JUDGMENT OF THE GENERAL COURT (Third Chamber)
29 January 2020 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark ENCANTO — Earlier national word mark BELCANTO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑239/19,
Vinos de Arganza, SL, established in Toral de los Vados (Spain), represented by L. Broschat García, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Nordbrand Nordhausen GmbH, established in Nordhausen (Germany),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 17 January 2019 (Case R 392/2018-1), relating to opposition proceedings between Nordbrand Nordhausen and Vinos de Arganza,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins (Rapporteur), President, V. Kreuschitz and G. Steinfatt, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 April 2019,
having regard to the response lodged at the Court Registry on 1 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 15 June 2016, the applicant, Vinos de Arganza, SL, 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 following figurative sign:
3        The goods in respect of which registration was sought are in Class 33 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: ‘Wine’.
4        The trade mark application was published in European Union Trade Marks Bulletin No 2016/150 of 11 August 2016.
5        On 19 August 2016, the other party to the proceedings before the Board of Appeal of EUIPO, Nordbrand Nordhausen GmbH, filed a notice of opposition pursuant to 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 referred to in paragraph 3 above.
6        The opposition was based on the earlier German word mark BELCANTO, which was applied for on 21 November 2014 and registered on 5 February 2015 under number 30 2014 071 88. The goods in respect of which the earlier mark was registered are in Class 33 and correspond to the following description: ‘Alcoholic beverages (except beers)’.
7        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).
8        On 20 December 2017, the Opposition Division upheld the opposition, finding that there was a likelihood of confusion between the marks at issue.
9        On 20 February 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.
10      By decision of 17 January 2019 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.
11      The Board of Appeal, first of all, held that the relevant public is the general public in Germany with an average level of attention (paragraph 14 of the contested decision). Next, it found that the marks at issue have at least a low degree of visual similarity (paragraphs 18 and 19 of the contested decision), that they are phonetically similar (paragraphs 21 and 22 of the contested decision) and that their conceptual comparison is neutral (paragraphs 24 to 28 of the contested decision). In addition, it took the view that the phonetic similarities are of particular importance because the goods in question are generally ordered orally. It considered that, on the basis of the low degree of visual similarity and the higher degree of phonetic similarity, the impression of similarity will therefore prevail, especially since the goods are identical and the relevant public’s level of attention is no higher than average (paragraph 32 of the contested decision). Overall, it found that there is therefore a likelihood of confusion between the marks (paragraphs 31 to 33 of the contested decision).
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the opposition and allow registration of the mark applied for;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      It support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. Principally, the applicant challenges the Board of Appeal’s findings relating to the visual, phonetic and conceptual comparisons of the marks at issue and the existence of a likelihood of confusion between the marks.
15      EUIPO disputes the applicant’s arguments.
16      As a preliminary point, it should be noted that, although the Board of Appeal states in the contested decision that it is applying the provisions of Regulation 2017/1001, those references should be understood, as regards the substantive rules, as in fact relating to the identical provisions of Regulation No 207/2009.
17      Under Article 8(1)(b) of Regulation No 207/2009, 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 mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘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.
18      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 perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 26 June 2014, Basic v OHIM — Repsol YPF (basic), T‑372/11, EU:T:2014:585, paragraph 21 and the case-law cited).
19      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 26 June 2014, basic, T‑372/11, EU:T:2014:585, paragraph 22 and the case-law cited).
The relevant public
20      According to case-law, 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).
21      In the present case, the Board of Appeal took the view that, since the earlier mark was registered in Germany, the relevant public is the general public in Germany and that it displays an average level of attention. There is no reason to call into question that assessment, which, moreover, is not disputed by the applicant.
The comparison of the goods
22      According to settled case-law, in assessing the similarity of the goods or services in question, 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).
23      In the present case, the Board of Appeal found that the goods covered by the mark applied for and by the earlier mark are identical. There is no reason to call into question that assessment, which, moreover, is not disputed by the applicant.
The comparison of the signs
24      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).
25      At issue in the present case are the mark applied for, which is the figurative sign ENCANTO (see paragraph 2 above), and the earlier mark, which is the word sign BELCANTO.
26      In that regard, it should be noted, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
27      Next, the presence in each of the marks at issue of several letters in the same order may be of some importance in the assessment of the visual similarity between them (see judgment of 24 October 2019, ZPC Flis v EUIPO — Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 93 and the case-law cited).
28      As regards the visual comparison of the signs, the Board of Appeal held, in paragraph 18 of the contested decision, that, first, the signs at issue have at least a low degree of similarity since they coincide in the letters ‘E’, ‘C’, ‘A’, ‘N’, ‘T’ and ‘O’ and, in the light of the fact that six of the seven letters of the word element of the mark applied for are all contained in the earlier word mark, the only difference, in respect of the first part of the signs, is not sufficient to cancel out the similarity based on the coincidence of the letters ‘E’, ‘C’, ‘A’, ‘N’, ‘T’ and ‘O’. Secondly, the figurative element of the mark applied for is decorative and the typography of the ‘encanto’ element is not particularly distinctive.
29      Contrary to what the applicant asserts, that finding is free of error. The only difference in respect of the first part of the signs at issue is not sufficient to cancel out the similarity based on the coincidence of the letters ‘E’, ‘C’, ‘A’, ‘N’, ‘T’ and ‘O’.
30      As regards the impact of the figurative element and typography of the mark applied for, it should be noted that, where a trade mark is made up of word and figurative elements, the former are, as a rule, more distinctive than the latter, as the average consumer will more readily refer to the goods in question by citing the name rather than by describing the figurative element of the mark (see judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 61 and the case-law cited). In the light of that case-law and the characteristics of the figurative element of the mark applied for, the Board of Appeal was correct to find that that element is liable to be perceived by the consumer essentially as a decorative element, and not as an element indicating the commercial origin of the goods. The same applies to the typography of the word element of the mark applied for, which is not particularly distinctive.
31      In addition, the applicant’s assertion that the Board of Appeal was wrong to rely on the judgment of 4 July 2014, Advance Magazine Publishers v OHIM — Montres Tudor (GLAMOUR) (T‑1/13, not published, EU:T:2014:615), is based on an erroneous reading of the contested decision, since it is clear from paragraph 19 of the contested decision that the Board of Appeal only cited that judgment to illustrate that it is not always the case that the first part of a word mark attracts the consumer’s attention more than the parts which follow. Contrary to what the applicant submits, the Board of Appeal did not draw any analogy between the marks at issue in the present case and those discussed in that judgment. Furthermore, the argument that the first part of a word mark attracts the consumer’s attention more than the parts which follow cannot cast doubt on the principle, already set out in paragraph 24 above, that the assessment of the similarity of the marks must take account of the overall impression that they create, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 14 April 2011, Lancôme v OHIM — Focus Magazin Verlag (ACNO FOCUS), T‑466/08, EU:T:2011:182, paragraph 61 and the case-law cited). It follows that the applicant’s argument that the difference between the first part of the signs at issue is more important than the similarity of the subsequent parts cannot succeed since the Board of Appeal correctly assessed the overall impression of the signs.
32      Accordingly, the Board of Appeal was correct to find that the signs at issue have at least a low degree of visual similarity.
33      As regards the phonetic comparison of the signs, the Board of Appeal held, in paragraphs 21 and 22 of the contested decision, that, overall, the signs at issue are similar, since the letters they share make them similar in terms of rhythm and intonation and the difference in relation to the first syllables does not have a significant impact on the overall phonetic impression.
34      The applicant’s arguments cannot call that finding into question. Whilst the applicant submits that the signs at issue are phonetically different because of the difference between their first syllables ‘bel’ and ‘en’, the fact remains that they coincide in the syllables ‘can’ and ‘to’ and the sound ‘e’ in the first syllable, with the result that there is a phonetic similarity.
35      Nor can the applicant succeed in its argument that the use of the word element ‘canto’ is so frequent in Germany that, from a visual and phonetic standpoint, consumers will pay less attention to it than to the other elements of the signs at issue. In support of that argument, the applicant provided EUIPO with lists of trade marks registered in Germany. It should be noted that, pursuant to case-law, lists of registered trade marks reflect only their entry in a national trade marks register and not the situation in the market (see judgment of 23 March 2017, Vignerons de la Méditerranée v EUIPO — Bodegas Grupo Yllera (LE VAL FRANCE), T‑216/16, not published, EU:T:2017:201, paragraph 44 and the case-law cited). The applicant also submitted a list, taken from a United States website, of 65 wines which have a name that includes the element ‘canto’. However, that also fails to demonstrate the situation in the relevant market. It is clear that this evidence cannot establish the applicant’s premiss and, consequently, the argument has no factual basis.
36      Finally, as regards the applicant’s arguments concerning a EUIPO decision in which EUIPO took the view that a difference between several letters was sufficient to distinguish the signs at issue, it is sufficient to note that it is clear from settled case-law that decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called on to 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, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).
37      The Board of Appeal was therefore correct to find that the signs at issue are phonetically similar.
38      As regards the conceptual comparison of the signs, the Board of Appeal held, in paragraphs 26 and 27 of the contested decision, that it is neutral, since, first, the relevant public perceives the term ‘belcanto’, which constitutes the earlier mark, as a fanciful term and, secondly, the term ‘encanto’, which forms part of the mark applied for, is meaningless.
39      The applicant does not dispute that the mark applied for is meaningless, but submits that the relevant public understands the term ‘belcanto’ to be associated with Italian opera in the early decades of the nineteenth century, given that an online dictionary defines the term as referring to ‘virtuoso Italian singing with a particular emphasis on the beauty of sound and melody’. Thus, according to the applicant, the Board of Appeal should have acknowledged that the conceptual differences between the signs at issue counteract the phonetic and visual similarities between them.
40      It should be noted that, according to case-law, a conceptual comparison of the signs at issue is possible only where at least one of the signs conveys a concept which is understood by a significant part of the relevant public (see, to that effect, judgments of 9 March 2012, EyeSense v OHIM — Osypka Medical (ISENSE), T‑207/11, not published, EU:T:2012:121, paragraph 34, and of 22 November 2018, The Vianel Group v EUIPO — Viania Dessous (VIANEL), T‑724/17, not published, EU:T:2018:825, paragraphs 41 and 43).
41      Contrary to what is required by the case-law, the applicant does not demonstrate that the earlier mark conveys a concept which is understood by a significant part of the relevant public.
42      First, the fact that a term appears in a dictionary does not in itself mean that it is understood by a significant part of the relevant public. It is necessary to examine the meaning of the term and to determine whether a significant part of the relevant public would be likely to understand it. In the present case, the information provided by the applicant indicates that the term ‘belcanto’ refers to a musical genre in 19th century Italian opera. It is clear that this is a specialised field and, consequently, it is not established that the relevant public is aware of the term.
43      Secondly, the other evidence submitted by the applicant indicates that (i) a number of musical performances in the ‘belcanto’ style were produced, inter alia, in Germany in 2018, (ii) ‘belcanto’ singing classes were offered in 2018 in Ireland, Sweden and the United States, (iii) there are a number of musical groups in Germany and the United States dedicated to this genre of music, and (iv) several documentaries have been devoted to ‘belcanto’. That evidence confirms the validity of the Board of Appeal’s finding that a significant part of the public in Germany, not being vocal art students or opera enthusiasts, will not understand the term ‘belcanto’.
44      Thirdly, with regard to the applicant’s argument that the Board of Appeal failed properly to take into account the impact of the film entitled ‘Bel Canto’ on how aware the relevant public is of the term ‘belcanto’, it should be noted that that film was released in Germany on 22 February 2019, only on DVD and Blu-ray. The Board of Appeal cannot be criticised for not having taken it into account in the contested decision of 17 January 2019. For the same reason, the admissibility of that evidence is called into question given that the legality of a measure of the European Union falls to be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted (see, to that effect, judgment of 9 July 2010, Exalation v OHIM (Vektor-Lycopin), T‑85/08, EU:T:2010:303, paragraph 28 and the case-law cited).
45      It follows that the Board of Appeal was correct to find that the conceptual comparison of the signs is neutral and, therefore, the applicant’s argument that the conceptual differences between the signs at issue counteract the phonetic and visual similarities between them also cannot succeed.
The likelihood of confusion
46      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, 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 74).
47      In the present case, in paragraphs 31 to 33 of the contested decision, the Board of Appeal examined whether there is a likelihood of confusion between the marks at issue. It took into account the fact that the goods are identical, the relevant public’s average level of attention, the fact that the signs are similar phonetically and, to a lesser extent, visually, the fact that the goods in question are generally consumed after being ordered orally, the normal inherent distinctive character of the earlier mark, and the fact that consumers must rely on their imperfect recollection of a trade mark. It also observed that the phonetic similarities are of particular importance because the goods in question are often ordered orally in noisy environments, which diminishes the importance of any visual differences and increases the possibility of confusion on account of phonetic similarities. In addition, when served in those public places, customers often receive their drinks in a glass and not in the drinks’ specific packaging. Lastly, the Board of Appeal concluded that, overall, there is a likelihood of confusion.
48      The applicant claims that the Board of Appeal overestimated the impact of the phonetic similarity of the signs at issue, because the relevant public normally has the opportunity to inspect the goods in question, and therefore their labels, visually, whether in restaurants or in grocery shops, retail stores and speciality shops.
49      In that regard, it should be noted that, according to established case-law, even if a ground proves to be erroneous, that cannot justify the annulment of the measure which it affects if it is superfluous and if other grounds exist which are sufficient to justify the measure (see, to that effect, judgments of 7 April 2011, Greece v Commission, C‑321/09 P, not published, EU:C:2011:218, paragraph 61 and the case-law cited, and of 20 September 2012, France v Commission, T‑154/10, EU:T:2012:452, paragraph 99). It is also settled case-law that complaints directed against grounds included in a decision purely for the sake of completeness cannot lead to the decision being annulled and are therefore ineffective (see, to that effect, order of 8 April 2008, Saint-Gobain Glass Deutschland v Commission, C‑503/07 P, EU:C:2008:207, paragraph 62; and judgments of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 211, and of 23 May 2007, Procter & Gamble v OHIM (Square white tablets with coloured floral design), T‑241/05, T‑262/05 to T‑264/05, T‑346/05, T‑347/05 and T‑29/06 to T‑31/06, EU:T:2007:151, paragraph 89).
50      In the present case, it follows from the foregoing considerations that the goods covered by the mark applied for and by the earlier mark are identical (see paragraph 23 above), that the signs at issue have at least a low degree of visual similarity (see paragraphs 26 to 32 above) and are phonetically similar (see paragraphs 33 to 37 above), and that, because the conceptual comparison is neutral, there are no conceptual differences between the signs which counteract the phonetic and visual similarities (see paragraphs 38 to 45).
51      In those circumstances, the Board of Appeal was justified in concluding that, overall, there is a likelihood of confusion in the mind of the relevant public in Germany with an average level of attention (see paragraph 21 above), regardless of whether or not the phonetic aspect is of particular importance for the goods in question. That ground is therefore superfluous. It follows that the applicant’s arguments seeking to challenge it must be rejected, since they are, in the present case, ineffective.
52      Since the single plea in law raised by the applicant in support of the form of order sought is unfounded, the action must be dismissed in its entirety, without the need to rule on the admissibility of the heads of claim requesting the Court to reject the opposition and allow registration of the mark applied for.
Costs
53      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. 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 Vinos de Arganza, SL, to pay the costs.
Collins
Kreuschitz
Steinfatt
Delivered in open court in Luxembourg on 29 January 2020.
E. Coulon
A. M. Collins
Registrar
President
*      Language of the case: English.