Via Atlantica Adegas e Viñedos v EUIPO - Casa Relvas (VIA ATLÁNTICA) (EU trade mark - Judgment) [2024] EUECJ T-301/23 (06 March 2024)

Judgment By its action under Article 263 TFEU, the applicant, Vía Atlántica Adegas e Viñedos, SL, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 March 2023 (Case R 1419/2022-4) (‘the contested decision’). Background to the dispute On 5 March 2020, the applicant filed with EUIPO an application for registration of an EU trade mark for the word sign VIA ATLÁNTICA. The mark applied for covered goods in Class 33 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Alcoholic beverages except beer’. On 29 June 2020, the other party to the proceedings before the Board of Appeal, Casa Relvas Lda, 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, inter alia, on the following earlier EU figurative mark: The goods covered by the earlier mark are in Class 33 and correspond to the following description: ‘Wines’. 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 7 June 2022, the Opposition Division upheld the opposition. On 1 August 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division. By the contested decision, the Board of Appeal dismissed the appeal on the ground that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 was established on the part of the relevant public in the present case, having regard, inter alia, to the overall similarity of the signs at issue, the identity of the goods covered and the normal degree of the earlier mark’s distinctiveness. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO and, where appropriate, the intervener to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs in the event that a hearing is convened. Law The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, 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. For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two 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). 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). In the present case, it is not disputed that the relevant public is the general public in the European Union with an average level of attention and that the Board of Appeal could legitimately base its analysis on the perception of the signs at issue by the Spanish-speaking part of the public. The applicant likewise does not dispute the Board of Appeal’s finding that the goods at issue are identical. However, the applicant contests the Board of Appeal’s assessment concerning the comparison of the signs at issue and, consequently, the conclusion relating to the existence, in the present case, of a likelihood of confusion. In that regard, it should be borne in mind that 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). Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgments of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraphs 41 and 42, and of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraphs 42 and 43). In the present case, the earlier sign is a composite figurative sign consisting of a word element, ‘atlântico’, written in capital letters and of two figurative elements, namely a cross with a red outline above that word element and the depiction of an old sailing boat or ship floating on water underneath it, all on a pastel yellow background. The sign applied for is a word mark formed of the words ‘via’ and ‘atlántica’. The Board of Appeal found, as the Opposition Division had done, that none of the elements making up the signs at issue was dominant in the overall perception of those signs. In that regard, it noted, as regards the assessment of the distinctiveness of the elements making up the earlier mark, that, although many wine-producing areas are situated along the Atlantic coast, the term ‘atlântico’ referred to a very vast territory covering several wine-producing regions situated in Europe, on the French, Spanish and Portuguese coasts, as well as in America and Africa. Consequently, such a broad geographical reference did not, according to the Board of Appeal, describe a characteristic of the goods covered by the earlier mark. According to the Board of Appeal, the depiction of the boat was also distinctive. In addition, the Board of Appeal had regard to the fact that, where a trade mark is composed of word and figurative elements, the former are, in general, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name of that trade mark rather than by describing the figurative elements of the mark. As regards the mark applied for, the Board of Appeal found that the terms ‘via’ and ‘atlántica’ were both distinctive and that the meanings cited by the Opposition Division were not descriptive or otherwise non-distinctive for the goods covered by that mark. In the light of those arguments, the Board of Appeal concluded that the signs at issue were visually and conceptually similar to an average degree and phonetically similar to an above-average degree. The applicant disputes the Board of Appeal’s finding concerning the comparison of the signs at issue, maintaining that, contrary to the Board of Appeal’s findings, the word elements ‘atlântico’ of the earlier mark and ‘atlántica’ of the mark applied for are not distinctive for wines. Those terms, it is submitted, describe the geographical origin of ‘elaboration’ of those goods. Consequently, according to the applicant, the figurative element of the earlier mark depicting a ship and the word ‘via’ in the mark applied for are dominant in the overall impression created by the signs at issue. The similarity resulting from the presence of the descriptive and non-distinctive elements ‘atlântico’ and ‘atlántica’ in those signs cannot therefore lead to their visual or conceptual similarity. Any phonetic similarity is not sufficiently significant to call into question the absence of a likelihood of confusion. EUIPO contends that the single plea in law should be dismissed in the event that the Court should find, as the Board of Appeal found, that the word elements ‘atlântico’ and ‘atlántica’ had an average degree of distinctiveness, but endorses the form of order sought by the applicant in the event that the Court should confirm the applicant’s premiss that those word elements are weakly distinctive, or do not have any inherent distinctive character on account of their descriptive purpose of indicating a geographical origin, in so far as the Board of Appeal’s conclusion as to the existence of a likelihood of confusion would be contrary to the case-law of the Courts of the European Union, according to which a likelihood of confusion is ruled out where the similarity between the trade marks at issue results solely from elements that are weakly distinctive or descriptive. In the light of the scope of the parties’ arguments, before assessing the similarity of the signs at issue, the Board of Appeal’s assessments as regards the distinctive and dominant character of the elements composing those signs must be examined. In order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is descriptive of the goods or services for which the mark has been registered (see judgment of 5 October 2020, Eugène Perma France v EUIPO - SPI Investments Group (NATURANOVE) , T‑602/19, not published, EU:T:2020:463 , paragraph 27 and the case-law cited). With regard to the assessment of the dominant character of one or more given components of a complex 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 complex mark (judgment of 23 October 2002, Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) , T‑6/01, EU:T:2002:261 , paragraph 35). In addition, owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (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 49 and the case-law cited). In that regard, it should be stated, as the Board of Appeal noted in paragraph 24 of the contested decision, that, although multiple wine-producing regions are situated along the Atlantic coast, the word elements ‘atlântico’ or ‘atlántica’ refer to thousands of kilometres of European coastline, located in a number of Member States, namely France, Spain or Portugal, and extending to the Atlantic coasts of America and Africa. As the Board of Appeal stated, such a broad geographical reference does not therefore describe a characteristic of the goods covered by the signs at issue. The applicant puts forward no argument and, a fortiori, fails to demonstrate, even having regard to Annexes A.9 to A.25 to the application, that wines from such extensive and varied wine-producing regions situated on the Atlantic coast have the same characteristics so that a general indication of geographical origin for wines as being produced near the Atlantic ocean would be capable of indicating to consumers the intrinsic qualities of the wines covered by the signs at issue. As argued, in essence, by EUIPO, whereas various geographical names are used in the wine sector as indications of the geographical origin of those goods, the purpose of such geographical indications is to guarantee to consumers the particular qualities and specific characteristics inherent in the goods. In the present case, any indication of the origin of wines by the terms ‘atlântico’ or ‘atlántica’ which is so general as to cover all wine-producing regions situated on the various Atlantic coasts does not enable the relevant public to identify precisely the geographical origin of the wines or their specific characteristics. It follows that the Board of Appeal did not make an error of assessment in finding that the word element ‘atlântico’ of the earlier mark and the word element ‘atlántica’ of the mark applied for was distinctive with regard to the goods covered by those signs and that, in essence, none of the elements making up those signs was dominant in the overall impression created by them, within the meaning of the case-law referred to in paragraph 31 above. That finding is not called into question by the applicant’s other arguments. First, the applicant submits, in support of arguments, extracts from websites showing the use of the term ‘vinos atlánticos’ for wines and trade marks containing the terms ‘atlântico’, ‘atlántica’ or ‘atlantic’ for wines. However, merely mentioning the use of the expression ‘vinos atlánticos’ for wines or listing a relatively limited number of trade marks containing terms similar to the word elements ‘atlântico’ and ‘atlántica’ making up the signs at issue, without any indication as to whether the relevant public is aware of those trade marks, does not allow the conclusion to be drawn that there is an association in the mind of that public between that word and those goods (see, to that effect, judgment of 7 June 2023, Vallegre v EUIPO - Joseph Phelps Vineyards (PORTO INSÍGNIA) , T‑33/22, not published, EU:T:2023:316 , paragraph 45 and the case-law cited). Merely referring to those trade marks or to the use of the term ‘vinos atlánticos’ in articles intended specifically for professionals in the wine sector does not demonstrate that consumers in the general public have been exposed to widespread use of that term or to trade marks containing that term for wines and have thus become accustomed to them. Secondly, the applicant relies on a decision of the Opposition Division of EUIPO of 13 April 2017 which found that the term ‘atlantico’, making up signs other than the signs at issue in the present case but also covering, inter alia, wine, had a weak distinctive character. In that regard, it should be borne in mind that the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (judgment of 15 September 2005, BioID v OHIM , C‑37/03 P, EU:C:2005:547, paragraph 47, and order of 11 February 2021, Klose v EUIPO , C‑600/20 P, not published, EU:C:2021:110 , paragraph 21). Moreover, it should be noted that, in its assessment of the distinctive character of the element ‘atlântico’ making up the earlier sign, the Board of Appeal referred to the decision of the Fifth Board of Appeal of 27 September 2021 (Case R 842/2021-5) relating to opposition proceedings between the other party to the proceedings before the Board of Appeal, based on a figurative mark consisting of a word element ‘atlântico’ and the depiction of a ship, and the applicant for the EU trade mark CAMINO ATLANTICO, in which that Board of Appeal concluded, inter alia, that the term ‘atlântico’ making up the earlier mark at issue in the present case was distinctive for wines. In those circumstances, the fact that an Opposition Division of EUIPO had found in another case prior to that decision of the Fifth Board of Appeal and with regard to different signs from those at issue in the present case that an element ‘atlântico’ had a weak distinctive character is not capable of calling into question the Board of Appeal’s conclusion in the present case. It follows from the foregoing that the Board of Appeal was also entitled to find, in assessing the overall impression created by the signs at issue, that, on account of the word elements ‘atlântico’ and ‘atlántica’ in the signs at issue, as well as the depiction of a ship in the earlier sign and the word element ‘via’ of the sign applied for, those signs were visually and conceptually similar to an average degree and phonetically similar to an above-average degree. The applicant’s challenge to those findings of the Board of Appeal is based on the premiss that, since the elements ‘atlântico’ and ‘atlántica’ are descriptive and devoid of distinctive character for the goods at issue, they should be excluded from the comparison of the signs at issue. According to the applicant, that comparison should therefore be limited to the other elements making up the signs at issue, which are ‘totally’ different, and, consequently, the signs at issue have no visual or conceptual similarity and, at most, a low degree of phonetic similarity. Since the applicant’s arguments seeking to demonstrate the descriptive character and lack of distinctiveness of the word elements ‘atlântico’ or ‘atlántica’ have been rejected, its arguments, based on that premiss alone, by which it disputes the Board of Appeal’s findings concerning the comparison of the signs at issue, must also be rejected. Lastly, in the global assessment of the likelihood of confusion, the Board of Appeal found, in paragraphs 39 and 42 of the contested decision, that, taking into account, inter alia, the identity of the goods at issue, the average degree of visual and conceptual similarity and the above-average degree of phonetic similarity and the normal degree of distinctiveness of the earlier mark, consumers were likely to believe that the goods covered by the marks at issue came from the same undertaking or from economically linked undertakings. It concluded that, in the present case, there was a likelihood of confusion on the part of the relevant public. In that regard, it should be recalled that the applicant’s arguments relating to the comparison of the signs at issue have been rejected. Furthermore, the applicant has not put forward any specific arguments to contest the global assessment of the likelihood of confusion carried out by the Board of Appeal. In those circumstances, the single plea in law relied on by the applicant must be rejected and, accordingly, the present action must be dismissed, without it being necessary to rule on the admissibility, disputed by EUIPO, of Annexes A.9 to A.25 to the application. 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 a hearing has not been organised, it is appropriate to order each party to bear its own costs incurred in the course of the proceedings before the Court. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders Vía Atlántica Adegas e Viñedos, SL and the European Union Intellectual Property Office (EUIPO) to bear their own costs. Kowalik-Bańczyk Buttigieg Ricziová Delivered in open court in Luxembourg on 6 March 2024. V. Di Bucci M. van der Woude 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