JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 June 2018 (*)
(EU trade mark — Invalidity proceedings — EU word mark STAROPILSEN; STAROPLZEN — Earlier EU and national word marks STAROPRAMEN — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001))
In Case T‑556/17,
Staropilsen s. r. o., established in Plzeň (Czech Republic), represented by A. Kodrasová, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Pivovary Staropramen s. r. o., established in Prague (Czech Republic), represented by M. Vojáček, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 June 2017 (Case R 236/2017‑4), relating to cancellation proceedings between Pivovary Staropramen and Staropilsen,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin (Rapporteur) and J. Costeira, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 August 2017,
having regard to the response of EUIPO lodged at the Court Registry on 27 September 2017,
having regard to the response of the intervener lodged at the Court Registry on 23 October 2017,
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
Background to the dispute
1        On 16 April 2010, Staropilsen s. r. o. 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 word sign STAROPILSEN; STAROPLZEN.
3        The goods in respect of which registration was sought are in Class 32 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: ‘Beers; aerated waters and other non-alcoholic drinks; drinks and fruit juices; syrups and other preparations for making beverages’.
4        On 12 November 2010, the disputed mark was registered as an EU trade mark under number 009034893 in respect of the goods referred to in paragraph 3 above.
5        On 1 October 2015, Pivovary Staropramen s. r. o. filed an application for a declaration that the disputed mark was invalid under Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001).
6        The application was based on the following earlier marks:
–        EU word mark No 3 418 341 STAROPRAMEN, registered on 11 May 2005 and renewed until 20 October 2023 for the following goods in Class 32: ‘Beers’;
–        the Czech word mark No 96 279 STAROPRAMEN, registered on 23 June 1937 and renewed until 23 June 2017 for, inter alia, the following goods in Class 32: ‘Alcoholic and dealcoholic drinks of all kinds, nonalcoholic beer, beer, extraction, essence for drink production, colorific beer, fruit juices’;
–        the Czech word mark No 184 832 STAROPRAMEN, registered on 12 May 1995 and renewed until 5 October 2023 for, inter alia, the following goods in Class 32: ‘Beers of all kinds’.
7        The ground relied on in support of the application was that there was a likelihood of confusion because of the similarity of the trade marks and the identity or similarity of the goods as referred to in Article 8(1)(b), read in conjunction with Article 53(1)(a), of Regulation No 207/2009.
8        On 15 December 2016, the Cancellation Division granted the application for a declaration of invalidity and declared the disputed mark to be invalid in its entirety.
9        On 31 January 2017, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
10      By decision of 20 June 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal, in essence, on the ground that the application for a declaration of invalidity had been granted correctly under Article 53(1)(a) of Regulation No 207/2009, since there was a likelihood of confusion within the meaning of Article 8(1)(b) of that regulation. Thus, according to the Board of Appeal:
–        the goods in question are partly identical and partly similar to various degrees;
–        visually and phonetically, the signs are similar to an above-average degree, as the grouping of the first six letters ‘S-T-A-R-O-P’ and the grouping of the final two letters ‘E-N’ are identical and the signs have the same rhythm and are pronounced with the same intonation;
–        given that the earlier marks lack a specific meaning for the relevant public that does not speak a Slavic language, the inherent distinctive character of the earlier marks is normal;
–        the level of attention of the relevant consumer is not high; that level is minimal;
–        there is a likelihood of confusion on the part of the public in the European Union that does not speak a Slavic language, given the identity and similarity of the goods, in conjunction with the above-average visual and phonetic similarity of the signs and the normal degree of distinctiveness of the earlier marks, which have no specific meaning for the relevant public that does not speak a Slavic language.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant relies, in essence, on a single plea, alleging an infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof.
The single plea, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof
14      Under Article 53(1)(a) of Regulation No 207/2009 and Article 8(1)(b) of that regulation, on application by the proprietor of an earlier mark, a trade mark is to be declared invalid 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.
15      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 line of 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 designated (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).
16      For the purposes of the application of 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).
17      In the light of those considerations, it is first appropriate to uphold the finding of the Board of Appeal that the goods at issue in Class 32 are partly identical and partly similar to various degrees, a fact which, moreover, has not been disputed by the parties.
18      Next, it is necessary, taking account also of the applicant’s complaints regarding the Board of Appeal’s assessment of the relevant public and the comparison of the signs at issue, to examine whether the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue.
The relevant public and its level of attention
19      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
20      In the present case, the Board of Appeal, first, found in paragraph 13 of the contested decision that the relevant public consists of the general public of the European Union, having regard to the goods at issue and the fact that one of the earlier word marks is an EU trade mark. As mentioned above, it also stated that it was focusing its assessment on the relevant public that does not speak a Slavic language. As regards the level of attention, the Board of Appeal found that the relevant public did not display a high level of attention and that it was minimal. In that regard, it referred to case-law which does not specify clearly the relevant public’s level of attention in relation to the goods at issue but which holds that the level of attention of the relevant public is not particularly high.
21      The applicant criticises the Board of Appeal for not taking the view that the average consumer of beer is ‘well informed and carefully distinguishing between production breweries’. Beer drinkers, it argues, can be likened to cigarette smokers, in so far as the latter usually have a preferred brand, although the goods themselves are very similar and interchangeable.
22      Similarly, the applicant submits, in essence, that the Board of Appeal infringed the obligation to state reasons. The reasoning in the contested decision, it argues, is unclear given that the Board of Appeal focused on the EU public that does not speak a Slavic language, whereas the relevant English-speaking and German-speaking public will understand the words ‘pilsen’ and ‘plzen’.
23      EUIPO, supported by the intervener, disputes the applicant’s arguments.
24      It is appropriate, in the first place, to uphold the conclusion of the Board of Appeal that the relevant public is the general public of the European Union, a fact which, moreover, has not been disputed by the parties.
25      With regard, in the second place, to the level of attention of the relevant public, it must be held that it is not clear from the contested decision what level of attention the Board of Appeal took into consideration. It found, at the time, that the level of attention of the relevant public was ‘not high’ and that it was ‘minimal’. In that regard, it must be stated that, even if the relevant public’s level of attention is not high (judgment of 19 October 2006, Bitburger Brauerei v OHIM – Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud), T‑350/04 to T‑352/04, EU:T:2006:330, paragraphs 68 and 69), it is also not ‘minimal’. It is pertinent to recall, in this regard, that it is settled case-law that the goods in question are everyday consumer goods aimed at the general public with an average level of attention (judgments of 12 July 2012, Unión de Cervecerías Peruanas Backus y Johnston v OHIM(Shape of a bottle), T‑323/11, not published, EU:T:2012:376, paragraph 14, and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 41; see also judgment of 16 February 2017, DMC v EUIPO – Etike’ International (De Giusti ORGOGLIO), T‑18/16, not published, EU:T:2017:85, paragraph 24 and the case-law cited). Whether this may have an impact on the lawfulness of the contested decision will be examined below at the stage of the global assessment of the likelihood of confusion.
26      In any event, the applicant’s argument, which has to be interpreted as meaning that the Board of Appeal ought to have found that the average consumer of beer displays a high level of attention, must be rejected as unfounded. It should be recalled, in this respect, that the goods involved are indeed everyday consumer goods, bought at affordable prices, which are normally widely distributed, ranging from the food section of a department store to bars and cafes.
27      With regard, in the third place, to the applicant’s argument that the element ‘Pilsen’ or ‘Plzen’ would be identified by an English-speaking and German-speaking public as a word familiar to them, it must be borne in mind that it is sufficient that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, exists in a 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). Although the Board of Appeal drew a distinction between the public which speaks a Slavic language and the public which does not, it did not fail to fulfil its obligation to state reasons, as the applicant claims (see paragraph 22 above). It is quite clear from the contested decision that the relevant public which the Board of Appeal took into consideration is the public of the European Union, but that it limited its assessment to the relevant public which does not speak a Slavic language. Thus, even if the English-speaking and German-speaking public were to understand the word ‘Pilsen’ or ‘Plzen’, the likelihood of confusion would remain in a part of the European Union within the meaning of the case-law cited above.
28      The applicant’s argument must therefore be rejected as unfounded.
29      It follows from the foregoing that the relevant public consists of the general public of the European Union displaying an average, and not minimal, level of attention, with the result that the Board of Appeal did not err in limiting its assessment to the relevant public which does not speak a Slavic language.
The comparison of the signs
30      The global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation 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).
31      The Board of Appeal founds that the signs compared were visually and phonetically similar to an above-average degree. Conceptually, the Board of Appeal found that the signs were not similar by reason of the fact that the relevant public would recognise the word ‘Pilsen’ or ‘Plzen’.
32      The applicant submits, in essence, that the visual and phonetic comparisons were carried out incorrectly, with the result that the Board of Appeal did not take account of the disputed mark as a trade mark consisting of two words, namely STAROPILSEN; STAROPLZEN.
33      EUIPO, supported by the intervener, disputes the applicant’s arguments.
34      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 23 October 2002, Matrazen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 December 2008, MIP Metro v OHIM – Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 41).
35      From a visual point of view, it must be held that the disputed mark consists of two word elements, namely the words ‘staropilsen’ and ‘staroplzen’. Those two words are separated by a semi-colon ‘;’.
36      The earlier marks are composed of a single word element, namely the word in capitals ‘STAROPRAMEN’.
37      As a preliminary point, it is necessary to reject the applicant’s argument that the Board of Appeal did not take into account the disputed mark as a whole. On the contrary, in paragraph 19 of the contested decision the Board of Appeal examined all the elements of the disputed mark. It is, moreover, following that overall assessment that the Board of Appeal concluded that it could reasonably be expected that the relevant public would pronounce only one of the word elements of the disputed mark and not because it failed to take into account the two word elements. In that mark, the same word is repeated, albeit in distinct language forms, a difference which the relevant public is likely to notice given the identity of the first part of the two word elements ‘staro’ and the strong similarity between the endings ‘Pilsen’ and ‘Plzen’. This is, as the Board of Appeal maintains, reinforced by the semicolon between the words, a sign normally used to link closely related and equally important ideas.
38      In this respect, it should be noted that, because of the presence of the semicolon and the repetition of the disputed mark in two different language forms, the relevant public will split that mark into two, focusing its attention on one of the two words.
39      In so far as the relevant public will focus its attention on one of the word elements in the disputed mark, the verbal elements of the signs at issue share the same structure from a visual point of view. The first parts ‘STAROP’ and the endings ‘EN’ are identical. Consequently, the signs at issue are visually similar to a high degree. In this respect, it should be noted that the first part of a sign has a significant impact on the overall impression produced by the mark (see judgments of 15 December 2009, Trubion Pharmaceuticals v OHIM – Merck (TRUBION), T‑412/08, not published, EU:T:2009:507, paragraph 40 and the case-law cited; of 25 March 2009, L’Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 30 and the case-law cited; and of 21 June 2012, Kavaklidere-Europe v OHIM — Yakult Honsha (Yakut), T‑276/09, not published, EU:T:2012:313, paragraph 45 and the case-law cited).
40      From a phonetic point of view, it is necessary, in the light of the foregoing considerations, to point out that the disputed mark will not be pronounced as a whole. Consumers are not likely to repeat two very close language versions when naming the goods at issue. On the contrary, as argued by the Board of Appeal in paragraph 21 of the contested decision, consumers will normally pronounce the word element of the disputed mark that corresponds to the language version which is closest to their mother tongue. It is also relevant to consider that the disputed mark would take too long to pronounce as a whole. It is therefore likely that the relevant public will pronounce only one of the two word elements.
41      Similarly, it must be held that the pronunciation of the signs being compared corresponds to the extent that the first two syllables are identical, the letter ‘p’ being central to the two signs and the grouping of the final letters ‘EN’ being identical. Furthermore, in many EU official languages the signs being compared have the same rhythm and are pronounced with the same intonation. Consequently, the signs at issue are phonetically similar to a high degree.
42      At a conceptual level, it should be pointed out that the disputed mark combines the term ‘staro’, derived from the Czech word ‘stary’ meaning ‘old, traditional,’ and ‘Pilsen’ or ‘Plzen’, which are both equivalent language versions referring to the Czech city of Plzeň. The earlier mark, for its part, combines the words ‘staro’ and ‘pramen’, the latter meaning ‘source’ or ‘natural flow of groundwater’ in Czech.
43      Having taken into account the fact that a section of the relevant public that does not speak a Slavic language would recognise the word ‘Pilsen’ or ‘Plzen’, the Board of Appeal concluded that the signs were not similar since, for that public, the earlier mark had no meaning.
44      However, the view must be taken that the marks at issue have no meaning for the majority of the relevant public that does not speak a Slavic language. In this respect, the case-law has accepted that, when the marks at issue have no meaning for the relevant public, it is not possible to carry out a conceptual comparison of the signs (judgment of 26 May 2016, Sfera Joven v EUIPO – Las banderas del Mediterráneo (NOOSFERA), T‑99/15, not published, EU:T:2016:321, paragraph 49; see also, to that effect, judgment of 16 September 2013, Gitana v OHIM – Teddy (GITANA), T‑569/11, not published, EU:T:2013:462, paragraph 67).
45      Given that, in the present case, in a substantial part of the EU Member States, the earlier marks and the disputed mark are devoid of any meaning, the conceptual comparison cannot have any bearing on the assessment of the likelihood of confusion.
The likelihood of confusion
46      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).
47      The Board of Appeal found, in paragraph 34 of the contested decision, that there was a likelihood of confusion on the part of the public in the European Union which does not speak a Slavic language, given the identity and similarity of the goods, in conjunction with the above-average visual and phonetic similarity and the normal level of distinctiveness of the earlier marks, the latter being devoid of any specific meaning for the relevant public that does not speak a Slavic language.
48      The applicant claims that, in its assessment, the Board of Appeal ought to have taken account of the fact that the contested mark consists of two word elements.
49      EUIPO, supported by the intervener, disputes the applicant’s arguments.
50      It should be recalled, first of all, that the goods are partly identical and partly similar to varying degrees and that the relevant public’s level of attention is average. It should also be recalled that the signs at issue are visually and phonetically similar to a high degree, but that they cannot be compared conceptually for the relevant public that does not speak a Slavic language.
51      In the light of the foregoing considerations and pursuant to the principle of interdependence between the factors to be taken into account, referred to in paragraph 46 above, it must be held that, on the basis of a global assessment, the Board of Appeal was right to find that there is a likelihood of confusion between the marks at issue. This is true even allowing for the fact that the relevant public has an average, and not a minimal, level of attention.
52      It follows from the foregoing that the single plea must be rejected.
Costs
53      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.
54      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Staropilsen s. r. o. to pay the costs.
Prek
Schalin
Costeira
Delivered in open court in Luxembourg on 26 June 2018.
E. Coulon
M. Prek
Registrar
President
*      Language of the case: English.