JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
13 September 2013 (*) (1)
(Community trade mark – Invalidity proceedings – Community word mark CASTEL – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009 – Admissibility – Absolute ground for refusal not put forward before the Board of Appeal – Examination of the facts by OHIM of its own motion – Article 76(1) of Regulation (EC) No 207/2009)
In Case T‑320/10,
Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell, established in Castell (Germany), represented by R. Kunze, G. Würtenberger and T. Wittmann, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos and G. Schneider, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Castel Frères SAS, established in Blanquefort (France), represented by A. von Mühlendahl and H. Hartwig, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 4 May 2010 (Case R 962/2009‑2), relating to invalidity proceedings between Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell and Castel Frères SAS,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen, President, I. Labucka and S. Soldevila Fragoso (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 2 August 2010,
having regard to the response of OHIM lodged at the Court Registry on 15 November 2010,
having regard to the response of the intervener lodged at the Court Registry on 10 November 2010,
having regard to the change in the composition of the Chambers of the General Court,
further to the hearing on 8 November 2012,
gives the following
Judgment
Background to the dispute
1 On 29 April 2002, the intervener, Castel Frères SAS, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the word sign CASTEL.
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)’.
4 On 1 June 2004, the word mark CASTEL (‘the disputed mark’) was registered as a Community trade mark under number 2 678 167 for the goods referred to in paragraph 3 above.
5 On 30 October 2007, the applicant, Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell, filed an application for a declaration that the disputed mark was invalid pursuant to Article 51 and Article 7(1) of Regulation No 40/94 (now Article 52 and Article 7(1) of Regulation No 207/2009), based on the geographical indication Castell, protected for wines in Germany, as well as in France, Greece, Italy and Spain (‘the earlier geographical indication’).
6 On 19 June 2009, the Cancellation Division rejected the application for a declaration of invalidity.
7 On 18 August 2009, the applicant filed a notice of appeal with OHIM against the Cancellation Division’s decision.
8 By decision of 4 May 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. First, the Board of Appeal acknowledged that the term ‘castell’ was a German indication of geographical provenance for wines, protected in Germany, France, Greece, Spain and Italy, which is perceived as such by the relevant public. Secondly, the Board of Appeal stated that the disputed mark differed from the earlier geographical indication inasmuch as the former is spelt with a single letter ‘l’ and the latter is spelt with two letters ‘l’. It found that that difference in spelling was likely to create, first, some distance and, secondly, a conceptual difference between the earlier geographical indication and the disputed mark. The disputed mark, in the light of its being commonly used in the wine sector and meaning ‘castle’, is perceived by the relevant public as having that meaning, whereas the earlier geographical indication is perceived by that public as a geographical name, namely that of the German wine-producing municipality of Castell. The Board of Appeal therefore concluded that the disputed mark would not be perceived by the relevant public as designating a place in Germany which is renowned for wine production and that it was therefore not descriptive of the geographical origin of the goods concerned for the purposes of Article 7(1)(c) of Regulation No 207/2009. Lastly, the Board of Appeal found that, inasmuch as the disputed mark did not contain or consist of a geographical indication, there was no need to examine it in the light of Article 7(1)(g) and (j) of that regulation.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
10 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
11 At the hearing, the intervener stated that it was withdrawing Annexes I.9 and I.10 to its response, which had been submitted for the first time before the Court.
Law
Admissibility of the action
12 The intervener submits that the action is inadmissible because it constitutes an abuse of rights, the applicant having filed an application for registration of the word sign CASTEL at the German Patent and Trade Mark Office while the invalidity proceedings before OHIM were ongoing.
13 The intervener stated at the hearing that it had not put that plea forward previously because the circumstances on which it was based came to light only after the Board of Appeal’s decision had been delivered. Furthermore, it submits that abuse of rights is a public-policy argument which may be put forward at any time in the proceedings and that the Court is therefore required to examine it.
14 OHIM supports the intervener’s argument.
15 The applicant submits that that argument and the documents put forward in support thereof, in Annexes I.5 to I.8 to the intervener’s response, were submitted for the first time before the Court and that they must therefore be rejected as inadmissible. Furthermore, it maintains that those documents were submitted in a language other than the language of the case.
16 It must be borne in mind that, under Article 135(4) of the Court’s Rules of Procedure, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. The task of the Court in the present proceedings is to review the legality of decisions of the Boards of Appeal. Therefore, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (Case T‑66/03 ‘Drie Mollen sinds 1818’ v OHIM – Nabeiro Silveria (Galáxia) [2004] ECR II‑1765, paragraph 45).
17 In the present case, it is apparent from an examination of the administrative file that the argument on which the intervener seeks to base its plea of inadmissibility was not submitted before the Board of Appeal. Contrary to what the intervener stated at the hearing, it is apparent from its written pleadings that the application for registration of the word mark CASTEL was filed at the German Patent and Trade Mark Office on 9 March 2010, that is to say, almost two months before the Board of Appeal took its decision, on 4 May 2010, without the Board of Appeal having been informed of that fact.
18 Even if, as the intervener claims, the circumstances on which the application for registration is based came to light once the administrative procedure had been concluded, it must be pointed out that, in an action brought against a decision of one of OHIM’s Boards of Appeal, an argument alleging an abuse of rights cannot play any part as regards the admissibility of that action.
19 The objection of inadmissibility raised by the intervener must therefore be rejected.
Admissibility of the plea in law alleging infringement of Articles 7(1)(d) and 52(1)(a) of Regulation No 207/2009
20 The applicant submits that the Board of Appeal did not draw the necessary conclusions after finding that the sign CASTEL was commonly used and was therefore customary within the meaning of Article 7(1)(d) of Regulation No 207/2009. It is thus, the applicant argues, a common term which does not enable consumers to repeat or avoid the experience of a purchase.
21 Furthermore, the applicant states that the Board of Appeal, in so far as it did not examine the appeal in the light of Article 7(1)(d) of Regulation No 207/2009, infringed the obligation to examine the appeal in full and to exercise any power within the competence of the department responsible for the decision under appeal pursuant to Article 64 of that regulation.
22 OHIM and the intervener submit that this plea was submitted for the first time before the General Court and is for that reason inadmissible. Furthermore, they maintain that the Board of Appeal was not required to re-examine all the absolute grounds for refusal, but only those put forward by the applicant.
23 As has already been stated in paragraph 16 above, under Article 135(4) of the Rules of Procedure, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. The task of the Court in the present proceedings is to review the legality of decisions of the Boards of Appeal. Therefore, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (Galáxia, paragraph 45). Likewise, the applicant does not have the power to alter before the Court the terms of the dispute as delimited in the respective claims and allegations submitted by itself and by the intervener (Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraph 43, and Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 122).
24 It is apparent from the examination of the administrative file that the plea alleging infringement of Article 7(1)(d) of Regulation No 207/2009 was not put forward before the Board of Appeal and that it was therefore submitted for the first time before the Court.
25 In any event, contrary to what the applicant claims, that absolute ground for refusal did not have to be examined by the Board of Appeal of its own motion in the context of invalidity proceedings.
26 Under Article 76(1) of Regulation No 207/2009, when considering absolute grounds for refusal, OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark registration of which is sought comes within one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been put forward by the applicant for the mark. OHIM is required to examine of its own motion the relevant facts which may lead it to apply an absolute ground for refusal (Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 50; Case T‑129/04 Develey v OHIM (Shape of a plastic bottle) [2006] ECR II‑811, paragraph 16; and judgment of 12 April 2011 in Joined Cases T‑310/09 and T‑383/09 Fuller & Thaler Asset Management v OHIM (BEHAVIOURAL INDEXING and BEHAVIOURAL INDEX), not published in the ECR, paragraph 29).
27 In invalidity proceedings, however, OHIM cannot be required to carry out afresh the examination which the Examiner conducted, of his own motion, of the relevant facts which could have led him to apply the absolute grounds for refusal. It follows from the provisions of Articles 52 and 55 of Regulation No 207/2009 that the Community trade mark is regarded as valid until it has been declared invalid by OHIM following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by OHIM in the examination of an application for registration.
28 By virtue of that presumption of validity, OHIM’s obligation, under Article 76(1) of Regulation No 207/2009, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for a Community trade mark carried out by the Examiners of OHIM and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In invalidity proceedings, as the registered Community trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before OHIM the specific facts which call the validity of that trade mark into question.
29 It follows from the foregoing that, in the invalidity proceedings, the Board of Appeal was not required to examine of its own motion the relevant facts which might have led it to apply the absolute ground for refusal set out in Article 7(1)(d) of Regulation No 207/2009.
30 The present plea must therefore be rejected as inadmissible.
Admissibility of the references to the administrative file
31 The applicant makes a general reference in the application to the documents of 29 October 2007, 23 June 2008 and 19 October 2009 submitted to OHIM and claims that they are therefore an integral part of the proceedings before the Court.
32 The intervener submits that a general reference to documents submitted to the departments of OHIM, as is the case here, is inadmissible.
33 OHIM stated at the hearing that it leaves this issue to the wisdom of the Court.
34 In this regard, it should be borne in mind that, under Article 44(1)(c) of the Court’s Rules of Procedure, the application initiating proceedings must contain a summary of the pleas in law relied on. According to the case-law, the summary of the pleas relied on must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. While the body of the application may be supported by references to certain extracts from documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the fact that the essential arguments are not set out in the application, and it is not for the Court to place itself in the parties’ position and to seek the relevant information in the annexes (judgment of 12 July 2006 in Case T‑97/05 Rossi v OHIM – Marcorossi (MARCOROSSI), not published in the ECR, paragraph 36).
35 It follows that the application, to the extent to which it refers to the written submissions made to OHIM, is inadmissible in so far as the general reference which it contains cannot be connected to the pleas and arguments developed in that application (MARCOROSSI, paragraph 37).
36 Consequently, the references in the application to the documents of 29 October 2007, 23 June 2008 and 19 October 2009 must be held to be inadmissible.
Substance
37 The applicant raises, in essence, six pleas in law in support of its action. The first plea alleges infringement of Article 7(1)(c) and Article 52(1)(a) of Regulation No 207/2009; the second, infringement of Article 7(1)(g) and Article 52(1)(a) of Regulation No 207/2009; the third, infringement of Article 7(1)(j) and Article 52(1)(a) of Regulation No 207/2009; the fourth, infringement of Articles 63, 64 and 76 of Regulation No 207/2009; the fifth, infringement of Article 65 of Regulation No 207/2009; and the sixth, infringement of Article 75 of Regulation No 207/2009.
The first plea, alleging infringement of Article 7(1)(c) and Article 52(1)(a) of Regulation No 207/2009
38 The applicant complains, in essence, that the Board of Appeal erred in finding that the disputed mark has no descriptive character in relation to the goods which it designates.
39 Article 7(1)(c) of Regulation No 207/2009 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, cannot be registered. Furthermore, Article 7(2) of Regulation No 207/2009 states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
40 Those descriptive signs or indications are deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 30, and judgment of 15 December 2011 in Case T‑377/09 Mövenpick v OHIM (PASSIONATELY SWISS), not published in the ECR, paragraph 27).
41 From that point of view, the signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (Case C‑383/99 P Procter & Gamble v OHIM [2001] ECR I‑6251, paragraph 39, and PASSIONATELY SWISS, paragraph 27).
42 It follows that, in order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific link between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of those goods or services or one of their characteristics.
43 As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, especially geographical names, it is in the public interest that these remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response (see, by analogy, Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 26; Case T‑295/01 Nordmilch v OHIM (OLDENBURGER) [2003] ECR II‑4365, paragraph 30; and PASSIONATELY SWISS, paragraph 29).
44 Furthermore, it may be observed, first, that the registration of geographical names as trade marks where they designate specified geographical locations which are already famous or known for the category of goods concerned, and which are therefore associated with those goods in the mind of the relevant class of persons, is excluded as, secondly, is the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods concerned (see, by analogy, Windsurfing Chiemsee, paragraphs 29 and 30; OLDENBURGER, paragraph 31; and Case T‑379/03 Peek & Cloppenburg v OHIM (Cloppenburg) [2005] ECR II‑4633, paragraph 34).
45 However, Article 7(1)(c) of Regulation No 207/2009 does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons – or at least unknown as the designation of a geographical location – or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there or was conceived of there (see, by analogy, Windsurfing Chiemsee, paragraph 33, and Cloppenburg, paragraph 36).
46 Consequently, it is necessary, in order to assess whether a sign is likely, in the minds of the relevant class of persons, to designate the geographical origin of the category of goods concerned, to establish whether the geographical name in question designates a place which is currently associated in the minds of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future (see, by analogy, Windsurfing Chiemsee, paragraph 31). To that end, regard must be had to the degree of familiarity among such persons with that name, with the characteristics of the place designated by the name, and with the category of goods concerned (see, by analogy, Windsurfing Chiemsee, paragraph 32).
47 As regards word marks, it must also be pointed out that any perceptible difference between the formulation of the term submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on that term enabling it to be registered as a trade mark (Procter & Gamble v OHIM, paragraph 40).
48 Furthermore, in order to be caught by Article 7(1)(c) of Regulation No 207/2009, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods or services concerned (OHIM v Wrigley, paragraph 32, and Case T‑344/07 O2 (Germany) v OHIM (Homezone) [2010] ECR II‑153, paragraph 21).
49 It must also be borne in mind that the descriptiveness of a trade mark cannot be assessed other than by reference to the goods or services in respect of which the sign has been registered, on the one hand, and by reference to the perception which the relevant public has of it, on the other (OLDENBURGER, paragraph 34, and Cloppenburg, paragraph 37).
50 It is in the light of that case-law that the present plea must be examined.
– The definition of the relevant public
51 It must be pointed out that the goods covered by the disputed mark are in Class 33 and are ‘alcoholic beverages (except beers)’. They are therefore everyday consumer goods intended for the general public. The relevant public thus comprises the average consumers of those goods.
52 With regard to establishing, in the present case, whether the disputed mark may be perceived as the earlier geographical indication, and therefore as a description of the geographical origin of the goods covered by that mark, it must be stated that the relevant public by reference to which the absolute ground for refusal must be assessed is the average consumer in the Member State in which the place designated by that indication is situated (see, to that effect, OLDENBURGER, paragraph 35). Thus, the Board of Appeal found, in paragraph 22 of the contested decision, that the German Patent and Trade Mark Office was best placed to assess the relevant facts and the perception of the relevant consumer in relation to the earlier geographical indication.
– The relevant public’s perception of the disputed mark
53 The applicant states that, as the Board of Appeal acknowledged, the term ‘castell’ is a protected geographical indication for wines, and is recognised as such under a number of bilateral treaties. Similarly, it states that the Board of Appeal found that that term had to remain available as an indication of the geographical origin of the category of goods concerned.
54 OHIM submits that the applicant has acknowledged that only geographical names which are already famous or are known for the category of goods concerned, and which are therefore associated with those goods in the minds of the relevant class of persons, are excluded from registration as Community trade marks. By contrast, the applicant has not established either that the geographical name Castell has become famous or known to the relevant consumers, so that they might associate it with wine produced in the ‘Castell’ location, or that the location Castell is known outside of the Franconia region (Germany).
55 OHIM thus takes the view that the term ‘castel’ in the disputed mark will not be understood as a geographical name and will not be associated with the goods in question by the relevant consumers.
56 In order to assess the descriptive character of the disputed mark, it is necessary to examine whether the relevant public, faced with that mark, will perceive it as the geographical name referred to by the earlier geographical indication, and therefore as an indication of the origin of the goods concerned, namely alcoholic beverages, in particular wines.
57 In this regard, it must be pointed out that the term ‘castel’ in the disputed mark may have various meanings in a number of languages, and is, inter alia, as the intervener has submitted, a rather common French surname. The term ‘castel’ exists in French, a language in which it means ‘small castle’, and in Spanish, a language in which it also means castle, but in which it is, according to the dictionary of the Royal Academy of the Spanish Language (Real Academia de la Lengua Española), virtually no longer used. In Italian, the term ‘castel’ is the truncated version of ‘castello’ and thus also refers to a castle. By contrast, that term does not exist either in Greek or in German, the latter being the material language with regard to the relevant public for the purpose of establishing the descriptive character of the disputed mark, as the German word for ‘castle’ is ‘Schloss’ or ‘Kastell’.
58 It must also be pointed out that, as is apparent from the bilateral treaties between, on the one hand, Germany, and, on the other hand, France, Greece, Italy and Spain, relied on by the applicant, the earlier geographical indication is a protected geographical indication for wines which is also a geographical name, namely that of the wine-producing municipality of Castell, situated in the region of Franconia. Those facts are not disputed by the intervener.
59 The intervener’s argument that those bilateral treaties are no longer applicable in view of the new legal system for the protection of geographical indications set up by the European Union may be relevant for the purpose of establishing the scope of the legal protection relating to the earlier geographical indication. It is not, however, relevant for the purpose of establishing that the relevant public is familiar with the wine-producing municipality of Castell, the name of which is protected by the earlier geographical indication, and the degree of that familiarity.
60 As the applicant states, the Board of Appeal acknowledged, in paragraphs 21 and 22 of the contested decision, on the basis of the findings of the German Patent and Trade Mark Office, that the term ‘castell’ was perceived by the relevant public as a geographical indication for wines. Consequently, even if the earlier geographical indication were not famous, OHIM could not claim that that public does not know of it. The relevant public is able to perceive the term ‘castell’ as a geographical indication for wines because it is has sufficient knowledge of it.
61 In accordance with the case-law cited in paragraphs 44 to 46 above, it must be borne in mind that a geographical name is liable, in the minds of the relevant class of persons, to designate the geographical origin of the category of goods concerned if that name designates a place which is currently associated, in the minds of the relevant class of persons, with the category of goods concerned, or if it is reasonable to assume that that association may be established in the future.
62 In the present case, as the Board of Appeal found that the relevant public was able to perceive the term ‘castell’ as a geographical indication for wines, it also found, first, that that term was sufficiently known to the relevant public as the name of a place where wine is produced, namely the wine-producing municipality of Castell, and, secondly, that that geographical name was associated with the category of goods concerned, namely ‘alcoholic beverages (except beers)’.
63 In the light of the foregoing, it must be held that, contrary to OHIM’s claims, the term ‘castell’ designates a place which is sufficiently known to the relevant public for the production of wines and is thus currently associated, for that public, with the category of goods concerned.
64 However, the Board of Appeal took the view, in paragraph 24 of the contested decision, that the disputed mark differed from the earlier geographical indication in so far as it is spelt with a single ‘l’ and the earlier geographical indication is spelt with two ‘l’s. It therefore found that the disputed mark did not consist exclusively of a sign which may serve to designate the geographical origin of the goods at issue.
65 In this regard, the applicant submits that there is no conspicuous difference between the earlier geographical indication and the disputed mark, but only a minimal difference. It also submits that the Board of Appeal erred in finding that they are pronounced differently because they are phonetically identical, the disputed mark being a phonetic transcription of the earlier geographical indication.
66 The applicant also takes the view that, in accordance with the case-law, the resemblance between the earlier geographical indication and the disputed mark cannot be offset by their difference in meaning in the light of the importance of the word element in the description of wines by consumers, who as a matter of course ask for that type of goods orally.
67 Furthermore, the applicant submits that one of the possible meanings of the disputed mark identifies a feature of the goods at issue, namely their geographical origin.
68 OHIM submits that, contrary to what the applicant claims, the Board of Appeal did not maintain that there is a difference in pronunciation between the earlier geographical indication and the disputed mark and states in this regard that the disputed mark and the earlier geographical indication are not pronounced identically in all the languages of the European Union.
69 The intervener submits that the disputed mark and the earlier geographical indication are only similar, and not identical, in terms of their spelling, pronunciation and meaning and that it was unable to identify on a map any wine‑growing place or region called Castel.
70 It is true that the Board of Appeal found that there is a difference between the geographical name referred to by the earlier geographical indication and the disputed mark, namely that the disputed mark is spelt with a single ‘l’ and the earlier geographical indication is spelt with two ‘l’s. However, that difference is not sufficient to outweigh the resemblance which exists between them. Contrary to what the Board of Appeal stated, it is a minimal difference in spelling, which does not constitute a perceptible difference from the point of view of the relevant public between the disputed mark and the term used to designate the wine‑producing municipality of Castell, and thus the geographical origin of the goods in question. Consequently, in the light of the case-law referred to in paragraph 47 above, the difference which has been found to exist does not create an impression sufficiently far removed from that produced by the geographical name referred to by the earlier geographical indication.
71 Furthermore, the disputed mark does not feature any additional element, either verbal or figurative, that is capable of weakening the resemblance between it and the geographical name referred to by the earlier geographical indication.
72 These findings cannot be invalidated by the fact that the geographical name referred to by the earlier geographical indication and the disputed mark have differences in meaning which give rise, according to OHIM, to a perceptible difference between them.
73 It is true that the Board of Appeal stated in paragraphs 26 and 27 of the contested decision that the use of the term ‘castel’ or of its translation into other languages is common in the wine sector. However, on the shelves of a specialist wine shop or on the wine lists in restaurants, that term does not, in general, appear on its own but along with other terms, in particular a patronymic or a place name indicating the owner of the castle or the geographical location of the castle. Likewise, the relevant public is unaccustomed to being confronted with the term ‘castel’ or its translation into other languages used on its own in marks designating wines. Accordingly, the fact that the term ‘castel’, in conjunction with other terms, appears frequently in the wine sector plays only a limited role in the relevant public’s perception of the disputed mark. Consequently, and contrary to what the Board of Appeal, OHIM and the intervener have stated, the relevant public in the present case will not perceive the disputed mark affixed to a bottle of wine as meaning only ‘castle’, but will understand it also as an evocation of the geographical name referred to by the earlier geographical indication.
74 Furthermore, the fact that the relevant public may also attribute the meaning of ‘castle’ to the term ‘castel’ is not capable of altering the foregoing finding relating to the absence of a perceptible difference between the two terms from a semantic point of view. In the light of the minimal difference in spelling between the earlier geographical indication and the disputed mark, and given the absence of any other additional element capable of differentiating them, the relevant public may also perceive the disputed mark as being a reference to the wine-producing municipality of Castell. As has been stated in paragraph 48 above, in assessing the descriptiveness of a word sign it is sufficient that at least one of its possible meanings designates a characteristic of the goods or services concerned, which is not the case here.
75 That finding also cannot be called into question by the judgment in Case T‑149/06 Castellani v OHIM – Markant Handels und Service (CASTELLANI) [2007] ECR II‑4755, which is relied on by the Board of Appeal. In paragraph 58 of that judgment, the Court held, in assessing the existence of a likelihood of confusion, that the German consumer, when purchasing wine, is accustomed to seeing a large number of trade marks for wine the names of which begin with ‘Schloss’, ‘castello’, ‘château’, ‘castel’ or ‘castle’. Nevertheless, the fact that the relevant public may attribute the meaning of ‘castle’ to the term ‘castel’ in the case of marks which begin with that term cannot prevent that public from also establishing an association between that term and the geographical name referred to by the earlier geographical indication when it is used on its own, as is the case here.
76 In the light of the foregoing, it must be held that, contrary to what OHIM and the intervener claim, the disputed mark will be perceived by the relevant public, in relation to the goods which it designates, as being the geographical name Castell, which is protected by the earlier geographical indication. Given the similarity which exists between the geographical name referred to by the earlier geographical indication and the disputed mark, the term ‘castel’ in the disputed mark will not be perceived, contrary to what OHIM argues, as a suggestive or fanciful term, but as a reference to the wine-producing municipality in Franconia and to the protected geographical indication familiar to the German public, and thus as a reference to the geographical place in which those wines are produced.
77 In those circumstances, it must be held that, contrary to OHIM’s arguments, the relevant public, which, as has been stated in paragraph 60 above, is aware of the earlier geographical indication, and therefore of the existence of the wine-producing municipality of Castell in Germany, will, when confronted with goods bearing the mark CASTEL, think immediately, without further thought, that what they have in front of them is a wine which comes from that wine-producing municipality.
78 There is therefore a sufficiently direct and specific link between the disputed mark and ‘alcoholic beverages (except beers)’, and that mark will be perceived by the relevant public as designating a characteristic of those goods, namely their geographical origin.
79 Consequently, contrary to what the Board of Appeal found, the disputed mark must be held to be descriptive of the abovementioned goods.
80 In the light of all of the foregoing, the first plea, alleging infringement of Article 7(1)(c) and Article 52(1)(a) of Regulation No 207/2009, must be upheld.
The other pleas in the action
81 It follows from the case-law that, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies (Case C‑104/00 P DKV v OHIM [2002] ECR I‑7561, paragraph 29, and judgment of 9 July 2009 in Case T‑257/08 Biotronik v OHIM (BioMonitor), not published in the ECR, paragraph 36).
82 In so far as the Court has held that the disputed mark is descriptive of the goods at issue, the contested decision must be annulled, without its being necessary to rule on the other pleas.
Costs
83 Under Article 87(2) 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. As OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant.
84 The intervener must be ordered to bear its own costs since the applicant has not applied for it to be ordered to pay the costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 May 2010 (Case R 962/2009‑2);
2. Orders OHIM to bear its own costs and to pay those incurred by Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell;
3. Orders Castel Frères SAS to bear its own costs.
Kanninen | Labucka | Soldevila Fragoso |
Delivered in open court in Luxembourg on 13 September 2013.
[Signatures]