Case T‑584/10

Mustafa Yilmaz

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Opposition proceedings — Application for the Community figurative mark TEQUILA MATADOR HECHO EN MEXICO — Earlier national and international word marks MATADOR — Relative ground for refusal — No likelihood of confusion — No similarity of the goods — Article 8(1)(b) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Second Chamber), 3 October 2012

1.      Community trade mark — Registration procedure — Withdrawal, restriction and amendment of the trade mark application — Application to restrict the list of goods and services — Procedures

(Council Regulation No 207/2009, Art. 43(1); Commission Regulation No 2868/95, Art. 1, Rule 13)

2.      Community trade mark — Appeal procedure — Appeal before a Court of the European Union — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Account taken by the General Court of matters of law and fact which have not been raised previously before the departments of OHIM — Exclusion

(Council Regulation No 207/2009, Art. 65)

3.      Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment

(Council Regulation No 207/2009, Art. 8(1)(b))

4.      Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice

5.      Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark TEQUILA MATADOR HECHO EN MEXICO — National and international word marks MATADOR

(Council Regulation No 207/2009, Art. 8(1)(b))

6.      Community trade mark — Decisions of the Office — Legality — OHIM’s previous decision‑making practice — Principle of non-discrimination — Not relevant

1.      See the text of the decision.

(see para. 19)

2.      See the text of the decision.

(see para. 33)

3.      See the text of the decision.

(see para. 43)

4.      See the text of the decision.

(see paras 59-60)

5.      For the average European consumer, there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark between, on the one hand, the figurative mark TEQUILA MATADOR HECHO EN MEXICO, for which registration as a Community trade mark is sought for ‘Tequila originating in Mexico, alcoholic cocktails containing tequila originating from Mexico, tequila liqueurs originating in Mexico’ falling within Class 33 of the Nice Agreement, and, on the other hand, the word mark MATADOR, registered previously in Germany and then as an International trade mark having effect in many European countries for ‘Beers; mineral and aerated waters and other non‑alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ falling within Class 32 of the Nice Agreement.

Taking account of all the relevant factors relating to the goods at issue, as examined in paragraphs 63 to 69 of the judgment of 18 June 2008 in Case T‑175/06 Coca-Cola v OHIM — San Polo (MEZZOPANE), beer and wine must be regarded as not being similar within the meaning of Article 8(1)(b) of Regulation No 207/2009.

The differences between the goods to be compared in the present case, in respect of all the relevant factors relating to them, are clearer and more substantial than the differences between beer and wine established by the Court in MEZZOPANE, with the result that those differences make it even more unlikely that the relevant public would believe that the same undertaking would produce and market the two types of beverage at the same time.

In particular, while the goods to be compared in the present case belong to the same general category of beverages, and more specifically to the category of alcoholic beverages, they are different in particular as regards their ingredients, method of production, colour, smell and taste, with the result that the average consumer perceives them to be different in nature. Those goods are not normally displayed in the same shelves in the areas of supermarkets and other outlets selling drinks. As regards their use, a significant difference between the goods is that beer quenches thirst which is not normally the case for the alcoholic beverages covered by the mark applied for. While it is true that those goods may be consumed in the same places and on the same occasions and satisfy the same need – for example, enjoyment of a drink during a meal or as an aperitif – the fact remains that they do not belong to the same family of alcoholic beverages and that the consumer perceives them as two distinct products, as the Court held, so far as concerns beer and wine, in paragraph 66 of MEZZOPANE.

The existence of alcoholic cocktails which mix beer with other alcohol, in particular tequila, does not remove the differences between the goods referred to above, since it is true of many drinks which are not similar.

Moreover, for the reasons set out in paragraph 67 of MEZZOPANE, that fact does not mean that the goods at issue are complementary. Complementary goods are goods which are closely connected in the sense that one is indispensable or important for the use of the other. In the present case, the alcoholic beverages covered by the mark applied for are neither indispensable nor important for the use of beers and vice versa. There is indeed nothing in the file to support the conclusion that a purchaser of one of those products would be led to purchase the other.

As to whether the goods at issue in the present case are in competition with each other, the Court considers that there is a significantly lower degree of competition than that found, with regard to wine and beer, in paragraph 68 of MEZZOPANE. The Court considered, in paragraph 68 of MEZZOPANE, that wine and beer are, to a certain extent, in competition with each other on the ground that, in accordance with the case-law of the Court of Justice concerning areas other than the Community trade mark, wine and beer are, to a certain extent, capable of meeting identical needs, which means that a certain measure of mutual substitutability must be acknowledged. However, the Court of Justice stated, as the General Court has also pointed out, that, in view of the significant differences in quality – and, accordingly, in price – between wines, the decisive competitive relationship between beer, a popular and widely consumed beverage, and wine must be established by reference to those wines which are the most accessible to the public at large, that is to say, generally speaking, the lightest and least expensive varieties. The alcoholic beverages covered by the mark applied for are, in general, significantly stronger and considerably more expensive than ‘those wines which are the most accessible to the public at large’, with the result that the Court’s findings are not applicable to the present case.

(see paras 49, 51, 54-57)

6.      See the text of the decision.

(see paras 61-62)