JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
20 December 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark WINE TALES RACCONTI DI VINO – Earlier EU figurative mark WINE TALES – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑655/22,
Torre Oria, SL, established in Derramador-Requena (Spain), represented by A. González López-Menchero and V. Valero Piña, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and T. Klee, acting as Agents,
defendant,
the other parties to the proceedings before the Board of Appeal of EUIPO, interveners before the General Court, being
Simone Giramondi, residing in Milan (Italy),
Damiano Antonelli, residing in Vignate (Italy),
represented by A. Parassina and A. Giovannardi, lawyers,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, D. Petrlík and K. Kecsmár (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure, in particular:
–        the measure of organisation of procedure of 4 July 2023,
–        the applicant’s reply lodged at the Court Registry on 5 July 2023,
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
1        By its action under Article 263 TFEU, the applicant, Torre Oria, SL, seeks the annulment in part of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 August 2022 (Case R 822/2022-5) (‘the contested decision’).
Background to the dispute
2        On 11 February 2020, the interveners, Mr Simone Giramondi and Mr Damiano Antonelli filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for designated goods and services contained in Classes 21, 25, 33, 35 and 41 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 corresponding, for each of those classes, to the following description:
–        Class 21: ‘Corkscrews’;
–        Class 25: ‘Clothing; footwear; headgear; parts of clothing, footwear and headgear’;
–        Class 33: ‘Alcoholic beverages [except beers]; alcoholic preparations for making beverages’;
–        Class 35: ‘Advertising; business management; business administration; office functions’;
–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.
4        On 7 May 2020, the applicant filed a notice of opposition to registration of the mark applied for in respect of part of the goods and services referred to in paragraph 3 above, namely those in Classes 33 and 35.
5        The opposition was based on the earlier EU figurative mark No 18154404, registered on 1 October 2020 for the following goods in Class 33: ‘Wines, sparkling wines’, as reproduced below:
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7        On 17 March 2022, the Opposition Division upheld the opposition in part for ‘alcoholic beverages [except beers]’ included in Class 33, on the ground that there was a likelihood of confusion. The opposition was rejected in respect of the other goods and services in Classes 33 and 35.
8        On 13 May 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal annulled the decision of the Opposition Division in part in so far as the opposition had been rejected for ‘alcoholic preparations for making beverages’ included in Class 33, on the ground that there was a likelihood of confusion with regards to those goods. Regarding ‘advertising; business management; business administration; office functions’ in Class 35, the Board of Appeal upheld the decision of the Opposition Division.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision in part to the extent that the opposition was rejected in respect of the services in Class 35;
–        reject the application for registration of the mark applied for in respect of the designated services in Class 35;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs if a hearing is held.
12      The interveners contend that the Court should:
–        dismiss the action as unfounded;
–        uphold the contested decision;
–        allow registration of the mark applied for in respect of the services in Class 35;
–        order the applicant to pay the costs.
Law
The jurisdiction of the General Court to rule on certain heads of claim
13      By its second head of claim, the applicant asks the Court to reject the application for registration of the EU trade mark applied for in respect of the designated services in Class 35.
14      Also, the interveners contend that the Court should allow the registration of the mark applied for with respect to Class 35, as originally claimed before EUIPO on 11 February 2020.
15      Those heads of claim may be understood as asking the Court to alter the contested decision within the meaning of Article 72(3) of Regulation 2017/1001, by adopting the decision which the Board of Appeal ought to have taken, in accordance with the provisions of that regulation.
16      However, the Board of Appeal can be called upon to rule only on certain of the conditions for registration of an EU trade mark, that is to say, either on the compliance of applications for registration with the provisions of that regulation, or on the outcome of any opposition to such applications. Therefore, the Board of Appeal does not have the power to take cognisance of an application seeking that it refuse or allow the registration of an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting that it alter the decision of a Board of Appeal to that effect (see, to that effect, judgments of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited, and of 7 June 2023, Laboratorios Ern v EUIPO – BRM Extremities (BIOPLAN), T‑543/22, not published, EU:T:2023:320, paragraphs 13 and 14 and the case-law cited).
17      In those circumstances, the second head of claim of the applicant and the third head of claim of the interveners must be rejected on the ground that the Court does not have jurisdiction.
18      The interveners also seek, by their second head of claim, that the contested decision be upheld.
19      Given that ‘upholding’ the contested decision is tantamount to dismissing the action, the intervener’s second head of claim must be regarded as seeking, in essence, the dismissal of the action (see judgment of 13 December 2016, Apax Partners v EUIPO – Apax Partners Midmarket (APAX), T‑58/16, not published, EU:T:2016:724, paragraph 15 and the case-law cited).
Substance
Admissibility of new evidence in the light of the pre-litigation procedure
20      EUIPO states that the evidence produced in Annex A.6 to the application, and the two screenshots from the website of the interveners which are shown on pages 5 and 6 of the application, were not filed in the context of the proceedings before EUIPO and, therefore, were produced for the first time before the Court. It submits that those items of evidence are therefore inadmissible.
21      In that regard, it must be pointed out that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
22      Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Therefore, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
23      However, it is apparent from an examination of the documents before the Court and from the applicant’s reply to a written question put by the Court in the context of measures of organisation of the procedure that the two screenshots on pages 5 and 6 of the application were indeed submitted in the context of the appeal brought by the applicant before the Board of Appeal (pages 83 and 84 of EUIPO’s administrative file) without the latter declaring them inadmissible. The same applies to the screenshots relating to the presentation of services provided by the interveners and reproduced on pages 40 and 41 of Annex A.6 to the application (page 83 of EUIPO’s administrative file). It must therefore be considered that that evidence was produced and admitted during the administrative proceedings before EUIPO, and must therefore be declared admissible.
24      By contrast, since the screenshots of the interveners’ website on the subjects ‘About us, we are Winetales’ (page 38 of Annex A.6 to the application), ‘What do we do’ (page 39 of Annex A.6 to the application), ‘Maximum Cellars’ (page 42 of Annex A.6 to the application) and ‘Contact us’ (page 43 of Annex A.6 to the application) were produced for the first time before the Court, they should be discounted as inadmissible.
The single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
25      In support of its single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001, the applicant disputes the Board of Appeal’s findings, according to which the services covered by the mark applied for in Class 35 are not similar to goods covered by the earlier mark, namely ‘wines; sparkling wines’ in Class 33. According to the applicant, those goods and services are complementary. In that regard, the applicant states that the Board of Appeal did not take into account the particular circumstances of the case.
26      EUIPO and the interveners dispute those arguments.
27      Under Article 8(1)(b) of Regulation 2017/1001, 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.
28      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors 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).
29      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).
30      In that respect, it must be borne in mind that, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
31      It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was correct to find that, regarding the marks at issue, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of the relevant public for the services in Class 35 covered by the mark applied for.
32      As a preliminary point, the parties do not dispute the findings of the Board of Appeal according to which (i) the relevant public for the purposes of assessing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 is that of the European Union, the assessment being focused on the Italian-speaking part of the public, (ii) the goods and services being compared are directed both at the general public and at business customers with specific professional knowledge or expertise, and (iii) the level of attention of that public may therefore vary from average to high, depending on the price, frequency of purchasing, the specialised nature or terms and conditions of the goods and services purchased.
33      In the first place, the applicant criticises the Board of Appeal for failing to find that the goods covered by the earlier mark, in Class 33, and the services covered by the mark applied for, in Class 35, were similar. In that regard, according to the applicant, the Board of Appeal should have found that the basic English word ‘wine’ was included in the mark applied for, as was the representation of a glass of red wine, which would indicate that the services covered by the mark applied for are specifically intended for the wine sector. The applicant also complains that the Board of Appeal failed to take account of the fact that the interveners were already using a domain name for a website which consisted of the word element of the earlier trade mark and that, as the content of that website would show, their activity was directed exclusively towards the wine sector.
34      In the present case, first, as EUIPO has correctly submitted, the fact that the mark applied for contains the word element ‘wine’ and the representation of a glass of wine has no impact on the comparison of the goods and services at issue. That comparison must be made, as follows from the case-law in paragraph 30 above, not in relation to the signs at issue, but by taking account of the relevant factors listed in paragraph 30, which characterise the relationship between those goods or services, as correctly indicated in paragraphs 38 and 48 of the contested decision.
35      Secondly, it should be noted that, for the purposes of assessing whether there is a likelihood of confusion, only the description of the goods and services in respect of which registration of the trade mark was sought is relevant. On the other hand, the intended or actual use of that mark cannot be taken into account, since the registration does not contain a restriction to that effect. It follows that the specific use which the proprietor of the mark applied for has made of its sign is not capable of changing the goods or services taken into account for the purposes of the assessments underlying the finding of the existence of a likelihood of confusion, such as the definition of the relevant public and its level of attention or the similarity between those goods or services in the mind of that public (see judgment of 4 May 2022, Fidelity National Information Services v EUIPO – IFIS (FIS), T‑237/21, not published, EU:T:2022:267, paragraph 29 and the case-law cited).
36      In the present case, the application for registration of the mark applied for in respect of services in Class 35 is general in that it relates to ‘advertising; business management; business administration; office functions’ and is therefore not indicative of use limited to the wine sector.
37      In that respect, the fact that the services of ‘advertising; business management; business administration; office functions’ in Class 35 and covered by the mark applied for may be provided, inter alia, for the purpose of promoting, advertising, managing or administering undertakings which manufacture the applicant’s goods, such as wines in Class 33, does not mean there is necessarily a link between them, because the services in Class 35 covered by the mark applied for may be provided for a vast range of goods of very different kinds (see, by analogy, judgment of 30 September 2016, Flowil International Lighting v EUIPO – Lorimod Prod Com (Silvania Food), T‑430/15, not published, EU:T:2016:590, paragraph 25).
38      Thus, whereas the goods in Class 33 covered by the earlier mark refer to ‘wines and sparkling wines’, the services covered by the mark applied for in Class 35, referred to in paragraph 36 above, consist of supporting or assisting other undertakings in carrying on or improving their activities. Therefore, the Board of Appeal was right to conclude that the services covered by the mark applied for in Class 35 differed from the goods covered by the earlier mark in Class 33, inter alia due to their nature, their intended purpose and their method of use.
39      Thirdly, it should be considered, as the Board of Appeal did, that the goods and services concerned do not share the same distribution channels. Given the significant differences between the goods and services concerned, it cannot be concluded that the consumer would consider that they could be sold or supplied in the same places.
40      In the second place, the applicant complains that the Board of Appeal failed to take into account the complementary nature of the goods and services at issue. In that regard, it complains that the Board of Appeal failed to have regard to the fact that the process of designing a wine label constitutes the first stage in the production and sale of wines by wineries, giving rise to a likelihood of confusion for consumers. Next, the fact that the labels developed by the interveners are affixed to bottles of wine sold in the same specialised sales outlets as the wine marketed under the earlier trade mark is likely to facilitate the perception on the part of the consumer concerned of the close links between the services covered by the trade mark applied for and the goods covered by the earlier trade mark, and to reinforce the impression that responsibility for their manufacture lies with the same undertaking. Finally, according to the applicant, it was as a precaution that the interveners applied for registration of the trade mark applied for not only in respect of the services at issue in Class 35, but also in respect of the goods in Class 33, because they considered that that was a class of goods complementary to their business.
41      In that regard, it should be noted that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
42      When examining whether the consumer generally expected a link between the goods or services, account must be taken of the economic reality on the market as it currently exists (judgment of 16 January 2018, Sun Media v EUIPO – Meta4 Spain (METAPORN), T‑273/16, EU:T:2018:2, paragraphs 41 and 42).
43      First, without it being necessary to consider whether the design of a wine label by an advertising company for a wine producer can be regarded as part of the process of producing and then selling the wine, it should be noted that the fact that a service may be used at a stage in the production or packaging of a final product does not mean that the relevant public will assume that the contested service and the final product are offered by the same undertaking and are therefore complementary (see, to that effect and by analogy, judgments of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO – Fink (NANA FINK), T‑39/16, EU:T:2017:263, paragraph 89, and of 25 September 2018, Grendene v EUIPO – Hipanema (HIPANEMA), T‑435/17, not published, EU:T:2018:596, paragraph 71 and the case-law cited).
44      In the present case, it should therefore be ruled out that consumers may think that the responsibility for manufacturing those goods or providing those services lies with the same undertaking.
45      Secondly, contrary to the applicant’s submission, the mere fact that the trade mark applied for covers not only services in Class 35 but also goods in Class 33 does not demonstrate that there is a close link between them for the purpose of the case-law cited in paragraph 41 above.
46      Having regard to the foregoing, the applicant has failed to establish that the goods covered by the earlier mark were indispensable or important for the use of the services designated by the mark applied for or that the provision of those services was indispensable or important for the use of the goods designated by the earlier mark.
47      It is clear from all the foregoing that the services in Class 35 covered by the trade mark applied for and the goods in Class 33 covered by the earlier trade mark are different. Therefore, since one of the conditions necessary for a finding of a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001, namely the similarity of the goods and services at issue, is not satisfied, the Board of Appeal was right to find that there was no likelihood of confusion and to reject the opposition in respect of the services in Class 35 covered by the trade mark applied for.
48      Accordingly, the application must be dismissed in its entirety.
Costs
49      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.
50      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the interveners, in accordance with the form of order sought by the interveners. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that an oral hearing is convened, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Torre Oria, SL, in addition to bearing its own costs, to pay those incurred by Mr Simone Giramondi and Mr Damiano Antonelli;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kornezov
Petrlík
Kecsmár
Delivered in open court in Luxembourg on 20 December 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.