JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
19 January 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark LUBELSKA — Earlier national word mark Lubeca — Relative ground for refusal — Likelihood of confusion — Level of attention of the public — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑701/15,
Stock Polska sp. z o.o., established in Warsaw (Poland), represented by T. Gawrylczyk, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Lass &amp; Steffen GmbH Wein- und Spirituosen-Import, established in Lübeck (Germany), represented by R. Kunz-Hallstein, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 24 September 2015 (Case R 1788/2014-5), relating to opposition proceedings between Lass &amp; Steffen Wein- und Spirituosen-Import and Stock Polska,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni (Rapporteur), President, L. Madise and K. Kowalik-Bańczyk, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 November 2015,
having regard to the response of EUIPO lodged at the Court Registry on 3 May 2016,
having regard to the response of the intervener lodged at the Court Registry on 29 April 2016,
having regard to the fact that no request for a hearing was submitted by the main 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 14 March 2013, the applicant, Stock Polska sp. z o.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).
2        The mark in respect of which registration was sought is the following figurative sign:
3        The goods in respect of which registration was sought are 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, and correspond to the following description: ‘Alcoholic beverages (except beers)’.
4        On 30 July 2013, the intervener, Lass & Steffen GmbH Wein- und Spirituosen-Import, filed with EUIPO a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all of the goods referred to in the application for registration.
5        The opposition was based on the earlier German word mark, Lubeca, registered on 28 January 1985 under No 1073075, for ‘Alcoholic beverages (except beers)’, in Class 33.
6        By decision of 14 May 2014, the Opposition Division of EUIPO upheld the opposition. It found, essentially, that there was a likelihood of confusion as a result of the identity of the goods concerned and of the similarity of the signs at issue.
7        On 11 July 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
8        By decision of 24 September 2015 (the ‘contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. It found, first of all, that the relevant territory for the assessment of the likelihood of confusion was Germany and that the level of attention of the relevant consumer was average, taking into consideration the nature of the goods in question (paragraph 11 of the contested decision). The Board of Appeal then noted that a crown device placed above the verbal component of the sign applied for was not particularly distinctive in the context of alcoholic beverages and inferred from this that the focus of the relevant public would rather be on the verbal components of the signs at issue (paragraphs 14 and 16 of the contested decision). Having regard to the significant phonetic and visual similarities between those verbal elements, which were not outweighed by the alleged conceptual differences concerning their meanings in languages other than German, the Board of Appeal found that the signs at issue were similar overall (paragraphs 15 and 17 of the contested decision). Taking into account this similarity and the identity of the goods in question, the Board of Appeal confirmed the existence of a likelihood of confusion in the case at hand (paragraph 20 of the contested decision).
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
12      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, an earlier trade mark and because of 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
13      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 that same case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, 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 Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
14      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes 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).
15      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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
16      It is in the light of those considerations that it is necessary to examine whether, as the applicant claims, the Board of Appeal erred in finding that there was a likelihood of confusion in the present case.
17      The applicant submits, in support of this claim, that the Board of Appeal incorrectly assessed the level of attention of the average consumer and the similarity of the signs at issue.
Level of attention of the average consumer
18      As a preliminary point, it must be borne in mind that the applicant does not dispute the Board of Appeal’s assessment, which must be upheld, that the relevant territory for assessing the likelihood of confusion is Germany, in view of the fact that the earlier mark was registered in that Member State.
19      The applicant disputes, by contrast, the level of attention of the relevant German consumer identified by the Board of Appeal in the contested decision, namely, an average level of attention.
20      According to the applicant, the level of attention of the relevant public is higher than average, having regard to the limited access to the goods at issue, mainly due to restrictions on their sale to minors, their high price, the occasional nature of their purchase and the fact that their purchase will be conditioned by the individual and specific tastes of customers.
21      It should be borne in mind, in this regard, that according to settled case-law, also evoked by the applicant, in the assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, account must be taken of the average consumer of the category of goods or services concerned, who is, in principle, 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).
22      In the present case, the goods concerned are ‘Alcoholic beverages (except beers)’ (see paragraphs 3 and 5 above). According to consistent case-law, firstly, these goods are for everyday consumption and are normally widely distributed, ranging from the food section of supermarkets, department stores and other retail outlets to restaurants and cafés and, secondly, the consumer of alcohol is a member of the general public, who is deemed to be reasonably well informed and reasonably observant and circumspect, and who will demonstrate an average level of attention when purchasing such goods (see, to that effect, judgments of 14 May 2013, Masottina v OHIM — Bodegas Cooperativas de Alicante (CA’ MARINA), T‑393/11, not published, EU:T:2013:241, paragraph 24, and of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, not published, EU:T:2015:446, paragraph 23; see also judgment of 4 May 2016, Bodegas Williams &amp; Humbert v EUIPO — Central Hisumer (BOTANIC WILLIAMS &amp; HUMBERT LONDON DRY GIN), T‑193/15, not published, EU:T:2016:266, paragraphs 24 and 25 and the case-law cited).
23      This assessment is not called into question by the limitations on access to alcoholic beverages resulting from restrictions on their sale depending on the age of consumers. While such restrictions result in those goods being limited to adult consumers from among the relevant public (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 41), and even though traders are particularly attentive to the age of consumers when selling such goods, those restrictions do not imply as such that the adult consumers in question demonstrate an enhanced level of attention when making their purchases.
24      Furthermore, it must be pointed out that the applicant’s reliance on the high price and the occasional nature of the purchase of ‘alcoholic beverages (except beers)’ concerns, in any event, only certain beverages (see, to that effect, judgment of 30 June 2015, VIÑA ALBERDI, T‑489/13, not published, EU:T:2015:446, paragraph 24 and the case-law cited), including the ‘strong alcohol’ which is, according to the applicant, covered by the trade mark application. The category of goods in question, such as that which concerns the trade-mark application and is covered by the earlier mark, is not limited to such strong alcohol but also includes other alcoholic beverages, such as wine and sparkling wine, and it is for EUIPO to take into account the average consumer of that category and not a specific type of consumer of certain goods within a larger category of goods (see, to that effect, judgments of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraphs 37 and 38 and the case-law cited, and of 14 May 2013, CA’ MARINA, T‑393/11, not published, EU:T:2013:241, paragraph 23).
25      Similarly, the fact that the purchase of alcoholic beverages is determined by the individual and specific tastes of purchasers is no more pertinent in support of the claim that consumers of alcoholic beverages demonstrate a high level of attention, since, as rightly observed by EUIPO, the purchase according to such preferences applies to virtually any foodstuff or beverage as well as to many other mass consumption goods.
26      It follows that the Board of Appeal did not err in taking the view that average consumers of ‘alcoholic beverages (except beers)’ demonstrate an average degree of attention when making their purchases, even though it cited, in support of its assessment, the judgment of 20 February 2013, Caventa v OHIM — Anson’s Herrenhaus (BERG) (T‑225/11, not published, EU:T:2013:82, paragraph 33), in which the Court characterised the degree of attention of the average consumer of goods other than alcoholic beverages as ‘normal’.
Comparison of the signs at issue
Account to be taken of the figurative elements of the mark applied for
27      The applicant claims that the Board of Appeal did not compare the signs at issue considered as a whole, and thereby neglected the figurative elements of the mark applied for. Both the crown placed above the verbal component of that mark and the convex shape of the writing of this component, non-banal and non-standard, allow, it argues, the goods in question to be identified as originating from a particular undertaking and also present a distinctive character within the mark applied for.
28      As is apparent from settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components (see judgment of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 47 and the case-law cited).
29      For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question (see judgments of 13 June 2006, Inex v OHIM — Wiseman (representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited, and of 1 March 2016, BrandGroup v EUIPO — Brauerei S. Riegele, Inh. Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 33 and the case-law cited].
30      It must also be borne in mind that, according to case-law, when a mark is composed of word and figurative elements, the word element of that mark is, in principle, more distinctive than the figurative element, because the average consumer can more easily refer to the goods in question by quoting their name than by describing the figurative element (see judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited, and of 6 September 2013, Leiner v OHIM — Recaro (REVARO), T‑349/12, not published, EU:T:2013:412, paragraph 23 and the case-law cited].
31      In the present case, the applicant takes the view that this case-law, also noted by the Board of Appeal in the contested decision (paragraph 14), is not applicable to the mark applied for, the figurative elements of which are not less distinctive than its word element ‘lubelska’ and which contribute, in the context of a global assessment of that mark, to give it a non-banal and non-standard character.
32      The view must, however, be taken that the arguments put forward by the applicant do not permit the finding of a greater distinctive character in the figurative elements of the mark applied for.
33      First, with regard to the crown, contrary to the applicant’s submission, the use of circles and rectangles in its representation, which are simple geometric shapes and can correspond to a drawing of a crown, is not atypical and is not liable substantially to influence the overall impression created by the sign applied for. That figurative element will, rather, be perceived by the consumer as essentially decorative, or even laudatory (see, in this regard, judgment of 18 November 2015, Menelaus v OHIM — Garcia Mahiques (VIGOR), T‑361/13, not published, EU:T:2015:859, paragraph 70), and not as an element indicating the commercial origin of the goods in question. It might also be added, as pertinently pointed out by the Board of Appeal (paragraph 16 of the contested decision) and not disputed by the applicant, that the crown is a figurative element commonly used in the beverages sector, especially that of alcoholic beverages, therefore ruling out, for the same reason, the possibility that the crown might exercise a significant influence on the overall perception of the mark applied for and distinguish goods covered by that mark from those of other undertakings.
34      Second, with regard to the curved writing of the word element of the mark applied for, the applicant confines itself to evoking its fanciful character. The view must, however, be taken that this form of writing corresponds to a simple geometric shape, commonly used for labels affixed to bottles, adding to the rounded shape of the crown, and will therefore be perceived, like that crown, as being essentially decorative.
35      It follows that the Board of Appeal did not err in taking into account the figurative elements of the mark applied for and that, in particular, it properly took the view, in substance, that the word elements of that mark were more distinctive than its figurative elements.
Assessment of the similarity of the signs at issue
36      The applicant submits, firstly, that the board of Appeal erred in taking the view that the word elements of the signs at issue were devoid of specific meaning for the German consumer. ‘Lubeca’, it contends, is associated with the German city of Lübeck, while ‘lubelska’ would be perceived as being devoid of specific meaning, or as alluding to the Polish city of Lublin, which should have led the Board of Appeal to regard the signs at issue as conceptually different. Second, it maintains that the two signs are different visually as well as phonetically, because of the differing central letters (‘c’ in the earlier sign and ‘lsk’ in the sign applied for) and the differences in pronunciation and stress in German. Furthermore, the applicant emphasises that the assessment of similarity between the signs must be carried out by considering the signs at issue as a whole and taking account of the decisive visual and conceptual qualities produced by the different elements of those signs.
37      It should be borne in mind, as a preliminary point, that the Board of Appeal referred, with regard to the visual, phonetic and conceptual comparison of the signs at issue, to the assessment carried out by the Opposition Division (paragraph 20 of the contested decision) and added, ‘for the sake of completeness’, that it was unlikely that the average German consumer would be aware of the semantic connotations of the word elements ‘lubeca’ and ‘lubelska’, as alleged by the applicant (paragraph 15 of the contested decision). It inferred from this that the significant visual and phonetic similarities between the signs at issue were not outweighed by conceptual differences (paragraph 17 of the contested decision).
38      It should be observed that, visually, the word elements of the signs at issue begin with the same group of letters, ‘lube’, end with the same letter ‘a’, and are distinguishable only by their central letters, namely the letter ‘c’ in the earlier sign and the group of letters ‘lsk’ in the sign applied for. This dissimilarity, as well as that resulting from the figurative elements in the sign applied for alone, cannot, in the light of the considerations set out in paragraphs 30 to 35 above, prevail over the similarities between the word elements at issue referred to above.
39      Likewise, phonetically, taking account, furthermore, of the identical pronunciation in German of the letters ‘c’ and ‘k’, the only differences in the pronunciation of the word elements at issue relate to the pronunciation of the two additional letters ‘l’ and ‘s’ in the sign applied for. The sounds of the three syllables that make up the word elements of the signs at issue (‘lu’, ‘be’, and ‘ca’ for the earlier sign and ‘lu’, ‘bel’ and ‘ska’ for the sign applied for) are thus very similar, and this similarity is not brought into question by the applicant’s claim relating to the stress on the syllables, which is in no way explained or, a fortiori, substantiated.
40      It must, admittedly, be borne in mind that, according to settled case-law, the conceptual differences found between signs can counteract the phonetic and visual similarities between those signs. Moreover, in order for there to be such a counteraction, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning, with the result that the public is capable of grasping it immediately (judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20, and of 14 October 2003, BASS, T‑292/01, EU:T:2003:264, paragraph 54).
41      In the present case, however, the applicant has not established that at least one of the two word elements at issue has a clear and specific meaning for the average German consumer.
42      As regards the element ‘lubelska’, the meaning submitted by the applicant, namely the location of a plant in the Polish city of Lublin, is derived from the Polish language and thus presupposes some knowledge of that language. Such knowledge of the vocabulary of a foreign language other than at a basic level cannot be presumed in the case of the general public (see, to that effect, judgments of 13 September 2010, Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 83, and of 24 June 2014, Hut.com v OHIM — Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 40 and the case-law cited). Moreover, the applicant submits, principally and before the subsidiary evocation of that allusion to the city of Lublin, that ‘lubelska’ is a ‘fanciful sign’ as opposed to ‘lubeca’, which the average German consumer understands perfectly.
43      With regard to the element ‘lubeca’, its meaning alleged by the applicant, namely the Latin name of the German city of Lübeck, cannot, on the assumption that it is established, be regarded as sufficiently clear and precise for the average German consumer. Even if it were acknowledged that the relevant public has some knowledge of Latin, ‘lubeca’ is not a common Latin term the meaning of which is considered to be known by the average German consumer (see, conversely, relating to the comprehension of common Latin terms by the relevant public, judgments of 28 November 2013, Vitaminaqua v OHIM — Energy Brands (vitaminaqua), T‑410/12, not published, EU:T:2013:615, paragraph 57, and of 28 January 2015, BSH v OHIM — Arçelik (AquaPerfect), T‑123/14, not published, EU:T:2015:52, paragraph 34). The applicant’s argument relating to the meaning of the word element ‘lubeca’ must therefore be rejected, without the need to rule on the admissibility and probative value of the applicant’s annex containing extracts relating to the term ‘lubeca’ from the internet site Wikipedia, disputed by EUIPO.
44      It follows that the Board of Appeal properly took the view, in paragraph 17 of the contested decision, that the visual and phonetic similarities of the signs at issue were not outweighed by conceptual differences, particularly because, according to the case-law, when the goods concerned, such as those at issue in the present case, are also ordered verbally for consumption in bars, restaurants or nightclubs, the phonetic similarity between the marks at issue is, by itself, sufficient to give rise to a likelihood of confusion (see, to that effect, judgment of 19 May 2015, Granette &amp; Starorežná Distilleries v OHIM — Bacardi (42 VODKA JEMNÁ VODKA VYRÁBĚNÁ JEDINEČNOU TECHNOLOGIÍ 42%vol.), T‑607/13, not published, EU:T:2015:292, paragraph 110 and the case-law cited].
Global assessment of the likelihood of confusion
45      It follows from the foregoing and from the identity of the goods concerned, correctly established in the contested decision (paragraph 12) and not disputed by the applicant, that the Board of Appeal did not err in finding a likelihood of confusion between the marks at issue with regard to the origin of the designated goods on the part of average German consumers, who might believe that those goods come from the same undertaking or from economically-linked undertakings.
46      Consequently, the applicant’s single plea in law must be rejected and the action must be dismissed in its entirety.
Costs
47      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. 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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Stock Polska sp. z o.o. to pay the costs.
GervasoniMadise Kowalik-Bańczyk
Delivered in open court in Luxembourg on 19 January 2017.
E. Coulon
G. Berardis
Registrar
President
* Language of the case: English.