Provisional text
JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
24 November 2016 (1)
(EU trade mark — Opposition proceedings — Application for EU word mark CLAN — Earlier EU word mark CLAN MACGREGOR — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Likelihood of confusion — Similarity of the goods covered by the signs at issue — Relevant public — Interdependence of the criteria — Power to alter — Article 65(3) of Regulation No 207/2009)
In Case T‑250/15,
Speciality Drinks Ltd, established in London (United Kingdom), represented by G. Pritchard, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Vuijst, A. Folliard-Monguiral and M. Rajh, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
William Grant & Sons Ltd, established in Dufftown (United Kingdom), represented by J. Cormack and G. Anderson, solicitors,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 5 March 2015 (Case R 220/2014-1), relating to opposition proceedings between William Grant & Sons Ltd and Speciality Drinks Ltd,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias (Rapporteur), President, M. Kancheva and N. Półtorak, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 21 May 2015,
having regard to the response of EUIPO lodged at the Court Registry on 6 October 2015,
having regard to the response of the intervener lodged at the Court Registry on 13 October 2015,
further to the hearing on 15 July 2016,
gives the following
Judgment
Background to the dispute
1        On 7 June 2011, the applicant, Speciality Drinks Ltd, filed an application for the 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 trade mark in respect of which registration was sought is the word sign CLAN designating goods in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the purpose of the Registration of Marks of 15 June 1957, as revised and amended, which correspond to the following description: ‘Alcoholic beverages (excluding beers and wines); but insofar as whisky and whisky based liqueurs are concerned only Scotch whisky and Scotch whisky based liqueurs produced in Scotland’.
3        The application for registration was published in Community Trade Marks Bulletin No 115/2011 of 21 June 2011.
4        On 21 September 2011, the intervener, William Grant & Sons Ltd, brought opposition proceedings pursuant to Article 41 of Regulation No 207/2009. The intervener relied on the grounds for refusal laid down in Article 8(1)(b) and Article 8(5) of that regulation.
5        The opposition was based, inter alia, on the EU word mark CLAN MACGREGOR, registered on 24 February 1998 under No 758 672, designating goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (excluding beers and wines); but insofar as whisky and whisky based liqueurs are concerned only Scotch whisky and Scotch whisky based liqueurs produced in Scotland’.
6        The applicant requested that the intervener prove genuine use, in particular, of the earlier mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009.
7        By decision of 10 December 2013, the Opposition Division found, first of all, that the earlier mark had not been the object of genuine use for all the goods covered by it but only for goods falling within Class 33 and corresponding to the description ‘Scotch whisky’. Next, it found that there was a likelihood of confusion between the earlier mark and the mark applied for. Since that finding was sufficient for the opposition based on Article 8(1)(b) of Regulation No 207/2009 to be upheld, the Opposition Division did not examine either the other rights relied on by the intervener or its arguments based on Article 8(5) of that regulation.
8        On 16 January 2014, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
9        By decision of 5 March 2015 in Case R 220/2014-1 (the ‘contested decision’), the First Board of Appeal of EUIPO dismissed that appeal.
10      More specifically, after finding that the goods designated by mark applied for included goods for which genuine use of the earlier mark had been proven, the Board of Appeal considered that the relevant public, namely average consumers of Scotch whisky throughout the European Union, had an average level of attention.
11      As regards the comparison of the signs at issue, the Board of Appeal considered that the marks were globally similar, ‘though to an average degree only’. In that regard, the Board of Appeal held that visually and phonetically, their average similarity resulted from their common element ‘clan’, which appeared at the start of the earlier mark and attracted, therefore, most attention from consumers. Furthermore, the signs at issue shared a certain conceptual content, namely the notion of the word ‘clan’, and would thus present an average conceptual similarity. In its assessment, the Board of Appeal also observed that, despite its allegations that the presence of the element ‘clan’ was insufficient to establish a likelihood of confusion, the applicant’s argument did not go so far as to assert that the element ‘clan’ has a low degree of distinctive character. Thus, in the absence of evidence to the contrary, the Board of Appeal found that that element had an average degree of distinctive character.
12      Taking into account those findings and the fact that the goods at issue were identical, the Board of Appeal accepted that there was a likelihood of confusion between the marks and consequently upheld the Opposition Division’s decision.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision and reject the opposition;
–        make a costs award in its favour ‘and/or’ reverse the costs order made by the First Board of Appeal.
14      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
15      Finally, the intervener contends that the Court should:
–        confirm the contested decision and dismiss the application;
–        make an order for costs in its favour.
Law
16      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It claims, first, that the contested decision should be annulled and, secondly, that the opposition should be rejected.
17      It must be noted, in that regard, that both the first form of order sought by the applicant, which seeks the rejection of the opposition, and the second form of order sought, which seeks the reversal of the order for costs made by the Board of Appeal, aim to obtain, as the applicant confirmed at the hearing, a decision by the Court to replace the decision which, according to the applicant, the Board of Appeal should have taken when it was seised of the appeal. It is apparent from the second sentence of Article 64(1) of Regulation No 207/2009 that the Board of Appeal may annul the decision of the EUIPO adjudicating body which took the contested decision and exercise any power within the competence of that body, in the present case to rule on the opposition and reject it, drawing, if it does so, the consequences of that annulment as regards the costs. Consequently, that measure is amongst those that the Court may make in the exercise of its power to alter decisions under Article 65(3) of the regulation (see judgment of 13 May 2015, easyGroup IP Licensing v OHIM — Tui (easyAir-tours), T‑608/13, not published, EU:T:2015:282, paragraph 20 and the case-law cited).
The application for annulment
18      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 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 designated (see judgment of 4 May 2016, Bodegas Williams & Humbert v EUIPO — Central Hisumer (BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN), T‑193/15, not published, EU:T:2016:266, paragraph 16 and the case-law cited).
19      In addition, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods and services concerned, who is reasonably well informed and reasonably observant and circumspect (see judgment of 4 May 2016, BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN, T‑193/15, not published, EU:T:2016:266, paragraph 17 and the case-law cited).
20      It must be noted that, in the present case, the Board of Appeal’s finding that the relevant public for the goods covered by the signs at issue is made up of the general public of the European Union is not contested. Furthermore, since that finding is not flawed, it must be upheld. The same is true for the findings made by the Board of Appeal as to the identity of the goods at issue in the present case.
21      Only the Board of Appeal’s conclusions as to, first, the level of attention of the relevant public and, second, the comparison of the signs at issue, are disputed in the present case.
22      It is necessary, therefore, to examine the paragraphs of the contested decision that concern the level of attention of the relevant public, the comparison of the signs at issue and, finally, as to whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
The level of attention of the relevant public
23      In the applicant’s submission, the case-law according to which, given that alcoholic beverages are everyday consumer goods, such beverages do not target a specialist public does not necessarily mean that the level of attention of the relevant public is not likely to vary depending on the alcoholic beverage in question. Furthermore, the Board of Appeal did not examine the detailed factual arguments advanced by the applicant to show that the average consumer would pay higher degree of attention when buying Scotch whisky. The applicant submits, more specifically, that Scotch whisky is a drink ‘a class apart’, strongly associated with the idea of masculinity, which ‘inspires a devoted following among its connoisseurs’ and inspires ‘a near cult-like devotion in some drinking circles’. The applicant argues, moreover, that the price of Scotch whisky in general, not only at the highest echelons, is higher than that of other spirit drinks.
24      EUIPO and the intervener dispute the applicant’s arguments.
25      In that regard, it must be held that alcoholic drinks are, in general, everyday consumer goods, which are usually subject to widespread distribution, ranging from the food section of supermarkets, department stores and other retail sales outlets, to restaurants and cafés (judgments of 11 September 2014, Aroa Bodegas v OHIM — Bodegas Muga (aroa), T‑536/12, not published, EU:T:2014:770, paragraph 55, and of 4 May 2016, BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN, T‑193/15, not published, EU:T:2016:266, paragraph 24). The applicant does not challenge those findings.
26      According to settled case-law, the consumer of alcoholic drinks is a member of the general public, deemed to be reasonably well informed and reasonably observant and circumspect (see judgment of 4 May 2016, BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN, T‑193/15, not published, EU:T:2016:266, paragraph 25 and the case-law cited).
27      The applicant alleges that the Board of Appeal wrongly considered that it was bound by that case-law and did not, therefore, carry out a specific assessment of the facts in the present case.
28      However, as EUIPO emphasised in its response, those allegations are based on an incorrect reading of the contested decision. It is true that, in paragraph 17 of the decision, the Board of Appeal stated that the assumption that the consumer would show a high level of attention was ‘contradicted by the case-law’. It, however, went on to find that even if the applicant’s assumption were regarded as proven, it would only concern ‘a small number of connoisseurs’, whereas Scotch Whisky ‘is a popular beverage ... [also] available to less knowledgeable drinkers’. Thus, the Board of Appeal did not reject the applicant’s argument automatically because it considered itself ‘bound’ by the aforementioned case-law. It merely stated that, even if the applicant’s allegations were proven and it was therefore necessary to accept that Scotch whisky ‘inspires a devoted following among its connoisseurs’ and inspires ‘a near cult-like devotion in some drinking circles’ of those connoisseurs, those findings would only concern a limited number of the range of consumers making up the general public and could not, therefore, call into question the finding that the average consumer of Scotch whisky is not necessarily a great connoisseur of that category of goods.
29      It is necessary to confirm that finding, which, as to the remainder, is not called into question by the arguments advanced by the applicant before the Court.
30      As EUIPO submits, in essence, in its response, the case-law referred to in paragraph 26 above does not exclude that certain subcategories of alcoholic drinks, such as, for example, certain categories of Scotch whisky, can, due to their rarity or their high price, target a limited number of connoisseurs or even collectors who would show a high degree of attention. None the less, that finding cannot be automatically valid as regards the average consumer of the alcoholic drinks at issue. Thus, even if it were accepted that there are certain subcategories of Scotch whisky that are known only to a very exclusive public or which are accessible only to such a public which would, if that were the case, demonstrate a higher level of attention than the average, it must be observed that the applicant has not proven that the goods covered by the signs at issue belong to such a subcategory. The applicant has not established that those goods are not directed at the general public, but exclusively to a specific category of consumers. On the contrary, its arguments are restricted to being either generalisations concerning goods corresponding to the description ‘Scotch whisky’, or specific information which nevertheless relates to goods other than the goods covered by the signs at issue.
31      Having regard to the matters set out above, the Board of Appeal was fully entitled to find that, in the present case, the relevant public would show an average degree of attention. It is, furthermore, on the basis of that finding that the section of the contested decision dealing with the comparison signs at issue must be examined.
The comparison of the signs
32      It should, in that regard, be borne in mind that, according to settled case-law, the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. That global assessment, in relation to the visual, phonetic or conceptual similarity of the marks in question, must 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 assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see order of 7 May 2015, Adler Modemärkte v OHIM, C‑343/14 P, not published, EU:C:2015:310, paragraph 31 and the case-law cited).
33      As regards the findings of the Board of Appeal as to the similarity of the signs at issue, all the arguments put forward by the applicant are built around the meaning of the element ‘clan’, which is common to both signs. It is therefore necessary to examine, first of all, the findings of the Board of Appeal as regards the conceptual comparison of the signs at issue.
–       The conceptual comparison
34      It is not disputed by the parties that, as the Opposition Division and the Board of Appeal correctly found, the element ‘Macgregor’ is likely to be understood as a family name.
35      By contrast, the applicant complains that the Board of Appeal did not take into account its allegations that the element ‘clan’ is a word that is frequently used by a large number of people within the European Union, including non-English speakers, in order to designate a group or a family and is, therefore, understood by the relevant public as a term referring to those concepts. Therefore, when used in conjunction with ‘Macgregor’, the element ‘clan’ ‘is acting as a qualifying word which helps reinforce the concept of the MACGREGOR family/clan/tribe, rather than a word carrying an independent distinctive meaning.’
36      It must be held that those allegations are made on the basis of an incorrect reading of the contested decision. The Board of Appeal held, first of all, without making a distinction between the English-speaking public and the non-English speaking public, that the relevant public was the average consumer of Scotch whisky throughout the European Union. Next, taking into account the fact that the word ‘clan’ evokes, in the mind of the relevant public, the concept of a group of persons who have family bonds between them, it held that the signs at issue, which both contained the element ‘clan’, ‘[shared] some conceptual content, namely the notion of “clan”’. Thus, the Board of Appeal held that there was a conceptual similarity between the signs at issue, given that, in the earlier mark, the element ‘clan’ referred to ‘a group of people having family bonds’ corresponding to the MacGregor family, whilst the mark applied for invoked the concept of such a group in general.
37      The arguments that the applicant advances before the Court do not call into question the findings of the Board of Appeal set out above.
38      It alleges, in paragraph 40 of its application, that in finding that there was an average degree of conceptual similarity between the signs at issue, the Board of Appeal ‘wholly failed to consider the mark as a whole’. According to the applicant, it was for that reason that the Board of Appeal did not conclude that the signs at issue were ‘conceptually very different’.
39      The applicant submits, more specifically, that the conceptual difference between the signs at issue is due to the fact that the earlier mark evokes in the mind of the relevant public a particular family group, namely the MacGregor family, whereas in the mark applied for ‘only the general concept of a “group” and/or Scottish group is conveyed; said group not being tied to any specific source or ancestry’. The message conveyed by the mark applied for is therefore ‘more ephemeral and open-ended and therefore distinguishable’.
40      However, those arguments are insufficient to exclude the possibility of there being a certain level of conceptual similarity between the signs at issue. The applicant itself admits, in essence, that the two signs evoke the same concept, namely that of a group of persons with relationship ties between them.
41      Having regard to that finding, it must be held, as EUIPO submits, that the example put forward by the applicant in paragraph 40 of its application — which explains that the words ‘bookshelf’ and ‘bookkeeper’, notwithstanding that they both contain the common term ‘book’, are not conceptually similar since the first of those words refers to ‘a place for storing books’ and the second ‘refers to a person keeping accounting records’ — is of no relevance at all in the present case.
42      Furthermore, it must be observed that the similarity between the signs at issue is emphasised in the present case by the fact that those signs do not simply refer to a concept of any kind of family group, but to that of a family group having a connection with Scotland. As the applicant itself states, the name MacGregor ‘is clearly a Scottish family name’. It also asserts that, ‘in the context of Scotch whisky’, the element ‘clan’ used alone ‘at most conveys a loose association with matters or people Scottish’.
43      Given that the element ‘clan’ possesses that particular semantic content, which, in the context of the present case, does not merely evoke, as has just been found, a family group in general but is also an allusion to Scotland, that element cannot be considered to be equivalent to the ‘prefix ‘Mr’ used before a surname’.
44      In the context of the same reasoning, the applicant submits that the element ‘clan’ does not have an ‘independent distinctive meaning’ but ‘[acts] as a descriptor’ of the element ‘macgregor’ (see paragraph 35 above). It considers, furthermore, that the dominant element of the earlier mark is ‘macgregor’ and not the element ‘clan’, which is ‘descriptive’ when it is used with the element ‘macgregor’. Given that this line of argument is developed in the context of analysis devoted to the comparison of the signs at issue, where the applicant refers to a lack of ‘distinctive character’ or to the ‘descriptive’ nature of the element ‘clan’, it must be regarded as alluding to that element’s lack of power to dominate the overall impression created by the earlier composite mark and thus, in essence, as submitting that the element ‘clan’ is, within the earlier mark, of secondary, or even negligible, importance.
45      In so far as that argument is made in support of the submission that the Board of Appeal should have excluded that element completely from its assessment regarding the similarity of the signs at issue because of its secondary nature, it must be rejected. Even if the element ‘clan’ did not, as the applicant submits in paragraph 41.1 of the application, have an independent distinctive meaning within the earlier mark, or was a secondary element within that mark, to exclude it from the assessment would be to misconstrue the settled case-law referred to in paragraph 32 above.
46      It is true that, according to that case-law, the global assessment of the likelihood of confusion, in relation to 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 elements. Nevertheless, as the Court has held (order of 7 May 2015, Alder Modemärkte v OHIM, C‑343/14 P, not published, EU:C:2015:310, paragraph 38), it is clear from that case-law that, for the purposes of assessing the similarity between two signs, it is necessary, in principle, to make the comparison by examining each of them considered as a whole. The inference must be drawn that the assessment in question must not be carried out taking into account only the distinctive and dominant elements of the signs at issue.
47      Contrary to the submission made by the applicant, the Board of Appeal carried out, in the present case, an assessment of the signs at issue each considered as a whole.
48      The applicant claims, however, that the Board of Appeal wrongly considered that the element ‘clan’ was the dominant element of the earlier mark whereas the element ‘macgregor’ should have been regarded as being dominant.
49      Nevertheless, that argument is based on an incorrect reading of the contested decision. The Board of Appeal did not categorise the element ‘clan’ as the dominant element in the earlier word mark. On the contrary, it expressly stated that the element ‘macgregor’ was neither secondary nor marginal and, thus, it carried out a comparison of the signs at issue taking into account all the elements of which they were composed, and that comparison must be upheld. Finally, contrary to the allegations made by the applicant, the Board of Appeal cannot be criticised for having adopted a ‘simplistic approach’, ‘[focusing] solely on one element only [“clan”]’ and which ‘fails to give any weight to the effect of the additional elements’ of the earlier mark.
50      Having regard to all the foregoing considerations, and taking into account in particular the semantic content of the element ‘clan’, as set out in paragraphs 42 and 43 above, it must be held that the Board of Appeal was fully entitled to find that there was an average degree of conceptual similarity between the signs at issue.
–       The visual and phonetic comparison
51      The Board of Appeal held, in paragraph 21 of the contested decision, that, visually and phonetically, the signs at issue were ‘similar to some extent because they both contain the identical element “clan”’, taking into account the fact that that element appeared at the beginning of the earlier mark, ‘i.e. in a position that, according to the case-law, most attracts consumers’ attention’. However, having regard to the presence of the element ‘macgregor’ in the earlier mark and the visual and phonetic impression that it produces, the similarities between the signs at issue in those two respects could only be regarded ‘as average’. According to the Board of Appeal, the element ‘macgregor’ ‘[produces] a visual and [phonetic] impression that is not secondary or marginal’.
52      It is apparent from the passages from the contested decision recalled above that, while acknowledging the importance of the presence of the element ‘macgregor’ within the earlier mark, the Board of Appeal held that the signs at issue were visually and phonetically similar to an average degree.
53      The applicant challenges that finding and considers that the differences between the signs and, in particular, the presence of the element ‘macgregor’, ‘significantly outweigh any similarities’, whether visual or phonetic. According to the applicant, the Board of Appeal should have found that there was no visual or phonetic similarity between the signs at issue, or that they had only a low degree of similarity.
54      As regards the claim that the signs at issue do not have any visual or phonetic similarity, it must be observed that the arguments advanced by the applicant do not exclude that there is a certain degree of similarity between those signs.
55      In that regard, as EUIPO notes in its response, according to the case-law, two marks are similar when they are at least partially identical as regards one or more relevant aspects (see judgment of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 26 and the case-law cited).
56      Having regard to that case-law, it must be held that the Board of Appeal was fully entitled to find that ‘the conflicting signs are [....] similar to some extent because they both contain the identical element “clan”’. As EUIPO observed in its response, the fact that one of the elements which go to make up the earlier mark is wholly reproduced in the contested mark and is that mark’s only element, is sufficient to lead to a finding that the signs at issue have a certain degree of similarity, albeit low (see, to that effect and by analogy, judgment of 15 November 2011, El Coto De Rioja v OHIM Álvarez Serrano (COTO DE GOMARIZ), T‑276/10, not published, EU:T:2011:661, paragraph 45).
57      In the light of the matters set out above, it is necessary to reject the applicant’s more specific argument contesting the appraisal made by the Board of Appeal in the course of its assessment of the visual and phonetic similarity of the signs at issue.
58      The applicant considers, in that regard, that the Board of Appeal wrongly took into account the position of the element ‘clan’ at the beginning of the earlier sign for the purposes of the comparison of the signs at issue and that it should, in any event, have referred to the particular facts of the case.
59      However, irrespective of the fact that the case-law already endorsed such an approach, namely of considering, for the purposes of making the visual and phonetic comparison, that the consumer generally pays greater attention to the first part of the mark (see judgments of 3 June 2015, Pensa Pharma v OHIM — Ferring et Farmaceutisk Laboratorium Ferring (PENSA PHARMA and pensa), T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraph 102 and the case-law cited, and of 28 April 2016, Gervais Danone v EUIPO — Mahou (B’lue), T‑803/14, not published, EU:T:2016:251, point 31 and the case-law cited), it is clear from paragraph 21 of the contested decision that the Board of Appeal did not restrict itself to relying on such a finding in order to conclude that there was a certain degree of visual and phonetic similarity between the signs at issue. It was only after finding that the only element making up the mark applied for reproduced one of the elements of which the earlier mark was comprised that it took into account the position of that element at the beginning of the earlier mark, without omitting to have regard to the presence of the element ‘macgregor’, which did not appear in the mark applied for. It is necessary therefore to find that, as regards the visual and phonetic comparison of the signs at issue, the Board of Appeal carried out a global assessment based on the overall impression created by the signs, within the meaning of the case-law referred to in paragraphs 32 and 46 above, and that that assessment must be upheld.
60      For the remainder, it must be held that there is nothing in the case-file that leads to the conclusion that the element ‘macgregor’, which constitutes the final part of the earlier mark, could be perceived other than a Scottish proper name designating, possibly, the manufacturer of the goods at issue. It therefore cannot be, in the eyes of the relevant public, particularly original or fanciful (see, to that effect and by analogy, judgment of 28 April 2016, B’lue, T‑803/14, not published, EU:T:2016:251, paragraph 31 and the case-law cited).
61      Furthermore, as has been held in paragraph 49 above, the Board of Appeal did not categorise the element ‘clan’ as the dominant element in the earlier word mark. On the contrary, having regard to the position of the element ‘clan’ at the beginning of the earlier mark and the conceptual content thereof, the Board of Appeal correctly held that none of the elements of the earlier mark could be regarded as dominant or negligible and, as has been held in paragraph 59 above, based its assessment on the overall impression created by that mark. It is unnecessary, therefore, to examine the arguments that the applicant makes based on certain of the General Court’s judgments in which the Court recognised an element other than that placed at the beginning of a sign to be dominant.
62      Finally, having regard to the observations in paragraph 43 above as regards the conceptual content of the element ‘clan’, that cannot be regarded, contrary to the applicant’s assertion, for the purposes of the visual and phonetic comparison, as being equivalent to the courtesy title ‘Mr’ within a word combination such as ‘Mr Smithson’.
63      Therefore, it must be held, as the Board of Appeal found, that the signs at issue have visual and phonetic similarities. However, it is apparent from all the foregoing that the contested decision was wrong to hold that the degree of similarity was average. Having regard to the presence of the element ‘macgregor’ within the earlier mark, which the Board of Appeal itself refused to classify as ‘secondary’ or ‘marginal’ (see paragraph 49 above) and which, as the applicant points out, contains more letters and syllables than the element ‘clan’, it must be held that the signs at issue only have a low degree of visual and phonetic similarity.
The existence of a likelihood of confusion
64      According to the contested decision, having regard, first, to the fact that the goods covered by the signs at issue were identical and the signs at issue were similar to an average degree and, second, that the case-law according to which the average consumer of the goods concerned only rarely has the chance of carrying out a direct comparison of the different marks but must rely on his or her imperfect recollection of them, the finding that there was a likelihood of confusion was justified in the present case.
65      The applicant considers that that conclusion is based on erroneous premises. It submits, first, that the relevant public would, in the present case, have a high degree of attention, not an average one. Secondly, the marks at issue are conceptually different and do not have a low degree of visual and phonetic similarity. Thirdly, the dominant element in the earlier mark was not the element ‘clan’ but the element ‘macgregor’.
66      However, as has been held in paragraphs 28 to 30, 49 and 61 above, the first and the third of the aforementioned premises are wrong. It only remains, therefore, to examine whether the Board of Appeal’s conclusion that the signs at issue have an average, not low, degree of visual and phonetic similarity (see paragraph 63 above) suffices to call into question the overall conclusion as regards the likelihood of confusion.
67      In that respect, having regard to the identity of the goods at issue in the present case, the fact that they are usually the subject of general distribution (see, to that effect, judgment of 11 September 2014, aroa, T‑536/12, not published, EU:T:2014:770, paragraph 55), the level of attention of the relevant public, the degree of the conceptual similarity found between the signs at issue, and the case-law according to which the average consumer retains in his or her memory only an imperfect picture of the different signs (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 60 and the case-law cited) it is not necessary to call into question the Board of Appeal’s overall conclusion. More specifically, having regard to the case-law cited above and in paragraph 18 of this judgment, it is appropriate to find that the identity of the goods concerned in the present case is sufficient to overcome the differences found between the signs at issue, and justifies the conclusion that there is, in the present case, a likelihood of confusion.
68      According to settled case-law, the global assessment of whether there is a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services covered by them. Thus, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see the orders of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 35 and the case-law cited, and of 2 October 2014, Przedsiębiorstwo Handlowe Medox Lepiarz v OHIM, C‑91/14 P, not published, EU:C:2014:2261, paragraph 23 and the case-law cited).
69      The applicant’s argument based on the existence of a large number of marks on the register of EU marks which are composed of the element ‘clan’ ‘and a further element’ is insufficient to call into question the findings set out above.
70      It must be recalled, in that regard, as EUIPO observes, that, according to the case-law, it is not entirely inconceivable that, in certain cases, the peaceful coexistence of earlier marks on the market could eliminate the likelihood of confusion between the marks at issue. Such a possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds of refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 2 October 2013, Cartoon Network v OHIM — Boomerang TV (BOOMERANG), T‑285/12, not published, EU:T:2013:520, paragraph 55 and the case-law cited).
71      Even if the applicant intended, by the arguments that it made before the Board of Appeal, to submit that the peaceful coexistence between the earlier marks containing the element ‘clan’ should be taken into account in the present case, it must be held that one of the conditions laid down by the case-law cited in paragraph 70 above is not satisfied. The earlier marks in question and the marks at issue in the present case are not identical. As the applicant itself emphasises, the earlier marks that it invokes are all composite marks and, consequently, their peaceful coexistence, even if proven, could not exclude, in any event, the likelihood of confusion between a mark composed of the element ‘clan’ only, and a composite mark that incorporated the same element.
72      The applicant’s argument that ‘the number of different traders using the mark ‘clan’ in conjunction with a family name also shows that consumers in this sector would be used to seeing the name ‘clan’ used in conjunction with a family name to designate alcoholic products, and particularly Scotch whisky’, is of no relevance in the present case. The only conclusion that can, in fact, be drawn from the presence on the market of a number of composite marks that incorporate the element ‘clan’ is that it is the additional elements in those marks that enable the relevant public to distinguish between them. By contrast, and contrary to the applicant’s submission, the absence of the ‘family name’ in the mark applied for means that it is not possible to exclude the possibility of a likelihood of confusion. More specifically, while the element ‘macgregor’ enables the earlier mark to be distinguished from those of other traders in the sector, as the applicant submits, that does not mean that it also excludes the likelihood of confusion between the signs at issue, in particular owing to the fact that the mark applied for comprises the element ‘clan’ only, which is the element wholly reproduced in the earlier mark.
73      Having regard to all the foregoing, the applicant’s application for annulment must be dismissed.
The claim for alteration
74       As regards the second part of the first form of order sought by the applicant, seeking the alteration of the contested decision, it should be noted that the General Court was right to point out that the review it carries out under Article 65 of Regulation No 207/2009 is a review of the legality of the decisions of the Boards of Appeal of EUIPO and that it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 65(2) of that regulation (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 71 and 72).
75      Since no ground for annulment or for alteration amongst those laid down in Article 65(2) of Regulation No 207/2009 has been found in the course of the examination of the application for annulment made by the applicant, it is necessary also to reject its claim for alteration and, therefore, dismiss the application in its entirety.
Costs
76      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 (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Speciality Drinks Ltd to pay the costs.
Gratsias
Kancheva
Półtorak
Delivered in open court in Luxembourg on 24 November 2016.
E. Coulon
D. Gratsias
Registrar
President
1      Language of the case: English