JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 March 2020
(*)
(EU trade mark — Opposition proceedings — Application for EU word mark SUM011 — Prior figurative EU word mark Sumol and prior national word mark SUMOL — Relative ground for refusal — No likelihood of confusion — No similarity of the goods and services — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑296/19,
Sumol + Compal Marcas, SA, established in Carnaxide (Portugal), represented by J.M. Pimenta and A.M. Sebastião, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, J. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
Heretat Mont-Rubi, SA, established in Font-Rubi (Spain),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 February 2019 (Case R 1662/2018-5), relating to opposition proceedings between Sumol + Compal Marcas and Heretat Mont-Rubi,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, Z. Csehi (Rapporteur) and G. Steinfatt, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 6 May 2019,
having regard to the response lodged at the Court Registry on 7 August 2019,
having regard to the fact that no request for a hearing was submitted by the parties within 3 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 23 February 2015, Heretat Mont-Rubi, SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC)
No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78,
p. 1), 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 SUM011.
3        The goods and services for which registration was sought fall within Classes 33, 35 and 39 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, in relation to each of those classes, to the following description:
–        Class 33: ‘Alcoholic beverages (except beers), wine; alcoholic fruit extracts; cava; rice alcohol, anise (liqueur); brandy; sparkling wines; liqueurs’;
–        Class 35: ‘Business management in the food industry and beverages; retailing of wine, alcoholic beverages and foodstuffs; procurement, for others, of wine, alcoholic beverages and foodstuffs; e-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes; sales promotion’;
–        Class 39: ‘Arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to ecotourism, wine culture, gastronomy and cultural and architectural heritage; conducting of guided visits to wineries; tour guide services; escorting of travellers and sightseeing (tourism); tour reservation services; packaging and packing of beverages; storage, sending, transport, distribution and delivery of beverages’.
4        The trade mark application was published in the European Union Trade Marks Bulletin of 2 March 2015.
5        On 2 June 2015, the applicant, Sumol + Compal Marcas, SA, filed a notice of opposition under Article 41 of Regulation
No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6        The opposition was based, first, on the following earlier EU figurative mark:
7        The earlier EU mark, which was registered on 2 June 2012 under number 10527042, covers goods in Classes 30, 32 and 33 corresponding, for each of those classes, to the following description:
–        Class 30: ‘Beverages based on chocolate, cocoa, coffee, tea, coffee substitutes and other cereals’;
–        Class 32: ‘Beverages, namely organic fruit juices, drinking waters, flavoured waters, mineral and aerated waters and other non-alcoholic drinks; Beers; Energy and sports drinks; Soft drinks, crushed-ice drinks, fruit drinks and aerated fruit juice drinks; Vegetable and plant juices; Syrups for beverages, concentrates, powders and other preparations for making beverages’;
–        Class 33: ‘Alcoholic beverages (except beer); alcoholic beverages containing fruit juices’.
8        The opposition was based, secondly, on the earlier Portuguese word mark SUMOL, registered on 2 September 1957, for goods in Class 32 and corresponding to the following description:
‘Non-alcoholic drinks and fruit juices’.
9        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation
No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
10      On 26 June 2018, the Opposition Division partially upheld the opposition on the ground that there was a likelihood of confusion as regards the following goods and services:
–        Class 33: ‘Alcoholic beverages (except beers), wine; alcoholic fruit extracts; cava; rice alcohol, anise (liqueur); brandy; sparkling wines; liqueurs’;
–        Class 35: ‘Retailing of wine, alcoholic beverages’.
11      On 23 August 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
12      By decision of 12 February 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal in part and also rejected the application for registration in respect of the following services:
–        Class 35: ‘Procurement, for others, of wine, alcoholic beverages’;
–        Class 39: ‘Arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to ecotourism, wine culture; conducting of guided visits to wineries; storage, sending, transport, distribution and delivery of beverages’.
13      In particular, the Board of Appeal took the view that there was also a likelihood of confusion in respect of the services referred to in paragraph 12. Unlike the Opposition Division, it found that those services were similar to a low degree to the goods covered by the earlier EU mark.
14      Furthermore, the Board of Appeal dismissed the appeal before it in respect of the following services, which were found to be different from the goods covered by the earlier marks:
–        Class 35: ‘Business management in the food industry and beverages; retailing of foodstuffs; procurement, for others, of foodstuffs; e-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes; sales promotion’;
–        Class 39: ‘Arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to gastronomy and cultural and architectural heritage; tour guide services; escorting of travellers and sightseeing (tourism); tour reservation services; packaging and packing of beverages’.
Forms of order sought
15      The applicant claims that the Court should:
–        alter the contested decision and order the rejection of the application for registration of the mark applied for in respect of the ‘remaining services in Classes 35 and 39’;
–        order the other parties to pay the costs of the present proceedings, as well as those of the opposition and appeal proceedings before EUIPO.
16      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
Admissibility of the first head of claim
17      EUIPO submits that the first head of claim is inadmissible in so far as it concerns the upholding of the opposition and the rejection of the mark applied for in respect of the services in Classes 35 and 39, in respect of which the Board of Appeal dismissed the appeal before it.
18      In that regard, it must be recalled that the General Court has jurisdiction, under Article 72(3) of Regulation
No 2017/1001, either to annul the contested decision or to alter it by adopting the decision which the Board of Appeal should have made.
19      In addition, it must be pointed out that, where the applicant seeks to have the decision of the Board of Appeal altered, without seeking the annulment of that decision, the application for alteration necessarily includes an application for annulment (see, to that effect, judgment of 7 November 2013, Budziewska v OHIM — Puma (Bounding feline), T‑666/11, not published, EU:T:2013:584, paragraph 18 and the case-law cited).
20      In the present case, it is apparent from the content of the application that, by the present action, the applicant essentially seeks, first, the annulment in part of the contested decision on the ground that the Board of Appeal wrongly concluded that there was no similarity between the goods and services at issue and, second, the amendment of the contested decision in that respect.
21      In so far as the appellant requests the Court to order the rejection of the application for registration of the trade mark applied for in respect of the services in Classes 35 and 39 in respect of which its appeal was dismissed by the Board of Appeal, it must be held that the applicant is essentially asking the Court to adopt the decision which, in its view, EUIPO should have taken, that is to say, a decision finding that the conditions of opposition are satisfied, so that EUIPO enforces it by refusing registration of the trade mark applied for in respect of those services. Accordingly, the applicant requests that the contested decision be altered, as provided for in Article 72(3) of Regulation 2017/1001. That is not a request to the Court to require EUIPO to do or to refrain from doing something, which would constitute a direction addressed to EUIPO.
On the contrary, it requests the Court to decide, on the same basis as the Board of Appeal, whether the mark applied for may be registered in the light of Article 8(1)(b) of Regulation 2017/1001. Such a decision is among the measures which, in principle, may be taken by the Court in the exercise of its power to alter decisions (see judgment of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 30 and the case-law cited).
22      It follows, contrary to EUIPO’s submissions, that the application in question is admissible. However, that finding is without prejudice to whether the conditions for the exercise of the Court’s power to alter the contested decision are met in this case (see, by analogy, judgment of 28 January 2016, Gugler France v OHIM — Gugler (GUGLER), T‑674/13, not published, EU:T:2016:44, paragraphs 99 to 104). If necessary, that question will be decided
after consideration of the applicant’s arguments on the merits.
The plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001
23      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, it argues that the Board of Appeal was wrong to find that the services referred to in paragraph 14 above and the goods covered by the earlier marks were different.
24      EUIPO disputes the applicant’s arguments.
25      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
26      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).
27      For the purpose of applying Article 8(1)(b) of Regulation 2017/1001, 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 the 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).
28      In accordance with 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, inter alia, their nature, their intended purpose and 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).
29      It is in the light of those considerations that it must be examined whether the applicant’s arguments demonstrate that, in the present case, there is similarity between the services and the goods at issue.
30      As a preliminary point, as regards the relevant public, it should be noted that the Board of Appeal found that the services covered by the mark applied for in Classes 35 and 39 were intended, in part, for the general public and, in part, for both the general public and professionals with specific professional expertise or knowledge. It also found, in essence, that the goods covered by the earlier marks were aimed at both the general public and professionals. Those findings, which, moreover, are not disputed by the applicant, must be upheld.
31      Furthermore, it must be noted that the Board of Appeal carried out a detailed examination of the similarity of the services covered by the trade mark applied for, which were the subject of the dispute before it, and the goods covered by the earlier EU trade mark set out in paragraph 7 above. It was of the view that the services referred to in paragraph 14 above were different from the goods covered by the earlier mark. It further held that those services were also different from the goods covered by the earlier national trade mark set out in paragraph 8 above, since the latter mark covered the same or a more limited range of goods as the earlier EU trade mark. It therefore dismissed the appeal brought before it in respect of those services.
32      As regards the services referred to in paragraph 14 above and the goods covered by the earlier EU trade mark, the Board of Appeal first held that the ‘retailing of foodstuffs; procurement, for others, of foodstuffs’ in Class 35 concerned food which was similar to beverages only to a low degree. It also took the view that similarity between retail services for specific goods and specific goods could arise only when the goods in question were identical, and found that that condition was not met in the present case.
33      Second, as regards the services ‘Business management in the food industry and beverages; e-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes; sales promotion’ falling within Class 35, the Board of Appeal essentially found that those services and the goods designated by the earlier EU trade mark differed in nature, purpose, use and marketing channels and were not in competition. It also noted that it was not in a position to prove the existence of complementarity between those goods and services and that undertakings providing business management, e-commerce or advertising services were generally not beverage producers.
34      Third, with regard to the services ‘organisation and direction of tours, circuits, excursions and sightseeing, particularly in connection with gastronomy and cultural and architectural goods; tourist guide services; accompanying travellers and sightseeing tours; excursion reservation services’ in Class 39, the Board of Appeal essentially found that those services and the goods covered by the earlier EU trade mark differed in nature, that they met separate needs and that the relevant services were provided by companies specialising in tourism and arranging travel. It ruled out any complementarity of those services with the beverages covered by that earlier mark, adding, in essence, that there was no reason to presume that the relevant public would regard such services as being offered by wine producers.
35      Fourth, as regards the services ‘packaging and packing of beverages’ in Class 39, the Board of Appeal considered that those services differed from the goods covered by the earlier EU trade mark by their nature, purpose and destination and were not supplied by the same undertakings. In addition, it took the view that packaging services could be used for any other goods and that, therefore, the need to use those services with a view to transporting the goods in question did not make them similar.
36      The applicant is essentially of the opinion that the services referred to in paragraph 14 above and the goods covered by the earlier marks are similar in so far as those services relate to non-alcoholic or alcoholic beverages, which are precisely the goods for which those marks were registered. The applicant argues that all the services in question are dependent on the beverages protected by those marks, since it is on the basis of those goods and only in connection with them that the services are marketed and provided. In addition, it challenges, in essence, the Board of Appeal’s assessment as regards the services in Class 39 that the goods and services in question have a different nature, purpose and use. It argues that it is essential to take into account the particular circumstances of the situation under consideration. In that regard, it points out that the other party to the proceedings before the Board of Appeal is active only in the wine sector and that it is therefore clear that all the services at issue are intrinsically linked to wine and that that party intends to use the trade mark applied for in that sector of activity.
37      Those arguments cannot call into question the assessments of the Board of Appeal.
38      In that regard, it must first be noted that, contrary to the applicant’s submission, not all the services in question relate specifically to beverages.
39      Indeed, the ‘retailing of foodstuffs; procurement, for others, of foodstuffs’ in Class 35 and the services ‘arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to gastronomy and cultural and architectural heritage; tour guide services; escorting of travellers and sightseeing (tourism); tour reservation services’ in Class 39 are either limited to different goods or not limited to specific goods and can therefore be rendered for all types of goods. The applicant is therefore incorrect to submit that those services can be provided in connection only with the beverages covered by the earlier marks.
40      As regards the services which refer to beverages or to the beverages sector, namely ‘Business management in the food industry and beverages; e-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes’, included in Class 35, and ‘packaging and packing of beverages’, included in Class 39, it must be held that that circumstance in itself is not sufficient to conclude that those services are similar to the beverages covered by the earlier marks.
41      In so far as the applicant alleges, in essence, that the services which refer to beverages or to the beverages sector are complementary to the goods covered by the earlier marks, it must be recalled that, in accordance with the case-law, goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods, or provision of those services, lies with the same undertaking (see judgment of 17 February 2017, Hernández Zamora v EUIPO — Rosen Tantau (Paloma), T‑369/15, not published, EU:T:2017:106, paragraph 27 and the case-law cited).
42      However, it must be noted, as EUIPO has, that the applicant has not provided any evidence to show that the services and goods at issue are complementary as defined by the case-law cited in paragraph 41 above. In particular, the applicant has not put forward any specific arguments allowing the conclusion to be drawn that the goods covered by the earlier marks are indispensable or important for the use of the services covered by the mark applied for which refer to beverages or that the provision of those services is indispensable or important for the use of the goods covered by the earlier marks. That finding is true also for services not specifically related to beverages.
43      In the second place, the applicant essentially contests the Board of Appeal’s assessment in relation to the services in Class 39, namely that those services and the goods designated by the earlier EU trade mark are different in their nature, purpose and use (see paragraph 42 of the contested decision). More specifically, it submits that the other party to the proceedings before the Board of Appeal is active only in the wine sector and that it is therefore clear that all the services at issue are intrinsically linked to wine and that that party intends to use the trade mark applied for in that sector.
44      In that regard, it must be pointed out that, in order to assess the similarity of the goods and services at issue within the meaning of Article 8(1)(b) of Regulation 2017/1001, it is necessary to take into account the description of the goods and services covered by the marks at issue and not the goods and services actually marketed or to be marketed under those marks (see, to that effect, judgment of 7 April 2016, Industrias Tomás Morcillo v EUIPO — Aucar Trailer (Polycart A Whole Cart Full of Benefits), T‑613/14, not published, EU:T:2016:198, paragraph 27 and the case-law cited). It follows that the comparison of the services and goods at issue must be based on the list of services referred to in the application for registration of the mark applied for. Consequently, the applicant’s argument based on the intended use of the mark applied for cannot succeed.
45      In the absence of other specific arguments, the view must be taken that the Board of Appeal was correct in holding that the services in Class 39 and the goods at issue are different in nature, purpose and use.
46      In those circumstances, the Board of Appeal did not err in finding that the services and goods at issue were different and that there was therefore no likelihood of confusion in relation to the services referred to in paragraph 14 above, in so far as one of the conditions necessary for a finding of likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001, namely the similarity of the goods and services at issue, was not satisfied. It follows that the appellant’s single plea must be rejected, without it being necessary to rule on whether the conditions for the exercise of the General Court’s power to alter the contested decision are satisfied in the present case.
Costs
47      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party must be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
48      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Sumol + Compal Marcas, SA, to pay the costs.
Collins
Csehi
Steinfatt
Delivered in open court in Luxembourg on 12 March 2020.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.