JUDGMENT OF THE GENERAL COURT (Third Chamber)
7 December 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark CERVISIA — Earlier national word mark CERVISIA AMBAR — Relative ground for refusal — Similarity of the signs –Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑378/17,
La Zaragozana, SA, established in Saragossa (Spain), represented by L. Broschat García and A.M. Santos Pribañez, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Heineken Italia SpA, established in Pollein (Italy), represented by P. Pozzi and G. Ghisletti, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 March 2017 (Case R 1241/2016-5) concerning opposition proceedings between La Zaragozana and Heineken Italia.
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen (Rapporteur), President, V. Kreuschitz and N. Półtorak, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 8 June 2017,
having regard to the response of EUIPO lodged at the Court Registry on 13 September 2017,
having regard to the response of the intervener lodged at the Court Registry on 2 October 2017,
further to the hearing on 19 September 2018,
gives the following
Judgment
Background to the dispute
1        On 23 October 2014, the intervener, Heineken Italia Spa, 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 requested are in Classes 32 and 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, for each of those classes, to the following description:
–        Class 32: ‘Beers; Non-alcoholic beer; Lagers; Wheat beer; Malt beer; Beer; Mineral and aerated waters and other non-alcoholic drinks; Fruit beverages and fruit juices; Syrups and other preparations for making beverages’;
–        Class 33: “Alcoholic beverages (except beers)”.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 222/2014 of 25 November 2014.
5        On 24 February 2015, the applicant, La Zaragozana, SA, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier Spanish word mark CERVISIA AMBAR, registered on 2 August 2012 under No 3018141, for the following goods in Class 32: ‘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 17 May 2016, the Opposition Division upheld the opposition and rejected the EU trade mark application for all of the goods on the ground that there was a likelihood of confusion.
9        On 7 July 2016, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10      By decision of 13 March 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division and rejected the opposition. In particular, it held that, even though the signs at issue were aurally similar to a low extent, that similarity was outweighed by the visual and conceptual differences between the signs. Finding therefore that the signs at issue were similar only to a low extent, that the figurative elements of the trade mark applied for were meaningful and that the common element of the marks at issue was of weak distinctive character in Spain, the Board of Appeal concluded that there was no likelihood of confusion (see paragraphs 29 to 33 of the contested decision).
Forms of order sought
11      The applicant claims that the Court should annul the contested decision.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
13      In support of the action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it submits that the Board of Appeal made several errors when comparing the signs, as regards, inter alia, the perception of the signs on the visual, phonetic and conceptual levels, and the global assessment of the likelihood of confusion, with regard to the application of the principle that the word elements normally have more importance than the figurative elements and with regard to determining the distinctive character of the earlier mark.
Documents presented for the first time before the Court
14      As a preliminary point, it must be observed that the applicant presents, in Annexes 5, 6 and 9 to the application, extracts from internet sites showing the use of marks comprising, inter alia, the word ‘cervisia’ and an image of a seahorse for beer, a copy of an article entitled ‘Birra Cervisia’ from the Italian ‘Wikipedia’ website as well as extracts from its website relating to its goods and its business. Similarly, the intervener reproduces in its response and in Annex 3 thereto, several images of beers whose labels include the representation of a seahorse and whose overall theme is that of pirates and life at sea.
15      Those documents, produced for the first time before the Court, cannot, however, 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 for the purposes of Article 65 of Regulation No 207/2009 (now 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. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and case-law cited).
Infringement of Article 8(1)(b) of Regulation No 207/2009
16      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, an 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.
17      According to the case-law, the risk that the public might 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 that case-law, 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).
18      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 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
Definition of the relevant public
19      With regard to the definition of the relevant public, the Board of Appeal considered that it was the general public in Spain, in so far as the earlier mark was registered in Spain, and that its level of attention was normal. That definition, which moreover is not contested by the parties before the Court, must be upheld.
Comparison of the goods
20      As regards the comparison of the goods, the Board of Appeal found that the ‘beers’ covered by the earlier mark were identical to the ‘Beers; Lagers; Wheat beer; Malt beer’, highly similar to ‘non-alcoholic beer’, averagely similar to ‘mineral and aerated waters and other non-alcoholic drinks; Fruits beverages and fruit juices; Syrups and other preparations for making beverages’ and similar to the ‘Alcoholic beverages (except beers)’ covered by the mark applied for. Having regard to the contents of the file, it is appropriate to endorse that assessment, which, moreover, is not disputed by the parties before the Court.
The comparison of the signs
21      It should be recalled that the global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression produced by those signs, taking account, in particular, of 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).
22      The assessment of similarity must not be limited to taking into consideration only one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42 and the case-law cited).
23      Visually, the Board of Appeal observed that the signs at issue consisted, first, with regard to the earlier mark, of the words ‘cervisia’ and ‘ambar’, and, secondly, with regard to the mark applied for, of the word ‘cervisia’ and a circular element containing the representation of a seahorse. As regards the mark applied for, it also found that the word ‘cervisia’ was ‘barely legible’ and that only the sequence of letters ‘v’, ‘i’, ‘s’, ‘i’, ‘a’ appeared clearly. According to the Board of Appeal, the relevant public could therefore not be presumed to easily recognise that word on the basis of visible letters, since the word ‘cervisia’ is not a Spanish word and is not commonly used. The Board of Appeal concluded that the overall visual appearance of the signs at issue was different and that, even if a part of the relevant public could identify the word ‘cervisia’ in the mark applied for, its strong stylisation and the visual differences outweigh the similarities (paragraph 23 of the contested decision).
24      In that regard, as the applicant submits, it is clear that, in the light of the mark applied for as submitted by the intervener in the file submitted to EUIPO, it cannot be concluded that the word element of that mark is ‘barely legible’ and that, consequently, it cannot be presumed that the relevant public will easily recognise the whole word based on what is visible.
25      While the sequence of letters ‘v’, ‘i’, ‘s’, ‘i’, ‘a’ of the word element ‘cervisia’ of the mark applied for is clearly visible on the upper left-hand side of the circular element containing the representation of a seahorse, the same holds true as regard the letters ‘e’ and ‘r’, which precede the sequence of letters ‘v’, ‘i’, ‘s’, ‘i’, ‘a’ on the lower left-hand side and bottom of that figurative element. With regard to the first letter, ‘c’, of the word element ‘cervisia’, while it is less visible than the other letters, its outlines are nevertheless perceptible. In addition, the letters are capitals and are not very stylised. Presented with the sequence of letters ‘e’, ‘r’, ‘v’, ‘i’, ‘s’, ‘i’, ‘a’, the average consumer, who is deemed to be reasonably observant, will have no difficulty realising that the letter ‘c’ precedes those letters to form the word element ‘cervisia’.
26      In those circumstances, the relevant public is able, if not easily, at least without much difficulty, on the basis of what is visible, to recognise the word element ‘cervisia’ in the mark applied for and which also appears in the earlier mark.
27      Therefore, the assessment set out in paragraph 23 of the contested decision, that the ‘overall visual appearance of the signs is different’ is vitiated by an error of assessment. As the earlier mark is characterised by the presence of the word elements ‘cervisia’ and ‘ambar’ and the mark applied for has a circular device containing the word element ‘cervisia’ and the representation of a seahorse, it must be concluded that, due of their common word element ‘cervisia’, the signs at issue are visually similar to a certain degree, which must be qualified as average.
28      In any event, contrary to what is stated by the Board of Appeal, the strong stylisation of the mark applied for cannot suffice to justify the conclusion that the visual differences between the signs at issue which arise from that stylisation ‘outweighed’ the similarity resulting from the presence of the word element ‘cervisia’ in each of those signs.
29      Phonetically, the Board of Appeal noted that the earlier mark was pronounced ‘cervisia ambar’, whereas the mark applied for was pronounced ‘cervisia’ for the public which recognises that word, ‘visia’ for the public that only read that part of the word, or was not pronounced at all. Accordingly, the Board of Appeal found that there was ‘a certain aural similarity’ for consumers who recognised the word ‘cervisia’ in the mark applied for (paragraph 24 of the contested decision).
30      As has been pointed out in paragraph 26 above, the average consumer, who is deemed to be reasonably observant, will not have much difficulty in realising that the word element of the mark applied for is ‘cervisia’ and not ‘visia’. Furthermore, in view of the fact that that consumer will pronounce the word ‘cervisia’ as a whole, it must be held that the signs at issue have a certain degree of aural similarity which may also be categorised as average.
31      The Board of Appeal was therefore wrong to hold, in paragraph 26 of the contested decision, when comparing the signs, that the signs at issue had a ‘very low degree of ... similarity’ or, in paragraph 29 of the contested decision, when making the global assessment of the likelihood of confusion, that the signs at issue were ‘aurally similar to a low extent’.
32      Conceptually, the Board of Appeal stated that the Latin word ‘cervisia’ denoted a kind of beer and that it could be ‘easily linked’ to the Spanish word ‘cerveza’, given their identical beginnings and the goods in question. It also noted that the Spanish word ‘ambar’ meant ‘amber’ and that it was in particular used to describe a colour. Therefore, the Board of Appeal considered that the earlier mark evoked the notion of amber beer and that the mark applied for contained the representation of an easily recognisable seahorse. In conclusion, it found that the signs at issue were conceptually different (paragraph 25 of the contested decision).
33      However, while it is true that the word ‘cervisia’ means ‘beer’ in Latin, the general public in Spain does not know the meaning of a Latin word which has not been used for a long time and which is not particularly close to the word ‘cerveza’. In that regard, and although EUIPO is required to assess each case on its own merits and is not bound by previous decisions in other cases (see judgment of 23 October 2015, I Castellani v OHIM — Chomarat (Representation of a circle), T‑137/14, not published, EU:T:2015:798, paragraph 55 and the case-law cited), it should be noted, as the applicant argued, that such an analysis was shared not only by the Opposition Division in the present case, but also by the Opposition Division in the decisions made in the proceedings B2472093 and B2472184, Lidl stiftung & Co. KG against Heineken Italia SpA, on 15 June and 13 July 2016, respectively, which also concerned beers.
34      In those decisions, the Opposition Division stated that the word ‘cervisia’ used in the contested marks of the intervener had no meaning in relation to the goods in Classes 32 and 33 for the relevant public. In response to an argument put forward by the opponent in those cases, the Opposition Division had also stated that, while the word ‘cervisia’ was the term used in ancient Rome to denote beer, such a meaning was unknown to the general public, which is the relevant public in the present case. In particular, the Opposition Division found that, even for the part of the relevant public which speaks Romance languages, which evolved from Latin, the word ‘cervisia’ was not associated with beer. Thus, for the Spanish general public, the word ‘cerveza’ was used. The Opposition Division therefore concluded that it was unlikely that the general public, in particular the general public in Spain, would recognise the origin of the word ‘cervisia’ and associate it with beer.
35      In the absence of relevant evidence regarding the perception of the word ‘cervisia’ by the relevant public, the Board of Appeal was not therefore entitled to consider that it had such a knowledge of Latin that it could ‘easily link’ the word ‘cervisia’ to the word ‘cerveza’, whose pronunciations differ in Spanish, or to the concept of beers. When questioned on that point at the hearing, EUIPO acknowledged that it was for the Board of Appeal to produce such evidence, given that the perception of the word ‘cervisia’ by that public could not be regarded as well-known facts.
36      However, given the presence of the word ‘cervisia’, which has no particular meaning for the relevant public and, first, the word ‘ambar’ which means ‘amber’ and, secondly, the representation of a seahorse, the signs at issue should be regarded as conceptually different, as was correctly pointed out by the Board of Appeal in the contested decision.
37      In conclusion, regarding the comparison of the signs, the Board of Appeal erred in finding that, for the public which can recognise the word ‘cervisia’ in the mark applied for, the signs at issue had a very low degree of aural similarity, which was outweighed by the visual difference and the conceptual difference, while, for the public which did not recognise the word ‘cervisia’, there was no similarity between the signs (paragraphs 26 and 27 of the contested decision). It follows from the foregoing that the word element ‘cervisia’ was perceptible in the mark applied for and that, consequently, visually and phonetically, the signs at issue have a certain degree of similarity which may be categorised as average, given the presence of that element in each of the signs.
38      In that context, it should also be recalled that, even if the word element ‘cervisia’ that the signs at issue have in common does not convey any conceptual content, the fact remains that it may be read and pronounced and that it is, therefore, likely to be remembered by consumers (see, to that effect, judgment of 23 November 2011, Pukka Luggage v OHIM — Azpiroz Arruti (PUKKA), T‑483/10, not published, EU:T:2011:692, paragraph 47).
Global assessment of the likelihood of confusion
39      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).
40      At that stage, the Board of Appeal decided not to apply the principle that the word elements normally have a greater impact than the figurative elements, since the word element of the mark applied for was ‘barely legible’ and the figurative element had a ‘semantic meaning (seahorse) which is rather unusual and is therefore memorable’ in relation to the goods in question (paragraph 30 of the contested decision).
41      Similarly, the Board of Appeal considered that the inherent distinctive character of the earlier mark CERVISIA AMBAR was low, given its descriptive meaning in relation to the goods in question, and that, even if it were accepted that the AMBAR mark is reputed in Spain — which was not established by the applicant — the fact remained that the word ‘cervisia’ was evocative of the goods in question, namely ‘beers’, and had a weak distinctive character (paragraph 31 of the contested decision).
42      In conclusion, the Board of Appeal found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 since the signs at issue were similar only to a low extent, that the figurative elements of the mark applied for were meaningful and that the common element ‘cervisia’ had a weak distinctive character in Spain (paragraph 32 of the contested decision).
43      First, however, taking account of the foregoing, the Board of Appeal was not entitled to conclude that the principle that the word elements normally have a greater impact than the figurative elements mentioned was not applicable in the present case.
44      It is apparent from the case-law that, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37). In particular, as the applicant points out, in the sector of alcoholic beverages in general, consumers thereof usually describe and recognise a particular beverage by reference to the word element which identifies it, in particular in bars or restaurants in which those beverages are ordered orally after their names have been seen on a menu or list (see judgment of 23 November 2010, Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 62 and the case-law cited). As discussed at the hearing, that principle also applies where the purchase is made in a supermarket, for example through comparing the prices of goods.
45      In the present case, in order to exclude the application of that principle, the Board of Appeal was wrong to hold that the word element of the mark applied for was ‘barely legible’ and that, on the contrary, the figurative element had a ‘semantic meaning (seahorse) which is rather unusual and is therefore memorable’ with regard to the goods. However, it appears that, when presented with a situation where it is easy to read the letters ‘e’, ‘r’, ‘v’, ‘i’, ‘s’, ‘i’, ‘a’, the average consumer, who is deemed to be reasonably observant, will have no difficulty realising that the letter ‘c’ precedes those letters to form the word element ‘cervisia’ of the mark applied for. That element is therefore not ‘barely legible’ (see paragraphs 25 and 30 above). Similarly, while the figurative element of the mark applied for does indeed have a ‘semantic meaning (seahorse) which is rather unusual and is therefore memorable’ with regard to the goods in question, the same applies to the verbal element of that sign, whose meaning does not evoke anything in respect of the relevant public (see paragraphs 33 to 35 above).
46      Secondly, the Board of Appeal also made an error of assessment in finding that the distinctive character of the earlier mark was weak in view of its descriptive meaning.
47      As has already been stated, such reasoning is based on the premiss that the relevant public was capable of ‘easily linking’, considering their identical beginnings and the goods in question, the Latin word ‘cervisia’ with the Spanish word ‘cerveza’.
48      In the present case and as the applicant submits, the general public in Spain, will not be able to connect a Latin word — which the Board of Appeal itself pointed out was not a Spanish word and was not commonly used — to the Spanish word corresponding to the reading of the Latin dictionary which is cited in the contested decision on that point (which provides a translation of the term ‘cervisia’ in English and not in Spanish). Such an analysis corresponds, moreover, to the analysis previously developed by the Opposition Division in this case and in the decisions cited by the applicant in other cases (see paragraphs 33 to 35 above).
49      Accordingly, in the light of the evidence put forward on that point by the parties, it must be held that, as regards both the mark applied for and the earlier mark, the word element ‘cervisia’ does not have a weak distinctive character, but rather a normal degree of inherent distinctive character.
50      It should be noted, therefore, that while the Board of Appeal correctly pointed out the similarity between the goods in question, it wrongly held, however, in order to conclude that there was no likelihood of confusion, that the signs at issue were similar only to a low extent and that the common element of those signs had a weak distinctive character in Spain.
51      Contrary to what has been decided by the Board of Appeal, it must be concluded that, because of the presence of the word element ‘cervisia’ in each of the signs (see paragraphs 25 and 30 above), the signs at issue display a certain degree of visual and aural similarity, which must be qualified as average. Similarly, for the reasons set out in paragraphs 43 to 45 above, the Board of Appeal wrongly refused to apply the principle that word elements normally have a greater impact than figurative elements and held that the word element ‘cervisia’ common to the signs at issue had a weak distinctive character.
52      Thus, in the light of the similarity between the goods in question and between the signs at issue, visually and aurally, the relevant public, confronted with goods covered by the mark applied for, may either not notice the difference between the signs resulting from the representation of a seahorse contained in the circular device of the mark applied for or the absence of the word element ‘ambar’ in the latter, or think that the goods nevertheless come from the same undertaking as that which affixes the earlier mark on its goods.
53      In the light of all the foregoing, it must be concluded that the Board of Appeal was wrong to find that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
54      The single plea in law raised by the applicant must therefore be upheld and, thus, the contested decision must be annulled.
Costs
55      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.
56      In the present case, since the applicant has not applied for costs against EUIPO and the intervener, each party shall bear its own costs.
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) issued of 13 March 2017 (Case R 1241/2016-5);
2.      Orders each party to bear its own costs.
Frimodt Nielsen
Kreuschitz
Półtorak
Delivered in open court in Luxembourg on 7 December 2018.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.