JUDGMENT OF THE GENERAL COURT (Third Chamber)
23 July 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark The King of Soho – Earlier EU and national word marks SOHO – Relative ground for refusal – Article 8(1)(b) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 )
In Case T‑563/23,
Pernod Ricard, established in Paris (France), represented by T. de Haan and S. Vandezande, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
West End Drinks Ltd, established in London (United Kingdom), represented by J.‑C. Rebling, lawyer,
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl, President, I. Nõmm (Rapporteur) and G. Steinfatt, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 9 April 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Pernod Ricard, seeks the alteration or annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 June 2023 (Case R 1380/2022‑5) (‘the contested decision’).
Background to the dispute
2        On 18 July 2018, West End Drinks Ltd filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), in respect of the following figurative sign:
3        The mark applied for covered goods 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, corresponding to the following description: ‘Gin; vodka’.
4        On 11 December 2018, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the following earlier rights:
–        the earlier EU word mark SOHO, filed on 29 September 2005 and registered on 6 October 2006 under No 4 660 494, in respect of ‘alcoholic beverages (except beers), namely liqueurs and prepared wine cocktails’ in Class 33;
–        the earlier French word mark SOHO, filed and registered on 16 February 1987 under No 1 394 356, in respect of ‘spirits, liqueurs and notably cocktails and cocktail bases’ 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        On 2 June 2022, the Opposition Division upheld the opposition.
8        On 28 July 2022, West End Drinks filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        On 19 June 2023, the Fifth Board of Appeal, by the contested decision, upheld the appeal and rejected the opposition in its entirety.
10      On 15 November 2023, the Fifth Board of Appeal adopted a decision correcting the decision of 19 June 2023 pursuant to Article 102 of Regulation 2017/1001.
11      By a judgment of 20 November 2024, Pernod Ricard v EUIPO – West End Drinks (The King of Soho) (T‑13/24, not published, EU:T:2024:846), the Court annulled in part the decision of 15 November 2023 by deleting paragraph 45 of the contested decision and amending paragraphs 95, 98 and 107 of that decision.
12      By a measure of organisation of procedure of 27 November 2024, the Court invited the applicant and EUIPO to submit their observations on the effects to be drawn from the judgment of 20 November 2024, The King of Soho (T‑13/24, not published, EU:T:2024:846), which they did on 6 and 9 December 2024 respectively.
Forms of order sought
13      The applicant claims that the Court should:
–        alter the contested decision;
–        in the alternative, annul the contested decision;
–        order EUIPO to pay the costs, including those incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
14      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
15      It should be borne in mind that the applicant seeks, primarily, alteration of the contested decision and that it is only in the alternative that it sought its annulment.
16      In that regard, the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by that Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72, and of 5 June 2024, Supermac’s v EUIPO – McDonald’s International Property (BIG MAC), T‑58/23, not published, EU:T:2024:360, paragraph 108).
17      Accordingly, it is necessary to analyse the pleas in law put forward by the applicant and to examine, following that analysis, whether it is possible to alter the decision in accordance with the case-law cited in paragraph 16 above.
18      In support of its action, the applicant relies, in essence, on two pleas in law, alleging infringement, first, of Article 8(1)(b) of Regulation 2017/1001 and, secondly, of Article 94(1) of that regulation and of Article 41(1) and (2) of the Charter of Fundamental Rights of the European Union.
19      The Court considers it appropriate to examine the second plea first. In support of that plea, the applicant asserts, first, that the reasoning of the contested decision is vitiated by multiple contradictions, secondly, that the Board of Appeal distorted the content of the judgment of 28 April 2021, West End Drinks v EUIPO – Pernod Ricard (The King of SOHO) (T‑31/20, not published, EU:T:2021:217), and, thirdly, that it referred to misleading citations of irrelevant case-law.
20      EUIPO disputes the applicant’s arguments, contending that, despite the errors in the contested decision, the applicant is informed to the requisite legal standard of the underlying reasoning of that decision and that that statement of reasons enables the Court to carry out an effective judicial review.
21      The first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
22      A contradictory or unintelligible statement of reasons amounts to a failure to state reasons (judgment of 11 June 2020, Commission v Di Bernardo, C‑114/19 P, EU:C:2020:457, paragraph 55, and order of 30 January 2025, Münchner Wohnen v EUIPO (Münchner Wohnen), T‑85/24, not published, EU:T:2025:120, paragraph 17).
23      It is in the light of that case-law that the second plea must be examined.
24      First, as regards the relevant territory and the relevant public, the Board of Appeal stated, in paragraph 45 of the contested decision, that it had decided to assess the likelihood of confusion in respect of the public in Spain and France, given that the case-law and the evidence on file mainly concerned those Member States. In paragraph 47 of that decision, under the heading ‘The relevant public’, it stated that, as regards the earlier EU trade mark, the use of which had been proved, the relevant territory was the territory of the whole European Union. Furthermore, the contested decision referred to the perception of the ‘English-speaking public’ and ‘most of the English-speaking public’, respectively in paragraph 66, under the heading ‘Comparison of the marks’, and in paragraph 100, under the heading ‘Overall assessment of the likelihood of confusion’.
25      The contested decision thus contains a clear contradiction in that, on the one hand, the Board of Appeal expressly confined itself to assessing the likelihood of confusion with regard to the public in Spain and France and, on the other hand, it referred to the perception of the ‘English-speaking public’ and ‘most of the English-speaking public’.
26      The Board of Appeal unsuccessfully presented that inconsistency as an error of transcription within the meaning of Article 102(1) of Regulation 2017/1001 in the corrigendum of 15 November 2023. In its judgment of 20 November 2024, The King of Soho (T‑13/24, not published, EU:T:2024:846, paragraph 39), the Court annulled the decision in question on that point on the ground that the error relating to the content of paragraph 45 was not so obvious as to imply, without discussion, that that paragraph should be deleted. As the Court pointed out in the abovementioned judgment, the paragraph at issue could be understood as echoing the other considerations set out in paragraphs 30 and 35 of the contested decision, relating to the examination of the evidence of genuine use of the earlier EU trade mark and which referred to invoices showing use of that mark, in particular in Spain, and to invoices and market studies showing such use ‘specifically in France’.
27      As a result of that manifest contradiction, the Court finds that it is unable to understand the reasoning of the Board of Appeal concerning the relevant territory and the relevant public and, consequently, to exercise effective judicial review of that reasoning.
28      Secondly, as regards the level of attention of the relevant public, the Board of Appeal stated in paragraphs 50 and 51 of the contested decision, relying in that regard on the judgment of 28 April 2021, The King of SOHO (T‑31/20, not published, EU:T:2021:217, paragraph 57), that alcoholic beverages were aimed at the adult general public over 18 years of age and that the level of attention with regard to those goods was average.
29      However, it stated, in paragraph 52 of the contested decision, that the average consumer of alcohol would pay attention to the class and type of beverage, its characteristics, its origin, its production method, the trade mark and price, that he or she would also pay attention to detail in view of the great variety of competing products and that he or she would choose a beverage from one group or the other carefully, considering the potential significant effects alcohol consumption may have on the human body. In paragraph 98 of the contested decision, the Board of Appeal again stated that the relevant public had an average level of attention and concluded, in paragraph 107 of that decision, that the level of attention varied from average to high.
30      It must be stated that the description of the level of attention in paragraph 52 of the contested decision is not consistent with that set out in paragraphs 50, 51 and 98 of that decision. The wording ‘pay attention’, ‘pay attention to detail’, and ‘choose carefully’ unambiguously means that the Board of Appeal actually considered the level of attention of the general public to be ‘high’, which it moreover referred to in paragraph 107 of the contested decision.
31      The grounds of the contested decision relating to the public’s level of attention are therefore contradictory and render the assessment made by the Board of Appeal unintelligible.
32      In that regard, the Board of Appeal unsuccessfully presented, in the corrigendum of 15 November 2023, the word ‘high’ in paragraph 107 of the contested decision as an alleged transcription error. In the judgment of 20 November 2024, The King of Soho (T‑13/24, not published, EU:T:2024:846, paragraphs 40 to 43), the Court refused to allow that term to be deleted from paragraph 107 by a simple corrigendum, holding that it could not rule out the possibility that, by using that term, the Board of Appeal had drawn the appropriate conclusions from paragraph 52 of the contested decision.
33      Similarly, EUIPO also unsuccessfully attempts to justify the adjective ‘high’ in paragraph 107 of the contested decision by arguing that that paragraph rather reflects the Board of Appeal’s acknowledgement of the varying degrees of attention within the spectrum of the relevant public, namely the general public and professionals. The Board of Appeal clearly stated, in paragraph 50 of the contested decision, that the lowest level of attention, namely that of the general public, had to be taken into consideration. It follows that the entire reasoning on the level of attention of the relevant public concerned only the general public and that paragraph 52 cannot therefore be interpreted as referring to the professional public.
34      Consequently, since the Board of Appeal’s assessment as to the level of attention of the relevant public is contradictory and unintelligible, the Court finds that it is not in a position to carry out an effective judicial review of that assessment.
35      Thirdly, as regards the comparison of the goods at issue, the Board of Appeal, after stating, in accordance with the approach adopted by the Court in the judgment of 28 April 2021, The King of SOHO (T‑31/20, not published, EU:T:2021:217, paragraphs 64 to 66, 73, 77 and 121), that the liqueurs covered by the earlier EU trade mark, on the one hand, and the gin and vodka covered by the mark applied for, on the other, were ‘similar’, found that there were ‘important differences’. First of all, it stated that those differences were due to the fact that the public generally categorised alcoholic beverages in several categories according to the alcohol content (low, medium and high) and that liqueurs, on the one hand, and gin and vodka, on the other, belonged to the second and third categories respectively. Next, it stated that the fact that gin and vodka could be mixed with a liqueur was not sufficient to conclude that there was similarity. Lastly, it observed that the ‘important differences’ resulted from the fact that brands are generally specific to each category and that it is well known that trade marks are not normally used across the different categories of alcoholic drinks. On the basis of that approach, which, incidentally, it itself described as ‘stricter’, it concluded that the similarity of the goods at issue was ‘not too high’.
36      It must be stated that the Board of Appeal’s reasoning relating to the comparison of the goods at issue contains a series of contradictory reasons. First of all, the Board of Appeal started from the finding that the degree of similarity between the goods at issue was ‘average’. Next, it pointed out, in the last sentence of paragraph 54 of the contested decision, that, ‘however’, the criterion justifying that conclusion applied to a great variety of drinks. In addition, it referred, in paragraphs 55 and 62 of the contested decision, to ‘important differences’, relating to the goods at issue belonging to different categories of alcoholic beverages according to their alcohol content, and to the need for a ‘stricter approach’ relating to the well-known nature of the existence of a system of ‘mono-product brands’ in the realm of alcoholic beverages. Lastly, it concluded that the similarity in question was ‘not too high’.
37      The inadequacy of the grounds of the contested decision, accentuated by the abstract nature of the conclusion, makes that decision unintelligible as regards the assessment of the similarity of the goods at issue.
38      In the light of the foregoing, the second plea in law must be upheld and, accordingly, the contested decision must be annulled, without there being any need to rule on the first plea raised by the applicant in support of the form of order sought by it.
39      As regards the question whether the Court is in a position to grant the application for alteration of the contested decision, it has been pointed out in paragraphs 25 to 38 above that the contradictory grounds relating to the relevant territory, the relevant public, the level of attention of the relevant public and the similarity of the goods at issue, and the unintelligible nature of the Board of Appeal’s reasoning made it impossible to understand the contested decision. Accordingly, the Court is not in a position to determine, on the basis of the elements of fact and law as established, the decision that the Board of Appeal was required to take.
40      It follows that the conditions for the exercise of the Court’s power to alter decisions, as set out in the judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452), are not satisfied and, therefore, that the application for alteration must be rejected.
Costs
41      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.
42      Since EUIPO has been largely unsuccessful, it must be ordered, in addition to bearing its own costs, to pay those incurred by the applicant.
43      Furthermore, the applicant has claimed that EUIPO should be ordered to pay the costs incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
44      It must be borne in mind that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.
45      In that regard, it will be for the Board of Appeal to rule, in the light of the present judgment, on the costs relating to those proceedings (see, to that effect, judgments of 8 May 2019, Inditex v EUIPO – Ffauf Italia (ZARA), T‑269/18, not published, EU:T:2019:306, paragraph 88, and of 10 April 2024, Schönegger Käse-Alm v EUIPO – Jumpseat3D plus Germany (Rebell), T‑161/23, not published, EU:T:2024:218, paragraphs 44 to 46).
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 June 2023 (Case R 1380/2022‑5);
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to bear its own costs and to pay those incurred by Pernod Ricard for the purposes of the proceedings before the General Court.
Škvařilová-Pelzl
Nõmm
Steinfatt
Delivered in open court in Luxembourg on 23 July 2025.
V. Di Bucci
L. Truchot
Registrar
President
*      Language of the case: English.