JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 November 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark Riviva – Earlier EU word mark RIVELLA – Relative ground for refusal – Likelihood of confusion – Partial rejection of the application for registration – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Proof of genuine use of the earlier mark – Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001))
In Case T‑551/20,
Jeronimo Martins Polska S.A., established in Kostrzyn (Poland), represented by R. Skubisz, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Rivella International AG, established in Rothrist (Switzerland), represented by S. Pietzcker and C. Spintig, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 1 July 2020 (Case R 2420/2019-4), relating to opposition proceedings between Rivella International and Jeronimo Martins Polska,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović (Rapporteur), President, P. Škvařilová-Pelzl and I. Nõmm, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 September 2020,
having regard to the response of EUIPO lodged at the Court Registry on 3 November 2020,
having regard to the response of the intervener lodged at the Court Registry on 23 November 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 20 June 2017, Optimum mark sp. z o.o., the predecessor in law to the applicant, Jeronimo Martins Polska S.A., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2        Registration as a mark was sought for the word sign Riviva.
3        The goods in respect of which registration was sought are in Class 32 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Fruit juice; vegetable juices [beverages]; fruit-vegetable juice; fruit drinks; vegetable and fruit-and-vegetable beverages; mineral water [beverages]; spring water; carbonated and non-carbonated water; non-alcoholic beverages; syrups for beverages; preparations for making beverages’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 172/2017 of 11 September 2017.
5        On 5 December 2017, the intervener, Rivella International AG, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier EU word mark RIVELLA, which was filed on 22 October 1999, registered on 5 February 2001 and duly renewed until 22 October 2029 under the number 1 354 059 and covers goods in, inter alia, Class 32 corresponding to the following description: ‘Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation 2017/1001.
8        On 28 June 2018, the applicant requested, in accordance with Article 47(2) of Regulation 2017/1001, that the intervener furnish proof of genuine use of the earlier mark in connection with the goods in respect of which it was registered and on which the opposition was based.
9        By decision of 28 August 2019, the Opposition Division upheld the opposition in its entirety finding, in essence, that, since use of the earlier mark had been proved in connection with some of the goods covered by that mark, namely ‘carbonated soft drinks’, it had to be concluded that there was a likelihood of confusion with regard to all of the goods covered by the mark applied for.
10      On 28 October 2019, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
11      By decision of 1 July 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the Opposition Division’s decision and dismissed the appeal which the applicant had brought before it.
12      First, it found that the intervener had sufficiently proved use of the earlier mark in connection with the goods ‘lemonades and carbonated soft drinks’ in Class 32 and, secondly, it acknowledged that there was a likelihood of confusion between the marks at issue as regards all of the goods in Class 32 covered by the mark applied for.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and, as the case may be, the intervener to pay the costs.
14      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
15      It must be pointed out at the outset that, given the date on which the application for registration at issue was filed, namely 20 June 2017, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
16      Consequently, in the present case, the references to Article 8(1)(b) and Article 47(2) of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties to the proceedings must be understood as referring to Article 8(1)(b) and Article 42(2) of Regulation No 207/2009, the wording of which is identical.
17      In support of its action, the applicant relies, in essence, on two pleas in law, alleging (i) infringement of Article 42(2) of Regulation No 207/2009 and (ii) infringement of Article 8(1)(b) of that regulation.
The first plea, alleging infringement of Article 42(2) of Regulation No 207/2009
18      In the context of its first plea, the applicant disputes, in essence, the Board of Appeal’s finding that genuine use of the earlier mark has been proved in connection with the goods ‘lemonades and carbonated soft drinks’.
19      First, the applicant submits that the product labels and photographs of shops do not contain any information regarding the place, time or extent of use and that it is not certain that they relate to the relevant period and the relevant territory. Furthermore, it argues that, although the affidavit signed by a member of the intervener’s administrative board (‘the affidavit’) contains information relating to the time, place, nature and extent of use, it does not constitute sufficient proof because it comes from one of the intervener’s employees and its content is not supported by the other evidence which the intervener provided.
20      Secondly, the applicant submits that the link which the Board of Appeal established with part of the territory of Germany and of France does not prove genuine use with regard to a substantial part of the territory of the European Union, as required by the case-law. Furthermore, it argues that the various items of evidence, in particular the photographs of shops, the product labels and the invoices, show neither the place in which the goods at issue were put on the market nor the size of the territory in which those goods were actually marketed.
21      Thirdly, according to the applicant, no solid and objective evidence which shows with certainty the form in which the earlier mark was used on the market during the relevant period in connection with the goods ‘lemonades and carbonated soft drinks’ has been provided.
22      EUIPO and the intervener dispute those arguments.
23      According to settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation (now recital 24 of Regulation 2017/1001), and from Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM – Wedl & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).
24      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (judgment of 23 September 2020, Osório & Gonçalves v EUIPO – Miguel Torres (in.fi.ni.tu.de), T‑601/19, not published, EU:T:2020:422, paragraph 38; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
25      When assessing whether use of the earlier mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the extent and frequency of use of the mark (see judgment of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited).
In order to examine
whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under the trade mark may be compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa (judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
26      Genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see judgment of 23 September 2009, Cohausz v OHIM – Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited).
27      Although Rule 22 of Regulation No 2868/95 refers to indications concerning the four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use, and gives examples of acceptable evidence in that regard, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing, that rule does not state that each item of evidence must necessarily give information about all of the four elements in question (see judgment of 19 April 2013, Luna v OHIM – Asteris (Al bustan), T‑454/11, not published, EU:T:2013:206, paragraph 35 and the case-law cited). According to settled case-law, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts. Proof of genuine use of the earlier mark must therefore be established by taking into consideration all the evidence submitted to the Board of Appeal for assessment (see judgment of 19 April 2013, Al bustan, T‑454/11, not published, EU:T:2013:206, paragraphs 36 and 37 and the case-law cited).
28      In the present case, the Board of Appeal found, a finding which is not disputed, that the relevant period with regard to the assessment of genuine use ran from 20 June 2012 to 19 June 2017 (‘the relevant period’).
29      The proof
of use of the earlier mark provided by the intervener, as taken into account by the Board of Appeal, is expressly referred to in paragraph 3 of the contested decision. It consists of the following items of evidence:
–        an affidavit signed by the president of the intervener’s administrative board, according to which the mark RIVELLA has been used in several EU Member States, including Germany and France, in connection with carbonated non-alcoholic drinks. With regard to the period between 1 January 2013 and 30 June 2017, three variants of the product RIVELLA were marketed, namely ‘Rivella Red’ (the classic product), ‘Rivella Blue’ (a low-calorie product) and ‘Rivella Green’ (a product with green tea extracts). As regards that period, 1.4 to 2.7 million bottles per year were sold in Germany and 762 000 to 804 000 bottles per year were sold in France;
–        labels which were allegedly used in Germany and France in connection with the red and blue variants;
–        photographs of shops and supermarkets displaying stands and crates of goods;
–        images of a billboard advertising campaign in France;
–        invoices for each year in the period 2013-2017 issued to one customer in Germany for amounts ranging from EUR 14 000 to EUR 25 000 per invoice;
–        invoices for each year in the period 2013-2017 issued to one customer in France for amounts ranging from EUR 17 000 to EUR 19 000 per invoice;
–        invoices issued to the intervener by various customers in Germany and in France for promotional activities.
30      The Board of Appeal examined those documents in paragraphs 7 to 51 of the contested decision and found that, taken as a whole, they constituted sufficient and conclusive evidence that the earlier mark had been put to genuine use in France and in Germany during the relevant period in connection with the goods ‘lemonades and carbonated soft drinks’.
31      It is important to note at the outset that, according to the case-law set out in paragraphs 25 and 27 above, the Board of Appeal was entitled to carry out a global assessment of the evidence and take into account the various items of evidence, even though they did not necessarily, taken individually, prove the time, nature, place and extent of use.
32      As regards the nature of use, the Board of Appeal correctly found that, taken together, the affidavit, the invoices, the photographs of shops, the product labels and the advertising campaigns proved that the earlier mark had been used in connection with the goods ‘lemonades and carbonated soft drinks’ during the relevant period.
33      First, it is apparent from the affidavit that, during the relevant period, three variants of carbonated soft drinks were marketed in Germany and in France under the mark RIVELLA, namely ‘Rivella Red’, ‘Rivella Blue’ and ‘Rivella Green’ as well as, from time to time, other variants of the product.
34      Secondly, the statements contained in the affidavit are supported by the other items of evidence which the intervener provided. In particular, the invoices, which were drawn up between 2013 and 2017, show the sale of goods, identified as beverages, named ‘Rivella Bleu’, ‘Rivella Vert’, ‘Rivella Rouge’, ‘Rivella Rot’, ‘Rivella Light’ or ‘Rivella Grün’. The photographs of shops and the labels, although they are undated, make it possible to confirm that the names used on the invoices do indeed correspond to ‘lemonades and carbonated soft drinks’. Even though the photographs and labels are undated and therefore devoid, as such, of evidential value, they are capable of supporting other documents, such as the invoices, in order to prove the use of the earlier mark (see, to that effect, judgment of 9 September 2020, Novomatic v EUIPO – Brouwerij Haacht (PRIMUS), T‑669/19, not published, EU:T:2020:408, paragraph 60).
35      Consequently, contrary to what the applicant submits, the Board of Appeal’s assessments are not based on mere probabilities or suppositions, but on an accumulation of sufficiently solid and objective consistent evidence.
36      As regards the time and the extent of use, the applicant confines itself to submitting that it is not possible to assess whether those criteria are satisfied, even if all the items of evidence are taken into account as a whole. It must be pointed out, in that regard, that the invoices provided by the intervener relate to almost the whole of the relevant period and refer to the years 2013 to 2017. In addition, those invoices show a period of regular and frequent use of the earlier mark. What is more, each of the invoices refers to the sale of several thousand ‘Rivella Blue’, ‘Rivella Red’ or ‘Rivella Green’ goods. Consequently, in the light of the case-law set out in paragraphs 23 to 27 above, the Board of Appeal was right in finding that the earlier mark had been put to sufficiently extensive use.
37      As regards the territory to be taken into account with regard to the examination of genuine use, it is important to point out that it is not necessary that an EU trade mark be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the goods or services concerned on the corresponding market and, more generally, on all the facts and circumstances relevant to establishing whether the commercial use of that mark serves to create or maintain market shares for the goods or services in respect of which it was registered. Moreover, for use of an EU trade mark to be deemed genuine, it is not required that that mark be used in a substantial part of the European Union. Furthermore, the possibility that the mark in question may have been used in the territory of a single Member State must not be ruled out, since the borders of the Member States must be disregarded and the characteristics of the goods or services concerned must be taken into account (see, to that effect, judgments of 30 November 2016, K&K Group v EUIPO – Pret a Manger (Europe) (Pret A Diner), T‑2/16, not published, EU:T:2016:690, paragraph 50; of 15 November 2018, DRH Licensing & Managing v EUIPO – Merck (Flexagil), T‑831/17, not published, EU:T:2018:791, paragraph 67; and of 7 November 2019, Intas Pharmaceuticals v EUIPO – Laboratorios Indas (INTAS), T‑380/18, EU:T:2019:782, paragraph 80 and the case-law cited).
38      Consequently, the fact that use of the earlier mark has been proved only in connection with a small part of the territory of Germany and of France does not preclude the use of the earlier mark from being genuine, particularly because, as is apparent from paragraph 36 above, that use has been proved, not in a sporadic manner but with regard to almost the whole of the relevant period and to sufficiently significant quantities.
39      Furthermore, the applicant submits, in essence, that the intervener has not provided any actual evidence that goods bearing the earlier mark were marketed in various shops and that it has not been proved that that mark has been put to outward use. Without it being necessary to examine whether the Board of Appeal was entitled, in order to find that the goods were marketed in numerous German and French supermarkets and shops,
to take into account the photographs of shops, although they are undated, it must be pointed out that the fact that proof of use of the earlier trade mark has been furnished only with regard to the sale of goods to a single customer in Germany and a single customer in France does not a priori preclude the use from being genuine (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 76).
The territorial scope of the use is only one of several factors to be taken into account in determining whether it is genuine or not.
40      Consequently, it must be held, in the light of the considerations set out in paragraphs 31 to 39 above, that the Board of Appeal was right in finding, after carrying out a global examination of the evidence of use provided by the intervener, that the earlier mark had, with regard to the relevant period, been put to genuine use in Germany and in France in connection with ‘lemonades and carbonated soft drinks’.
41      For all of the foregoing reasons, the first plea must be rejected as unfounded.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
42      By the second plea, the applicant claims that the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue and thus infringed Article 8(1)(b) of Regulation No 207/2009.
43      First, although the applicant concedes that the goods under comparison are, in part, identical and, in part, similar, it disputes the Board of Appeal’s assessment of the degree of similarity between the goods at issue.
44      First of all, it submits that ‘fruit juice; vegetable juices [beverages]; fruit-vegetable juice; fruit drinks; vegetable and fruit-and-vegetable beverages’ and the goods covered by the earlier mark are not identical or very similar, since they differ in their quality, their nutritional value, the various undertakings by which they are manufactured and their production processes. Furthermore, it argues that it is not possible to conclude that they are interchangeable because they serve to meet an identical need.
45      Next, it submits that ‘mineral water [beverages]; spring water; non-carbonated water’ and ‘carbonated water’ differ from the goods covered by the earlier mark in their producers and their manufacturing techniques. Furthermore, it argues that they are not substitutable, inter alia on account of their different nutritional values.
46      Lastly, the applicant submits that ‘syrups for beverages’ and ‘preparations for making beverages’, even if they are distributed in the same way, are not similar to an average degree to the goods covered by the earlier mark
because they are not beverages and have a different nature and purpose.
47      Secondly, the applicant disputes the Board of Appeal’s finding that the marks at issue are visually and phonetically similar to a lower than average degree.
48      First, the applicant claims that the signs at issue are not visually similar. It disputes the point that the difference between the letters in the middle of the signs RIVELLA and Riviva is not sufficient to counterbalance the visual similarity created by the letters which they have in common, even if the point that consumers only rarely have the chance to compare marks directly is taken into account. In that regard, it submits that, although the signs coincide in their initial parts, the Board of Appeal failed to have regard to the principle pursuant to which the comparison of the signs must be based on the overall impression which they create.
49      Secondly, the applicant claims that the pronunciation of the signs is completely different. It states that RIVELLA is pronounced softly and Riviva is pronounced more sharply. It adds that the different structure of the elements ‘viva’ and ‘vella’, in particular the use of different vowels and consonants and their different positions, plays an important role in their overall perception and adds phonetic differences ‘in terms of the overall sound, rhythm and intonation’.
50      EUIPO and the intervener dispute the applicant’s arguments.
51      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the 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.
52      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 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).
53      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, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
54      It is in the light of those principles that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue on the part of the relevant public must be examined.
The relevant public
55      As regards the definition of the relevant public, according to the case-law, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
56      In the present case, the Board of Appeal found, in paragraphs 53 and 54 of the contested decision, that, since the earlier mark was an EU trade mark, the relevant territory was that of the European Union. However, since it is sufficient that the relative ground for refusal exists in part of the European Union, the Board of Appeal focussed its analysis on the German-speaking public. As regards the composition of the public and its level of attention, the Board of Appeal found that, since the goods in Class 32 were everyday consumer goods, the relevant public was the general public and that it had an average level of attention.
57      There is no need to call into question those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant. In particular, it is important to point out that, in view of the fact that, for an EU 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 European Union, the Board of Appeal was justified in focusing its assessment on the German-speaking part of the relevant public (see, to that effect, judgment of 5 February 2020, Globalia Corporación Empresarial v EUIPO – Touring Club Italiano (TC Touring Club), T‑44/19, not published, EU:T:2020:31, paragraphs 84 and 85 and the case-law cited).
The comparison of the goods
58      The Board of Appeal found, in paragraphs 59 to 66 of the contested decision that the ‘non-alcoholic beverages’, ‘fruit juice; vegetable juices [beverages]; fruit-vegetable juice; fruit drinks; vegetable and fruit-and-vegetable beverages’, ‘mineral water [beverages]; spring water; non-carbonated water’, ‘carbonated water’, ‘syrups for beverages’ and ‘preparations for making beverages’ in Class 32 covered by the mark applied for were either identical or similar to various degrees to the goods in the same class covered by the earlier mark.
59      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
60      In the first place, as regards the ‘non-alcoholic beverages’, the applicant does not dispute that those goods are identical to ‘lemonades’ and ‘carbonated soft drinks’ and there is no need to call that finding into question. As the Board of Appeal correctly found, since the ‘non-alcoholic beverages’ included, as a broader category, all the goods covered by the earlier mark, namely, the ‘lemonades’ and ‘carbonated soft drinks’, those goods were identical (see, to that effect, judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited). In that regard, it must be borne in mind that it is for the trade mark applicant, and not for EUIPO, to restrict, if necessary, the application for registration of the mark to certain goods which are not covered by the earlier mark. EUIPO is not under any obligation to make an assessment of each of the goods or services coming within each category covered by the trade mark application, but must examine the category in question as such (see, to that effect, judgment of 14 July 2011, ratiopharm v OHIM – Nycomed (ZUFAL), T‑222/10, not published, EU:T:2011:383, paragraph 34 and the case-law cited).
61      In the second place, as regards the goods ‘fruit juice; vegetable juices [beverages]; fruit-vegetable juice; fruit drinks; vegetable and fruit-and-vegetable beverages’, although it must be noted that, contrary to what the Board of Appeal stated, those goods are not carbonated beverages, and are not therefore identical to ‘carbonated soft drinks’, it must be held that the Board of Appeal was right in finding that all of those goods are at least highly similar to ‘carbonated soft drinks’, irrespective of whether or not the contested ‘fruit drinks’ and ‘vegetable and fruit-and-vegetable beverages’ could, as broader categories of goods, include the other goods ‘fruit juice’, ‘vegetable juices’ and ‘fruit-vegetable juice’.
62      First, as the Board of Appeal pointed out, in essence, in paragraph 63 of the contested decision, even if the goods covered by the earlier mark do not contain the same fruit and vegetable ingredients as the ‘fruit juice; vegetable juices [beverages]; fruit-vegetable juice; fruit drinks; vegetable and fruit-and-vegetable beverages’, they are all non-alcoholic beverages the purpose of which is mainly to quench thirst and are normally drunk cold or for pleasure (see, by analogy, judgment of 12 December 2014, Ludwig Schokolade v OHIM – Immergut (TrinkFix), T‑105/13, not published, EU:T:2014:1070, paragraph 97). Furthermore, they may have the same producers and be distributed via the same distribution channels. Secondly, contrary to what the applicant submits, it cannot be ruled out that ‘lemonades and carbonated soft drinks’ might, like ‘fruit juice; vegetable juices [beverages]; fruit-vegetable juice; fruit drinks; vegetable and fruit-and-vegetable beverages’, be perceived as healthy goods which have nutritional purposes. Those goods cannot only have a fruit taste, but can also contain fruit extracts or be fruit or fruit juice based.
63      Consequently, contrary to what the applicant claims, ‘fruit juice; vegetable juices [beverages]; fruit-vegetable juice; fruit drinks; vegetable and fruit-and-vegetable beverages’ could, mainly because of their intended purpose, be considered to be interchangeable with ‘carbonated soft drinks’ and thus to be in competition with them as regards their method of use.
64      It must therefore be held that, although the Board of Appeal erred in finding that ‘fruit juice; vegetable juices [beverages]; fruit-vegetable juice; fruit drinks; vegetable and fruit-and-vegetable beverages’ are identical to ‘carbonated soft drinks’, it was right in finding that they were at least similar to a high degree.
65      In the third place, as regards the ‘mineral water [beverages]; spring water [and] non-carbonated water’, it must be stated that, although it is true that their manufacturing and production processes are different, the fact, however, remains that, contrary to what the applicant submits, those goods are non-alcoholic everyday consumer beverages which serve to quench thirst and can be marketed via the same channels and under the same arrangements as ‘carbonated soft drinks’. Given that the Court has already held that ‘mineral waters’ and ‘soft drink colas’ are similar to at least an average degree in the judgment of 25 November 2015, Masafi v OHIM – Hd1 (masafi) (T‑249/14, not published, EU:T:2015:881, paragraph 27), the Board of Appeal
was right in finding that there was an average degree of similarity between the goods under comparison.
66      In the fourth place, as regards the ‘carbonated water’, irrespective of whether those goods have a different intended purpose, use or nutritional value, as the applicant submits, it must be pointed out that those goods fall within the broader category of ‘carbonated soft drinks’ covered by the earlier mark. Consequently, those goods are not merely ‘highly similar’, as the Board of Appeal stated, but are identical (judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34).
67      In the fifth place, as regards the ‘syrups for beverages [and] preparations for making beverages’, it must be pointed out that, although those goods, which are not beverages as such, differ in their nature and intended purpose from ‘lemonades and carbonated soft drinks’, they may have a similar method of use, inasmuch as it is sufficient to add sparkling water to them in order for them to become non‑alcoholic carbonated beverages ready for consumption, and those goods therefore have an identical intended use and are in direct competition on the market (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 86). Furthermore, as the Board of Appeal pointed out, those goods can have the same distribution channels and the same producers. The fact that different techniques might be used to manufacture those goods is not sufficient to rule out any similarity between those goods. It follows that the Board of Appeal was right in finding that there was at least an average degree of similarity between those goods.
The comparison of the signs
68      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, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
69      The Board of Appeal found, in paragraphs 73 and 76 of the contested decision that there was a lower than average degree of visual and phonetic similar between the signs RIVELLA and Riviva. From a conceptual standpoint, it took the view that those signs were not capable of being compared since they did not convey any clear meaning in any of the languages of the European Union.
70      In the first place, as regards the visual comparison, it must be pointed out that the signs RIVELLA and Riviva consist of seven and six letters respectively and coincide both in the presence of the first three letters placed in the same order at the beginning, ‘r-i-v’, and in the presence of the letter ‘a’ at the end of both signs. The only difference between the marks at issue is therefore due to the presence of the groups of letters ‘ell’ and ‘iv’ in the middle of the signs.
71      In that regard, as the Board of Appeal rightly pointed out in paragraph 72 of the contested decision, it is apparent from the case-law that the consumer normally attaches more importance to the beginning
of a mark than to its end, since the initial part of a mark normally has a greater impact, both visually and phonetically, than the final part (see, to that effect, judgments of 7 September 2006, PAM-PIM’S BABY-PROP, T‑133/05, EU:T:2006:247, paragraph 51, and of 27 February 2019, Aytekin v EUIPO – Dienne Salotti (Dienne), T‑107/18, not published, EU:T:2019:114, paragraph 49 and the case-law cited). It is true that, as is indicated by the adverb ‘normally’, that consideration cannot apply in all cases (judgments of 12 July 2019, MAN Truck & Bus v EUIPO – Halla Holdings (MANDO), T‑698/17, not published, EU:T:2019:524, paragraph 62, and of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM – Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 58). However, in the present case, there is nothing that makes it possible to call into question the assessment that the fact that the first three letters in the signs at issue coincide contributes towards a rather similar visual impression being given by those signs as a whole.
72      Furthermore, contrary to what the applicant claims, there are no manifest differences in the endings of the signs at issue. On the contrary, the signs coincide in their last letter, ‘a’, which contributes towards reinforcing the overall impression of similarity given by the signs. Accordingly, the Board of Appeal was right in finding that, having regard also to the fact that consumers only rarely have the chance to compare marks directly, the differences between the letters in the middle of the signs is not sufficient to counterbalance the rather similar visual impression created by the letters common to the marks at issue when those marks are perceived as a whole by the public (see, to that effect, judgments of 3 March 2015, Bial-Portela v OHIM, T‑366/11 RENV, not published, EU:T:2015:129, paragraphs 36 and 38, and of 13 May 2020, Wonder Line v EUIPO – De Longhi Benelux (KENWELL), T‑284/19, not published, EU:T:2020:192, paragraphs 39 and 40).
73      Consequently, it must be held that there is at least an average degree of visual similarity between the marks at issue and not, as the Board of Appeal found in paragraph 73 of the contested decision, a lower than average degree of visual similarity between those marks.
74      In the second place, as regards the phonetic comparison, it must be pointed out, as observed by the Board of Appeal, that the pronunciation of the signs coincides in the pronunciation of the word elements ‘riv’ and ‘a’. In addition, that phonetic identity concerns, in particular, the beginning of the signs at issue. Those letters will therefore be the first ones which the consumer will pronounce and hear and will, on that ground, be those which will hold his or her attention more (see judgment of 1 March 2016, BrandGroup v OHIM – Brauerei S. Riegele, Inh. Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 51 and the case-law cited).
75      Moreover, contrary to what the applicant submits, the second parts of the signs at issue, ‘vella’ and ‘viva’, and in particular the pronunciation of the word elements ‘ell’ and ‘iv’, in which the marks at issue differ, do not serve to attenuate the partially identical pronunciation of those marks owing to the elements in common ‘riv’ and ‘a’ (see, to that effect,
judgment of 1 March 2016, SPEZOOMIX, T‑557/14, not published, EU:T:2016:116, paragraph 50).
76      In addition, the similar structure of the signs, which each comprise three syllables, ‘ri-vel-la’ and ‘ri-vi-va’, each of which are identical or partially identical, gives the signs a similar rhythm and intonation. Furthermore, as EUIPO rightly states, a similar sound pattern results from the intonation arising from the position of the vowels in the order ‘i-i-a’ in the mark applied for and ‘i-e-a’ in the earlier mark. The applicant’s arguments that the pronunciation of the marks at issue is different in terms of the overall sound, rhythm and intonation must therefore be rejected. In addition, the applicant’s argument that there is a difference between the ‘soft’ pronunciation of the earlier sign and the ‘sharper’ pronunciation of the sign applied for is not substantiated.
77      Consequently, it must be held that there is at least an average degree of phonetic similarity between the marks at issue and not, as the Board of Appeal found in paragraph 76 of the contested decision, a lower than average degree of phonetic similarity between those marks.
78      That finding is not called into question by the applicant’s argument that the Board of Appeal did not take into account its arguments relating to EUIPO’s previous decision-making practice, according to which the presence of a number of identical letters is not sufficient for a likelihood of confusion to be found to exist if there significant differences which counterbalance those similarities, since the signs have to be compared by means of an overall assessment.
79      First, it is apparent from settled case-law that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 71).
80      Secondly, although it is also apparent from the case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of European Union law and in the light of the principles of equal treatment and of sound administration, and must therefore take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76, and of
21 March 2014, FTI Touristik v OHIM (BigXtra), T‑81/13, not published, EU:T:2014:140, paragraph 52), it is sufficient to point out that, contrary to what the applicant submits, the Board of Appeal did indeed take into account the overall impression created by the signs at issue and also the fact that, although those signs differ in the groups of letters ‘ell’ and ‘iv’, that does not counterbalance the similarities between those signs.
81      In the third place, as regards the conceptual comparison, the Board of Appeal pointed out, in paragraph 77 of the contested decision, that the signs at issue did not have any clear meaning in any of the languages of the European Union in relation to the goods concerned, and that the conceptual comparison remained neutral. There is no need to call that assessment, which is not, moreover, disputed by the applicant, into question.
The distinctive character of the earlier mark
82      It must be pointed out that the Board of Appeal did not err in finding, in paragraph 79 of the contested decision, that the earlier mark had a normal degree of inherent distinctiveness, a finding which the applicant does not, moreover, dispute.
The global assessment of the likelihood of confusion
83      As regards the existence of a likelihood of confusion between the marks at issue, the Board of Appeal found that there was a likelihood of confusion in respect of all the goods in Class 32 covered by the mark applied for.
84      It must be borne in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74). Furthermore, the distinctive character of the earlier trade mark is also one of the relevant factors which must be taken into account in the global assessment of the likelihood of confusion (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
85      In this respect, it must be pointed out that all of the goods at issue are everyday consumer goods and that the relevant public will display an average level of attention when purchasing them.
86      A likelihood of confusion could be found to exist only if the relevant public were likely to be misled as to the commercial origin of the goods in question.
87      In view of the foregoing considerations, that likelihood of confusion appears, in the present case, to be established with regard to all the goods covered by the mark applied for, which are identical or similar to various degrees to the goods covered by the earlier mark. Faced with the goods covered by the mark applied for, the consumers who are part of the relevant public will make a connection between the marks at issue, since, first, the signs at issue have been held to be similar to an average degree overall, secondly, the goods at issue are identical or similar to an average or high degree, thirdly, the relevant public will display only an average level of attention when purchasing those goods and, fourthly, the earlier mark has a normal degree of inherent distinctiveness.
88      Accordingly, it must be held, in the present case, that the Board of Appeal was right in finding that there was a likelihood of confusion between the marks at issue.
89      The second plea must therefore be rejected and consequently the action must be dismissed in its entirety.
Costs
90      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.
91      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 (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Jeronimo Martins Polska S.A. to pay the costs.
Tomljenović
Škvařilová-Pelzl
Nõmm
Delivered in open court in Luxembourg on 24 November 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.