CELEX: 62016TJ0258
Language: en
Date: 2017-06-07 00:00:00
Title: Judgment of the General Court (Eighth Chamber) of 7 June 2017.#Mediterranean Premium Spirits, SL v European Union Intellectual Property Office.#EU trade mark — Opposition proceedings — Application for the EU word mark GINRAW — Earlier EU word marks RAW — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Evidence submitted for the first time before the General Court — Obligation to state reasons.#Case T-258/16.

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
7 June 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark GINRAW — Earlier EU word marks RAW — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Evidence submitted for the first time before the General Court — Obligation to state reasons)
In Case T‑258/16,

Mediterranean Premium Spirits, SL, established in Barcelona (Spain), represented by J.A. Mora Granell and J. Romaní Lluch, lawyers,
applicant,
v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and K. Sidat Humphreys, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

G-Star Raw CV, established in Amsterdam (Netherlands), represented by L. Dijkman and J. van Manen, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 March 2016 (Case R 1583/2015-4), relating to opposition proceedings between G-Star Raw and Mediterranean Premium Spirits,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins (Rapporteur), President, M. Kancheva and R. Barents, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 May 2016,
having regard to the response of EUIPO lodged at the Court Registry on 28 September 2016,
having regard to the response of the intervener lodged at the Court Registry on 26 September 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,
having regard to the decision of 26 April 2017 rejecting the applicant’s request for a stay of the proceedings,
gives the following

Judgment

I.      Background to the dispute

1        On 16 December 2013, the applicant, Mediterranean Premium Spirits, SL, 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        Registration as a mark was sought for the word sign GINRAW.

3        The EU trade mark application was published in Community Trade Marks Bulletin No 6/2014 of 13 January 2014.

4        The goods in respect of which registration was sought are in Classes 21 and 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, for each of those classes, to the following description:
–        Class 21: ‘Household and kitchen utensils; crystal [glassware]; beverage glassware; goods of porcelain and earthenware; glasses, drinking vessels and barware; pitchers; ice pails, ice buckets, ice trays; serving trays, cabarets (trays), holders for glasses; shakers, manual mixers (cocktail shakers), cocktail stirrers, cocktail straws, cocktail sticks, cocktail mixing sticks’;
–        Class 33: ‘Alcoholic beverages (except beers); gin’.

5        On 19 March 2014, the intervener, G-Star Raw CV, filed a notice of opposition to registration of the mark applied for in respect of all the goods referred to in paragraph 4 above, pursuant to Article 8(1)(b) of Regulation No 207/2009.

6        The opposition was based on the following earlier marks:
–        the EU word mark RAW, which was filed on 16 January 2013 and registered on 23 June 2013 under the number 11493103 in respect of goods in Class 21 corresponding to the following description: ‘Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes’;
–        the EU word mark RAW, which was filed on 16 January 2013 and registered on 12 January 2014 under the number 11493012 in respect of goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’.

7        By decision of 17 June 2015 the Opposition Division upheld the opposition and rejected the trade mark application in its entirety.

8        On 5 August 2015, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.

9        By decision of 14 March 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It found, at the outset, that the relevant public consisted of the general public, the level of attention of which would be average when purchasing the goods concerned. Next, it found, in essence, that the goods in respect of which registration had been applied for and those in respect of which the earlier marks had been registered were identical, very similar or similar to an average degree. Furthermore, according to the Board of Appeal, the signs at issue were visually and phonetically similar to an average degree. From a conceptual standpoint, it concluded that, for part of the relevant public, namely the English-speaking public, the signs were also conceptually similar. Lastly, in the context of its global assessment of the likelihood of confusion, it found that the word ‘gin’, at the beginning of the mark applied for, was descriptive with regard to the goods at issue and that therefore consumers would focus on the element ‘raw’, which was the distinctive element of that mark. Since the earlier marks are fully incorporated in the mark applied for, there was, according to the Board of Appeal, a likelihood of confusion on the part of consumers in the territory of the European Union, for the purposes of Article 8(1)(b) of Regulation No 207/2009.
II.    Forms of order sought

10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs. 

11      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs;
III. Law

A.      Admissibility of the documents submitted for the first time before the General Court

12      The intervener raises objections as regards the admissibility of some of the evidence, which it claims was submitted for the first time before the General Court, namely Annexes 5, 7 and 9 to the application.

13      It must be pointed out that Annexes 5 and 7 to the application contain two decisions of EUIPO. Annex 9 to the application consists of extracts from two websites, in particular from Wikipedia. None of those three annexes is included in the administrative file.

14      It should be borne in mind, in that regard, that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to review the facts in the light of documents produced for the first time before it. Annex 9 to the application must therefore be excluded as inadmissible without it being necessary to assess its probative value. (see, to that effect, judgments of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraphs 18 and 19, and of 18 March 2016, Karl-May-Verlag v OHIM — Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraphs 16 and 17).

15      As regards, by contrast, Annexes 5 and 7 to the application, it must be stated that, even though that evidence was submitted by the applicant for the first time before the Court, the applicant is entitled to rely on it. Those annexes are not strictly evidence but relate to EUIPO’s decision-making practice to which a party has the right to refer (see, to that effect, judgments of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 20, and of 18 March 2016, WINNETOU, T‑501/13, EU:T:2016:161, paragraph 18).
B.      Substance

16      In support of its action, the applicant puts forward two pleas in law alleging, first, infringement of the obligation to state reasons, laid down in Article 75 of Regulation No 207/2009, and, second, infringement of Article 8(1)(b) of that regulation. The second plea should be examined first.
1.      The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

17      By its second plea, the applicant alleges infringement of Article 8(l)(b) of Regulation No 207/2009. That plea is divided into three parts, relating to the comparison of the goods, the comparison of the signs and the global assessment of the likelihood of confusion.

18      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 must not be registered if because of its identity with, or similarity to, the 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.

19      As the marks on which the opposition is based are EU trade marks, the territory with regard to which the likelihood of confusion must be assessed is that of the European Union, as the Board of Appeal pointed out in paragraph 10 of the contested decision, a finding which the applicant does not dispute.
(a)    Comparison of the goods

20      It must be pointed out at the outset that the applicant does not dispute the Board of Appeal’s finding that the goods in Class 33 covered by the mark applied for, namely the ‘alcoholic beverages (except beers)’, are identical to the goods covered by the earlier marks. In addition, it does not dispute that some of the goods in Class 21, namely ‘household and kitchen utensils; crystal [glassware]; beverage glassware; goods of porcelain and earthenware; ice trays; serving trays, cabarets (trays), holders for glasses’, are identical to the goods covered by the earlier marks. Lastly, it does not dispute that some of the goods in Class 21, namely ‘glasses, drinking vessels and barware; pitchers’, are similar to the goods covered by the earlier marks.

21      By contrast, the applicant disputes that ‘shakers, manual mixers (cocktail shakers), cocktail stirrers, cocktail straws, cocktail sticks, cocktail mixing sticks’ covered by the mark applied for and ‘household or kitchen utensils and containers’ covered by the earlier marks, all of which goods are in Class 21, are similar. According to the applicant, the goods referred to in its application for registration are exclusively connected with the preparation of cocktails, whereas household or kitchen utensils and containers are intended to be used for preparing or serving food. Furthermore, it submits that the suppliers, distribution channels and target publics of those goods are different, inasmuch as those suppliers, distribution channels and target publics are very specialised, unlike those of household and kitchen goods, which are aimed at the general public.

22      EUIPO and the intervener dispute the applicant’s arguments.

23      It is apparent from the case-law 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, 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 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37).

24      Furthermore, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see, to that effect, judgments of 23 October 2002, Oberhauser v OHIM — Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraphs 32 and 33, and of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29).

25      In the present case, as EUIPO and the intervener rightly claim, the goods covered by the earlier marks, namely ‘household or kitchen utensils and containers’, constitute a general category which includes, inter alia, ‘shakers, manual mixers (cocktail shakers), cocktail stirrers, cocktail straws, cocktail sticks, cocktail mixing sticks’. In that regard, it must be pointed out that, according to the Explanatory Notes to Class 21, ‘household or kitchen utensils and containers’ include, in particular, ‘shakers’. Furthermore, contrary to what the applicant claims, there is no reason to take the view that ‘household or kitchen utensils and containers’ exclusively include goods that are intended to be used for cooking or serving food, to the exclusion of goods that are intended to be used for preparing beverages. It must be stated that ‘shakers, manual mixers (cocktail shakers), cocktail stirrers, cocktail straws, cocktail sticks, cocktail mixing sticks’ are utensils and containers that are typically found in kitchens. Consequently, in the light of their nature, their intended purpose and their method of use, it must be held that they are goods which are identical.

26      In addition, the applicant’s claim that the suppliers, distribution channels and target publics of goods intended to be used for preparing and serving cocktails are very ‘specialised’ is not substantiated by any evidence. 

27      Moreover, even if those goods could not be classified as identical, quod non, they would at the very least be similar inasmuch as kitchen utensils are used to prepare food or beverages, while cocktail utensils are used to prepare beverages, as stated in paragraph 11 of the contested decision.

28      In the light of the foregoing, the first part of the second plea must be rejected as unfounded.
(b)    Comparison of the signs

29      In the context of the second part of the second plea, the applicant submits, first, that the earlier mark RAW is descriptive or only weakly distinctive for the English-speaking public, which precludes the element ‘raw’ from being capable of being regarded as the dominant element in the mark applied for. According to the applicant, the marks at issue must be compared as whole without artificially dividing them. Second, the applicant submits that the contested decision erred in finding that the mark applied for and the earlier marks were visually and phonetically similar and, for a part of the relevant public, namely the English-speaking public, also conceptually similar.

30      EUIPO and the intervener dispute the applicant’s arguments.
(1)    Whether there is an artificial division of the mark applied for and whether the earlier mark is descriptive

31      It must be borne in mind that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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 this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35).

32      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42, and of 29 September 2011, Procter & Gamble Manufacturing Cologne v OHIM — Natura Cosméticos (NATURAVIVA), T‑107/10, not published, EU:T:2011:551, paragraph 27).

33      When assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 29 September 2011, NATURAVIVA, T‑107/10, not published, EU:T:2011:551, paragraph 28).

34      In the present case, the comparison relates to the earlier word marks RAW and the word mark applied for GINRAW.

35      It must be examined whether, as the applicant submits, the Board of Appeal artificially divided the mark applied for in focussing on the word ‘raw’ on account of the descriptiveness of the word ‘gin’.

36      In that regard, it must be noted that, in paragraphs 12 and 13 of the contested decision, it is clearly acknowledged that the marks at issue must be compared as a whole. Furthermore, it is apparent from paragraphs 14 to 16 of the contested decision that the Board of Appeal took the word ‘gin’ into account for the purposes of that comparison. Consequently, it cannot be maintained that the Board of Appeal did not take the word ‘gin’ into account in its analysis.

37      It follows from the case-law cited in paragraph 31 above that the Board of Appeal must take into account the distinctive and dominant elements of the marks at issue. In paragraphs 16 and 23 of the contested decision, the Board of Appeal found that the word ‘gin’ would be understood by the majority of the consumers in the European Union as referring to an alcoholic drink, namely gin, and that, for that reason, they would focus more on the distinctive and dominant element of the mark, namely the word ‘raw’.

38      That reasoning cannot be criticised. As EUIPO correctly points out in its written pleadings, the word ‘gin’ is clearly descriptive of the goods in Class 33 covered by the trade mark application, namely ‘alcoholic beverages (except beers); gin’. Furthermore, that finding also applies to the goods in Class 21 covered by the application, which may be used to prepare and serve gin-based alcoholic beverages. The Board of Appeal did not therefore err in finding that the distinctive and dominant element of the mark applied for was the word ‘raw’.

39      So far as concerns the degree of distinctiveness of the earlier mark RAW, it must be pointed out that the applicant accepts that it is average with regard to the non-English-speaking public because the word ‘raw’ is, for that public, a fanciful term which has no meaning. Consequently, with regard to the non-English-speaking public, the applicant does not put forward any argument capable of calling into question the dominant nature of the word ‘raw’ and the average degree of distinctiveness of the earlier mark RAW.

40      As regards the English-speaking public, the applicant submits that the word ‘raw’ serves to describe, at least indirectly, the characteristics of the goods at issue, which are in Classes 21 and 33.

41      That argument cannot be accepted. It is apparent from paragraph 16 of the contested decision that, in English, the word ‘raw’ means ‘in an unfinished, natural, or unrefined state; not treated by manufacturing or other processes; (of food) not cooked’.

42      As regards the goods covered which are in Class 33, the alcoholic beverages, which have undergone a distillation process, do not constitute raw or unprocessed food. They are also not goods which are in an unfinished, natural or unrefined state.

43      In that regard, it must be borne in mind that, for a sign to be regarded as descriptive, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (judgments of 19 November 2009, Torresan v OHIM — Klosterbrauerei Weissenohe (CANNABIS), T‑234/06, EU:T:2009:448, paragraph 25; of 16 December 2015, Perfetti Van Melle Benelux v OHIM — Intercontinental Great Brands (TRIDENT PURE), T‑491/13, not published, EU:T:2015:979, paragraph 43, and of 14 December 2016, Grid applications v EUIPO (APlan), T‑154/16, not published, EU:T:2016:731, paragraph 23). Consequently, the applicant’s argument that the word ‘raw’ indicates that the goods at issue contain ingredients which have not been blended or processed cannot succeed. That link is too indirect to establish that the mark RAW is descriptive or weakly distinctive with regard to those goods.

44      As regards the goods covered which are in Class 21, those goods are not unfinished, natural, unrefined, not treated by manufacturing processes or raw materials. So far as concerns the applicant’s claims that some of those goods are used to prepare uncooked food and that the word ‘raw’ conveys information regarding the materials from which some other goods are made, namely untreated and unrefined materials, it must be stated that, for the purposes of the case-law referred to in paragraph 43 above, such a link is too indirect to establish that the mark RAW is descriptive or weakly distinctive with regard to those goods.

45      In addition, the arguments which the applicant derives from the judgments of 29 September 2011, NATURAVIVA (T‑107/10, not published, EU:T:2011:551), and of 31 January 2013, K2 Sports Europe v OHIM — Karhu Sport Iberica (SPORT) (T‑54/12, not published, EU:T:2013:50), cannot be accepted. In the first of those cases, the Board of Appeal had correctly found that the mark applied for, NATURAVIVA, appeared as a single indivisible word and that the element ‘viva’ could not be the dominant component of that mark, since it alluded to health and well-being, with the result that its distinctive character was as weak as that of the element ‘natura’ (judgment of 29 September 2011, NATURAVIVA, T‑107/10, not published, EU:T:2011:551, paragraph 31). That case can be distinguished from the present case inasmuch as the Board of Appeal correctly found that the mark applied for GINRAW did not constitute a single indivisible word.

46      In the second case cited in paragraph 45 above, by contrast with the present case, the Board of Appeal correctly found that the element ‘sport’, which was common to the marks at issue, was descriptive, or at least highly allusive, in respect of the goods covered by those marks (see, to that effect, judgment of 31 January 2013, SPORT, T‑54/12, not published, EU:T:2013:50, paragraph 29). Furthermore, the Court pointed out that the public will not generally consider a descriptive element forming part of a composite mark to be the distinctive and dominant element of the overall impression (see, to that effect, judgment of 31 January 2013, SPORT, T‑54/12, not published, EU:T:2013:50, paragraph 30). In the present case, for the reasons set out in paragraphs 41 to 44 above, the Board of Appeal did not err in finding that the word ‘raw’ was not descriptive with regard to the goods covered, which are in Classes 21 and 33.

47      Consequently, the applicant’s claims regarding the descriptiveness or weak distinctiveness of the earlier marks RAW must be rejected.

48      Furthermore, the applicant’s argument that the Board of Appeal’s approach is inconsistent with an earlier decision-making practice of EUIPO cannot be accepted. 

49      It must be borne in mind that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. In the light of those two principles, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77).

50      In the present case, it is apparent that, regardless of what may have been the position with regard to certain earlier applications for the registration of signs, including the marks of the intervener, and regardless of the findings made by EUIPO in the context of those applications, the present application for registration was caught by one of the grounds for refusal set out in Regulation No 207/2009.

51      Lastly, the applicant’s argument relating to the practice of the United States Patent and Trademark Office (USPTO) must also be rejected. The EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it. It is self-sufficient and applies independently of any national system (judgment of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47). EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State or in a third country (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).

52      In view of the foregoing, the claim relating to an alleged artificial division of the mark applied for and to the alleged descriptiveness or weak distinctiveness of the earlier mark RAW must be rejected.
(2)    Whether there are errors in the analysis of the similarity of the signs

53      The applicant relies on a series of errors allegedly made in the analysis of the visual, phonetic and conceptual similarity of the signs at issue.

54      As regards the visual and phonetic comparison, first, the applicant points out that the mark applied for GINRAW has twice as many letters and syllables as the earlier mark RAW. Second, it submits that the mark applied for begins in a different way, with the letters or syllable ‘gin’, and that consumers normally pay more attention to the beginning of a mark than to its end.

55      In that regard, it must be borne in mind that, even though the initial part of word marks may be more likely to hold the consumer’s attention than the following parts, that consideration cannot hold good in all cases and cannot, in any event, cast doubt on the principle that the assessment of the similarity of the signs must take into account the overall impression which they create (judgments of 10 March 2016, credentis v OHIM — Aldi Karlslunde (Curodont), T‑53/15, not published, EU:T:2016:136, paragraph 35, and of 14 July 2016, Preferisco Foods v EUIPO — Piccardo & Savore’ (PREFERISCO), T‑371/15, not published, EU:T:2016:414, paragraph 20).

56      Furthermore, the Board of Appeal could legitimately take account, as it did in paragraphs 14 and 15 of the contested decision, of the fact that the earlier marks were fully incorporated in the mark applied for. The fact that a mark consists exclusively of the earlier trade mark to which another word has been added is an indication that those two trade marks are similar (judgment of 4 May 2005, Reemark v OHIM — Bluenet (Westlife), T‑22/04, EU:T:2005:160, paragraph 40).

57      Consequently, the Board of Appeal was right in finding that there is an average degree of visual and phonetic similarity between the marks at issue.

58      As regards the conceptual comparison, the applicant submits that the mark applied for GINRAW and the earlier marks RAW might not be regarded as similar by the English-speaking public. In particular, it submits that the mark applied for should be considered as a whole. Accordingly, it submits that the expression ‘ginraw’ is an original creation which cannot be regarded as the mere juxtaposition of the elements ‘gin’ and ‘raw’. It maintains that that expression is a grammatically incorrect creation, which has no meaning. The applicant takes the view that it is only by way of exception to the general rule that, in certain cases, the consumer might break the sign at issue down into its various elements. Consequently, it submits that, as an exception, it must be interpreted strictly.

59      Those arguments cannot be accepted. As is apparent from paragraph 31 above, even though the marks at issue must be compared as a whole, the Board of Appeal must take the distinctive and dominant elements into account. In the present case, for the reasons set out in particular in paragraphs 35 to 38 and 41 to 47 above, the Board of Appeal did not err in finding that consumers would focus more on the element ‘raw’ in the mark applied for, which is dominant in that mark, than on the element ‘gin’, which is descriptive.

60      None of the arguments put forward by the applicant regarding the conceptual comparison can cast doubt on that finding.

61      In particular, the parallelism which the applicant attempts to establish between the present case and that which gave rise to the judgment of 29 September 2011, NATURAVIVA (T‑107/10, not published, EU:T:2011:551), must be rejected. As stated in paragraph 45 above, in the light of the circumstances of the case in question, the Board of Appeal was right in finding that the sign NATURVIVA appeared as a single indivisible word and that no element was dominant, which is not the position in the present case.

62      Furthermore, contrary to what the applicant suggests, it cannot be deduced from the judgment of 29 September 2011, NATURAVIVA (T‑107/10, not published, EU:T:2011:551), that there is a general rule that the signs covered by a trade mark application must, in principle, be regarded as an indivisible whole. It is apparent from paragraph 27 of that judgment, since confirmed by settled case-law, that the comparison of the marks as a whole does not mean that the impression conveyed to the relevant public may not be dominated by one or more of their components. 

63      Moreover, it must be borne in mind that, according to the case-law, when perceiving a word sign, a consumer will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51, and of 6 October 2015, Monster Energy v OHIM — Balaguer (icexpresso + energy coffee), T‑61/14, not published, EU:T:2015:750, paragraph 62). Consequently, contrary to the applicant’s claims, the Board of Appeal did not err in breaking the mark applied for down into the elements ‘gin’ and ‘raw’ for the purposes of its analysis. 

64      So far as concerns the argument that the structure of the mark applied for is allegedly grammatically incorrect in English owing to the fact that the noun ‘gin’ precedes the adjective ‘raw’, a minor grammatical irregularity, even were it accepted that there is one, would be incapable of calling into question the assessment set out above (see, by analogy, judgments of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 36, and of 12 May 2016, GRE v EUIPO (Mark1), T‑844/14, not published, EU:T:2016:289, paragraph 38). Furthermore, as the intervener correctly submits, it is conceivable that the relevant public might perceive the mark applied for GINRAW as meaning ‘gin by raw’, the element ‘raw’ being the indicator of origin of the goods rather than an adjective.

65      In the same vein, as regards the argument alleging that there is no separation between the two words at issue, it must be borne in mind that the mere juxtaposition of words without a space does not in itself constitute a creative element capable of altering the finding set out above (see, by analogy, judgments of 7 June 2005, MunichFinancialServices, T‑316/03, EU:T:2005:201, paragraph 37, and of 12 May 2016, Mark1, T‑844/14, not published, EU:T:2016:289, paragraph 38). It is common to omit spaces between words in the world of advertising and marketing (order of 26 January 2017, Topera v EUIPO (RHYTHMVIEW), T‑119/16, not published, EU:T:2017:38, paragraph 24).

66      Consequently, the Board of Appeal was right to reach the conclusion that the signs at issue are conceptually similar for the English-speaking public.

67      As regards the non-English-speaking public, it is sufficient to point out that the Board of Appeal did not find that the marks at issue were conceptually similar for that public, without it being necessary to examine the arguments put forward by the applicant in that regard.

68      In the light of the foregoing, the second part of the second plea must be rejected as unfounded.
(c)    Global assessment of the likelihood of confusion

69      In the context of the third part of the second plea, the applicant refers first of all to its arguments relating to the lack of similarity between some of the goods in Class 21 and to the lack of similarity between the signs at issue. It submits that, in the light of those arguments, it is pointless to examine whether there is a likelihood of confusion.

70      Furthermore, in its arguments it also claims that the earlier mark RAW is descriptive or weakly distinctive for the English-speaking public, even though it accepts that that mark has a normal degree of distinctiveness for the non-English-speaking public.

71      Lastly, the applicant also contends that the mark applied for GINRAW must be examined as a whole as regards both the English-speaking public and the non-English-speaking public, although for different reasons.

72      EUIPO and the intervener dispute the applicant’s arguments.

73      According to settled case-law, 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. 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 (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 32 and the case-law cited).

74      For the purposes of applying 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 (judgments of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42, and of 14 July 2016, PREFERISCO, T‑371/15, not published, EU:T:2016:414, paragraph 16).

75      The relevant factors mentioned in paragraph 73 above also include the distinctive character of the earlier trade mark, which derives from the inherent qualities of that mark or from its reputation. However, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion, in particular if the goods or services at issue are identical and the signs at issue are similar (judgments of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70, and of 29 April 2015, Hostel Tourist World v OHIM — WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraph 67).

76      It is in the light of those principles that the present part of the second plea must be examined.

77      In the present case, the Board of Appeal took the view that the goods at issue were identical, highly similar or similar. Furthermore, it found that the signs were visually, phonetically and, for part of the relevant public, conceptually similar. Lastly, it found that the earlier mark RAW had an average degree of distinctiveness and that, in the light of the fact that the element ‘gin’ in the mark applied for was descriptive with regard to the goods at issue, the consumers would focus on the element ‘raw’ in that mark. In view of those findings, the Board of Appeal concluded that there was a likelihood of confusion.

78      It must be stated that those findings of the Board of Appeal fully satisfy the requirements of the case-law cited in paragraphs 73 to 75 above. Consequently, the Board of Appeal was right in finding that for the purposes of Article 8(1)(b) of Regulation No 207/2009 there was a likelihood of confusion between the marks at issue as regards the goods in Classes 21 and 33.

79      None of the arguments put forward by the applicant cast doubt on that finding.

80      First, it is necessary to reject the applicant’s argument that, in the light of the lack of similarity between some of the goods in Class 21 and the lack of similarity between the signs, it is pointless to examine whether there is a likelihood of confusion, because, as is apparent from the above examination of the first and second parts of the second plea, the Board of Appeal did not err in its analysis of the similarity of the goods and the similarity of the signs.

81      Second, as regards the alleged descriptiveness or weak distinctive character of the earlier mark RAW, the applicant itself admits that the earlier mark has a normal degree of distinctiveness for the non-English-speaking public.

82      In that regard, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in 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). Consequently, a likelihood of confusion owing to the similarity of the marks at issue in respect of the goods covered, on the part of the non-English-speaking public alone, would be sufficient to justify the refusal of registration of the mark applied for.

83      Furthermore, the argument as regards the alleged descriptiveness or weak distinctive character of the earlier mark RAW for the English-speaking public must be rejected for the reasons set out in paragraphs 41 to 46 above.

84      Third, the argument that the Board of Appeal did not analyse the mark applied for as a whole must also be rejected. First, the Board of Appeal in fact compared the signs at issue as a whole, as stated in paragraphs 36 to 38 above. Second, in so far as the applicant maintains that the Board of Appeal should have analysed the mark applied for as a single indivisible word, that argument must be rejected for the reasons set out in paragraphs 61 to 66 above.

85      The third part must therefore be rejected and consequently the second plea must be rejected in its entirety.
2.      The first plea, alleging infringement of the obligation to state reasons

86      In the context of the first plea, the applicant submits that the Board of Appeal does not state the reasons why it found, first, that the earlier marks RAW had a normal degree of distinctiveness and, second, that the word ‘gin’ was descriptive as regards the goods covered which are in Class 21.

87      EUIPO, supported by the intervener, disputes the applicant’s arguments.

88      It must be borne in mind at the outset that, under Article 75 of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65).

89      Furthermore, the duty to state reasons does not require the Board of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19).

90      In addition, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its review (judgment of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55). 

91      In the present case, the Board of Appeal found that the Opposition Division had correctly concluded that there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion between the word mark applied for GINRAW and the earlier marks RAW in respect of all of the goods covered. More specifically, it is apparent from paragraph 11 of the contested decision, first, that the contested goods in Class 33 and the intervener’s goods in that class are identical and, second, that the contested goods in Class 21 and the intervener’s goods in that class are identical, highly similar or similar to an average degree. According to paragraphs 14 to 16 of the contested decision, the word marks at issue are visually, phonetically and also, as regards the English-speaking public, conceptually similar to an average degree. Consequently, in the context of a global assessment, the Board of Appeal found that there was a likelihood of confusion between the marks at issue, for the reasons set out in paragraphs 17 to 23 of the contested decision. Such a statement of reasons is, in principle, sufficient to satisfy the requirements set out in paragraphs 88 to 90 above.

92      First, so far as concerns, more specifically, the claim relating to the alleged lack of reasoning regarding the reasons why the earlier marks RAW had a normal degree of distinctiveness, it must be pointed out that, even though paragraph 23 of the contested decision confines itself to making that finding, it is, however, necessary to take account of the more detailed statement of reasons on that point which is contained in the Opposition Division’s decision. Given that the Board of Appeal confirmed that decision in its entirety, as is apparent in particular from paragraph 7 of the contested decision, and in view of the continuity in terms of functions between the Opposition Division and the Board of Appeal, that decision and its reasoning are part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to exercise fully its judicial review (judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 46).

93      In that regard, it must be pointed out that, according to the Opposition Division’s decision, the earlier marks RAW had a normal degree of inherent distinctiveness because, contrary to the applicant’s arguments, the term ‘raw’ had no specific or laudatory meaning in relation to the goods in Classes 21 and 33.

94      Furthermore, as is apparent from the case-law cited in paragraphs 88 to 90 above, the Board of Appeal cannot be required to reply specifically to each of the arguments put forward or to reject specifically each of the items of evidence provided by the applicant.

95      In view of the foregoing, the contested decision cannot be criticised for lack of reasoning as regards the normal degree of distinctiveness of the earlier marks RAW.

96      Second, as regards the claim alleging a lack of reasoning relating to the descriptiveness of the word ‘gin’ as regards the goods in Class 21, it must be pointed out that paragraph 23 of the contested decision merely states that that word is descriptive in relation to the goods, expressly referring to gin, which is in Class 33. However, as is apparent from the case-law cited in paragraph 92 above, since the Opposition Division’s decision was confirmed by the Board of Appeal, that decision and its reasoning are part of the context in which the contested decision was adopted.

97      In that regard, it must be pointed out that the Opposition Division’s decision states that the word ‘gin’ is descriptive of a series of goods in Class 21, namely ‘crystal [glassware]; beverage glassware; glasses, drinking vessels and barware; shakers, manual mixers (cocktail shakers), cocktail stirrers, cocktail straws, cocktail sticks, cocktail mixing sticks’. Furthermore, the Opposition Division’s decision adds that the element ‘gin’ will be associated with a spirit distilled from grain or malt and flavoured with juniper berries. Consequently, it is obvious that the reason why the Opposition Division found the word ‘gin’ to be descriptive of the goods in Class 21 mentioned above was the fact that they are connected with the preparation or the consumption of the spirit in question. Moreover, it is apparent from paragraph 44 of the application that the applicant was in a position to know of the connection, which it even admits exists, between some of the goods in Class 21 mentioned above and the preparation of gin-based beverages.

98      Furthermore, EUIPO points out that, in the light of the fact that the applicant did not dispute before the Board of Appeal the descriptiveness of the word ‘gin’ with regard to the goods at issue in Class 21, the Board of Appeal did not dwell on that issue and confined itself to endorsing the findings of the Opposition Division. It must be stated that not only did the applicant not dispute before the Board of Appeal the descriptiveness of the word ‘gin’ with regard to the goods in Class 21, it even expressly conceded its descriptive nature in its appeal against the Opposition Division’s decision.

99      Consequently, the claim alleging a lack of reasoning regarding the descriptiveness of the word ‘gin’ in relation to the goods in Class 21 must be rejected.

100    In view of the foregoing, the first plea must be rejected as unfounded. The action must therefore be dismissed in its entirety.
 Costs

101    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. 

102    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 Mediterranean Premium Spirits, SL to bear its own costs and to pay those incurred by EUIPO and G-Star Raw CV.

CollinsKanchevaBarents

Delivered in open court in Luxembourg on 7 June 2017.

E. Coulon
 
      A. M. Collins

RegistrarPresident

*      Language of the case: English.