Borco-Marken-Import Matthiesen v EUIPO - Belles Marks (KINGSBURY) (EU trade mark - Judgment) [2024] EUECJ T-603/23 (11 September 2024)

Judgment By its action under Article 263 TFEU, the applicant, Borco-Marken-Import Matthiesen GmbH & Co. KG, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 July 2023 (Case R 481/2023-1) (‘the contested decision’). Background to the dispute On 31 May 2021, the other party to the proceedings before the Board of Appeal of EUIPO, Belles Marks LTD, filed an application for registration of an EU trade mark with EUIPO for the word sign KINGSBURY. The mark applied for covered goods 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, corresponding to the following description: ‘Alcoholic beverages (except beer); preparations for making alcoholic beverages; alcoholic preparations for making beverages; cider’. On 29 July 2021, the applicant, Borco-Marken-Import Matthiesen GmbH & Co. KG, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the earlier word mark FINSBURY, covering goods in Class 33 and corresponding to the following description: ‘Gin’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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). On 17 February 2023, the Opposition Division partially upheld the opposition and refused the registration of the mark applied for in respect of the following goods: ‘Alcoholic beverages (except beers); cider’. On 3 March 2023, Belles Marks LTD filed an appeal with EUIPO against the decision of the Opposition Division in so far as it had upheld the opposition. By the contested decision, the Board of Appeal upheld the appeal on the ground that, taking into account, in particular, the low degree of visual similarity and the average degree of phonetic similarity between the marks at issue, and despite the identity of the goods at issue, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to bear the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs in the event that an oral hearing is convened. Law In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. Article 8(1)(b) of Regulation 2017/1001 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. The risk that the public might believe that the goods or services at issue come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services at issue 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 2017/1001, 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 is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was, in the present case, no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. The territory at issue and the relevant public According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services at issue (see judgment of 13 February 2007, Mundipharma v OHIM - Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). The Board of Appeal found that the goods concerned were aimed at the general public with an average level of attention and that it was appropriate to focus the examination on the Spanish part of that public within the European Union. The applicant does not dispute those findings of the Board of Appeal and, moreover, there is nothing in the file capable of calling them into question. The comparison of the goods The applicant claims that the product ‘cider’ of the mark applied for and the product ‘gin’ covered by the earlier mark are not only similar, but highly similar since ‘both goods are alcoholic beverages and, therefore, share, amongst others, the same purpose and point-of-sale’. EUIPO argues that there was nothing to prevent a finding that there is no likelihood of confusion, even where identical goods are involved. According to settled case-law, in assessing the similarity of the goods at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, their nature, purpose and use, and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 28 April 2021, West End Drinks v EUIPO - Pernod Ricard (The King of SOHO) , T‑31/20, not published, EU:T:2021:217 , paragraph 61 and the case-law cited). It is apparent from the contested decision that the Board of Appeal, by adopting the findings of the Opposition Division, considered that the product ‘cider’ of the mark applied for and the product ‘gin’ covered by the earlier mark were similar. In particular, the Board of Appeal considered that, although their production process was different, those goods belonged to the same category of alcoholic beverages intended for the general public and that they shared the same purpose and method of use. It further stated that those goods were interchangeable and could be consumed on the same occasions, and that they were sold through the same distribution channels and could come from the same producer. The applicant does not dispute the assessment criteria, which led the Board of Appeal to consider that cider and gin were similar. However, relying, in essence, on those same assessment criteria, it argues that the Board of Appeal should have found that those goods were ‘highly similar’. In that regard, in the first place, it must be stated that the applicant does not put forward any specific argument in order to demonstrate that cider and gin are highly similar. In the second place, it should be noted that, while those goods share a number of common characteristics, they also have characteristics which are unique to them and which distinguish them. In particular, first, their raw materials and manufacturing processes are different. Secondly, gin is a spirit product with high alcoholic strength, whereas cider generally contains a low alcohol content. Therefore, contrary to what the applicant maintains, the product ‘cider’ of the mark applied for and the product ‘gin’ covered by the earlier mark cannot be considered to be highly similar. Given that the goods ‘alcoholic beverages (except beers)’ of the mark applied for are identical to the product ‘gin’ covered by the earlier mark, it follows that the Board of Appeal was right to find that the goods covered by the marks at issue were partly identical and partly similar. 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 those 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 at issue plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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). The distinctive elements of the signs at issue The Board of Appeal considered that the Spanish-speaking public in particular would single out, in the mark applied for, the term ‘king(s)’, which was part of the basic English vocabulary and would be pronounced like an English word. According to it, that term is laudatory and has reduced distinctiveness with respect to the goods at issue. As for the ending ‘(s)bury’, since the Spanish public does not have a great command of English, part of that public would not associate any meaning with it. As regards the earlier mark, the Board of Appeal considered that the element ‘fin’ could not be distinguished from the sequence of letters ‘sbury’. The applicant argues that the contested decision does not make it clear why the relevant public would single out the element ‘kings’ of the mark applied for, reduce it to ‘king’ and perceive it as laudatory. EUIPO disputes the applicant’s argument. It must be borne in mind that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he or she will break it down into word elements which, for him or her, have a specific meaning or which resemble words known to him or her (see judgment of 13 February 2007, RESPICUR , T‑256/04, EU:T:2007:46 , paragraph 57 and the case-law cited). In the present case, the mark applied for consists of the word element ‘kingsbury’. The nine letters which compose it have no separation created by spaces or punctuation marks such as dashes, slashes or periods. The relevant public will therefore be led to perceive the mark applied for as a whole. However, it cannot be ruled out that part of the relevant public may perceive, in that mark, the term ‘king’, which belongs to the basic English vocabulary. It should be noted that, according to the case-law, the term ‘king’ is used, in the advertising context, in a laudatory sense, as meaning ‘the best in its field’, that it can thus be understood as praise for the quality of the goods at issue and that it therefore has a weak distinctive character (see judgment of 28 April 2021, The King of SOHO , T‑31/20, not published, EU:T:2021:217 , paragraph 85 and the case-law cited). The Board of Appeal therefore did not make an error of assessment in considering that the relevant public could single out the term ‘king’ in the mark applied for and give to it a laudatory character as to the quality of the goods covered and that, as a result, that term had reduced distinctiveness. By contrast, with regard to the term ‘sbury’, since the Board of Appeal correctly considered that the Spanish part of the relevant public would not associate any meaning with that term, the Board of Appeal implicitly, but necessarily, considered that it is more distinctive than the term ‘king’. The visual comparison The applicant claims that the Board of Appeal incorrectly divided the earlier mark into ‘fin’ and ‘sbury’ and the mark applied for into ‘king’ and ‘sbury’, instead of considering those marks as a whole. It further maintains that the presence of seven identical letters in the two marks at issue, that is to say, most of the letters making up each of those marks, should have led the Board of Appeal to conclude that there was an average to ‘increased’ degree of visual similarity. EUIPO disputes the applicant’s arguments. It argues, in essence, that even if the marks at issue coincide in their final part ‘sbury’, that similarity is offset by a substantial difference in the initial elements, namely ‘fin’ for the earlier mark and ‘king’ for the mark applied for, on which consumers tend to focus both visually and phonetically. Furthermore, on all levels of comparison, the similarities are qualified by the laudatory nature of the term ‘king’ throughout the European Union. At the outset, the applicant’s argument that the Board of Appeal incorrectly divided the earlier mark into ‘fin’ and ‘sbury’ must be rejected as unfounded. As recalled in paragraph 29 above, the Board of Appeal expressly considered that those two terms could not be distinguished from each other by the relevant public. Furthermore, it should be borne in mind that, according to case-law, what matters in the assessment of the visual similarity of two word marks is, rather, the presence, in each of them, of several letters in the same order (judgment of 25 March 2009, Kaul v OHIM - Bayer (ARCOL) , T‑402/07, EU:T:2009:85, paragraph 83). In the present case, the marks at issue share seven letters out of the eight letters of the earlier mark and out of the nine letters of the mark applied for. More specifically, those marks share, on the one hand, their second and third letters, namely the letters ‘i’ and ‘n’, and, on the other, their last five letters, namely the letters ‘s’, ‘b’, ‘u’, ‘r’ and ‘y’. Those marks differ only in their initials, namely the letters ‘f’ for the earlier mark and ‘k’ for the mark applied for, as well as in the presence in the latter mark of the letter ‘g’ in fourth position. While it is true, as claimed by EUIPO, that the first component of word marks may be more likely to catch the consumer’s attention than the following components, that assumption does not, however, hold true in all cases. It cannot, in any event, undermine the principle that the examination of the similarity between the marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not examine its individual details (see, to that effect, judgment of 10 October 2006, Armacell v OHIM - nmc (ARMAFOAM) , T‑172/05, EU:T:2006:300, paragraph 65 and the case-law cited). Neither the Board of Appeal in the contested decision nor EUIPO in its response set out the reasons why it should be considered that, specifically as regards to the marks at issue, the attention of the relevant public would focus rather on their initial parts, the impact of which would thus be greater on the overall impression. In view of the significant number of letters in common and placed in the same order in the marks at issue, it must be stated that those marks, considered as a whole, have at least an average degree of visual similarity, despite the fact that the Spanish consumer could distinguish the term ‘king’ in the mark applied for and give a laudatory connotation to it. It follows that the Board of Appeal made an error of assessment in considering that the marks at issue had a low degree of visual similarity. The phonetic comparison The applicant argues, in essence, that the Board of Appeal failed to take into account the fact that the marks at issue are approximately the same length, consist of three syllables, the last two of which are pronounced identically, and that the rhythm of pronunciation is highly similar. It maintains that those marks are phonetically highly similar. EUIPO disputes the applicant’s arguments. As regards the phonetic comparison of the marks at issue, it must be stated that the earlier mark is pronounced ‘fins-bu-ry’, whereas the mark applied for is pronounced ‘kings-bu-ry’. As the applicant rightly points out, each of those marks therefore contains three syllables, the last two of which are identical. However, the earlier mark and the mark applied for differ in their initial consonant, respectively ‘f’ and ‘k’, the pronunciation of which is clearly dissimilar. As for the letter ‘g’ in the mark applied for, it will be less audible by reason of the distinctive pronunciation of that letter in a verbal structure such as ‘‑ing’ in the English word ‘king’. In view of those elements, it must be held that the Board of Appeal was right to conclude that the marks at issue had an average degree of phonetic similarity. The conceptual comparison The applicant alleges that the Board of Appeal singled out the term ‘king’ in the mark applied for without taking into consideration either the term ‘bury’ or the marks at issue as a whole. According to it, since the latter term is, in English, a common suffix for place names, there is a great conceptual proximity between those marks because both are perceived as English place names. Furthermore, since Finsbury is a district of London, a city in which the palace of the king of that country is also located, a conceptual similarity also exists due to the link that those marks allow to be made with England. The applicant therefore argues that the Board of Appeal should have concluded that there was at least an average degree of conceptual similarity. EUIPO disputes the applicant’s arguments. As regards the conceptual comparison of the marks at issue, it should be noted that the term ‘sbury’, common to both marks, may constitute the suffix of some names of English towns and that the term ‘finsbury’, making up the earlier mark, may be understood as the name of a London district. Furthermore, it has been found, in paragraph 34 above, that the term ‘king’ in the mark applied for could, by reason of its meaning in English, be understood, in a laudatory sense, as meaning ‘the best in its field’. The fact remains that the word elements ‘finsbury’ and ‘kingsbury’, taken as a whole, will be perceived as meaningless by the average Spanish consumer, who constitutes the part of the relevant public on which the Board of Appeal focused its examination. Consequently, the Board of Appeal was right to conclude that a conceptual comparison of the marks at issue was not possible for a vast majority of the relevant public and that, for the smaller part of that public which perceived the earlier mark as a reference to the London district, those marks were conceptually different. The likelihood of confusion The Board of Appeal considered that the similarities between the marks at issue were not sufficient to offset the differences which it had noted in the initial parts of those marks. It concluded that there was no likelihood of confusion for the relevant public with an average level of attention, despite the fact that the earlier mark had a normal degree of distinctiveness, that the goods at issue were identical or similar and that it was not possible to make a conceptual comparison of those same marks for a significant part of that public. The applicant claims that there is a high likelihood of confusion and notes, in essence, that the goods at issue are identical or highly similar and that the marks at issue are visually, phonetically and conceptually similar, if not highly similar. EUIPO disputes the applicant’s arguments. It argues, in particular, that there is nothing to prevent a finding that, in the light of the circumstances of the present case, there is no likelihood of confusion even in the presence of identical goods and a certain degree of similarity between the marks at issue. It should be borne in mind that, according to the case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Thus, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and others) , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). In the present case, as found in paragraph 27 above, the goods covered by the marks at issue are partly identical and partly similar. It follows that, in order to rule out any likelihood of confusion between those marks, that similarity and that identity must be offset by a high degree of difference between those marks. It follows from paragraphs 44 and 45 above that the marks at issue, taken as a whole, have at least an average degree of visual similarity, the Board of Appeal having erred in finding that that similarity was only to a low degree. It was also found in paragraphs 50 and 56 above, respectively, that those marks have an average degree of phonetic similarity and that the conceptual comparison is neutral for a significant part of the relevant public. In view of those elements and the normal distinctiveness enjoyed by the earlier mark, it must be stated that there is a likelihood of confusion between those marks. Accordingly, the Board of Appeal incorrectly found that there was no likelihood of confusion between the marks at issue. In the light of all of the foregoing, the action must be allowed and the contested decision must be annulled. 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. Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 July 2023 (Case R 481/2023 ‑ 1); 2. Orders EUIPO to bear its own costs and to pay those incurred by Borco-Marken-Import Matthiesen GmbH & Co. KG. Marcoulli Schwarcz Norkus Delivered in open court in Luxembourg on 11 September 2024. V. Di Bucci D. Spielmann 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. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII