Ace of spades v EUIPO - Krupp and Borrmann (JC JEAN CALL Champagne PRESTIGE) (EU trade mark - Judgment) [2020] EUECJ T-622/19 (09 December 2020)

Judgment Background to the dispute On 16 January 2017, the predecessor in law to Messrs Gerhard Ernst Krupp and Elmar Borrmann, Munich Accessories GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)). The mark in respect of which registration was sought, and for which the colours gold, black and, after intervention on the part of the departments of EUIPO, white were claimed, is the following three-dimensional sign JC JEAN CALL Champagne PRESTIGE: The goods in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Wine of French origin, namely Champagne; in accordance with the specifications of the protected geographical indication “Champagne”’. The trade mark application was published in European Union Trade Marks Bulletin No 2017/74 of 19 April 2017. On 6 June 2017, the applicant, Ace of spades Holdings LLC, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), as amended, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the following earlier marks: – the three-dimensional EU trade mark which was registered on 21 November 2008 under the number 6538987, in respect of which the colours gold and black were claimed and which covers ‘wines with registered designation of origin Champagne’ in Class 33. That trade mark (‘earlier trade mark No 1’) is reproduced below: – the three-dimensional EU trade mark which was registered on 5 March 2014 under the number 12019683, in respect of which the colours gold and black were claimed and which covers, inter alia, ‘alcoholic beverages (except beers), in particular wines, sparkling wines and champagnes’ in Class 33. That trade mark (‘earlier trade mark No 2’) is reproduced below: – the EU trade mark of the type ‘other’ mark (‘earlier trade mark No 3’) which is reproduced below and was registered on 17 December 2013 under the number 12013801, in respect of which the colour gold was claimed, which covers, inter alia, ‘alcoholic beverages (except beers), in particular wines, sparkling wines and champagnes’ in Class 33, and which has the following description: ‘The trade mark is a position mark. It consists of adorning golden front, back and neck labels as well as the central depiction of an ace of spades on a bottle. The broken lines illustrating the outline of the bottle serve to show the position of the sign and do not form part of the trade mark’. The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001). In June 2018, Messrs Krupp and Borrmann were entered in the register as being the new applicants for registration of the mark applied for. By decision of 31 October 2018, the Opposition Division rejected the opposition in its entirety. In the first place, in essence, it found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, because the signs were clearly dissimilar. In the second place, it found that, since similarity between the signs was a necessary condition for the opposition to be successful under Article 8(5) of Regulation 2017/1001, the opposition also had to be rejected in so far as it was based on that provision, without there being any need to examine the other conditions laid down by that provision. On 2 January 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division. By decision of 26 June 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, in the first place, it found that earlier trade marks Nos 1 to 3 and the mark applied for were not similar and that there was therefore no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, since one of the necessary conditions of that provision was not satisfied. In the second place, it took the view that the reputation of those earlier marks had not been established and that therefore another one of the necessary conditions in Article 8(5) of Regulation 2017/1001 was not satisfied. It therefore rejected the opposition based on the abovementioned provisions. Forms of order sought The applicant claims that the Court should: – annul or set aside the contested decision; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law It must be pointed out at the outset that, given the date on which the application for registration at issue was filed, namely 16 January 2017, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489 , paragraph 2 and the case-law cited). Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision, by the applicant in the arguments put forward and by EUIPO to Article 8(1)(b) and (5) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and (5) of Regulation No 207/2009, as amended, the wording of which is identical. Furthermore, although the Board of Appeal erred in citing, in essence, the conditions laid down by Article 8(5) of Regulation No 207/2009 before it was amended by Regulation 2015/2424, and not the amended version of that provision, it must be pointed out that, in those two versions of that provision, the conditions which the Board of Appeal examined, relating to the signs and the reputation of the earlier mark, are substantively identical. In support of the action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, secondly, infringement of Article 8(5) of that regulation. The first plea, alleging infringement of Article 8 (1)(b) of Regulation No 2 07/2009 The applicant alleges infringement of Article 8(1)(b) of Regulation No 207/2009 because there is, in its view, a likelihood of confusion on the part of the relevant public. EUIPO disputes the applicant’s arguments. It must be pointed out at the outset that, in the response, EUIPO requested that the Court examine the admissibility of the first plea. However, in its reply of 16 June 2020 to the measure of organisation of procedure, EUIPO stated, in essence, that it thenceforth considered the first plea to be admissible. Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199 , paragraphs 30 to 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14 , paragraph 42 and the case-law cited). It must be pointed out that, as regards the relevant public, the Board of Appeal found that the relevant public was the public in the European Union and consisted of the general public, which would display an average level of attention. The applicant does not dispute those assessments on the part of the Board of Appeal. EUIPO, by contrast, submits that the Board of Appeal should have limited the relevant public to consumers of champagne, because only the public that is common to the goods covered by the signs at issue is to be taken into consideration when comparing those signs. According to EUIPO, the level of attention of those consumers is, if only slightly, higher than average, since champagne is comparatively more expensive than other types of wine and is usually not consumed with the same regularity. In that regard, it must be held that, as the Board of Appeal in essence found, champagne can be very expensive and rare, but can also be sold at a relatively low price, and therefore the level of attention of the relevant consumer, who is a member of the general public which is interested in champagne, can vary from one consumer to another. Nevertheless, it is the perception of the average consumer in the relevant public which must be taken into account. Consequently, it must be held that the relevant public, which must be understood as being the general public in the European Union which is interested in champagne, will display an average level of attention. Furthermore, the Board of Appeal found that the goods covered by the mark applied for were identical to the goods covered by the earlier marks, because they were included in each of the lists of those goods. The parties do not dispute that assessment on the part of the Board of Appeal and there is no need to call it into question. The comparison of the signs The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 42, and of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 43). Lastly, it must be borne in mind that the greater or lesser degree of distinctiveness of the elements that are common to a mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgment of 8 June 2017, AWG v EUIPO – Takko (Southern Territory 23°48’25”S) , T‑6/16, not published, EU:T:2017:383, paragraph 30 and the case-law cited). The descriptive, non-distinctive or weakly distinctive elements of a composite trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by that mark (see, to that effect, judgment of 12 June 2019, Hansson , C‑705/17, EU:C:2019:481 , paragraph 53 and the case-law cited). In that regard, it must be pointed out that, in order to determine the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide) , T‑153/03, EU:T:2006:157 , paragraph 35, and of 12 July 2012, Winzer Pharma v OHIM – Alcon (BAÑOFTAL) , T‑346/09, not published, EU:T:2012:368, paragraph 78). In the present case, in the contested decision, after describing the signs at issue, the Board of Appeal examined the elements of which they consist and then determined whether those elements were distinctive, non-distinctive or dominant, before comparing those signs visually, phonetically and conceptually. It found that some of those signs could not be compared phonetically and were visually and conceptually different. With regard to the other signs, it found that they were visually, phonetically and conceptually different. It concluded that the signs at issue were dissimilar overall. The applicant submits that the Board of Appeal compared the signs at issue by taking into account only the verbal aspects, although each of those signs had to be considered as a whole. It argues that, in finding that the shape and the colours of the bottles were non-distinctive, the Board of Appeal disregarded the protection conferred on the shape and colours of the bottles by the three-dimensional marks. Furthermore, it submits that the earlier marks do not represent the usual shape and colours of champagne bottles. EUIPO disputes the applicant’s arguments. It submits that a simple comparison of the signs at issue reveals that any similarity can exist only between the mark applied for and earlier trade mark No 1, since the other earlier marks display obvious differences compared to the mark applied for, in particular in terms of the colours. It argues that earlier trade mark No 1 and the mark applied for are, however, dissimilar. It contends that the Board of Appeal was right in finding that the shape of a bottle flaring downwards without shoulders, the cork covered with a black foil, the label containing a figurative element at the level of the neck of the bottle and the golden foil covering the entirety of the bottle were non-distinctive and were relegated to a secondary role when examining the dominant elements of the signs. In response to the applicant’s arguments, it submits that those elements cannot be protected independently of other distinctive elements. Furthermore, it claims that the applicant has not succeeded in refuting the Board of Appeal’s findings regarding the distinctive and dominant elements in earlier trade mark No 1 and in the mark applied for, namely, respectively, on the one hand, the label and the figurative element in the form of an ace of spades or a spade, containing a fanciful representation of the letter ‘a’, and, on the other hand, the word elements ‘jean call’ and ‘jc’. It must be stated at the outset that, since the applicant takes issue with the Board of Appeal’s failure to take the shape of the bottles into consideration and puts forward arguments only with regard to the earlier three-dimensional marks, it must be held that the Board of Appeal’s assessments are not disputed in so far as they relate to earlier trade mark No 3, which is not a three-dimensional mark. – The elements of which the signs at issue consist As regards earlier trade mark No 1, the Board of Appeal categorised the word elements ‘champagne’, ‘750 ml’, ‘12% alc vol’ and ‘brut’ as descriptive. As regards earlier trade marks Nos 1 and 2, the Board of Appeal found that the shape of the bottle, its colour, the black foil, the fact that a logo was affixed to the neck or the centre of the bottle and, as the case may be, the shiny effect did not appear markedly different from presentational features that are common on the market for the packaging of the goods covered by those marks. It found that those elements had very little, if any, impact on the overall impression created by those marks. By contrast, the most distinctive elements of those earlier marks were, in its view, the figurative element in the form of a spade, with or without a fanciful upper-case letter ‘a’ inside, and, in earlier trade mark No 1, the words ‘armand de brignac’, although, because of their size, they attracted less attention than the ace of spades. It found that those elements provided those marks with, at most, an average degree of inherent distinctiveness. The Board of Appeal added that those marks did not have any elements which clearly stood out visually, with the exception, in earlier trade mark No 1, of the central label containing the ace of spades. As regards the mark applied for, the Board of Appeal found that the shape of the bottle as such, the bottom and top labels, the black foil on the cork and also the colour applied were non-distinctive with regard to the goods covered by that mark. Furthermore, it took the view that the word elements ‘champagne’, ‘brut’ and ‘prestige’ were descriptive or laudatory. In addition, it found that the leaf-like label and the similar element that appeared on the neck of the bottle, with the exception of the letters ‘jc’ placed inside those elements, appeared to be mostly decorative. The Board of Appeal found that, by contrast, the word elements ‘jean call’ and ‘jc’ were distinctive elements. In that regard, in the first place, it is not disputed that, on the one hand, in earlier trade mark No 1, the word elements ‘champagne’, ‘750 ml’, ‘12% alc vol’ and ‘brut’ and, on the other hand, in the mark applied for, the words ‘champagne’, ‘brut’ and ‘prestige’ are descriptive or laudatory of characteristics of the goods at issue and therefore non-distinctive. There is no need to call those assessments on the part of the Board of Appeal into question. Furthermore, it must be held, as the Board of Appeal found, that, in the mark applied for, the figurative element consisting of a label and of an interconnected pattern of adornments in the shape of a leaf-like element is mostly decorative and not, as EUIPO submits, uncommon. The same is true of the similar element appearing on the label on the neck of the bottle. In the second place, it is not disputed that, in earlier trade marks Nos 1 and 2, the figurative element in the form of a spade, with or without a fanciful letter ‘a’, on the label placed on the neck of the bottle and, in earlier trade mark No 1, the same element in the centre of the bottle and the words ‘armand de brignac’ constitute distinctive elements. There is no need to call those assessments on the part of the Board of Appeal into question. Furthermore, in earlier trade mark No 1, the labels placed on the neck and on the lower part of the bottle must be held to have an average degree of distinctiveness. In addition, it is not disputed that the word elements ‘jean call’ and ‘jc’, the latter element being one which is repeated twice, constitute distinctive elements in the mark applied for. There is no need to call those assessments on the part of the Board of Appeal into question. In the third place, it is important to state that, contrary to what EUIPO infers, the Board of Appeal did not find that any of the elements of which the earlier marks and the mark applied for consist were dominant. However, it categorised the elements referred to in paragraph 39 above as the most distinctive elements, if not the only distinctive elements, in earlier trade marks Nos 1 and 2, on the grounds that the shape of the bottles, the colours of the bottles and the black foil covering the closure of the bottles were non-distinctive and would have very little, if any, impact on the overall impression created by those marks. It did not, however, categorise those elements as negligible. More specifically, first, with regard to the colour of the bottles in earlier trade marks Nos 1 and 2, the Board of Appeal found that the use of colours could serve to distinguish, for example, sparkling wines, white wines and rosé wines. As regards earlier trade mark No 1, it, however, failed, when assessing the distinctiveness of the various elements, to take into consideration the opaque and shiny appearance of the coloured foil, which it subsequently, in the visual comparison, categorised as a common presentational feature. However, although the use of such an element cannot be categorised as extremely uncommon, it is apparent from the evidence provided both by the applicant and by the predecessor in law to the other parties to the proceedings before the Board of Appeal that, contrary to EUIPO’s claims, it is not usual. Secondly, regarding the shape of the bottles represented in earlier trade marks Nos 1 and 2, the Board of Appeal first of all observed that ‘average consumers [were] not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any word or graphic element, and [that] it could therefore prove more difficult to establish [the] distinctive character … [of] such a three-dimensional mark than [it would be if what was involved was] a word or figurative mark’. Next, it pointed out that that shape was commonly used for champagne bottles and that it would be regarded as non-distinctive with regard to alcoholic beverages, including sparkling wines and champagnes. It also found that earlier trade marks Nos 1 and 2 ‘clearly represent[ed] a rather standard or even common shape of champagne or wine bottles’, that those ‘marks claim[ed] exclusive protection for those rather standard shapes’ and that it was ‘clearly necessary … to assess the distinctive character of the earlier marks’ individual elements, and that of [those marks] as a whole’. Lastly, it found that there was ‘no reason for a finding that the claimed shapes and forms of packaging [would] enable the relevant public immediately and with certainty to distinguish the earlier goods from those of another commercial origin’. In that regard, EUIPO submits that the shape of the bottle is visibly stockier in earlier trade mark No 1 than in the mark applied for. Furthermore, it claims that that shape is that of a bottle flaring downwards without shoulders, which constitutes, as it submits that the Board of Appeal rightly found, a characteristic which is banal and will be largely ignored by the relevant public. It must, however, be stated that the Board of Appeal in no way drew a distinction between how the shapes of those two bottles looked and considered the shape of the bottle as a whole to be non-distinctive. Thirdly, it must be pointed out that the Board of Appeal found that the shape of the bottle, the colour of the bottle and the black foil would have very little, if any, impact on the overall impression created by earlier trade marks Nos 1 and 2, without, however, categorising those elements as negligible. In the first place, even assuming that those elements are non-distinctive or weakly distinctive, it must be borne in mind that, in accordance with the case-law cited in paragraphs 26 and 27 above, the marks must be considered as a whole and the comparison of the marks at issue must, save where there are elements which are negligible, be based on the overall impression created by those marks, because the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Consequently, the Board of Appeal was not entitled to conclude that the abovementioned elements would not have any impact on the overall impression created by those earlier marks. In the comparison of the signs, the weakly distinctive character, or even the lack of distinctive character, of an element in common which is not negligible, cannot imply that the similarity resulting from that element in common will not have to be taken into account. In the second place, even assuming that the shape of the bottle, the colour and the black foil are non-distinctive or weakly distinctive, the Board of Appeal erred in not taking into consideration the combination of those elements, which was capable of having distinctive character in itself. Contrary to what EUIPO claims, the applicant’s arguments are not tantamount to a submission that the non-distinctive elements, consisting of the shape and the colour of the bottle, should be protected independently of other distinctive elements. It was precisely by considering the various elements independently, without taking into account any distinctive character which the combination of those elements might have, that the Board of Appeal found, erroneously, that those elements would have very little, if any, impact on the overall impression created by earlier trade marks Nos 1 and 2. The combination of the shape of the bottle, its colour and the black foil constitutes part of those marks, which, as registered trade marks, are presumed to have distinctive character. It must also be pointed out that the Board of Appeal stated that earlier trade marks Nos 1 and 2 did not have any elements which clearly stood out visually, with the exception of the central label containing the ace of spades, depicted in the centre of the bottle of earlier trade mark No 1. However, that is tantamount to finding that earlier trade mark No 2 does not have any element which stands out visually, although it is a registered three-dimensional trade mark. Moreover, the combination of the shape of the bottle, its colour and the black foil does not appear to be usual, in particular where the colour is that of an opaque, shiny, coloured foil, as in earlier trade mark No 1. In that regard, EUIPO claims that the Board of Appeal’s findings that the earlier marks represent the usual shape and colours of champagne bottles are based on the evidence submitted by the parties. However, it is apparent from that evidence that the combination of a bottle covered by an opaque, shiny, coloured foil and of a black foil is not in any way usual and that, if the colour of earlier trade mark No 1 is taken into consideration, one single example of a representation of a bottle in the evidence, with the exception of those which may refer to those marks, corresponds to a similar combination, and it cannot, moreover, be stated that it is not a representation of earlier trade mark No 1. It follows that earlier trade marks Nos 1 and 2 must be considered as a whole and that it is not possible, as the Board of Appeal correctly found, to regard some elements as dominant or categorise some elements as negligible. The same is true of the mark applied for, since the Board of Appeal found that the shape of the bottle, the colour of the bottle and the black foil did not constitute distinctive elements, without, however, categorising them as negligible. Those elements cannot be excluded from the comparison of the signs at issue or not have any impact in making that comparison, on the grounds set out in paragraphs 45 and 46 above and, as stated in paragraph 48 above, on the ground that the combination of a bottle covered with an opaque, shiny, coloured foil, in particular a golden-coloured one, and of a black foil is not in any way usual. – The visual comparison From a visual standpoint, after pointing out similarities regarding elements of the signs at issue which had been considered to be non-distinctive, the Board of Appeal found that those signs created a different visual impression and were not similar, because the distinctive elements of those signs were completely different. The applicant submits that the signs at issue have the shape, colour and logo of the bottles in common and that they are visually similar. EUIPO disputes the applicant’s arguments. It submits that earlier trade mark No 1 and the mark applied for have the elements which the Board of Appeal considered to be non-distinctive in common and differ in a number of elements, namely, the shape of the bottle, which is visibly stockier in the earlier mark, the intermediate part between the body of the bottle and the cap and the highly ornamented label in the mark applied for. It claims that the applicant has not submitted arguments disputing that the visual differences in the dominant elements of the signs outweigh the similarities between them which result from the inclusion of non-distinctive or weakly distinctive elements. It must be borne in mind at the outset that the Board of Appeal was right in not finding that certain elements of the signs at issue were dominant. As the Board of Appeal, in essence, found, first, earlier trade mark No 1 and the mark applied for differ in the figurative elements on the neck of both bottles and on account of their respective distinctive word elements and the spade placed in the centre of the bottle in the earlier mark. Secondly, earlier trade mark No 2 and the mark applied for differ as a result of the presence of distinctive word elements in the mark applied for. It may be added that earlier trade mark No 1 and the mark applied for contain different descriptive word elements and that the shiny appearance of the opaque, coloured foil covering the bottle in the mark applied for is not present in earlier trade mark No 2. By contrast, it must be held, as the Board of Appeal found, that earlier trade marks Nos 1 and 2 and the mark applied for have rounded shapes which are similar overall and that earlier trade mark No 1 and the mark applied for have a black foil and an opaque, shiny, coloured foil that covers the bottle in common. The colours of those opaque, shiny foils are, as the Board of Appeal pointed out, similar. It must be stated that, for the purposes of the visual comparison between the marks, the Board of Appeal was right in taking into consideration the various elements of earlier trade marks Nos 1 and 2 and the mark applied for and correctly pointed out, in essence, both the differences and the similarities between them. However, what led the Board of Appeal to conclude that earlier trade marks Nos 1 and 2, on the one hand, and the mark applied for, on the other hand, were dissimilar overall is that it took into account only the differences between them, by failing to take those marks into consideration as a whole when carrying out the global assessment of the similarity between them. Its finding is thus vitiated by an error of assessment, because it is based on the incorrect premiss that the supposedly non-distinctive elements which those marks have in common do not, regardless of their number and the degree of similarity between them and even though they are not categorised as negligible, have any influence on the overall impression created by those marks. However, even assuming that those elements are non-distinctive, the Board of Appeal was not entitled to disregard the points of similarity to which they might give rise and conclude that the abovementioned marks were visually dissimilar overall. It should have found that they were visually similar overall. The same conclusion would have had to be reached even if the Board of Appeal had found, as touched on by it, that those elements had very little impact on the overall impression created by those marks. It could nevertheless have differentiated between the degree of overall visual similarity between those marks, by taking into consideration the number of those elements in common, in the light of the number of elements of which the marks under comparison consist, and by taking into consideration whether the combination of those elements was more or less unusual. Consequently, it must be held that the Board of Appeal erred in finding that earlier trade marks Nos 1 and 2 and the mark applied for created different overall visual impressions. – The phonetic comparison From a phonetic standpoint, the Board of Appeal found that earlier trade mark No 1 and the mark applied for were dissimilar, on account of the different pronunciation, on the one hand, in the earlier mark, of the letter ‘a’ and of the words ‘armand de brignac’, and, on the other hand, in the mark applied for, of the elements ‘jean call’ and ‘jc’. It found that, since earlier trade mark No 2 did not contain any word elements, it would not be pronounced, which meant that no phonetic comparison between that mark and the mark applied for was possible. The parties do not dispute those assessments on the part of the Board of Appeal and there is no need to call them into question. – The conceptual comparison From a conceptual standpoint, the Board of Appeal found that the distinctive elements of earlier trade marks Nos 1 and 2 and those of the mark applied for evoked different concepts, whereas the elements that were common to the signs at issue were descriptive or non-distinctive elements which were therefore unable to confer conceptual similarity on those signs. It must be stated, as observed by EUIPO, that the applicant does not dispute those assessments on the part of the Board of Appeal. There is no need to call them into question. The likelihood of confusion The applicant claims that the Board of Appeal erred in ruling out the existence of a likelihood of confusion. EUIPO disputes the applicant’s arguments, submitting that the signs at issue are visually, phonetically and conceptually different and consequently dissimilar overall. In the contested decision, the Board of Appeal found, in essence, that, since the signs at issue were not similar, one of the necessary conditions laid down in Article 8(1)(b) of Regulation No 207/2009 was not satisfied and that there was no likelihood of confusion within the meaning of that provision. In that regard, it must be held that, since the Board of Appeal erred in finding that earlier trade marks Nos 1 and 2 and the mark applied for were visually dissimilar and, consequently, visually, phonetically and conceptually dissimilar, it erred in finding that they were dissimilar overall and that one of the conditions laid down in Article 8(1)(b) of Regulation No 207/2009 had not been satisfied. In the light of the fact that those marks are at least visually similar, the Board of Appeal should have carried out a global assessment of the likelihood of confusion, taking into consideration all of the relevant factors (see, to that effect, judgment of 4 March 2020, EUIPO v Equivalenza Manufactory , C‑328/18 P, EU:C:2020:156 , paragraphs 75 and 76), as EUIPO admitted in its reply of 16 June 2020 to the measure of organisation of procedure. In that context, it should also have taken the degree of visual similarity between the signs at issue into consideration (see paragraph 57 above). Consequently, it must be held that the Board of Appeal erred in finding that one of the conditions laid down in Article 8(1)(b) of Regulation No 207/2009 was not satisfied and erred in ruling out the existence of a likelihood of confusion within the meaning of that provision without carrying out a global assessment of that likelihood of confusion, thus infringing that provision. The first plea must therefore be upheld and the contested decision must be annulled in so far as the Board of Appeal dismissed the applicant’s appeal and rejected the opposition to the extent that it was based on Article 8(1)(b) of Regulation No 207/2009. The second plea, alleging infringement of Article 8 (5) of Regulation No 2 07/2009 The applicant alleges infringement of Article 8(5) of Regulation No 207/2009 in that the Board of Appeal did not take into account the evidence of use that it had provided. EUIPO disputes the applicant’s arguments. Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must therefore be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS) , T‑215/03, EU:T:2007:93, paragraphs 34 and 35). The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation , C‑252/07, EU:C:2008:655 , paragraphs 35 and 36). In the contested decision, the Board of Appeal first of all stated, in essence, that the finding that the signs at issue were dissimilar was equally valid with regard to the opposition in so far as it was based on Article 8(5) of Regulation No 207/2009. It nevertheless examined that opposition, to the extent that there might be a remote or faint similarity between the signs at issue based on banal elements, such as the common shape of champagne or sparkling wine bottles and the colours used. Next, after mentioning the items of evidence which the applicant had provided in order to prove that the earlier marks have a reputation in the European Union and which are grouped together in Annexes numbered 1 to 8, the Board of Appeal found that the evidence submitted was mostly limited to champagne and that the relevant public with regard to the goods covered by the earlier marks was the general public. Lastly, the Board of Appeal stated that the degree of knowledge required for a trade mark to be considered to have a reputation had to be regarded as having been reached when the trade mark at issue was known by a significant part of the public concerned by that mark. It pointed out that, in examining that condition, it was necessary to take into consideration all the relevant facts of the case, in particular the market share held by that mark, the intensity, geographical extent and duration of its use and the size of the investment made by the proprietor in promoting it, without there being any requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all of the territory concerned, so long as that reputation existed in a substantial part of that territory. It found that the evidence provided by the applicant fell short of satisfying that condition. The Board of Appeal stated, first, that it was apparent from the evidence submitted by the applicant that the brand Armand de Brignac ‘is recognised and understood by only 1% of all people’ and that that statement on the part of the applicant referred to the overall brand under which its goods were marketed. Secondly, it pointed out that the market share of the earlier marks was not known because the applicant had not provided any data. It stated that the applicant had not, for example, provided any invoices or other sales documents which might give indications as to where exactly it had used its earlier marks, the goods on which they had been used and the quantities of those goods. It observed that it was impossible to glean any solid information as regards the extent of use of the earlier marks from the documents provided and that no sales or advertising figures had been given with regard to those marks. It took the view that reputation could not be proved by means of probabilities or presumptions. Thirdly, it stated that it was clear from the evidence provided by the applicant that it had undoubtedly received acclaim and very positive reviews, in particular with regard to champagnes, but that that acclaim alone did not give any clear idea of the extent, intensity and duration of use of the earlier marks or of whether the use of those marks over time in the European Union had been substantial. According to the Board of Appeal, that acclaim might come from wine industry professionals, whereas the relevant public consisted of the general public. It stated that the applicant’s champagnes appeared to be renowned within a small, very exclusive segment of the market for champagnes, which did not, however, mean that the earlier marks had achieved recognition by a significant part of the relevant public. Fourthly, it observed that the applicant had not provided any market survey information in relation to the relevant public’s recognition of the earlier marks or any information about the purported advertising campaigns and marketing strategy and their extent and outcome. Furthermore, it stated that there were no representations of the earlier marks in several of the items of evidence provided and that the relevant public’s degree of knowledge of those marks was likely to be even lower than that referred to in connection with the brand Armand de Brignac (see paragraph 74 above). Furthermore, it found that recognition of a word sign such as Armand de Brignac could not automatically be extrapolated to the earlier marks and that, although one of those earlier marks contained the word element ‘armand de brignac’, sufficient recognition of that word element had also not been proved by the evidence submitted. The Board of Appeal concluded that, since it had not been proved that the earlier marks had a reputation, one of the requirements of Article 8(5) of Regulation No 207/2009 was not satisfied. It rejected the opposition based on that provision. In that regard, in the first place, the applicant submits that the Board of Appeal stated that it could not be required that a mark in respect of which reputation was claimed be known by a given percentage of the public. It maintains that, consequently, it is not possible to rule out any reputation on the part of the Armand de Brignac brands for the sole reason that only 1% of people recognise the trade mark. It must be pointed out, as observed by EUIPO, that the Board of Appeal did not establish a minimum threshold of knowledge of the earlier marks and did not base its finding that there was no proof that those marks had a reputation on the abovementioned percentage alone, but on a body of evidence (see paragraphs 73 to 77 above). Furthermore, when assessing the reputation which a trade mark has in the European Union, the percentage of the relevant public which knows that mark may be taken into consideration, but not that of people in general who know that mark. In the second place, the applicant claims that the Board of Appeal did not take Annex 2, which the Board of Appeal entitled ‘Brand Overview’, into account, but merely stated that there were no representations of the earlier marks in that annex. It is sufficient to state in that regard that the earlier marks are not represented or even mentioned in that annex and that the applicant does not claim that the Board of Appeal’s statement is incorrect. In the third place, the applicant submits that the Board of Appeal erred in complaining that it had not provided certain documents and in subsequently claiming that, as a result, no reputation had been proved. It states that it demonstrated, by means of Annex 2 (see paragraph 80 above) and by means of Annex 3, which the Board of Appeal entitled ‘Champagne advertising in a dossier of magazines’, that its earlier trade mark had received a rating of 98 points from a famous Spanish critic and that it had been ranked first in a blind taste test of 1 000 champagnes conducted by the only international champagne publication. Furthermore, it submits that the Board of Appeal concluded that the applicant’s champagnes had received very positive acclaim and might be among the highest quality champagnes and those most admired by professionals in the wine industry. Although the Board of Appeal referred to examples of documents and mentioned the type of relevant data which the applicant could have provided in order to prove that the earlier marks had the reputation which it alleged they had, it was, however, permissible for the applicant to provide other types of documents, provided that they contained such data. However, it is apparent from the evidence which it provided that the information regarding a rating given to a trade mark, namely Armand de Brignac, which is not, moreover, contrary to what the applicant implies, one of the earlier marks, and regarding a ranking as a result of a taste test relate to the quality of the product marketed and are not capable of proving that the earlier marks have a reputation in the European Union. The same is true of the acclaim, which is mentioned by the applicant as having been referred to by the Board of Appeal. The fact that the abovementioned taste test was a blind taste test tends, moreover, to show that none of the earlier marks contributed towards the outcome of the ranking mentioned, which cannot therefore serve to show that one of those marks is recognised by the relevant public. In the fourth place, the applicant submits that the Board of Appeal erred in not taking Annex 6, which the Board of Appeal entitled ‘Product information concerning “The World’s Most Admired Champagne Brands”’, into account. It claims that the article in that annex contains pictures of Armand de Brignac bottles showing their distinctive shape and also contains references to the colours of those bottles. It submits that it also provides information regarding the duration of use, which it states has been intensive since 2006, and regarding the extent of use, by revealing that it is used by ‘much of the music business glitterati, parts of the acting profession, super models, and top footballers’. First of all, it must be pointed out that the fact that the article in question, which dates from 2015, contains pictures of bottles and a reference to the year in which the mark Armand de Brignac was launched does not serve to provide particulars regarding the use of that mark, a mark which is not, in any event, among earlier trade marks Nos 1 to 3, since 2006. Next, it must be stated that the picture of bottles contained in the article does not make it possible to identify one of those earlier marks. Lastly, it must be pointed out that no information regarding the recognition of one of those earlier marks by the relevant public since, moreover, 2006 emerges from the text of the article in question. In the fifth place, the applicant complains that the Board of Appeal, after confirming that Armand de Brignac champagne was renowned, denied that the earlier marks, in particular the three-dimensional marks, were renowned, although that was the only format in which that product could be sold. In that regard, it must be pointed out that the Board of Appeal stated that the applicant’s champagne ‘appear[ed] to be renowned within a small, very exclusive segment of the market for champagnes’, but did not find that recognition of the word element ‘armand de brignac’ had been proved. Furthermore, as the Board of Appeal correctly pointed out, even if a product is renowned under the name of Armand de Brignac, it cannot not be deduced from that that there is proof of the reputation of the earlier marks. In the sixth place, the applicant claims that, even though the trade marks are renowned within a very exclusive segment of the market, that does not mean that they cannot have a reputation amongst the relevant public or the general public. It must be stated that the Board of Appeal referred to a possible reputation on the part of the product, and not of the earlier marks, within a small, very exclusive segment of the market for champagnes. Furthermore, it is true that a product may be purchased, in particular because it is expensive, by a small part of the relevant public, although it is marketed under a mark which has a reputation, within the meaning of Article 8(5) of Regulation No 207/2009, with regard to a significant part of the relevant public. The fact, however, remains that such a reputation, which corresponds to a degree of knowledge of the earlier mark by a significant part of the public concerned by the goods or services covered by that trade mark, must be proved (see, by analogy, judgment of 14 September 1999, General Motors , C‑375/97, EU:C:1999:408, paragraphs 21 to 26). It would, however, be contradictory to state that a mark which has a reputation within a very exclusive segment of the market for champagne is known by a significant part of the public concerned by champagne. It follows from all of the foregoing that the applicant’s arguments cannot call into question the Board of Appeal’s finding that it has not been established that the earlier marks have a reputation in the European Union. Consequently, the second plea, alleging infringement of Article 8(5) of Regulation No 207/2009, must be rejected. Conclusion on the outcome of the action In view of all of the foregoing considerations, the applicant’s first head of claim must be upheld in part in so far as it seeks the annulment of the contested decision, since that decision is vitiated by an infringement of Article 8(1)(b) of Regulation No 207/2009 and must be annulled in so far as the Board of Appeal dismissed the applicant’s appeal and rejected the opposition based on the abovementioned provision. By contrast, that head of claim must be rejected as to the remainder, since there has been no infringement of Article 8(5) of Regulation No 207/2009. Furthermore, in its reply of 25 June 2020 to the measure of organisation of procedure, the applicant stated that, by its first head of claim, it was also requesting the alteration of the contested decision. In that regard, it must be borne in mind that the power of the General Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM , C‑263/09 P, EU:C:2011:452 , paragraph 72). In the present case, it must be held that the conditions for the exercise of the Court’s power to alter decisions are not satisfied. Since the Board of Appeal erroneously found that the signs at issue were not similar, it did not carry out the global assessment of the likelihood of confusion. The Court does not therefore have the power to carry out such an assessment and to rule on whether or not there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Consequently, the applicant’s first head of claim must be rejected in so far as it seeks the alteration of the contested decision. Costs Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Moreover, under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared. In the present case, the applicant and EUIPO have been partially unsuccessful. Consequently, each party must be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Fifth Chamber) hereby: 1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 June 2019 (Case R 3/2019-5) in so far as it dismissed the appeal brought by Ace of spades Holdings LLC and rejected the opposition based on Article 8(1)(b) of Regulation No 207/2009; 2. Dismisses the action as to the remainder; 3. Orders each party to bear its own costs. Spielmann Spineanu-Matei Mastroianni Delivered in open court in Luxembourg on 9 December 2020. E. Coulon S. Papasavvas Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. 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