JUDGMENT OF THE GENERAL COURT (Second Chamber)
14 June 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark STONE BREWING – Earlier EU word mark STONES – Relative ground for refusal – Genuine use of the earlier mark – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑200/20,
Stone Brewing Co. LLC, established in Escondido, California (United States), represented by M. Kloth, R. Briske and D. Habel, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Molson Coors Brewing Company (UK) Ltd, established in Burton Upon Trent (United Kingdom), represented by G. Orchison, Solicitor, and J. Abrahams KC,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and J. Schwarcz (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Stone Brewing Co. LLC, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 January 2020 (Case R 1524/2018-4) (‘the contested decision’).
I. Background to the dispute
2 On 11 May 2016, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign STONE BREWING.
3 The mark applied for designated goods in Class 32 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, corresponding to the following description: ‘Beers and ales’.
4 On 23 August 2016, the intervener, Molson Coors Brewing Company (UK) Ltd, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the following earlier marks:
– the EU word mark STONES, registered on 13 June 2010, under number 8 810 707, designating goods in Class 32 and corresponding to the following description: ‘Beer, bitter beer and lager’;
– the UK word mark STONES, registered on 21 May 1980, designating goods in Class 32 and corresponding to the following description: ‘Bitter beer for sale in England, the Isle of Man and the counties of Clwyd and Gwynedd’.
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now 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)).
7 On 17 May 2017, EUIPO rejected the applicant’s request that the proceedings be stayed on account of the uncertainties associated with the withdrawal of the United Kingdom from the European Union and the European Atomic Energy Community. On the same date, at the applicant’s request, EUIPO invited the intervener to adduce proof of genuine use of the earlier marks relied on in support of the opposition. The intervener complied with that request within the period prescribed.
8 On 30 July 2018, the Opposition Division upheld the opposition.
9 On 3 August 2018, 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, basing its reasoning solely on the intervener’s earlier EU trade mark. First, it again rejected the applicant’s request that the proceedings be stayed on account of the uncertainties associated with the United Kingdom’s withdrawal from the European Union. Second, it found that the intervener had submitted, before the Opposition Division, sufficient evidence of genuine use of its earlier EU trade mark in respect of ‘bitter beer’. Third, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
II. Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– declare the contested mark to be valid;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in case a hearing is convened.
13 The intervener claims that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
14 As a preliminary point, it should be noted that, given the date on which the application for registration at issue was filed, namely 11 May 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
15 Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001. However, pursuant to Article 82(2)(d) and (p) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), the references made by the applicant in the arguments put forward, by the Board of Appeal and by the intervener to Article 71(1)(b) and Article 10(3) of Delegated Regulation 2018/625 must be understood as referring, respectively, to Rule 20(7)(c) and Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), which are, in essence, identical in content.
A. Oral part of the procedure
16 According to Article 106 of the Rules of Procedure of the General Court:
‘1. The procedure before the General Court shall include, in the oral part, a hearing arranged either of the General Court’s own motion or at the request of a main party.
2. Any request for a hearing made by a main party must state the reasons for which that party wishes to be heard. …
3. If there is no request as referred to in paragraph 2, the General Court may, if it considers that it has sufficient information available to it from the material in the file, decide to rule on the action without an oral part of the procedure. …’
17 It is thus apparent from the wording of Article 106 of the Rules of Procedure that, in the absence of a request for a hearing, by a main party, stating the reasons for which that party wishes to be heard, the Court may, if it considers that it has sufficient information available to it, rule on the action without an oral part of the procedure.
18 In the present case, the applicant made a request for a hearing in its application. It repeated its request for a hearing in its written reply to a question put by the Court in the context of a measure of organisation of procedure.
19 However, it appears that those two requests do not contain a statement of reasons in so far as they do not indicate any reason why the applicant wishes to be heard.
20 Furthermore, in its letter of 7 September 2022 informing the main parties that the written part of the procedure had been closed, the Court Registry recalled, inter alia, the provisions of Article 106(2) of the Rules of Procedure.
21 Following that letter, the applicant did not repeat a request for a hearing.
22 It follows from the considerations set out in paragraphs 16 to 21 above that the applicant did not submit a request for a hearing in accordance with the requirements of Article 106(2) of the Rules of Procedure and that, in those circumstances, the Court, considering that it had sufficient information available to it from the material in the file, decided to rule on the action without an oral part of the procedure, in accordance with Article 106(3) of those rules.
B. The applicant’s second head of claim
23 By its second head of claim, the applicant requests that the Court ‘declare the contested mark to be valid’.
24 Such a claim, which seeks a declaratory judgment, must be dismissed as being brought before a court which has no jurisdiction to hear it (see, to that effect, judgment of 16 November 2011, Dorma v OHIM – Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), T‑500/10, not published, EU:T:2011:679, paragraph 17 and the case-law cited).
C. The claims for annulment
25 The applicant relies, in essence, on three pleas in law, the first alleging infringement of Rule 20(7)(c) of Regulation No 2868/95, the second alleging infringement of Article 47(2) of Regulation 2017/1001 and Rule 20(3) of Regulation No 2868/95 and the third alleging that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
1. The first plea in law, alleging infringement of Rule 20(7)(c) of Regulation No 2868/95
26 The applicant submits, in essence, that, by refusing to grant its request for a suspension of the proceedings, the Board of Appeal infringed Rule 20(7)(c) of Regulation No 2868/95.
27 First, the applicant submits that the Board of Appeal wrongly interpreted its request for a suspension of the proceedings as being made as a ‘subsidiary’ request, even though that request was ‘independent and self-contained’. Second, it complains that the Board of Appeal did not take sufficient account of the legal uncertainties connected with the United Kingdom’s withdrawal from the European Union. Yet, according to the applicant, those uncertainties affected the field of trade marks and justified the suspension of the proceedings before the Board of Appeal.
28 EUIPO and the intervener dispute the applicant’s arguments.
29 Under Rule 20(7)(c) of Regulation No 2868/95, EUIPO may suspend opposition proceedings where a stay of proceedings is appropriate under the circumstances.
30 According to the case-law, the Board of Appeal’s discretion as to whether or not to suspend proceedings is broad. Suspending proceedings remains optional for the Board of Appeal, which will do so only if it considers it appropriate (see judgment of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO), T‑386/15, EU:T:2017:632, paragraph 21 and the case-law cited).
31 Nevertheless, the fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that the assessment of that discretion falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (see judgment of 20 September 2017, BADTORO, T‑386/15, EU:T:2017:632, paragraph 22 and the case-law cited).
32 In that regard, it is evident from the case-law that, in exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must observe the general principles governing procedural fairness within a European Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose mark or application for an EU mark is being contested, but also those of the other parties. The decision whether or not to suspend the proceedings must follow upon a weighing of the competing interests (see judgments of 20 September 2017, BADTORO, T‑386/15, EU:T:2017:632, paragraph 23 and the case-law cited, and of 16 May 2019, KID-Systeme v EUIPO – Sky (SKYFi), T‑354/18, not published, EU:T:2019:333, paragraph 60 and the case-law cited).
33 In the present case, the Board of Appeal rejected the applicant’s request for suspension, holding it to be inadmissible and, in any event, unfounded.
34 The Board of Appeal found that the request for suspension was inadmissible on the ground that it had been submitted by the applicant as a ‘subsidiary’ request, in that the applicant wished the Board of Appeal to rule on the merits of the case, but only if the Board of Appeal’s decision was favourable to it. Moreover, according to the Board of Appeal, the request for suspension was not based on legitimate grounds.
35 The Board of Appeal also found that, in any event, the request for suspension was unfounded because, throughout the relevant period for the purposes of proving genuine use of the earlier EU trade mark relied on in support of the opposition, the United Kingdom was still a Member State of the European Union.
36 Without it being necessary to rule on the applicant’s argument that the Board of Appeal wrongly interpreted its request for suspension as being a subsidiary request, it must be held that, in any event, the Board of Appeal did not make a manifest error of assessment in finding that that request was unfounded, in view of the fact that, during the relevant period, namely from 11 May 2011 to 10 May 2016, the United Kingdom was part of the European Union, with the result that the intervener was entitled to rely on its earlier EU trade mark and that its use in that country constituted use in a Member State of the European Union.
37 In accordance with the Notice concerning the entry into force of the Agreement on the Withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 189), that agreement entered into force on 1 February 2020, that is to say, one day after the date of adoption of the contested decision.
38 It follows that, both at the date of filing of the application for registration of the contested mark and at the date of the contested decision, EU law remained fully in force in the United Kingdom and that the forthcoming withdrawal of that State from the European Union must be regarded as having no bearing on the outcome of the proceedings (see, to that effect, judgments of 29 November 2018, Alcohol Countermeasure Systems (International) v EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraphs 116 to 118, and of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 19).
39 Therefore, contrary to what the applicant claims, at the date of the contested decision there were no ‘legal uncertainties’ relating to the United Kingdom’s withdrawal from the European Union which would have justified the suspension of the proceedings before EUIPO.
40 Furthermore, according to the case-law referred to in paragraph 30 above, suspending proceedings remains optional for the Board of Appeal, which will do so only if it considers it appropriate. In the present case, the Board of Appeal set out the reasons why it found that, in the light of the evidence adduced by the parties, a suspension of the proceedings could not be granted, relying on the grounds referred to in paragraphs 34 and 35 above. It follows that, on the basis of the information available to it, the Board of Appeal took the decision not to grant the suspension requested by the applicant while weighing up, implicitly but necessarily, the interests of the parties before it.
41 Consequently, the applicant has not shown that ‘the circumstances’, within the meaning of Rule 20(7)(c) of Regulation No 2868/95, justified the suspension of the proceedings before the Board of Appeal and, therefore, the Board of Appeal rightly considered that the applicant’s request for suspension had to be rejected.
42 The first plea in law must therefore be rejected as unfounded.
2. The second plea in law, alleging infringement of Article 47(2) of Regulation 2017/1001 and Rule 22(3) of Regulation No 2868/95
43 The applicant submits that the Board of Appeal erred in finding that the earlier EU trade mark relied on by the intervener had been put to genuine use in the European Union. The evidence submitted by the intervener is not sufficient to prove such use during the relevant period, namely from 11 May 2011 to 10 May 2016.
44 In particular, the applicant claims, first of all, that the witness statement by the intervener’s brand manager and the invoices, produced before the Opposition Division as proof of genuine use in connection with the goods at issue, are documents drawn up by the intervener itself, the content of which has not been substantiated by additional evidence from an independent source. The applicant adds that the intervener’s brochures also do not constitute sufficient proof of genuine use. Next, according to the applicant, the number of items of evidence provided is too limited overall, having regard to the fact that beer is a mass market product and that the intervener is one of the largest brewers in the world. Furthermore, according to the applicant, that evidence demonstrates use only in a small area of the United Kingdom and relates only to ‘bitter beer’, whereas genuine use should have been established in respect of beer in general.
45 EUIPO and the intervener dispute the applicant’s line of argument.
46 Article 47(2) of Regulation 2017/1001 provides that, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his or her opposition, or that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition is to be rejected. If the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it is, for the purposes of the examination of the opposition, to be deemed to be registered in respect only of that part of the goods or services.
47 Rule 22(3) of Regulation No 2868/95 provides that ‘the indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based, and evidence in support of these indications in accordance with paragraph 4’.
48 In addition, according to Rule 22(4) of Regulation No 2868/95, evidence of use may be, for example, ‘packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in [Article 97(1)(f) of Regulation 2017/1001]’, that is to say, according to the latter provision, ‘statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up’.
49 For the purpose of interpreting the concept of ‘genuine use’, account must be taken of the fact that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, unless there is good commercial justification for the lack of genuine use of the earlier mark deriving from active functioning of that mark on the market. However, the purpose of the requirement of genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see, to that effect, judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 38).
50 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee that the goods or services for which it is registered have the same origin, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
51 Concerning the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
52 In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by a high intensity or a certain constancy in time of the use of that trade mark or vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
53 Even minimal use can be sufficient to be classified as genuine, provided that it is regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods or services protected by the mark. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow EUIPO or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).
54 Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
55 It is in the light of those considerations that it must be determined whether the Board of Appeal was right in finding that the intervener had furnished proof of genuine use of the earlier EU trade mark in respect of ‘bitter beer’.
56 In the contested decision, the Board of Appeal examined whether there was a likelihood of confusion exclusively on the basis of the intervener’s earlier EU trade mark, without examining whether there was such a likelihood of confusion in relation to its earlier UK trade mark. At the outset, it therefore assessed only the use of that EU trade mark and not the use of the earlier national mark.
57 In that regard, the Board of Appeal concluded that the evidence submitted to the Opposition Division was sufficient to prove genuine use of the intervener’s earlier EU trade mark in respect of ‘bitter beer’. Furthermore, it found that, in so far as the applicant had claimed that the content of the witness statement was untrue, the intervener was entitled to adduce additional evidence in order to respond to that claim. That evidence, consisting of numerous invoices, confirms, according to the Board of Appeal, that the earlier mark was used on a very large scale and across the United Kingdom during the relevant period. The Board of Appeal also found that genuine use had been proved in a Member State of the European Union during that period and that that was sufficient despite the huge quantities of beer sold each year across the European Union.
58 As a preliminary point, it should be noted that, since the application for registration of the contested EU trade mark was filed on 11 May 2016, the relevant five-year period referred to in Article 47(2) of Regulation 2017/1001 ran from 11 May 2011 to 10 May 2016, which, moreover, is not disputed by any of the parties.
59 In order to prove genuine use of the earlier EU trade mark, the intervener submitted the following documents before the Opposition Division:
– a witness statement by the intervener’s brand manager, attesting to the use of the earlier EU trade mark in the United Kingdom during the relevant period, in respect of ‘bitter beer’;
– sales invoices from 2012 and 2013, annexed to that statement by the brand manager, concerning, inter alia, ‘bitter beer’ sold under the earlier EU trade mark;
– advertising brochures concerning, inter alia, ‘bitter beer’ sold under the earlier EU trade mark;
– a screenshot of a website on which the earlier EU trade mark affixed to a beer glass is shown.
60 Furthermore, in response to the applicant’s arguments before the Board of Appeal, the intervener submitted additional evidence, including another witness statement by its brand manager, to which, inter alia, several dozen invoices dated 2013, 2014, 2015, 2016, 2017 and 2018 were attached, concerning, inter alia, ‘bitter beer’ sold by the intervener under the earlier EU trade mark. Advertising brochures were also attached to that additional statement. The Board of Appeal considered that that additional evidence was admissible, which, moreover, is not disputed in the present proceedings.
61 Since the Board of Appeal took into consideration all the evidence submitted by the intervener to EUIPO, that is to say, both that produced before the Opposition Division and that submitted for the first time before the Board of Appeal, the Court will also take account of all that evidence.
62 First, as regards the place of use of the earlier EU trade mark, it should be noted that the invoices attached to the two witness statements submitted by the intervener are written in English and the price of the ‘bitter beer’ is indicated in pounds sterling. In addition, the invoices are addressed to clients whose postal addresses are in the United Kingdom. Moreover, it is common ground between the parties that the evidence adduced by the intervener establishes that that mark was used in the United Kingdom.
63 Second, as regards the duration of use, it should be borne in mind that only trade marks genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided for in Article 15(1) of Regulation No 207/2009 (now Article 18(1) of Regulation 2017/1001). Accordingly, it is sufficient that a trade mark has been put to genuine use during a part of that period for it not to be subject to the sanctions (judgment of 15 July 2015, TVR Automotive v OHIM – TVR Italia (TVR ITALIA), T‑398/13, EU:T:2015:503, paragraph 52). In the present case, the relevant period started on 11 May 2011 and ended on 10 May 2016 (see paragraph 58 above). Of the invoices attached to the two witness statements submitted by the intervener, more than 30 of them are dated between 2012 and 2016 and fall within the relevant period. Therefore, use of the earlier EU trade mark during at least part of the relevant period has been shown.
64 Third, as regards the extent of use, it should be noted that the two witness statements refer to sales which took place during the relevant period and amounted to several tens of thousands of hectolitres of ‘bitter beer’ sold under the earlier EU trade mark. As required by the case-law (see judgment of 30 January 2020, BROWNIE, T‑598/18, EU:T:2020:22, paragraph 76 and the case-law cited), the witness statements are supported by other evidence, in particular the invoices which are attached to them and which fall within the relevant period. Accordingly, the combination of the witness statements and the invoices makes it possible to establish the sufficiency of the volume and frequency of sales of ‘bitter beer’ during the relevant period, with the result that the Board of Appeal was entitled to find that token use of the earlier EU trade mark was excluded and that genuine use of that mark had been shown.
65 Fourth, as regards the nature of use, it should be noted that the invoices, brochures and other documents submitted before the Opposition Division and the Board of Appeal, as well as those produced as additional documents before the Board of Appeal, show that the earlier EU trade mark was used during the relevant period to ensure that the ‘bitter beer’ sold under that mark came from the intervener. Those invoices, brochures and other documents, such as a screenshot showing a website on which the earlier EU trade mark appears affixed to a beer glass, or other screenshots or brochures showing beer cans on which that mark is also affixed, or even a photograph of a beer tap on which that mark also appears, sufficiently highlight that mark for it to be concluded that it was used publicly and outwardly (see, to that effect, judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39).
66 That finding is not called into question by the fact that the brochures submitted as evidence contain handwritten dates, as the applicant claims. It should be recalled that proof of genuine use of a mark must be established by taking into consideration all of the evidence submitted to the Board of Appeal for assessment (see, to that effect, judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 67). Therefore, even if the handwritten dates on the advertising brochures thus produced are disregarded, they support the other evidence submitted by the intervener by also showing that the earlier EU trade mark was used publicly and outwardly.
67 It follows from the foregoing considerations that the Board of Appeal was right in finding that the intervener had demonstrated genuine use of the earlier EU trade mark during the relevant period, in respect of ‘bitter beer’.
68 None of the applicant’s arguments can invalidate that finding.
69 As regards the applicant’s argument that the witness statement and the invoices submitted to the Opposition Division are documents drawn up by the intervener itself, the content of which has not been supported by additional evidence from an independent source, it should be recalled that it follows expressly from the provisions of Rule 22(4) of Regulation No 2868/95, recalled in paragraph 48 above, that, in principle, documents such as invoices or a witness statement, such as those produced in the present case before the Opposition Division, constitute evidence of use which cannot be devoid of probative value merely because they were drawn up by the intervener itself.
70 Next, it should be borne in mind that, in order to assess the probative value of a document, it is necessary first to check the plausibility and truthfulness of the information it contains. In that regard, account must be taken, inter alia, of the origin of the document, the circumstances of its preparation, the addressee, and whether it seems from the content to be sensible and reliable (judgment of 23 September 2009, Cohausz v OHIM – Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 49).
71 In the present case, the witness statement submitted to the Opposition Division was drawn up by the intervener’s brand manager for the purpose of demonstrating genuine use of its earlier marks STONES, including its earlier EU trade mark relied on in the present case. That statement indicates the volume of annual sales, from 2011 to 2016, of ‘bitter beer’ under those marks in the United Kingdom and its content is supported, inter alia, by the invoices attached to it, and also by the invoices attached to the second witness statement, submitted before the Board of Appeal. Moreover, all those invoices are addressed to resellers, such as supermarkets, whose independence from the intervener has not been disputed.
72 The combination of the two witness statements and the invoices attached to them confirms sufficient sales volumes to demonstrate genuine use, even though, as the applicant and the intervener point out, the product is sold to the general public.
73 The applicant’s argument that the evidence submitted by the intervener concerns only a small area of the United Kingdom, which is even less relevant because of the United Kingdom’s withdrawal from the European Union, must be rejected, for two reasons. First, as has been stated in paragraphs 36 to 38 above, given that, throughout the relevant period, the United Kingdom was part of the European Union, its subsequent withdrawal had no impact, in the present case, on the assessment of the use of the earlier EU trade mark. Second, the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not (see, to that effect, judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 76), and the question whether an earlier trade mark has been put to genuine use must be assessed globally taking account of all the relevant factors in the particular case, which implies some interdependence between the factors taken into account (see, to that effect, judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42). As is apparent from the global assessment carried out in paragraphs 58 to 67 above, the evidence submitted by the intervener to EUIPO demonstrates genuine use of the earlier EU trade mark relied on in support of the opposition, in respect of ‘bitter beer’.
74 As regards the applicant’s argument that the evidence submitted by the intervener relates only to ‘bitter beer’ whereas genuine use should have been established in respect of ‘beer’ in general, it should be borne in mind that, under Article 47(2) in fine of Regulation 2017/1001, if the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it is, for the purposes of the examination of the opposition, to be deemed to be registered in respect only of that part of the goods or services. The Board of Appeal correctly applied that provision by examining all the evidence submitted to it and by concluding that the intervener had demonstrated genuine use of its earlier EU trade mark only in respect of ‘bitter beer’. The Board of Appeal was then entitled to rely on that finding in order to analyse the likelihood of confusion, without having to require the intervener to prove genuine use of that mark in respect of ‘beer’ in general.
75 The EUIPO decisions and the judgments of the General Court referred to in paragraph 37 of the application are not relevant in the present case. In that regard, it must be pointed out that EUIPO is required to adopt its decisions on the basis of the circumstances of each specific case and is not bound by previous decisions taken in other cases. The legality of the decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of Regulation No 207/2009 or Regulation 2017/1001 and not on the basis of a previous decision-making practice (see, to that effect, judgment of 14 December 2022, Eurol v EUIPO – Pernsteiner (eurol LUBRICANTS), T‑636/21, not published, EU:T:2022:804, paragraph 76 and the case-law cited).
76 It follows from the foregoing that the second plea in law must be rejected as unfounded.
3. The third plea in law, alleging that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009
77 The applicant submits that, in the contested decision, the Board of Appeal misapplied Article 8(1)(b) of Regulation No 207/2009 in finding that there was a likelihood of confusion.
78 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must 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.
79 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. 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).
80 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).
(a) The relevant public
81 In the contested decision, the Board of Appeal found, in essence, that the relevant territory was the European Union, and relied more specifically on the English-speaking public of the European Union. It found that the relevant public had at most an average level of attention, given that the goods at issue were aimed at the general public, relatively cheap and consumed daily or very frequently.
82 There is no reason to call into question those findings which, moreover, are not disputed by the applicant.
(b) The comparison of the goods
83 The Board of Appeal found that ‘beers and ales’ covered by the mark applied for included the product covered by the earlier EU trade mark relied on in support of the opposition, namely ‘bitter beer’, in respect of which genuine use of that mark had been shown. The Board of Appeal therefore found that the goods at issue were identical.
84 That conclusion, which is not disputed by the applicant, is consistent with the case-law that goods can be considered identical where the goods designated by the earlier mark are included in a more general category covered by the trade mark application (see, to that effect, judgments of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited, and of 19 April 2016, 100% Capri Italia v EUIPO – IN.PRO.DI (100% Capri), T‑198/14, not published, EU:T:2016:222, paragraph 51). That conclusion must therefore be upheld.
(c) The comparison of the signs
85 The Board of Appeal compared the contested sign STONE BREWING to the earlier sign STONES.
(1) The distinctive and dominant elements of the mark applied for
86 The applicant submits that the Board of Appeal erred in basing its reasoning on the word ‘brewery’ instead of the word ‘brewing’ contained in the sign applied for.
87 In the contested decision, as regards the contested sign, the Board of Appeal identified it as STONE BREWERY and explained that, as regards the goods at issue, the English-speaking public would perceive the word ‘brewery’ as a mere description of the fact that the undertaking which manufactured and sold the product was a brewery. The Board of Appeal therefore concluded that that word had little, if any, distinctive character and that the element ‘stone’ was the most distinctive element of the sign.
88 It should be noted that the contested sign and the earlier sign are both word marks. The first consists of the elements ‘stone’ and ‘brewing’, the second of the single element ‘stones’.
89 Although it is true that, in paragraphs 37 and 39 of the contested decision, the Board of Appeal wrongly referred to the word ‘brewery’, instead of the word ‘brewing’, as being the second word element of the contested sign, its conclusion that, in essence, the second element of the contested sign has little, if any, distinctive character, taking into account the goods at issue and the relevant public, would not have been different in the absence of such an error. The applicant itself pointed out that, according to the Collins English Dictionary, the word ‘brewing’ means ‘to prepare (a drink, such as tea) by boiling or infusing’ or ‘to devise or plan’. Consequently, having regard to the goods concerned, namely ‘beers and ales’ covered by the mark applied for, and ‘bitter beer’ in respect of which genuine use of the earlier EU trade mark was shown, there is a descriptive relationship between those goods and the two words ‘brewery’ and ‘brewing’, the former referring to the place in which the process described by the latter is carried out to make beer.
90 It follows that the finding that the word ‘brewery’ has little, if any, distinctive character is, in any event, equally valid as regards the element ‘brewing’, with the result that the error thus made by the Board of Appeal in that regard has no bearing on its finding that the element ‘stone’ was the most distinctive element of the contested sign.
91 That finding is also free of any error of assessment since, as the Board of Appeal correctly found, the element ‘stone’ will not be understood by the English-speaking public as describing the goods at issue.
(2) The visual and phonetic comparisons of the signs
92 The applicant submits that visually and phonetically, even though the contested sign and the earlier sign both begin with the letters ‘s’, ‘t’, ‘o’, ‘n’ and ‘e’, the sole element of the second sign contains an additional letter, namely ‘s’, after those letters, which is not the case in the first sign. The applicant also points out that the sign applied for includes a second word element, namely ‘brewing’.
93 In the contested decision, the Board of Appeal found that the element ‘stones’ in the earlier sign was nearly identical to the element ‘stone’ in the contested sign and that the additional element ‘brewery’, which is non-distinctive in that sign, would probably not be pronounced by the relevant public. It therefore concluded that there was a high degree of visual and phonetic similarity.
94 As set out in paragraphs 89 and 90 above, the Board of Appeal’s error in finding that the second word element of the contested sign was ‘brewery’ instead of ‘brewing’ has no bearing on its finding that the element ‘stone’ was the most distinctive element of the contested sign.
95 As regards the word element ‘stone’, it must be stated that, both in the contested sign and in the earlier sign, it consists of the letters ‘s’, ‘t’, ‘o’, ‘n’ and ‘e’, in the same order. The only difference is the letter ‘s’, added after those letters, in the earlier sign.
96 That strong similarity, both visually and phonetically, between the element ‘stone’ in the mark applied for and the element ‘stones’ of the earlier EU trade mark is not offset by the additional element ‘brewing’ of the mark applied for, since that element has little, if any, distinctive character, as has been stated in paragraphs 87 to 90 above.
97 In those circumstances, the visual and phonetic differences between the two signs will be minimal for the English-speaking public. The Board of Appeal’s finding that there is a high degree of visual and phonetic similarity between the two signs is therefore not vitiated by an error of assessment.
(3) The conceptual comparison of the signs
98 In its conceptual analysis of the signs, the applicant adds a second word element ‘bitter’ to the earlier sign and, after comparing the meaning of that element, in English, with that of the second word element ‘brewing’ of the sign applied for, it submits that the signs are conceptually different. Furthermore, according to the applicant, there is another conceptual difference in so far as the element ‘stones’ of the earlier EU trade mark will be perceived by a part of the English public as the music band ‘The Rolling Stones’ or the surname ‘Stones’, whereas the mark applied for STONE BREWING is perceived as a reference to the object ‘stone’.
99 In the contested decision, the Board of Appeal found that, in English, the element ‘stones’ in the earlier sign indicated a number of rocks and that the nearly identical word ‘stone’ in the contested sign referred to a single rock. It therefore found that there was a high degree of conceptual similarity between the signs at issue.
100 It must be stated that the applicant cannot add a second word element ‘bitter’ to the earlier sign in order to change the form in which it was registered and then to compare it with the contested sign. According to the case-law, the comparison must be made between the signs as they were registered or as they appear in the application for registration, regardless of whether they are used alone or together with other marks or indications (see, to that effect, judgment of 28 April 2021, Asolo v EUIPO – Red Bull (FLÜGEL), T‑509/19, not published, EU:T:2021:225, paragraph 95 and the case-law cited).
101 The earlier sign is therefore limited to the element ‘stones’, without the addition of the word ‘bitter’, for example on invoices, affecting the comparison of that sign with the contested sign.
102 Furthermore, the applicant’s argument that the element ‘stones’ in the earlier sign would be perceived by a part of the English public as a reference to the music band ‘The Rolling Stones’ or the surname ‘Stones’, whereas, in the sign applied for, the element ‘stone’ will be perceived as meaning the object ‘stone’, cannot succeed. The applicant does not explain why, as regards the contested sign, the English public would understand the simplest and immediate meaning of the element ‘stone’, whereas, as regards the earlier sign, the same plural element would be understood differently, as a proper name. Moreover, even if part of the relevant public might consider that the element ‘stones’ refers to that band or to a surname, the fact remains that another part of that public might consider that it refers to ‘stones’.
103 In conclusion, it must be held that the Board of Appeal was right in finding that the signs at issue had a high degree of visual, phonetic and conceptual similarity.
(d) The distinctiveness of the earlier mark
104 The applicant submits that the intervener’s customers are located almost entirely within a small area of the United Kingdom, so that they are likely to be highly familiar with the earlier EU trade mark and that there is no likelihood of confusion on their part. Nevertheless, the applicant claims that that mark has a weak distinctive character, whereas the mark applied for is highly distinctive.
105 In the contested decision, the Board of Appeal found that the earlier mark had a normal degree of distinctiveness because the element ‘stones’ will not be understood by the English-speaking public as describing the goods covered by that mark.
106 The applicant insists on the alleged local character of the earlier mark, which would enable customers to recognise it easily, while asserting that that mark has a weak distinctive character. It thus appears to be claiming that the earlier mark has a highly distinctive character locally, while denying it, in general terms, such a quality. Such an argument, which is inherently contradictory, must be rejected.
107 Furthermore, in any event, since the applicant has not adduced any evidence showing that the earlier EU trade mark had a reputation at local level, the assessment of the distinctive character of that mark was based on its inherent distinctive character.
108 In those circumstances, the Board of Appeal did not make an error of assessment in finding that the earlier mark had a normal degree of distinctiveness.
109 As for the applicant’s claim that the distinctive character of the mark applied for is high, this is ineffective, since, in the context of opposition proceedings, the distinctive character of the mark applied for as a whole is irrelevant for the purposes of the assessment of the likelihood of confusion (see, to that effect, judgment of 26 January 2022, Diego v EUIPO – Forbo Financial Services (WOOD STEP LAMINATE FLOORING), T‑498/20, not published, EU:T:2022:26, paragraph 69 and the case-law cited).
(e) The likelihood of confusion
110 The applicant submits that, even if the goods at issue are identical, the signs are visually, phonetically and conceptually different, with the result that any likelihood of confusion is excluded.
111 The Board of Appeal found, in the contested decision, that, in view of the high degree of visual, phonetic and conceptual similarity of the signs at issue, the identity of the goods concerned, and the normal level of inherent distinctiveness of the earlier mark, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
112 In the present case, in the light of all the foregoing considerations concerning the third plea, the applicant has not succeeded in calling into question the Board of Appeal’s global assessment of the likelihood of confusion.
113 Therefore, the third plea in law must be rejected as unfounded.
114 It follows from all the foregoing that the action must be dismissed in its entirety.
IV. Costs
115 Under Article 134(1) 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.
116 The intervener has claimed that the applicant should be ordered to pay the costs. EUIPO has claimed the same in the event that the oral part of the procedure was opened.
117 Since the applicant has been unsuccessful, it must be ordered to pay the intervener’s costs, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Stone Brewing Co. LLC to bear its own costs and to pay the costs incurred by Molson Coors Brewing Company (UK) Ltd;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Marcoulli | Frimodt Nielsen | Schwarcz |
Delivered in open court in Luxembourg on 14 June 2023.