JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
26 July 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark Passo Lungo – Earlier national word mark Doppio Passo – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Article 95(1) of Regulation 2017/1001)
In Case T‑745/21,
Rotkäppchen-Mumm Sektkellereien GmbH, established in Freyburg (Germany), represented by K. Schmidt-Hern and A. Lubberger, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Cantina Sociale Cooperativa San Donaci, established in San Donaci (Italy),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and B. Ricziová (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 16 March 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Rotkäppchen-Mumm Sektkellereien GmbH seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 September 2021 (Case R 130/2021-4) (‘the contested decision’).
Background to the dispute
2        On 14 June 2019, the other party to the proceedings before EUIPO, Cantina Sociale Cooperativa San Donaci, filed an application with EUIPO for registration of an EU trade mark in respect of the word sign Passo Lungo.
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, for that class, to the following description: ‘Alcoholic beverages (except beer)’.
4        On 4 September 2019, 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 earlier German word mark Doppio Passo, registered on 19 April 2013, covering goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beer)’.
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 20 November 2020, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
8        On 20 January 2021, the other party to the proceedings before EUIPO filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal annulled the decision of the Opposition Division and rejected the opposition in its entirety.
10      It found that, having regard to the low degree of visual and phonetic similarity between the signs, the absence of any conceptual similarity and the distinctiveness of the earlier mark, which was no more than normal, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even taking into account the fact that the goods at issue are identical and the average level of attention of the relevant public.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant relies on two pleas in law, alleging, first, in essence, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, infringement of Article 95(1) of Regulation 2017/1001.
14      It is appropriate to examine the second plea before the first plea.
Second plea in law, alleging infringement of Article 95(1) of Regulation 2017/1001
15      According to the applicant, the Board of Appeal infringed Article 95(1) of Regulation 2017/1001, in so far as it failed to take into account the material submitted to establish the market success of the goods sold under the earlier mark as evidence of enhanced distinctiveness of that mark. In that regard, the applicant refers, in the first place, to the two charts submitted in the proceedings before EUIPO and referred to by it as ‘the Nielsen charts’, showing the sales and market shares of the wines produced in 2017 and 2018.
16      In the second place, in the same context, the applicant refers to evidence which it claims to have adduced in the proceedings before EUIPO, namely photographs of labels featuring the earlier mark Doppio Passo which the applicant has allegedly used to market wines, photographs of wine bottles bearing that label, a list of instances of industry recognition and prizes awarded to wines marketed under the Doppio Passo mark, and invoices from 2010 to 2018 showing the sales of wines under the Doppio Passo mark.
17      In the third place, the applicant attaches, as Annex A.7, an affidavit signed by the managing director of the company that is the exclusive distributor of Doppio Passo wines in Germany, the purpose of which is to confirm the data in the charts described in paragraph 15 above. It also attaches, as Annex A.8, charts relating to the sales and turnover figures in respect of the earlier mark for 2019, 2020 and 2021 and, in Annex A.9, a chart relating to the development of turnover from 2013 to 2021.
18      EUIPO disputes the arguments put forward by the applicant.
19      According to Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, so that the Board of Appeal may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence presented by the parties (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 41).
20      In that regard, in so far as the applicant submits that the Board of Appeal did not take into account the evidence referred to in paragraphs 15 to 17 above, the Court notes, first, that, in the context of the examination of the distinctive character of the earlier mark, the Board of Appeal examined the two charts referred to by the applicant as ‘the Nielsen charts’, described in paragraph 15 above, and found that they did not prove that the earlier mark was sufficiently well known among consumers in the relevant territory in order to conclude that there was enhanced distinctiveness, and referred, in that context, to the findings of the Opposition Division. Thus, it must be held that the Board of Appeal took that evidence into account when assessing the distinctiveness of the earlier mark.
21      Second, as regards the evidence described in paragraph 16 above, suffice it to note that that evidence was not adduced by the applicant either in the proceedings before EUIPO preceding the adoption of the contested decision or before the Court. That finding was, moreover, confirmed by the applicant and by EUIPO at the hearing. Accordingly, the applicant cannot reasonably rely on that evidence in order to call into question the legality of the contested decision. A review of legality must be carried out in the light solely of the evidence which was submitted in the context of the administrative proceedings before EUIPO and which appears in EUIPO’s file (see, to that effect, judgment of 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA), T‑288/19, not published, EU:T:2020:201, paragraph 70).
22      Third, as regards the evidence in Annexes A.7, A.8 and A.9, EUIPO disputes its admissibility on the ground that it was adduced for the first time before the Court.
23      It must be stated that, much like the evidence described in paragraph 16 above, the evidence in Annexes A.7, A.8 and A.9 was not adduced in the course of the proceedings before EUIPO.
24      In that regard, the Court holds that those documents produced for the first time before the Court cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO in accordance with Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see judgments of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 17 and the case-law cited, and of 6 April 2022, Dorit-DFT v EUIPO – Erwin Suter (DORIT), T‑208/21, not published, EU:T:2022:228, paragraphs 15 to 17). Accordingly, the documents in Annexes A.7, A.8 and A.9 must be declared inadmissible, without it being necessary to examine them.
25      The second plea in law must therefore be rejected as unfounded.
The first plea in law, alleging, in essence, infringement of Article 8(1)(b) of Regulation 2017/1001
26      The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 by finding, first, in paragraphs 23 and 24 of the contested decision, that the two signs at issue have a low degree of visual and phonetic similarity and, second, in paragraph 33 of the contested decision, that there is no likelihood of confusion. As regards the likelihood of confusion, the applicant claims, inter alia, that the Board of Appeal did not address the conceptual similarity correctly, in so far as the conceptual similarity remains ‘neutral’ and cannot therefore serve as an argument against the likelihood of confusion.
27      EUIPO disputes the arguments put forward by the applicant.
28      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.
29      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 specific 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).
30      In the present case, in paragraphs 17 and 29 of the contested decision, the Board of Appeal found that the relevant public was the public at large, that its level of attention was average, and that the relevant territory was Germany. Those assessments by the Board of Appeal are not contested by the applicant.
31      Furthermore, it is common ground that the goods in Class 33 covered by the mark applied for are identical to the goods in the same class covered by the earlier mark.
The first complaint of the first plea in law, alleging incorrect assessment of the degree of the visual and phonetic similarity of the signs
32      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 proceed to analyse 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).
33      In the present case, the Board of Appeal concluded that the signs were visually and phonetically similar to a low degree.
34      The signs to be compared are two word marks each composed of two Italian words, namely ‘passo’ and ‘lungo’ in the case of the mark applied for and ‘doppio’ and ‘passo’ in the case of the earlier mark.
35      The Board of Appeal’s finding that the word elements ‘passo’, ‘lungo’ and ‘doppio’ have an identical distinctive character in the marks at issue is not disputed by the applicant.
36      Visually, the Court notes that the only element common to the marks at issue is the word ‘passo’ which, nevertheless, has a different position in the two marks, namely the first part of the mark applied for and the final part of the earlier mark. It is accompanied in the mark applied for and the earlier mark by the words ‘lungo’ and ‘doppio’ respectively, which share only the vowel ‘o’ situated, inter alia, at the end of those words and the same number of syllables. Moreover, those words are as long as or longer than the common term.
37      It must also be borne in mind that consumers, in general, pay more attention to the beginning of a mark than to the ending (see judgment of 6 April 2022, Mandelay v EUIPO – Qx World (QUEST 9), T‑516/20, not published, EU:T:2022:227, paragraph 79 and the case-law cited). In the present case, the initial elements of the signs at issue, ‘passo’ and ‘doppio’, are visually different, even though they are the same in so far as they contain, the vowel ‘o’, inter alia, at the end of those words and the consonant ‘p’, albeit that the latter occupies a different position in each of those words. Moreover, they are slightly different in length.
38      As regards the overall visual impression created by the marks at issue, it should be noted that they are the same in part, in particular on account of the presence in both marks of the word element ‘passo’, which, however, represents only 5 of the 10 letters of the mark applied for and 5 of the 11 letters of the earlier mark, and occupies a different position. Moreover, the differences between the elements not being common to the signs at issue, combined with the fact that the words placed at the beginning of the signs at issue – the beginning being the part to which the relevant public generally pays more attention – are different, offsets the fact that those signs are identical in part because they have the word ‘passo’ in common.
39      Consequently, the Board of Appeal did not make any error of assessment in finding that the signs at issue were, as a whole, visually similar to a low degree.
40      Phonetically, the marks at issue have the same number of syllables, two of which are common to them: ‘pas’ and ‘so’. However, the initial parts of the signs at issue, ‘passo’ and ‘doppio’ – to which consumers generally pay more attention – do not share any syllable with the result that there are clear differences in their pronunciation, which significantly influences the pronunciation of each of the marks taken as a whole. The two first words have only one consonant in common, ‘p’, which, however, occupies a different position in both words, and only a single vowel in common, ‘o’, which occupies, inter alia, an identical position at the end of the words.
41      Consequently, the Board of Appeal did not make any error of assessment in finding that the signs at issue were, as a whole, phonetically similar to a low degree.
42      The arguments put forward by the applicant are not such as to call those conclusions into question.
43      First, even taking into account the fact that the two signs at issue have the same number of syllables, also end with the same vowel ‘o’ and, even if it were assumed that the vowels ‘u’ and ‘o’, in the middle of the elements ‘lungo’ and ‘doppio’, are visually and phonetically similar for the German public, those circumstances cannot lead to a higher degree of similarity between those signs on account of the clear differences between them visually and phonetically.
44      Second, the applicant submits that the Board of Appeal incorrectly relied on the principle that the public is more attentive to the beginning of the sign and that, since the public is not, in general, faced with the marks at issue at the same time, it is unlikely that it will remember whether the word ‘passo’ was the first or second element of the earlier mark. In that regard, the Court notes that, indeed, if the average consumer only rarely has the chance to make a direct comparison between the different marks, he or she must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 60 and the case-law cited). However, that finding does not call into question the fact that consumers do tend to pay more attention to the beginning of signs. The applicant’s argument attempts to call that concept into question on the basis of the unsubstantiated hypothesis that consumers would specifically remember the common word ‘passo’ despite the fact that it is neither more distinctive nor dominant as compared with the other elements and that it occupies a different position in the marks at issue.
45      Third, as regards the line of argument alleging that the low degree of similarity found by the Board of Appeal does not sufficiently reflect the distinctive character of the common element ‘passo’ and, in that regard, runs counter to the case-law of the Court, it should be noted that the case-law cited by the applicant concerns factual and legal situations that are different from those of the present case.
46      In particular, the Court notes, first of all, that, unlike in the present case, in the judgment of 14 May 2013, Masottina v OHIM – Bodegas Cooperativas de Alicante (CA’ MARINA) (T‑393/11, not published, EU:T:2013:241), the common element ‘marina’ was the longest of the words making up the signs and the one that left the strongest impression on consumers. Similarly, in the cases that gave rise to the judgments of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI) (T‑512/15, EU:T:2016:527), and of 13 September 2018, Eduard Meier v EUIPO – Calzaturificio Elisabet (Safari Club) (T‑418/17, not published, EU:T:2018:540), the signs at issue shared the longest element. Furthermore, in so far as the applicant infers from the judgments of 4 February 2016, Meica v OHIM – Salumificio Fratelli Beretta (STICK MiniMINI Beretta) (T‑247/14, EU:T:2016:64), and of 15 October 2018, Apple and Pear Australia and Star Fruits Diffusion v EUIPO – Pink Lady America (WILD PINK) (T‑164/17, not published, EU:T:2018:678), that it is arbitrary to attribute a low degree of similarity to signs the common element of which is distinctive, suffice it to note that the mere fact that an element common to the signs at issue is distinctive does not necessarily mean that those signs have a degree of similarity that is more than low, since the assessment of the similarity of those signs must be based on the overall impression produced by them.
47      Fourth, in so far as the applicant refers in its line of argument to EUIPO’s decisions, suffice it to note that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called upon to take under Regulation 2017/1001 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 as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
48      In the light of the foregoing, the first complaint of the first plea in law must be rejected as unfounded.
The second complaint of the first plea in law, alleging incorrect assessment of the likelihood of confusion
49      The 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).
50      In the present case, the Board of Appeal concluded, in paragraph 33 of the contested decision, that, taking into account the low degree of visual and phonetic similarity between the signs, the absence of any conceptual similarity and the distinctiveness of the earlier mark, which was no more than normal, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even taking into account the fact that the goods at issue are identical and the average level of attention of the relevant public.
51      The applicant disputes that assessment of the likelihood of confusion, claiming, first, that the Board of Appeal did not correctly assess the aspects relating to the similarity of the signs, as set out in the first complaint of the first plea, and, second, that it did not correctly take into account the conclusion relating to the conceptual comparison by relying on the absence of any conceptual similarity as one of the reasons excluding the likelihood of confusion, even though the conceptual comparison had been classified as neutral.
52      In the first place, as regards the complaint relating to the incorrect assessment of the similarity of the signs visually and phonetically, reference should be made to the examination of the first complaint of the first plea in paragraphs 35 to 47 above.
53      In the second place, the Board of Appeal did indeed rely, in paragraph 33 of the contested decision, on the lack of conceptual similarity for the purposes of assessing the likelihood of confusion, whereas it had, in essence, found, in paragraph 25 of that decision, that a conceptual comparison was not possible in the present case. However, the Court finds that that fact alone is not sufficient to call that assessment into question. In view of the low degree of visual and phonetic similarity, the average level of attention of the relevant public and the normal distinctiveness of the earlier mark, the Board of Appeal correctly found that the likelihood of confusion had not been established, notwithstanding the fact that the goods at issue were identical.
54      In the light of the foregoing, the second complaint of the first plea in law must also be rejected as unfounded, and consequently, the first plea in law must be rejected in its entirety.
55      Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.
Costs
56      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.
57      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 (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Rotkäppchen-Mumm Sektkellereien GmbH to pay the costs.
Kowalik-Bańczyk
Buttigieg
Ricziová
Delivered in open court in Luxembourg on 26 July 2023.
V. Di Bucci
G. De Baere
Registrar
President
*      Language of the case: English.