Super bock group v EUIPO - Agus (Crystal) (EU trade mark - Judgment) [2019] EUECJ T-648/18 (12 December 2019)

Judgment On 19 January 2016, Agus sp. z o.o. 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 Crystal. The goods in respect of which registration was sought are in Class 30 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: ‘Coffee, vegetal preparations for use as coffee substitutes, tea, cocoa, pastries (sweet or savoury), sweet or savoury puffs, cookies, foodstuffs made from cereals, ready meals, made wholly or partially of baked goods, puddings in powder form, bread, mixes for the preparation of bread, buns, baguettes, scones, bagels, sponge cake, rusks, biscuits (sweet or savoury), wafer biscuits, pancake waffles; sweet or savoury snacks made of biscuits, baked goods, dough or batter; pastry and confectionery; dairy confectionery, cake powder, cake mixes, bakery desserts, chocolate, mousses (chocolate -), filled sweetmeats, chocolate products, candy, hard and soft caramels (candies), filled caramels, foamed sugar sweets, sugarless sweets, gum sweets or lozenges having liquid fruit fillings, flavored gelatine desserts, confectionery chips for baking, corn chips, rice crisps; crisps made of cereals, chocolate-based and cocoa-based beverages, edible ices, ice creams, sweet sauces, ice cream desserts, prepared deserts, chewing gum, not for medical purposes, lollipops, ice lollies, ice beverages with a coffee base, chocolate or cocoa, coffee beverages with or without milk, chocolate beverages with or without milk, chocolate spreads for use on bread, paste for making coffee beverages, flavoured topping for desserts, fruit cake snacks; corn flakes; preparations made from cereals; breakfast cereals products; cereal bars and energy bars; snack food products made from cereal flour; breakfast cereals, porridge and grits; breakfast cereals containing a mixture of fruit and fibre; candy bars; chocolate bars; ice cream stick bars; muesli bars; confectionery bars; granola-based snack bars; seed based snack bars; snack bars containing a mixture of grains, nuts and dried fruit; ice milk bars; muesli; flaked wheat; barley flakes; oat flakes; maize flakes; dairy confectionery; snack foods consisting mainly of confectionery’. The EU trade mark application was published in Community Trade Marks Bulletin No 44/2016 of 4 March 2016. On 2 June 2016, the applicant, Super bock group, SGPS SA (formerly Unicer-Bebidas de Portugal, SGPS 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 mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the Portuguese word mark CRISTAL, which was filed on 21 May 1992 and registered on 10 January 1994 in respect of goods in Class 32 corresponding to the following description: ‘Non-alcoholic beverages and beers’. The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). Following a request by the other party to the proceedings before the Board of Appeal, the applicant furnished evidence by which it sought to prove genuine use of the earlier national mark. By decision of 16 December 2017, the Opposition Division rejected the opposition in its entirety finding, first, that the applicant had furnished proof of genuine use of the earlier national mark in Portugal during the relevant period only as regards ‘beers’ in Class 32 and, secondly, that, since the ‘beers’ covered by the earlier mark and the goods in Class 30 covered by the mark applied for were dissimilar, the existence of a likelihood of confusion had to be ruled out. On 9 February 2018, 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 23 July 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. It found, like the Opposition Division, that there was no likelihood of confusion, taking the view that one of the cumulative conditions, namely, the similarity between the goods at issue, was not satisfied. In that regard, it pointed out that the ‘beers’ in Class 32 covered by the earlier mark, in respect of which proof of genuine use had been furnished, and the goods in Class 30 covered by the mark applied for were dissimilar in the light of the fact that their nature, intended purpose and method of use were different, that they were not in competition with or complementary to each other and that it had not been proved that producers of beers also manufactured the goods covered by the mark applied for. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – reject the application for registration; – order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of the action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 in that the Board of Appeal erred in finding that the goods covered by the marks at issue were dissimilar. 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. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark. According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199 , paragraphs 30 to 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation 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 relevant public and the comparison of the signs According to settled 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 in question (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). In the present case, the Board of Appeal found, in paragraph 22 of the contested decision, that, since the goods at issue were foodstuffs and beverages, the relevant public consisted of members of the general public, whose level of attention was average. The applicant does not dispute that assessment. It must also be borne in mind that it is clear from Article 8(1)(b) of Regulation 2017/1001 that the existence of a likelihood of confusion must be assessed with regard to the public in the territory in which the earlier mark is protected (see paragraph 15 above). Since, in the present case, the earlier mark is a Portuguese trade mark, the relevant public is, as the Board of Appeal pointed out and the applicant admits, that of Portugal. As regards the similarity of the signs, the Board of Appeal found, in paragraph 25 of the contested decision, that the signs at issue were highly similar. The applicant does not dispute that assessment. The comparison of the goods As regards the comparison of the goods covered by the marks at issue, the applicant submits that the Board of Appeal erred in finding that those goods were dissimilar. EUIPO disputes the applicant’s arguments and submits that the Board of Appeal was right in finding that the goods covered by the marks at issue were dissimilar. According to well-established case-law, in assessing the similarity of the goods covered by the marks at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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) or the fact that the goods are often sold in the same specialist sales outlets, which is likely to make it easier for the relevant consumer to perceive the close connections between them and strengthen the impression that the same undertaking is responsible for manufacturing those goods (see judgment of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling) , T‑627/13, not published, EU:T:2015:740 , paragraph 37 and the case-law cited). In that regard, it must be pointed out that the Board of Appeal compared the ‘beers’ in Class 32 covered by the earlier mark and the ‘coffee, tea, chocolate beverages, cocoa’ and ‘related beverages’ in Class 30 covered by the mark applied for (‘the beverages covered by the marks at issue’) on the basis of the premiss that, if no similarity could be established between the goods which at least shared the same characteristic of being drinks, a fortiori no possible similarity could be found to exist with regard to the other foodstuffs covered by the mark applied for, since the mere fact put forward by the applicant that those foodstuffs and the ‘beers’ covered by the earlier mark were sold ‘side by side’ in commercial establishments was not sufficient to establish such similarity. First, the Board of Appeal found that the beverages covered by the marks at issue were dissimilar in nature, since the beverages covered by the mark applied for were not ‘alcoholic’, were not, unlike the ‘beers’ covered by the earlier mark, brewed from malt, sugar, hops, water, roots or leaves and possessed none of the characteristics of beer. Secondly, the Board of Appeal found that the beverages covered by the marks at issue also differ in their intended purpose. It took the view that, whereas beer is intended to quench thirst or to induce a feeling of well-being, or both, and is consumed cold in the context of festive, leisure and social activities, emphasising its role in group bonding and having fun, that is not the case with regard to the beverages covered by the mark applied for, which are consumed hot, but are not intended to quench thirst. The Board of Appeal also found that the beverages covered by the marks at issue were not in competition with each other, since consumers would not choose coffee or tea instead of beer. In order to challenge those assessments on the part of the Board of Appeal, the applicant submits, in the first place, that the Portuguese relevant public has the habit of going to a restaurant or bar and, during the meal, drinking a beer and ordering a coffee. It deduces from this, first, that a person who wishes to consume beer will consider coffee, tea or cocoa as a ‘viable option’ and, secondly, that, contrary to what the Board of Appeal pointed out, the ‘coffee’ covered by the mark applied for has a ‘socializing’ function like the beer covered by the earlier mark. It therefore submits that those goods have the same nature, because they are all beverages, and that they can be substituted for one another. In that regard, it must be pointed out that the Board of Appeal did not rule out the possibility that the beers covered by the earlier mark and the beverages covered by the mark applied for might be consumed in the same establishments, or even that they might be consumed one after the other. However, contrary to what the applicant submits, the mere fact that beer as well as coffee, tea, chocolate beverages and cocoa are served in a restaurant or bar does not make it possible to conclude that a consumer who goes to such an establishment will regard a coffee, a tea, a chocolate beverage or a cocoa as an alternative to a beer. In this regard, first, it must be noted that, according to settled case-law, in order for goods to be regarded as being in competition with each other, there must be an element of substitutability between them (see judgment of 4 February 2013, Hartmann v OHIM — Protecsom (DIGNITUDE) , T‑504/11, not published, EU:T:2013:57, paragraph 42 and the case-law cited). In the present case, contrary to what the Board of Appeal found, some of the beverages in Class 30 covered by the mark applied for could be intended to quench thirst, like the ‘beers’ covered by the earlier mark (see, to that effect, judgment of 11 May 2010, Wessang v OHIM — Greinwald (star foods) , T‑492/08, not published, EU:T:2010:186, paragraph 27). However, the Board of Appeal was right in finding that the very nature of the beverages covered by the marks at issue differed in terms of the presence or absence of alcohol (see, to that effect, judgment of 11 May 2010, star foods , T‑492/08, not published, EU:T:2010:186, paragraph 31). The presence, or absence, of alcohol in a beverage is perceived by the relevant public as a significant difference as regards the nature of the beverages in question. The general public, including the Portuguese public, is observant and makes a distinction between alcoholic and non-alcoholic beverages. That public is aware of the distinction between alcoholic and non-alcoholic beverages, which is, moreover, necessary, since some consumers do not wish to or cannot consume alcohol. Furthermore, it must be pointed out that the marketing of alcohol is, in a number of respects, more regulated, it being necessary, inter alia, to obtain a licence to sell alcohol and a minimum age restriction being imposed for the purchase of alcoholic beverages. The fact that the beverages at issue may be consumed in the same places and that they are often consumed by the same people and sold at similar points of sale does not affect this finding (see judgment of 12 November 2009, Spa Monopole v OHIM — De Francesco Import (SpagO) , T‑438/07, EU:T:2009:434, paragraph 30 and the case-law cited). Consequently, the relevant public makes a distinction when choosing between the ‘beers’ covered by the earlier mark and the non-alcoholic beverages covered by the mark applied for. Accordingly, it must be held that, contrary to what the applicant submits, in the light of their nature, the beverages covered by the marks at issue are not interchangeable, with the result that they cannot be considered to be in competition with each other. Furthermore, the ‘socializing’ function which the applicant attributes to coffee is not the same as that which the Board of Appeal rightly attributed to beer. These are beverages which are consumed on different occasions and serve to satisfy different needs on the part of the consumer (see, to that effect, judgment of 11 May 2010, star foods , T‑492/08, not published, EU:T:2010:186, paragraph 32). Beverages such as coffee, tea and chocolate- or cocoa-based beverages are consumed, during or at the end of a meal, on a daily basis and, for the most part, during the day, whereas beer, as an alcoholic beverage, is usually consumed on special and convivial occasions, at festive events (see, to that effect, judgment of 12 November 2009, SpagO , T‑438/07, EU:T:2009:434, paragraph 30). The applicant’s argument must therefore be rejected. Secondly, as regards the Board of Appeal’s assessment that the beverages covered by the marks at issue are not complementary, since beer is not drunk mixed with any of the beverages covered by the mark applied for, the applicant submits that there are already breweries that add coffee or tea to beers and that the coffee and beers market is expanding throughout the world, with the result that those goods should be considered to be complementary to each other. In that regard, it must be pointed out that the mere fact that there are already breweries that add coffee or tea to beers is not sufficient to establish that coffee or tea and beer are complementary goods. It must be borne in mind that, according to settled case-law, two goods are complementary where they are closely connected, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods (see judgment of 22 January 2009, easyHotel , T‑316/07, EU:T:2009:14 , paragraph 57 and the case-law cited). However, the applicant has not established that the addition of coffee or tea to beer is indispensable or important in the context of the consumption of beer or vice versa. Accordingly, the applicant’s argument seeking to show that the beverages covered by the marks at issue are complementary must be rejected. Thirdly, the Board of Appeal found that the applicant had failed to produce evidence that producers of beers also manufacture coffee, tea, drinking chocolate and cocoa, let alone the foodstuffs covered by the mark applied for, and that the different nature of those beverages did not make it possible to assume that that was the case. Although the applicant submits that, regardless of their method of use or nature, the goods covered by the mark applied for are associated by the consumer with its company and with the earlier mark, it does not put forward any specific argument seeking to challenge the Board of Appeal’s assessment referred to in paragraph 39 above that the usual manufacturers of the goods at issue are different. In the second place, as regards the comparison of the foodstuffs in Class 30 covered by the mark applied for and the beer in Class 32 covered by the earlier mark, the applicant submits that those goods are similar, first, in the light of their complementary nature and, secondly, since they are sold ‘side by side’ in the same commercial establishments. In that regard, it must be pointed out, first, that, contrary to what the applicant submits, goods such as the foodstuffs in Class 30 covered by the mark applied for are not complementary to the beer in Class 32 covered by the earlier mark. According to the case-law, even though some of the goods in Class 30 covered by the mark applied for, such as biscuits, crisps or bread may be consumed together with beer, their use as such is optional and is not indispensable or important for the consumption of beer (see, to that effect, judgment of 11 May 2010, star foods , T‑492/08, not published, EU:T:2010:186, paragraph 38). Consequently, there is no close connection between those goods for the purposes of the case-law referred to in paragraph 37 above, with the result that they cannot be considered to be complementary to each other. Secondly, it must be pointed out that, according to settled case-law, the fact that the goods in question may be sold in the same commercial establishments, such as department stores or supermarkets, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin (see judgment of 26 October 2011, Intermark v OHIM — Natex International (NATY’S) , T‑72/10, not published, EU:T:2011:635, paragraph 37 and the case-law cited). Likewise, the mere fact that the foodstuffs in Class 30 covered by the mark applied for and the beer in Class 32 covered by the earlier mark may be sold ‘side by side’ in commercial establishments shows, at most, that they may be consumed together, but that is not sufficient to substantiate that they are complementary in nature, for the reasons that have already been set out in paragraph 42 above. Consequently, the applicant’s arguments seeking to show that the foodstuffs in Class 30 covered by the mark applied for and the beer in Class 32 covered by the earlier mark are similar must be rejected. It follows that the applicant’s arguments seeking to challenge the Board of Appeal’s finding that the goods covered by the marks at issue are dissimilar must be rejected, without it being necessary to rule on the admissibility, disputed by EUIPO, of some of the evidence which it submitted before the Court in support of those arguments. The likelihood of confusion It is clear from the analysis in paragraphs 30 to 35 and 37 to 45 above that the Board of Appeal was right in finding that, in the present case, one of the conditions necessary in order to establish that there is, in accordance with Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion on the part of the relevant public as regards the origin of the goods covered by the marks at issue, namely that the goods at issue must be similar, is not satisfied. Consequently, it must be held, as the Board of Appeal found, that there is no likelihood of confusion. The action must therefore be dismissed. Costs Under Article 134(1) of the Rules of Procedure, 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 EUIPO’s costs, in accordance with the form of order sought by EUIPO. On those grounds, THE GENERAL COURT (Tenth Chamber) hereby: 1. Dismisses the action; 2. Orders Super bock group, SGPS SA to pay the costs. Kornezov Buttigieg Kowalik-Bańczyk Delivered in open court in Luxembourg on 12 December 2019. E. Coulon A. Kornezov 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