Provisional text

JUDGMENT OF THE GENERAL COURT (Second Chamber)

25 January 2017 ([\*](#Footnote*))

(EU trade mark — Opposition proceedings — Application for EU word mark LITU — Relative ground for refusal — No likelihood of confusion — No similarity between the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‐187/16,

**Anton Riemerschmid Weinbrennerei und Likörfabrik GmbH & Co. KG,** established in Erding (Germany), represented by P. Koch Moreno, lawyer,

applicant,

v

**European Union Intellectual Property Office (EUIPO),** represented by J. Ivanauskas, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

**Viña y Bodega Botalcura SA,** established in Las Condes (Chile),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 9 February 2016 (Case R 719/2015-2), relating to opposition proceedings between Anton Riemerschmid Weinbrennerei und Likörfabrik and Viña y Bodega Botalcura,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin (Rapporteur) and M. J. Costeira, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 April 2016,

having regard to the response lodged at the Court Registry on 17 June 2016,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

**Judgment**

**Background to the dispute**

1        On 12 March 2014, Viña y Bodega Botalcura SA 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).

2        Registration as a mark was sought for the word mark LITU.

3        The goods in respect of which registration was sought are 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, and correspond to the following description: ‘Wines from Chile’.

4        The trade mark application was published in *Community Trade Marks Bulletin* No 71/2014 of 15 April 2014.

5        On 12 June 2014, the applicant, Anton Riemerschmid Weinbrennerei und Likörfabrik GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the earlier EU word mark PITU, filed on 4 November 1996 under number 000 405 464 and registered on 19 August 1998, covering, inter alia, goods in Classes 30, 32 and 33 corresponding, for each of those classes, to the following description:

–        Class 30: ‘Coffee, tea, cocoa’;

–        Class 32: ‘Beer, non-alcoholic beverages, fruit juices, mineral water’;

–        Class 33: ‘Alcoholic beverages (with the exception of beer)’.

7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 207/2009.

8        On 2 March 2015, the Opposition Division rejected the opposition in its entirety and ordered the applicant to bear the costs of the proceedings.

9        On 13 April 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10      By decision of 9 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it found that there was no likelihood of confusion between the two signs at issue and that the applicant had failed to prove that the earlier mark had enjoyed the reputation it claimed within the meaning of Article 8(5) of Regulation No 207/2009.

11      With regard to the relevant public and its level of attention, the Board of Appeal found that the relevant territory in respect of which the likelihood of confusion had to be assessed was the European Union. The Board of Appeal also upheld the findings of the Opposition Division that the goods were directed at the public at large with a ‘normal’ level of attention.

12      So far as concerns the goods in question, the Board of Appeal found that they were identical.

13      As regards the comparison of the signs, the Board of Appeal took the view that there was only a certain degree of visual and phonetic similarity and that they were not conceptually similar.

14      Following the comparison of the signs at issue, the Board of Appeal found that there was no likelihood of confusion, in particular on the ground that they did not share the same first letter and that the relevant public would pay more attention to the beginning of the marks. As regards short marks, the relevant public would more easily note the differences between them. With regard to the possible ways of purchasing the goods in question, the Board of Appeal observed, first, that, in the present case, the visual similarity did not play a more significant role than the role played by the phonetic similarity and vice versa. Second, the Board of Appeal recalled that alcoholic beverages are most commonly purchased in supermarkets or establishments where goods bearing different trade marks are arranged on shelves. Consequently, the visual difference between the signs at issue was capable of being easily noticed.

15      Finally, the Board of Appeal rejected the applicant’s arguments that the earlier mark had an enhanced distinctiveness.

**Forms of order sought**

16      The applicant claims that the Court should:

–        annul the contested decision;

–        refuse the application for registration of the mark applied for in respect of all the goods designated by it;

–        order EUIPO to pay the costs.

17      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

**Law**

18      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

19      The applicant submits that the Board of Appeal committed errors of assessment when comparing the signs. According to the applicant, the signs at issue display a high degree of visual and phonetic similarity and their conceptual comparison will not change the assessment of the likelihood of confusion. In light of those considerations, the applicant takes the view that the Board of Appeal was wrong in concluding that there was no likelihood of confusion between the marks at issue.

20      EUIPO disputes the applicant’s arguments.

21      Article 8(1)(b) of Regulation No 207/2009 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.

22      According to settled case-law, the risk that the public might 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 concerned 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).

23      As a preliminary point, it is necessary to uphold, in that they appear well founded in light of the information in the case file, the Board of Appeal’s findings in relation to the relevant public, its level of attention and the comparison of the goods in question (see paragraphs 11 and 12 above), findings which, moreover, have not been contested by the parties.

24      As regards the comparison of the signs, it should be pointed out that the mark applied for is composed of a series of four letters, namely the letters ‘l’, ‘i’, ‘t’ and ‘u’, and that it cannot be broken down into several elements. The same applies to the earlier mark, which is composed of the series of letters ‘p’, ‘i’, ‘t’ and ‘u’ and which also cannot be broken down into several elements.

25      Visually, the marks at issue are similar since they have in common the letters ‘i’, ‘t’ and ‘u’. However, that similarity does not offset the difference between the two marks resulting from their different initial letters. Visually, the letter ‘p’, regardless of whether it is written in upper or lower case, differs greatly from the letter ‘l’ written in upper or lower case. In addition, the two marks are composed only of four letters, which further highlights the difference between the signs at issue. It must therefore be considered that the Board of Appeal was right to find that the marks at issue were visually similar only to a certain degree.

26      As regards the decision of the United Kingdom Intellectual Property Office, relied on by the applicant, in which a likelihood of confusion is said to have been found between the marks PITU and RITU, it must be recalled that, as indicated in paragraph 18 of the decision in question, the initial letters ‘p’ and ‘r’ of those marks were considered to be visually similar. However, that decision cannot be directly relevant to the present case, given that the initial letters of the marks at issue are different.

27      Moreover, it must be recalled that, according to settled case-law, EUIPO is not bound by the decisions made by the national authorities in supposedly similar cases, which, in any event, are only factors which may merely be taken into consideration for the purposes of the registration of an EU trade mark and are not decisive (judgments of 16 February 2000, *Procter & Gamble* v *OHIM (Soap bar shape)*, T‐122/99, EU:T:2000:39, paragraph 61, and of 19 September 2001, *Henkel* v *OHIM (Round tablet, red and white)*, T‐337/99, EU:T:2001:221, paragraph 58).

28      So far as concerns the phonetic aspect, it is necessary to uphold the finding made by the Board of Appeal that the letters placed at the beginning of each of the signs, namely the letter ‘p’ and the letter ‘l’, are markedly different letters. Those letters therefore allow the signs at issue to be distinguished. It follows that the marks at issue must be considered as being phonetically similar only to a certain degree.

29      Conceptually, it must be held, as the Board of Appeal found in paragraph 28 of the contested decision, that, for the majority of the relevant public, the marks at issue do not have any meaning, except for the Lithuanian public, for whom the mark applied for could be associated with the word ‘litas’, a denomination of the old national currency of Lithuania.

30      However, it is apparent from the case-law that, when a term does not have any meaning for the relevant public, it is not possible to make a conceptual comparison of the signs (judgment of 26 May 2016, *Sfera Joven* v *EUIPO — Las banderas del Mediterráneo (NOOSFERA)*, T‐99/15, not published, EU:T:2016:321, paragraph 49; see also, to that effect, judgment of 16 September 2013, *Gitana* v *OHIM — Teddy (GITANA)*, T‐569/11, not published, EU:T:2013:462, paragraph 67). Given that this is the situation in the present case, it is necessary to take into account the impossibility of comparing the signs conceptually in the assessment of the likelihood of confusion.

31      With regard to the likelihood of confusion, the Board of Appeal found that there was no likelihood of confusion, inter alia, in light of the considerations set out in paragraphs 14 and 15 above.

32      It must be held, as the Board of Appeal found, that, in the present case, the initial part of the word marks at issue helps to differentiate them in such a way that their similarities are insufficient to offset that difference. The fact that the letters ‘l’ and ‘p’ are at the beginning of the marks at issue and that they are both visually and phonetically very different, as well as the fact that the marks at issue are short, thus allowing the relevant public to more easily notice the differences between the two marks, are important factors to take into consideration.

33      In that regard, it should be recalled that, as the Board of Appeal found in the contested decision, the beginning of word marks may be more likely to catch the consumer’s attention than the subsequent components (judgments of 17 March 2004, *El Corte Inglés* v *OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR)*, T‐183/02 and T‐184/02, EU:T:2004:79, paragraph 81, and of 13 May 2015, *Harper Hygienics* v *OHIM — Clinique Laboratories (CLEANIC natural beauty)*, T‐363/12, not published, EU:T:2015:278, paragraph 69). That is even more so where the mark is short, as is the case here.

34      Consequently, even if the goods in question are considered to be identical and even if it is not possible to carry out a conceptual comparison of the signs at issue, it should be held that, following a global assessment, there is no likelihood of confusion between the marks at issue for the relevant public with an average level of attention.

35      Finally, that finding is not called into question by the applicant’s argument that particular importance should be attached to the phonetic similarity of the marks at issue, since the goods in question are most often ordered in noisy locations, such as bars and restaurants. EUIPO correctly states, as did the Board of Appeal, that alcoholic beverages, including wine, are normally sold in self-service shops, where the consumers choose the goods themselves and must therefore rely primarily on the image of the mark placed on that product. EUIPO is also correct to contend that, even in bars and restaurants, consumers choose their wine from a wine list before placing their order verbally.

36      In light of the above, it is necessary to reject the applicant’s single plea in law and, consequently, to dismiss the action in its entirety, without it being necessary to give a ruling on the admissibility of the applicant’s second head of claim, by which the applicant requests the Court to reject the application for registration of the mark applied for.

**Costs**

37      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.

38      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      **Dismisses the action;**

2.      Orders Anton Riemerschmid Weinbrennerei und Likörfabrik GmbH & Co. **KG to bear its own costs and pay the costs incurred by the European Union Intellectual Property Office (EUIPO).**

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| Prek | Schalin | Costeira |

Delivered in open court in Luxembourg on 25 January 2017.

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| E. Coulon | | M. Prek |

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| E. Coulon | | President |

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[\*](#Footref*) Language of the case: English.