JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
20 March 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark PATAPOUF – Earlier EU word mark PATA NEGRA – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑540/23,
Sandhold BV, established in Leiden (Netherlands), represented by A. Spiegeler, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Grupo de Bodegas Vinartis, SA, established in Madrid (Spain),
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere (Rapporteur) and K. Kecsmár, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Sandhold BV, seeks partial annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 June 2023 (Case R 2553/2022-2) (‘the contested decision’).
Background to the dispute
2        On 1 April 2021, the applicant filed an application for registration of an EU trade mark in respect of the word sign PATAPOUF.
3        The goods in respect of which registration of the trade mark was sought are in, inter alia, 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; pre-mixed alcoholic beverages; alcoholic beverages containing fruit; distilled beverages; spirits [beverages]; alcoholic beverages (except beer); alcoholic energy drinks; extracts of spiritous liquors’.
4        On 15 July 2021, the opponent, Grupo de Bodegas Vinartis, SA, filed a notice of opposition to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.
5        The opposition was based, inter alia, on the earlier EU word mark PATA NEGRA, filed on 23 June 1999 and registered on 15 October 2002 under No 1218213, covering ‘alcoholic beverages (except beers)’ in Class 33.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(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        By decision of 25 October 2022, the Opposition Division rejected the opposition.
8        On 22 December 2022, the opponent filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, first, the Board of Appeal found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for ‘wine; pre-mixed alcoholic beverages; alcoholic beverages containing fruit; distilled beverages; spirits [beverages]; alcoholic beverages (except beers); alcoholic energy drinks’ and, consequently, annulled the decision of the Opposition Division in so far as it had rejected the opposition in respect of those goods. Second, it dismissed the appeal as regards ‘extracts of spiritous liquors’.
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 in the event a hearing is held.
Law
12      In support of the action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
The scope of the action
13      It should be noted that, by its first head of claim, the applicant seeks the annulment of the contested decision in its entirety.
14      Under Article 72(4) of Regulation 2017/1001, an action before the General Court against a decision of a Board of Appeal of EUIPO is open to any party to the proceedings before the Board of Appeal adversely affected by its decision.
15      It must be borne in mind that the Board of Appeal partially dismissed the opponent’s appeal by rejecting the opposition for the goods ‘extracts of spiritous liquors’.
16      Therefore, it must be held that, by its action, the applicant seeks only the annulment of the contested decision in so far as it upheld the opposition in respect of ‘wine; pre-mixed alcoholic beverages; alcoholic beverages containing fruit; distilled beverages; spirits [beverages]; alcoholic beverages (except beers); alcoholic energy drinks’, and that its first head of claim must be interpreted as an application for partial annulment of the contested decision.
Admissibility of evidence submitted for the first time before the Court
17      EUIPO contends that the documents constituting Annexes A.1 and A.2 to the application were not produced during the proceedings before the Board of Appeal and are therefore inadmissible.
18      The purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. In the context of that regulation, pursuant to Article 95 thereof, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited).
19      It is therefore not the Court’s function to re-examine the factual circumstances in the light of evidence submitted for the first time before it. To allow the examination of those new pleas or such evidence would be contrary to Article 188 of the Rules of Procedure of the Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible, without there being any need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
20      It is sufficient to note that Annex A.1 to the application, reproducing a chart relating to the languages studied by pupils of the European Union, and Annex A.2, including screenshots of websites selling Pata Negra ham, were not produced during the proceedings before EUIPO. It follows that the evidence submitted for the first time before the Court as Annexes A.1 and A.2 to the application must be declared inadmissible.
The single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
21      The applicant raises, in essence, three complaints, the first alleging that the Board of Appeal erred in the definition of
the relevant public, the second alleging that the Board of Appeal refused to carry out a conceptual comparison of the signs at issue and to take into account the high degree of recognition of the goods associated with the earlier mark, and the third alleging an incorrect assessment of the similarity of the signs at issue.
22      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.
23      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).
24      In the contested decision, the Board of Appeal found that the goods ‘Wine; pre-mixed alcoholic beverages; alcoholic beverages containing fruit; distilled beverages; spirits [beverages]; alcoholic beverages (except beers); alcoholic energy drinks’ designated by the mark applied for and the goods covered by the earlier mark were identical.
25      The applicant does not dispute that assessment.
26      The Board of Appeal stated that, since the earlier mark was an EU trade mark, the relevant territory for assessing the likelihood of confusion was the entirety of the European Union. It found that the relevant public was the general public with an average level of attention.
27      As regards the comparison of the signs at issue, the Board of Appeal noted that the earlier mark PATA NEGRA had a meaning only in Spanish and Portuguese and that the mark applied for,
PATAPOUF,
had a meaning only in French. Therefore, it found that the comparison of the signs had to be carried out by excluding the French-, Spanish- and Portuguese-speaking parts of the relevant public and taking into account the part of the public for which the marks at issue had no meaning and were distinctive to a normal degree. It took the view that, consequently, it was not possible to make a conceptual comparison.
28      Next, the Board of Appeal stated that the signs at issue coincided in the first element ‘pata’ of the earlier sign, which constituted the initial part of the sign applied for, and that they differed in the second element ‘negra’ of the earlier sign and the final letters ‘p’, ‘o’, ‘u’ and ‘f’ of the sign applied for. It stated that the signs at issue were almost the same length, namely eight and nine letters respectively. It concluded that the signs at issue were visually and phonetically similar to an average degree.
29      The Board of Appeal noted that the opponent had not claimed that the earlier mark had a highly distinctive character due to its use or reputation and that that mark had no meaning for the goods at issue from the perspective of the part of the public taken into consideration. It found that the earlier mark therefore had a normal degree of inherent distinctive character.
30      Consequently, the Board of Appeal concluded that, for a significant part of the relevant public for which the signs at issue had no meaning, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 as regards the goods referred to in paragraph 24 above.
The first complaint, alleging an error in the definition of the relevant public
31      In the first place, the applicant submits that, since the opposition was also based on an earlier Spanish mark, the Board of Appeal could not exclude the Spanish-speaking part of the relevant public.
32      In that regard, it is sufficient to note that the Board of Appeal found that there was a likelihood of confusion and upheld the opposition in respect of the goods referred to in paragraph 24 above by taking into account the earlier EU trade mark relied on by the opponent. It follows that, as regards those goods, the examination of the opposition with regard to the earlier national mark also relied on by the opponent was not necessary and that the public targeted by that mark is not relevant.
33      In the second place, the applicant submits that the Board of Appeal, in finding that part of the relevant public would not understand the meaning of the signs at issue and by excluding the French-, Spanish- and Portuguese-speaking parts of that public, relied on an insignificant or non-representative part of that public and that it was wrong not to carry out a conceptual comparison of the signs.
34      It submits that the French-, Spanish- or Portuguese-speaking parts of the relevant public represent a substantial part of the European Union, given that French, Spanish and Portuguese are the official languages of five EU countries and that the first two are commonly studied by pupils of the European Union. According to the applicant, the Board of Appeal should have found that the whole of the relevant public was capable of understanding those languages.
35      First, it should be noted that, as regards knowledge of a language, it can be assumed only as regards the native language in that territory. Linguistic knowledge of a foreign language may exceptionally be regarded as a well-known fact and must, as to the remainder, be put forward and proved by the party on whom the burden of proof lies (see judgment of 20 October 2021, Roller v EUIPO – Flex Equipos de Descanso (DORMILLO), T‑596/20, not published, EU:T:2021:721, paragraph 82 and the case-law cited).
36      The applicant’s argument is not capable of establishing that French, Spanish and Portuguese would be understood by the whole of the general public of the European Union, nor, a fortiori, of demonstrating that it would understand the meaning of the signs at issue.
37      Secondly, 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 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).
38      In that regard, it should be borne in mind that, where, as in the present case, the earlier mark relied on in support of an opposition is an EU trade mark, Article 8(1)(b) of Regulation 2017/1001 does not require, for the mark applied for to be refused registration, that a likelihood of confusion must exist in all Member States and in all linguistic areas of the European Union. In fact, the unitary character of the EU trade mark means that an earlier EU trade mark can be relied on in opposition proceedings against any application for registration of an EU trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 18 September 2008, Armacell v OHIM, C‑514/06 P, not published, EU:C:2008:511, paragraphs 56 and 57; see, also, judgment of 16 January 2018, Sun Media v EUIPO – Meta4 Spain (METAPORN), T‑273/16, EU:T:2018:2, paragraph 86
(not published) and the case-law cited).
39      According to the case-law, a finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration (see judgment of 7 June 2023, Brooks England v EUIPO – Brooks Sports (BROOKS ENGLAND), T‑63/22, not published, EU:T:2023:312, paragraph 76 and the case-law cited).
40      It follows that, contrary to what the applicant claims, it is not necessary for the likelihood of confusion to be found in a significant or representative part of the European Union. It is sufficient that the part of the relevant public taken into account by the Board of Appeal in order to assess whether there is a likelihood of confusion is not minimal or negligible.
41      In that regard, the existence of a likelihood of confusion for a non-negligible part of the relevant public which does not perceive the conceptual difference between the marks at issue because of its lack of command of a certain language is sufficient for registration of the mark applied for to be refused (see judgment of 23 September 2020, Brillux v EUIPO – Synthesa Chemie (Freude an Farbe), T‑401/19, not published, EU:T:2020:427, paragraph 27 and the case-law cited).
42      It is sufficient to note that the part of the relevant public taken into account by the Board of Appeal in respect of which it found that there was a likelihood of confusion, namely consumers in the European Union who did not speak French, Spanish or Portuguese, cannot be regarded as representing a negligible part of the relevant public.
43      Thus, the applicant’s argument that the French-, Spanish- or Portuguese-speaking parts of the relevant public which were not taken into account by the Board of Appeal represent a substantial part of the European Union is ineffective.
44      In the third place, the applicant submits that, even if the part of the relevant public taken into account by the Board of Appeal did not understand French, Spanish and Portuguese, many EU languages have a translation that is quite close to the terms ‘pata’ and ‘negra’. It claims that, in view of those similarities and the linguistic skills of the average consumer in the European Union, a significant part of the relevant public is able to understand the meaning of the terms ‘pata’ and ‘negra’, which allows a conceptual comparison of the signs. Thus, the Board of Appeal’s reasoning does not concern the majority of average consumers in the European Union, but only a small proportion of them.
45      First, it should be noted that the applicant asserts that the word ‘pata’ is translated into Greek as ‘podi’ and in Dutch as ‘poot’ and that the word ‘negra’ is translated into Italian as ‘nera’ and in Romanian as ‘negru’. However, none of those examples shows that the expression ‘pata negra’ has a sufficiently close translation into another EU language for a consumer who is neither Spanish- nor Portuguese-speaking to be able to understand its meaning.
46      Second, as EUIPO notes, the applicant merely refers to translations of the expression ‘pata negra’ into Italian, Greek, Dutch and Romanian, without referring to the other languages of the European Union such as German, Polish, Czech, Danish or Swedish. That argument does not therefore, in any event, make it possible to establish that the part of the public in the European Union which is unable to understand the meaning of the expression ‘pata negra’ and in respect of which the Board of Appeal concluded that there was a likelihood of confusion would constitute a negligible part of the relevant public.
47      It follows from the foregoing that the applicant has not established that the relevant public which is not French-, Spanish- or Portuguese-speaking would be able to understand the meaning of the signs at issue or that the Board of Appeal wrongly based its assessment of the likelihood of confusion on the part of the relevant public for which the signs at issue have no meaning.
48      Where neither of the signs at issue has any meaning, taken as a whole, it must be held that a conceptual comparison is not possible (see judgments of 6 April 2022, Agora Invest v EUIPO – Transportes Maquinaria y Obras (TRAMOSA), T‑219/21, not published, EU:T:2022:219, paragraph 117 and the case-law cited, and of 12 July 2023, Innovaciones Cosmético Farmacéuticas v EUIPO – Benito Oliver (th pharma), T‑27/22, not published, EU:T:2023:390, paragraph 125 and the case-law cited).
49      Therefore, contrary to what the applicant claims, given that the signs at issue had no meaning for the part of the relevant public with regard to which the Board of Appeal assessed the existence of a likelihood of confusion, the Board of Appeal was entitled to find that a conceptual comparison of the signs at issue was not possible.
50      Accordingly, the first complaint must be rejected.
The second complaint, alleging a failure to proceed to the conceptual comparison ofthe signs at issue and the failure to take into account the high degree of recognition of the product associated with the earlier mark
51      The applicant asserts that the Board of Appeal underestimated the high degree of reputation of the name ‘pata negra’ constituting the earlier mark, the meaning of which the public will be able to understand immediately and to distinguish it from the mark applied for, PATAPOUF. According to the applicant, the consumer will associate the designation ‘pata negra’ with a well-known type of high-quality Spanish ham and any product bearing the sign PATA NEGRA with high-quality Spanish charcuterie. It maintains that the immediate recognition by the relevant public of the designation ‘pata negra’ as evoking Spanish ham creates a conceptual difference to the sign applied for such as to counteract the visual and phonetic similarities.
52      The applicant relies on the case-law according to which the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract visual and phonetic similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20; see, also, judgment of 17 September 2020, EUIPO v Messi Cuccittini, C‑449/18 P and C‑474/18 P, not published, EU:C:2020:722, paragraph 85 and the case-law cited).
53      It should be noted that the conditions set out in that case-law are not satisfied in the present case.
54      First, it must be borne in mind that it is apparent from the analysis of the first complaint that the Board of Appeal was right to rely on the part of the relevant public for which the signs at issue had no meaning and that it was fully entitled to find that, therefore, a conceptual comparison was not possible.
55      Second, the applicant has not shown that the expression ‘pata negra’ has a clear and specific meaning capable of being grasped directly by a substantial part of the relevant public.
56      Admittedly, it cannot be ruled out, as the applicant submits, that part of the relevant public might recognise a name for Iberian ham in the earlier mark. However, the applicant has not put forward any evidence such as to show that that designation is known by a substantial part of that public.
57      In that regard, it must be borne in mind that Annex A.2, relied on by the applicant in support of that assertion, was rejected as inadmissible for the reasons set out in paragraphs 18 to 20 above. In any event, that annex contains only seven screenshots of websites selling Pata Negra Iberian ham in six EU countries which, at most, show that ham is sold in some EU Member States under the name ‘pata negra’ by a limited number of undertakings. That annex cannot therefore, in any event, establish that the expression ‘pata negra’ has a clear and specific meaning for a substantial part of the public which does not speak Spanish or Portuguese.
58      It follows that, in the absence of conceptual differences between the signs at issue, which have no clear and specific meaning for the relevant public, the applicant’s argument concerning the neutralisation of the visual and phonetic similarities must be rejected.
59      The second complaint must therefore be rejected.
The third complaint, alleging an incorrect assessment of the similarity of the signs at issue
60      The applicant claims that the degrees of visual, phonetic and conceptual similarity are low or very low on account of the differences in the endings of the signs at issue. Visually, it maintains that, since the signs at issue do not have the same number of letters or words, the similarity is very low. Phonetically, the rhythm and pronunciation of the sign applied for are entirely different from those of the earlier sign and the signs are similar to a low degree. Conceptually, the signs at issue have no common meaning, and the applicant notes that the French-speaking part of the relevant public and other parts of that public will understand the meaning of the word ‘patapouf’. According to the applicant, the Board of Appeal was therefore wrong to conclude that there was a likelihood of confusion.
61      It should be noted that the sign applied for and the earlier sign consist of eight and nine letters respectively, that they share the group of letters ‘pata’, forming the first four letters of the sign applied for and the first word of the earlier sign, and that they differ in their endings ‘pouf’ and ‘negra’.
62      Taking those factors into account, the Board of Appeal concluded that there was an average degree of visual and phonetic similarity.
63      First, from a visual point of view, the applicant merely recalls those various elements in order to claim that it results in a very low degree of similarity, which is not sufficient to call into question the Board of Appeal’s assessment.
64      Second, from a phonetic point of view, the applicant cannot claim that the fact that the earlier sign contains one additional syllable and a different ending from the sign applied for leads to an entirely different pronunciation of the signs. It must be borne in mind that the earlier sign and the sign applied for consist of four and three syllables respectively and that they share their first two syllables, ‘pa’ and ‘ta’. The applicant’s argument does not call into question the Board of Appeal’s assessment that the signs at issue are similar to an average degree.
65      From a conceptual standpoint, it is sufficient to recall that the Board of Appeal took into consideration the part of the relevant public for which the signs at issue had no meaning and that a comparison from that standpoint was not possible.
66      The applicant’s assertion that parts of the relevant public other than the French-speaking part would be able to understand the meaning of the word ‘patapouf’ is unsubstantiated.
67      Consequently, the applicant’s arguments are not capable of calling into question the Board of Appeal’s assessment concerning the similarity of the signs at issue.
68      Therefore, the third complaint must be rejected.
69      In conclusion, it must be borne in mind that the Board of Appeal found that the goods at issue were identical, that the relevant public consisted of the general public with an average level of attention and that the earlier mark had a normal degree of distinctiveness, which the applicant does not dispute. Moreover, the applicant has not established that the Board of Appeal erred in finding, first, that the signs at issue were visually and phonetically similar to an average degree and, second, that a conceptual comparison was not possible for the part of the relevant public which did not speak French, Spanish or Portuguese. It follows that, as regards the goods at issue, the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
70      It follows that the single plea in law must be rejected and, therefore, the action must be dismissed.
Costs
71      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
72      Although the applicant has been unsuccessful, EUIPO has applied for costs to be awarded against it only in the event a hearing is convened. As no hearing has taken place, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Kornezov
De Baere
Kecsmár
Delivered in open court in Luxembourg on 20 March 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.