JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
21 May 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark Wine in Black — Earlier Community word mark NOVAL BLACK — Relative ground for refusal — No likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑420/14,
Wine in Black GmbH, established in Berlin (Germany), represented by A. Bauer and V. Ahmann, lawyers,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M.L. Vuijst and A. Folliard-Monguiral, acting as Agents,
the other party to the proceedings before the Board of Appeal of OHIM being,
Quinta do Noval-Vinhos, SA, established in Pinhão (Portugal),
ACTION brought against the decision of the First Board of Appeal of OHIM of 6 March 2014 (Case R 1601/2013-1), concerning opposition proceedings between Quinta do Noval-Vinhos, SA and Wine in Black GmbH,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 11 June 2014,
having regard to the response lodged at the Court Registry on 20 October 2014,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month of notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to rule on the action without an oral procedure,
gives the following
Background to the dispute
1 On 8 June 2012 the applicant, Wine in Black GmbH, 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration was sought is the word sign Wine in Black.
3 The goods in respect of which registration of the mark was sought are, inter alia, in Class 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 to the following description: ‘alcoholic beverages, (except beers), in particular: wines, brandy’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 127/2012 of 6 July 2012.
5 On 3 October 2012 Quinta do Noval-Vinhos, SA filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark NOVAL BLACK, registered on 26 April 2010 under the number 8612574, which covers goods in Class 33 corresponding to the following description: ‘alcoholic beverages, (except beers)’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 26 June 2013 the Opposition Division upheld the opposition.
9 On 16 August 2013 the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 6 March 2014 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal, confirming that there was a likelihood of confusion. The Board held, in essence, that:
– the relevant public consisted of average European consumers who are English-speaking or who are deemed to have an elementary knowledge of English, with a reasonable level of attention in respect of wines and other alcoholic beverages;
– the goods covered by the marks at issue were identical;
– The signs at issue had a certain degree of visual similarity, and a phonetic and conceptual similarity, as they contained the same number of syllables, had a similar structure and coincided in respect of the word ‘black’, which certainly appears at the end of those signs, but which is characterised as non-descriptive in respect of the goods at issue, unlike the word ‘wine’ in the earlier trademark;
– The earlier trade mark had average inherent distinctive character;
– the goods concerned could be ordered in restaurants, bars or cafés, which strengthened the role of the phonetic similarity and reduced the importance of the visual differences.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and the other party to the proceedings before the Board to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It focuses its arguments on the criticism of the findings of the Board of Appeal regarding the similarity of the signs at issue, which it claims were not each assessed as a whole.
14 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may 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.
15 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 that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
16 At the outset, the findings of the Board concerning the relevant public, which are consistent with the case-law (judgment of 14 May 2013 in Masottina v OHIM — Bodegas Cooperativas de Alicante (CA’ MARINA), T‑393/11, EU:T:2013:241, paragraph 24) and are not called into question by the parties, must be confirmed. Likewise, the Board’s finding that the goods concerned are identical must be endorsed.
Comparison of the signs
17 It should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression made by the signs, their distinctive and dominant elements, in particular, being borne in mind. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
18 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 at issue 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 in OHIM v Shaker, cited in paragraph 17 above, 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 in OHIM v Shaker, cited in paragraph 17 above, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, 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 the relevant public retains, so that all the other components are negligible in the overall impression produced by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
19 First, in paragraphs 20 to 28 of the contested decision, the Board held, in essence, that although the public is deemed to attach more importance to the initial part of trade marks, that could not be the situation in the present case, since, with regard to the mark applied for, the word ‘wine’ was descriptive of the goods in question. Then, in paragraphs 30 and 31 of the contested decision, the Board pointed out that the signs at issue comprised the same number of syllables and were almost the same length and therefore had a similar structure. On that basis, it found that those signs had a certain degree of visual similarity and were phonetically similar. Finally, in paragraph 32 of the contested decision, the Board found that there was conceptual similarity because the signs at issue made reference to the colour black. According to the Board, the latter similarity could not be undermined by the presence of the words ‘wine’ and ‘in’ in the mark applied for, which were of weak distinctive character, nor by that of the word ‘noval’ in the earlier mark, which, it contends, has no meaning.
20 The applicant argues in particular that the Board of Appeal, instead of examining each of the signs at issue as a whole, gave undue weight to the word ‘black’, common to those signs. In doing so, it is claimed, the Board failed to take into account the fact that that word appeared at the end of those signs, while their initial parts are different, and wrongly characterised it as the distinctive feature within each of the signs at issue. By contrast, in the earlier mark, it is the word ‘noval’ that is the most distinctive, since it has no meaning for the relevant public, while the word ‘black’ is a simple adjective describing the colour that may be attributed to the word ‘noval’. As regards the mark applied for, not only is the word ‘wine’ not very distinctive, but neither is the word ‘black’, with the result that ‘wine in black’ should be considered as a whole, which would constitute a fanciful expression. Moreover, according to the applicant, the structure of the signs at issue is different, since the earlier trade mark contains two words whereas the mark applied for contains three, including a preposition.
21 OHIM contends that the word ‘black’ is not descriptive, since the colour black has no connection with the alcoholic beverages. Moreover, that word is not understood as an addition to the word ‘noval’ within the earlier mark. Accordingly, the latter word does not have a dominating role. Moreover, there is nothing unusual about the grammatical structure of the mark applied for, which is similar, although not identical, to that of the earlier mark.
The visual comparison
22 As regards visual similarity, it should be noted that, contrary to what the applicant claims, the Board considered each of the signs at issue as a whole and did not, therefore, confine itself to considering the word ‘black’ alone. Moreover, the Board was right not to accept the argument of the Opposition Division, set out in paragraph 4, seventh indent, of the contested decision, according to which the element ‘black’ had an independent distinctive role, within the meaning of the judgment of 6 October 2005 in Medion (C‑120/04, ECR, EU:C:2005:594, paragraph 37). The principle arising from that judgment may only be applied where the earlier mark is contained in the mark applied for (see, to that effect, judgment of 10 December 2013, Colgate-Palmolive v OHIM — dm-drogerie markt (360º SONIC ENERGY), T‑467/11, EU:T:2013:633, paragraph 43), which is not the case here.
23 However, the Board of Appeal was wrong to find that those signs were visually similar to a certain degree.
24 First, it must be noted that the mark applied for comprises three words, whereas the earlier mark contains only two. Accordingly, their structure is only similar to a low degree.
25 Secondly, although the length of those signs is similar, they differ because of their initial parts. According to the case-law, the first part of a trade mark normally has a greater visual impact than its final part (judgments of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, Rec, EU:T:2010:347, paragraph 62, and of 30 April 2014, Beyond Retro v OHIM — S&K Garments (BEYOND VINTAGE), T‑170/12, EU:T:2014:238, paragraph 55).
26 In that regard, even assuming that the case-law referred to in paragraph 25 above is not fully applicable to the mark applied for, due to the fact that the word ‘wine’ describes the goods covered by it, that case-law nevertheless remains relevant with regard to the earlier mark. The first element of it, namely the word ‘noval’ has no meaning and cannot therefore be considered as describing the characteristics of the goods covered. Therefore, the word ‘noval’, placed at the beginning of the earlier mark, will attract the public’s attention more than the word ‘black’, although the latter is by no means negligible.
27 It follows that the signs at issue, in so far as they are composed of a different number of words and are distinguishable because of their initial parts, are visually similar to a low degree only, and therefore are less similar than the Board of Appeal had found.
The phonetic comparison
28 As regards the phonetic comparison, it is appropriate, first, to apply by analogy the same considerations as those set out in paragraphs 24 and 25 above.
29 Secondly, it should be noted that the Board was wrong to find that the signs at issue were pronounced with the same rhythm and intonation simply because they contained the same number of syllables.
30 In the first place, there is practically no correspondence between the letters comprising the first two syllables of the mark applied for and those in the first two syllables of the earlier mark, especially as regards their respective vowels, the pronunciation of which has a particular impact on rhythm and intonation.
31 In the second place, the fact that an equal number of syllables are distributed over a different number of words is likely to generate differences of rhythm and intonation in the pronunciation of the signs at issue.
32 Thirdly, since the word ‘noval’ does not belong to the English language, the relevant public, as defined in paragraph 10, first indent, above, will not know exactly how to pronounce it, which precludes the presumption that the word will be pronounced with the same rhythm and intonation as the initial part ‘wine in’ of the mark applied for.
33 It follows that there is only a low degree of phonetic similarity between the signs at issue, contrary to the view of the Board of Appeal.
The conceptual comparison
34 As regards the conceptual comparison, it should be noted that, while the presence of the word ‘black’, which is understood by the relevant public, in each of the signs at issue certainly constitutes an element that could give rise to similarity, the Board of Appeal was none the less required to conduct its assessment by considering each of those signs as a whole, in accordance with the case-law cited in paragraph 17 above.
35 In that regard, it must be recalled that the Board of Appeal, in paragraph 32 of the contested decision, merely argued that its finding that the signs at issue were conceptually similar was not affected by the differences resulting from the words ‘wine’ and ‘in’ in the mark applied for, on the one hand and the word ‘noval’ in the earlier mark, on the other, since, according to the Board, it concerned, respectively, weakly distinctive elements and an element devoid of any semantic content.
36 However, in doing so, the Board of Appeal did not assess the mark applied for as a whole. It failed to take into account the fact that, even if the word ‘wine’, taken in isolation, is weakly distinctive in respect of the goods covered, the expression ‘wine in black’ has an imaginative and evocative character, as the applicant rightly claims. Moreover, OHIM admits, in essence, that the colour black does not describe the organoleptic characteristics of wines, which strengthens the argument that an expression meaning ‘wine in black’ must be regarded as being capable, as a whole, of surprising the public and conveying to it the idea of a wine of elegance and distinction, like a person dressed in black, rather than suggesting to it the simple concept of a wine that is dark in colour. In that regard, OHIM acknowledges that the colour black in association with wines gives the mark applied for a certain conceptual element of intrigue or surprise.
37 In the earlier mark, the word ‘black’ is not accompanied, as in the mark applied for, by a preposition and a word with a clear meaning, but is preceded only the word ‘noval’, which does not have any meaning and which may, at most, be perceived as a company name, as OHIM states when referring to the arguments advanced by the applicant before the Board. Accordingly, in the earlier mark, the word ‘black’ simply qualifies either an element that is completely fanciful or the name of a company and thus does not give rise to an expression which, considered as a whole, may be associated with the same ideas as those mentioned in the preceding paragraph in relation to the mark applied for.
38 Accordingly, it must be held that the signs at issue, each examined as a whole, have no conceptual similarity, despite their common element ‘black’.
39 In the light of the above, it must be concluded that the signs at issue have a low degree of visual and phonetic similarity and are conceptually different, contrary to the view of the Board.
The likelihood confusion
40 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. 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 (judgments of 29 December 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
41 In paragraphs 36 to 41 of the contested decision, the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue, due to the fact that the goods were identical, that the signs were similar overall due to their common element ‘black’, that more importance had to be given to phonetic similarity than to visual similarity, in so far as the signs at issue could appear on menus in cafes, bars or restaurants, and that the earlier mark had a normal distinctive character, as it is comprised of words that have no connection with the goods concerned.
42 The applicant argues, in particular, that the degree of similarity of the signs is insufficient for it to be held that there is a likelihood of confusion.
43 OHIM replies that the Board was justified in finding that there was a likelihood of confusion in the present case, particularly in view of the similarity of the signs.
44 As is apparent from paragraphs 22 to 39 above, the Board of Appeal erred as regards the assessment of the similarity of the signs, in respect of all three aspects, the visual, the phonetic and the conceptual.
45 Furthermore, since, in the present case, the marks at issue are purely word marks, the reference made by the Board to the case-law according to which the likelihood of confusion is increased when marks that include figurative elements, which are likely to differentiate them, are reproduced without those figurative elements on menus used in cafes, bars or restaurants, is entirely irrelevant (judgments of 16 September 2009, Dominio de la Vega v OHIM — Ambrosio Velasco (DOMINIO DE LA VEGA), T‑458/07, EU:T:2009:337, paragraph 48, and of 27 February 2014, Pêra-Grave v OHIM — Fundação Eugénio de Almeida (QTA S. JOSÉ DE PERAMANCA), T‑602/11, EU:T:2014:97, paragraphs 58 and 59).
46 Given the low degree of visual and phonetic similarity of the signs and their conceptual differences, it must be concluded that the identity of the goods is not sufficient to establish a likelihood of confusion in the present case on the part of a public that demonstrates a reasonable level of attention. That is particularly so given that Quinta do Noval-Vinhos did not argue, before the Board, that the earlier mark had enhanced distinctiveness, which could have increased such a likelihood, in line with the case-law according to which the more distinctive the earlier trade mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24).
47 In those circumstances, the contested decision must be annulled, and there is no need to consider the admissibility or the merits, contested by OHIM, of the applicant’s other arguments, relating in particular to the alleged weak distinctive character of the earlier mark due to the existence of many word marks comprising the word ‘black’ preceded by another word.
48 Under Article 87(2) 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.
49 The applicant claimed that the General Court should order OHIM and Quinta do Noval-Vinhos to pay the costs.
50 Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant, as Quinta do Noval-Vinhos is not party to these proceeding.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 March 2014 (Case R 1601/2013-1).
2. Orders OHIM to pay the costs.
Delivered in open court in Luxembourg on 21 May 2015.