Judgment — ECLI:EU:T:2018:352
Date: 2018-06-19
Language of the case: English
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

summary form, coherently and intelligibly in the application itself. The application therefore satisfies the minimum requirements of Article 76(d) of the Rules of Procedure of the General Court. 18 In the second place, it should be recalled that it follows from Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001) that the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO. Thus, facts not submitted by the parties before the adjudicating bodies of EUIPO may not be submitted at the stage of the action before the General Court. Nor can the latter re-evaluate the factual circumstances in the light of evidence adduced for the first time before it, since the legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see judgment of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 47 and the case-law cited). 19 However, an applicant is entitled to call into question the assessment, by the adjudicating bodies of EUIPO, of the facts and evidence before them (see, to that effect, judgment of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 47). 20 Thus, nothing precludes, as in the present case, an applicant asking the Court, in essence, to review the legality of a decision of a Board of Appeal under Article 8(1)(b) of Regulation No 207/2009 on the basis of the same arguments as those that it advanced before the Board of Appeal. 21 It follows from the foregoing that the plea of inadmissibility raised by the intervener must be rejected. Substance 22 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. 23 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 is not to 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now 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. 24 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 the 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). 25 As a preliminary point, it should be noted that the assessments of the Board of Appeal, not disputed by the applicant and relating to the relevant territory, the relevant public and the level of attention of that public, were free from any error (see paragraph 11 above). 26 In the application, the applicant disputes certain assessments made by the Board of Appeal concerning, first, the assessment of the similarity of the goods and services at issue and, secondly, the comparison of the signs at issue. The applicant also disputes the finding of the Board of Appeal that there is no likelihood of confusion between the mark applied for and the earlier mark. 27 In the present case, it is appropriate to start by examining the applicant’s criticisms of the findings made by the Board of Appeal in respect of the comparison of the signs at issue. 28 In that regard, it should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of 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). The distinctive and dominant elements of the mark applied for 29 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). 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 (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). 30 In the present case, in the first place, the applicant explains that the figurative element of the mark applied for has only limited distinctiveness, as stated in the contested decision, and is not the main aspect that must be taken into account for goods which are ordered orally. 31 In that regard, it is true that in the contested decision the Board of Appeal found that the figurative element of the mark applied for did not have a highly imaginative content in view of the goods and services in question. 32 However, the Board of Appeal was correct in finding that that figurative element nonetheless showed some distinctiveness, reinforced by its central position and its appreciable size. 33 First, it should be noted that the figurative element of the mark applied for depicts a kind of coat of arms, comprised of various colours and which includes the image of a crown. Thus, that figurative element will be perceived by the relevant public as a heraldic symbol evoking values such as tradition, nobility and respectability. 34 Secondly, it should be noted that that figurative element is not insignificant. It is located in the centre of the mark applied for. Moreover, because of its size, that element occupies a significant position in that mark and is not completely overshadowed by the word element ‘eiskeller’. 35 In the second place, the applicant submits that the term ‘eiskeller’ is not an indivisible unit and that the letter sequence ‘k’ ‘e’ ‘l’ ‘l’ ‘e’ ‘r’ plays an independent distinctive role in the mark applied for. According to the applicant, part of the relevant public, namely business consumers with specific professional knowledge or expertise in the food and catering sectors, will separate those letters from the group of letters ‘eis’. Consequently, again according to the applicant, that part of the relevant public will recognise the initial letters ‘eis’, first of all, as a generic element meaning ‘ice’ and thereafter as indicating the ‘Eis’ brewing process invented by Bock, which involves freezing and unfreezing the beer. The applicant infers from this that a business consumer will take the view that the group of letters ‘eis’ refers to a characteristic of the product ‘keller’. 36 In that regard, it should be noted that the applicant has not established that the initial group of letters ‘eis’ is an element which can be distinguished from the sequence of letters ‘k’, ‘e’, ‘l’, ‘l’, ‘e’, ‘r’. 37 First of all, the mark applied for does not contain any colour, typographical or other element to suggest that the word element ‘eiskeller’ could be broken down into two different word elements. 38 Next, it has not been established that the relevant public, including business consumers with specific professional knowledge and expertise in the food and catering sectors, understands German and will therefore be capable of perceiving that the group of letters ‘eis’ means ‘ice’ in German. Nor has it been shown that that relevant public will understand that the group of letters ‘eis’ constitutes a generic element meaning ‘ice’ in English. That is all the more so since, in Spanish, the group of letters ‘eis’ is pronounced differently from the word ‘ice’. In addition, and as noted by the Board of Appeal, given that the German word ‘eis’ is ‘hielo’ or ‘helado’ in Spanish, which is a long way from the German word, that word will not even be taken as referring to ice by the relevant public. 39 Furthermore, the thought process, suggested by the applicant, whereby the relevant Spanish-speaking public will translate the group of letters ‘eis’ from German into English in order to infer that that group of letters describes a characteristic of the goods ‘keller’, is complex and indirect. It therefore cannot be concluded on that basis that the relevant public, including business consumers with an average level of attention, will immediately perceive, without further reflection, that the word element ‘eiskeller’ consists of two parts, which each have a meaning, which may be split up and of which one part –– the group of letters ‘eis’ –– is devoid of distinctive character. 40 Finally, as regards the argument that beer experts will know the Eis type of beer and the Eis brewing process invented by Bock, which involves freezing and thawing the beer, it must be held that that argument is based on facts and evidence which were not put forward before the Board of Appeal and must therefore be rejected as inadmissible in accordance with the case-law cited in paragraph 18 above. 41 Therefore, the applicant’s arguments that it is possible to break down the word element ‘eiskeller’ because of the weak distinctive character of the group of letters ‘eis’ and the independent distinctive character of the sequence of letters ‘k’, ‘e’, ‘l’, ‘l’, ‘e’, ‘r’ must be rejected. 42 In those circumstances, the Board of Appeal was correct to take into account the overall impression conveyed to the relevant public by the mark applied for and to take account of all the elements of which that mark is composed. Visual comparison 43 In the contested decision, the Board of Appeal noted that the signs at issue had certain similarities linked to the fact that all the letters making up the earlier mark are present in the same order in the word element of the mark applied for. 44 However, the Board of Appeal also held that the signs at issue had a number of differences. First, the word element of the mark applied for differs from the earlier mark on account of the presence of additional letters, namely the initial group of letters ‘eis’ and the central letter ‘l’. Secondly, unlike the earlier mark, the mark applied for includes a figurative element with some distinctive character, which occupies a central position and is of a significant size. Thirdly, the mark applied for is characterised by the colour stylisation of the word element on a light background. 45 In the application, the applicant does not dispute the Board of Appeal’s finding that the signs are visually dissimilar overall. 46 For the reasons set out in paragraphs 43 and 44 above, it must be held that the Board of Appeal did not make an error when, in the contested decision, it found that, despite some similarities, the signs at issue were visually dissimilar overall. Phonetic comparison 47 The applicant maintains that there is a high degree of phonetic similarity between the signs at issue. In that regard, it maintains that the average Spanish consumer of beverages will identify the terms ‘keler’ and ‘eiskeller’ as foreign words because of the presence of a letter which is not familiar to that consumer, namely, the letter ‘k’. Moreover, according to the applicant, the Spanish consumer will pronounce the double letter ‘ll’ as an ‘l’ because that consumer will see the mark applied for as a foreign mark. Furthermore, that consumer will be familiar with numerous well-known foreign marks, places or people whose names contain the double letter ‘ll’ pronounced as an ‘l’. Therefore, phonetically, the word sign KELER is completely incorporated in the mark applied for and will be pronounced by the relevant Spanish consumer in exactly the same way as the element ‘keller’, which is part of the mark applied for. 48 EUIPO and the intervener dispute the applicant’s arguments. 49 In the present case, it is admittedly true that all the letters making up the earlier mark are present in the word element of the mark applied for in the same order. 50 However, first, it should be observed that the word element ‘eiskeller’ consists of three syllables, namely, ‘eis’, ‘ke’ and ‘ller”. By comparison, the word ‘keler’ is comprised of only two syllables, namely ‘ke’ and ‘ler’. 51 Secondly, as was correctly stated by the Board of Appeal, the pronunciation of the signs at issue differs in the sound of the group of letters ‘eis’ in the word element of the mark applied for, which has no equivalent in the earlier mark and which is positioned at the beginning of that word element. 52 Thirdly, it must be pointed out that the mark applied for also differs phonetically from the earlier mark on account of the presence of the additional letter ‘l’ in the centre of the word element ‘eiskeller’. 53 Indeed, the double ‘ll’ has long been considered to be a separate letter in the Spanish alphabet. Consequently, the vast majority of the Spanish public, including business consumers, will have learnt to perceive that letter as a completely different letter from the letter ‘l’. Furthermore, it is important to note that, in Spanish, the double ‘ll’ is pronounced ‘yeu’, unlike the letter ‘l’ which is pronounced ‘l’. 54 That finding relating to the pronunciation of the double ‘ll’ is not called into question by the applicant’s assertion that the Spanish consumer will pronounce the double ‘ll’ as an ‘l’ because that consumer will recognise that the mark applied for is a foreign mark. 55 First, it should be pointed out that, contrary to what is suggested by EUIPO, that assertion had already been made before the Board of Appeal. 56 Next, it should be noted that, before the Court, the applicant adds that the Spanish consumer is familiar with numerous famous foreign marks, places or people whose names include the double letter ‘ll’ pronounced as an ‘l’. In that regard, the applicant refers to several famous marks, places and people. 57 Those arguments in the application are based on new evidence which was not put forward before the Board of Appeal and which must therefore be declared inadmissible in accordance with the case-law cited in paragraph 18 above. Furthermore, inasmuch as the applicant does not maintain that the term ‘eiskeller’ is a famous or well-known term, its assertion does not in any event support the conclusion that ‘eiskeller’ could be pronounced in the same way as the names of well-known places or persons which contain the double ‘ll’. 58 Finally, it should be noted that the assertion that the Spanish consumer will pronounce the double ‘ll’ as ‘l’, on the ground that that consumer will recognise that the mark applied for is a foreign mark, is not supported by any evidence. In that regard, it should be added that the decision of EUIPO, namely, the decision of 6 September 2013 in Case R 1658/2002-5, relied on by the applicant, is irrelevant as that decision did not concern the Spanish language. 59 Thus, the Board of Appeal was right to find in the contested decision that the pronunciation of the signs at issue coincides only in relation to the groups of letters ‘ke’ and ‘er’. Conceptual comparison 60 In the contested decision, first, the Board of Appeal found that the relevant public would perceive the figurative element representing a coat of arms in the mark applied for as a heraldic symbol evoking values such as tradition, nobility and respectability. On the other hand, the Board of Appeal found that the earlier mark was devoid of any such meaning. Secondly, the Board of Appeal took the view that the word elements of the signs at issue had no meaning for the Spanish-speaking public. It concluded from this that the Opposition Division had rightly taken the view that, since one of the signs, namely EISKELLER, had no meaning, the signs were not conceptually similar. 61 In the first place, it should be noted that the findings of the Board of Appeal relating to the relevant public’s perception of the figurative element of the mark applied for are not contested by the applicant and are, in any event, free from error. 62 In the second place, as regards the word element ‘eiskeller’ in the mark applied for, the applicant submits that a business consumer will assume that the prefix ‘eis’ refers to a characteristic of the product ‘keller’ and will probably conclude that EISKELLER is a mark which is derived from the KELER mark. 63 However, in so far as the applicant’s argument is based on the premiss that the word element ‘eiskeller’ in the mark applied for may be split up into two word elements on the basis that the group of letters ‘eis’ is devoid of any distinctive character, it must be rejected for the reasons set out in paragraphs 35 to 41 above. 64 Therefore, the Board of Appeal did not err in finding in the contested decision that the signs at issue were not conceptually similar because the earlier trade mark had no meaning. Conclusion on the comparison of the signs 65 It follows from the foregoing that the Board of Appeal correctly concluded that the signs at issue were visually dissimilar overall, that they were not conceptually similar and that they coincided phonetically only in the groups of letters ‘ke’ and ‘er’, present identically in the two signs. 66 The applicant claims that the Board of Appeal placed too much emphasis on the visual aspect. In the applicant’s submission, it is necessary to take into account the particular importance of the phonetic similarities between the signs when the circumstances in which those goods are ordered orally are not ideal for distinguishing minor pronunciation differences. Thus, account must be taken of the fact that, in the case of beverages, the ordering of the goods takes place in noisy public places, increasing the likelihood of confusion between the signs. 67 However, it should be recalled that the phonetic differences found between the signs at issue concern the different number of syllables and the pronunciation of additional letters in the mark applied for, which are found at the beginning and in the middle of the word element (see paragraphs 50 and 53 above). 68 Moreover, consumers will generally pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and phonetically, than the final part (see, to that effect, judgments of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51, and 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 62 and the case-law cited). 69 Therefore, in view of their nature and extent, the phonetic differences between the signs at issue are sufficient to rule out the existence of any similarity for the relevant public, despite the noisy environment in which the ordering of the products in question may take place. 70 Therefore, the Board of Appeal did not err in finding that despite certain visual and phonetic similarities the signs at issue will, on the basis of an overall impression, be perceived differently by the relevant public, namely the general public and business consumers, whose level of attention ranges from low to average. 71 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 (judgments of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42, and of 16 March 2017, Sociedad agraria de transformación no 9982 Montecitrus v EUIPO — Spanish Oranges (MOUNTAIN CITRUS SPAIN), T‑495/15, not published, EU:T:2017:173, paragraph 22). 72 Thus, given that the mark applied for and the earlier mark are different overall, one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not fulfilled. It must therefore be held, without there being any need to rule on the degree of similarity of the goods and services concerned, that the Board of Appeal correctly concluded that there was no likelihood of confusion between the mark applied for and the earlier mark. 73 Furthermore, it is important to point out that the earlier Spanish word mark KELER 18, on which the opposition to the registration of the mark applied for was also based, differs from the earlier mark in the additional presence of the number 18. The additional presence of that number contributes to increased differences between the signs at issue. Thus, the contested decision does not contain any error when it is concluded in that decision that there is no likelihood of confusion as regards the earlier mark KELER 18. 74 In the light of all the foregoing considerations, the single plea in law put forward by the applicant must be rejected and the action dismissed in its entirety. Costs 75 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 the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders Sociedad Anónima Damm to pay the costs. Tomljenović Bieliūnas Marcoulli Delivered in open court in Luxembourg on 19 June 2018. E. Coulon I. Pelikánová Registrar President * Language of the case: English.