JUDGMENT OF THE GENERAL COURT (Second Chamber)
23 September 2020 (*)
(EU trade mark – Opposition proceedings – Application for the figurative EU trade mark in.fi.ni.tu.de – Earlier national word mark INFINITE – Admissibility of evidence – Genuine use of the earlier mark – Article 47(2) and (3) and Article 95(1) of Regulation (EU) 2017/1001 – Proof of genuine use – Relative grounds for refusal – Article 8(1)(b) of Regulation 2017/1001)
In Case T‑601/19,
Osório & Gonçalves, SA, established in Galamares (Portugal), represented by D. Araújo e Sá Serras Pereira, lawyer
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Miguel Torres, SA, established in Vilafranca del Penedès (Spain),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 2 July 2019 (Case R 1579/2018-5), relating to opposition proceedings between Miguel Torres and Osório & Gonçalves,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 7 September 2019,
having regard to the response lodged at the Court Registry on 2 December 2019,
having regard to the question put by the Court to the applicant in writing and its response to that question, lodged at the Court Registry on 4 May 2020,
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
Background to the dispute
1 On 28 October 2016, the applicant, Osório & Gonçalves, SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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).
2 Registration as a trade mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 32 and 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, for each of those classes, to the following description:
– Class 32: ‘Beer and brewery products’;
– Class 33: ‘Cider; preparations for making alcoholic beverages; wine; perry; bitters (liqueurs); baijiu (Chinese distilled alcoholic beverage); edible alcoholic beverages; aperitifs; low alcohol beverages; carbonated alcoholic drinks other than beer; cocktails; alcoholic jellies; mead (hydromel); nira (sugarcane-based alcoholic beverage); sake; rice alcohol; spirits and liqueurs; alcoholic bitters aperitifs; liqueur-based aperitifs; wine-based aperitifs; pre-mixed alcoholic beverages (alcopops); alcoholic cocktails containing milk; alcoholic beverages containing fruit; alcoholic fruit beverages; pre-mixed alcoholic beverages, other than beer-based; coffee-based alcoholic beverages; tea-based alcoholic beverages; alcoholic energy drinks; beverages containing wine (spritzers); rum-based beverages; wine and fruit-juice based beverages’.
4 The EU trade mark application was published in the European Union Trade Marks Bulletin No 2016/208 of 3 November 2016.
5 On 3 February 2017, the other party to the proceedings before the Board of Appeal of EUIPO, Miguel Torres, SA, filed a notice of opposition to registration of the mark applied for in respect of all the goods designated in the application.
6 The opposition was based, first, on the Spanish word mark INFINITE, which was filed on 7 March 2007 and registered on 21 August 2007 under number 2 759 404, for the ‘alcoholic beverages, except beers’ in Class 33 and, secondly, on the international registration of the word mark INFINITE designating the Czech Republic, Cyprus, Lithuania, Austria, Latvia, Italy, Benelux, Slovenia, Bulgaria, Slovakia, Denmark, Hungary, Greece, Croatia, Germany and France, which was filed and registered on 20 December 2007 under number 955 077, for the ‘alcoholic beverages, except beers’ in Class 33.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 By letters of 16 August 2017 and pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), the applicant asked the opponent to prove genuine use of the earlier Spanish word mark and of the earlier international registration during the relevant period, namely the period from 28 October 2011 to 27 October 2016, and responded to the opposition.
9 By letter of 18 October 2017, the opponent produced various documents aiming to prove genuine use of the earlier Spanish word mark and of the earlier international registration during the relevant period and submitted its observations on the response to the opposition.
10 By decision of 27 June 2018, the Opposition Division took the view that, considered as a whole, the items produced by the opponent in annex to its letter of 18 October 2017 related only to proof of genuine use of the earlier Spanish word mark during the relevant period in the relevant territory, namely Spain, for ‘wines’ in Class 33. Having stated that the marks at issue were similar and that the goods designated by the mark applied for, with the exception of the ‘alcoholic preparations for making beverages’ in Class 33 (‘the contested goods’), were in part identical and in part similar to ‘wines’ in Class 33, covered by the earlier Spanish word mark, it upheld the opposition in part for all the contested goods, on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
11 On 14 August 2018, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, in so far as it had rejected the application for registration, pursuant to Articles 66 to 71 of Regulation 2017/1001.
12 By decision of 2 July 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal, thereby upholding the decision of the Opposition Division.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of evidence submitted for the first time before the General Court
15 EUIPO observes that, for the purposes of establishing the descriptive and, therefore, intrinsically non-distinctive character of the earlier Spanish word mark, which must be taken into account for the purpose of assessing the likelihood of confusion in the context of examining the first plea in law (see paragraph 88 below), the applicant produced for the first time before the Court extracts from internet sites, in the annexes to the application numbered A.7 to A.12. In accordance with the case-law, that new evidence must be rejected as inadmissible.
16 In response to the question put by the Court in writing, the applicant submits that the plea of inadmissibility thus raised by EUIPO confirms the merits of its appeal. It invites the EU judicature to reject this formal plea, which seeks to prevent the truth from being established on its merits. It submits that the documents in Annexes A.7 to A.12 to the application are admissible, since they could not have been found any sooner and since, in any case, the justification for producing them is the necessity of challenging before the Court the incorrect assessments made by the Board of Appeal in the contested decision. It refers to the Opinion of Advocate General Bobek in Primart v EUIPO (C‑702/18 P, EU:C:2019:1030), that Article 76(1) of Regulation No 207/2009 (replaced, in substance, by Article 95 of Regulation 2017/1001) and Article 188 of the Rules of Procedure of the General Court do not preclude the parties from challenging an assessment by EUIPO concerning a question such as the inherent distinctiveness of the earlier mark relied on in support of the opposition, which it had to examine, if necessary of its own motion. It indicates that, even if those annexes had to be rejected as inadmissible, the Court can take account of the facts contained in them, to the extent that they are well-known facts or relate to the legal definition of the degree of inherent distinctiveness of the earlier Spanish word mark. The General Court should either declare the annexes to be admissible or suspend the current proceedings pending the judgment of the Court of Justice in the Case C‑702/18 P.
17 In this regard, it should be borne in mind that the purpose of the action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, in accordance with Article 72 of Regulation 2017/1001, so it is not the role of the Court to reassess the facts in the light of documents presented for the first time before it.
18 Accordingly, the evidence submitted for the first time before the Court must therefore be rejected as inadmissible, without any need to examine its probative value (see, to that effect, judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraphs 18 and 19, and of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraphs 16 and 17).
19 That case-law is not called into question by the Opinion of Advocate General Bobek in Primart v EUIPO (C‑702/18 P, EU:C:2019:1030). Indeed the case-law cited in that opinion makes a clear distinction between, on the one hand, a change to the factual context of a case by the production of evidence for the first time before the Court (judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraphs 19, 20, 34 and 35) and, on the other hand, the absence of a change to the legal framework of that same case by raising, for the first time before the Court, a plea concerning a question such as the inherent distinctiveness of the earlier mark relied on in support of the opposition, which had to be examined, if necessary of its own motion, by the Board of Appeal (judgments of 1 February 2005, HOOLIGAN, T‑57/03, EU:T:2005:29, paragraphs 21, 22, 32 and 33, and of 24 February 2016, Tayto Group v OHIM – MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 41).
20 In this case, the evidence produced by the applicant in Annexes A.7 to A.12 to the application has been put before the Court for the first time and, therefore, changes the factual context of the present case.
21 Consequently, and without it being necessary to suspend the current proceedings pending the Court of Justice’s judgment in the Case C‑702/18 P, Annexes A.7 to A.12 to the application must be rejected as inadmissible.
Substance
22 In support of the action, the applicant relies on three pleas in law. The first alleges infringement of Article 8(1)(b) of Regulation 2017/1001. The second alleges infringement of Article 47(2) and (3) of that regulation. The third alleges infringement of Article 94(1), first and second sentences, of Article 95(1) and of Article 97(1) of the same regulation.
23 EUIPO suggests examining the second and third grounds of appeal together, before the first ground of appeal, since they relate to proof of genuine use of the earlier Spanish word mark.
24 In this regard, it should be recalled that the issue of genuine use is specific and preliminary in character, since it leads to a determination as to whether, for the purposes of the examination of the opposition, the earlier trade mark can be deemed to be registered in respect of the goods or services in question. That issue does not, therefore, fall within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion (see, to that effect, judgments of 27 March 2014, Intesa Sanpaolo v OHIM – equinet Bank (EQUITER), T‑47/12, EU:T:2014:159, paragraph 19, and of 15 February 2017, M. I. Industries v EUIPO – Natural Instinct (Natural Instinct Dog and Cat food as nature intended), T‑30/16, not published, EU:T:2017:77, paragraph 90).
25 For these reasons, it is necessary to examine the second and third pleas in law together, as both relate to proof of genuine use of the earlier Spanish word mark, before the first plea in law, which concerns the likelihood of confusion.
The second plea in law, alleging infringement of Article 47(2) and (3) of Regulation 2017/1001, and the third plea in law, alleging infringement of Article 94(1), first and second sentences, of Article 95(1) and of Article 97(1) of that regulation.
26 In paragraphs 19 to 44 of the contested decision and as regards proof of genuine use of the earlier Spanish word mark, the Board of Appeal decided that, when considered as a whole, the documents produced in annex to the opponent’s letter of 18 October 2017 were, although not very comprehensive, sufficient to prove that the criteria of time, place, nature and extent of use had, in this case, been satisfied. Accordingly, it found that that mark had been put to genuine and actual use, in Spain, for ‘wines’ in Class 33.
27 The applicant claims that, in the contested decision, the Board of Appeal infringed Article 47(2) and (3), Article 94(1), first and second sentences, Article 95(1) and Article 97(1) of Regulation 2017/1001, in finding that the opponent had proved genuine use of the earlier Spanish word mark.
28 In the second plea in law, the applicant claims that, concomitantly with infringing Article 94(1), first and second sentences, Article 95(1) and Article 97(1) of Regulation 2017/1001, the Board of Appeal had infringed Article 47(2) and (3) of that regulation, in holding that the opponent had demonstrated that the earlier Spanish word mark had been put to genuine use, in Spanish territory, during the relevant period, in respect of ‘wines’ in Class 33, whereas the evidence produced in annex to the opponent’s letter of 18 October 2017 did not allow a finding either that the mark had been used publicly and outwardly or that the use of that mark had been sufficient to qualify as genuine, within the meaning of the case-law.
29 More specifically, according to the applicant, the evidence produced by the opponent showed that the volume of goods actually sold under the earlier Spanish word mark was not significant. Furthermore, the use of that mark was neither extensive, since it concerned only two clients, one located in Canada and the other in the United States of America, nor very regular, nor territorially significant. Moreover, the probative value of the summary table of annual expeditions to the North American market, provided by the opponent, was limited. Lastly, there was no proof that the mark had been advertised. In view of those observations, made by the Board of Appeal in paragraphs 37, 38 and 44 of the contested decision, the latter should have found that there was no genuine use of that mark. In a decision of 29 September 2014, concerning the opposition numbered B 2 245 754, the Opposition Division of EUIPO found a lack of genuine use of the opponent’s mark and, in accordance with the principle nemo potest venire contra factum proprium established by the case-law, EUIPO should not have disputed what it had already accepted in a different case on any similar point.
30 In the third plea in law, the applicant claims that, concomitantly with infringing Article 47(2) and (3) of Regulation 2017/1001, the Board of Appeal infringed Article 94(1), first and second sentences, Article 95(1) and Article 97(1) of that regulation on two counts.
31 First, the Board of Appeal was wrong to find, in paragraph 37 of the contested decision, that a goods label, dating from 2014 and provided in Annex 3 to the opponent’s letter of 18 October 2017, demonstrated that the earlier Spanish word mark had been used in a commercial advertisement, when the message related only to the other party’s commitment to environmental protection and not to the actual goods covered by the mark.
32 Secondly, in the same paragraph 37 of the contested decision, the Board of Appeal favoured the opponent, in deducing from the content of invoices provided in Annex 1 to the opponent’s letter of 18 October 2017 that these were only an illustration of actual sales of goods under the earlier Spanish word mark, the total of which would clearly have been significantly higher than that confirmed by those invoices.
33 EUIPO disputes the applicant’s arguments.
34 In this regard, it is important to note that, in the second plea in law, the applicant makes a complaint alleging infringement of Article 47(2) and (3) of Regulation 2017/1001. In the application, the applicant sets out the reasons why it considers that the evidence furnished by the opponent in Annex 2 to its letter of 18 October 2017 did not prove a use of the earlier Spanish word mark that was sufficiently substantial, extensive, wide and regular during the relevant period for it to qualify as genuine use, within the meaning of that provision.
35 Article 47(2) of Regulation 2017/1001 provides as follows:
‘If the applicant so requests, the proprietor of [an earlier European Union] 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 Union … the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided that 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 shall 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 shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.’
36 Article 47(3) of Regulation 2017/1001 provides as follows:
‘Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Union.’
37 In interpreting the concept of genuine use, within the meaning of Article 47(2) of Regulation 2017/1001, account should be taken of the fact that the ratio legis for the requirement that the mark at issue must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to reserve trade mark protection to large-scale commercial operations (see judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 32 and the case-law cited, and of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 53 and the case-law cited).
38 As is apparent from the case-law, there is genuine use of a trade mark when it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it has been registered, in order to create or preserve an outlet for those goods or services; excluding 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 in the relevant territory, be used publicly and outwardly (see judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 26 and the case-law cited, and of 4 July 2014, Construcción, Promociones e Instalaciones v OHIM – Copisa Proyectos y Mantenimientos Industriales (CPI COPISA INDUSTRIAL), T‑345/13, not published, EU:T:2014:614, paragraph 21 and the case-law cited).
39 When assessing genuine use of the earlier trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices 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, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited).
40 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 41).
41 In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors in the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under that mark may be offset by highly intensive or consistent use of the mark, and 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).
42 The turnover and the volume of sales of goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, the production or marketing capacities or the degree of diversification of the undertaking using the trade mark, as well as the characteristics of the goods or services on the market concerned. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (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). Even minimal use can therefore be sufficient to be classed as genuine, provided that it is regarded as warranted, in the economic sector concerned, as a means of maintaining or creating market shares for the goods or services protected by the mark. Hence it is not possible to determine a priori, 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 assess 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).
43 Genuine use of a trade mark cannot be demonstrated by probabilities or presumptions but must be based on solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see judgment of 23 September 2009, Cohausz v OHIM – Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited).
44 Although Rule 22 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) refers to indications concerning the four elements which must support proof of genuine use, namely place, time, nature and extent of use, and gives examples of acceptable proof in that regard, such as packaging, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and written declarations, that rule does not state that each piece of evidence must, necessarily, contain information on each of the four elements in question (see judgment of 19 April 2013, Luna v OHIM – Asteris (Al bustan), T‑454/11, not published, EU:T:2013:206, paragraph 35 and the case-law cited). According to settled case-law, it cannot be ruled out that a grouping of items of evidence may allow the necessary facts to be established, even if each of those items, individually, would be insufficient to prove the accuracy of those facts. Proof of genuine use of the earlier mark must therefore be established by taking account of all the evidence submitted to the Board of Appeal for assessment (see judgment of 19 April 2013, Al bustan, T‑454/11, not published, EU:T:2013:206, paragraphs 36 and 37 and the case-law cited).
45 Furthermore, pursuant to the combined provisions of point (b) of the second subparagraph of Article 18(1) and of Article 47(2) and (3) of Regulation 2017/1001, proof of genuine use of an earlier national or EU trade mark, which forms the basis of an opposition to an EU trade mark application, also includes the proof of the affixation of that trade mark to the goods or to their packaging in the European Union, solely for export purposes.
46 Lastly, Article 58(1)(a) of Regulation 2017/1001 does not require continuous and uninterrupted use of the earlier trade mark during the relevant period, but only genuine use during that period (see judgment of 5 October 2017, Versace 19.69 Abbigliamento Sportivo v EUIPO – Gianni Versace (VERSACCINO), T‑337/16, not published, EU:T:2017:692, paragraph 51 and the case-law cited; see also, to that effect, judgment of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraphs 40 and 41).
47 It is in the light of those considerations that the Court must examine the applicant’s arguments, which seek to challenge the validity of the Board of Appeal’s assessment, set out in paragraph 44 of the contested decision, that the documents produced by the opponent in annex to its letter of 18 October 2017, demonstrated a genuine use of the earlier Spanish word mark for ‘wines’ in Class 33.
48 First of all, it should be noted that, in so far as the EU trade mark application submitted by the applicant was published on 28 October 2016, the Board of Appeal was correct to find, in paragraph 23 of the contested decision, that the relevant period of five years referred to in Article 47(2) of Regulation 2017/1001 extended from 28 October 2011 to 27 October 2016. Moreover, that assessment is not contested by the parties to the dispute.
49 In addition, in so far as the earlier Spanish word mark was cited, the Board of Appeal was correct to find, in paragraph 23 of the contested decision, that the relevant territory was Spain, in accordance with Article 47(3) of Regulation 2017/1001. Furthermore, the parties to the dispute do not contest that assessment.
50 In this case, the evidence produced by the opponent in annex to its letter of 18 October 2017, in order to prove the use of the earlier Spanish word mark in Spain between 28 October 2011 and 27 October 2016, was the following:
– 18 invoices issued by the other party between 30 October 2011 and 19 July 2016, so during the relevant period, addressed to six different customers in Canada and the United States and, among other things, showing statistics for sales of cases (CST), each containing 12 bottles or 9 litres of red wine ‘TORRES INFINITE’ of a vintage between 2009 and 2014, which invoices gave the address and bank details of the other party in Spain, as well as the email address of its ‘export’ service (export@torres.es) and the internet address for its customer services. (http://www.torreswines.com/customerservice); and with the exception of one invoice, the prices shown in Canadian or American dollars were ‘Free on Board’ (FOB) or ‘Free Carrier’ (FCA) on departure from Barcelona or from Pacs del Penedès (Catalonia, Spain);
– a summary table of annual case shipment statistics for the wine ‘INFINITE’, of Spanish origin and destined for Canada, Puerto Rico and the United States between 2011 and 2016, that is, during the relevant period;
– three designs for labels, drafted in English and French by a Catalan graphic design company, for the red wine ‘INFINITE’, showing the designation of origin Catalonia (Spain), bottled in Spain by ‘MIGUEL TORRES SA’ and of vintages 2009, 2010 and 2011; the references to the label designs mentioned the terms ‘CANADA’ or ‘CAN’; one of the label designs was dated 16 January 2014, that is to say, a date within the relevant period;
– three data sheets in English describing the technical specifications of the red wine ‘INFINITE’, showing the designation of origin Catalonia (Spain), produced by ‘TORRES’; the vintage 2009, 2010 or 2011 and the storage life of two years or of five to eight years referred to which permitted them to be attributed to the relevant period;
– and references to internet sites: www.wine-searcher.com, www.tonyaspler.com, www.vino100oceanside.com, www.cellartracker.com, www.winealign.com and www.vivino.com containing, according to the opponent, proof of use of the mark.
51 The mere reference to the internet sites, without any indication of the relevance of their content to the present case, was rejected as evidence by the Opposition Division in its decision of 27 June 2018, and this aspect of the Opposition Division’s decision was implicitly confirmed by the Board of Appeal in paragraph 42 of the contested decision. The fact that that evidence was not taken into account is not contested by the parties and there is no need to call it into question in the context of the present action.
52 In the contested decision, the Board of Appeal, in confirming the Opposition Division’s assessment which concluded that there was genuine use of the earlier Spanish word mark for ‘wines’ in Class 33, took into account, in essence, the 18 invoices, the summary table of annual shipments and the label designs, in particular the one dated 16 January 2014, which were produced by the opponent in annex to its letter of 18 October 2017.
53 First of all, as regards use in the relevant territory, the Board of Appeal was fully entitled to find, in paragraphs 29 to 31 of the contested decision, that even if the evidence referred to in paragraph 52 above relates only to exports of wine from Spain to Canada or to the United States, it could, nevertheless, be taken into account for the purposes of proving genuine use of the earlier Spanish word mark in Spain. Indeed, in accordance with point (b) of the second subparagraph of Article 18(1) of Regulation 2017/1001, proof of affixation of that trade mark to the goods or on their packaging, in Spain, solely for export purposes, could be taken into account for the purposes of demonstrating the use of the trade mark in that State. It is apparent from the invoices produced by the other party to the proceedings that the sign ‘INFINITE’ was used in them, as regards customers based in Canada and in the United States, to designate the type of ‘goods’ it exported from Spain, namely ‘red wine’ from ‘Spain’ delivered in cases of 12 bottles. Moreover, the label designs provided by the other party, in particular the one dated 16 January 2014, corroborate the fact that the trade mark ‘INFINITE’ was affixed to the bottles of red wine bearing the designation of origin Catalonia (Spain), bottled in Spain and destined for export to English- or French-speaking countries such as Canada or the United States. These invoices and these label designs, concerning the export of wines from Spain by the opponent, could therefore be taken into account, in accordance with point (b) of the second subparagraph of Article 18(1) of Regulation 2017/1001, for the purposes of proving genuine use of the trade mark at issue in the relevant territory, namely Spain.
54 Furthermore, and in so far as the applicant relies, in essence, on the territorial extent of the use of the earlier Spanish word mark being limited, it must be borne in mind that point (b) of the second subparagraph of Article 18(1) of Regulation 2017/1001 requires only that it be demonstrated that the export activity developed from the relevant territory and not that it was widespread within that territory. Indeed, what must be established, in accordance with the case-law cited in paragraph 38 above, is that the export activity that developed from the relevant territory was sufficient to maintain or to create market shares for the goods or services protected by the earlier mark. Thus, the mere fact that the export activity was directed towards a small number of third countries does not exclude the possibility of genuine use of the earlier mark, if the territorial extent of that activity is sufficient to maintain or to create export market shares for the goods or services protected by the mark. In this case, the evidence taken into account by the Board of Appeal shows that the activity of exporting wines under the earlier Spanish word mark was developed, by the other party, from Spain, which is not disputed by the parties. Furthermore, taking into account the size and significance of the Canadian and American wine markets, that activity exporting to importer-distributors operating in those markets was sufficiently extensive, as regards territory, to maintain or to create market shares for Spanish red wines exported under the earlier Spanish word mark. The applicant’s argument alleging a limited territorial extent of use of that mark must therefore be rejected.
55 Secondly, as regards public use in the course of trade, the Board of Appeal was fully entitled to find, in paragraphs 40 and 41 of the contested decision, that the 18 invoices in question and the references made in them attested to an outward or public use of the earlier Spanish word mark in relation to importer-distributors operating in the Canadian and American wine markets.
56 In that regard, it should be borne in mind that public use in the course of trade must be assessed in relation to the public towards which the earlier mark is directed or seeks to reach, which does not necessarily consist only of end users but may sometimes also include intermediaries (see, to that effect, judgment of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 25).
57 In the present case, it is apparent from the 18 invoices at issue that intermediaries external to the opponent, namely the importer-distributors, purchase from it the Spanish red wines it exports under the earlier Spanish word mark and constitute, in the same way as end users of the wines, the public towards which the mark is directed. It follows that such export activity corresponds to public use of that mark in the course of trade.
58 In that respect, as the Board of Appeal rightly observed in paragraph 43 of the contested decision, the present case is clearly distinguishable from the Opposition Division’s previous decision of 29 September 2014, in which the proof of use related to exports of wine between two companies in the same group, such that it had been entitled to find that the earlier mark had only been put to use within the undertaking concerned and not on the market for goods protected by that mark.
59 For those reasons, the applicant has no grounds for claiming, in essence, that, as the Opposition Division had done in the decision of 29 September 2014 and in accordance with the principle nemo potest venire contra factum proprium, the Board of Appeal should, in the contested decision, have found a lack of public use of the earlier Spanish word mark in the course of trade and, ultimately, of genuine use of the mark.
60 Thirdly, as regards the regularity of use, the Board of Appeal was entitled to find, in paragraph 36 of the contested decision, that the 18 invoices at issue, dated 30 October, 10 November and 10 December 2011; 1 February, 26 July and 4 October 2012; 21 March, 22 June and 8 December 2013; 14 February, 21 August and 8 October 2014; 21 April, 28 May and 19 November 2015, as well as 23 March and 7 and 19 July 2016, covered the whole of the relevant period and demonstrated the frequency of use of the earlier Spanish word mark throughout the period concerned. The applicant’s claim to contrary is, therefore, wrong, and its arguments in that regard must be rejected as unfounded.
61 Fourthly, as regards the scale or intensity of the use, it is apparent from the 18 invoices at issue that they were addressed to six different customers and not to two as the applicant claimed, four of which customers were based in Canada and the other two in the United States. Each one of those invoices relates to several tens or, more often than not, hundreds of case statistics and several thousands or, in most cases, tens of thousands of American or, especially, Canadian dollars’ worth of Spanish red wine exported under the earlier Spanish word mark. For each of the years falling within the relevant period, those invoices vouch for the shipment of several hundreds or, for two years, thousands of case statistics for, excepting two years, several tens of thousands of American or, especially, Canadian dollars. Over the whole of the relevant period, those exports relate to several thousands of case statistics and some hundreds of thousands of American or, especially, Canadian dollars.
62 In accordance with the case-law cited in paragraph 42 above, an assessment of these volumes and these sums must take into account all the factors in the present case and, in particular, those emerging from the 18 invoices in question, that the opponent produces and exports a wide range of red and white Spanish wines, sold in bottles, each under a different trade mark. The necessary implication of such differentiation is a limit to the volumes and amounts of wine sold under each mark. Moreover, if the number of customers mentioned in these invoices is limited, that is also because they are intermediary customers, who exercise their activities throughout an entire region, sometimes in a legal monopoly, and are not end users. In this context, the volumes, amounts and numbers of customers confirmed by those invoices, even if they are not, strictly speaking, substantial, are still sufficiently large to attest to a commercial activity that permits the maintenance or the creation of market shares for wines exported under the earlier Spanish word mark to the American and, especially, Canadian markets.
63 Furthermore, the fact that the opponent’s commercial export activity is not symbolic, or token, in nature is corroborated, as mentioned in paragraph 41 of the contested decision, by the supplementary details included in the 18 invoices in question and which confirm that it has customer services and, especially, an ‘export’ service. It is also corroborated by the fact that the opponent had used the services of a Catalan graphic design company to create label designs for the Spanish red wine of vintages 2009, 2010 and 2011, destined for export, under the earlier Spanish word mark, to the Canadian market.
64 It follows that the 18 invoices in question and the label designs concerned, in particular the one dated 16 January 2014, are sufficient to justify the conclusion reached by the Board of Appeal, in paragraph 38 of the contested decision that, in essence, the earlier Spanish word mark had not been put purely to token use, in the context of commercial export activity.
65 Therefore, having regard to the provisions and to the case-law cited in paragraphs 35 to 46 above and to all the findings made in paragraphs 53 to 62 above, the Board of Appeal was fully entitled to find, in paragraph 44 of the contested decision, that, while the evidence taken into account was rather brief, it was nevertheless sufficient, when considered as a whole, for the purpose of confirming the Opposition Division’s assessment that there was a genuine use of the earlier Spanish word mark for ‘wines’ in Class 33.
66 This finding is not called into question by the other complaints put forward by the applicant.
67 First, as regards the applicant’s complaint alleging, in essence, that the Board of Appeal put too high a probative value on the summary table of annual shipments in considering, in paragraphs 35 and 38 of the contested decision, that that table corroborated the invoices relating to the opponent’s use of the earlier Spanish word mark in the context of significant, or, at the very least, non-token, commercial export activity, it is sufficient to note that, in view of the conclusion that it was possible to reach, in paragraph 65 above, even without taking that table into account, that the alleged error, supposing it were made, would not have had any bearing on the validity of the decision by which the Board of Appeal found that there was genuine use of the earlier Spanish word mark for ‘wines’ in Class 33. Therefore, the annulment of that decision cannot be justified. This complaint must, therefore, in any event, be rejected as ineffective.
68 Secondly, as regards the applicant’s complaint alleging that the earlier Spanish word mark had not been advertised at all, it should be noted that, contrary to what the applicant seems to be asserting, genuine use of the earlier trade mark does not necessarily mean that it has to be advertised. Accordingly, this complaint cannot succeed.
69 In the third plea in law, the applicant, under the guise of alleging infringements of Article 94(1), first and second sentences, of Article 95(1) and of Article 97(1) of Regulation 2017/1001, in fact merely criticises the reasoning followed by the Board of Appeal in the contested decision in its finding that genuine use of the earlier Spanish word mark for ‘wines’ in Class 33 had been proven by the opponent, on the ground that this reasoning was false, incorrect, unsubstantiated or partial, and therefore calls into question the substantive legality of that decision. Indeed, in the action, it reproaches the Board of Appeal, in essence, for not having restricted its examination to the evidence produced by the opponent in Annex 2 to its letter of 18 October 2017, first, by equating the 2014 product labels provided by the opponent to promotional material for wine exported under that trade mark (paragraph 31 above) and, secondly, by assuming the existence of invoices other than those produced by the opponent, which led it to over-estimate the volume of wine exported under that mark (paragraph 32 above).
70 Article 95(1) of Regulation 2017/1001 states that ‘in proceedings before it, [EUIPO] shall examine the facts of its own motion’, but that, ‘however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties …’. According to settled case-law, that provision relates, inter alia, to the factual basis of decisions of EUIPO, that is, the facts and evidence on which those decisions may validly be based (see judgment of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 29 and the case-law cited).
71 The rule prescribed by Article 95(1) of Regulation 2017/1001, that EUIPO is to examine facts of its own motion, does not apply to the question of proof of genuine use of the mark in the context of opposition proceedings brought before EUIPO (see, to that effect and by analogy, judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 65).
72 Indeed Article 47(2) of Regulation 2017/1001 and Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001) state specifically that it is for the proprietor of the earlier trade mark to prove genuine use or that there are proper reasons for non-use, failing which the opposition or the application for a declaration of invalidity is to be rejected (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 55). Rule 22(2) of Regulation No 2868/95 also states that the proof of genuine use must be provided by the opponent, the proprietor of the earlier mark.
73 It follows from the foregoing that, in the context of opposition proceedings, EUIPO cannot of its own motion determine genuine use of the earlier mark but must base its decision in that regard on the proof of genuine use provided by the opponent.
74 In view of the finding that it was possible to reach in paragraph 65 above solely on the basis of the evidence produced by the opponent, but without taking into account either the possible existence of promotional material for wine exported under the earlier Spanish word mark (see also paragraph 68 above), or the supposed existence of invoices other than those produced by the opponent, it must be held, supposing that the complaints made by the applicant in the third plea in law are well founded, that the Board of Appeal’s error, which would have consisted of taking into account in the contested decision non-existent promotional material or hypothetical invoices as evidence, would not have affected the validity of that decision as regards its conclusion that there had been genuine use of the earlier Spanish word mark for ‘wines’ in Class 33. Therefore, such an error could not justify its annulment. This complaint must therefore be rejected as ineffective.
75 For all the foregoing reasons, the second and third pleas in law must be rejected as, in part, ineffective and, as regards the rest, unfounded.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
76 As regards the existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal commenced by specifying, in paragraph 49 of the contested decision, that the relevant territory was Spain, as the earlier mark was a Spanish mark, then by confirming, in paragraph 52 of that decision, that the relevant public was the general public whose level of attention was average, since the goods designated by the mark applied for, and ‘wines’ in Class 33, and those covered by the earlier Spanish word mark, were everyday consumer goods.
77 As regards comparison of the goods, the Board of Appeal, in paragraphs 54 and 55 of the contested decision, upheld the Opposition Division’s assessments, which were not contested by the parties to the proceedings before it, that the goods at issue were partly identical and partly similar, to varying degrees.
78 As is apparent from paragraph 7 of the contested decision, in the first to fifth indents under the heading ‘Likelihood of confusion’, the Opposition Division had found, in the decision of 27 June 2018, first of all that the ‘beer and brewery products’ falling within Class 32, referred to in the mark applied for were similar, to an average degree, to ‘wines’ in Class 33, covered by the earlier Spanish word mark, to the extent that all those goods constituted alcoholic drinks intended for the general public. Secondly, it had found that the ‘wine’, ‘low-alcohol drinks’, ‘alcoholic fruit drinks’, ‘alcoholic carbonated drinks other than beers’ and ‘wine-based aperitifs’ in Class 32, referred to in the mark applied for, were identical to ‘wines’ in Class 33, covered by the earlier mark, because the names of those goods were identical or synonymous, that they were each included in the other or that they overlapped. Thirdly, it had decided that ‘cider’, ‘perry’, ‘bitters’, ‘baijiu’, ‘aperitifs’, ‘cocktails’, ‘mead’ (hydromel), ‘nira’, ‘sake’, ‘rice alcohol’, ‘spirits and liqueurs’, ‘alcoholic bitters aperitifs’, ‘liqueur-based aperitifs’, ‘pre-mixes’, ‘alcoholic cocktails containing milk’, ‘alcoholic beverages containing fruit’, ‘pre-mixed alcoholic beverages other than beer-based’, ‘coffee-based alcoholic beverages’, ‘tea-based alcoholic beverages’, ‘beverages containing wine’, ‘rum-based beverages’ and ‘wine and fruit-juice based beverages’ in Class 32, referred to in the mark applied for, were similar, to an average degree, to ‘wines’ in Class 33, covered by the earlier mark. Fourthly, it had observed that the ‘edible alcoholic beverages’ and the ‘alcoholic jellies’ in Class 32, referred to in the mark applied for, were similar, to an average degree, to ‘wines’ in Class 33, covered by the same earlier mark, as those goods could compete, be directed towards the same section of the public, be produced by the same manufacturers and be distributed via the same distribution channels. Fifthly, it had found that ‘alcoholic energy drinks’ were similar, to an average degree, to ‘wines’ in Class 33, covered by the earlier mark at issue, to the extent that those goods were aimed at the same section of the public and distributed via the same distribution channels.
79 Regarding the comparison of the signs, in paragraphs 58 to 63 of the contested decision, the Board of Appeal did not identify in the marks at issue any elements that were dominant or more distinctive than the others. It considered that the relevant public would associate the earlier Spanish word mark with the Spanish word ‘infinito’ and that, despite the syllables in that word being separated by dots, would recognise the word ‘infinitude’ in the mark applied for, which it would associate with the Spanish word ‘infinitud’. Consequently, it took the view that those marks should be compared in their entirety. Due to the co-occurrence of numerous letters, occupying the same positions in the word elements of the marks, it found in paragraphs 64 to 66 of the contested decision that they were similar, at least to a low degree visually and to a higher than average degree phonetically. Furthermore, it considered, in paragraph 67 of that decision, that the relevant public would associate both marks with the same concept of ‘infinity’ or with the ‘state or quality of being infinite’, so that they were similar to a high degree, conceptually.
80 For the purposes of assessing the inherent distinctiveness of the earlier Spanish word mark, in paragraphs 68 to 73 and 77 of the contested decision, the Board of Appeal considered that the relevant public would associate it with the Spanish word ‘infinito’, but that, to the extent that this word was devoid of any meaning as regards the goods in question, the mark should be deemed to have an average level of inherent distinctiveness. The mere fact that several marks containing or consisting of words similar to the word ‘infinite’, such as the EU mark INFINITUS registered under number 1 135 920, had already been registered for goods in Classes 32 and 33 did not call into question such a conclusion, since, in accordance with case-law, it was not possible to deduce from that that those marks had actually been used and had coexisted peacefully on the market, and that the relevant public had thereby been exposed to widespread use of them and had become used to these words being used for the goods in question. Moreover, it had not been submitted that the earlier Spanish word mark had acquired an enhanced distinctive character through use.
81 In the context of the global assessment of the likelihood of confusion, the Board of Appeal asserted in paragraphs 74 to 80 of the contested decision that, in view of the average level of the relevant public’s attention, the average inherent distinctiveness of the earlier Spanish word mark, the identity or similarity of the goods in question, the similarity of the signs, which was at least of a low degree visually, a higher than average degree phonetically and a high degree conceptually, as well as of the higher relative significance of the phonetic similarity as regards wines, the existence of a likelihood of confusion on the part of that public could not be excluded. That finding could not be called into question on the ground that specific mandatory information appeared on bottles of wine, inasmuch as that information was not included in the registered trade marks and would not be perceived by the public as being constituent parts of those marks. Likewise, that finding could not be called into question for the same reasons as those set out in paragraph 80 above, on the ground that several trade marks comprising or consisting of words similar to the word ‘infinite’, such as the EU trade mark INFINITUS, had already been registered for the goods in Classes 32 and 33.
82 The applicant claims that, in the contested decision, the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001, in finding the existence of a likelihood of confusion, within the meaning of that provision, whereas in the present case, such a risk was excluded.
83 The applicant does not dispute the Board of Appeal’s assessment that the relevant territory is Spain, the relevant public is the general public and the goods in question are identical in part and similar in part, to varying degrees. However, it disputes the relevant public’s level of attention, which in its view is not uniformly average but may, depending on the levels of sophistication of the consumers and of the goods, vary from average to slightly higher than average.
84 As regards comparison of the signs, the applicant contests the Board of Appeal’s finding, in paragraphs 65 to 67 of the contested decision, that the signs were slightly similar visually, of above average phonetic similarity and strongly similar conceptually.
85 According to the applicant, the signs at issue are not visually similar. That results from the fact that the letters in the mark applied for form five units of two letters, separated by spaces and dots, that this extended and elongated configuration differs significantly from that of the earlier Spanish word mark, that the final sections of the marks differ visually, in that they are not composed of the same letters, and that the mark applied for, as a figurative mark, is stylised. The Board of Appeal identified a visual similarity between those marks by starting from the premiss, in paragraphs 60 and 65 of the contested decision, that the relevant public would recognise the word ‘infinitude’ in the mark applied for.
86 Furthermore, the applicant claims that the signs at issue are very slightly similar, perhaps not similar at all, phonetically. That is because, first, the letters in the mark applied for form five units of two letters, separated by spaces and dots, and that configuration implies silence between the pronunciation of each syllable, which introduces a fundamental difference between the rhythms of pronunciation of that mark and of the earlier Spanish word mark. Secondly, the word stress is different in the marks, that is, it falls on the beginning or the middle of the earlier mark, but on the end of the mark applied for. Thirdly, the final sections of those marks are pronounced differently, since they are not composed of the same letters.
87 Lastly, the applicant considers that the signs at issue are slightly similar, perhaps not similar at all, conceptually. That stems from the fact that the English word ‘infinitude’ is not well known to the average consumer within the Spanish general public, unlike the word ‘infinite’, which forms part of basic English vocabulary and is better known, and that the first word would instead be perceived as a fanciful term. Even starting from the opposite premiss, the average consumer would not be able to recognise the first word in the mark applied for, since the letters in it are split, by spaces and dots, into five combinations of two letters, of which four, namely ‘in’, ‘ni’, ‘tu’ and ‘de’ have a meaning in Spanish which is well known and can be confirmed by an online search of Spanish reference dictionaries. It is, therefore, likely that the relevant public would perceive the mark as a fanciful combination of five syllables or, at the very least, as being devoid of any clear meaning.
88 As regards the inherent distinctiveness of the earlier Spanish word mark, the applicant disputes the Board of Appeal’s finding, set out in paragraph 73 of the contested decision, that it was average. It refers in this regard to four decisions in which EUIPO found that the average consumer within the general public in Europe was deemed to know words in basic English vocabulary, such as the words ‘infinite’ or ‘infinity’, and that those words were descriptive and not distinctive for different types of services and goods, other than wines. The word ‘infinite’ is also descriptive and not distinctive for wines, inasmuch as it describes certain of their qualities, such as the potential for ageing and for unlimited storage or for an infinitely lingering finish (the length of time the aromas of a wine last in the mouth). In support of its assertions, the applicant produced various documents in Annexes A.7 to A.12 to the application. Failing being considered ‘descriptive’ and, as such, not distinctive, the applicant submits that the latter word ‘infinite’ should have been regarded as being non-distinctive, for the reason that it contains a laudatory message for the ‘wines’. As EUIPO has already found in three decisions and as the Board of Appeal has itself recognised in paragraph 61 of the contested decision, the words ‘infinite’, ‘infinity’ or ‘limitless’ would convey a laudatory message, like a notion that the goods or services concerned would be ‘unlimited (on request)’ or that they could be ‘requested or obtained without limit’. Owing to its descriptive and non-distinctive character, that earlier mark should have been denied any protection or, at the very least, should have benefited from very limited protection only. That explains, moreover, why several marks containing the element ‘infini’, such as the EU trade mark INFINITUS, had already been registered for the goods in Classes 32 and 33 and have coexisted peacefully on the market.
89 With regard to the likelihood of confusion, the applicant criticises the Board of Appeal for having incorrectly found, in paragraph 80 of the contested decision, that there was a likelihood of confusion, by wrongly postulating, first, that the signs at issue were similar and, secondly, that the earlier Spanish word mark had average inherent distinctiveness. In reality, the overall impression conveyed by the marks at issue is so different that those marks should be regarded overall as not being similar. Moreover, for the reasons already set out in paragraph 88 above, the earlier Spanish word mark should have been denied any protection or, at the very least, should have benefited from very limited protection only.
90 EUIPO disputes the applicant’s arguments.
91 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 must not be registered if, for reason of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services designated by the two 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.
92 In this case, none of the parties, whether or not they are seeking annulment of the contested decision, is challenging the Board of Appeal’s assessments that the relevant territory is Spain and the relevant public is the general public. Having regard to the grounds adopted by the Board of Appeal in the contested decision (see paragraph 76 above), these assessments are well founded and can be confirmed by the Court.
93 However, the applicant disputes the Board of Appeal’s assessment that the general public’s level of attention, when purchasing the goods in question, will be average, on the ground that, in reality, it would be likely to vary from average to slightly higher than average, depending on the sophistication of both the consumers and the goods.
94 In this regard, it should be borne in mind that, according to settled case-law, in the context of assessing the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, account must be taken of the average consumer of the category of goods or services concerned, who is, in principle, 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 depending on the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
95 In that context, it is for EUIPO to take into account the average consumer of the categories of goods or services referred to in the mark applied for and covered by the earlier mark, and not a particular type of consumer of certain goods or services within larger category of goods or services (see, to that effect, judgment of 19 January 2017, Stock Polska v EUIPO – Lass & Steffen (LUBELSKA), T‑701/15, not published, EU:T:2017:16, paragraph 24 and the case-law cited).
96 It is apparent from settled case-law that the average consumer, within the general public, will demonstrate an average level of attention when purchasing alcohol (see judgment of 16 February 2017, DMC v EUIPO – Etike’ International (De Giusti ORGOGLIO), T‑18/16, not published, EU:T:2017:85, paragraph 24 and the case-law cited).
97 The applicant’s argument that the Board of Appeal should have taken account of the sophistication of certain consumers and of certain goods cannot, therefore, succeed, as it concerns only a particular type of consumer, within the general public, and of goods, within larger categories of goods in question. Indeed the categories of goods at issue, such as are described in paragraph 78 above, are not limited to alcohol or to sophisticated alcoholic goods (jellies) and the average consumer of these categories of goods is not necessarily sophisticated.
98 It follows, having regard to the case-law cited in paragraphs 94 to 96 above, that the Board of Appeal did not err in finding that the average consumer, within the general public, would demonstrate an average level of attention when purchasing the goods in question.
99 As regards the comparison of the goods, none of the parties, whatever the submissions being made, criticises the Board of Appeal’s assessments that the goods at issue were identical in part and similar in part, to varying degrees.
100 However, it should be borne in mind that an absence of challenge by parties seeking annulment of a Board of Appeal’s decision, in respect of certain factors essential to the analysis of a likelihood of confusion, does not prejudice how the Court may or must review the validity, since these factors constitute an essential stage of the reasoning that it follows in order to carry out that review. Once one of the parties seeking annulment of the Board of Appeal’s decision has called into question the latter’s assessment as to the likelihood of confusion, then in accordance with the principle of the interdependence of the factors taken into account, in particular the similarity of the marks and of the goods and services covered, the Court is competent to examine the Board of Appeal’s assessment of those factors (see, to that effect, judgment of 18 December 2008, Les Éditions Albert René v OHMI, C‑16/06 P, EU:C:2008:739, paragraph 47). Indeed, when it is called upon to assess the legality of a decision of one of the Boards of Appeal of EUIPO, the Court may not be bound by an incorrect assessment of the facts by that Board of Appeal, since that assessment is part of the findings whose legality is being disputed before it (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 48).
101 In the present case, the assessments made by the Opposition Division to which Board of Appeal’s assessments concerning the similarity of the goods refer, lead to a finding that the goods at issue are identical in part and similar in part to an average degree and not, as stated by the Board of Appeal in the contested decision, to varying degrees. Those assessments are well founded, for the reasons set out by the Opposition Division in the decision of 27 June 2018 (see paragraph 78 above) and can be confirmed by the Court, with the exception of those finding an average degree of similarity between the ‘beer and brewery products’ in Class 32, referred to in the mark applied for and ‘wines’ included in Class 33, covered by the earlier Spanish word mark.
102 Even if beer and wine both constitute alcoholic beverages, obtained by a fermentation process and consumed during a meal or drunk as an aperitif and are, to a certain extent, competing products, they differ significantly as regards their composition and their method of production, so that they are similar only to a low degree (judgment of 18 June 2008, Coca-Cola v OHIM – San Polo (MEZZOPANE), T‑175/06, EU:T:2008:212, paragraphs 63 to 70).
103 It is appropriate, therefore, to proceed with the examination of the present action, taking into account that the Board of Appeal erred in having found an average, rather than low, degree of similarity between the ‘beer and brewery products’ in Class 32, referred to in the mark applied for and ‘wines’ in Class 33, covered by the earlier Spanish word mark.
104 As regards the comparison of the signs, the applicant criticises the Board of Appeal for having found, in paragraphs 65 to 67 of the contested decision, that the signs in question had a low degree of visual similarity, were phonetically similar to a higher than average degree and were strongly similar conceptually, when those signs are very slightly similar visually, very slightly, perhaps not at all, similar phonetically and slightly, perhaps not at all, similar conceptually.
105 As a preliminary point, it should be recalled that two marks are similar, within the meaning of Article 8(1)(b) of Regulation 2017/1001, when, from the point of view of the public concerned, they are at least identical in part as regards one or more relevant aspects (see judgment of 17 December 2009, Notartel v OHIM – SAT.1 (R.U.N.), T‑490/07, not published, EU:T:2009:522, paragraph 47 and the case-law cited). As is apparent from the case-law, the visual, phonetic and conceptual aspects are relevant, the assessment of similarity having to be based on the overall impression created by the marks, taking account, in particular, of their distinctive and dominant elements (see judgment of 17 December 2009, R.U.N., T‑490/07, not published, EU:T:2009:522, paragraph 48 and the case-law cited).
106 In this case, the applicant starts from the premiss that the average consumer within the Spanish general public cannot recognise the term ‘infinitude’ in the mark applied for, in so far as the letters in it are separated, by spaces and dots, into five groups of two letters, four of which, namely ‘in’, ‘ni’, ‘tu’ and ‘de’ correspond to Spanish words.
107 EUIPO defends the underlying reasoning in paragraph 60 of the contested decision, according to which the relevant public could be found to identify the word ‘infinitude’ in the mark applied for, to the extent that, in accordance with the case-law, it perceives the meaning due to the resemblance between this English word and the Spanish word ‘infinitud’. Following the case-law, this finding is not altered by the presence of dots and spaces splitting this word into five groups of letters.
108 In this regard, it should be recalled that, in accordance with the case-law, even if the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he or she will recognise word elements which, for him or her, suggest a specific meaning or which resemble words with which he or she is familiar. Identifying word elements which consumers can understand is relevant from the perspective of the phonetic, visual and conceptual similarities between the signs (see judgment of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Redrock Construction (REDROCK), T‑548/12, EU:T:2015:478, paragraph 37 and the case-law cited).
109 Furthermore, it must be held that the relevant public understands the meaning produced by signs composed of several word elements, reproduced separately, by regrouping those elements to form expressions which convey a precise meaning or resemble words it recognises, when that understanding requires no particular intellectual effort (see, to that effect, judgments of 6 September 2013, Eurocool Logistik v OHIM – Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraphs 101 to 109, and of 28 March 2019, Robert Bosch v EUIPO (Simply. Connected.), T‑251/17 and T‑252/17, EU:T:2019:202, paragraph 62).
110 It is indisputable and, moreover, is not disputed by the parties, that the word element ‘infinitude’ has a very strong resemblance to the Spanish word ‘infinitud’, a feminine noun used to describe the state or quality of being infinite or without limits. It must therefore be held that the relevant public will immediately identify, within the mark applied for, the word ‘infinitude’, which resembles the Spanish word ‘infinitud’, which is recognisable to and has a precise meaning for that public. The fact that the mark applied for is composed of five groups of two letters, separated by dots and spaces, corresponds to a commonplace graphical method of splitting words into syllables which cannot divert that public’s attention from the fact that the grouping of those syllables, following the usual direction of reading from left to right, forms a word which very strongly resembles a word it knows and which has, for it, a precise meaning.
111 The applicant’s assumption, from the presence of dots and spaces in the mark applied for, that the relevant public would break that mark down into five groups of two letters, four of which correspond with Spanish words, must be rejected as implausible, since any such understanding of the mark by that public would not confer on it any general meaning.
112 The Board of Appeal was therefore entitled to find in the contested decision that the relevant public would understand the succession of groups of letters ‘in’, ‘fi’, ‘ni’, ‘tu’ and ‘de’, as they appear in the mark applied for, as the splitting of syllables in a word which very strongly resembles the Spanish word ‘infinitud’, rather than as a succession of five words, four of which correspond to Spanish words, devoid of general meaning.
113 As regards the comparison of the signs, it should be noted, first of all, that even if the applicant disputes the inherent distinctiveness of the earlier Spanish word mark, neither it nor EUIPO calls into question the Board of Appeal’s assessments that those marks do not contain elements which are dominant or any more distinctive than the others, such that they must be compared in their entirety (see paragraph 79 above).
114 Next, as regards the visual comparison of the signs, the arguments the appellant uses to criticise the Board of Appeal, for not having found that the signs in question were similar to a very low degree, rest, in essence, on the premiss that the relevant public would not identify the word ‘infinitude’ in the mark applied for. Yet, as already set out in paragraphs 106 to 112 above, such a premiss is incorrect. Accordingly, the Board of Appeal was fully entitled to find, in paragraph 65 of the contested decision, that the signs could be regarded as visually similar, at least to a low degree, for the reason that they differed only in having two extra letters, ‘u’ and ‘d’, and in the syllables being separated by the insertion of dots and spaces in the mark applied for, and that the rest of them matched, particularly as regards their initial parts, ‘infinit’, to which the consumer normally attaches the most importance (see, to that effect, judgments of 28 October 2010, Farmeco v OHIM – Allergan (BOTUMAX), T‑131/09, not published, EU:T:2010:458, paragraph 35 and the case-law cited, and of 18 September 2012, Scandic Distilleries v OHIM – Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 40 and the case-law cited).
115 Furthermore, as regards the phonetic comparison of the signs, the arguments by which the applicant criticises the Board of Appeal, for not having found that the signs in question were similar to a very low degree, perhaps not similar at all, also rest on the premiss that the relevant public would not identify the word ‘infinitude’ in the mark applied for and would pronounce it as a sequence of five separate words. Yet, as already set out in paragraphs 106 to 112 above, such a premiss must be rejected. Accordingly, the Board of Appeal was entitled to find, in paragraph 66 of the contested decision, that these signs could be regarded as phonetically similar to a higher than average degree, because they differed only in having two extra letters, ‘u’ and ‘d’ in the mark applied for and that the rest of them matched, in particular their initial parts, ‘infinit’, to which the consumer normally attaches the most importance, having regard to the case-law cited in paragraph 114 above. Although, as the applicant claims, the rules of word stress may introduce some differences in the pronunciation of the signs, those differences would largely be neutralised by the resemblances resulting from the identical sounds of the initial parts of those words.
116 Lastly, as regards the conceptual comparison of the signs, the appellant’s arguments that the Board of Appeal should have found that those signs were similar to a low degree, perhaps not similar at all, rests again on the premiss that the relevant public would not identify the word ‘infinitude’ in the mark applied for but would regard it as a sequence of five words, four of which correspond to Spanish words, devoid of general meaning. For the reasons already set out in paragraphs 106 to 112 above, that premiss, which would, if accepted, lead to a finding that no conceptual comparison is possible in the present case, is incorrect. Even if, as the applicant claims, that public does not know the English word ‘infinitude’, the fact remains, as the Board of Appeal correctly observed in paragraph 60 of the contested decision, that it associates that word, immediately and without further thought, with the Spanish word ‘infinitud’, a feminine noun used to describe the state or quality of being infinite or without limits. Similarly, while that public does not necessarily know the English word ‘infinite’ (see, to that effect, paragraph 119 below), the fact remains, as the Board of Appeal correctly stated in paragraph 59 of the contested decision, that it associates that word, immediately and without further thought, with the Spanish word ‘infinito’, a noun or adjective that describes what does not and cannot have an end or limits and which refers to the concept of infinity. Accordingly, the Board of Appeal was fully entitled to find, in paragraph 67 of that decision, that the signs could be regarded as conceptually similar to a high degree because they were associated with the same concept of infinity.
117 As regards the inherent distinctiveness of the earlier Spanish word mark, the applicant disputes the Board of Appeal’s finding, in paragraph 73 of the contested decision, that it is average, on the ground that ‘infinite’ is a descriptive and non-distinctive term for wines.
118 In that regard, it must be held, first of all, that in so far as the applicant seeks to rely on the evidence produced in Annexes A.7 to A.12 to the application, it is not possible for the Court to take that evidence into account, since it is inadmissible (see paragraph 21 above).
119 Secondly, in so far as the applicant claims that the word ‘infinite’ is a word in basic English vocabulary, the meaning of which can be deemed to be known by the average consumer within the European general public, it must be borne in mind that, pursuant to settled case-law, knowledge of a foreign language cannot, in general, be presumed (judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 83; see also, to that effect, judgment of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 40). However, it is apparent from the case-law that a large proportion of EU consumers do know basic English vocabulary (see, to that effect, judgments of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM – Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 53; of 11 May 2010, Wessang v OHIM – Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 52; and of 15 October 2018, Apple and Pear Australia and Star Fruits Diffusion v EUIPO – Pink Lady America (WILD PINK), T‑164/17, not published, EU:T:2018:678, paragraph 58), but not other English words or their meaning, which cannot be considered part of this basic vocabulary (see, to that effect, judgments of 16 October 2014, Junited Autoglas Deutschland v OHIM – Belron Hungary (United Autoglas), T‑297/13, not published, EU:T:2014:893, paragraphs 32 and 42, and of 16 February 2017, Jaguar Land Rover v EUIPO – Nissan Jidosha (Land Glider), T‑71/15, not published, EU:T:2017:82, paragraph 45). It is not obvious that the word ‘infinite’ forms part of basic English vocabulary. In any event, that is of no relevance in the present case, since the relevant public associates that word, immediately and without further thought, with the Spanish word ‘infinito’, a noun or adjective that describes that which does not and cannot have an end or limits and which refers to the concept of infinity.
120 Thirdly, in so far as the applicant claims that the term ‘infinite’ (understood in the sense of the Spanish word ‘infinito’) is descriptive and not distinctive for the wines, such that the earlier Spanish word mark should have been denied any protection or, at the very least, should have benefited only from extremely limited protection, it must, first of all, be recalled that, according to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned to perceive, immediately and without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 24 February 2016, REAL HAND COOKED, T‑816/14, not published, EU:T:2016:93, paragraph 63 and the case-law cited). The word sign must thus serve to designate in a specific, precise and objective manner the goods or services in question or one of their essential characteristics (see judgment of 2 December 2008, Ford Motor v OHIM (FUN), T‑67/07, EU:T:2008:542, paragraph 32 and the case-law cited).
121 Moreover, a word sign is devoid of inherent distinctiveness to the extent that, in at least one of its possible meanings, it designates a quality or a characteristic of the goods or services concerned which, without being precise, stems from promotional or advertising information that the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services concerned (see judgment of 24 September 2019, Daimler v EUIPO (ROAD EFFICIENCY), T‑749/18, not published, EU:T:2019:688, paragraph 34 and the case-law cited). The fact that an undertaking wishes to confer a positive image on its goods or its services, indirectly and in an abstract manner, without informing the consumer directly and immediately of one of the qualities or specific characteristics of the goods or services concerned, pertains to evocation and not to the description of those goods or services or of one of their essential characteristics (see, to that effect, judgment of 2 December 2008, FUN, T‑67/07, EU:T:2008:542, paragraph 33 and the case-law cited).
122 Furthermore, according to settled case-law, a word sign which is descriptive of the characteristics of goods or services concerned is, because of that, necessarily devoid of any inherent distinctiveness regarding those goods or services (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46, and of 14 June 2007, Europig v OHIM (EUROPIG), T‑207/06, EU:T:2007:179, paragraph 47).
123 Finally, according to settled case-law, to avoid infringing Article 8(1)(b) of Regulation 2017/1001, a certain inherent distinctiveness must be recognised in a trade mark registered in a Member State when that mark is invoked in support of opposition to the registration of an EU trade mark. That requirement, which is imposed on the adjudicating bodies of EUIPO and on the Court, including when the latter hears an appeal in opposition proceedings, results from Article 4(1)(b) of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1), which provides that marks can only be registered at national level if they display inherent distinctiveness (see, to that effect, judgment of 7 November 2019, Local-e-motion v EUIPO – Volkswagen (WE), T‑568/18, not published, EU:T:2019:783, paragraph 34). Therefore, it cannot be held in the context of an appeal before the Court that the earlier mark, on which the opposition proceedings were based, has a descriptive character or is devoid of any inherent distinctiveness. Indeed, such an assessment would jeopardise the coexistence of European Union and national marks and Article 8(1)(b) of Regulation 2017/1001, interpreted in conjunction with paragraph 2(a)(ii) of the same article (see, to that effect, judgment of 7 November 2019, WE, T‑568/18, not published, EU:T:2019:783, paragraphs 33 to 36 and the case-law cited).
124 In the present case, the applicant cannot validly claim, having regard to the case-law cited in paragraph 123 above and to the fact that the earlier Spanish word mark had been and remained validly registered in Spain for the wines in Class 33, that in the contested decision the Board of Appeal should have denied any protection to that mark on the ground that the term ‘infinite’ was descriptive and non-distinctive in regard to those same goods.
125 In the alternative, the applicant claims, in essence, that if a certain degree of inherent distinctiveness had to be recognised in the earlier Spanish word mark, that could only be to a low degree, having regard to EUIPO’s previous decision-making practice, which was relevant to the assessment of the likelihood of confusion in this case.
126 In that regard and first of all, in so far as the applicant refers to six decisions in which EUIPO found descriptive or laudatory and non-distinctive character in signs containing the words ‘infinite’, ‘infinity’ or ‘limitless’, it is important to bear in mind that, according to settled case-law, the decisions that the Boards of Appeal are asked to take pursuant to the version of EU trade mark regulation applicable to the facts of the case, concerning registration of a sign as an EU trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of the previous decision-making practice of those Boards of Appeal (see order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 36 and the case-law cited).
127 Furthermore, although EUIPO, having regard to the principles of equal treatment and of good administration, must take into account decisions already adopted and consider with particular care whether it should decide in the same way or not, compliance with the principle of legality requires that the examination of any trade mark application be stringent and full and be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria applicable to the factual circumstances of each particular case (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73, 74 and 77, and order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37 and the case-law cited). In particular, it is appropriate to take into account the fact that respect for the principle of equal treatment must be reconciled with respect for the principle of legality, according to which no person may rely, to his own advantage, on an unlawful act committed to the benefit of others (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76, and of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 67).
128 Lastly, it has previously been held that, in so far as the Board of Appeal had sufficiently set out the facts and the legal considerations having decisive importance in the context of its decision, it was not required to give specific reasons in order to justify its decision in relation to previous decisions by EUIPO which the parties had cited in their written pleadings before it or in relation to EU case-law (judgment of 2 July 2015, BH Stores v OHIM – Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 43).
129 In the present case, it follows from a combined reading of paragraphs 59, 67 and 72 of the contested decision that the Board of Appeal’s assessment that the degree of inherent distinctiveness in the earlier Spanish word mark is average is based on the finding that that mark is associated with the Spanish word ‘infinito’, a noun or adjective describing that which does not and cannot have an end or limits and which refers to the concept of ‘infinity’, such that it would have no particular meaning for wines.
130 Since, in essence, in the contested decision the Board of Appeal held that, for the relevant public, the concept of ‘infinity’ conveyed by the earlier Spanish word mark had no particular meaning for the wines in Class 33, in respect of which that mark had been and remained validly registered, it was not required, in the light of the case-law cited in paragraph 128 above, to give specific reasons to justify that assessment having regard to the other EUIPO decisions cited by the applicant.
131 In any case, the facts upon which the EUIPO decisions cited by the applicant were based are not the same as those underlying the contested decision. First, those decisions related to different word signs, such as ‘infinity’ or ‘limitless’, or to signs in which the word ‘infinite’ is directly associated with the names of the goods or services concerned, such as ‘infinite video’ or ‘infinite socks’ or to one of their essential characteristics, such as ‘infinite shine’, for nail care products, or ‘infinite bright’, for skincare preparations and for non-medical toiletries. Secondly, all those decisions related to goods or services, such as computer and video goods or services, socks or support stockings, nail care products, irrigation equipment, skincare preparations or non-medical toiletries, as well as computer, electronics and internet goods or services, which had no relevance for wines or to the English-speaking element of the general public in the European Union.
132 The applicant also disputes, in essence, the Board of Appeal’s assessment that the concept of infinity conveyed by the earlier Spanish word mark does not display a sufficiently direct and specific link with the wines in Class 33 to enable the relevant public to perceive, immediately and without further thought, a description of their essential characteristics, on the ground that that concept could be used to describe certain qualities of wines, such as the potential for ageing and for unlimited storage or for an infinitely lingering finish. Furthermore, it claims that this concept would convey a laudatory message, such as the idea that the wines concerned would be supplied ‘without limits (on request)’ or that they could be ‘requested and obtained without limit’.
133 In the present case, it is important to note that, when used in a commercial context, the concept of infinity tends to be perceived by the relevant public less as a description of that which does not and cannot have an end or limits than as an informal or hyperbolic reference to something very durable or multifaceted. However, even with such a meaning, that concept could assume different meanings in relation to wines. It could be perceived, as the applicant submits, as an indication that wines are capable of aging and being stored for a very long time or that their lingering finish is exceptional. Equally, it could be perceived in numerous other ways, for example as a reference to the fact that the wines concerned could be the source of wide-ranging or long-lasting feelings, wishes and pleasures.
134 The link between the concept of infinity and wines is thus too vague, indeterminate and subjective to confer a descriptive character on this concept in relation to those goods.
135 Moreover, in so far as the concept of infinity could be perceived as capable of conferring a positive image on the wines it designates, for example by creating in the mind of the relevant public the idea that those wines may be the source of wide-ranging or long-lasting feelings, wishes and pleasures, that notion arises from the indirect and abstract evocation or suggestion of an image with a promotional purpose, rather than from promotional or advertising information describing, however vaguely, a quality or an essential characteristic of the wines so designated.
136 For these reasons, the Board of Appeal was fully entitled to find in the contested decision that the earlier Spanish word mark was not descriptive or laudatory and that it was not, therefore, devoid of any distinctive character but had an inherent distinctiveness to an average degree.
137 Lastly, in so far as the applicant seeks to rely on the fact that several marks containing the element ‘infini’, such as the EU trade mark INFINITUS, have been registered for goods in Classes 32 and 33 and have coexisted peacefully on the market in order to demonstrate the low degree of inherent distinctiveness in the earlier Spanish word mark, it should be borne in mind that, according to well-established case-law, first, the relevant factor for the purposes of disputing the distinctive character of an element of a mark is its actual presence on the market and not its presence in registers or in databases (see judgment of 25 May 2016, Ice Mountain Ibiza v EUIPO – Marbella Atlantic Ocean Club (ocean beach club ibiza), T‑5/15, not published, EU:T:2016:311, paragraph 35 and the case-law cited). Secondly, coexistence between earlier marks can only be taken into account if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark has duly demonstrated that that coexistence is based on the absence of a likelihood of confusion, on the part of the relevant public, between the earlier marks upon which it relies and the earlier mark upon which the opposition is based, and provided that the earlier marks in question and the marks at issue are identical (see judgment of 25 May 2016, ocean beach club ibiza, T‑5/15, not published, EU:T:2016:311, paragraph 36 and the case-law cited).
138 In the present case, in the course of the proceedings before EUIPO, the applicant did not provide evidence which would have enabled it to establish the actual use of the earlier marks on which it was relying, or the relevant public’s proven knowledge of them, or their peaceful coexistence on the market based on the absence of a likelihood of confusion.
139 In those circumstances, the Board of Appeal was fully entitled to reject, in paragraph 79 of the contested decision, the applicant’s argument based on the alleged peaceful coexistence of several marks containing the element ‘infini’.
140 As the examination of the first plea in law and of the complaints raised therein, against the factors taken into account by the Board of Appeal to arrive at the finding, following a global assessment, of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, has not disclosed any error that vitiates the contested decision with regard to the contested goods other than the ‘beer and brewery products’ in Class 32, it is not necessary, in the present action, to call that assessment into question as regards those goods.
141 For the purposes of assessing a likelihood of confusion in relation to the ‘beer and brewery products’ in Class 32, referred to in the mark applied for, it is appropriate to weigh in the balance the low degree of similarity of those goods and ‘wines’ in Class 33 covered by the earlier Spanish word mark, the average level of attention of the relevant public, the average degree of inherent distinctiveness of the earlier Spanish word mark, the similarity of the signs at issue – which is of a low degree visually, of a higher than average degree phonetically and of a high degree conceptually – and the higher relative significance of the phonetic similarity as regards beer and brewery products and wines bearing in mind that, in the alcoholic drinks sector in general, consumers are used to describing and to recognising those drinks by reference to the word element which identifies them, particularly in bars, discotheques, nightclubs and restaurants, where those drinks are ordered orally after their names have been seen on the menu or on the wine list (see judgment of 20 April 2018, Mitrakos v EUIPO – Belasco Baquedano (YAMAS), T‑15/17, not published, EU:T:2018:198, paragraphs 61 and 62 and the case-law cited).
142 Following a global assessment of all the factors referred to in paragraph 141 above, it must be held that, even for the ‘beer and brewery products’ in Class 32, referred to in the mark applied for and similar to a low degree to ‘wines’ in Class 33, covered by the earlier Spanish word mark, the Board of Appeal was fully entitled to find in the contested decision 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. Indeed, having regard, first, to the imperfect recollection that the relevant public will retain of the marks at issue after a purchase is made and, secondly, to the interdependence of all the factors in question, such a likelihood exists to the extent that the public, which may demonstrate an average level of attention, could be led to believe that the goods in question come from the same undertaking or from economically linked undertakings.
143 Thus, despite the error observed in paragraph 103 above, it is not necessary to annul the contested decision for infringement of Article 8(1)(b) of Regulation 2017/1001.
144 For all the foregoing reasons, the first plea in law must be rejected and, as all of the pleas relied upon in support of the present action are thus rejected, the action must be dismissed.
Costs
145 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.
146 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO, the other party not being party to these proceedings.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Osório & Gonçalves, SA, to pay the costs.
Tomljenović | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 23 September 2020.