Enoport v EUIPO - Miguel Torres (CABEÇA DE TOIRO) (EU trade mark - Judgment) [2021] EUECJ T-811/19 (20 January 2021)

Judgment Background to the dispute On 8 July 2016, the applicant, Enoport – Produção de Bebidas Lda, then called Enoport Produção de Bebidas, SA, 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)). Registration as a mark was sought for the following figurative sign: The goods in respect of which registration was sought are 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: ‘Alcoholic beverages (except beers and brandy) including wine, spirits and liqueurs’. The EU trade mark application was published in European Union Trade Marks Bulletin No 173/2016 of 13 September 2016. On 13 December 2016, the intervener, Miguel Torres SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the earlier EU word mark SANGRE DE TORO, which was registered on 29 October 1998 under number 462309, covering goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’. 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). On 19 December 2018, the Opposition Division upheld the opposition on the basis that there was a likelihood of confusion between the marks at issue and refused registration of the mark applied for in respect of all the goods referred to in paragraph 3 above. On 14 February 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 9 September 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In essence, first, the Board of Appeal considered that the relevant public was that of the European Union, composed of average consumers with an average level of attention and based its assessment on the Spanish part of that public (paragraphs 18, 19, 21 and 24 of the contested decision). Secondly, it endorsed the grounds adopted by the Opposition Division that the goods in question were identical (paragraphs 25 and 26 of the contested decision). Thirdly, the Board of Appeal found that the signs at issue were visually similar to a low degree, had an average degree of phonetic and conceptual similarity and, taken as a whole, were similar to a certain degree (paragraphs 38, 42, 46 and 47 of the contested decision). Fourthly, it concluded, in paragraph 57 of the contested decision, that the similarities between the signs and the enhanced distinctive character of the earlier mark gave rise to a 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 pay the costs. EUIPO contends that the Court should: – dismiss the application; – order the applicant to pay the costs. The intervener contends that the Court should: – dismiss the application; – uphold the contested decision; – order the applicant to pay the costs. Law The subject matter of the dispute and the law applicable ratione temporis In support of its action, the applicant relies on two pleas, alleging, first, infringement of Article 95(1) of Regulation 2017/1001 and, secondly, infringement of Article 8(1)(b) of that regulation. In this respect, it should be noted that when the application for registration of the contested trade mark was filed, on 8 July 2016 (see paragraph 1 above), Regulation 2017/1001, which became applicable only from 1 October 2017 (see Article 212, second paragraph, of that regulation), did not yet apply. Given that the decisive date for the purposes of identifying the applicable substantive law is the date on which the application for registration was filed, the present dispute continues to be governed by Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, amending Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), as regards provisions that are not strictly procedural (see, to that effect, judgment of 2 March 2017, Panrico v EUIPO , C‑655/15 P, not published, EU:C:2017:155 , paragraph 2 and the case-law cited). Therefore, references to the provisions of Regulation 2017/1001 in the contested decision and in the parties’ pleadings, as regards the substantive rules, must be understood as referring, in reality, to the identical provisions of Regulation No 207/2009. Accordingly, the second plea put forward by the applicant referring to a substantive provision, namely Article 8(1)(b) of Regulation 2017/1001, must be understood as referring to an infringement of Article 8(1)(b) of Regulation No 207/2009. By contrast, in so far as Article 95(1) of Regulation 2017/1001 is a purely procedural provision (see to that effect, judgments of 13 February 2019, Nemius Group v EUIPO (DENTALDISK) , T‑278/18, not published, EU:T:2019:86 , paragraphs 30 and 32, and of 20 September 2019, BASF Grenzach v ECHA , T‑125/17, EU:T:2019:638, paragraph 96), which, according to the case-law, is held to apply on the date on which it enters into force (see judgment of 11 December 2012, Commission v Spain , C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), it is necessary to examine, in the context of the first plea, the infringement of that provision, as the applicant submits. The Court will assess, first of all, the second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and, subsequently, the first plea alleging infringement of Article 95(1) of Regulation 2017/1001. The second plea, alleging infringement of Article 8 (1)(b) of Regulation No 2 07/2009 By this plea, the applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009, in that it erred in its analysis of the relevant factors to be taken into account for the overall assessment of the likelihood of confusion, in particular those relating to the comparison of the signs at issue and the distinctive character of the earlier mark. EUIPO and the intervener contend that the present plea should be rejected. 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 purpose 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). In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of 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 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) , T‑443/05, EU:T:2007:219 , paragraph 37 and the case-law cited). It is in the light of those considerations that it is necessary to examine, in view of the assessment set out by the Board of Appeal in the contested decision, the applicant’s submissions alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The relevant public In the present case, the parties do not dispute that, as set out in paragraphs 18 to 24 of the contested decision, the relevant public consists of average consumers in the European Union with an average level of attention. Having regard to the goods referred to in paragraph 3 above and the established case-law on that subject (see, to that effect, judgment of 1 February 2018, Cantina e oleificio sociale di San Marzano v EUIPO – Miguel Torres (SANTORO) , T‑102/17, not published, EU:T:2018:50 , pargraph 45 and the case-law cited), that finding is devoid of any error of assessment and must be confirmed. Moreover, since, in order for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited), the Board of Appeal also correctly assessed that there was a likelihood of confusion by taking into account the perception of the signs at issue by the relevant Spanish public. The comparison of the goods As regards the comparison of the goods in question, the Board of Appeal endorsed, in paragraphs 25 and 26 of the contested decision, the Opposition Division’s conclusion that those goods were identical. That conclusion, which is not disputed by the parties, should be confirmed. According to settled case-law, where the goods covered by the earlier mark include the goods covered by the mark applied for, those goods are considered to be identical (judgments of 7 July 2005, Miles International v OHIM – Biker Miles (Biker Miles) , T‑385/03, EU:T:2005:276, paragraph 32; of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) , T‑346/04, EU:T:2005:420, paragraph 34, and of 2 June 2010, Procaps v OHIM – Biofarma (PROCAPS) , T‑35/09, not published, EU:T:2010:220, paragraph 37). That is so in the present case in so far as the goods designated by the earlier trade mark, namely alcoholic beverages (except beers) (see paragraph 6 above), include the goods covered by the trade mark applied for, namely alcoholic beverages (with the exception of beer and brandies) including wine, spirits and liqueurs (see paragraph 3 above). 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). In the present case, the trade mark applied for, consisting of the figurative sign CABEÇA DE TOIRO (see paragraph 2 above), and the earlier mark, consisting of the word sign SANGRE DE TORO (see paragraph 6 above), are at issue. – The visual similarity As for the visual similarity of the signs at issue, the Board of Appeal concluded, in paragraph 38 of the contested decision, that the signs at issue were similar to a low degree. In that regard, it must be pointed out, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV) , T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited). However, it is apparent from the case-law that, where a mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element (see judgment of 22 May 2008, NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader) , T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited). That is also the case here, since the figurative elements invoked by the applicant are not sufficient to clearly distinguish visually between the signs at issue, in particular in so far as the shape recalling a bottle refers to the goods in question, namely, alcoholic beverages with the exception of beer (see paragraph 32 above), whilst the outline of a bull’s head reinforces the final part of the word elements of the signs at issue, namely the words ‘de toiro’ and ‘de toro’, which conceptually are of particular importance (see also paragraph 45 below). Those figurative elements are therefore likely to be perceived by the relevant public as essentially decorative elements, and not as elements indicating the commercial origin of the goods. The same applies to the typographical elements, which, in view of their font and clear legibility, are not set out in a specific and original way. Furthermore, it is clear from the case-law that the relevant public normally attaches more importance to the beginning of a word than to its ending (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) , T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR) , T‑112/03, EU:T:2005:102, paragraphs 64 and 65). However, as EUIPO correctly points out, it is also clear that that consideration cannot apply in all cases and it cannot, in any event, undermine the principle that the examination of the similarity between the signs must take account of the overall impression given by them, since the average consumer normally perceives a sign as a whole and does not examine its individual details (see, to that effect, judgment of 6 June 2018, Uponor Innovation v EUIPO – Swep International (SMATRIX) , T‑264/17, not published, EU:T:2018:329 , paragraph 63 and the case-law cited). In the present case, even if particular importance is attached to the beginnings of the signs at issue, namely their respective words ‘cabeça’ and ‘sangre’, these are not capable of completely neutralising the overall impression of similarity between those signs. As the Board of Appeal found, in paragraph 34 of the contested decision, and as maintained by the intervener, first, the structure of the signs is the same, secondly, the first part of their word elements consists of six letters, thirdly, the second part of those elements, namely the words ‘de toiro’ and ‘de toro’, is almost identical and, fourthly, those elements have, in their entirety, almost the same length, namely, thirteen and twelve letters. On the whole, therefore, it cannot be denied that the signs at issue present, at the very least, a low degree of visual similarity. – The phonetic similarity As regards the phonetic similarity of the signs at issue, the Board of Appeal held, in paragraphs 41 to 42 of the contested decision, that their respective last word elements, namely the syllables ‘toi’ and ‘ro’ of the mark applied for and the syllables ‘to’ and ‘ro’ of the earlier mark, were, on the basis of Spanish pronunciation rules, pronounced similarly. Furthermore, the sound of the preposition ‘de’ preceding those elements was identical. The Board of Appeal rightly concluded that, although their initial word elements were pronounced differently, there was an average phonetic similarity between the signs. The applicant does not call that finding into question. Although the applicant relies on the differences between those initial words and the fact that they are pronounced first, the fact remains, as the Board of Appeal correctly noted in paragraph 41 of the contested decision, that the relevant public will tend to pronounce all the word elements forming the signs at issue, which, moreover, the applicant does not, as such, dispute. That is all the more so in so far as the final part of those elements is neither superfluous nor particularly long or complex and therefore is not likely to be shortened. On the contrary, the final part is closely linked to the initial words and is of particular conceptual importance (see paragraph 45 below), which reinforces the assessment that those elements are pronounced in their entirety. – The conceptual similarity As regards conceptual similarity the Board of Appeal held, in paragraphs 45 and 46 of the contested decision, that the signs at issue were similar to an average degree. Contrary to what is asserted by the applicant, that finding is correct. It is indeed true that the earlier mark refers to blood, whereas the mark applied for refers to the head of a bull. However, that difference is not sufficient to call into question the fact that the signs at issue refer to the characteristics of a bull. Therefore, they are, in the minds of the relevant public, primarily associated with a bull, which, as the Board of Appeal found in paragraphs 43 and 44 of the contested decision, is clearly conveyed by the words ‘de toiro’ and ‘de toro’, which can only be distinguished by the letter ‘i’. The common impression of those signs being associated with a bull is further reinforced by the figurative element of the mark applied for (see paragraph 38 above). It follows that the Board of Appeal correctly held, in paragraph 47 of the contested decision, that, overall, the signs at issue were conceptually similar to a certain degree. The overall assessment of the likelihood of confusion 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. Accordingly, a low degree of similarity between those goods or services 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, VENADO with frame and others , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgment of 11 November 1997, SABEL , C‑251/95, EU:C:1997:528, paragraph 24; judgment of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 20). By contrast, a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES. COM) , T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited). In the present case, it follows from the foregoing considerations that the goods designated by the trade mark applied for and by the earlier mark are identical (see paragraphs 31 and 32 above), the conflicting signs display at least a low degree of visual similarity (see paragraphs 35 to 41 above) and they are similar to an average degree phonetically (see paragraphs 42 and 43 above) and conceptually (see paragraphs 44 and 45 above). Furthermore, although the applicant calls into question the enhanced distinctiveness of the earlier trade mark on account of its use, it does not dispute that it has at least normal inherent distinctiveness, nor does it challenge its genuine use. In that context, it must be borne in mind that the goods in question are alcoholic beverages (see paragraphs 3, 6 and 32 above) and that, according to the case-law, in the alcoholic beverages sector, consumers usually describe and recognise those drinks by reference to the word element which identifies them, in particular in bars, discotheques, nightclubs and restaurants, where those drinks are ordered orally after their names have been seen on the menu or the wine list (see, to that effect, judgments of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY) , T‑35/08, EU:T:2010:476, paragraph 62, and of 20 April 2018, Mitrakos v EUIPO – Belasco Baquedano (YAMAS) , T‑15/17, not published, EU:T:2018:198 , paragraph 61). Therefore, in the present case, as is apparent from paragraph 56 of the contested decision and as the intervener maintains, particular importance should be attached to the phonetic similarity between the signs at issue. Account should also be taken, as the intervener correctly submits, of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 26, and of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO) , T‑386/15, EU:T:2017:632 , paragraph 87). However, in the present case, as explained in paragraph 45 above, the signs at issue are mainly associated with a bull, which is conveyed by their similar words ‘de toiro’ and ‘de toro’ and reinforced by the figurative element of the mark applied for. In the light of those elements, and contrary to the view taken by the applicant, there is a likelihood of confusion in the minds of the relevant Spanish public with an average level of attention (see paragraphs 28 to 30 above). Therefore, the Board of Appeal was justified in concluding, in paragraph 57 of the contested decision, that there was such a risk. In the light of the foregoing and taking into account, first, the fact that it is not disputed by the parties that the earlier trade mark has normal inherent distinctiveness (see paragraph 51 above) and, secondly, that that factor is sufficient to establish a likelihood of confusion (see paragraph 54 above), it is no longer necessary to assess the evidence concerning the enhanced distinctiveness of the earlier trade mark on account of its use. The arguments put forward by the applicant in this respect are therefore irrelevant, it being understood that it did not challenge the genuine use of the earlier mark under Article 42(2) of Regulation No 207/2009. Consequently, the second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected. The first plea in law, alleging infringement of Article 95 (1) of Regulation 017/1001 By this plea in law, the applicant submits, in essence, that, by attributing probative value to the three decisions of the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office) produced as Exhibit No 8 by the intervener in the administrative proceedings before EUIPO, the Board of Appeal infringed its duty of care under Article 95(1) of Regulation 2017/1001 and infringed the principle of audi alteram partem . EUIPO and the intervener contend that this plea should be rejected. Under Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. Thus, the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence submitted by that party (judgment of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489 , paragraph 41). In the present case, it is clear that the applicant’s arguments are intended to establish that the Board of Appeal did not correctly assess the evidence adduced by the intervener in the proceedings before EUIPO concerning the enhanced distinctiveness of the earlier mark. However, whether the Board of Appeal correctly assessed that evidence, which the applicant could, moreover, also have challenged before the Board of Appeal, falls within the scope of the examination of the substantive legality of the contested decision (see, to that effect, judgment of 18 May 2017, Reisswolf v EUIPO (secret.service.) , T‑163/16, not published, EU:T:2017:350 , paragraph 21). Furthermore, as is clear from paragraph 55 above, it was not necessary to assess those elements in order correctly to conclude that there was a likelihood of confusion between the signs at issue. Therefore, the first plea in law must be rejected as ineffective and, consequently, the action must be dismissed in its entirety. 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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Enoport – Produção de Bebidas Lda to pay the costs. Collins Kreuschitz Csehi Delivered in open court in Luxembourg on 20 January 2021. 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. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII