JUDGMENT OF THE GENERAL COURT (Third Chamber)
7 February 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark KABI – Earlier EU figurative mark Kabir DONNAFUGATA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑302/23,
Weinart Handelsgesellschaft mbH, established in Geisenheim (Germany), represented by M. Heinrich, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Donnafugata Srl, established in Marsala (Italy),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl and G. Steinfatt (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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
1 By its action under Article 263 TFEU, the applicant, Weinart Handelsgesellschaft mbH, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 March 2023 (Case R 2064/2022-4) (‘the contested decision’).
Background to the dispute
2 On 8 January 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign KABI.
3 The mark applied for covered goods and services in Classes 33, 35 and 39 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 corresponding, for each of those classes, to the following description:
– Class 33: ‘Alcoholic beverages (except beers)’;
– Class 35: ‘Wholesaling and retailing of alcoholic beverages (except beers); Organisation of trade fairs for alcoholic beverages for commercial or advertising purposes; The bringing together of alcoholic beverages for presentation and sales purposes’;
– Class 39: ‘Packaging and storage of goods’.
4 On 27 April 2020, Donnafugata Srl filed a notice of opposition to registration of the mark applied for in respect of the goods in Class 33 referred to in paragraph 3 above.
5 The opposition was based, inter alia, on the earlier EU figurative mark, registered under number 17887291, reproduced below:
6 The goods covered by the earlier mark are in Class 33 and correspond 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 (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).
8 On 23 August 2022, the Opposition Division upheld the opposition and rejected the mark applied for in respect of the goods in Class 33 referred to in paragraph 3 above.
9 On 24 October 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal dismissed the appeal on the ground that a likelihood of confusion on the part of the relevant public could not be excluded. In its view, the goods at issue were identical and were aimed primarily at the general public, which was likely to display an average level of attention. It found that the signs at issue were visually similar to a ‘below average’ degree. Phonetically, they were similar to an ‘above average’ degree for the substantial part of the relevant public which would not pronounce the second word element of the earlier mark, and similar to an average degree for the remaining part of the relevant public. Conceptually, no similarity could be found. The earlier mark, which had no meaning for the goods in question, was found to be of normal distinctiveness.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision and order the registration of the mark applied for in respect of the goods in Class 33;
– order EUIPO to pay the costs, including those incurred before the Opposition Division and the Board of Appeal.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
13 The applicant raises a single plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
14 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (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).
16 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
17 The global assessment implies some interdependence between the relevant factors, and in particular between the similarity of the trade marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19, and of 17 November 2005, Biofarma v OHIM - Bausch & Lomb Pharmaceuticals (ALREX), T‑154/03, EU:T:2005:401, paragraph 42 and the case-law cited).
The relevant public
18 In paragraphs 18 and 19 of the contested decision, the Board of Appeal held that the goods covered by the signs at issue were primarily addressed to the general public, which was likely to display an average level of attention. In paragraph 20 of the contested decision, the Board of Appeal found that it was appropriate to focus the comparison of the signs at issue on the English-speaking part of the relevant public.
19 There is no reason to question those assessments, which are, moreover, not disputed by the applicant.
The comparison of the goods
20 In paragraph 21 of the contested decision, the Board of Appeal confirmed the analysis of the Opposition Division, stating that the goods in Class 33 covered by the mark applied for coincided with the ‘alcoholic beverages (except beers)’ covered by the earlier mark; accordingly those goods were identical.
21 There is no reason to call into question that finding, which has moreover been confirmed by the applicant in point 9 of the application.
The comparison of the signs at issue
22 Two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. As the case-law indicates, the visual, phonetic and conceptual aspects are relevant (see, by analogy, judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).
23 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 signs 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. 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 (see, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42).
24 The applicant submits that the Board of Appeal inadmissibly separated the element ‘kabir’ from the earlier mark to compare it in isolation with the mark applied for KABI. According to the applicant, if the Board of Appeal had correctly focused on the overall impression of the signs at issue and if it had also taken into consideration the other elements of the earlier mark, in particular the word element ‘donnafugata’ and the figurative elements, which are of equal importance, it would have had to come to the conclusion that there was no relevant similarity between the signs at issue. The earlier mark consists of several word and figurative elements standing side by side and on an equal footing visually, phonetically and conceptually, thereby contributing equally to the overall impression produced by that mark. None of those elements is particularly dominant or alone characterises the earlier mark.
25 EUIPO disputes the applicant’s arguments. It submits that it is apparent from paragraphs 26 to 31 of the contested decision that the Board of Appeal compared the signs at issue as a whole.
26 In the first place, the criticism raised by the applicant relating to the comparison of the signs at issue from a conceptual standpoint on the ground that the Opposition Division was wrong to hold that the word ‘kabir’ could be understood in part of the European Union as a given name of Indian or Arabic origin must be rejected as ineffective.
27 The applicant is not entitled to challenge the lawfulness of the decision taken by the first-instance body within EUIPO in the present action for annulment. According to case-law, the purpose of an action before the General Court is solely to review the legality of the decisions of the Boards of Appeal of EUIPO (see judgment of 1 June 2016, Grupo Bimbo v EUIPO (Shape of a bar with four circles), T‑240/15, not published, EU:T:2016:327, paragraph 14 and the case-law cited).
28 As regards the contested decision, which is the only decision challengeable in the present action, it is apparent from paragraph 31 thereof that the Board of Appeal held that the word ‘kabir’ had no meaning.
29 It is true that the Board of Appeal erroneously found, in paragraph 31 of the contested decision, that the earlier mark had no meaning for the relevant public. In fact, only the word elements have no meaning for the relevant public, whereas the figurative elements of the earlier mark have a specific conceptual content, namely that of a sunny island with white buildings and palm trees, surrounded by sea. That conceptual message conveyed by those components of the figurative element of the earlier mark will easily be perceived by the relevant public.
30 Nevertheless, in the same paragraph, the Board of Appeal reached the correct conclusion that the signs at issue were not similar conceptually. Given that the mark applied for has no meaning for the relevant public, the signs at issue are conceptually different from each other. It is apparent from the case-law, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks at issue are conceptually dissimilar (judgment of 2 February 2022, Canisius v EUIPO – Beiersdorf (CCLABELLE VIENNA), T‑694/20, not published, EU:T:2022:45, paragraph 81).
31 In the second place, the applicant’s criticism that the Board of Appeal separated the word element ‘kabir’ from the earlier mark and found that the signs at issue were similar by focussing solely on that word element is the result of a misreading of the contested decision.
32 Contrary to what is claimed by the applicant, the Board of Appeal in its assessment took account of all the elements of the earlier mark. Admittedly, in paragraphs 26 and 27 of the contested decision, it established the distinctive and dominant elements of that mark in order to define their respective weight in the overall impression it produces. In doing so, it proceeded in line with the settled case-law according to which it is necessary to analyse the overall impression given by the marks at issue, bearing in mind, in particular, their distinctive and dominant components (see judgment of 28 October 2009, CureVac v OHIM – Qiagen (RNAiFect), T‑80/08, EU:T:2009:416, paragraph 26 and the case-law cited). It is nevertheless expressly stated in paragraph 38 of the contested decision that the Board of Appeal found that none of the elements of the earlier mark was negligible. It follows that it based its assessment as to the similarity of the signs at issue on the overall impression produced by them.
33 In the third place, the applicant’s argument that, in the earlier mark, the word element ‘donnafugata’, which has no particular meaning for the relevant public, stands on an equal footing with the visually striking figurative elements and with the other word element ‘kabir’, can also not succeed.
34 First, it is apparent from paragraph 27 of the contested decision that the Board of Appeal held that the figurative elements, although not negligible, were of lesser importance in the earlier mark than its word elements.
35 That assessment is correct. It is settled case-law that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, considered more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 29 April 2020, Abarca v EUIPO – Abanca Corporación Bancaria (ABARCA SEGUROS), T‑106/19, not published, EU:T:2020:158, paragraph 51 and the case-law cited).
36 The applicant has not raised any argument capable of demonstrating that matters would be otherwise in the present case.
37 Secondly, it is apparent from paragraph 27 of the contested decision that, after observing that the word elements ‘kabir’ and ‘donnafugata’ of the earlier mark were meaningless and distinctive, the Board of Appeal correctly observed that the word element ‘donnafugata’, due to its smaller size and subsidiary position, was visually less outstanding than the word element ‘kabir’. The word element ‘kabir’ appears in the centre of the upper part of the sign, above the figurative elements, whereas the word element ‘donnafugata’ is written on the figurative element in a smaller size, in the lower part of the sign.
38 As regards the phonetic comparison, the Board of Appeal held, in paragraph 30 of the contested decision, that it was unlikely that a significant part of the relevant public would pronounce the word element ‘donnafugata’, given that consumers tend to shorten long marks and taking account of its smaller size and secondary position. It inferred therefrom that, in respect of the part of the relevant public which would not pronounce the second word element ‘donnafugata’ of the earlier mark, the signs at issue were phonetically similar ‘to an above average degree’, which corresponds to a high degree of similarity. As regards the remaining part of the relevant public, which would pronounce both word elements of the earlier mark, it held that the signs at issue were phonetically similar to an average degree.
39 That assessment is also correct.
40 It is apparent from case-law that consumers naturally tend to shorten long marks (see judgment of 28 September 2016, LLR-G5 v EUIPO – Glycan Finance (SILICIUM ORGANIQUE G5 LLR-G5), T‑539/15, not published, EU:T:2016:571, paragraph 56 and the case-law cited).
41 Inasmuch as, moreover, the second word element ‘donnafugata’ is shown in a font of a smaller size in the lower part of the earlier mark, and is furthermore not particularly striking on account of its colour, the Board of Appeal was justified in holding that the relevant public would pay more attention to the first word element ‘kabir’ and that a substantial part of that public would pronounce only that first element when it referred to the earlier mark.
42 In conclusion, the Board of Appeal did not err when it held, in essence, that the signs at issue were visually similar to a low degree and phonetically similar to a degree ranging from average to high, depending on the part of the relevant public in question.
The distinctiveness of the earlier mark
43 In paragraph 36 of the contested decision, the Board of Appeal held that the distinctive character of the earlier mark was ‘normal’, which must be understood, according to the case-law, as corresponding to an average degree of distinctiveness (judgment of 26 April 2023, Pinar Kuruyemiş Gida Ve Ihtiyaç Maddeleri Sanayi Ticaret v EUIPO – Yadex International (pinar KURUYEMIŞ), T‑147/22, not published, EU:T:2023:213, paragraph 82 and the case-law cited; see also, to that effect, judgment of 8 March 2023, Société des produits Nestlé v EUIPO – The a2 Milk Company (A 2), T‑759/21, not published, EU:T:2023:108, paragraph 45).
44 There is no reason to call into question this assessment, which is, moreover, not disputed by the applicant.
The likelihood of confusion
45 In paragraph 40 of the contested decision, the Board of Appeal held that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, could not be excluded from the perspective of the relevant public.
46 The applicant, recalling, inter alia, the case-law that the likelihood of confusion must be examined based on a global assessment of various interdependent factors, claims that the Board of Appeal should have concluded that there was no relevant similarity between the signs at issue.
47 EUIPO disputes the applicant’s arguments.
48 According to settled case-law, the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (see judgment of 12 October 2022, MCO (IP) v EUIPO – C8 (C2), T‑461/21, not published, EU:T:2022:624, paragraph 45 and the case-law cited).
49 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 (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).
50 As noted in paragraphs 30 and 42 above, the conclusions reached by the Board of Appeal in the contested decision concerning the assessment of the similarity of the signs at issue are correct. The Board of Appeal was justified in finding that the criteria, such as the identity of the goods at issue, the degree of similarity of the signs at issue varying from average to high, depending on the part of the relevant public concerned, from a phonetic standpoint and the average distinctiveness of the earlier mark, which supported the existence of a likelihood of confusion, could not be offset by those which weighed against that finding, such as the low degree of similarity of the signs at issue from a visual standpoint and the absence of similarity from a conceptual standpoint. Thus, the Board of Appeal was correct to conclude that there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
51 Therefore, the single plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001 relied on by the applicant in support of the form of order sought by it must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the second branch of the applicant’s first head of claim.
Costs
52 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.
53 Since EUIPO has applied for the applicant to pay the costs only in the event that a hearing is convened, each party is to bear its own costs, given that no hearing was organised.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Schalin | Škvařilová-Pelzl | Steinfatt |
Delivered in open court in Luxembourg on 7 February 2024.
V. Di Bucci | | M. van der Woude |