CELEX: 62010TJ0032
Community trade mark
Opposition proceedings
Application for Community figurative mark ELLA VALLEY VINEYARDS
Earlier national and Community trade marks ELLE
Relative ground for refusal
Likelihood of association
Link between the signs
Reputation
No similarity of the signs
Article 8(5) of Regulation (EC) No 207/2009

Background to the dispute
On 4 March 2005, the applicant, Ella Valley Vineyards (Adulam) Ltd filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (
OJ 1994 L 11, p. 1
), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (
OJ 2009 L 78, p. 1
)).
The trade mark in respect of which registration was sought is the figurative sign reproduced below:
The goods in respect of which registration was sought fall within 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 (‘the Nice Agreement’), and correspond to the following description: ‘Wines’.
The Community trade mark application was published in
Community Trade Marks Bulletin
No 37/2005 of 12 September 2005.
On 12 December 2005, the intervener, Hachette Filipacchi Presse (HFP), filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
The opposition was based on the following earlier mark:
The marks concerned are, first, the Community figurative mark, lodged on 30 October 2003 and registered on 11 October 2005 under No 3475365 designating, in particular, goods in Class 16 and corresponding, in particular, to the following description: ‘Periodicals’ and ‘Books’ and, second, the French figurative mark, lodged on 27 June 1989 and registered on 27 June 1999 under No 1538354 designating, in particular, the products falling within Class 16 and corresponding, in particular, to the following description: ‘Periodicals’ and ‘Books’.
The grounds relied on in support of the opposition were those referred to in Article 8(5) of Regulation No 40/94 (now Article 8(5) of Regulation No 207/2009).
On 8 July 2008, the Opposition Division rejected the opposition, holding that the signs at issue were not sufficiently similar for there to be a likelihood that the public would associate the marks or establish a link between them, which excluded the application of Article 8(5) of Regulation No 40/94.
On 8 September 2008, the intervener filed a notice of appeal with OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division.
By decision of 11 November 2009 (‘the contested decision’), the First Board of Appeal of OHIM upheld the action on the basis of Article 8(5) of Regulation No 207/2009, and annulled the Opposition Division’s decision.
The Board of Appeal held, first of all, that in light of the similarities between the signs at issue, the relevant public might establish a link between them. According to the Board of appeal, the mark applied for is composed of the dominant verbal element ‘ella’ which is visually similar to the earlier signs, even as regards the specific typeset. The other elements of the mark applied for are not distinctive because they are commonly used in the wine sector. Furthermore, the elements ‘ella’ and ‘valley’ in the mark applied for do not have the same importance conceptually. The relevant public will not perceive the word ‘ella’ as a geographical indication associated with the word ‘valley’, but as a first name or feminine pronoun. The Board of Appeal also held that the reputation of the earlier marks had been established in the European Union with respect to magazines.
Next, the Board of Appeal held that
Elle
magazine, which enjoys great prestige with the public, was associated with a specific image of elegance related to the French
art de vivre
, which is not limited to fashion, but also includes food. In fact, there is a connection between publications on food and those on wines. Furthermore,
Elle
magazine publishes magazines on food and wines such as
Elle
À TABLE and supplements containing recipes. In addition,
Elle
magazine has been directly associated with a wine sponsorship (Cuvée ELLE) and regularly offers its readers opportunities to purchase wines selected for their quality. In those circumstances, offering wines to the public under a mark whose dominant component is a word very similar to the word ‘elle’, written in the same font, gives rise to a great likelihood that the applicant will take unfair advantage of the reputation of the earlier marks. Wine consumers in the European Union are familiar with
Elle
magazine and might establish a link between it and the applicant’s wines.
Forms of order sought
The applicant claims that the Court should:
—
annul the contested decision;
—
order OHIM to pay the costs.
OHIM contends that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
The intervener submits that the Court should dismiss the action.
Law
In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009. It claims that, in the present case, the conditions set out in the case-law for the relevant public to establish a link between the earlier marks and the mark applied for are not fulfilled. Thus, first, the signs at issue do not have any particular similarity; second, the goods concerned are not the same and third, the reputation enjoyed by the earlier marks is limited. In the alternative, the applicant claims that the mark applied for will not, in any event, take unfair advantage of the reputation of the earlier marks.
It is apparent from the wording of Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those three conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 8 December 2011 in Case T-586/10
Aktieselskabet af 21.november 2001
v
OHIM — Parfums Givenchy (only givenchy)
, not published in the ECR, paragraph 57 and the case-law cited).
In that connection, it is clear from the case-law that the types of damage referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the marks at issue, by virtue of which the relevant section of the public makes a connection between the marks, that is to say, it establishes a link between them, even though it does not confuse them (Case
T-438/07
Spa Monopole
v
OHIM - De Francesco Import (SpagO)
[2009] ECR II-4115
, paragraph 15; see also, by analogy, Case
C-252/07
Intel Corporation
[2008] ECR I-8823
, paragraph 30 and the case-law cited).
The existence of such a link, on the part of the relevant public, must be assessed globally, taking into account all factors relevant to the circumstances of the case (see, by analogy,
Intel Corporation
, cited in paragraph 19 above, paragraph 41, and the case-law cited).
The Court has set out which factors may be relevant in the global assessment aiming to establish the existence of such a link between the conflicting marks. Thus, among those factors, the Court has mentioned, first, the degree of similarity between the conflicting marks; second, the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; third, the strength of the earlier mark’s reputation; fourth, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and, fifth, the existence of a likelihood of confusion on the part of the public (
Intel Corporation
, cited in paragraph 19 above, paragraph 42).
It is in the light of those considerations that it is necessary to assess whether the contested decision is lawful.
The relevant public
As regards the relevant public, it should be recalled that, according to the case-law, the existence of a link between the conflicting marks, on which the abusive conduct envisaged by Article 8(5) of Regulation No 207/2009 is based, assumes that the public concerned by the goods and services for which the marks are registered is the same or ‘overlaps’ to a certain extent (
Intel Corporation
, cited in paragraph 19 above, paragraphs 46 to 49).
First, in the present case, the target public for the goods designated by the earlier marks, in respect of which the reputation of those marks is relied on, that is ‘periodicals’ and ‘books’, is the general public (see, to that effect, Joined Cases
T-425/07 and T-426/07
Agencja Wydawnicza Technopol
v
OHIM (100 and 300)
[2009] ECR II-4275
, paragraph 24, and judgment of 19 November 2009 in Joined Cases T-200/07 to T-202/07
Agencja Wydawnicza Technopol
v
OHIM (222, 333 and 555)
, not published in the ECR, paragraph 26). In that connection, in so far as one of the two earlier marks on which the intervener has based his opposition is a Community mark, the relevant public is the general public of the European Union.
Second, the goods covered by the mark applied for, that is to say ‘wines’, are also destined for the general public of the European Union. According to the case-law, as wines are usually subject to widespread distribution, from the food section of a department store to bars and cafes, they are everyday consumer goods for which the relevant public is the average European consumer of everyday consumer goods, who is deemed to be reasonably well informed and reasonably observant and circumspect (see judgment of 16 September 2009 in Case T-485/07
Dominio de la Vega
v
OHIM — Ambrosio Velasco (DOMINIO DE LA VEGA)
, not published in the ECR, paragraph 27, and judgment of 23 September 2009 in Case T-291/07
Viñedos y Bodegas Príncipe Alfonso de Hohenlohe
v
OHIM — Byass (ALFONSO)
, not published in the ECR, paragraph 29 and the case-law cited).
In those circumstances, since the consumers concerned by the goods designated by the conflicting signs are the general public of the European Union, it must be concluded that, in the present case, the public concerned ‘overlaps’ within the meaning of the case-law mentioned in paragraph 23 above.
The applicant’s argument, that the target public for the goods covered by the mark applied for displays a level of attention which is higher than average, that public being particularly demanding because the goods are kosher wines, cannot be accepted.
First of all, it is clear from the settled case-law, cited in paragraph 25 above, that wine consumers display, in general, an average level of attention. In order to challenge the Board of Appeal’s assessment it is not sufficient for the applicant to state that, in a given sector, consumers are particularly attentive to marks, it must substantiate that claim (see, Case
T-118/09
La Sonrisa de Carmen and Others
v
OHIM - Harald Heldmann (BLOOMCLOTHES)
[2011] ECR II-0000
, paragraphs 21 and 22 and the case-law cited), which, in the present case, it has not done to the requisite legal standard.
Next, it must be held that the mark applied for designates wine in general and not particular types of wine. Thus, the fact that the applicant intends to use the mark applied for to sell kosher wines, which covers the specific ways in which the goods designated by that mark are marketed, which may vary over time and according to the wishes of its proprietors, in no way detracts from the fact, which the applicant itself also acknowledged at the hearing, that the protection of the mark applied for, if it were to be registered, would cover all wines, so that the relevant public must be defined with respect to all ‘wines’ (see, to that effect and by analogy, judgment of 16 September 2009 in Case T-400/06
Zero Industry
v
OHIM — zero Germany (zerorh+)
, not published in the ECR, paragraph 38 and the case-law cited).
The reputation of the earlier marks
As regards the reputation of the earlier marks, the applicant submits that it is not sufficient that the public concerned establishes a link between those marks and the mark applied for in the wine sector. The fact that
Elle
magazine may devote articles or sections to wine does not confer a reputation in that field on the earlier marks.
In that connection, in order to satisfy the requirement of reputation, an earlier mark must be known to a significant part of the public concerned by the goods or services covered by it. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it, without there being any requirement for that mark be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (see, by analogy, Case
C-375/97
General Motors
[1999] ECR I-5421
, paragraphs 24, 25 and 27 to 29, and as regards Article 8(5) of Regulation No 40/94 judgment of 19 June 2008 in Case T-93/06
Mülhens
v
OHIM — Spa Monopole (MINERAL SPA)
, not published in the ECR, paragraph 33).
In the present case, it must be stated that the applicant acknowledges that, on account of the success of
Elle
magazine, the earlier marks are well known in the periodical and book sectors in the European Union, or at least in a substantial part of it.
It is not indicated anywhere in the case-law that, in order to show that the relevant public may make an association between the conflicting marks by establishing a link between them it would be necessary to show that the earlier marks have acquired a reputation in the sectors in which the goods or services covered by the mark applied for. Thus, in accordance with Article 8(5) of Regulation No 207/2009, the Board of Appeal was not required to establish that the earlier marks had a reputation in the wine sector.
In that connection, it must also be observed that, according to the case-law, it is only if the relevant public with respect to the products designated by the earlier mark and the relevant public for the goods designated by the mark applied for are distinct that it may be necessary to take into consideration the strength of the earlier mark’s reputation in order to determine whether that reputation extends beyond the public targeted by that mark (
Intel Corporation
, cited in paragraph 19 above, paragraphs 51 to 53). However, in the present case, as stated in paragraph 26 above, the goods designated by the earlier marks and those designated by the mark applied for concern, at least partially, the same public.
In those circumstances, it must be held that the applicant has not shown that the Board of Appeal had committed an error in holding that the reputation of the earlier marks was sufficient for the relevant public to establish a link between them and the mark applied for.
The similarity of the conflicting signs
As regards the condition relating to the existence of identity or similarity between the conflicting signs, a comparison must be made between the earlier marks and the mark applied for.
In that connection, it should be recalled, as a preliminary point that, in order to satisfy the condition concerning similarity of the marks laid down by Article 8(5) of Regulation No 207/2009, it is not necessary to prove that there exists, on the part of the relevant section of the public, a likelihood of confusion between the earlier mark with a reputation and the mark applied for. It is sufficient for the degree of similarity between those marks to have the effect that the relevant section of the public establishes a link between them (see, by analogy, Case
C 408/01
Adidas-Salomon and Adidas Benelux
[2003] ECR I-12537
, paragraphs 27 and 31, and Case
C-487/07
L’Oréal and Others
v
Bellure and Others
[2009] ECR I-5185
, paragraph 36; see also Case
T-181/05
Citigroup and Citibank
v
OHIM - Citi (CITI)
[2008] ECR II-669
, paragraphs 64 and 65). In that regard, the more similar the conflicting marks are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public.
The global assessment seeking to establish the existence of a link between the marks at issue must, in so far as the visual, phonetic or conceptual similarity of the signs at issue is concerned, be based on the overall impression given by the signs, account being taken, inter alia, of their distinctive and dominant elements (judgment of 16 May 2007 in Case T-137/05
La Perla
v
OHIM Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC)
, not published in the ECR, paragraph 35, and judgment of 25 March 2009 in Case T-21/07
L’Oréal
v
OHIM — Spa Monopole (SPALINE)
, not published in the ECR, paragraph 18).
Furthermore, the assessment of the similarity between two marks means more than taking just one component of a compound trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a compound trade mark may not, in certain circumstances, be dominated by one or more of its components (see, by analogy, judgment of 15 December 2009 in Case T-412/08
Trubion Pharmaceuticals
v
OHIM Merck (TRUBION)
, not published in the ECR, paragraph 35 and the case-law cited).
It is in the light of those principles that it must be examined whether the Board of Appeal has committed an error in holding that the signs at issue were insufficiently similar for the relevant public to establish a link between the marks at issue.
In the contested decision, the Board of Appeal held, first of all, that the word ‘ella’ was the dominant element in the mark applied for because that word was written in large capital letters, and because of the weak distinctive character of its other verbal and figurative elements. Next, on that basis, it concluded that the relevant public might establish a link between the marks at issue on account of the closeness between the dominant element ‘ella’ of the mark applied for and the single sign constituting the earlier marks ELLE.
In the present case, as is clear from paragraph 2 above, the mark applied for consists of a black rectangle with a thin white border which reproduces the label on a wine bottle. The words ‘ella’ and ‘valley’ are written in white capital letters inside the rectangle. The word ‘vineyards’ is written in black capital letters under the rectangle.
Although, as the Board of Appeal stated, in the mark applied for the word ‘ella’ is larger than ‘valley’ and it is positioned above the latter, it must be held that the configuration of the mark applied for is such that those two words cannot be perceived separately. It must be held that the words ‘ella’ and ‘valley’ are both contained within the black rectangle and are written with the same font and the same colour. Thus, on account of the contiguity of those two words in the black rectangle, and their identical font and colour, and despite the difference in size, the relevant public will perceive the expression ‘ella valley’ as an indissociable whole. In that connection, it should be recalled that, according to settled case-law, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case
C-532/10 P
adp Gauselmann
v
OHIM
[2011] ECR I-0000
, paragraph 24 and the case-law cited).
Those considerations are even more relevant in the context of viticulture. In such a context, when purchasing a product, consumers are often presented with labels containing denominations consisting of an expression including a word followed by ‘valley’. Furthermore, it must be stated that that fact was confirmed by the Board of Appeal itself when it mentioned, in paragraphs 16 to 19 of the contested decision, a series of indications of origin of wines such as, in particular, ‘Napa Valley’, ‘Sonoma Valley’ or ‘Barrosa Valley’. Those numerous indications of origin clearly show that such denominations are common in the wine sector.
It follows from those considerations that, on reading ‘ella valley’, taken as a whole, the relevant consumer will tend to understand it as referring to a place name indicating the origin of the wine. In that connection, it must also be held that, although wine consumers display an average level of attention, as stated in paragraphs 25 and 28 above, they are rarely indifferent to the origin of the wine when purchasing it. Consequently, consumers normally pay a certain amount of attention to the origin of the wine they purchase.
Furthermore, it must also be observed that the applicant stated before the Court that the expression ‘ella valley’ refers, in English, to the ‘Valley of Elah’, a valley in Israel mentioned in the Bible as the place where David vanquished Goliath, where the wine marketed by the applicant under the mark applied for is produced. Regardless of whether such a fact may have as a consequence that the mark applied for is composed exclusively of signs with a descriptive character — which is not the subject of the present case — it must be held however that the fact that the expression ‘ella valley’ refers to a valley which actually exists militates in favour of the finding that that expression is a place name. In that connection, as the parties acknowledged at the hearing, both ‘ella’ and ‘elah’ are only approximate transcriptions of a word originally written in Hebrew letters, which explains the differences in the way in which those words are written.
In the light of the foregoing considerations, it must be held, in the present case, that contrary to the Board of Appeal’s findings, the relevant public will perceive the expression ‘ella valley’, taken as a whole, without separating the verbal elements of which it is composed and, therefore, will understand it as referring to a place name indicating the origin of the wine.
As regards the word ‘vineyards’, it refers, at least for the English-speaking public in the European Union, to the origin of the product designated by the mark applied for and has, therefore, weak distinctive character. Thus, also having regard to its smaller size and its position in the sign applied for, it is unlikely to be perceived by the consumer as the element indicating the commercial origin of the products at issue, which does not necessarily mean however that that word must be regarded as insignificant in the overall impression produced by the mark applied for.
In those circumstances, it must be stated that it is the expression ‘ella valley’ taken as a whole — and not, as considered by the Board of Appeal, the component ‘ella’ alone — which constitutes the dominant element of the mark applied for. It follows that the overall assessment seeking to establish the existence of a link between the marks at issue must, in the present case, as far as concerns the visual, aural and conceptual similarity of the marks at issue, be made between the earlier marks and the mark applied for of which the dominant element is constituted by the expression ‘ella valley’, without the other elements being insignificant.
In such a context, it must be stated that, visually, the signs at issue are only slightly similar. Although it is true that the first three letters of the mark applied for are identical to those of the earlier marks, that fact is not sufficient to offset the numerous differences existing between the signs at issue. Thus, while the earlier marks are composed of a four-letter word, the dominant element of the mark applied for is composed of two words presented on two lines and totalling ten letters. Furthermore, it should also be observed that the first word of ‘ella valley’ is not identical to the word ‘elle’ of the earlier marks and it is distinguished by the last letter. The verbal component ‘vineyards’ and the figurative components of the mark applied for add elements which distinguish between the signs at issue visually, although they are weak.
In that connection, although it is true, as the Board of Appeal stated and as OHIM and the intervener observed, that the font used in the earlier marks and the mark applied for are identical, it must be stated however that that font is quite common and frequently used. Consequently, the font used for the verbal elements of the conflicting signs cannot constitute, in this case, an element capable of offsetting the numerous differences between the marks at issue.
Aurally, the marks at issue also present differences which outweigh the elements of similarity. It should be held that the difference in length between the earlier marks, constituted by a four-letter word, and the mark applied for, constituted by a dominant verbal element composed of two words totalling ten letters and by a nine-letter word, produce a different sound and rhythm which cannot be offset by the fact that the first three letters of the verbal element constituting the earlier marks is identical to the first word of the dominant element of the mark applied for.
Conceptually, the signs at issue do not present a sufficient degree of similarity for the relevant public to establish a link between the marks at issue. As is clear from the findings set out in paragraphs 43 to 47 above, the mark applied for is likely to evoke, on the part of the relevant public, a place name related to the origin of the wine marketed under that mark, whereas that is not the case as regards the earlier marks. Thus, even if it is conceivable, taking account of the reputation enjoyed by the earlier marks, that the word ‘elle’ may evoke
Elle
magazine for part of the public of the European Union, that does not detract from the finding that the signs at issue are conceptually dissimilar.
As far as concerns the similarity of the conflicting signs is concerned, it must also be observed that, as regards the decisions of the national courts produced by the intervener in support of its argument on the similarity existing between ‘elle’ and ‘ella’, it is clear from settled case-law that, although, in the interpretation of European Union law, neither of the parties nor the Court can be prevented from drawing on elements taken from national case-law (see, judgment of 13 July 2011 in Case T-499/09
Evonik Industries
v
OHIM (Representation of a purple rectangle with a rounded right side)
, not published in the ECR, paragraph 42 and the case-law cited), it does not however bind the courts of the European Union, since the Community trade mark system is an autonomous system whose application is independent of all national systems (Case
T-32/00
Messe München
v
OHIM (electronica)
[2000] ECR II-3829
, paragraph 47, and judgment of 12 July 2006 in Case T-97/05
Rossi
v
OHIM — Marcorossi (MARCOROSSI)
, not published in the ECR, paragraph 53).
It is clear from all of those considerations that, contrary to the Board of Appeal’s conclusion, the signs at issue in the present case are not sufficiently similar for the relevant public to associate the mark applied for with the earlier marks.
Thus, the global assessment aiming to establish the existence on the part of the relevant public of a link between the conflicting marks as required by the case-law, mentioned in paragraphs 19 to 21 above, must lead to the conclusion that, in the light of the differences existing between the signs at issue and notwithstanding the reputation of the earlier marks, there is no likelihood in the instant case that that public might establish such a link.
Therefore, it must be held that, in the present case, one of the conditions for the application of Article 8(5) of Regulation No 207/2009, that is to say the similarity of the conflicting marks having the effect that the relevant public establishes a link between those marks, is not fulfilled.
In those circumstances, since the conditions for the application of Article 8(5) of Regulation No 207/2009 are cumulative, and the absence of one of them being sufficient to render that provision inapplicable, the application must be upheld and the contested decision annulled, without there being any need to examine the condition relating to the existence of a likelihood that the unjustified use of the mark.
Costs
Under Article 87(2) 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 OHIM has been unsuccessful, it must be ordered to pay the costs, as applied for by the applicant. Since the intervener has been unsuccessful, it must bear its own costs.

On those grounds,
THE GENERAL COURT (First Chamber)
hereby:

1.
Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 11 November 2009 (Case R 1293/2008-1);

2.
Orders OHIM to bear its own costs and to pay the costs incurred by Ella Valley Vineyards (Adulam) Ltd;

3.
Orders Hachette Filipacchi Presse (HFP) to bear its own costs.

Azizi
Cremona
Frimodt Nielsen
Delivered in open court in Luxembourg on 9 March 2012.
[Signatures]
(
*1
)	Language of the case: French.