JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
12 November 2015 (*)
(Community trade mark — Invalidity proceedings — Community figurative mark WISENT — Earlier national three-dimensional mark ŹUBRÓWKA — Relative grounds for refusal — Similarity of the marks — Articles 53(1)(a) and 8(1)(b) and 8(5) of Regulation (EC) No 207/2009)
In Case T‑449/13,
CEDC International sp. z o.o., established in Oborniki Wielkopolskie (Poland), represented by M. Siciarek, J. Mrozowski and G. Rząsa, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Walicka, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Fabryka Wódek Polmos Łańcut SA, established in Łańcut (Poland), represented by A. Gorzkiewicz, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 10 June 2013 (Case R 33/2012-4), relating to invalidity proceedings between Przedsiębiorstwo Polmos Białystok and Fabryka Wodek Polmos Łańcut SA,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,
Registrar: J. Plingers, Administrator,
having regard to the application lodged at the Court Registry on 23 August 2013,
having regard to the response of OHIM lodged at the Court Registry on 20 December 2013,
having regard to the response of the intervener lodged at the Court Registry on 10 December 2013,
having regard to the reply lodged at the Court Registry on 7 April 2014,
having regard to the rejoinder of the intervener lodged at the Court Registry on 25 July 2014,
having regard to the order of 3 March 2015 joining Cases T‑449/13 and T‑450/13 for the purposes of the oral procedure,
further to the hearing on 25 March 2015,
gives the following
Judgment
Background to the dispute
1        On 16 June 2006, the intervener, Fabryka Wódek Polmos Łańcut SA, 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)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Classes 32 and 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, for each of those classes, to the following description:
–        Class 32: ‘Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices’;
–        Class 33: ‘Alcoholic beverages (except beers)’.
4        The trade mark application was published in Community Trade Marks Bulletin No 35/2008 of 1 September 2008 and the sign in question was registered as a Community trade mark on 26 August 2008 under number 5142039 for all of the goods listed in paragraph 3 above.
5        On 6 April 2010, Przedsiębiorstwo Polmos Białystok, which was replaced by the applicant, CEDC International sp. z o.o., following a merger by acquisition on 27 July 2011, filed an application for a declaration of invalidity under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) and 8(5) of that regulation.
6        That application was based on the following earlier marks:
–        Polish word mark No 86410 ŻUBRÓWKA, registered for ‘alcoholic beverages’ in Class 33;
–        United Kingdom figurative mark No 2220941, registered for ‘vodka, brandies and liquors’ in Class 33, reproduced below:
–        United Kingdom figurative mark No 2293047, registered for ‘alcoholic beverages, vodka’ in Class 33, reproduced below:
–        Polish figurative marks Nos 80990, 80991, 46050, 125911 and 208988, registered for ‘alcoholic beverages’ in Class 33, reproduced below:
–        Polish figurative mark No 62081, registered for ‘vodkas’ in Class 33, reproduced below:
–        French figurative mark No 3242406, registered for ‘alcoholic beverages (except beers), namely vodka’ in Class 33, reproduced below:
–        Irish figurative mark No 228047, registered for ‘alcoholic beverages, namely vodka’ in Class 33, reproduced below:
–        Polish three-dimensional marks Nos 189866 and 208090, registered for ‘alcoholic beverages’ in Class 33, reproduced below:
–        French three-dimensional mark No 95588457, registered for ‘alcoholic beverages’ in Class 33, reproduced below:
–        French three-dimensional mark No 98746752, registered for ‘vodka’, reproduced below:
–        Spanish three-dimensional mark No 2067705, registered for ‘alcoholic beverages (except beers)’, reproduced below:
–        Italian figurative mark No 792061, registered for ‘alcoholic beverages’, reproduced below:
7        Reputation was claimed for all of the earlier marks, with the exception of the Spanish three-dimensional mark and the Italian figurative mark.
8        By decision of 2 November 2011, the Cancellation Division declared the contested mark invalid on the ground that there was a likelihood of confusion between that mark and the earlier Polish mark No 189866. It found, first, that the goods in question were similar or identical, secondly, that, overall, the contested mark and that earlier Polish mark were, at the very least, similar to a low degree and, finally, that that earlier mark enjoyed very high consumer awareness in Poland. With regard to the similarity of the marks, it considered that the marks were visually similar to a low degree and were conceptually similar as a result of the representation of a bison and the vertical display of a blade of grass inside the bottles.
9        On 27 December 2011, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
10      By decision of 10 June 2013 (‘the contested decision’), the Fourth Board of Appeal upheld the appeal and annulled the decision of the Cancellation Division. In its examination of whether there was a likelihood of confusion between the marks at issue, in the first place, the Board of Appeal found, with regard to the relevant public, that, since the earlier marks were registered in Poland, France, Spain, Italy, Ireland and the United Kingdom, the relevant territory comprised those Member States and that the relevant public was the public at large in those States. In the second place, the Board of Appeal observed that a thin straight, slightly inclining or diagonal line in the marks compared by the Cancellation Division could not be perceived as a blade of grass. In the third place, with regard to the contested mark, it found that the verbal element ‘wisent’, which in English, German and Dutch denotes the European bison, was the most distinctive and dominant element of that mark and that its figurative element, consisting of a representation of a bovine animal, was less dominant and distinctive than the verbal element. In addition, it stated that the other elements of that mark were either decorative or less striking and that they were therefore secondary. In the fourth place, the Board of Appeal compared the contested mark with the earlier Polish mark, No 189866, and found that they were overall dissimilar. Thus, the Board of Appeal, first, described the earlier Polish mark as a complex mark, consisting in particular of a non-distinctive representation of a bottle, traversed by a thin straight green line, slightly inclining to the left, and depicting a label comprising a circle with a vague graphic image inside in the colours brown and green, and surmounted by the verbal element ‘żubrówka’, represented in black and yellow. Secondly, it found that, visually, the marks concerned had in common a thin line, but that they differed with regard to the other, more distinctive, verbal and figurative elements. Thirdly, the Board of Appeal found that, phonetically, the marks at issue were not similar. Fourthly, it found that, conceptually, despite the representation of a bovine animal in the contested mark, the verbal element ‘wisent’ of that mark would not be associated by Polish consumers with the idea of a bison, evoked by the element ‘żubrówka’ which forms part of the earlier Polish mark, in so far as it is perceived by those consumers. In the fifth place, the Board of Appeal examined the other earlier marks and concluded that, overall, they differed from the contested mark, in particular due to the differences, first, between the verbal elements of those marks, which would be perceived as the most distinctive and dominant elements, and secondly, between the representations of the bovine animals, both in the contested mark and in some of the earlier marks. Since no similarity between the marks at issue was found, the Board of Appeal took the view that, despite the fact that the goods in question were identical or similar, and despite the claim of enhanced distinctiveness and renown in respect of the earlier marks, one of the conditions needed in order to assess whether there was a likelihood of confusion and to benefit from the protection of reputation was absent.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM and the intervener to pay the costs.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by OHIM.
13      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility
Admissibility of the action
14      OHIM submits that the action is partially inadmissible, in that it lacks clarity and precision. According to OHIM, the applicant has not specified which findings of the contested decision constituted an infringement of the legal provisions, or which parts of that decision it sought to criticise.
15      The applicant submits that the action is sufficiently clear and precise, in that the application for annulment is based on 17 earlier marks which are visually either identical or very similar and which refer to the same concepts, that is to say, the concept of the ‘bison’ resulting from the term ‘żubrówka’, and the representation of that animal, and the concept of the blade of grass. Furthermore, it states that the complaints contained in the application refer to all of the conceptual and visual comparisons made by the Board of Appeal and to its methodology, which, according to the applicant, are wrong.
16      Under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, an application must include a brief statement of the grounds relied on. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (judgment of 27 September 2005 in Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, ECR, EU:T:2005:340, paragraph 27, and judgment of 3 December 2014 in Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, EU:T:2014:1020, paragraphs 17 and 18).
17      The Court is thus obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of fact and law on which the head of claim is based are not indicated coherently and intelligibly in the application itself (judgment of 18 July 2006 in Rossi v OHIM, C‑214/05 P, ECR, EU:C:2006:494, paragraph 37).
18      In order to guarantee legal certainty and the sound administration of justice it is therefore necessary, in order for an action to be admissible, that the essential matters of fact and law relied on are stated, at least in summary form, coherently and intelligibly in the application itself. Similar requirements are called for where a submission is made in support of a plea in law (judgment in M & Co., cited in paragraph 16 above, EU:T:2014:1020, paragraph 19; see also, to that effect, judgment of 19 November 2008 in Rautaruukki v OHIM (RAUTARUUKKI), T‑269/06, EU:T:2008:512, paragraphs 34 and 37).
19      In the present case, it is clear from the applicant’s written pleadings that by its arguments it, first, contests all of the Board of Appeal’s comparisons of the marks at issue made in its assessment of whether there was a likelihood of confusion between those marks and, secondly, it criticises the Board of Appeal for the arbitrary nature of its findings relating to the decorative or less striking nature of the element consisting of a blade of grass inserted in a bottle and for not examining certain evidence presented by the applicant for the purpose of demonstrating that that element would be perceived as an indicator of commercial origin.
20      Although it is true that, in its application, the applicant did not separately challenge each of the Board of Appeal’s comparisons, the fact none the less remains that it did globally challenge the Board of Appeal’s comparisons of the marks at issue in a sufficiently coherent and intelligible manner on the basis of common elements of the earlier marks. Similarly, it criticised in a sufficiently coherent and intelligible manner the fact that the Board of Appeal did not take into consideration certain evidence presented to it and the arbitrary nature of the reasoning relating to the element consisting of a blade of grass inserted in a bottle.
21      It follows that, in its application, the applicant contested the Board of Appeal’s comparison of the marks in a manner consistent with the requirements of Article 177(1)(d) of the Rules of Procedure, with the result that OHIM and the intervener were able to prepare their defence and the Court is able to understand the applicant’s criticisms of the contested decision.
22      Accordingly, the action is admissible in its entirety. The plea of inadmissibility raised by OHIM must therefore be rejected.
Admissibility of certain of OHIM’s arguments put forward for the first time before the Court
23      The applicant claims that OHIM’s arguments that the representations of a bison and of a blade of grass inserted in a bottle lack, or have a very low degree of, distinctiveness were advanced for the first time before the Court and conflict with the Board of Appeal’s reasoning that the word element ‘wisent’ of the contested mark is not descriptive. According to the applicant, these arguments cannot therefore be taken into account.
24      Thus, in essence, the applicant raises the inadmissibility of OHIM’s arguments, presented, in its opinion, for the first time before the Court, and which conflict with the content of the contested decision.
25      In reply to a question put by the Court at the hearing, OHIM stated that the arguments presented were not new, but that OHIM had acted on the basis of information provided by the applicant itself during the procedure before the Board of Appeal and that, by its contentions, OHIM had reacted to the applicant’s arguments relating to those figurative elements of the marks at issue, which, in OHIM’s opinion, were not well founded.
26      In that respect, it must be recalled that the purpose of actions before the Court under Article 65 of Regulation No 207/2009 is to secure review of the legality of decisions of the Boards of Appeal of OHIM, and that Article 188 of the Rules of Procedure provides that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. Accordingly, claims made by the parties which change the subject-matter of the dispute must be rejected as inadmissible by virtue of Article 65(2) of Regulation No 207/2009, in conjunction with Article 188 of the Rules of Procedure (judgment of 12 November 2014 in Murnauer Markenvertrieb v OHIM — Healing Herbs (NOTFALL), T‑188/13, EU:T:2014:942, paragraph 29).
27      In its pleadings, OHIM stated, first, that the representation of a bison is widely used for vodka flavoured with bison grass, since that grass is the preferred food of bison, and, secondly, that the thin line which, according to the applicant, represents a blade of grass is not a distinctive element for the product concerned, nor a particularly striking or original one, since the insertion of a blade of grass into a bottle of distilled alcohol is the typical and traditional method of producing that kind of flavoured vodka.
28      First, it must be pointed out that, as is clear from paragraph 6 of the contested decision, the intervener had raised before the Board of Appeal the descriptive nature and, accordingly, the lack of distinctiveness of the figurative elements in the marks at issue, consisting of a representation of a bison and of a blade of grass inside a bottle. According to the intervener, those elements should be ignored in the comparison of the marks at issue due to their association with the goods in question. It must also be pointed out that those arguments and the arguments relating to the descriptive nature of the terms ‘wisent’, ‘bison’ and ‘żubr’ were also raised by the intervener in its pleadings before the Court.
29      Secondly, it must be noted that, as the applicant submits, the Board of Appeal, in its comparison of the marks at issue, expressly discounted the possibility that the verbal element ‘wisent’ in the contested mark might be descriptive of the goods in question. The Board of Appeal found, in paragraph 19 of the contested decision, that ‘the word [‘wisent’] [was] not descriptive for the goods at issue irrespective of whether the vodka in question would be flavoured with a tincture of a specific type of grass which would be eaten by [bison].’
30      Thirdly, it must be pointed out that the Board of Appeal found in the contested decision that the figurative elements of the marks at issue were either less distinctive or secondary. As regards the figurative elements consisting of a representation of a bison, the Board of Appeal found, in paragraphs 24, 25, 36, 42, 47 and 53 of the contested decision, that they were less distinctive than the verbal elements in the marks at issue. As regards the thin line present in the contested mark, it stated in paragraph 20 of the contested decision that ‘[a]ll other elements in the contested mark [were] clearly secondary within the overall impression of the complex mark because they [would] be perceived as decorative (the gold-coloured top and the thin diagonal line) and/or because they [were] less striking (the thin diagonal line)’. As regards the earlier marks featuring a thin line, the Board of Appeal stated in paragraphs 60, 66, 72 and 78 of the contested decision that ‘[t]he mere fact that this component of the earlier complex mark shows some similarity with a component of the contested complex mark which only plays a secondary role within the overall impression created by it cannot render the marks similar.’
31      It follows that, contrary to what the applicant claims, OHIM’s arguments that the representation of a bison lacks, or has a very low degree of, distinctiveness and that a blade of grass inserted in a bottle lacks distinctiveness relate to legal issues which had previously been raised before the Board of Appeal and examined by the latter; they therefore form part of the dispute before the Board of Appeal. Consequently, the applicant cannot reasonably claim that they were advanced for the first time before the Court.
32      Furthermore, the fact that, as the applicant submits, OHIM’s arguments may conflict with the Board of Appeal’s findings, in particular the finding that the element ‘wisent’ of the contested mark is not descriptive, is irrelevant to the examination of the admissibility of the arguments relating to the low degree of descriptiveness of the representation of a bison and of a thin line on the basis that they were allegedly raised out of time.
33      In any event, it must be made clear that, by the arguments referred to in paragraph 27 above, OHIM does not contradict the reasoning of the contested decision, as reproduced in paragraph 30 above, given that the Board of Appeal found, first, that the figurative elements consisting of a representation of a bovine animal would be perceived as less distinctive and less dominant than the verbal elements and, secondly, that the thin line present in both the contested mark and certain earlier marks would be perceived as ‘decorative and/or less striking’.
34      Finally, it must be stated, as OHIM submitted at the hearing, that, by its arguments, OHIM confined itself to responding to the applicant’s claims relating to the reputation and the highly distinctive character of the representation of a bison and to the original, striking and highly distinctive character of the thin line representing a blade of grass, which, as indicated in paragraph 33 above, was made on the basis of arguments which do not alter the reasoning of the contested decision.
35      Consequently, OHIM cannot be validly criticised, as in the case of the judgment of 14 May 2009 in Fiorucci v OHIM — Edwin (ELIO FIORUCCI), T‑165/06, ECR, EU:T:2009:157, paragraph 64, relied on by the applicant, for having presented to the Court arguments seeking to broaden the grounds of the Board of Appeal’s decision.
36      It must therefore be held that those arguments of OHIM are admissible. The plea of inadmissibility raised by the applicant must therefore be rejected.
Substance
37      In essence, the applicant raises two pleas in law in support of its action. The first alleges infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009, and the second alleges infringement of Article 75 and Article 76(1) and (2) of that regulation.
38      By its first plea in law, the applicant, in essence, challenges the findings of the Board of Appeal that none of the earlier marks which it relied on is similar to the contested mark, and criticises the Board of Appeal for not carrying out an overall assessment of the likelihood of confusion and for not taking into account the reputation claimed for most of the earlier marks.
39      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 may 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘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 Community trade mark.
40      According to established 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 that same line of 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 account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
41      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 (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
42      Thus, the existence of a similarity between the marks at issue is a precondition for the application both of Article 8(1)(b) of Regulation No 207/2009 and of Article 8(5) of that regulation (judgment of 24 March 2011 in Ferrero v OHIM, C‑552/09 P, ECR, EU:C:2011:177, paragraph 51).
43      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is to say, the visual, phonetic and conceptual aspects (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and of 10 September 2008 in Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, EU:T:2008:338, paragraph 89).
44      Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception which the consumer of the goods in question in that territory has of the marks at issue. However, it must be borne in mind that, for a Community 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 No 207/2009 exists in part of the Community (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).
45      It is in the light of those principles that the Court must examine the issue relating to the similarity of the marks at issue, which is necessary in order to establish whether a likelihood of confusion exists.
46      In the interests of clarity and simplification, the Court considers it appropriate to focus the analysis on the substance of the applicant’s arguments relating to the earlier Polish three-dimensional mark, No 189866 (‘the earlier mark’), taken into consideration by the Cancellation Division in order to assess whether there was a likelihood of confusion.
47      Neither the applicant nor the other parties to the proceedings before the Court dispute the findings of the Board of Appeal concerning, first, the definition of the relevant public and, secondly, the identity or similarity of the goods in question.
48      First, with regard to the definition of the relevant public, it must be pointed out that the Board of Appeal acted correctly in finding, in paragraph 14 of the contested decision, that, since the earlier mark was registered in Poland, the relevant territory was composed of that Member State and that the relevant public was therefore the general public of that Member State. Secondly, with regard to the similarity of the goods in question, it must be observed that the Board of Appeal was correct, as is clear from paragraph 82 of the contested decision, in finding that those goods, in the case of the earlier mark, from Class 33 and consisting of ‘alcoholic beverages’ and, in the case of the contested mark, from Classes 32 and 33 and consisting of ‘mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices’ and of ‘alcoholic beverages (except beers)’ were similar or identical.
49      With regard to the examination of the similarity of the marks at issue, the applicant essentially criticises the Board of Appeal, in the first place, for having used the wrong methodology when comparing the marks at issue; in the second place, for having wrongly concluded that the marks at issue were not conceptually similar; in the third place, for having wrongly concluded that the marks at issue were not visually similar; and, in the fourth place, for not having correctly assessed the effect of the diagonal line on the comparison of the marks at issue.
50      By contrast, it is common ground that the marks at issue are not phonetically similar. It must be observed that the verbal elements of those marks, that is to say, ‘wisent’, in the case of the contested mark, and ‘żubrówka’, the only visible verbal element in the earlier mark, are pronounced differently. Thus, as the Board of Appeal observed in paragraph 61 of the contested decision, that dissimilarity would exist even if the verbal element ‘żubrówka’ were not visible. Consequently, the marks at issue cannot be considered to be phonetically similar.
51      In the interests of consistency, the Court considers it appropriate, in the first place, to examine the first complaint relating to the methodology used in the comparison of the marks at issue; in the second place, to examine the fourth complaint relating to the assessment of the diagonal line present in the marks at issue; in the third place, to examine the third complaint relating to the visual similarity of the marks at issue; and, in the fourth place, to examine the second complaint relating to the conceptual similarity of the marks at issue.
The methodology used to compare the marks at issue
52      The applicant, in essence, challenges the methodology used by the Board of Appeal in the comparison of the marks at issue.
53      OHIM and the intervener dispute all of the applicant’s arguments.
54      In the first place, the applicant claims that the Board of Appeal wrongly took into account factors which should have been examined as part of the global assessment of the likelihood of confusion, as is the case with the distinctive and dominant character of certain elements.
55      In this regard, it should be observed that, according to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
56      Assessment of the similarity between two marks thus means more than taking into consideration just one component of a composite 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 mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, cited in paragraph 55 above, 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 similarity can be carried out solely on the basis of the dominant element (judgment in OHIM v Shaker, cited in paragraph 55 above, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 43). 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 in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
57      In accordance with well-established case-law, when assessing the dominant character of one or more given components of a composite 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 in MATRATZEN, cited in paragraph 43 above, EU:T:2002:261, paragraph 35, and judgment of 18 June 2013 in Rocket Dog Brands v OHIM — Julius-K9 (K9 PRODUCTS), T‑338/12, EU:T:2013:327, paragraph 23).
58      First, the Board of Appeal found, in paragraphs 19 and 20 of the contested decision, that the verbal element ‘wisent’ in the contested mark was the most distinctive and dominant element, while the figurative element in that mark, consisting of a representation of a bovine animal which, as it indicated in paragraph 18 of the contested decision, might be perceived as a bison, would be regarded as less distinctive and dominant. According to the Board of Appeal, where a mark is made up of verbal and figurative elements, the former must, in principle, be regarded as more distinctive and dominant than the latter.
59      Secondly, in the case of the earlier mark, the Board of Appeal found, in paragraph 59 of the contested decision, that this consisted, inter alia, of a non-distinctive representation of a bottle traversed by a thin straight green line, slightly inclining to the left, and depicting a label comprising a circle with a vague graphic image inside in the colours brown and green, and surmounted by the verbal element ‘żubrówka’, represented in black and yellow. Furthermore, it found, in paragraph 60 of the contested decision, that the verbal elements and the other figurative elements of the marks at issue were more distinctive than the thin line present in those marks.
60      It follows from the case-law cited in paragraph 55 above that, when comparing the marks at issue, the Board of Appeal must examine them and, where appropriate, determine which are the distinctive and dominant elements so that they may be taken into consideration in the assessment of the similarity of those marks.
61      Thus, the Board of Appeal was right, when comparing the marks at issue, to determine the most distinctive and dominant elements and to take those elements into account in the comparison of those marks.
62      Therefore, contrary to what the applicant claims, it cannot validly be argued that the Board of Appeal confused the stages of the examination of the likelihood of confusion.
63      That argument must therefore be rejected as unfounded.
64      In the second place, the applicant submits that, since the Board of Appeal confused the two stages of the examination of the likelihood of confusion, it ought also, when comparing the marks at issue, to have taken other factors into account, such as the identity or similarity of the goods in question, the high reputation of the earlier marks, the repute and enhanced distinctiveness of those marks and the fact that consumers recognise the blade of grass as an indication of origin.
65      In that regard, first, it must be recalled, as has been concluded in paragraph 62 above, that the Board of Appeal did not confuse the stages of the examination of the likelihood of confusion. Secondly, it must be noted that, in accordance with the case-law cited in paragraphs 41 and 42 above, the identity or similarity of the marks at issue is a necessary prerequisite for the application of Article 8(1)(b) and 8(5) of Regulation No 207/2009. Thus, it is only if there is some similarity, even faint, between the marks at issue that the Board of Appeal is required to carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors, such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public (judgment in Ferrero v OHIM, cited in paragraph 42 above, EU:C:2011:177, paragraph 66).
66      Therefore, contrary to what the applicant claims, the Board of Appeal was not required, in the present case, to take into consideration, when comparing the marks at issue, elements such as the similarity of the goods in question, the high reputation, the renown, or the enhanced distinctiveness of the marks, or the existence of a family of marks.
67      That argument must therefore be rejected as unfounded.
68      In the third place, the applicant criticises the Board of Appeal for not taking into account other relevant factors, such as the similarity of certain figurative elements in the marks at issue. More specifically, the applicant criticises the Board of Appeal on the ground that it did not examine the similarities in the representation of the bison viewed in profile in both the contested mark and the earlier mark.
69      OHIM and the intervener contend that the Board of Appeal correctly applied the principles governing the similarity of the marks, since those marks were compared in their entirety by taking into account their distinctive and dominant elements, in accordance with the case-law. The intervener adds that the Board of Appeal, in its comparison of the marks at issue, also took into account the differences between the representations of the animals in those marks.
70      As has been stated in paragraphs 58 and 59 above, the Board of Appeal found, first, that the verbal element ‘wisent’ in the contested mark was the most distinctive and dominant element of that mark, because, in principle, verbal elements must be regarded as more distinctive and dominant than figurative elements, and, secondly, that the earlier mark comprised a circle with a vague graphic image inside in the colours brown and green, and surmounted by the verbal element ‘żubrówka’, represented in black and yellow. Thus, in paragraphs 60 and 62 of the contested decision, it found that the marks at issue were not similar, because, visually, they had in common only a thin line which played a secondary role and, conceptually, even though the relevant Polish public might associate the verbal element ‘żubrówka’ of the earlier mark with the idea of a European bison, the verbal element ‘wisent’ of the contested mark, which was the most distinctive and dominant element, had no meaning for that public, and the representation of the bovine animal in that mark, which on its own did not dominate that mark, could not be perceived as a European bison.
71      It follows that, when comparing the marks at issue, the Board of Appeal, on the one hand, reduced the significance of the figurative elements of the contested mark in relation to the verbal element ‘wisent’, in particular the representation of a bovine animal which may be perceived as a European bison, and, on the other hand, did not take into account the representation of the bison featured in the earlier mark, finding it to be a vague element.
72      In order to determine whether the Board of Appeal was right to proceed in that manner, it is appropriate to consider: (i) whether the verbal element ‘wisent’ stands out as the dominant element in the overall impression created by the contested mark; (ii) whether that element is more distinctive than the other figurative elements of that mark; and (iii) whether the figurative element consisting of a representation of a bison viewed in profile in the earlier mark was perceptible and therefore had to be taken into consideration in the comparison of the marks at issue.
73      First, with regard to the dominant nature of the verbal element ‘wisent’ of the contested mark, it must be pointed out that, where a sign consists of both figurative and word elements, it does not automatically follow that the word element must always be considered to be dominant. In the case of a composite mark, the figurative element may rank equally with the word element (judgments of 24 November 2005 in Simonds Farsons Cisk v OHIM — Spa Monopole (KINJI by SPA), T‑3/04, ECR, EU:T:2005:418, paragraphs 45 and 47, and of 23 November 2010 in Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, ECR, EU:T:2010:476, paragraph 37).
74      Similarly, it must be recalled, as has been observed in paragraph 56 above, that 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.
75      In the present case, it must be noted that, contrary to what the Board of Appeal concluded in paragraph 19 of the contested decision, the verbal element in the contested mark is not the dominant element of that mark. By its characteristics, the representation of a bison in the contested mark cannot be considered to be negligible in the overall impression thereby created.
76      It is true, as the Board of Appeal observed, that the verbal element ‘wisent’ has a central position in the contested mark, and it is written in large capital letters in a striking red colour. However, the figurative element, consisting of the stylised representation of a bovine animal viewed in profile looking to the left and which, according to paragraph 18 of the contested decision, may be perceived as a European bison, is of a similar size to that of the verbal element ‘wisent’ and accordingly occupies a comparable space in that mark. Furthermore, as a result of the rearing position of the animal above that element and its intense green colour, the figurative element gives an impression of predominance.
77      It follows that, as a result of its shape, its size, its colour and its position, that representation of a bison viewed in profile helps clearly to establish the image of the contested mark which the relevant public will retain in their mind, with the result that it cannot be discounted in the perception of that mark.
78      However, despite those findings of the Board of Appeal relating to the dominant character of that verbal element and the applicant’s criticisms, it is clear from the contested decision that the Board of Appeal did not draw the necessary conclusions after it qualified the element ‘wisent’ of the contested mark as ‘dominant’ and that it did not exclude the figurative element of that mark from the comparison of the marks at issue. As can be seen from paragraph 20 of the contested decision, the Board of Appeal took the figurative element into consideration and found that it was less distinctive, since the verbal element was, in its opinion, the more distinctive. Similarly, it is apparent from that paragraph that the Board of Appeal found that the other elements of that mark were ‘clearly secondary’.
79      It is therefore necessary to examine whether the verbal element ‘wisent’ in the contested mark is more distinctive than the representation of a bison in that mark.
80      Secondly, with regard to the more distinctive character of that verbal element, it must be observed that, in accordance with the case-law, where a composite mark consists of both a verbal element and a figurative element and the latter is of an importance that is equal to or less than that of the former, the assessment of the visual similarity of the signs at issue must be carried out on the basis of the overall impression created by those signs and not solely on the basis of the similarity of the verbal elements (see, to that effect, judgment in Nestlé v OHIM, cited in paragraph 56 above, EU:C:2007:539, paragraphs 46 and 47).
81      It is true that the judgment of 14 July 2005 in Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, ECR, EU:T:2005:289, paragraph 37, relied on by the Board of Appeal in paragraph 19 of the contested decision, was intended to establish a rule based on general experience, according to which, where a mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer would more easily refer to the goods in question by quoting the name of the mark than by describing the figurative element. Nevertheless, that rule of general experience has been clarified and nuanced by subsequent case-law which has held that, having regard to the characteristics of the figurative element, it could either contribute visually to the overall impression created by that mark (judgment of 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 32) or be the dominant element of that mark (judgments of 6 October 2011 in Galileo International Technology v OHIM — Galileo Sistemas y Servicios (GSS GALILEO SISTEMAS Y SERVICIOS), T‑488/08, EU:T:2011:574, paragraph 47, and of 31 January 2013 in K2 Sports Europe v OHIM — Karhu Sport Iberica (SPORT), T‑54/12, EU:T:2013:50, paragraph 40).
82      In the present case, it must be pointed out that, contrary to the findings of the Board of Appeal, the figurative element in the contested mark, consisting of the stylised representation of a bovine animal which may be perceived as a European bison, is, as a result of its characteristics, just as distinctive as the verbal element ‘wisent’ in that mark and therefore contributes to the same extent as that verbal element to the overall impression created by those marks. As has been stated in paragraph 76 above, that figurative element is of a similar size to that of the verbal element ‘wisent’, and accordingly occupies a comparable space in that mark. Furthermore, as a result of the rearing position of the animal above the verbal element and its intense green colour, the figurative element gives an impression of predominance.
83      In those circumstances, the fact that that figurative element is accompanied by the verbal element ‘wisent’ does not, contrary to what the Board of Appeal found in paragraph 20 of the contested decision, mean that it will be perceived as less distinctive than the verbal element. In view of its characteristics, the Court finds that the figurative element is just as distinctive as that verbal element.
84      In the light of the foregoing, the Court finds that the Board of Appeal erred in taking the view that the figurative element of the contested mark, consisting of a representation of a bison, was less distinctive than the verbal element ‘wisent’ of that mark.
85      Thirdly, with regard to the perception of the figurative element consisting of a representation of a bison in the earlier mark, it must be stated that the Board of Appeal’s findings, in paragraph 59 of the contested decision, that there is ‘a circle with a vague unclear image inside, in the colours brown and green, surrounded by a verbal element in yellow and black in which the word “żubrówka” may be perceived’ cannot be accepted. It is apparent from numerous documents in the administrative file relating to that mark that, even though the image provided of that mark is small in size, a naturalistic representation of a bison standing on four legs in a circle against a background of trees, coloured green, brown and black, is clearly perceptible in that mark. That representation of a bison occupies a central position in the earlier mark and is of a slightly larger size than the only perceptible verbal element of that mark, that is to say, the term ‘żubrówka’, represented in yellow and black and placed above that representation. In addition, that representation is framed between two black figurative elements and set above a figurative element resembling a signature.
86      Thus, the figurative element consisting of a naturalistic representation of a bison cannot be discounted in the overall impression created by that mark. Furthermore, as is apparent from the case-law cited in paragraph 81 above, that element cannot be considered to be less distinctive than the verbal element ‘żubrówka’, given its visibility by reason of its central position in the earlier mark, its size in comparison with the verbal element ‘żubrówka’ and the fact that it is set in a circle surmounted by that verbal element and framed by two black figurative elements which make it stand out. In view of its characteristics, the Court considers that it is just as distinctive as the verbal element.
87      The Board of Appeal therefore erred in failing to take into account, when comparing the marks at issue, the figurative element consisting of a representation of a bison in a circle against a background of trees, which was clearly perceptible in the earlier mark. As the applicant has rightly submitted, the comparison between the marks at issue must be carried out on the basis of all of their various components, both figurative and verbal.
88      The consequences of that error and of that referred to in paragraph 84 above will be examined in the context of the visual and conceptual comparisons of the marks at issue (see paragraphs 107 to 113 and 122 to 127 below).
89      With regard to the argument that consideration should be given to the fact that the relevant public would identify the figurative element consisting of a thin straight, slightly inclining or diagonal line as being a blade of grass, this will be examined in the context of the complaint relating to the impact of that element on the comparison of the marks at issue, which deals with, inter alia, the issue of the relevant public’s perception of that element (see paragraphs 93 to 103).
The impact of the line present in the marks at issue on the comparison of those marks
90      The applicant criticises the Board of Appeal’s assessment of the line present in both the contested mark and the earlier mark, according to which that element will be perceived simply as a thin straight, slightly inclining or diagonal line, and not as a blade of grass. In the view of the applicant, the blade of grass is a distinctive element due to its original or striking character and will be perceived, in itself, as an indication of commercial origin.
91      OHIM and the intervener dispute the applicant’s arguments.
92      The Board of Appeal, first of all, observed in paragraph 17 of the contested decision that, contrary to the findings of the Cancellation Division, the marks at issue did not contain a blade of grass, but rather a line, represented differently, and that those marks therefore had to be compared on the basis of that perception. Next, it found that, both in the case of the contested mark (see paragraph 20 of the contested decision) and in the case of the earlier mark (see paragraph 60 of the contested decision), the line included in those marks had a secondary role.
93      In that regard, it is necessary to point out that, in accordance with the case-law, the examination of the similarity of the marks at issue takes into consideration those marks in their entirety, as they have been registered or as they have been applied for (judgments of 2 December 2009 in Volvo Trademark v OHIM — Grebenshikova (SOLVO), T‑434/07, ECR, EU:T:2009:480, paragraph 37, and of 9 March 2012 in EyeSense v OHIM — Osypka Medical (ISENSE), T‑207/11, EU:T:2012:121, paragraph 26). Likewise, it must be observed that, in accordance with the case-law, the similarity of the marks at issue must be assessed from the point of view of the average consumer, by reference to the intrinsic qualities of those marks (judgments of 2 September 2010 in Calvin Klein Trademark Trust v OHIM, C‑254/09 P, ECR, EU:C:2010:488, paragraph 46, and of 19 June 2012 in H.Eich v OHIM — Arav (H.EICH), T‑557/10, EU:T:2012:309, paragraph 47).
94      In the present case, it is clear from the examination of the marks at issue, as registered, that the earlier mark and the contested mark contain a figurative element consisting of a thin line which traverses the bottle, and which, moreover, is represented differently. In the case of the contested mark, that line is of a slightly darker yellow than the colour of the bottle, and it traverses the bottle diagonally from the top right to the bottom left. In the case of the earlier mark, that line is straight, inclining slightly to the left, green in colour and interrupted by the label.
95      Those schematic representations of what might be a blade of grass cannot, however, be perceived, contrary to what the applicant claims, as an actual blade of grass. The feature present in the marks referred to in paragraph 94 above, as registered, will be perceived as what it is, that is to say, a simple line, and not a blade of grass. Only a more realistic representation of a blade of grass, or an actual image of a blade of grass placed inside a bottle, could evoke the image of a blade of grass, which, moreover, might be confirmed by the description of that image. However, that is not the case here.
96      The fact that, as the applicant claims, consumers recognise the blade of grass as an indication of commercial origin of its goods is not sufficient to establish that those consumers, when they encounter the marks at issue, as registered, will perceive the straight, slightly inclining or diagonal line traversing each of the bottles as a blade of grass.
97      Thus, given the perception of that figurative element as a simple straight, slightly inclining or diagonal line traversing a bottle, the Board of Appeal was correct in finding that, as there were other figurative elements, that element was less distinctive and played a secondary role in the assessment of the similarity of the marks at issue.
98      That finding cannot be invalidated by the applicant’s argument that the blade of grass is a particularly striking or original element. In this regard, it must be recalled, as has been indicated in paragraph 97 above, that the figurative element in the marks at issue, as registered, is a straight, slightly inclining or diagonal line which will be perceived as a line traversing the bottles and not as a blade of grass. As a straightforward shape, that line does not appear to be particularly original or striking. Furthermore, in the case of both the contested mark and the earlier mark, it is subordinate due to the presence of other verbal and figurative elements in those marks. Thus, it becomes less visible, and accordingly its capacity to have an impact on the mind of the consumer is diminished.
99      Furthermore, the fact that, as the applicant contends, the blade of grass in a bottle has been registered by various national trade mark offices and as a Community mark, or the fact that it has acquired a distinctive character through the use made of it cannot have consequences, either for the perception of that element, or for its secondary, less distinctive character. In that regard, first, it is important to observe that the absence of an absolute ground for refusal of registration as a mark of a blade of grass or a diagonal line in a bottle cannot prejudice the role played by such a figurative element in the comparison of other marks in which that element is included among the figurative elements. Secondly, suffice it to note that, although the acquisition of distinctive character through use is relevant in the context of absolute grounds for refusal, it is not, however, relevant in the context of relative grounds for refusal, as in the present case in respect of whether there is a likelihood of confusion (judgment of 28 June 2012 in I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, ECR, EU:T:2012:327, paragraph 67).
100    However, the fact that, as OHIM and the intervener have contended, that element may have a weak distinctive character or be devoid of such character with regard to the goods concerned, because it amounts to a description of one of the methods of producing flavoured vodkas, something which cannot be monopolised by the applicant, does not mean that it is to be disregarded in the assessment of the similarity of the marks at issue.
101    Assuming that that element does have a weak distinctive character, as a result of its capacity to evoke a method of production of the goods in question, that fact alone would not prevent it from being taken into consideration in the overall impression created by the marks at issue. Thus, it must be recalled that the descriptive character or the weak distinctive character of an element forming part of a composite mark does not, in certain circumstances, prevent it from being regarded as significant and from being taken into consideration in the comparison of the marks at issue (judgment of 25 March 2010 in Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, ECR, EU:T:2010:123, paragraphs 44 to 48), or even from being capable of making an impression on consumers and being remembered by them (judgments of 13 June 2006 in Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, ECR, EU:T:2006:157, paragraph 32, and of 14 September 2011 in Olive Line International v OHIM — Knopf (O-live), T‑485/07, EU:T:2011:467, paragraph 85; see also, to that effect, judgment of 13 July 2004 in AVEX v OHIM — Ahlers (a), T‑115/02, ECR, EU:T:2004:234, paragraph 20). In the present case, as was stated in paragraph 97 above, it will be taken into consideration as a secondary element in the overall impression created by the marks at issue.
102    Accordingly, the Board of Appeal was correct in finding, first, that the straight, slightly inclining or diagonal line present in the earlier mark and in the contested mark will be perceived as a thin line and not as a blade of grass and, secondly, that that line is less distinctive and plays a secondary role in the overall impression created by the marks at issue.
103    That complaint must therefore be rejected as unfounded.
The visual similarity of the marks at issue
104    The applicant disputes the visual comparison of the marks at issue and submits that they are similar to a certain extent by reason of the presence in both of a representation of a bison and of a blade of grass, and of the use of the colour green.
105    OHIM and the intervener contend, in essence, that the correspondence between elements which play only a secondary role is not sufficient for the conclusion that the marks at issue are similar.
106    The Board of Appeal found, in paragraph 60 of the contested decision, that the earlier mark and the contested mark were not visually similar, because their only common element was the line present in the bottles, which was a secondary figurative element, and the other, much more distinctive elements did not correspond to one other.
107    In the first place, as is clear from paragraph 85 above, since the representation of a bison against a background of trees is perceptible in the earlier mark, that element cannot be discounted in the overall impression created by that mark. Similarly, as was indicated in paragraph 86 above, the naturalistic representation of a bison standing on its four legs, against a background of trees, coloured brown, green and black, is just as distinctive as the verbal element of the earlier mark, that is to say, the verbal element ‘żubrówka’, which is the only visible verbal element and is not dominant.
108    Thus, it should be noted that the contested mark and the earlier mark have in common a distinctive element, that is to say, the representation of a bison, viewed in profile and looking to the left. In the case of the contested mark, it is a stylised and dynamic representation of a bison, in a rearing position and coloured green, while in the case of the earlier mark it is a naturalistic and static representation of a bison, standing on its four legs in a circle, against a background of trees, coloured brown, green and black. Similarly, those marks have in common certain non-distinctive or secondary elements, that is to say, the representation of a bottle and the presence of a thin line, which, however, is in a different position in each of those marks and is represented in different colours.
109    Contrary to the arguments of OHIM and the intervener, as has been stated in paragraphs 83 and 86 above, those representations of a bison do not play a secondary role, but are just as distinctive as the verbal elements ‘wisent’ and ‘żubrówka’ in the marks at issue.
110    By contrast, the marks at issue differ in their verbal elements, that is to say, ‘wisent’ in the contested mark and ‘żubrówka’ in the earlier mark. However, contrary to the arguments of OHIM and the intervener, as has been stated in paragraphs 77 and 86 above, those verbal elements do not dominate the overall impression created by those marks, inasmuch as the representation of a bison cannot be disregarded in either. The marks at issue also differ in other figurative elements, of secondary importance due to their position, their size, their visibility or their meaning, as is the case, in the earlier mark, of the fanciful line present in the upper part of the bottle, the figurative elements in black or the element that appears to represent a signature.
111    Contrary to the arguments of OHIM, the fact that the marks at issue contain different verbal elements does not preclude a finding that the marks at issue are visually similar. It follows from the case-law that the visual differences resulting from the presence of different verbal elements in the marks at issue may not be such as to affect the visual perception of the marks at issue (judgment of 5 December 2012 in Consorzio vino Chianti Classico v OHIM — FFR (F.F.R.), T‑143/11, EU:T:2012:645, paragraph 40). In the present case, the differences resulting from the presence of different verbal elements are not such as to eclipse the visual similarity resulting from the fact that the marks at issue both contain bison, the image of which will easily be retained by consumers in their memory as a result of their position within the marks at issue and their size.
112    However, that similarity is no more than weak, bearing in mind the differences introduced by the particular stylisation of the bison in the contested mark, by the different colours in which the bison are represented, by the different positions of the bison, rearing in the contested mark and standing on its four legs in the earlier mark, and by the less distinctive and secondary figurative elements in the marks at issue (judgment of 20 October 2011 in Scatizza v OHIM — Jacinto (Horse Couture), T‑238/10, EU:T:2011:613, paragraph 32). Contrary to the intervener’s arguments, those differences do not preclude the impression of similarity, even faint similarity, conveyed by the presence in the marks at issue of a representation of a bison, viewed in profile and looking to the left.
113    Therefore, considered as a whole, as is required by the case-law, the contested mark and the earlier mark are visually similar to a low degree.
114    That conclusion cannot be invalidated, either by OHIM’s argument that the animal represented in the contested mark will not be perceived as a bison, since, in the stylised representation, its characteristic features, in particular its mane, are absent, or by the intervener’s argument that it will be perceived as a bull, due to its rearing and aggressive position.
115    In this regard, it should first be made clear that the Board of Appeal, in paragraph 18 of the contested decision, described this figurative element as ‘a stylised [green] image of a bovine animal, which may be perceived as a bison’. Next, it should be noted that the stylised representation of the bison contains features characteristic of that animal, in particular the mane, perceptible as the salient feature behind its head, separated from the rest of its body by clear thin lines and emphasised by the animal’s rearing position. Thus, those elements are sufficient to evoke in the mind of the relevant Polish public the image of a bison, regardless of whether, as OHIM and the intervener contend, the rearing position of that animal is, from a biological perspective, a characteristic of bovine animals other than the bison, such as bulls, as a result of their size and their respective weight.
116    Furthermore, with regard to the intervener’s arguments that the words ‘wisent’ and ‘żubr’, and the representations of the animals to which they refer convey information about the type of vodka, it must be recalled, as the Board of Appeal observed in paragraph 19 of the contested decision, that the term ‘wisent’ is not descriptive of vodka flavoured with bison grass. The Court thus takes the view that those considerations also apply to the representation of the bison to which both that term and the Polish term ‘żubr’ refer, since neither term allows a direct and specific link to be made with the goods in question, with the result that the relevant public, when confronted with that verbal element, will immediately perceive, without further consideration, a description of the goods in question or of one of their characteristics (see judgments of 7 July 2011 in Cree v OHIM (TRUEWHITE), T‑208/10, EU:T:2011:340, paragraph 14 and the case-law cited, and of 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, EU:T:2012:210, paragraph 16 and the case-law cited). Furthermore, the fact that, as the intervener maintains, consumers may perceive the term ‘żubrówka’ as a type of vodka rather than as a mark does not take away from the impression of a low degree of similarity created by the representation of a bison viewed in profile and looking to the left in the marks at issue and the correspondence between certain secondary elements, such as the representation of the bottle and the straight, slightly inclining or diagonal line, of different colours, in those marks. In those circumstances, the fact that, as the intervener maintains, the applicant’s legal predecessor stated, in a procedure for registration of a separate Community mark, that the term ‘żubrówka’ was descriptive of a type of vodka cannot, even if proved, affect the present case.
117    Finally, the mere fact that, as OHIM has stated, the representation of a bison is commonly used to identify vodka flavoured with bison grass would not be sufficient to establish in the present case that that element has a weak distinctive character or is devoid of such character for the goods in question, particularly in view of the fact that, as the applicant has claimed, it contested that use before the national courts. In those circumstances, the fact that, as the intervener maintains, the applicant’s legal predecessor claimed, in a procedure for registration of a separate Community mark, that the representation of a bison was used for a type of vodka cannot, even if proved, affect the present case.
118    In the light of all of the foregoing, the Court considers that the Board of Appeal erred in concluding that there was no visual similarity between the marks at issue. The consequences of that error will be examined in paragraphs 130 to 134 below.
The conceptual similarity of the marks at issue
119    By its arguments, the applicant submits, in essence, that, conceptually, the marks at issue are strongly similar, or even identical, as a result in particular of their use of a blade of grass in the bottle, the terms ‘wisent’ and ‘żubrówka’ and the representation of a bison viewed in profile.
120    OHIM and the intervener maintain that the marks at issue cannot be regarded as being conceptually similar since none of the marks evokes a clear concept for the relevant public.
121    The Board of Appeal found in paragraph 62 of the contested decision that Polish consumers were liable to associate the term ‘żubrówka’ in the earlier mark with the concept of a bison. However, it found that the term ‘wisent’ in the contested mark was meaningless for those consumers and that the representation of a bovine animal in that mark was not likely to be perceived as such. Thus, it concluded that the marks at issue were not conceptually similar.
122    In that respect, it must be observed that, in accordance with the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content (judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24, and of 21 April 2010 in Peek & Cloppenburg and van Graaf v OHIM — Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, ECR, EU:T:2010:152, paragraph 63).
123    First, as follows from paragraph 85 above, since the representation of a bison is perceptible in the earlier mark, the Court considers that the concept of a ‘bison’ will be conveyed by that mark, and, as follows from paragraph 114 above, the Board of Appeal found in paragraph 18 of the contested decision that the representation of the bovine animal in the contested mark could be perceived as a bison. The Board of Appeal, however, contradicts itself when it asserts in paragraph 62 of the contested decision, when making the conceptual comparison of the marks at issue, that ‘[t]he image of the bovine animal in the contested mark … may even not be perceived as a “wisent”’. As has been stated in paragraph 115 above, and contrary to the intervener’s arguments, the representation of a bovine animal in the contested mark presents characteristics of a bison, in particular its mane, making it possible to identify it as a bison and to find that, as in the case of the earlier mark, such an image conveys the concept of a bison.
124    Secondly, the representations of a bison are accompanied, in the case of the contested mark, by the element ‘wisent’, which is meaningless in Polish but which signifies ‘bison’ in, inter alia, English and German, and, in the case of the earlier mark, by the element ‘żubrówka’, which evokes a bison in the mind of the Polish public, due to the fact that it contains the element ‘żubr’, which means ‘bison’ in Polish.
125    Thirdly, the fact that, in the case of the contested mark, the relevant public is not able to understand the meaning of the verbal element ‘wisent’ cannot neutralise the semantic concordance arising out of the fact that, as has been indicated in paragraph 122 above, the concept of a ‘bison’ is conveyed by the more distinctive figurative elements of both the contested mark and the earlier mark. The mere fact that the contested mark contains a verbal element which has no meaning for the relevant public does not make it conceptually different overall from the earlier mark (see, to that effect, judgment in Horse Couture, cited in paragraph 112 above, EU:T:2011:613, paragraph 40).
126    Fourthly, in any event, it must be observed, contrary to OHIM’s arguments, that the verbal element ‘wisent’ in the contested mark will be understood by the relevant Polish public having a sufficient knowledge of English or German as meaning ‘bison’, which, in accordance with the case-law, will strengthen the concept conveyed by the more distinctive figurative element of that mark for that part of the Polish public (judgment of 17 April 2008 in Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, EU:T:2008:114, paragraph 91, and judgment in Horse Couture, cited in paragraph 112 above, EU:T:2011:613, paragraph 39).
127    The Court accordingly takes the view that the relevant public will perceive the earlier mark and the contested mark as referring, on a conceptual level, to the concept of a ‘bison’ due to the use of a figurative element, that is to say, the representation of a European bison viewed in profile and looking to the left, but which is presented in a rearing position in the case of the contested mark, and is standing on its four legs in the case of the earlier mark. Thus, those marks have, to a certain extent, an analogous basic semantic content which that figurative element conveys directly. Furthermore, as has been indicated in paragraphs 83 and 86 above, that element is just as distinctive as the verbal elements ‘wisent’ and ‘żubrówka’ and cannot therefore be regarded as being secondary. On that basis, the Court considers that those marks have a certain degree of conceptual similarity.
128    That finding cannot be invalidated by OHIM’s argument, based on case-law, that, in the case of composite marks consisting of a number of verbal elements with no particular meaning and a number of different figurative elements, the marks at issue are not conceptually similar because they do not evoke a clear concept (judgment in F.F.R., cited in paragraph 111 above, EU:T:2012:645, paragraph 49). In that regard, it must be stated that, in the present case, unlike the case relied on by OHIM, the contested mark and the earlier mark correspond in their most distinctive figurative element, that is to say, the representation of a bison, and do not contain different figurative elements capable of introducing conceptual differences between them. On this point, it must be made clear that, as the Board of Appeal observed on a number of occasions in the contested decision, the other figurative elements in the marks at issue and mentioned by OHIM, that is to say, the bottles, the label and the thin straight, slightly inclining or diagonal line, are either common or banal elements, or play only a secondary role in the overall impression created by the marks at issue, and cannot introduce significant conceptual differences between them. Furthermore, both the shape of the bottle and the thin line in the marks at issue are capable of conveying the same concept, that is to say, that of a bottle traversed by a straight, slightly inclining or diagonal line, giving rise to a new conceptual concordance in addition to that previously found in respect of the more distinctive figurative element.
129    Contrary to what OHIM maintains, that fact cannot lead to a situation in which no clear concept is invoked. On the contrary, since the most distinctive element of the marks is the representation of the bison, it is that concept which will be evoked above all by the marks at issue. In any event, the secondary elements, which are also conceptually concordant, consisting of the representation of a bottle and a straight, slightly inclining or diagonal line, may harmoniously incorporate the semantic content conveyed by the marks at issue, by referring above all to the concept of a bison and, moreover, to that of a bottle traversed by a line.
130    Thus, it must be held that the contested decision is vitiated by errors in the assessment of the visual similarity and of the conceptual similarity of the marks at issue. The Board of Appeal was therefore wrong to conclude, in paragraph 63 of the contested decision, that the marks at issue were overall dissimilar.
131    Having regard to the low degree of visual similarity and a certain conceptual similarity between the marks at issue, the Court considers, as the Cancellation Division concluded, that the marks have at least a low degree of similarity.
132    It is apparent from the contested decision that, in the present case, the Board of Appeal did not carry out a global assessment of the likelihood of confusion. It merely held in paragraphs 82 and 84 of the contested decision that, due to the differences found, in particular at the visual, phonetic and conceptual levels, the application for annulment based on Article 8(1)(b) and 8(5) of Regulation No 207/2009 could not succeed.
133    However, having regard to the existence, first, of a low degree of visual similarity between the earlier mark, containing the representation of a bison, and the contested mark (see paragraph 113 above) and, secondly, a certain conceptual similarity between those two marks (see paragraph 127 above), the Court considers that the Board of Appeal ought to have carried out an overall assessment of the likelihood of confusion and examined whether the other conditions of Article 8(5) of Regulation No 207/2009 had been satisfied.
134    The Board of Appeal therefore erred in taking the view that, due to the visual, phonetic and conceptual differences, the grounds seeking annulment on the basis of Article 8(1)(b) and 8(5) of Regulation No 207/2009 were without merit.
135    Since the Board of Appeal based its decision solely on the lack of similarity between the marks at issue and rejected, for that reason alone, the two grounds on which the application for annulment was based, it is not for the Court, in the present case, to carry out an overall examination of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, or to assess whether the other conditions set out in Article 8(5) of that regulation have been met (judgment of 6 October 2011 in Seven v OHIM — Seven for all mankind (SEVEN FOR ALL MANKIND), T‑176/10, EU:T:2011:577, paragraph 58).
136    Given that the first plea, alleging infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009, is well founded, the action must be upheld and the contested decision annulled, without it being necessary to examine the second plea.
Costs
137    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.
138    Since OHIM and the intervener have been unsuccessful in the present case, they must, in accordance with the form of order sought by the applicant, be ordered to bear their own costs and to pay the costs incurred by the applicant.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 10 June 2013 (Case R 33/2012-4);
2.      Orders OHIM and Fabryka Wódek Polmos Łańcut SA to bear their own costs and to pay those of CEDC International sp. z o.o.
Dittrich
Schwarcz
Tomljenović
Delivered in open court in Luxembourg on 12 November 2015.
[Signatures]
* Language of the case: English.