ORDER OF THE GENERAL COURT (Seventh Chamber)
6 June 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark STORK – Earlier national word mark GOLDEN STORK – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law)
In Case T‑433/22,
Spreewood Distillers GmbH, established in Schlepzig (Germany), represented by O. Spieker and D. Mienert, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by N. Lamsters and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Radgonske gorice d.o.o., established in Gornja Radgona (Slovenia),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg (Rapporteur) and I. Dimitrakopoulos, Judges,
Registrar: V. Di Bucci,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Spreewood Distillers GmbH, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 May 2022 (Case R 1782/2021‑5) (‘the contested decision’).
Background to the dispute
2        On 20 December 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign STORK.
3        The mark applied for designated goods and services in Classes 32, 33 and 35 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 corresponding, for each of those classes, to the following description:
–        Class 32: ‘Non-alcoholic beverages; syrups and other preparations for making beverages; fruit drinks; juices; non-alcoholic fruit extracts; non-alcoholic fruit juice beverages; carbonated fruit juices; non-alcoholic beverages; aperitifs, non-alcoholic; grape juice; grape must, unfermented; beer; beers; beer-based cocktails; powders for effervescing beverages; pastilles for effervescing beverages; cocktails, non-alcoholic; energy drinks; preparations for making aerated water; essences for making beverages; fruit nectars, non-alcoholic; sparkling fruit juices, in particular fizzy grape juices; vegetable juices [beverages]; isotonic drinks; aerated water; lemonades; syrups for lemonade; mineral water [beverages]; mineral water [beverages]; must; preparations for making beverages; smoothies; sherbets [beverages]; table waters; waters [beverages]; non-alcoholic grape secco; non-alcoholic sparkling wine; non-alcoholic secco; alcohol free wine; non-alcoholic must; dealcoholised sparkling wine; dealcoholised secco; alcohol free wine; dealcoholised must, in particular dealcoholised grape must’;
–        Class 33: ‘Alcoholic beverages (except beers); wine; alcoholic beverages (except beers), in particular sparkling wine; alcoholic beverages (except beers), in particular prosecco; low-alcoholic wine; fortified wines; still wine; cooking wine; sparkling wines; sparkling wines; prosecco; secco; secco frizzante; sparkling wines; sparkling wine like beverages; piquette; fruit wines; mead [hydromel]; mead [hydromel]; beverages containing sparkling wine; beverages containing wine; aperitifs, digestifs and cocktails based on spirits (beverages); aperitifs, digestifs and cocktails based on wine; aperitifs, digestifs and cocktails based on prosecco; aperitifs, digestifs and cocktails based on sparkling wine; pre-mixed alcoholic beverages, other than beer-based; alcoholic essences; alcoholic extracts; alcoholic fruit extracts; fruit (alcoholic beverages containing -); alcoholic must, in particular grape must containing alcohol; must, in particular fermented grape must; grape secco containing alcohol; flavoured drinks containing wine; soft spirits; spirits [beverages]; distilled beverages; brandy spirits; brandy; fruit brandies; brandy; brandy; cognac; whisky; gin; rum; liqueurs; fortified wines; digestives; digestifs; extracts of spiritous liquors; cooking brandy’;
–        Class 35: ‘Advertising; advertising, marketing and promotional services; information events relating to foodstuffs and beverages, in particular relating to alcoholic beverages, except beers, for sales purposes; business management; commercial information relating to alcoholic beverages, except beers; compilation of goods relating to alcoholic beverages, except beers, for others, relating to presentation and sales purposes; import and export services; ordering services; procurement services for others and retailing and wholesaling, in particular via the internet, of the following goods: household or kitchen utensils and containers, in particular coolers for wine bottles, household or kitchen utensils and containers, in particular coolers for sparkling wine bottles, household or kitchen utensils and containers, in particular coolers for prosecco bottles, bottle coolers, bottle openers, wine openers, cork removers, foil cutters for wine bottles, cap cutters for sparkling wine bottles, cap cutters for prosecco bottles, bottle stoppers of glass, corks for bottles, vacuum pumps for wine bottles, wine breathers, pitchers, glasses, wine filters, bottle holders, in particular for wine bottles, bottle holders, in particular sparkling wine bottles, bottle holders, in particular for prosecco bottles, coasters of cork, coasters for bottles, coasters for wine bottles, coasters for sparkling wine bottles, coasters for prosecco bottles, coasters of precious metal for bottles, drip collars, specially designed for use around the bottleneck, in order to prevent drops, cruet sets for oil and vinegar, oil cruets of precious metal, cruets, cruet stands; procurement services, for others and retailing and wholesaling, in particular via the internet, of the following goods: non-alcoholic beverages, syrups or other preparations for making beverages, fruit drinks and fruit juices, non-alcoholic fruit extracts, non-alcoholic fruit drinks, juice of fruit, carbonated, non-alcoholic drinks, aperitifs, non-alcoholic, grape juice, grape must, unfermented, beer, beers, beer-based cocktails, powders for effervescing beverages, pastilles for effervescing beverages, cocktails, non-alcoholic, energy drinks, preparations for making aerated water, essences for making beverages, fruit drinks, non-alcoholic fruit nectars, fruit juices, fruit spritzers, in particular fizzy grape juices, vegetable juices (beverages), isotonic beverages, aerated waters, lemonades, syrups for lemonade, mineral and aerated waters and other non-alcoholic drinks, mineral water [beverages], must, preparation for making beverages, smoothies, sorbets (beverages), table waters, waters [beverages], non-alcoholic grape secco, non-alcoholic sparkling wine, non-alcoholic secco, non-alcoholic wine, non-alcoholic must, in particular non-alcoholic grape must, dealcoholised sparkling wine, dealcoholised secco, dealcoholised wine, dealcoholised must, in particular dealcoholised grape must, alcoholic beverages (except beer), namely wines, alcoholic beverages (except beer), in particular sparkling wine, alcoholic beverages (except beer), in particular prosecco, low alcoholic wine, fortified wine, still wines, cooking wine, sparkling wines, sparkling wine, prosecco, secco, secco frizzante, sparkling wine and beverages resembling sparkling wine, piquette, fruit wines, mead (hydromel), hydromel (mead), beverages containing sparkling wine, beverages containing wine, aperitifs, digestifs and cocktails with a spirit base, aperitifs, digestifs and cocktails based on wine, aperitifs, digestifs and cocktails based on prosecco, aperitifs, digestifs and cocktails based on sparkling wine, pre-mixed alcoholic beverages, other than beer-based, alcoholic essences, alcoholic extracts, fruit extracts, alcoholic, alcoholic beverages containing fruit, alcoholic must, in particular grape must containing alcohol, fermented must, in particular fermented grape must, grape secco containing alcohol, flavoured drinks containing wine, soft spirits, fortified wine, distilled beverages, brandy spirits, brandy, fruit brandies, schnapps, brandy, cognac, whisky, gin, rum, liquors and liqueur wines, liqueurs (digestifs) and digestifs, extracts of spiritous liquors, cooking brandy’.
4        On 17 April 2020, the intervener, Radgonske gorice d.o.o, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5        The opposition was based on, inter alia, the earlier Slovenian word mark GOLDEN STORK, which was filed on 4 March 2019 and registered on 6 August 2019 under No 201 970 225 and covers, inter alia, goods and services in Classes 33 and 35 corresponding, for each of those classes, to the following description:
–        Class 33: ‘Sparkling wines; sparkling grape wine; sparkling fruit wine; sparkling white wines; sparkling red wines; natural sparkling wines; beverages containing wine [spritzers]; wine coolers [drinks]; wine; white wine; red wine; rose wines; grape wine; fortified wines; sweet wines; table wines; low-alcoholic wine; piquette; fruit wine; strawberry wine; cooking wine; mulled wines; wine-based drinks; wine punch; cider; perry; alcoholic beverages containing fruit; alcoholic beverages (except beer); alcoholic carbonated beverages, except beer; fruit extracts, alcoholic; alcoholic energy drinks; low alcoholic drinks; spirits [beverages]; distilled beverages; whisky; rum; aquavit; fermented spirit; aperitifs; cocktails; bitters; liqueurs; cream liqueurs; hydromel [mead]; alcoholic extracts; kirsch; scotch whisky; malt whisky; gin; scotch whisky based liqueurs; anisette [liqueur]; peppermint liqueurs; vermouth; digesters [liqueurs and spirits]’;
–        Class 35: ‘Retail services in relation to alcoholic beverages (except beer); wholesale services in relation to alcoholic beverages (except beer); retail services in relation to preparations for making alcoholic beverages; wholesale services in relation to preparations for making alcoholic beverages; retail services in relation to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages; retail services relating to food; advertising services for the promotion of beverages; advertising services to promote the sale of beverages; advertising; direct mail advertising; radio advertising; television advertising; online advertising on a computer network; marketing; direct marketing; market research; rental of advertising space; rental of advertising time on communication media; outdoor advertising; dissemination of advertisements; public relations services; business management; business administration; clerical services; secretarial services; opinion polling; shop window dressing; distribution of samples; organization of trade fairs for commercial or advertising purposes; organization of exhibitions for commercial or advertising purposes; business merchandising display services; import and export services’.
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (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).
7        On 18 August 2021, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
8        On 18 October 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal upheld the decision of the Opposition Division and dismissed the appeal on the ground that there was a likelihood of confusion in relation to all of the goods and services at issue.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, should a hearing be held.
Law
12      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
13      In the present case, the Court considers that it has sufficient information available to it from the material in the file and decides, pursuant to that article, to rule without taking any further steps in the proceedings (order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13).
14      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
15      Article 8(1)(b) of Regulation 2017/1001 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. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State.
16      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. 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).
17      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind 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 2017/1001 exists in part of the European Union (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 76 and the case-law cited).
The relevant public
18      It must be borne in mind that, in the global assessment of the likelihood of confusion, 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).
19      In the present case, the Board of Appeal stated that the relevant public consisted of the general public and professionals in Slovenia, whose level of attention could vary from average to high. In that regard, the Board of Appeal observed that the relevant public will have an average level of attention with regard to the goods in Classes 32 and 33 and with regard to the retail services in Class 35, on the one hand, and a high level of attention with regard to the remaining services in Class 35, on the other. In addition, it noted that, since the earlier mark GOLDEN STORK was a Slovenian mark, the relevant territory was that of Slovenia. Those findings are not disputed by the applicant.
The comparison of the goods and services
20      In assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
21      The applicant submits that the goods and services at issue are not similar. In that regard, it maintains that the earlier mark GOLDEN STORK is not registered in respect of the goods at issue in Class 32 and that the goods in that class, namely non-alcoholic beverages and beers, in respect of which it seeks registration, are highly dissimilar to those in respect of which the earlier Slovenian word mark is registered. In addition, it submits that the Board of Appeal erred in finding that the services at issue in Class 35 were similar to varying degrees, in particular with regard to ‘marketing and promotional services’ and ‘procurement services for others’, on the ground that the definition of the services covered by the earlier mark GOLDEN STORK is exceptionally broad.
22      EUIPO disputes the applicant’s arguments.
23      First of all, it must be observed that the applicant’s argument that the earlier mark GOLDEN STORK is not registered in respect of the goods in Class 32 is not capable of calling into question the assessment of the similarity of the goods and services at issue. It should be observed, as do EUIPO and the applicant, that it is clear from Article 33(7) of Regulation 2017/1001 that goods and services are not to be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, just as they are not to be regarded as being dissimilar from each other on the ground that they appear in different classes under that classification.
24      In that regard, it must also be observed, as stated by the Board of Appeal and EUIPO, that it is settled case-law that sales services can be considered to be similar to the goods to which they relate (see, to that effect, judgments of 19 December 2019, El Corte Inglés v EUIPO – Lloyd Shoes (LLOYD), T‑729/18, not published, EU:T:2019:889, paragraphs 35 and 36 and the case-law cited, and of 25 November 2020, BRF Singapore Foods v EUIPO – Tipiak (Sadia), T‑309/19, not published, EU:T:2020:565, paragraph 141 and the case-law cited), mainly on account of their complementarity. In the present case, as the Board of Appeal stated in paragraph 47 of the contested decision, the goods covered by the mark applied for in Class 32 are included in the broad categories of ‘non-alcoholic beverages’ and ‘preparations for making alcoholic beverages’, which are the object of the retail services in Class 35 in respect of which the earlier mark GOLDEN STORK is registered. Consequently, the Board of Appeal correctly found that the contested goods and the retail and wholesale services covered by the earlier mark were similar to an average degree.
25      Next, it must be stated that the applicant has not put forward any other argument seeking to demonstrate that the conclusion reached by the Board of Appeal in paragraph 47 of the contested decision was incorrect.
26      Lastly, as regards the applicant’s argument seeking to challenge the Board of Appeal’s finding that the services at issue in Class 35 covered by the mark applied for and those in that same class covered by the earlier mark GOLDEN STORK were similar to varying degrees or identical in the light of the broad definition given to them, it must be observed, as EUIPO maintains, that that argument is lacking any foundation in law. As regards the services at issue in Class 35, it must be stated that the applicant does not explain why the ‘marketing and promotional services’ and the services of ‘information events relating to foodstuffs and beverages, in particular relating to alcoholic beverages, except beers, for sales purposes’ covered by the mark applied for should not be included in the ‘advertising’ services covered by the earlier mark. In those circumstances, those services must be regarded as being identical. In addition, the applicant also does not explain why it submits that ‘procurement services for others’ are similar to a low degree to the ‘business management’ services covered by the earlier mark. As regards the remaining services in Class 35, it merely maintains that ‘any congruence’ between those services is ‘irrelevant’, without, however, explaining why it submits that those services are not similar.
27      It follows that the Board of Appeal, in accordance with the case-law referred to in paragraph 20 above, did not err in finding, as EUIPO submits, that the goods and services at issue in Classes 33 and 35 covered by the mark applied for and by the earlier mark GOLDEN STORK were identical or similar to varying degrees.
The comparison of the marks at issue
28      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).
29      The Board of Appeal found that the marks at issue were visually and phonetically similar to an average degree inasmuch as the contested mark STORK was included in full in the earlier mark GOLDEN STORK. In addition, from a conceptual standpoint, it found, inter alia, that the marks at issue were not similar for the part of the relevant public which would understand the meaning of the word ‘golden’ and not that of the word ‘stork’.
30      The applicant submits that the marks at issue are completely different. From a visual standpoint, it submits, first, that the Board of Appeal failed to take account of the fact that the marks at issue were different on account of the number of words and letters of which they were composed and, second, that the fact that they shared the same word element ‘stork’ did not suffice to establish visual similarity between them. From a phonetic standpoint, it submits that the Board of Appeal erred in failing to take account of the differences in the pronunciation of the marks at issue on account of their respective number of syllables and the stress that will be placed on them. Furthermore, it maintains that the word element ‘stork’, which is common to both of the marks at issue, is not sufficient to conclude that there is a phonetic similarity between them.
31      EUIPO disputes the applicant’s arguments.
32      As a preliminary point, it should be observed that the applicant does not dispute the Board of Appeal’s finding in paragraphs 65 and 69 of the contested decision that the word element ‘stork’ common to the marks at issue is distinctive to an average degree and that the word element ‘golden’, of which the earlier mark consists, is of little distinctiveness, if any, for the part of the relevant public which will be able to understand its English meaning and is distinctive to an average degree for the part of the relevant public which will not grasp its meaning.
33      As regards the visual comparison, it must first of all be noted that the mark applied for, STORK, and the earlier mark, GOLDEN STORK, have in common the word element ‘stork’. In that regard, it is appropriate also to take into account the fact that the word element ‘stork’, which is the only element of the mark applied for, is entirely included in the earlier mark referred to above. According to case-law and as EUIPO submits, that fact alone and as a rule is liable to create both a strong visual and phonetic similarity between the marks at issue (see, to that effect, judgment of 8 June 2022, Polo Club Düsseldorf v EUIPO – Company Bridge and Life (POLO CLUB DÜSSELDORF EST. 1976), T‑355/21, not published, EU:T:2022:348, paragraph 45 and the case-law cited).
34      Consequently, the Board of Appeal did not err in finding, in paragraph 75 of the contested decision, that the marks at issue were visually similar to an average degree.
35      As regards the phonetic comparison, it must be noted that the marks at issue coincide in the pronunciation of the word element ‘stork’, so that the Board of Appeal did not err in finding, in paragraph 77 of the contested decision, that they were phonetically similar to an average degree.
36      As regards the conceptual comparison, it is not disputed that part of the relevant public is likely to understand the meaning of the word ‘golden’ without necessarily understanding that of the word ‘stork’. It is, furthermore, common ground between the parties that, for that part of the relevant public, the marks at issue are not conceptually similar.
37      It follows that the applicant is not justified in calling into question the Board of Appeal’s assessments relating to the comparison of the marks at issue.
The likelihood of confusion
38      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. 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).
39      The Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public, including where that public had a high level of attention and despite the lack of conceptual similarity for part of that public, taking account of the identity or similarity to varying degrees of the goods and services at issue and the average degree of visual and phonetic similarity.
40      The applicant submits that there is no likelihood of confusion between the marks at issue given their visual, phonetic and conceptual differences and the fact that the goods and services at issue are not similar, so that the relevant public will not be able to believe that they come from the same undertaking.
41      EUIPO disputes the applicant’s arguments.
42      In the present case, it should be observed that the marks at issue are not conceptually similar on the sole ground that the word ‘golden’ in the earlier mark is likely to convey a laudatory message in respect of the goods at issue, which is not disputed by the applicant, and that the mark applied for does not convey any concept. In those circumstances, in the light of the fact that the word ‘golden’ is only weakly distinctive with regard to the goods at issue, it should be held that the lack of conceptual similarity in the present case does not, in itself, preclude the existence of a likelihood of confusion.
43      Furthermore, as already stated above, the Board of Appeal was fully entitled to find that the goods and services at issue were identical or similar to varying degrees and that there was an average degree of visual and phonetic similarity between the signs at issue. In addition, the applicant does not dispute that the earlier mark has an average degree of distinctiveness.
44      In those circumstances, the relevant public, including where it has a high level of attention, will be likely to believe that the goods and services at issue come from the same undertaking, so that the Board of Appeal correctly found, in paragraph 91 of the contested decision, that there was a likelihood of confusion in respect of those goods and services in the relevant Slovenian territory.
45      In the light of all of the foregoing considerations, the single plea in law relied on by the applicant in support of the form of order which it seeks must be rejected, and the action must therefore be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
46      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.
47      Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is held. In the absence of a hearing, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1.      The action is dismissed.
2.      Each party shall bear its own costs.
Luxembourg, 6 June 2023.
V. Di Bucci
K. Kowalik-Bańczyk
Registrar
President
*      Language of the case: English.