JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
30 June 2015 (*)
(Community trade mark — Invalidity proceedings — Community word mark VIÑA ALBERDI — Earlier national figurative mark VILLA ALBERTI — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Lack of coexistence of trade marks — Likelihood of confusion)
In Case T‑489/13,
La Rioja Alta, SA, established in Haro (Spain), represented by F. Pérez Álvarez, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Aldi Einkauf GmbH & Co. OHG, established in Essen (Germany),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 9 July 2013 (Case R 1190/2011-4), relating to invalidity proceedings between Aldi Einkauf GmbH & Co. OHG and La Rioja Alta, SA,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek (Rapporteur), President, I. Labucka and V. Kreuschitz, Judges,
Registrar: I. Drăgan, Administrator,
having regard to the application lodged at the Court Registry on 16 September 2013,
having regard to the response lodged at the Court Registry on 28 March 2014,
further to the hearing on 14 January 2015,
gives the following
Judgment (1)
Background to the dispute
1        On 3 June 2003, La Rioja Alta, SA, the applicant, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended [and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)].
2        Registration as a mark was sought for the word sign VIÑA ALBERDI.
3        On 26 November 2004, the sign was registered as a Community trade mark under No 3189065.
4        The goods in respect of which the contested trade mark was registered are in, inter alia, Class 33 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for that class, to the following description: ‘alcoholic beverages (except beers)’.
5        On 5 November 2009, the other party to the proceedings before OHIM, the company Aldi Einkauf GmbH & Co. OHG (‘Aldi Einkauf’), brought an application before OHIM seeking that the contested mark be declared partially invalid under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, in respect of the goods referred to in paragraph 4 above.
6        In support of its application for a declaration of invalidity, Aldi Einkauf relied on the earlier German figurative mark No 2056141, registered on 7 February 1994 and renewed until 30 September 2012, represented as follows:
7        The earlier trade mark had been registered in respect of the goods in Class 33 corresponding to the following description: ‘Wines from Italy’.
8        By decision of 11 April 2011, the Cancellation Division upheld the application for a declaration of invalidity of the contested mark.
9        On 6 June 2011, the applicant filed a notice of appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Cancellation Division’s decision. On 5 August 2011, the applicant applied for ‘Wines from Italy’ to be excluded from the goods in Class 33 covered by the contested mark.
10      By decision of 9 July 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM rejected the applicant’s appeal. It found that:
–        the applicant’s application for a restriction of the goods designated by the contested mark constituted a surrender within the meaning of Article 50 of Regulation No 207/2009 and was therefore valid;
–        there had been sufficient proof of use of the earlier trade mark in relation to ‘Wines from Italy’ and rejected the applicant’s argument that that use had been proved only for certain appellations of origin;
–        the relevant public was the German public at large which is reasonably circumspect when purchasing the goods at issue;
–        the goods at issue were highly similar if not identical in so far as the contested mark excluded ‘Wines from Italy’ but not other wines;
–        there was at least some degree of visual similarity between the signs at issue, an average degree of phonetic similarity and no conceptual similarity;
–        the earlier mark was of average distinctive character;
–        there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        declare the contested mark valid;
–        order OHIM and the other party to the proceedings before the Court to pay the costs.
12      During the hearing, the applicant withdrew its second head of claim and the Court has taken formal notice thereof.
13      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
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Substance
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The plea based on failure to apply correctly Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009
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–       Likelihood of confusion
68      According to settled 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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned, 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 judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraphs 16, 17 and 29 and the case-law cited, and [in Laboratorios RTB v OHIM — Giorgio Beverly Hills] (GIORGIO BEVERLY HILLS), [Case T‑162/01] ..., EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
...
70      Furthermore, in addition to the relevant factors referred to in paragraph 68 above, the coexistence of two marks on a market might be taken into account since it is accepted in the case-law that, together with other elements, it may contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 3 September 2009 in Aceites del Sur-Coosur v Koipe, C‑498/07 P, ECR, EU:C:2009:503, paragraph 82 ; see also, to that effect and by analogy, judgment of 22 September 2011 in Budějovický Budvar, C‑482/09, ECR, EU:C:2011:605, paragraphs 75 to 82).
71      In the present case, the Board of Appeal found in paragraph 44 of the contested decision that the earlier mark was of average inherent distinctive character. Given the similarity of the goods at issue and of the signs at issue, it found in paragraph 51 of the contested decision that there was a likelihood of confusion between the trade marks at issue. In exercising its power to assess the facts, it rejected the argument that there had been a peaceful coexistence of the trade marks in Germany.
72      The applicant claims that the Board of Appeal failed to demonstrate to the requisite legal standard that there was a likelihood of confusion between the trade marks at issue on the part of the relevant public. The applicant submits that a consumer could clearly distinguish between them. It also submits, in essence, that the Board of Appeal erred in rejecting its argument that there had been a peaceful coexistence in Germany of the earlier trade mark with the contested mark despite the fact that it has sold wines there under the Spanish word mark VIÑA ALBERDI since 1983.
...
77      Finally, in paragraph 39 of the contested decision, the Board of Appeal stated that it concurred with ‘the findings of the Cancellation Division ... that the coexistence shown had not been proven to be based on the absence of likelihood of confusion [and that n]o evidence [had been] filed that the coexistence of the two signs [was] mutually recognised and that the relevant German public ha[d] been taught and [was] well-aware that the conflicting signs clearly identify different origins of trade’.
78      Against that analysis, the applicant claims that it is impossible to prove a peaceful coexistence between the trade marks based on the absence of a likelihood of confusion of those trade marks. In essence, it submits that the evidence advanced during the proceedings sufficed to demonstrate the peaceful character of the coexistence in Germany of the Spanish trade mark VIÑA ALBERDI with the earlier trade mark relied on in support of the application for a declaration of invalidity.
79      The applicant’s contention that it is impossible to prove a peaceful coexistence between the trade marks based on the absence of a likelihood of confusion of those marks must be rejected from the outset.
80      Although it is undoubtedly for the proprietor of the contested trade mark to demonstrate during the proceedings before OHIM concerning relative grounds of refusal that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the mark upon which the proprietor relies and the earlier mark on which the application for annulment is based (see, to that effect, judgments of 11 May 2005 in Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, ECR, EU:T:2005:169, paragraph 86, and of 10 April 2013 in Höganäs v OHIM — Haynes (ASTALOY), T‑505/10, EU:T:2013:160, paragraph 48), it is open to such a proprietor to advance a body of evidence to that effect. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time of filing the application for registration of the contested mark is particularly relevant (see, to that effect and by analogy, judgments in GRUPO SADA, cited above, EU:T:2005:169, paragraph 89, and of 25 May 2005 in TeleTech Holdings v OHIM — Teletech International (TELETECH GLOBAL VENTURES), T‑288/03, ECR, EU:T:2005:177, paragraph 100). In addition, in so far as according to the case-law the coexistence of two trade marks must be sufficiently long to be capable of influencing the perception of the relevant consumers (see, to that effect, judgments of 1 March 2005 in Fusco v OHIM — Fusco International (ENZO FUSCO), T‑185/03, ECR, EU:T:2005:73, paragraph 64, and ASTALOY, cited above, EU:T:2013:160, paragraph 47), the duration of the coexistence also constitutes an essential factor.
81      It should also be noted that any argument based on coexistence implies a priori, first, that the earlier trade marks are identical to the trade marks at issue (see, to that effect, judgment in GRUPO SADA, cited in paragraph 80 above, EU:T:2005:169, paragraphs 86 and 88) and, second, genuine use of the trade mark on which the applicant relies in the relevant territory (judgment of 21 April 2005 in PepsiCo v OHIM — Intersnack Knabber-Gebäck (RUFFLES), T‑269/02, ECR, EU:T:2005:138, paragraphs 23 to 25).
82      Furthermore, in so far as only peaceful coexistence between the trade marks at issue can be taken into account, any dispute between the proprietors of the earlier trade marks prevents a finding of coexistence (see, to that effect, judgments [of 24 November 2005 in Sadas v OHIM — LTJ Diffusion] (ARTHUR ET FELICIE), [T‑346/04] …, EU:T:2005:420, paragraph 64, and of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, ECR, EU:T:2005:438, paragraph 74).
83      It is against the background of those considerations that it is necessary to verify whether the Board of Appeal was entitled to endorse the analysis of the Cancellation Division by rejecting the applicant’s argument that the Spanish trade mark VIÑA ALBERDI and the earlier mark on which the application for annulment is based coexisted in Germany.
84      The evidence advanced by the applicant during the proceedings before OHIM is clearly insufficient to demonstrate that the Spanish trade mark VIÑA ALBERDI was recognised by the relevant public so as to be capable of diminishing the likelihood of confusion between the trade marks at issue.
85      In that regard, it should be noted that the relevant public has been defined in paragraph 23 above as the German public at large.
86      Although the applicant has shown that wines have been exported under the Spanish trade mark VIÑA ALBERDI to Germany between 1983 and the date of application for registration of the Community trade mark, that evidence shows that those exports have always been relatively limited in terms of volume, namely between 6 000 and 28 000 bottles per year for the whole of the German market.
87      In addition, although the applicant has advanced numerous articles in the press and in brochures relating to wines sold under the Spanish trade mark VIÑA ALBERDI, only two of those documents originate from German publications and they contain only very limited references to the wines in question.
88      Lastly, with regard to the documents provided by some German importers of wines sold by the applicant, it is clear that, although those documents affirm that ‘[both] for the [importer] and for its customers’ the Spanish trade mark VIÑA ALBERDI is ‘a known brand that identifies a Spanish quality wine under the RIOJA Qualified Denomination of Origin’, those assertions are essentially capable of demonstrating that the importers which made them recognised the trade mark at issue, but not the German public at large.
89      In those circumstances, the Board of Appeal was entitled to reject the applicant’s argument that the trade marks at issue coexisted peacefully in Germany.
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On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders La Rioja Alta, SA, to pay the costs.
Prek
Labucka
Kreuschitz
Delivered in open court in Luxembourg on 30 June 2015.
[Signatures]
* Language of the case: Spanish.
1 Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.