JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
7 June 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark PORTO INSÍGNIA – Earlier EU word mark INSIGNIA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑33/22,
Vallegre, Vinhos do Porto, SA, established in Sabrosa (Portugal), represented by E. Armero Lavie, G. Marín Raigal and J. Oria Sousa-Montes, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, M. Eberl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Joseph Phelps Vineyards LLC, established in Saint Helena, California (United States), represented by S. Reinhard, lawyer,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse (Rapporteur) and B. Ricziová, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 2 February 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Vallegre, Vinhos do Porto, SA, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 October 2021 (Case R 894/2021-5) (‘the contested decision’).
Background to the dispute
2 On 22 February 2017, the applicant submitted an application to EUIPO for registration of the word mark PORTO INSĺGNIA as an EU trade mark.
3 The mark applied for designated the product in Class 33 within the meaning 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 corresponds to the following description: ‘Port wines in conformity with the specifications of the protected geographical indication Porto’.
4 On 26 May 2017, the intervener, Joseph Phelps Vineyards LLC, filed a notice of opposition to the registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based, inter alia, on the earlier EU word mark INSIGNIA filed on 16 October 2003 and registered on 27 January 2005 under number 3 412 293, designating the goods in Class 33 and corresponding to the following description: ‘Wine’ (‘the earlier mark’).
6 The ground relied on in support of the opposition was, inter alia, that referred to in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 Following the request made by the applicant, EUIPO invited the intervener to provide evidence of genuine use of the earlier marks relied on in support of the opposition. The intervener complied with the request within the time limit set.
8 On 18 March 2021, the Opposition Division upheld the opposition.
9 On 17 May 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal of EUIPO dismissed the appeal on the ground that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 was established having regard, in particular, to the overall similarity of the signs at issue and the identity of the goods at issue.
Forms of order sought
11 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– order EUIPO and, where appropriate, the other party to the proceedings before the Board of Appeal to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Preliminary observations
14 In view of the date of submission of the application for registration at issue, namely 22 February 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
15 Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision, by the applicant in the arguments raised and by EUIPO to Article 8(1)(b)(4) and (5) of Regulation 2017/1001 should be understood as referring to Article 8(1)(b)(4) and (5) of Regulation No 207/2009, which is identical in content.
Substance
16 In support of the action, the applicant raises a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it complains that the Board of Appeal considered that a likelihood of confusion was established even though the goods in question were not identical and the earlier mark and the mark applied for were not similar.
17 EUIPO and the intervener dispute the applicant’s arguments.
18 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
19 Where the protection of the earlier trade mark extends to the whole of the European Union, account must be taken of the perception of the conflicting trade marks by the consumer of the goods in question in that territory. However, it should be noted that, in order to refuse registration of an EU trade mark, it is sufficient that a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation No 207/2009 exists in a part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
20 In the present case, it is not disputed that the relevant public is the general public in the European Union with an average level of attention and that the Board of Appeal could validly base its analysis on the English-speaking part of that public.
Comparison of the goods
21 The Board of Appeal found that the ‘wine’ covered by the earlier mark constituted a category including the sub-category ‘Port wine’ and that the goods in question were therefore identical.
22 The applicant claims that the term ‘Porto’, designating the goods covered by the mark applied for, is a protected designation of origin (PDO) under Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 (OJ 2013 L 347, p. 671), and thus has a reputation. In its view, the goods covered by the earlier mark are in fact wines originating in California and will therefore not be confused with Port wines by the average consumer, given the difference between their geographical origins and their characteristics.
23 EUIPO and the intervener dispute the applicant’s arguments.
24 It should be noted that, where the goods or services covered by an earlier mark include the goods covered by the trade mark application, those goods or services are considered to be identical (see judgment of 5 February 2020, Globalia Corporación Empresarial v EUIPO – Touring Club Italiano (TC Touring Club), T‑44/19, not published, EU:T:2020:31, paragraph 91 and the case-law cited).
25 Furthermore, according to settled case-law, in order to assess the similarity or identity of the goods at issue, account must be taken of the wording of the goods covered by the conflicting trade marks and not of the goods actually marketed under those marks (see, to that effect, judgment of 3 April 2019, NSC Holding v EUIPO – Ibercondor (CONDOR SERVICE, NSC), T‑468/18, not published, EU:T:2019:214, paragraph 30 and the case-law cited).
26 In the present case, it must be noted that, as the Board of Appeal found, the goods covered by the trade mark application, namely ‘Port wine’, are included in the ‘wines’ covered by the earlier trade mark, which the parties do not dispute. Therefore, in application of the case-law cited in paragraphs 24 and 25 above, it must be concluded that the goods in question are identical. The arguments put forward by the applicant are not capable of calling that finding into question.
27 First, the fact that Port wine has PDO status and therefore complies with a precise specification, of which the geographical origin is an essential element, is not such as to call into question the fact that it is a wine. Consequently, that circumstance must be regarded as irrelevant in the context of the examination of the similarity or identity of the goods at issue (see, to that effect, judgment of 22 October 2015, Enosi Mastichoparagogon v OHIM – Gaba International (ELMA), T‑309/13, not published, EU:T:2015:792, paragraph 48).
28 Secondly, the applicant’s argument that the earlier mark designates ‘wines’, while the goods marketed under that mark relate to a narrower sub-category of goods, that of ‘wines originating in California’, is not convincing either, given that, according to its registration, that mark designated ‘wines’ in Class 33 without indication of geographical origin. As is clear from the case-law cited in paragraph 25 above, the comparison of the goods covered by the mark applied for and the earlier mark must be made on the basis of the goods as covered.
29 Moreover, genuine use of the earlier mark was demonstrated by the intervener before the Opposition Division in respect of goods in the category ‘wines’, which the applicant did not dispute.
30 Thirdly, the applicant’s allegation that the characteristics of the wine produced by the intervener under the earlier mark and of the Port wines are different is not such as to call into question the identity of the goods at issue. The fact that Port wine is a fortified and sweet wine is not sufficient to conclude that it does not fall within the category of ‘wines’.
31 Therefore, the Board of Appeal did not commit an error of assessment in considering the goods in question as identical.
Comparison of the signs
32 The global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the conflicting marks, be based on the overall impression produced by them, taking into account, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a trade mark as a whole and does not examine its individual details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
33 In the present case, before dealing with the question of the visual, phonetic and conceptual similarity of the conflicting trade marks, it is necessary to examine the Board of Appeal’s assessment of the distinctiveness of the conflicting trade marks and their components.
– The distinctive and dominant elements of the signs
34 For the purposes of assessing the distinctive character of a trade mark or of an element of a trade mark, it is necessary to examine the greater or lesser ability of that mark or element to identify the goods or services as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings. In making that assessment, regard must be had in particular to the intrinsic qualities of the trade mark or element in question with regard to the question whether or not it is devoid of any descriptive character of the goods or services concerned (judgments of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47, and of 17 March 2021, Chatwal v EUIPO – Timehouse Capital (THE TIME), T‑186/20, not published, EU:T:2021:147, paragraph 32).
35 Where certain elements of a trade mark are descriptive of the goods and services for which the mark is protected or of the goods and services designated by the application for registration, those elements are recognised as having only a weak or even very weak distinctive character. In most cases, such distinctive character can be recognised only by virtue of the combination they form with the other elements of the mark (see, to that effect, judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 49).
36 According to settled case-law, a term with a clear meaning is considered to be descriptive only if it bears a sufficiently direct and concrete relationship to the goods or services in question such as to enable the relevant public to perceive immediately, and without further reflection, a description of the goods and services in question or of one of their characteristics (see judgment of 10 October 2019, Kalypso Media Group v EUIPO – Wizards of the Coast (DUNGEONS), T‑700/18, not published, EU:T:2019:739, paragraph 47 and the case-law cited).
37 In the present case, the Board of Appeal considered, in essence, that the word ‘insignia’ had a clear meaning in English which was not descriptive of the goods in question and that, consequently, that element possessed normal intrinsic distinctiveness. According to that board, the element ‘porto’ contained in the mark applied for was, by contrast, descriptive and not distinctive.
38 The applicant points out, first of all, that the element ‘insignia’ or ‘insígnia’ is entirely laudatory, relying on several extracts in English, Spanish, Portuguese, Italian, German, French and Swedish from the online encyclopaedia Wikipedia relating to the term ‘insignia’ (Annex A.9 to the application). Next, it claims that that element is often used to designate quality wines, well-known wines or exemplary wines from a vineyard and that it is descriptive of the goods in question. In support of its argument, it finally refers to two applications for registration of the mark insignia which were rejected on the ground that the mark was descriptive and not distinctive. By contrast, according to the applicant, the element ‘porto’ in the mark applied for is dominant and distinctive and the relevant public tends to abbreviate that mark by simply calling it ‘porto’. It thus believes that the public will associate the element ‘porto’ with the porto marks held by it.
39 EUIPO and the intervener dispute the applicant’s arguments. The former submits that the applicant’s argument, supported by Annex A.9 to the application, that the element ‘insignia’ is often used to designate wines of renown or very-well-known wines is inadmissible, since it was presented for the first time before the General Court. In that regard, the part of that annex intended to support that argument is also inadmissible. In the intervener’s view, that annex is inadmissible in its entirety.
40 In the first place, it must be noted that Annex A.9 to the application contains screenshots containing linguistic and historical explanations of the term ‘insignia’ in various languages, as well as extracts from online dictionaries. As EUIPO also noted, those extracts are intended to demonstrate well-known facts, namely the meaning of the word ‘insignia’, and are therefore admissible.
41 In the second place, Annex A.9 to the application also contains screenshots of web pages showing bottles or brands of wine on which the word ‘insignia’ also appears. Those screenshots are intended to support the applicant’s argument that the element ‘insignia’ is often associated with well-known wines.
42 That evidence must be regarded as admissible. It follows from the case-law of the Court of Justice that, under Article 263 TFEU, read in the light of Article 47 of the Charter of Fundamental Rights of the European Union, an applicant must be able to challenge before the EU Courts every question of law or of fact on which an EU body bases its decisions (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 46). In the present case, the applicant’s argument is directed at the Board of Appeal’s finding that the element ‘insignia’ has normal inherent distinctiveness. That finding forms part of the factual and legal framework of the dispute before the Board of Appeal and, therefore, that argument and the evidence adduced in support of it are admissible.
43 It must therefore be examined whether those elements make it possible to establish a sufficiently direct and concrete link between those goods and the element ‘insignia’. As regards the extracts from the websites, set out in Annex A.9 to the application, it must be noted that they contain linguistic and historical explanations of the word ‘insignia’ in various languages. Only the English extracts are relevant in the present case, given the English-speaking part of the relevant public, which was chosen by the Board of Appeal as the basis for its analysis. However, it cannot be inferred from the English-language explanation of the word ‘insignia’ on the website of an online encyclopaedia, which is of a very general nature, that that part of the relevant public perceives that word as a laudatory element in relation to the goods in question. It is stated, inter alia, that an insignia is a distinctive mark of belonging to a group, a rank or an office, that, in the singular, that word usually designates an object made of metal or textile and that, in the plural, that word designates all of the parts of a decoration, or the various elements forming part of a rank, grade or dignity. Consequently, the applicant is not entitled to maintain that, for that part of the public, there is a sufficiently direct and concrete link between those goods and the element ‘insignia’.
44 Furthermore, the applicant’s argument that the element ‘insignia’ is not very distinctive because it is frequently used for goods in Class 33 does not call into question the Board of Appeal’s finding that that element has normal distinctive character.
45 The only evidence produced by the applicant in support of its argument for the purpose of identifying goods in Class 33 consists of extracts from websites displaying wine trade marks which are, in their presentation, associated with the word ‘insignia’. The mere listing of a relatively limited number of trade marks which are, on certain advertising websites, linked to that word, without any indication as to whether the relevant public is aware of those trade marks, does not allow the conclusion to be drawn that there is an association in the mind of that public between that word and those goods (see, to that effect and by analogy, judgment of 13 April 2011, Sociedad Agricola Requingua v OHIM – Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 35).
46 With regard to the trade mark applications relied on by the applicant in Annexes A.7 and A.8 to the application, it should be noted that the decisions which the Boards of Appeal of EUIPO are required to take, under Regulation No 207/2009, concerning the registration of a sign as an EU trade mark, are an exercise of a circumscribed power and not of a discretionary power. Consequently, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the EU Courts, and not on the basis of decision-making practice prior to those decisions (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
47 In any event, the trade mark applications rejected by the decisions of 5 December 2014 (registration number 1 216 600) (Annex A.7 to the application) and 14 March 2000 (registration number 000 186 171) (Annex A.8 to the application) related to goods in other classes, in particular badges, emblems and other insignia, in respect of which those marks were classified as descriptive and non-distinctive within the meaning of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001). Those decisions to refuse registration of the trade mark insignia, based on an absolute ground of refusal, cannot therefore call into question the decisions taken by the Opposition Division and the Board of Appeal in the present case, since they concerned different goods.
48 As regards the element ‘porto’, it must be noted that it is undeniably descriptive of the product covered by the mark applied for (see, to that effect, judgment of 8 September 2010, Quinta do Portal v OHIM – Vallegre (PORTO ALEGRE), T‑369/09, not published, EU:T:2010:362, paragraph 29). As also confirmed by the applicant, the element ‘porto’ indicates the particular geographical origin of the product concerned, as well as its qualities and reputation, confirmed by the registration of ‘Porto’ as a PDO. That element therefore has a sufficiently direct and concrete connection with the goods covered by the mark applied for to enable the relevant public to perceive immediately, and without further reflection, a description of those goods or of one of their characteristics, within the meaning of the case-law cited in paragraph 36 above.
49 The applicant’s argument that the element ‘porto’ is automatically associated, by the relevant public, with the marks already owned by it cannot alter the foregoing. There is a large number of different marks designating Port wine, as the intervener has also pointed out and demonstrated. That element is therefore not such as to indicate the commercial origin of the goods concerned.
50 In view of the above, the Board of Appeal did not err in its assessment that the element ‘insignia’, which coincided with the earlier mark and formed the second element of the mark applied for, was normally distinctive in relation to the goods in question and that the element ‘porto’, which was the first element of the mark applied for, was devoid of distinctive character and therefore not the dominant element thereof.
– The visual similarity
51 The Board of Appeal considered, in essence, that the signs at issue had a high degree of visual similarity.
52 The applicant claims that the first part of word marks generally attracts more attention from the relevant public. It considers that the element ‘porto’ in the mark applied for is dominant and that the element which the conflicting marks have in common, namely ‘insignia’, is devoid of distinctive character, since it is a laudatory term. Thus, in the eyes of the relevant public, the marks are visually different, inasmuch as the common element is not distinctive and, therefore, that public remembers above all the element ‘porto’ of the mark applied for.
53 EUIPO and the intervener dispute the applicant’s arguments.
54 It must be noted that the earlier mark contains the sole element ‘insignia’, whereas the mark applied for is a mark composed of the elements ‘porto’ and ‘insígnia’. In that regard, the Board of Appeal rightly considered that the signs in question had a visual difference which should be taken into account. However, as is apparent from paragraph 50 above, it also correctly noted that their ‘insignia’ element had normal distinctive character, whereas the ‘porto’ element of the mark applied for was purely descriptive. For that reason, the attention of the English-speaking part of the relevant public is, in its view, drawn more to the element ‘insignia’.
55 It should be pointed out that it is essential in each individual case to determine, by means of, inter alia, an analysis of the elements of a mark and their relative weight in the perception of the relevant public, the overall impression produced by the mark applied for in the memory of that public and then to proceed, in the light of that overall impression and of all the relevant factors in the case, to the assessment of the likelihood of confusion (judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU: C:2014:305, paragraph 34, and of 26 July 2017, Meica v EUIPO, C‑182/16 P, not published, EU:C:2017:600, paragraph 58).
56 In that context, the consideration that the consumer normally attaches more importance to the initial part of a trade mark cannot apply in all cases and call into question the principle that the examination of the similarity of trade marks must be based on the overall impression produced by them (see judgment of 8 September 2010, PORTO ALEGRE, T‑369/09, not published, EU:T:2010:362, paragraph 29 and the case-law cited).
57 There is no reason to believe that the average consumer who is reasonably well informed and reasonably observant and circumspect will systematically disregard the second part of the word element of a trade mark to the extent that he or she only remembers the first part. That is particularly true in the alcoholic beverages sector, where consumers are accustomed to goods frequently being designated by marks comprising several verbal elements (see judgment of 4 May 2022, Bodegas Beronia v EUIPO – Bodegas Carlos Serres (ALEGRA DE BERONIA), T‑298/21, not published, EU:T:2022:275, paragraph 47 and the case-law cited).
58 Having regard to the case-law cited in paragraphs 55 to 57 above, it should be noted that, although the signs at issue differ in that the earlier mark has only one word element and the mark applied for has two, the element ‘insignia’ is the most distinctive, and the longest, of those marks. Similarly, the Board of Appeal rightly considered that the word ‘porto’ was well known to the English-speaking part of the relevant public in relation to the goods covered by the mark applied for, namely Port wine. In that context, even if the element ‘porto’ is the first element in the mark applied for, it must be noted that, having regard to the overall impression of that mark, the applicant has not shown that that part of the relevant public would mainly, or only, remember that element. As the intervener rightly argued, the more distinctive the common element, the higher the degree of similarity in each aspect of the comparison.
59 Consequently, the Board of Appeal did not commit an error of assessment when it considered, in essence, that the signs at issue had a high degree of visual similarity.
– The phonetic similarity
60 The Board of Appeal considered that the signs at issue had at least an above-average degree of phonetic similarity.
61 The applicant criticises that conclusion on the basis of the same arguments as those put forward in the context of the visual comparison of those signs.
62 EUIPO and the intervener dispute the applicant’s arguments.
63 It should be noted that the pronunciation of the signs at issue coincides in the sound of the word ‘insignia’. The fact that the earlier mark is entirely included in the mark applied for and is the most important part of it, in terms of the number of letters, creates a phonetic similarity between them (see, to that effect, judgment of 12 November 2008, ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 34).
64 Consequently, the Board of Appeal, while taking into consideration the difference between the signs in question from the phonetic point of view, since the earlier mark consists of a single element whereas the mark applied for had two, did not commit an error of assessment when it concluded, in essence, that those signs had a degree of similarity which was at least above average in that respect, since the element ‘porto’, the initial element of the mark applied for, is in any event descriptive.
– The conceptual similarity
65 The Board of Appeal considered, in essence, that the degree of conceptual similarity between the signs at issue was high.
66 The applicant claims that the signs at issue were conceptually different. It reiterates the argument that the element ‘insignia’ had a laudatory character and was, in the mark applied for, subordinate to the element ‘porto’, which had a distinctive character. The goods covered by the mark applied for would be perceived as a badge or emblem relating to ‘porto’. In addition, the word ‘porto’ could also be associated with the English word ‘port’ which means a place by the sea or by a river.
67 EUIPO and the intervener dispute the applicant’s arguments.
68 As stated in paragraph 50 above, the Board of Appeal considered, without committing an error of assessment, that the element ‘insignia’ as it appeared in the conflicting marks was normally distinctive, whereas the element ‘porto’ in the mark applied for was descriptive. The applicant’s arguments based on a contrary premiss cannot therefore succeed. The applicant’s argument that the goods covered by the earlier mark are perceived as a badge or qualifier of the word ‘porto’ must also be rejected as it is not supported by evidence.
69 The applicant has not established to the requisite legal standard that the mark applied for, composed of the elements ‘porto’ and ‘insígnia’, could have a different meaning for the English-speaking part of the relevant public from that of the earlier mark. In that regard, it was incumbent on the applicant to show that the analysis carried out by the Board of Appeal was erroneous in relation to a significant part of the relevant public, given that, in order to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, it was not necessary to find that such a likelihood existed in relation to the whole of the relevant public (see, to that effect, judgment of 5 May 2021, Capella v EUIPO – Cobi.bike (GOBI), T‑286/20, not published, EU:T:2021:239, paragraph 38 and the case-law cited).
70 Therefore, the applicant’s arguments are not capable of altering the conclusion of the Board of Appeal as regards the conceptual similarity of the signs at issue.
The inherent distinctive character of the earlier mark
71 The applicant criticises the finding of the Board of Appeal that the distinctiveness of the earlier mark is normal and considers it to be weak.
72 EUIPO and the intervener dispute the applicant’s arguments.
73 For the same reasons as those set out in paragraphs 43 to 47 above, the finding of the Board of Appeal that the earlier mark was normally distinctive is not erroneous.
The overall assessment of the likelihood of confusion
74 According to the settled case-law of the Court of Justice, the existence of a likelihood of confusion depends on numerous factors, including the knowledge of the earlier mark on the market, the association which may be made with the mark applied for, and the degree of similarity between the conflicting marks and between the goods designated. The likelihood of confusion must therefore be assessed as a whole, taking into account all the relevant factors of the case (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 41 and the case-law cited).
75 The Board of Appeal considered that, having regard to the degree of similarity between the signs at issue, the identity of the goods at issue, the average level of attention of the relevant public and the normal distinctiveness of the earlier mark, there was a likelihood of confusion between the conflicting marks.
76 The applicant reiterates its arguments concerning the identity of the goods and the similarity of the signs in question. It adds that the Board of Appeal should have given greater weight to the phonetic similarity in view of the nature of the goods in question, namely alcoholic beverages.
77 EUIPO and the intervener dispute the applicant’s arguments.
78 As can be seen from paragraphs 50, 59, 70 and 73 above, the Board of Appeal rightly endorsed the conclusion of the Opposition Division that the goods in question were identical, as well as its considerations as to the normal distinctiveness of the element ‘insígnia’ common to both marks, the descriptive character of the element ‘porto’, which is present in the mark applied for, and the high degree of similarity between the signs in question from a visual point of view, at least above average from a phonetic point of view, and a high degree of conceptual similarity.
79 Furthermore, as the Board of Appeal considered, it was important, for the global assessment of the likelihood of confusion, that the earlier mark was reproduced in full in the mark applied for and that the mark applied for had normal distinctive character. That finding could not be altered by the element ‘porto’ which was placed in the mark applied for before the element ‘insígnia’. Having regard to the overall impression of the mark applied for, the element ‘porto’, although appearing first in that mark, cannot therefore attract the attention of the English-speaking part of the relevant public to a greater extent than the element ‘insígnia’, having regard, in particular, to the average degree of attention of that part of the public. The Board of Appeal was therefore right to accept the Opposition Division’s finding that there was a likelihood of confusion between the conflicting marks.
80 The applicant’s argument that the Board of Appeal should have given greater weight to the phonetic similarity of the signs in question cannot alter that conclusion. That argument would be relevant only in so far as the goods at issue are consumed mainly on oral order, which has not been established (see, to that effect, judgment of 15 January 2003, Mystery Drinks v OHIM – Karlsberg Brauerei (MYSTERY), T‑99/01, EU:T:2003:7, paragraph 48).
81 It follows from the foregoing that the Board of Appeal did not commit an error of assessment when it considered, in paragraph 72 of the contested decision, that, in view of the identity of the goods, the overall similarity between the signs, the average level of attention of the relevant public and the normal inherent distinctiveness of the earlier mark, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in respect of a substantial part of the relevant public.
82 The applicant’s sole plea in law and the action in its entirety must therefore be dismissed.
I. Costs
83 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
84 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Vallegre, Vinhos do Porto, SA to pay the costs.
Kowalik-Bańczyk | Hesse | Ricziová |
Delivered in open court in Luxembourg on 7 June 2023.
V. Di Bucci | | M. van der Woude |