and the materials used in arriving thereat in response to a

request by the Opponent in that regard pursuant to Rule 27(2).

The Grounds of Opposition

5. In its Notice of Opposition, the Opponent identifies itself as the Chamber of Commerce for the

province of Verona in Italy (part of the Italian Chamber of Commerce system), whose mission

is to deal with the general interests of local production, to promote local development, market

regulation and transparency and to provide links between businesses and the Public Authorities.

6. The Opponent says it is the owner of European Collective Trade Mark Registration No.

005054606 VALPOLICELLA RIPASSO registered in Class 32 for “alcoholic beverages

(except beers) and wine from the Valpolicella region”. It then raises objection to the present

application under various Sections of the Act, which I summarise as follows:

- Section 10(2)(b) – likelihood of confusion on the part of the public, including a likelihood of

association with the Opponent’s earlier trade mark;

- Section 10(3) – use of the applied for mark would take unfair advantage of, or be

detrimental to, distinctive character or reputation of the Opponent’s Trade Marks;

- Section 10(4)(a) –use of the Applicant’s mark in the State is liable to be prevented by virtue

of any rule of law (in particular, the law of passing off) protecting an unregistered trade

mark or other sign used in the course of trade.

7. In its Counter-Statement the Applicant denies all the grounds of opposition and puts the

Opponent on proof to substantiate each and all of the allegations claimed in its Notice of

Opposition.

The Opponent’s Evidence Under Rule 20

8. Evidence submitted by the Opponent under Rule 20 consists of a Statutory Declaration and

supporting evidence, by way of eight exhibits labelled “GR1” to “GR8”, dated 17 November,

2017 of Giuseppe Riello, President of the Opponent.