62021TJ0198_RES
Case T‑198/21
Ancor Group GmbH
v
European Union Intellectual Property Office
Judgment of the General Court (Fifth Chamber), 23 February 2022
(EU trade mark – Opposition proceedings – EU word mark CODE-X – Earlier national word and figurative marks Cody’s – Earlier international figurative mark Cody’s – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Word mark CODE-X and word and figurative marks Cody’s
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see paragraphs 36, 45, 53, 63, 65, 72-74)
EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Weighing elements of similarity or difference between the signs – Taking into account of the intrinsic characteristics of the signs or the conditions in which the goods or services are marketed – Beverages sector
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see paragraphs 57-62)
Résumé
Ancor Group GmbH filed an application for registration of the word sign CODE-X as an EU trade mark for beverages. Cody’s Drinks International GmbH filed a notice of opposition on the basis of its German word and figurative marks Cody’s and an international registration designating the European Union of that figurative mark, registered in respect of beverages. It claimed that there was a likelihood of confusion. (
1
) The opposition was rejected.
The Board of Appeal of the European Union Intellectual Property Office annulled the decision of the Opposition Division. Having accorded particular importance to the degree of phonetic similarity in the global assessment of the likelihood of confusion, it concluded that there was a likelihood of confusion on the part of the relevant public in respect of all the marks relied on.
Hearing an action brought before it by Ancor Group, the General Court annuls the decision of the Board of Appeal on the ground that it erred in finding that there was a likelihood of confusion and specifies that, in relation to beverages, it is not appropriate to accord preponderant importance to the phonetic perception of the marks in all cases.
Findings of the Court
The Court finds that the signs at issue have only a low degree, if not an average degree, of visual similarity and an average degree of phonetic similarity and are conceptually different.
As regards the particular importance given by the Board of Appeal to the degree of phonetic similarity, the Court notes that, in the global assessment of the likelihood of confusion, the respective weight to be given to the visual, phonetic or conceptual aspects of the signs at issue may vary according to the objective circumstances in which the marks may be present on the market. However, in that context, the circumstances in which it is usual to expect the categories of goods covered by the marks at issue to be marketed must be taken as a benchmark.
The Court points out that although it is of course not inconceivable that the perception of the phonetic differences between the signs at issue may not be clear in particularly noisy environments, such as in a bar or a nightclub during very busy periods, that cannot be used as the sole basis for assessing whether there is a potential likelihood of confusion between the signs at issue. An assessment of that kind must of necessity be carried out while keeping in mind the perception which the relevant public will have of those signs under normal marketing conditions.
The Court acknowledges that, in some cases, particular importance has been attached to the phonetic similarity of the signs at issue, on account of the fact that the goods in question, belonging to the beverages sector, and more particularly the alcoholic beverages sector, could be ordered orally after their name had been seen on the menu or on the wine list. However, it adds that it is also clear from the case-law that there is nothing to indicate that, as a general rule, consumers of drinks will buy such goods in the course of a conversation where those goods are being ordered in a busy and noisy bar or restaurant.
Furthermore, even if bars and restaurants are not negligible sales channels for those types of goods, it is common ground that the consumer will be able to perceive the marks at issue visually in those places, inter alia by examining the bottle which will be served to him or her or by other means, such as on a menu or a drinks list, before placing an order orally. Moreover, and above all, it is not disputed that bars and restaurants are not the only sales channels for the goods concerned. Those goods are also sold in supermarkets or other retail outlets where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to that product.
Consequently, although preponderant importance has sometimes been accorded to the phonetic perception of marks in relation to beverages, that will not be appropriate in all cases.
In the present case, no evidence has been provided to show that the goods in question are mainly ordered orally. On the contrary, if the relevant public is led to order them orally in bars and restaurants, they will generally do so after seeing their name on a drinks list or a menu, or will be able to examine the product which will be served to them, so that they will be able to perceive the mark visually in order to express what they wish to purchase.
As a result, the Court concludes that there is no likelihood of confusion, annuls the decision of the Board of Appeal and, in exercising its power to alter decisions, rejects the opposition brought by Cody’s Drinks International.
(
1
)	Within the meaning of Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).