JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
12 June 2007 (*)
(Community trade mark – Opposition proceedings – Application for the figurative Community mark WATERFORD STELLENBOSCH – Earlier Community word mark WATERFORD – Relative ground for refusal – No likelihood of confusion – Absence of similarity between the goods – Absence of complementarity – Article 8(1)(b) of Regulation (EC) No 40/94)
In Case T‑105/05,
Assembled Investments (Proprietary) Ltd, established in Stellenbosch (South Africa), represented by P. Hagman and S. Ziegler, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Waterford Wedgwood plc, established in Waterford (Ireland), represented by K. Manhaeve, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 15 December 2004 (Case R 240/2004-1), relating to opposition proceedings between Waterford Wedgwood plc and Assembled Investments (Proprietary) Ltd,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of J. Pirrung, President, A.W.H. Meij and I. Pelikánová, Judges,
Registrar: B. Pastor, Deputy Registrar,
having regard to the application lodged at the Registry of the Court of First Instance on 28 February 2005,
having regard to the response of the intervener lodged at the Registry of the Court on 11 August 2005,
having regard to the response of OHIM lodged at the Registry on 18 August 2005,
further to the hearing on 5 December 2006,
gives the following
Judgment
Background to the dispute
1 On 23 December 1999, the applicant filed an application for a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The mark sought to be registered is the figurative sign represented below:
3 The goods for which registration of the mark was sought are within Class 33 of the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of marks of 15 June 1957, as revised and amended and, following a restriction made by the applicant before OHIM, correspond to the following description: ‘Alcoholic beverages, namely wines produced in the Stellenbosch district, South Africa.’
4 That application was published in the Community Trade Marks Bulletin No 55/2000 of 10 July 2000.
5 On 6 October 2000, Waterford Wedgwood plc (‘the intervener’) filed a notice of opposition against the Community trade mark application based on, inter alia, the existence of the Community word mark Registration No 397 521, WATERFORD, registered in respect of, among other things, products falling within Class 21 of the Nice Agreement and corresponding to the following description: ‘Articles of glassware, earthenware, chinaware and porcelain’.
6 In support of its opposition, the intervener relied on the relative grounds for refusal set out in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 40/94.
7 By decision of 2 February 2004, OHIM’s Opposition Division rejected the opposition in its entirety on the grounds, first, that the trade marks were not identical, since the trade mark applied for included elements other than the term ‘waterford’, secondly, that there was no likelihood of confusion in so far as the goods concerned were not similar, the fact that wine is generally drunk in a glass being insufficient in this respect and, thirdly, that the evidence provided by the intervener was insufficient to establish the repute of the trade marks on which the opposition was based.
8 On 1 April 2004, the intervener appealed against the Opposition Division’s decision.
9 By decision of 15 December 2004 (‘the contested decision’), the First Board of Appeal annulled the Opposition Division’s decision and dismissed the Community trade mark application. It found, first, that the trade mark applied for and the earlier mark were highly similar on the visual, phonetic and conceptual levels for the relevant consumers in the United Kingdom and Ireland and, secondly, that the goods covered by the trade mark applied for and the ‘articles of glassware’ covered by the earlier mark were similar on account of the high degree to which wine and wine glasses complement each other. The Board of Appeal also found that the evidence submitted by the intervener on 12 April 2002 could be taken into account. The examination of that evidence led it to hold that one of the documents, namely a study based on a survey carried out among consumers in the United Kingdom, established the strong distinctive character of the earlier mark in the United Kingdom and in Ireland. Basing its decision on that information, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. As a result, it held that there was no need to rule on the ground for refusal laid down in Article 8(5) of Regulation No 40/94, relied upon in the alternative by the intervener.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– determine that there is no similarity giving rise to confusion between the trade mark applied for and the earlier mark;
– remit the case to OHIM for purposes of registration of the trade mark applied for;
– order OHIM and the intervener to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action if it finds the application not to be well founded;
– annul the contested decision if it finds that the goods are not similar;
– annul the contested decision if it finds that the goods are similar but that the intervener has not substantiated that the earlier mark has acquired a high degree of distinctiveness as a result of the use made of it in the European Community or at least in the United Kingdom;
– order the applicant to pay the costs if the action is dismissed;
– order each party to the proceedings before the Court to bear its own costs if the contested decision is annulled.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of the applicant’s second and third heads of claim
13 It should be observed that, by its second head of claim, the applicant is seeking a declaratory judgment on the existence of a similarity giving rise to confusion between the trade mark sought and the earlier mark. However, the Court of First Instance has jurisdiction, under Article 63(3) of Regulation No 40/94, only to annul or to alter decisions of the Boards of Appeal. As a result, it is not competent to deliver declaratory judgments and such a head of claim is therefore inadmissible.
14 As regards the applicant’s third head of claim, it seeks essentially that the Court of First Instance order OHIM to register the trade mark applied for. However, under Article 63(6) of Regulation No 40/94, OHIM is required to take the necessary measures to comply with the judgment of the Court of Justice. Accordingly, the Court of First Instance is not entitled to issue directions to OHIM and such a head of claim is therefore inadmissible (Case T‑163/98 Procter & Gamble v OHIM(BABY-DRY) [1999] ECR II‑2383, paragraph 53).
15 It follows that the applicant’s second and third heads of claim are inadmissible.
Merits
16 The applicant advances three pleas in law in support of the forms of order which it seeks: these concern, first, infringement of Article 74(2), secondly, infringement of Article 8(1)(b) and, thirdly, infringement of Article 8(5) of Regulation No 40/94.
17 The Court is of the opinion that it is first necessary to consider the second plea.
18 Under the second plea, the applicant claims that no likelihood of confusion exists in the present case inasmuch as, on the one hand, neither the goods nor the trade marks are similar and, on the other hand, the intervener has not established that the earlier mark had acquired a high degree of distinctiveness.
19 The Court considers that it is first of all necessary to examine the arguments of the parties on the similarity between the goods.
Arguments of the parties
20 The applicant submits that the Board of Appeal erred, firstly, by taking into account the distinctive character of the earlier mark for the purpose of assessing the similarity of the goods and, secondly, by holding that the goods are similar on the ground that articles of glassware and wine are complementary goods.
21 In this respect, the applicant states that the fact that wine is drunk from a wine glass does not create any complementary connection between those two products, since consumers do not view them as produced by the same operators. It claims that, first, wine producers do not produce or distribute any goods other than wine, in particular articles of glassware, and that producers of glassware are not involved in wine production. Secondly, wine and wine glasses are not normally sold together. Lastly, wine is a particular and unique product constituting a market which is completely distinct from other markets.
22 The applicant maintains that the other factors generally taken into account for the purpose of establishing the similarity of goods are not present in this instance. It is of the view that wine and articles of glassware are distinct in their nature and intended purpose, that they are not substitutable, that they do not have the same distribution channels and that they are not produced in the same areas. The applicant infers that the goods are not similar and that any likelihood of confusion between the trade mark applied for and the earlier mark is therefore precluded.
23 OHIM shares the analysis of the Board of Appeal, which limited the examination of the similarity of the goods, so far as the earlier mark is concerned, to ‘articles of glassware’ since the other goods covered by the earlier mark clearly did not bear any similarity to those covered by the trade mark applied for. It also accepts that wine glasses, as a sub‑category of articles of glassware, are to a certain extent complementary to wine, in so far as wine is generally drunk out of wine glasses. However, since wine can be drunk from other glasses and wine glasses can be used to drink beverages other than wine, OHIM considers that that complementary connection is tenuous. It is therefore inclined to concur with the applicant’s view in observing that complementarity is not sufficient for a finding that the goods at issue are similar, since, in the present case, apart from that complementarity, none of the criteria required by case-law to establish similarity between the goods is met.
24 However, OHIM states that it is prepared to accept the reasoning of the Board of Appeal on the basis that the public may actually believe, because of that complementarity, that the wine glasses and wine marketed under the same trade mark are sold under the responsibility of the same undertaking or of economically-linked undertakings.
25 The intervener maintains that the Board of Appeal was right to find that the goods in question are similar. It considers that wine and wine glasses are complementary in so far as wine is consistently drunk from wine glasses and those glasses are consistently used for the drinking of wine, so that there is an indispensable or, at least, very significant connection between those products. It adds that, on special occasions or celebrations, wine is served in crystal glasses of a high quality. Likewise, for the consumption of a fine wine the type of glass used is of primordial importance.
26 As regards means of distribution, the intervener submits that both types of goods are sometimes distributed by the same commercial channels such as restaurants or specialised wine shops. Likewise, certain wine producers, including the applicant, sometimes sell their wine with a glass, whereby the wine and the glass bear the same trade mark.
Findings of the Court
27 Article 8(1)(b) of Regulation No 40/94 states clearly that, in order for there to be a likelihood of confusion within the meaning of that provision, the goods or services designated must be identical or similar. Thus, even where the mark applied for is identical to a mark which is distinctive to a particularly high level, it must be established that the goods or services designated by the opposing marks are similar (see, by way of analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 22, and Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraph 53).
28 It should also be borne in mind that, in order to assess the similarity of the goods in question, account must be taken of all the relevant factors which characterise the relationship between those goods, those factors including, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (see Canon, paragraph 23, and SISSI ROSSI, paragraph 54).
29 Before assessing the facts of the present case in the light of what has just been stated, it is necessary to dismiss the applicant’s contention that OHIM took into account the distinctive character of the earlier mark in order to assess the similarity of the goods. In paragraph 42 of the contested decision, the Board of Appeal states that ‘the distinctive character of the earlier trade mark must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion’. Therefore, contrary to the applicant’s contention, the Board of Appeal took into account the distinctive character of the earlier mark not in order to assess the similarity of the goods but, at a later stage of its examination, in order to assess whether there was a likelihood of confusion.
30 Next, the assessment of the similarity of the goods should be restricted, as regards the earlier mark, to ‘articles of glassware’, since the other goods covered by the earlier mark have no connection with wine. As is apparent from the contested decision, that category includes carafes, decanters and stemware or wine glasses, articles which are specifically intended to be used for the consumption of wine.
31 The parties do not dispute that the goods at issue, namely the articles of glassware, on the one hand, and, on the other hand, the wine, are distinct by nature and by their use, that they are neither in competition with one another nor substitutable and that they are not produced in the same areas.
32 As regards distribution channels, it is true that wine and certain articles of glassware are sometimes sold in the same places, such as specialist wine retailers, as the intervener has pointed out. However, in the absence of information proving the contrary, it appears that such sales represent no more than a negligible proportion of the overall sales of the articles of glassware concerned.
33 Likewise, wine glasses and wine, although normally marketed separately, are occasionally distributed together for promotional purposes. Thus, the intervener produced before both the Board of Appeal and the Court a copy of a photograph representing a gift package marketed by the applicant and consisting of a bottle of wine and two wine glasses which bear the trade mark sought without the word ‘stellenbosch’. However, it has not been shown that that practice by wine producers is of any significant commercial importance. In addition, as the applicant and OHIM submitted at the hearing, the distribution of wine glasses with wine is normally perceived by the consumers concerned as a promotional attempt to increase sales of the wine rather than as an indication that the producer concerned devotes part of his activity to the distribution of articles of glassware.
34 Lastly, it should be stated that there is a degree of complementarity between some articles of glassware, in particular wine glasses, carafes and decanters, on the one hand, and wine, on the other, in so far as the first group of products is intended to be used for drinking wine. However, in so far as wine may be drunk from other vessels and the articles of glassware mentioned above can be used for other purposes, that complementarity is not sufficiently pronounced for it to be accepted that, from the consumer’s point of view, the goods in question are similar within the terms of Article 8(1)(b) of Regulation No 40/94.
35 Having regard to all of the foregoing, it must be held that articles of glassware and wine are not similar goods. Consequently, there can be no likelihood of confusion between the conflicting marks and the applicant’s second plea must therefore be accepted.
36 Accordingly, the contested decision falls to be annulled, without it being necessary to examine the other grounds put forward by the applicant in connection with the second plea, the first plea on the alleged infringement of Article 74(2) of Regulation No 40/94 or the third plea on the application of the ground for refusal laid down in Article 8(5) of that regulation.
37 In any event, it is clear from paragraph 53 of the contested decision that the latter ground was not considered by the Board of Appeal. It must therefore be considered in the re-examination of the intervener’s opposition.
Costs
38 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the other party’s pleadings. Since OHIM and the intervener have been unsuccessful, they must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of OHIM of 15 December 2004 (Case R 240/2004-1);
2. Orders the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Waterford Wedgwood plc to pay, in addition to their own costs, the costs incurred by the applicant.
Delivered in open court in Luxembourg on 12 June 2007.