JUDGMENT OF THE GENERAL COURT (Third Chamber)
11 July 2018 (*)
(EU trade mark — Invalidity proceedings — EU word mark ANTONIO RUBINI — Earlier EU figurative mark RUTINI — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑707/16,
Enoitalia SpA, established in Calmasino di Bardolino (Italy), represented by S. Rizzo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Zaera Cuadrado, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
La Rural Viñedos y Bodegas SA Ltda, established in Capital Federal (Argentina),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 28 June 2016 (Case R 1085/2015-5), relating to invalidity proceedings between La Rural Viñedos y Bodegas and Enoitalia,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, I. S. Forrester (Rapporteur) and E. Perillo, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 October 2016,
having regard to the response of EUIPO lodged at the Court Registry on 7 December 2016,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 16 November 2010, the applicant, Enoitalia SpA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign ANTONIO RUBINI.
3 The goods in respect of which registration was sought are in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Alcoholic beverages (except beers), wines’.
4 The mark was registered on 18 January 2013.
5 On 17 October 2013, La Rural Viñedos y Bodegas SA Ltda submitted an application for a declaration of invalidity of the contested mark for all the goods referred to in paragraph 3 above. That application was based on the relative ground for invalidity referred to in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001).
6 In the context of the relative ground for invalidity, La Rural Viñedos y Bodegas relied on, in particular, the registration of the earlier EU figurative mark reproduced below, registered on 8 June 1999 under No 744 813 for goods in Class 33 corresponding to the following description: ‘alcoholic beverages (except beers); wine, sparkling wine, fortified wine’:
7 On 7 April 2015, the Cancellation Division upheld the application for a declaration of invalidity brought by La Rural Viñedos y Bodegas and consequently declared the contested EU trade mark invalid for all the goods. The Cancellation Division examined the application in the light of the earlier EU figurative mark No 744 813 and found that there was a likelihood of confusion between the marks, due to the fact that the goods in question are identical and that the signs at issue are phonetically, visually and conceptually similar. The Cancellation Division also indicated that the goods in question are aimed at the general public and that the level of attention in respect of those goods was average.
8 On 4 June 2015, the applicant filed a notice of appeal against the decision of the Cancellation Division of EUIPO, requesting the annulment of that decision in its entirety.
9 By decision of 28 June 2016 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal. In particular, it found that the average consumer of the goods in question is expected to display a normal level of attention. It also stated, first, that the signs at issue are similar overall due the fact that the ‘dominant’ element of the contested mark, ‘rubini’, and the single word element of the earlier mark, ‘rutini’, are almost identical, and, second, that the goods in question are identical. On the basis of those findings, the Board of Appeal concluded that there was significant risk that consumers may believe that the mark ANTONIO RUBINI has the same commercial origin as the mark RUTINI.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
Law
12 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation.
13 The applicant submits, in essence, that the marks at issue are not sufficiently similar to establish the existence of a likelihood of confusion. It claims that the Board of Appeal incorrectly assessed the dominant and distinctive elements of the marks at issue and incorrectly applied the criterion relating to the ‘overall impression’ in the comparison of those marks.
14 EUIPO disputes that argument.
15 Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof, on application by the proprietor of an earlier mark, a registered EU trade mark must be declared invalid 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.
16 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. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services 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).
17 Furthermore, 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
18 The Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations.
19 As a preliminary point, it must be observed that the applicant does not dispute the Board of Appeal’s finding that the goods in question are identical, only whether the Board of Appeal was correct in finding that there is a likelihood of confusion between the marks at issue.
The relevant public
20 The applicant complains that the Board of Appeal incorrectly assessed the relevant public’s perception of the marks at issue and the average consumer’s level of attention. Contrary to the Board of Appeal’s observations, set out in paragraphs 43 to 49 of the contested decision, the applicant takes the view that the average consumer’s level of attention is relatively high in light of the fact that wines are chosen on the basis of the label on the bottle where the mark is reproduced.
21 EUIPO disputes that argument.
22 It is clear from settled case-law that the consumer’s level of attention may vary according to the category of goods or services in question (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26 and the case-law cited).
23 In the present case, in the light of the nature of the goods in question, the Board of Appeal was correct in finding, in paragraphs 43 to 49 of the contested decision, that the goods in question are everyday consumer goods for which the relevant public is the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect (judgment of 25 October 2006, Castell del Remei v OHIM — Bodegas Roda (ODA), T‑13/05, not published, EU:T:2006:335, paragraph 46).
24 With regard to the applicant’s argument that the relevant public’s level of attention is relatively high as wines are sold in shops or restaurants and, therefore, are chosen on the basis of the label where the mark is reproduced, it should be noted, as EUIPO does, that it is not how the goods are purchased that is the relevant factor in determining the relevant public’s level of attention but rather the nature of the goods and services in question.
25 In the present case, the applicant did not confine its application for registration to wines of a particular market segment aimed at consumers with a high level of attention.
26 Accordingly, in so far as the Board of Appeal did not err in finding, in paragraph 49 of the contested decision, that the average consumer is expected to display a normal level of attention, the applicant’s first complaint must be rejected as unfounded.
Comparison of the signs
27 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, account being taken, in particular, of 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
28 The 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). 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 (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
The dominant and distinctive character of the elements comprising the marks at issue
29 The applicant complains that the Board of Appeal incorrectly assessed the dominant and distinctive elements of the marks at issue.
– The dominant and distinctive character of the elements comprising the contested mark
30 As regards the contested mark, the applicant takes the view that the contested decision is vitiated by contradiction inasmuch as, while admitting that word marks do not, by definition, contain a dominant element (paragraph 76 of the contested decision), the Board of Appeal found that the element ‘rubini’ was the ‘dominant’ element of the contested mark (paragraph 70 of the contested decision). However, according to the applicant, the other word element of the contested mark, namely ‘antonio’, is more ‘dominant’ than the element ‘rubini’, despite its weak distinctive character.
31 Moreover, with regard to the distinctive elements of the contested mark, the applicant criticises the Board of Appeal for having reached the conclusion ‘automatic[ally]’, in paragraphs 66 to 69 of the contested decision, that the surname Rubini will attract the consumer’s attention more than the forename Antonio. The applicant concedes that surnames have, in principle, a higher intrinsic value than forenames, but takes the view that that rule should not be applied automatically in all cases.
32 The applicant submits that Rubini is a very common Italian surname, given that it is present in more than 550 Italian towns and that it is ranked number 891 out of the 350 000 Italian surnames. Consequently, confronted with a very common forename and a very common surname, the relevant consumer will not focus his attention on one element or the other, but rather will perceive the mark as a whole. Therefore, the two elements comprising the contested mark should have been taken into consideration equally for the purposes of the comparison of the ‘overall impression’ produced by the marks at issue.
33 EUIPO disputes that argument.
34 In that regard, it is necessary to find that the applicant’s complaint alleging an incorrect assessment of the dominant element of the contested mark rests on an excessively literal reading of the contested decision. First, it is unambiguously clear from paragraph 76 of that decision that the Board of Appeal applied the principle that word marks do not contain dominant elements.
35 Second, regarding paragraphs 69 and 70 of the contested decision, although it is true that the Board of Appeal used the expressions ‘dominate’ and ‘dominant element’ as regards the contested mark, it should be noted that those sections of the contested decision relate, in essence, to the assessment of the distinctiveness of the word elements of that mark and to the assessment of which element will attract the consumer’s attention more. In the present case, the Board of Appeal took the view that it is the second word element, namely ‘rubini’, which ‘dominate[s]’ the relevant public’s image of the contested mark as, from the overall impression made by that mark, it is the surname which the consumer will remember. On the other hand, the Board of Appeal did not regard the word element ‘antonio’ as purely negligible.
36 Consequently, despite the fact that the wording used by the Board of Appeal may have led to confusion, the applicant’s complaint alleging that the reasoning in the contested decision was contradictory must be rejected.
37 With regard to the applicant’s complaint alleging an erroneous assessment of the distinctive elements of the contested mark and the finding that the surname Rubini will attract the consumer’s attention more than the forename Antonio, it is necessary to recall the case-law according to which the perception of signs composed of a person’s forename and surname may vary from country to country within the European Union. Thus, it cannot be excluded that, in certain Member States, consumers will remember the surname rather than forename when they perceive marks composed of both names, since the perception of such signs may vary from country to country. However, that rule, drawn from experience, should not be applied automatically, without taking account of the specific features of each case. It is always necessary to undertake a comparison of the marks at issue, considering each as a whole (judgment of 12 July 2006, Rossi v OHIM — Marcorossi (MARCOROSSI), T‑97/05, not published, EU:T:2006:203, paragraphs 44 and 45).
38 Similarly, although it is possible that, in a part of the European Union, surnames have, as a general rule, a more distinctive character than forenames, it is necessary, however, to take account of factors specific to the case and, in particular, the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character (judgments of 24 June 2010, Becker v Harman International Industries, C‑51/09 P, EU:C:2010:368, paragraph 36, and of 5 October 2011, Cooperativa Vitivinicola Arousana v OHIM — Sotelo Ares (ROSALIA DE CASTRO), T‑421/10, EU:T:2011:565, paragraph 50).
39 Therefore, in a mark comprising various word elements, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. The finding with respect to such a role may be based only on an examination of all the relevant factors of each case (judgment of 24 June 2010, Becker v Harman International Industries, C‑51/09 P, EU:C:2010:368, paragraph 38).
40 In that regard, the Court has previously stated that it is necessary to take account, in particular, of the fact that the surname in question is unusual or, on the contrary, very common, which is likely to have an effect on its distinctive character, as well as whether the person who requests that his forename and surname, taken together, be registered as a mark is well known (judgment of 24 June 2010, Becker v Harman International Industries, C‑51/09 P, EU:C:2010:368, paragraphs 36 and 37).
41 In the present case, it is agreed between the parties that the forename Antonio is common. On the other hand, the parties disagree on whether the same can be said of the surname Rubini. In that regard, the applicant argues that that surname is very common, given that it is present in more than 550 Italian towns and that it is ranked number 891 out of the 350 000 Italian surnames. Consequently, according to the applicant, given that, in the present case, the contested mark is composed of a combination of a common forename and a common surname, the relevant consumer will not focus his attention on one of the elements but rather will perceive them both equally, viewing the mark as a whole. It is not only the surname Rubini that will be perceived and remembered, but also the full name Antonio Rubini.
42 In that regard, the Court finds that, assuming that the evidence put forward by the applicant is capable of showing that the surname Rubini is common, that evidence would relate to only a part of the relevant territory — which is the European Union — namely to Italian consumers and, therefore, is not conclusive.
43 Accordingly, without disputing the applicant’s argument that surnames do not always have a higher intrinsic value than forenames, it must be found that, in the context of the specific features of the present case and where there is a mark composed of a common forename and a surname which is not common in the entirety of the relevant territory, the forename has a lower level of distinctiveness than the surname.
44 Consequently, the applicant’s complaint alleging an incorrect assessment of the distinctive element of the contested mark must be rejected.
– The dominant nature of the elements constituting the earlier mark
45 As regards the earlier mark, the applicant argues that the Board of Appeal was wrong to find that the dominant element of that mark is the word element ‘rutini’ and not the figurative elements which surround it and which are significant due to their size and position. Accordingly, those elements cannot be overlooked in the evaluation of the overall impression produced by the earlier mark.
46 In that regard, it should be recalled that it is apparent from settled case-law that, with regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent 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 (see judgment of 13 July 2005, Murúa Entrena v OHIM — Bodegas Murúa (Julián Murúa Entrena), T‑40/03, EU:T:2005:285, paragraph 54 and the case-law cited).
47 In the present case, the Board of Appeal took the view that the dominant element of the earlier mark is the word element ‘rutini’ and not the figurative elements as they do not overshadow the word ‘rutini’, which is not small in size and is placed in the centre of the label. By analogy with the judgment of 13 July 2005, Julián Murúa Entrena (T‑40/03, EU:T:2005:285), the Board of Appeal took the view that the grape leaves and the ribbons in the earlier mark, as regards a product such as wine, had a weak distinctive character for the goods covered by that mark and that, consequently, the word element ‘rutini’ dominated the overall impression produced by the sign. The same assessment was extended by the Board of Appeal, in paragraphs 60 to 65 of the contested decision, to the coat of arms above the figurative element.
48 That assessment can only be upheld in so far as the figurative elements in the earlier mark are of secondary importance in relation to the word element.
49 In the context of the marketing of wines, it may reasonably be considered that the figurative elements of the earlier mark are of such a nature as to evoke a vineyard and will be perceived by the relevant public as a reference to wine. The representation of grape leaves and ribbons is not an element that allows the relevant public to perceive that figurative component as dominating the image they retain of the mark. On the contrary, consumers usually describe and recognise wine by reference to the word element which identifies it whether this element designates, in particular, the grower or the estate on which the wine is produced (see, to that effect, judgment of 13 July 2005, Julián Murúa Entrena, T‑40/03, EU:T:2005:285, paragraph 56). That assessment must be extended to the presence of the coat of arms above the word element of the earlier mark. In view of the position and size of the representation of that coat of arms, it is merely a decorative element without any real meaning. As a result, that element is not capable of dominating the mental image of the mark the relevant public will retain (judgment of 13 July 2005, Julián Murúa Entrena, T‑40/03, EU:T:2005:285, paragraph 57).
50 In the light of those findings, the Board of Appeal was therefore correct to find that the word element ‘rutini’ dominates the perception of the earlier mark.
51 In light of the foregoing, it must be found, for the purposes of the comparison of the signs at issue, that the Board of Appeal did not err in its assessment of the dominant and distinctive elements of the marks at issue.
Similarity of the signs
52 The applicant disputes the finding that the marks at issue are visually, phonetically and conceptually similar.
53 The Board of Appeal found, in paragraphs 54 and 55 of the contested decision, that the signs were visually and phonetically similar in so far as there is only one letter different between ‘rutini’ and ‘rubini’. Nevertheless, the Board of Appeal admitted that they were different in view of the first word element of the contested mark, namely ‘antonio’, which has no counterpart in the earlier mark, and in view of the figurative elements, placed on a label, which surround the single word in the earlier mark.
54 The applicant argues, in contrast, that the marks at issue have a different structure, the contested mark being composed of two words while the earlier mark contains only one word surrounded by several figurative elements. A low level of similarity stems from the presence in both of the marks of the letters ‘r’, ‘u’, ‘i’, ‘n’ and ‘i’. However, that similarity is counteracted by significant visual differences, namely the presence of the letters ‘t’ and ‘b’ and of the first word ‘antonio’ in the contested mark, which does not have a counterpart in the earlier mark and which is placed at the beginning of the contested mark, on which the attention of the consumer will generally be focused. Even though the applicant admits that the element ‘antonio’ is less distinctive, that does not mean however that that element will be overlooked in a visual comparison of the marks at issue.
55 Furthermore, the applicant argues that it is unlikely that the element ‘antonio’ is left out when that mark is pronounced and that the sound and rhythm of the marks at issue are different.
56 In that regard, it must be stated that the word element ‘rutini’ of the earlier mark and the second word element ‘rubini’ of the contested mark are highly similar in that they have five letters in common, placed in the same order, out of a total of six letters.
57 Admittedly, the effect of that similarity between the signs at issue is, to a certain extent, offset by the presence of figurative elements in the earlier mark and by the length of the sign ANTONIO RUBINI and the position of the element ‘antonio’ at the start of that sign.
58 However, first, as is apparent from paragraphs 49 and 50 above, the word element ‘rutini’, given its position and the size of its letters, is clearly distinct from the rest of the earlier mark and presents itself as the dominant element of that mark which plays a decisive role in the visual differentiation of the signs at issue. Second, the presence of the word element ‘antonio’ in the contested mark is also not capable of offsetting the visual and phonetic similarity of the signs resulting from the almost identical nature of the distinctive elements ‘rutini’ and ‘rubini’ inasmuch as, as was found in paragraph 43 above, the forename Antonio is less distinctive than the surname.
59 The Board of Appeal was therefore right to find that the signs at issue were visually and phonetically similar.
60 Regarding the conceptual similarity, the Board of Appeal found that the two signs were conceptually similar given that they both contain a surname which is ‘probably of Italian origin’.
61 By contrast, the applicant takes the view that the marks at issue refer to different persons belonging to different families. The applicant also argues that it is clear from settled case-law that names of anonymous or fictitious people are not able to convey any concept.
62 EUIPO does not share the Board of Appeal’s conclusion that signs which are composed of word elements capable of being perceived as surnames are necessarily conceptually similar. The conceptual comparison should have led to a neutral result rather than a finding of similarity, but that fact does not have any effect on the legality of contested decision.
63 According to case-law, conceptual differences can counteract visual and phonetic similarities if at least one of the marks at issue has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (judgment of 23 November 2010, Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 51).
64 Contrary to the Board of Appeal’s position, it must be held that the fact that the two surnames are probably both ‘of Italian origin’ is not sufficient to bring them closer together in the mind of consumers and to cause those consumers to believe that the goods in question come from the same undertaking or from economically linked undertakings.
65 The public will perceive the word elements of the marks in question as the names of persons with no specific conceptual meaning, unless the name is particularly well known as being the name of a famous person (see, to that effect, judgment of 18 May 2011, IIC v OHIM — McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 40). However, it has not been established that this is the case here.
66 Therefore, the relevant public will associate the word elements of the signs at issue with the names of separate people, given that those names are different (see, to that effect, judgment of 18 May 2011, McKENZIE, T‑502/07, not published, EU:T:2011:223, paragraph 41).
67 In the light of the foregoing, it must be concluded that, conceptually, consumers will not note any particular semantic connotation with regard to the signs at issue which enables them to establish a difference or similarity between the two signs.
68 Consequently, it must be held that, contrary to what was found by the Board of Appeal in paragraph 59 of the contested decision, the signs at issue are not conceptually similar. Accordingly, the conceptual comparison of the signs has no impact on the similarity of the signs.
The likelihood of confusion
69 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 19 June 2012, H.Eich v OHIM — Arav (H.EICH), T‑557/10, not published, EU:T:2012:309, paragraph 72).
70 In the present case, after finding that there was an overall similarity between the marks at issue, the Board of Appeal stated, in paragraph 95 of the contested decision, that the public would confuse the surnames and would view the addition of the element ‘antonio’ in the contested mark as merely a way of distinguishing a range of wines produced by the undertaking which is the proprietor of the earlier mark or, at the very least, an economically linked undertaking.
71 The applicant disputes that analysis, submitting that the visual, phonetic and conceptual differences between the marks at issue are sufficient to preclude the low level of similarity leading to a likelihood of confusion on the part of the consumer.
72 EUIPO disputes that argument.
73 In that regard, contrary to the applicant’s assertions, it must be pointed out first of all that the visual and phonetic differences between the marks at issue resulting from the presence of the letter ‘b’ in the contested mark and the letter ‘t’ in the earlier mark are not such as to rule out a likelihood of confusion between the marks at issue due to their similarities and the overall impression given by those marks.
74 It must be held, as noted by the Board of Appeal, that, in view of the weaker distinctive character of the element ‘antonio’, based on an overall impression, the contested mark will not be perceived as an indivisible whole as that element does not have an independent distinctive role and will be negligible in the relevant public’s perception.
75 Accordingly, in view of the findings, first, that the word ‘rutini’ is the dominant element of the earlier mark and, second, that the words ‘rubini’ and ‘rutini’ are the most distinctive elements of the marks at issue, it must be found that the differences between those marks cannot offset the significant visual and phonetic similarity resulting from the presence of those elements.
76 That is all the more so given that the goods in question are identical. According to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Thus, even assuming that the marks at issue display only a low degree of similarity because of their conceptual differences, this would be offset by the high degree of similarity between the goods covered by those marks (see, to that effect, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
77 It is also necessary to examine the applicant’s complaint alleging that the Board of Appeal incorrectly applied the criterion relating to the ‘overall impression’ produced by the contested mark. The applicant argues, in essence, that, in so far as the two word elements of the contested mark are equally distinctive, the Board of Appeal was wrong to ‘overlook’ the first word element ‘antonio’ in the comparison of the marks at issue and therefore did not take account of the overall impression produced by that mark when viewed in its entirety.
78 In that regard, it must be found that, contrary to what the applicant argues, it is apparent from the contested decision, in particular from paragraphs 55, 56 and 58 thereof, that, in the comparison of the signs at issue, the Board of Appeal relied on the overall impression produced by the contested mark, taking account of the presence therein of the element ‘antonio’. Furthermore, it is apparent from paragraph 88 of the contested decision that, in the global assessment of the likelihood of confusion, the Board of Appeal explicitly considered the relevance of the element ‘antonio’ before finding that it was ‘less important’ than the element ‘rubini’.
79 In the light of all the foregoing considerations, and in particular in the light of the fact that the goods are identical and that the marks at issue are phonetically and visually similar, it is therefore necessary to find that the Board of Appeal was correct to find that there was a likelihood of confusion on the part of the relevant public between the contested mark and the earlier mark within the meaning of Article 8(1)(b) of Regulation No 207/2009.
80 Consequently, the single plea in law must be rejected and the action must be dismissed in its entirety.
Costs
81 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.
82 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Enoitalia SpA to pay the costs.
Frimodt Nielsen | Forrester | Perillo |
Delivered in open court in Luxembourg on 11 July 2018.