Case T-35/08

Codorniu Napa, Inc.

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for figurative Community trade mark ARTESA NAPA VALLEY – Earlier figurative Community trade mark ARTESO and earlier national word mark LA ARTESA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 8(1)(b))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity of the marks concerned – Criteria for assessment – Complex mark

(Council Regulation No 40/94, Art. 8(1)(b))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Similarity of the marks concerned – Whether conceptual differences may neutralise visual or aural similarities

(Council Regulation No 40/94, Art. 8(1)(b))

4.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Weighting of the elements of similarity of or difference between the signs – Taking into account of the intrinsic characteristics of the signs or the conditions in which the goods or services are marketed

(Council Regulation No 40/94, Art. 8(1)(b))

1.      For the average European consumer, there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, between the figurative mark representing a vertical rectangle which contains, in its upper section against a grey background, a triangle itself containing a sinuous element, above which is written the word ‘artesa’ in golden capital letters on a black background and, in its lower section, the expression ‘napa valley’, also written in gold capital letters on a black background, in respect of which an application for registration as a Community trade mark has been made for ‘wines produced and bottled in Napa Valley (California, USA)’ in Class 33 of the Nice Agreement, and the figurative mark representing, in black and white, a centaur straddled by a rider, both holding a staff from which an amphora hangs at both ends, with the word ‘arteso’ written in capital letters below the design, previously registered as a Community trade mark for ‘alcoholic beverages (except beers)’ in the same Class.

The goods covered by the two marks, that is to say, wines, are identical and the signs have a strong phonetic similarity and a slight visual similarity. In those circumstances, in the light of the manner in which consumers usually describe and recognise wine by reference to the verbal element which identifies it, and, accordingly, of the importance to be accorded to the phonetic similarity, there is a likelihood of confusion between the two signs even where the public perception is that the goods are produced in different places.

(see paras 30, 40, 62-64)

2.      In the context of examination of the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case in particular where that component is likely alone to dominate the image of that mark which the relevant public remembers, such that all the other components of the mark are negligible in the overall impression given by it.

When assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark.

Where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant. In the case of a composite mark, the figurative element may rank equally with the word element.

The fact that the marks at issue contain similar word elements is not in itself sufficient to justify the conclusion that the signs at issue are visually similar. The presence in the signs of figurative elements of a particular configuration is likely to lead to the overall impression conveyed by each sign being different.

(see paras 32, 35, 37, 43)

3.      When assessing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the conceptual differences can be such as to counteract the visual and phonetic similarities if at least one of the marks at issue has, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately.

(see para. 51)

4.      In the context of global assessment of the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight and it is then appropriate to examine the objective conditions under which the marks may be present on the market.

The significance of the similarities or differences between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the signs are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, a visual similarity between the signs will as a general rule be more important. If, however, the product is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs.

In the wines sector, consumers thereof usually describe and recognise wine by reference to the verbal element which identifies it, in particular in bars and restaurants, in which wines are ordered orally after their names have been seen on the wine list. Accordingly, it is appropriate to attach a particular importance to the phonetic similarity between the signs at issue.

(see paras 60-62)