JUDGMENT OF THE GENERAL COURT (First Chamber)
27 February 2014 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark QTA S. JOSÉ DE PERAMANCA – Earlier national figurative marks VINHO PERA-MANCA TINTO, VINHO PERA-MANCA BRANCO and PÊRA-MANCA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑602/11,
Pêra-Grave – Sociedade Agrícola, Unipessoal Lda, established in Evora (Portugal), represented by J. de Oliveira Vaz Miranda Sousa, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Fundação Eugénio de Almeida, established in Evora (Portugal), represented by B. Braga da Cruz and J. Pimenta, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 September 2011 (Case R 1797/2010-2), relating to opposition proceedings between Fundação Eugénio de Almeida and Pêra-Grave – Sociedade Agrícola, Unipessoal Lda,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 November 2011,
having regard to the response of OHIM lodged at the Court Registry on 18 April 2012,
having regard to the response of the intervener lodged at the Court Registry on 18 April 2012,
having regard to the decision of 21 August 2012 not to allow the lodging of a reply,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 6 October 2008, the applicant, Pêra-Grave – Sociedade Agrícola, Unipessoal Lda, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Alcoholic beverages (except beers)’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 50/2008 of 15 December 2008.
5 On 10 March 2009, the intervener, Fundação Eugénio de Almeida, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier rights:
– the Portuguese figurative mark, registered on 7 June 1992 under the number 283 684, for goods in Class 33 corresponding to the following description: ‘White or red wines’ (‘the first earlier mark’), reproduced below:
– the Portuguese figurative mark, registered on 1 April 1996 under the number 308 864, for goods in Class 33 corresponding to the following description: ‘White wines’ (‘the second earlier mark’), reproduced below:
– application No 405 797 of 31 August 2006 for a Portuguese figurative mark in respect of goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’. That mark, which was registered on 27 January 2010 (‘the third earlier mark’), is reproduced below:
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).
8 By decision of 2 August 2010, the Opposition Division rejected the opposition. It found that, having regard to the belated submission of the evidence, the intervener had not established that the earlier marks had a reputation within the meaning of Article 8(5) of Regulation No 207/2009. Furthermore, the Opposition Division took the view that the signs at issue were slightly similar visually and phonetically and dissimilar conceptually. Consequently, the Opposition Division concluded that there was no likelihood of confusion between the marks at issue inasmuch as the identity of the goods covered was offset by the very low degree of similarity between the signs at issue.
9 On 16 September 2010, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 19 September 2011 (‘the contested decision’), the Board of Appeal of OHIM upheld the appeal, annulled the Opposition Division’s decision and, upholding the opposition, rejected the trade mark application in respect of all the goods concerned. The Board of Appeal found that the evidence of the reputation and enhanced distinctiveness of the earlier marks had been submitted too late and that it would not be taken into account as the intervener had not put forward any arguments to justify such a belated submission. On the other hand, it found, in contrast to the Opposition Division, that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, could not be excluded inasmuch as the low degree of similarity between the signs at issue was compensated for by the identity of the goods covered. The Board of Appeal found that, given that the only element common to the signs at issue, the element ‘pêra-manca’ or ‘peramanca’, was the most important element in the relevant public’s perception of those signs and had an average degree of distinctiveness, the signs exhibited some similarities. Those similarities were categorised as very slight as regards the visual comparison, inasmuch as the figurative elements of the signs at issue were not capable of prevailing in the imperfect recollection which the relevant public has of those signs, and as slight as regards the phonetic comparison. As regards the conceptual comparison, the element ‘pêra-manca’ or ‘peramanca’ could, according to the Board of Appeal, be perceived as referring to a place name and therefore give rise to a conceptual ‘overlap’ between the signs at issue.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision and, consequently, reject, in its entirety, the opposition directed against the mark applied for and allow, in its entirety, the registration of that mark;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action;
– confirm the contested decision;
– order the applicant to pay the costs relating to the administrative procedure and to the present action.
Law
14 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It takes the view that the Board of Appeal erred in minimising the overall importance of the numerous visual, phonetic and conceptual differences between the signs at issue and in overestimating the overall impact of the only element those signs have in common. Consequently, according to the applicant, the degree of overall similarity between the signs at issue is not sufficient to give rise to a likelihood of confusion.
15 It is appropriate to recall that 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, an 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
16 Furthermore, according to settled case-law, the risk that the public might 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 the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
17 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
18 Furthermore, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
19 Inasmuch as it is sufficient, in order for OHIM to refuse to register a mark which has been applied for, to establish that there is a likelihood of confusion as regards one earlier mark, the Court decides to examine first the likelihood of confusion with the third earlier mark, which, prima facie, has the greatest similarity with the mark applied for.
20 In that regard, it is necessary, first of all, to uphold the Board of Appeal’s assessment, which is, moreover, not disputed by the parties, that the relevant public in relation to which the likelihood of confusion must be analysed is the average consumer of the goods at issue in Portugal since the earlier marks are marks which are registered in that State. That average consumer must be deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 25 October 2006 in Case T‑13/05 Castell del Remei v OHIM – Bodegas Roda (ODA), not published in the ECR, paragraph 46; judgment of 14 November 2007 in Case T‑101/06 Castell del Remei v OHIM – Bodegas Roda (CASTELL DEL REMEI ODA), not published in the ECR, paragraph 52; and judgment of 12 March 2008 in Case T‑332/04 Sebirán v OHIM – El Coto De Rioja (Coto D’Arcis), not published in the ECR, paragraph 29).
21 Likewise, the Board of Appeal found, without that being disputed by the parties, that the goods at issue are identical. That assessment must be upheld inasmuch as the goods covered by the third earlier mark are identical to those covered by the mark applied for.
22 In the action, the applicant submits that, in view of numerous visual, phonetic and conceptual differences, the signs at issue are not sufficiently similar overall to create a likelihood of confusion. In particular, it criticises the Board of Appeal for finding that the word element ‘pêra-manca’ or ‘peramanca’, which is common to the marks at issue, dominated the overall impression produced by those marks.
The comparison of the signs
23 According to the case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and case-law cited).
24 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 (see OHIM v Shaker, cited in paragraph 23 above, 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 (OHIM v Shaker, cited in paragraph 23 above, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42).
25 Whilst the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, in general it is the dominant and distinctive features of a sign which are more easily remembered (Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 39; see also, to that effect, Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraphs 47 and 48).
26 In the present case, the Board of Appeal found that, visually, the signs compared had in common the element ‘pêra-manca’ or ‘peramanca’, which was the most striking element in each of those signs, and that that resulted in visual similarity – albeit very low in degree – between them since the differences in their spelling would not be liable to impress themselves on the memories of consumers. The other components of the signs at issue, both word and figurative, were not, according to the Board of Appeal, capable of overriding the similarity resulting from the presence of that most striking common element.
27 Phonetically, the Board of Appeal found, in comparing the word elements ‘pêra-manca’ in the third earlier mark and ‘quinta san josé de peramanca’ in the mark applied for, that there was a low degree of similarity between the signs at issue.
28 Lastly, conceptually, the Board of Appeal stated that the signs at issue referred to the element ‘pêra-manca’ in respect of the third earlier mark and to the element ‘estate of san josé of peramanca’ in respect of the mark applied for. First, it found that, in so far as the element common to the marks at issue, ‘pêra-manca’ or ‘peramanca’ could be perceived as a reference to a place name, there was, conceptually, a certain ‘overlap’ between the signs at issue. Secondly, pointing out that the element ‘pêra’, which is separated by a hyphen from the element ‘manca’ in the third earlier mark, could be understood by the relevant public as referring to the word ‘pear’, the Board of Appeal found that there was a conceptual difference between it and the mark applied for. Lastly, it found that it was more probable that the term ‘pêra-manca’ or ‘peramanca’ would be perceived as an indication of commercial origin.
29 The applicant submits that, contrary to what the Board of Appeal found, the word element common to the marks at issue does not dominate the impression which those marks make on the relevant public, which consists of reasonably well informed and reasonably observant Portuguese consumers of wine and will perceive them in an overall and imperfect analysis. It alleges that the Board of Appeal departed, in assessing the existence of a likelihood of confusion, from the rules set out in the case-law of the Court with regard to signs relating to wines and other alcoholic beverages and incorrectly assessed the perception which the relevant public would have of the signs at issue. The Board of Appeal inter alia overestimated the effect of the only element common to the marks at issue, namely the word element ‘pêra-manca’ or ‘peramanca’, by conferring a dominant character on it, and minimised the importance of the numerous differences between those marks.
30 The applicant submits that, in the light of the overall impression which they create, the figurative elements of the marks at issue are not negligible. The contested decision fails to justify in a reasonable and consistent manner why the overall visual recollection of those marks will be dominated by the element ‘pêra-manca’ or ‘peramanca’ – which is devoid of meaning and has at most an average degree of distinctiveness – and will not also result from the figurative elements of the marks at issue.
31 Lastly, relying on the judgment of 11 July 2006 in Case T‑247/03 Torres v OHIM – Bodegas Muga (Torre Muga), not published in the ECR, and the judgment in Case T‑287/06 Torres v OHIM – Bodegas Peñalba López (Torre Albéniz) [2008] ECR II‑3817, the applicant submits that together the word elements contained in the mark applied for constitute a meaningful sequence of words which the relevant public will remember as such, especially since, as is apparent from the case‑law, consumers of the goods covered by the mark applied for are accustomed to marks which consist of several word elements and will not disregard some of those elements to the point of remembering only the others – in particular when the latter are meaningless in themselves – when they attribute a clear meaning to the expression considered as a whole.
32 OHIM and the intervener dispute all of the arguments put forward by the applicant.
33 As was pointed out, in essence, by the Board of Appeal in paragraph 30 of the contested decision, on the one hand, the third earlier mark is the representation of a mounted eighteenth- or nineteenth-century horse rider being offered a drink by a young woman who is standing on his left, with a landscape in the background. It also contains the image of a vine branch situated to the left of the representation of the young woman. The word element ‘pêra-manca’ is situated in the upper centre of the sign. On the other hand, the mark applied for contains the representation of a walled hacienda or rural house above the expression ‘qta s. josé de’ on a first line and ‘peramanca’ on a second line.
The visual similarity
34 The Board of Appeal found that, visually, notwithstanding the differences between the marks at issue due to the presence of figurative elements in both marks and of other word elements in the mark applied for, both marks had in common the element ‘pêra-manca’ or ‘peramanca’, which was the most distinctive element in the overall impression produced by those marks. It follows that, contrary to what the applicant maintains, the Board of Appeal did not disregard the figurative elements of the marks at issue in the course of the visual comparison, but found that they were not capable of overriding the visual similarity between the signs which arises out of the presence of a common element. That assessment must be upheld.
35 First, in that regard, it must be borne in mind that consumers usually describe and recognise wine by reference to the word element which identifies it (Case T‑40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II‑2831, paragraph 56, and Coto D’Arcis, cited in paragraph 20 above, paragraph 38).
36 Secondly, it must be pointed out that the figurative elements of the marks at issue, as well as the word element ‘qta’ of the mark applied for, allude to the goods covered. As regards the figurative element of the mark applied for, it may evoke, as the Board of Appeal stated in paragraphs 32 and 34 of the contested decision, a wine-producing estate, particularly because it is followed by an abbreviation of the word ‘quinta’, which means ‘estate’ in Portuguese. That element, and also the word element ‘qta’, are commonplace in the particular sector of the goods concerned. In that sector, words such as ‘estate’ are common, in particular with regard to wine, and the consumers concerned are accustomed to perceiving goods with names referring to that type of place, with the result that those words are less able to attract the attention of average consumers (judgment of 16 September 2009 in Case T‑458/07 Dominio de la Vega v OHIM – Ambrosio Velasco (DOMINIO DE LA VEGA), not published in the ECR, paragraph 50). Consequently, inasmuch as the figurative element and the word element ‘qta’ of the mark applied for evoke, for the Portuguese public and in relation above all to wine, but also to the other goods covered, an estate on which that wine and those goods are produced or from which they come, those components have a weak distinctive character and will not be remembered by the relevant public (see, to that effect, Coto d’Arcis, cited in paragraph 20 above, paragraph 38, and DOMINIO DE LA VEGA, paragraph 41).
37 Likewise, as regards the earlier mark, the figurative elements of which it consists, although they cannot be disregarded in the overall image produced, particularly in view of their size and complexity, nevertheless allude to the goods covered. The representation of a horse rider being offered a drink by a young woman is evocative of wine, especially as it is accompanied by a representation of a vine branch. Therefore, although that evocation has no clear and specific meaning, the possibility remains that the elements thus represented evoke a woman offering a horse rider a glass of wine. Consequently, having regard to the relevant public and to the goods covered by the third earlier mark, the capacity of those figurative elements to differentiate that mark from the mark applied for will be limited, irrespective of whether or not the relevant public will recognise the image of the horse rider and the young woman offering him a drink as a scene from a painting painted by a well-known Portuguese painter.
38 It follows from the foregoing that the Board of Appeal was right to find that there is a very low degree of visual similarity between the signs at issue.
The phonetic similarity
39 As regards the phonetic comparison of the signs, it must be pointed out first of all that, even if the figurative elements differentiating the marks at issue visually were perceived by the relevant public, they would not be pronounced at the time of an act of purchase (see, to that effect, judgment of 31 January 2012 in Case T‑205/10 Cervecería Modelo v OHIM – Plataforma Continental (LA VICTORIA DE MEXICO), not published in the ECR, paragraph 68) and cannot therefore play a decisive role in the phonetic differentiation of the signs at issue.
40 Consequently, phonetically, the signs at issue share the word element ‘pêra-manca’ or ‘peramanca’, which is the only element to be pronounced in the third earlier mark and which will not be disregarded when the word elements ‘quinta san josé de peramanca’ in the mark applied for are pronounced. Accordingly, the Board of Appeal was right to find, in paragraph 31 of the contested decision, that there was, at the very least, a low degree of phonetic similarity between the signs at issue.
41 It follows from the foregoing that the applicant errs in submitting that the Board of Appeal disregarded elements other than the word ‘peramanca’ when comparing the signs phonetically.
The conceptual similarity
42 Conceptually, the Board of Appeal was right in pointing out, in paragraph 32 of the contested decision, that it was not inconceivable that some consumers might perceive the element ‘pêra-manca’ or ‘peramanca’ as part of the same geographical name and that they might therefore perceive the mark applied for as referring to an estate of San José of Peramanca. Nevertheless, it was also right to find, in paragraph 36 of the contested decision, that the majority of the relevant public would not attribute any specific meaning to the word ‘pêra-manca’ or ‘peramanca’, which would thus constitute an indication of commercial origin.
43 Consequently, contrary to what the applicant claims, the Board of Appeal did not base its assessment of the conceptual similarity between the signs at issue on a comparison of the only common element ‘pêra‑manca’ or ‘peramanca’, inasmuch as it referred to the relevant public’s perception of the expression ‘qta san josé de peramanca’ which is contained in the mark applied for.
44 It follows from the foregoing that the Board of Appeal did not take the view, in comparing the signs at issue, that elements other than the word ‘pêra-manca’ or ‘peramanca’ were negligible in the overall impression produced by the marks at issue for the purposes of the case-law referred to in paragraph 24 above. It is true that it found, in paragraphs 34 and 35 of the contested decision, that elements other than the element ‘pêra-manca’ or ‘peramanca’ had a lower degree of distinctiveness, but it nevertheless took those elements into consideration in the examination of the similarity of the signs carried out in paragraphs 30 to 32 and 34 to 36 of the contested decision.
45 Consequently, the Board of Appeal was right to find that the signs at issue had a very low degree of visual similarity and a low degree of phonetic similarity and that there could be some overlap between them conceptually.
46 That finding cannot be invalidated by the applicant’s other arguments.
47 First, the applicant is wrong in claiming that the fact that the relevant public perceives the expression ‘qta s. josé de peramanca’ as a logical and conceptual whole, referring to an estate with the name of San José de Peramanca, prevents its attention from being attracted in particular by the element ‘peramanca’. In that regard, it must be pointed out that the element ‘peramanca’ on its own takes up a whole line in the composition of the mark applied for and therefore the relevant public perceives it as having a certain degree of autonomy. Furthermore, contrary to what the applicant claims, it is not contradictory to take the view, on the one hand, that consumers will give a particular meaning to an expression contained in a mark, but that, on the other hand, their attention will be attracted in particular by an element in that expression. It is not inconceivable, taking account of the relevant public and the goods covered, that certain elements of a meaningful sequence of words will attract more attention than the others.
48 Secondly, nor can the Board of Appeal’s finding acknowledging that there is a certain degree of similarity between the signs at issue be invalidated by the applicant’s argument that the word ‘quinta’, when it appears in a trade mark for wines, is a striking term the use of which is restricted and regulated at the European and national levels because it evokes in the minds of consumers an image of tradition, prestige and genuineness.
49 In that regard, it must be stated, as pointed out by OHIM, that neither that argument nor the evidence deemed to support it was submitted by the applicant before the Board of Appeal. It is apparent from the case‑law that the review by the General Court of the legality of decisions of the Boards of Appeal must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal and that the General Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 55, and Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 53). Furthermore, under Article 135(4) of the Rules of Procedure of the General Court, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. Consequently, since the question of the allegedly enhanced distinctive character of the term ‘quinta’ in the mark applied for was not submitted to the Board of Appeal and the Board of Appeal did not therefore make a finding in that regard, an argument to that effect put forward before the Court must be declared inadmissible. Likewise, the Portuguese regulation, submitted in support of that argument in Annex 4 to the application, was produced for the first time before the Court and, in accordance with the case-law, must be excluded, without it being necessary to assess its probative value (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case‑law cited).
50 In any event, the Court points out that the fact that the use of the term ‘quinta’ is regulated confirms the finding made in paragraph 36 above, that that term is common in the sector concerned and thus has a weak distinctive character, with the result that it is not in itself capable of designating the commercial origins of the goods concerned.
51 Thirdly, nor it is possible to accept the argument which the applicant derives from the application to the present case of the judgments in Torre Muga and Torre Albéniz, cited in paragraph 31 above, that it cannot be held that the word ‘peramanca’ in the mark applied for, which is part of a logical and conceptual sequence, occupies a dominant and distinctive position on the ground that it is similar to the word ‘pêra-manca’ in the earlier mark, since the latter word has no specific meaning, is not highly distinctive and has no reputation for Portuguese wine consumers.
52 In that regard, it is necessary to point out, as OHIM has done, an inconsistency in the arguments put forward by the applicant. On the one hand, it submits that the word ‘peramanca’ has a meaning because it refers to a region of Portugal which is well-known for the quality of the wine produced there. On the other hand, the applicant states that that word is devoid of any meaning and has only an average degree of distinctiveness. Consequently, as OHIM correctly states, the applicant has not submitted, contrary to the provisions of Article 21 of the Statute of the Court of Justice of the European Union and of Article 44(1)(c) of the Rules of Procedure, as interpreted by the case-law (see, to that effect, Case C‑214/05 P Rossi v OHIM [2006] ECR I‑7057, paragraph 37), any coherent and intelligible arguments seeking to call into question the assessment which the Board of Appeal made in paragraph 33 of the contested decision, in which it accepted that the word element ‘peramanca’ had at least an average degree of distinctiveness.
The likelihood of confusion
53 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 the similarity of the goods or services concerned. 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74).
54 The Board of Appeal found that a likelihood of confusion between the marks at issue could not be excluded since the low degree of overall similarity between the signs was compensated for by the identity of the goods at issue.
55 The applicant takes the view that, having regard to the numerous dissimilarities between the signs at issue, the degree of similarity between them is not sufficient to conclude that there is a likelihood of confusion. It submits that the degree of similarity which the signs at issue in the judgment of 22 March 2007 in Case T‑322/05 Brinkmann v OHIM – Terra Networks (Terranus), not published in the ECR, which is referred to in paragraph 37 of the contested decision, were recognised as having was greater than that which the Board of Appeal found to exist in the present case.
56 OHIM and the intervener dispute the arguments put forward by the applicant.
57 In that regard, it must be stated that, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and that it is appropriate then to examine the objective conditions under which the marks may be present on the market (NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited in paragraph 25 above, paragraph 49). The extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by them are marketed. If the goods covered by the marks in question are usually sold in shops in which consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important (NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited in paragraph 25 above, paragraph 49, and judgment of 13 December 2007 in Case T‑242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 80). If, on the other hand, the product is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgment of 8 February 2007 in Case T‑88/05 Quelle v OHIM – Nars Cosmetics (NARS), not published in the ECR, paragraph 68).
58 It is apparent from the case-law referred to in paragraph 35 above that consumers usually describe and recognise the goods covered by the marks at issue by reference to the word element which identifies them. Furthermore, as the Board of Appeal correctly pointed out in paragraph 31 of the contested decision, those goods are also sold in cafés, bars and restaurants, in which the consumer’s choice is made by means of a menu, on which only the word element of the marks at issue is reproduced. In such circumstances, the likelihood of confusion is increased on the ground that the differences between the marks at issue deriving from the presence of figurative elements cannot help the consumer to distinguish between those marks (see, to that effect, DOMINIO DE LA VEGA, cited in paragraph 36 above, paragraph 48).
59 Consequently, in the circumstances of the present case, it is appropriate to attach less importance to the visual differences between the signs at issue and to give particular importance to the phonetic similarities.
60 It follows from the above that, irrespective of whether the degree of similarity between the signs at issue in the present case is less than or greater than that which was recognised in the case which gave rise to the judgment in Terranus, cited in paragraph 55 above, that degree of similarity is sufficient for a likelihood of confusion between the marks at issue not to be capable of being ruled out.
61 The Board of Appeal’s assessment that a likelihood of confusion between the marks at issue cannot be excluded must therefore be upheld. In the light of the identity of the goods at issue and in view of the fact that there is a very low degree of visual similarity and, at the very least, a low degree of phonetic similarity between the signs at issue, it cannot be ruled out that the relevant consumer may perceive the mark applied for as relating to a range of goods originating from the undertaking which is the proprietor of the third earlier mark or, at the very least, from an economically-linked undertaking (see, to that effect, Case T‑385/03 Miles International v OHIM – Biker Miles (Biker Miles) [2005] ECR II‑2665, paragraph 49 and the case-law cited).
62 Consequently, the single plea in law must be rejected and the action must therefore be dismissed, without there being any need, first, to assess whether there is a likelihood of confusion between the mark applied for and the first and second earlier marks, secondly, to rule on the admissibility of the applicant’s claim to have the opposition against the mark applied for rejected in its entirety and to have the registration of that mark allowed ‘in its entirety’ or, lastly, to examine the intervener’s argument to the effect that the earlier marks have a certain reputation in Portugal, given that the Court has upheld the assessment of the Board of Appeal which concluded that there was a likelihood of confusion without taking such a reputation into consideration.
Costs
63 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
64 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
65 The intervener also claimed that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before OHIM. In that regard, it must be borne in mind that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case with regard to the costs incurred for the purposes of proceedings before the Opposition Division. Accordingly, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before OHIM can be allowed only in regard to those costs which were necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see judgment of 7 February 2013 in Case T‑50/12 AMC-Representações Têxteis v OHIM – MIP Metro (METRO KIDS COMPANY), not published in the ECR, paragraph 64 and the case-law cited; see also, to that effect, Case T‑114/12 Bode Chemie v OHIM – Laros (sterilina) [2013] ECR, paragraph 39).
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Pêra-Grave – Sociedade Agrícola, Unipessoal Lda to pay the costs, including the costs necessarily incurred by Fundação Eugénio de Almeida for the purposes of the proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Kanninen | Pelikánová | Buttigieg |
Delivered in open court in Luxembourg on 27 February 2014.
[Signatures]