Puma v EUIPO - Destilerias MG (MG PUMA) (EU trade mark - Judgment) [2019] EUECJ T-500/18 (03 October 2019)

Judgment Background to the dispute On 15 February 2016 the applicant, Puma SE, 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 word sign MG PUMA. The goods in respect of which registration was sought are in Classes 32 and 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, for each of those classes, to the following description: – Class 32: ‘Beer; non-alcoholic beer; porter; mineral water [beverages]; spring water; table waters; non-alcoholic beverages; fruit drinks; juices; preparations for making beverages; syrups for making beverages; isotonic beverages; sports drinks; energy drinks; energy drinks containing caffeine’; – Class 33: ‘Alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based; pre-mixed alcoholic beverages’. The trade mark application was published in Community Trade Marks Bulletin No 40/2016 of 29 February 2016. On 30 May 2016 the intervener, Destilerias MG, SL, 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 mark applied for in respect of the goods in Class 33 referred to in paragraph 3 above. The opposition was based in particular on the following earlier EU figurative mark: That trade mark covers goods in Class 33 corresponding to the following description: ‘Alcoholic beverages, in particular gin and gin-based preparations’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). On 17 August 2017 the Opposition Division upheld the opposition. On 19 September 2017 the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. By decision of 6 June 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. More specifically, it found that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, was established on the grounds, inter alia, that (i) the goods at issue were identical; and (ii) the marks at issue had a low degree of visual and phonetic similarity. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs, including those incurred before the Board of Appeal. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. More specifically, it argues that the marks at issue were not similar, so that there was no likelihood of confusion within the meaning of that provision. EUIPO and the intervener dispute the arguments put forward by the applicant. Preliminary observations 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 cannot 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. 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 marks 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 marks 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). The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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). For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to contribute to identifying the goods and services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods and services covered by that mark (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA) , T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited). With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN) , T‑6/01, EU:T:2002:261 , paragraph 35). Lastly, it must be recalled that the existence of a degree of similarity between the marks at issue as regards one of the relevant aspects examined, namely visual, phonetic or conceptual similarity, precludes the finding that those marks, considered as a whole, are devoid of similarity (see, to that effect, judgment of 2 December 2009, Volvo Trademark v OHIM — Grebenshikova (SOLVO) , T‑434/07, EU:T:2009:480, paragraphs 31 and 50). Comparison of the marks at issue In the present case, the Board of Appeal took the view, first, that the relevant public consisted of the English-speaking general public of the European Union, without calling into question the Opposition Division’s assessment that that public’s level of attention was average. Secondly, it found that the relevant public would draw a distinction, in the earlier mark, between the word ‘gin’, which is descriptive, and letters ‘mg’, which are distinctive. It also found that both the letters ‘mg’ and the word ‘puma’ in the mark applied for were distinctive. Thirdly, it held that, in those circumstances, the fact that the marks at issue shared the letters ‘mg’ was sufficient to establish visual and phonetic similarity between those marks. However, it found that those marks were not conceptually similar. The applicant submits that the Board of Appeal erred in finding that the marks at issue were visually and phonetically similar. In that regard, first of all, it criticises the Board of Appeal for having found that the relevant public would separate, in the earlier mark, the elements ‘gin’ and ‘mg’ respectively. Next, it submits that the fact that the relevant public pays more attention to the beginning of a trade mark is such as to rule out any similarity between the marks at issue in the present case. Lastly, the applicant first criticises the Board of Appeal for failing to take into account the weak distinctive character of the letters ‘mg’ of the marks at issue and the high degree of distinctiveness of the word ‘puma’ in the mark applied for. It further claims that the Board of Appeal did not take into account the figurative elements of the earlier mark either. In the first place, it should be noted that the fact that the letters ‘mg’ are used in other trade marks relied on by the applicant does not constitute evidence, as also acknowledged by the applicant, that those letters are devoid of distinctive character. In addition, the applicant does not provide any evidence in support of its claim that the combination of two letters is, in principle, not very distinctive. In that regard, it cannot be inferred from an earlier Board of Appeal decision which, a fortiori, did not concern the marks at issue that such a principle might be applicable in the present case. Consequently, the Board of Appeal was fully entitled to find that the letters ‘mg’ of the marks at issue had, in essence, average distinctive character since it was not established that they had any meaning for the relevant public. In the second place, with regard to the mark applied for, it must be noted, as, in essence, the Board of Appeal found, that the word ‘puma’ has average distinctive character. Moreover, that word contains more letters than the element ‘mg’, including vowels, which may influence the phonetic perception of the mark applied for. The fact remains that the letters ‘mg’ are the first element of the mark applied for and that, for that reason, the public will pay particular attention to them (see, to that effect, judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP) , T‑133/05, EU:T:2006:247 , paragraph 51). While the applicant claims that the word ‘puma’ has enhanced distinctive character, resulting from the reputation of the applicant and the ‘PUMA trade marks’, it does not provide any evidence to support that claim or even provide references to those marks. It must therefore be considered that the letters ‘mg’ will be as important as the word ‘puma’ in the relevant public’s perception of the mark applied for. In the third place, as regards the earlier mark, it must first be recalled that, when perceiving a word sign, the relevant public will break it down into elements which, for that public, suggest a concrete meaning or which resemble words known to it (judgments of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 57; of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK) , T‑548/12, EU:T:2015:478 , paragraph 37; and of 20 September 2017, Jordi Nogues v EUIPO — Grupo Osborne (BADTORO) , T‑386/15, EU:T:2017:632 , paragraph 55). The word ‘gin’ is, in English, the name of an alcoholic beverage to which the description of the goods covered by the earlier mark expressly refers. It follows, first, that the Board of Appeal was fully entitled to find that the relevant public would draw a distinction between the word ‘gin’ in the earlier mark and the letters ‘mg’ of that mark, despite there being no gap between that word and those letters, and, secondly, that that word had descriptive character. However, the applicant claims that the relevant public will perceive the earlier mark as a word whose vowels have been omitted. In that regard, it should be noted that the earlier mark includes the vowel ‘i’ and, furthermore, that, as EUIPO rightly points out, the applicant does not identify the word that could be formed by the element ‘ginmg’ if vowels were added to it. Secondly, it should be borne in mind that, according to settled case-law, where a trade mark consists of both word and figurative elements, the former are, in principle, more distinctive than the latter, because the relevant public will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT) , T‑363/06, EU:T:2008:319, paragraph 30, and of 11 December 2014, Coca-Cola v OHIM — Mitico (Master) , T‑480/12, EU:T:2014:1062 , paragraph 49; see also, to that effect, judgment of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE) , T‑312/03, EU:T:2005:289 , paragraph 37). In the present case, the figurative elements of the earlier mark consist of only two red lines, one above and the other below the word elements of that mark. In addition, the font of those word elements is not very stylised. The applicant does not provide any arguments or evidence capable of calling into question the Board of Appeal’s assessment that those figurative elements are purely decorative, with the result that the letters ‘mg’ must be regarded as the most distinctive element of the earlier mark. It therefore follows from the foregoing that, as found by the Board of Appeal, the letters ‘mg’ are the most important element in the relevant public’s perception of the earlier mark and an element as important as the element ‘puma’ in that public’s perception of the mark applied for. Consequently, the fact that the letters ‘mg’ are present in each of those marks is sufficient to establish the existence of phonetic and visual similarity between them, notwithstanding the fact that the position of those letters differs in those marks. Accordingly, in the light of the case-law cited in paragraph 22 above, the marks at issue must be regarded as similar for the purposes of Article 8(1)(b) of Regulation 2017/1001 in spite of the fact that the Board of Appeal did not find any conceptual similarity between them. That assessment cannot be called into question by the applicant’s other arguments. First, contrary to what the applicant claims, the Board of Appeal clearly and unequivocally stated the reasons for which it considered that the letters ‘mg’ of the earlier mark ‘[played] an independent distinctive role’ in so far as those letters constituted the most distinctive element of that mark. Thus, first of all, in paragraph 28 of the contested decision, it recalled the case-law cited in paragraph 29 above. It then, in paragraph 29 of the contested decision, inferred from that case-law that, in the present case, the relevant public would perceive the word ‘gin’ and the letters ‘mg’ separately. The Board of Appeal stated in that regard that the word ‘gin’ had descriptive character and that the letters ‘mg’ had distinctive character. Lastly, in paragraph 31 of the contested decision, it found, in essence, that the figurative elements were not very distinctive. Secondly, the applicant submits that the Board of Appeal erred in relying on the fact that the goods at issue were ordered orally in order to establish that there was phonetic similarity between the marks at issue. However, it should be noted that the Board of Appeal took that fact into consideration, not for the purpose of assessing whether there was such similarity, but for the purpose of assessing the likelihood of confusion, which, in accordance with the case-law cited in paragraph 17 above, requires account to be taken of all relevant factors, including, where appropriate, the circumstances in which the goods in question are marketed. Furthermore, it should be noted that the applicant does not dispute the fact that the goods in question are also consumed after being ordered orally, so that, according to settled case-law, particular importance should in any event be attached, in the present case, to phonetic similarity for the purposes of assessing the likelihood of confusion (see, to that effect, judgments of 15 January 2003, Mystery Drinks v OHIM — Karlsberg Brauerei (MYSTERY) , T‑99/01, EU:T:2003:7, paragraph 48; of 19 May 2015, Granette & Starorežná Distilleries v OHIM — Bacardi (42 VODKA JEMNÁ VODKA VYRÁBĚNÁ JEDINEČNOU TECHNOLOGIÍ 42 %vol.) , T‑607/13, not published, EU:T:2015:292 , paragraph 110, and of 28 April 2016, Gervais Danone v EUIPO — Mahou (B’lue) , T‑803/14, not published, EU:T:2016:251 , paragraph 66). Thirdly, the applicant submits, in essence, that, since the letters ‘mg’ of the mark applied for are placed at the beginning of that mark, not at the end of it, as is the case in respect of the earlier mark, the Board of Appeal erred in finding that the relevant public would perceive the marks at issue as ‘sub-brands’ of the hypothetical MG trade mark. However, it should be noted that the Board of Appeal correctly held that the question of whether the relevant public perceives the marks at issue as referring to two ranges of goods coming from the same undertaking relates to the assessment of the likelihood of confusion, not the existence of similarity between those marks as such. Furthermore, as the Board of Appeal rightly recalled, account should be taken 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 (judgment of 22 June 1999, C‑342/97, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 26). In the present case, the marks at issue each consist of only one word in addition to the letters ‘mg’. Thus, the fact that those letters are placed before or after that word is in any event not sufficient to rule out the existence of a likelihood of confusion as to the origin of the goods at issue. Consequently, in so far as the definition of the relevant public, its level of attention, the comparison of the goods at issue and the other factors relevant to the assessment of the likelihood of confusion are not contested and none of the evidence in the file calls them into question, it must be held that the applicant’s claim that the Board of Appeal erred in finding that there is a likelihood of confusion in the present case is unfounded. It follows from the foregoing that the applicant’s single plea must be rejected and, consequently, that 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 incurred by EUIPO and by the intervener, in accordance with the forms of order sought by those parties. On those grounds, THE GENERAL COURT (Ninth Chamber) hereby: 1. Dismisses the action; 2. Orders Puma SE to pay the costs. Gervasoni Kowalik-Bańczyk Mac Eochaidh Delivered in open court in Luxembourg on 3 October 2019. E. Coulon S. Gervasoni 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