J Garcia Carrion v EUIPO - Calipso (LimoLife) (EU trade mark - Judgment) [2024] EUECJ T-324/23 (16 October 2024)

Judgment By its action under Article 263 TFEU, the applicant, J. García Carrión, SA, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 March 2023 (Case R 1258/2022-1) (‘the contested decision’). Background to the dispute On 10 December 2020, Calipso SRL filed with EUIPO an application for registration as an EU trade mark for the word sign LimoLife. The mark applied for covered goods in, following the limitation made during the proceedings before EUIPO, Class 32 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: ‘Lemonades; non-alcoholic honey-based beverages; non-alcoholic beverages’. On 17 March 2021, the applicant filed a notice of opposition to the registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the earlier EU word mark SIMON LIFE, which covers goods in Class 32 corresponding to the following description: ‘Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages’, and on the earlier Spanish word mark SIMON LIFE covering the same goods. 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 24 May 2022, the Opposition Division upheld the opposition. On 13 July 2022, Calipso filed an appeal with EUIPO against the decision of the Opposition Division. By the contested decision, the Board of Appeal upheld the appeal, on the ground that, given, in particular, the weak distinctive character of the coinciding verbal component ‘life’ of the marks at issue, and their weak visual, phonetic and conceptual similarity, there was no likelihood of confusion. Forms of order sought The applicant claims that the Court should: - annul or set aside the contested decision, in so far as it rejected the opposition; - order EUIPO to pay the costs relating to the proceedings before the Opposition Division, the Board of Appeal and the Court. 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 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It claims that the Board of Appeal wrongly concluded that there was no likelihood of confusion. Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, an 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 likelihood that the public may believe that the goods 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, in accordance with the relevant public’s perception of the signs and the goods 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 the similarity 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). Where the protection of the earlier mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods at issue in that territory. However, it must be borne in mind that, 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 2017/1001 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 relevant public The Board of Appeal considered that the relevant public was that of the entire European Union and that its level of attention was average. It focused more specifically on the part of the relevant public which would break down the mark applied for into two elements, namely ‘limo’ and ‘life’. In that regard, it must be generally noted that the applicant does not dispute the assessments of the Board of Appeal regarding the relevant public and that, moreover, there is no evidence in the file capable of casting doubt on them. Taking into account the applicant’s criticism against the assessment of the Board of Appeal that it is not certain that the Spanish part of the relevant public would identify the two elements in the mark applied for, that argument will be addressed below in the assessment of the signs at issue. The comparison of the goods In the contested decision, the Board of Appeal considered that the ‘lemonades; non-alcoholic honey-based beverages; non-alcoholic beverages’ of the mark applied for were identical to the ‘non-alcoholic beverages’ covered by the earlier marks. The applicant does not dispute those assessments and there is nothing in the file that is capable of casting doubt on them. The comparison of the signs It should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression made by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 In essence, the applicant contends, first of all, that the relevant public will break down the mark applied for into two elements, namely ‘limo’ and ‘life’. In that regard, the applicant submits that, for the Spanish part of the relevant public, the first element will refer to the Spanish word ‘limón’ and the second to the English word ‘life’ which means the period between birth and death. In that context, the Board of Appeal wrongly attributed a weak distinctive character to the element ‘life’, or, even if that element has a reduced distinctive character, it remains greater than that of the element ‘limo’. As regards the earlier marks, the applicant also contends that the Board of Appeal provided no basis for considering that the first element ‘simon’ would be more distinctive than the second element ‘life’. Therefore, no element is more distinctive than the other. EUIPO disputes the applicant’s arguments. In the present case, it must be recalled that, in the contested decision, the Board of Appeal assessed the distinctive elements of the signs at issue with consideration of the following reasoning. First of all, the Board of Appeal indicated that, even if the Spanish part of the relevant public was probably capable of understanding the word ‘life’ and recognising it as the English term referring to the period between birth and death, it was not certain that that part of the relevant public would break down the mark applied for into two elements, namely ‘limo’ and ‘life’. The Board of Appeal continued its reasoning noting that, even if that part of the relevant public could break down the mark applied for into two elements, it would be rather unlikely that that part recognise, in the first place, that the term ‘limo’ is the abbreviation of the Spanish word ‘limón’ and, subsequently, that that term is followed by ‘life’ in its English meaning. Nevertheless, and especially, given that a likelihood of confusion for only part of the relevant public is sufficient to reject the application for registration, and the Board of Appeal considered that it could not exclude with certainty that a part of the relevant public would break down the mark applied for into two elements, namely ‘limo’ and ‘life’, that board held that it was sufficient to base its analysis of the signs at issue on the perception of that part of the relevant public. In that regard, it limited its examination to the part of the public which would understand the element ‘limo’ as referring to the English word ‘lemon’ and therefore to lemon-flavoured beverages, and which, consequently, would perceive that element as weakly distinctive. It also considered that the coinciding element ‘life’ had a weak distinctive character, on the ground that consumers would easily make a mental association between, first, the non-alcoholic beverages covered by the marks at issue and, secondly, their role in the maintenance of life, in that they provide the essentials of water and energy. Therefore, the Board of Appeal considered that the sign applied for had no element which might be considered more distinctive than the other element. Finally, as regards the earlier sign SIMON LIFE, the Board of Appeal considered that it was the first element, ‘simon’, that was the most distinctive, as it is understood in several EU languages as the male name ‘Simon’ and has a normal distinctive character with regards to the goods at issue. It must be stated that, in the first place, the Board of Appeal’s analysis of the sign applied for was not carried out solely according to the perception of the Spanish part of the relevant public, but also and especially taking into consideration the perception of the relevant public which would break down the mark applied for into two elements, ‘limo’ and ‘life’, and would consider the first of those elements as being weakly distinctive. The Board of Appeal also considered, in essence, that the element ‘limo’ alluded to the taste of the beverages and the element ‘life’ to the role of the beverages in the maintenance of life. That assessment is not to be called into question, since it cannot be excluded that the relevant public will break down the sign applied for into word elements which, for it, suggest a specific meaning or which resemble words known to it (see, to that effect, judgment of 30 March 2022, SFD v EUIPO - Allmax Nutrition (ALLNUTRITION DESIGNED FOR MOTIVATION) , T-35/21, not published, EU:T:2022:173 , paragraph 41 and the case-law cited). In the second place, as regards in particular the coinciding element ‘life’, the Board of Appeal considered that that term may, in the eyes of the relevant public, evoke the characteristics of the goods at issue, in that they provide water and energy, essentials of life. In that regard, it must be stated that the term ‘life’ is an English word that can be understood in that sense by the English-speaking part of the relevant public and that an identical understanding of that term cannot be excluded as regards the non-English-speaking part of that public. The Board of Appeal also therefore correctly deduced that the element ‘life’ of the marks at issue would be seen as evocative of certain characteristics of the goods at issue and that it presented therefore a reduced distinctive character. As regards the applicant’s argument that, in the mark applied for, the element ‘life’ will be regarded by the relevant public as a supplement to the term ‘limo’, without any mental association with the concept of life, it is apparent from the considerations set out in paragraphs 28 to 30 above that it is unfounded, at least for the part of the relevant public taken into consideration in that regard by the Board of Appeal. It must therefore be rejected. In the third place, as regards the applicant’s argument that the element ‘life’ is more distinctive than the element ‘limo’, it must be noted that, those two elements referring to the characteristics of the goods at issue, the Board of Appeal could rightly consider that those elements were weakly distinctive and that the sign applied for therefore did not contain any element more distinctive than the other element. In the fourth place, it should be noted that the applicant’s argument that the element ‘simon’ of the earlier sign is not more distinctive than the element ‘life’ is not in any way substantiated. The fact that that latter element can be seen as evocative of certain characteristics of the goods at issue allowed the Board of Appeal to rightly conclude that its distinctive character was reduced and therefore inferior to the distinctive character of the word ‘simon’, the latter corresponding to a masculine first name in several EU languages and therefore having no link with the goods at issue. It follows from the foregoing considerations that the applicant’s arguments do not demonstrate any error of assessment in the analysis of the distinctive elements of the signs at issue made in the contested decision. The visual comparison The applicant submits that the Board of Appeal should have deduced a higher-than-average degree of visual similarity because the relevant public would break down the marks at issue into two elements (‘simon’ and ‘life’) and due to the circumstance that the coinciding element ‘life’ of the marks at issue was the most distinctive element in the sign applied for. EUIPO disputes the applicant’s line of argument. In the present case, the Board of Appeal concluded that there was a weak visual similarity, taking into account in particular the reduced distinctive character of the coinciding term ‘life’, and the differences between the distinctive element ‘simon’ in the earlier marks and the element ‘limo’ in the sign applied for, notwithstanding the reduced distinctive character of that latter element. It must be noted that the applicant’s arguments are based on the erroneous premiss that the coinciding element ‘life’ is the most distinctive element in the sign applied for. As was stated in paragraph 30 above, that element has a weak distinctive character, which diminishes its impact in the visual comparison of the signs at issue. In the present case, the coinciding element ‘life’ is not sufficient to invalidate the visual comparison made by the Board of Appeal. It should be noted that, even if the elements ‘simon’ and ‘limo’ have coinciding letters, the differences arising from their first and last letters contribute to producing a different visual impression and, moreover, the marks at issue have a different structure. As the Board of Appeal rightly noted, the element ‘life’ constitutes a separate second word in the earlier sign, whereas in the sign applied for it merely makes up one word with the element ‘limo’. In the light of the foregoing, the Board of Appeal rightly noted the weak visual similarity of the signs at issue. The phonetic comparison The applicant submits, first, that it cannot be ruled out that the relevant public perceive the first element of the mark applied for as the word ‘limón’. It adds that there is an obvious phonetic similarity between the terms ‘limón’ and ‘simón’. Secondly, the applicant maintains that, in any event, the signs at issue will be pronounced in the same manner, namely ‘si-mon li-fe’ and ‘li-mo li-fe’. Therefore, it concludes that there is at least a higher-than-average degree of phonetic similarity. EUIPO disputes the applicant’s arguments. In the contested decision, the Board of Appeal notes a weak phonetic similarity, on the grounds that, even if the signs at issue both have the second element ‘life’, they differ by the pronunciation of their first elements, namely ‘simon’ and ‘limo’, having regard to the differing degree of the distinctive character of each of those elements. It must be recalled that the signs at issue share the weakly distinctive character ‘life’ and differ by their initial elements ‘limo’ and ‘simon’, the first of which has a weak distinctive character and is inferior to the second. It follows that even if the identity of the element ‘life’ must be taken into consideration, it will have a less significant impact on the phonetic comparison because, due to the weak distinctive character of that element, it will not produce any lasting phonetic impression on the relevant public (see, to that effect, judgment of 28 November 2019, August Wolff v EUIPO - Faes Farma (DermoFaes Atopiderm) , T-644/18, not published, EU:T:2019:817 , paragraph 41). As regards the elements ‘limo’ and ‘simon’, whatever EU language is taken into consideration, they differ from each other by the pronunciation of their first consonants ‘l’ and ‘s’. In addition, the second syllable of the element ‘limo’ is open with the vowel ‘o’, while the second syllable of the element ‘simon’ is closed with the consonant ‘n’. It follows from the foregoing that the weak phonetic similarity between the signs at issue noted by the Board of Appeal is not to be called into question, taking account in particular of the differences of pronunciation between the element ‘limo’ in the mark applied for and the element ‘simon’ in the earlier marks, and the weak distinctive character of the coinciding element ‘life’ of the two marks at issue. The conceptual comparison The applicant submits that the fact that the coinciding element ‘life’ of the two marks at issue is not devoid of distinctive character allows the finding of an average conceptual similarity between those marks. EUIPO disputes the applicant’s arguments. In the present case, the Board of Appeal noted that the signs coincide in the concept conveyed by the element ‘life’, while indicating that its role was limited due to its reduced distinctive character and the elements ‘simon’ and ‘limo’ downplayed that conceptual similarity. Therefore, according to the Board of Appeal, having regard to the differing degree of distinctive character of those elements, that similarity can only be weak. It is apparent from paragraphs 30 and 32 above that the coinciding element ‘life’ and the element ‘limo’ of the sign applied for have a reduced distinctive character on the ground that the first refers to the characteristics of the goods in question in that they provide water and energy, essentials of life, and that, moreover, the second refers to the English word ‘lemon’ and therefore to lemon-flavoured beverages. In addition, in paragraph 33 above, it was observed that the element ‘simon’ of the earlier sign is understood in several EU languages as the name ‘Simon’ and that it has a higher distinctive character than the coinciding element ‘life’. Consequently, the elements ‘limo’ and ‘simon’ convey different concepts. That difference is not offset by the coinciding element ‘life’, that element being weakly distinctive. It follows that the Board of Appeal did not make an error of assessment in stating that the conceptual similarity between the marks at issue was weak. The likelihood of confusion The applicant claims that there is a likelihood of confusion, taking account of the fact that the signs at issue are similar overall to an average degree or to a higher-than-average degree, and having regard to the identity of the goods at issue. 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). In the present case, the Board of Appeal excluded all likelihood of confusion or association, taking into consideration the weak visual, phonetic and conceptual similarity of the signs at issue, the inherently normal degree of distinctive character of the earlier marks, the reduced distinctive character of the coinciding element ‘life’, and the resulting non-negligible differences of the initial elements ‘simon’ and ‘limo’. The Board of Appeal reached this conclusion notwithstanding the identity of the goods at issue. In that regard, the applicant did not establish that the Board of Appeal made an error of assessment in its global assessment of the likelihood of confusion. Even if the goods were found to be identical, the Board of Appeal rightly concluded that there was no likelihood of confusion, taking account of the weak distinctive character of the coinciding element ‘life’ of the marks at issue, of the weak visual, phonetic and conceptual similarity of those marks and of the inherently normal distinctive character of the earlier marks, which has not, moreover, been contested by the applicant. In the light of all the foregoing considerations, the single plea submitted by the applicant must be rejected as unfounded and, therefore, the action must be dismissed. 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. Even though the applicant has been unsuccessful, EUIPO contended that it should be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Dismisses the action; 2. Orders each party to bear its own costs. Marcoulli Schwarcz Spangsberg Grønfeldt Delivered in open court in Luxembourg on 16 October 2024. V. Di Bucci 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