ORDER OF THE COURT (Seventh Chamber)
14 December 2017 (*)
(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Opposition proceedings — Regulation (EC) No 207/2009 — Article 8(5) — Application for registration of the figurative mark containing the word elements ‘sotto il sole italiano’ and ‘sotto il sole’ — Opposition proceedings — Rejection of the application for registration — Annulment of the decision upholding the opposition)
In Case C‑499/17 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 16 August 2017,
Miguel Torres SA, established in Vilafranca del Penedés (Spain), represented by A. von Mühlendahl, Rechtsanwalt, and J. Güell Serra, abogado,
appellant,
the other parties to the proceedings being:
Alma-The Soul of Italian Wine LLLP, established in Coral Gables (United States),
applicant at first instance,
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
THE COURT (Seventh Chamber),
composed of A. Rosas, President of the Chamber, C. Toader and A. Prechal (Rapporteur), Judges,
Advocate General: M. Szpunar,
Registrar: A. Calot Escobar,
having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court of Justice,
makes the following
Order
1        By its appeal, Miguel Torres SA asks the Court to set aside the judgment of the General Court of the European Union of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO — Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE) (T‑637/15, EU:T:2017:371, ‘the judgment under appeal’), by which the General Court annulled the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 September 2015 (Case R 356/2015‑2), relating to opposition proceedings between Miguel Torres and Alma-The Soul of Italian Wine LLLP.
2        The mark for which registration was sought by Alma-The Soul of Italian Wine was the following figurative sign:
3        That mark contained the word elements ‘sotto il sole italiano’ and ‘sotto il sole’.
4        By the judgment under appeal, the General Court held, in essence, that it followed from the global assessment of the similarity between the mark applied for and the earlier EU word mark VIÑA SOL held by Miguel Torres (‘the earlier mark’) — the purpose of that assessment being to determine whether the relevant public makes a link between the marks at issue, as required by the case-law relating to the conditions for the application of Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) — that, particularly in the light of the differences found between the signs at issue, there was no risk that the relevant public might make such a link. The General Court consequently annulled the decision of the Second Board of Appeal of 3 September 2015, which had upheld the opposition brought by Miguel Torres.
5        In support of its appeal, Miguel Torres puts forward three grounds of appeal alleging, as regards the first two, infringement by the General Court of Article 8(5) of Regulation No 207/2009 and, as regards the third, a failure to state reasons.
The appeal
6        Under Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.
7        On 15 November 2017, the Advocate General took the following position:
‘1.       I am of the view that the appeal in the case in question should be dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded, and that Miguel Torres should be ordered to bear its own costs, in accordance with Article 181 of the Rules of Procedure of the Court, for the following reasons.
2.      In support of the appeal, Miguel Torres relies on three grounds of appeal, alleging infringement of Article 8(5) of Regulation No 207/2009 as well as a defective statement of reasons.
3.      By the first ground of appeal, Miguel Torres claims that the General Court committed a series of errors in the analysis of the earlier mark and of the mark applied for, as well as in its comparison of those marks from the visual, phonetic and conceptual perspectives. In that regard, Miguel Torres claims that the General Court’s analysis of the inherent distinctiveness of the earlier mark contains omissions and is incorrect (paragraphs 58 to 64 of the judgment under appeal), that its analysis of the distinctive and dominant elements of the mark applied for is not sufficiently substantiated (paragraphs 65 to 68 of the judgment under appeal) and that the comparison of the marks from a phonetic and conceptual perspective is manifestly incorrect (paragraphs 72 and 75 of the judgment under appeal).
4.      I also note that it is clear from the case-law of the Court of Justice that the assessment of the similarities between the signs at issue is of a factual nature and, save where the evidence and facts are distorted, is not subject to review by the Court of Justice. Such a distortion must be obvious from the documents on the Court’s file, without there being any need to carry out a new assessment of the facts and evidence (judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 50 and the case-law cited).
5.      However, by the present ground of appeal, Miguel Torres does not rely on any distortion of the facts by the General Court but seeks to call into question the factual assessments made by the General Court in the context of the comparison of the marks at issue.
6.      Moreover, whilst Miguel Torres also states that the General Court distorted the evidence regarding the distinctiveness of the earlier mark (paragraphs 62 to 64 of the judgment under appeal), it is, however, clear from its arguments that, in fact, the company’s complaint is that the General Court did not sufficiently substantiate its finding that the word ‘sol’ is of low distinctive character for wines. That argument is in fact tantamount to contesting the validity of the finding of fact made by the General Court and is, therefore, not capable of establishing any distortion of the facts or evidence.
7.      By the second ground of appeal, Miguel Torres invokes alleged errors committed by the General Court in the context of the assessment of the link between the marks at issue, for the purpose of Article 8(5) of Regulation No 207/2009. This ground of appeal is manifestly inadmissible in so far as Miguel Torres contests the factual findings of the General Court regarding the degree of similarity between the marks (paragraph 76 of the judgment under appeal) and their degree of respective distinctiveness (paragraph 78 of the judgment under appeal).
8.      In addition, in so far as Miguel Torres claims, in the context of the first two grounds of appeal, that the General Court did not take into consideration the strength of the earlier mark’s reputation and the degree of its distinctive character acquired through use, I observe that the existence of a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case, including the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42).
9.      In the present case, Miguel Torres’ argument alleging a failure to take those factors into consideration is manifestly unfounded, since it is based on a selective and manifestly incorrect reading of the judgment under appeal. Indeed, after noting the established case-law, which refers, among other factors likely to be relevant for the purpose of the overall assessment of a link between the marks at issue, to the strength of the earlier mark’s reputation and the degree of its distinctive character, whether inherent or acquired through use (paragraph 31 of the judgment under appeal), the General Court analysed those factors in paragraphs 41 to 49 and 76 to 78 of the judgment under appeal. It was, therefore, after examining the strength of the earlier mark’s reputation acquired through use and the degree of its distinctive character that the General Court proceeded to a global assessment of the link between the marks at issue, summarised in paragraph 78 of that judgment, deciding that, even taking those factors into consideration, the degree of similarity between the signs at issue is not sufficient for the relevant public to make a link between them for the purposes of Article 8(5) of Regulation No 207/2009. In so doing, the General Court clearly did not err in law.
10.      By the third ground of appeal, Miguel Torres claims that the finding made by the General Court as regards taking into account the degree of reputation of the earlier mark (paragraph 78 of the judgment under appeal) is not adequately reasoned, inasmuch as the General Court did not expressly rule on the degree of distinctiveness acquired by use, or on the strength of the earlier mark’s reputation.
11.      I note that, according to settled case-law of the Court, the obligation to state reasons does not require the General Court to provide an account which follows exhaustively and one by one all of the arguments put forward by the parties to the case, and the Court’s reasoning may therefore be implicit on condition that it enables the persons concerned to know why the General Court has not upheld their arguments and that it provides the Court of Justice with sufficient material for it to exercise its power of review (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 64 and the case-law cited). That condition is met in the present case, given that, even if in paragraphs 76 to 78 of the judgment under appeal the General Court did not explicitly rule on the strength of the earlier mark’s reputation and did not explain in detail the degree of its distinctiveness acquired through use, it is nevertheless clear from other grounds for the judgment under appeal, inter alia those set out in paragraphs 31 and 41 to 49, that the General Court took those factors into consideration. Thus, the General Court’s reasoning, read as a whole, makes it possible clearly and unequivocally to understand that, even taking into account the strength of the earlier mark’s reputation, as well as its distinctive character, both inherent and acquired through use, the degree of similarity between the signs at issue is not sufficient for the relevant public to be capable of making a link between them (see paragraph 78 of the judgment under appeal).
12.      Consequently, the third ground of appeal must be rejected as being manifestly unfounded and, accordingly, the appeal must be dismissed in its entirety as being, in part, manifestly inadmissible and, in part, manifestly unfounded.’
8        For the same reasons as those given by the Advocate General, the appeal must be dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.
Costs
9        Under Article 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since the present order has been adopted before the appeal has been served on the defendant and, therefore, before the latter could have incurred costs, Miguel Torres must be ordered to bear its own costs.
On those grounds, the Court (Seventh Chamber) hereby orders:
1.      The appeal is dismissed.
2.      Miguel Torres SA shall bear its own costs.
Luxembourg, 14 December. 2017.
A. Calot Escobar
A. Rosas
Registrar
President of the Seventh Chamber
*      Language of the case: English.