JUDGMENT OF THE COURT OF FIRST INSTANCE (First Chamber)
12 November 2008 (*)
(Community trade mark – Opposition proceedings – Application for figurative Community trade mark Limoncello della Costiera Amalfitana shaker – Earlier national word mark LIMONCHELO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 – Appeal – Case referred back to the Court of First Instance)
In Case T‑7/04,
Shaker di L. Laudato & C. Sas, established in Vietri sul Mare (Italy), represented by F. Sciaudone, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by O. Montalto and P. Bullock, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM having been
Limiñana y Botella, SL, established in Monforte del Cid (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 24 October 2003 (Case R 933/2002-2), relating to opposition proceedings between Limiñana y Botella, SL and Shaker di L. Laudato & C. Sas,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),
composed of: V. Tiili (Rapporteur), President, F. Dehousse and I. Wiszniewska-Białecka, Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the written procedure and further to the hearing on 17 June 2008,
gives the following
Judgment
Background to the dispute
1 On 20 October 1999 the applicant – Shaker di L. Laudato & C. Sas (‘the applicant’ or ‘Shaker’) – filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (‘Regulation No 40/94’).
2 The trade mark for which registration was sought is the figurative mark reproduced below, which, according to the description contained in the application, is blue, sky-blue, yellow, red and white in colour:
3 The goods in respect of which registration was sought are – following an intervention by OHIM on 23 November 1999 and the withdrawal of one class of goods – in Classes 29 and 33 under the Nice Agreement of 15 June 1957 concerning the Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes – after being limited – to the following:
– Class 29: ‘jellies, jams, compotes’;
– Class 33: ‘Lemon liqueur from the Amalfi Coast’.
4 That application was published in Community Trade Mark Bulletin No 30/2000 of 17 April 2000.
5 On 1 June 2000, the opponent – Limiñana y Botella, SL – filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 against the registration of the mark applied for. The opposition was based on Spanish registration No 2 020 372, filed on 27 March 1996 for the word mark LIMONCHELO, covering goods in Class 33 (‘Wines, spirits and liqueurs’).
6 The opposition concerned some of the goods covered by the Community trade mark application, namely, the goods within Class 33. It was based on all the goods covered by the earlier mark.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94.
8 By decision of 9 September 2002, the Opposition Division upheld the opposition. It held that, in Spanish territory, there was a likelihood of confusion in view of the visual and phonetic similarities between the marks at issue and because the goods in question are identical.
9 On 7 November 2002, Shaker lodged an appeal with OHIM against the decision of the Opposition Division, pursuant to Articles 57 to 62 of Regulation No 40/94.
10 By decision of 24 October 2003 (‘the contested decision’), the Second Board of Appeal dismissed the appeal. It held that, having regard to the similarity of the marks at issue and the congruence of the goods in question, there was a risk that Spanish consumers might confuse or associate their commercial origin.
Procedure before the Court of First Instance and the Court of Justice
11 By application lodged at the Registry of the Court of First Instance on 7 January 2004, Shaker brought an action for annulment of the contested decision, alleging: (i) infringement of Article 8(1)(b) of Regulation No 40/94; (ii) misuse of powers; and (iii) breach of the duty to state reasons.
12 By judgment of 15 June 2005 in Case T-7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2005] ECR II‑2305 (‘the judgment at first instance’), the Court of First Instance upheld Shaker’s action and annulled the contested decision.
13 In that judgment, the Court of First Instance first held that the goods were identical and then proceeded to compare the marks at issue. It held that the representation of the round dish decorated with lemons was the dominant component of the trade mark applied for (paragraph 59 of the judgment at first instance). It found that the word components of the trade mark applied for were not dominant at the visual level and that it was therefore not necessary to assess the phonetic and conceptual features of those components (paragraphs 60 to 64 of the judgment at first instance).
14 According to the Court of First Instance, the dominance of the figurative representation of a round dish decorated with lemons as compared with the other components of the mark applied for prevented any likelihood of confusion arising from visual, phonetic or conceptual similarities between the words ‘limonchelo’ and ‘limoncello’ which appear in the marks at issue (paragraph 66 of the judgment at first instance). It also found that the dominance of the figurative component (a round dish decorated with lemons) in the mark applied for meant that in that instance the assessment of the distinctive elements of the earlier trade mark did not affect the application of Article 8(1)(b) of Regulation No 40/94, given that that dominance of a round dish decorated with lemons prevented there being any likelihood of confusion with the earlier trade mark (paragraph 68 of the judgment at first instance).
15 The Court of First Instance therefore held that, notwithstanding the fact that the goods concerned were identical, there was not a sufficiently high degree of similarity between the marks at issue for there to be a likelihood of confusion (paragraph 69 of the judgment at first instance). Therefore, it upheld the first plea in law, ruled that it was not necessary to examine the other pleas and annulled the contested decision.
16 By application lodged at the Registry of the Court of Justice on 9 September 2005, OHIM brought an appeal by which it requested the Court to set aside the judgment at first instance. In support of its appeal, OHIM relied on two pleas in law, but withdrew the second in the course of the proceedings before the Court following a rectification made by the Court of First Instance, by order of 12 January 2006. The plea submitted by OHIM in the context of its appeal alleged error in the interpretation and application of Article 8(1)(b) of Regulation No 40/94.
17 By judgment of 12 June 2007, in Case C-334/05 P OHIM v Shaker [2007] ECR I-4259 (‘the judgment on appeal’ or ‘OHIM v Shaker’), the Court set aside the judgment at first instance, referred the matter back to the Court of First Instance and reserved the costs.
18 In its judgment, the Court stated, inter alia, as follows:
‘37 In the present case the Court of First Instance, at paragraph 49 of the judgment under appeal, noted the case-law… according to which the global appreciation of the likelihood of confusion must be based on the overall impression created by the signs at issue.
38 However, it stated in paragraph 54 of the judgment under appeal that, if the trade mark claimed was a complex mark which was visual in nature, the assessment of the overall impression created by that mark and the determination as to whether there was a dominant element had to be carried out on the basis of a visual analysis. It added that, in such a case, it was only to the extent to which a potentially dominant element included non-visual semantic aspects that it might become necessary to compare that element with the earlier mark, also taking into account those other semantic aspects, such as for example phonetic factors or relevant abstract concepts.
39 On the basis of those considerations, the Court of First Instance, in the context of the analysis of the signs at issue, firstly held that the mark for which registration was sought contained a dominant element comprising the representation of a round dish decorated with lemons. It then inferred, in paragraphs 62 to 64 of the judgment under appeal, that it was not necessary to examine the phonetic or conceptual features of the other elements of that mark. It finally concluded, in paragraph 66 of the judgment, that the dominance of the figurative representation of a round dish decorated with lemons in comparison with the other components of the mark prevented any likelihood of confusion arising from the visual, phonetic or conceptual similarities between the words ‘limonchelo’ and ‘limoncello’ which appear in the marks at issue.
40 However, in so doing, the Court of First Instance did not carry out a global assessment of the likelihood of confusion of the marks at issue.
41 It is important to note that, according to the case-law of the Court, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components…
42 … it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.
43 It follows that the Court of First Instance incorrectly applied Article 8(1)(b) of Regulation No 40/94.
44 In those circumstances, OHIM is right to maintain that the judgment under appeal is vitiated by an error in law.’
Procedure and forms of order sought following referral of the case back to the Court of First Instance
19 By letter of 19 June 2007, the Registry of the Court of First Instance invited the parties to submit, within two months of service upon them of the judgment of the Court of Justice, their written observations, in accordance with Article 119(1) of the Rules of Procedure of the Court of First Instance, on the response to be given to that judgment in the present proceedings.
20 Shaker and OHIM lodged their observations at the Registry of the Court of First Instance within the time allowed for that purpose, that is to say, on 3 July 2007 and 31 July 2007 respectively. The opponent did not submit any observations within the prescribed time-limits.
21 In its observations, Shaker claims that the Court should:
– annul the contested decision and, by way of correction, reject the opposition;
– order OHIM to pay all the costs relating to the proceedings before the Court of First Instance and the Court of Justice.
22 In its observations, OHIM contends that the Court should:
– dismiss the action and order the applicant to pay all the costs relating to the proceedings before the Court of First Instance and the Court of Justice;
– in the alternative, if OHIM were to fail on the substance of the case, and taking account of the fact that its appeal was upheld by the Court of Justice, split the costs between the parties or order each party to bear their own costs.
Law
23 Shaker has put forward three pleas in law in support of its action, alleging: (i) infringement of Article 8(1)(b) of Regulation No 40/94; (ii) a misuse of powers; and (iii) breach of the duty to state reasons.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94
24 Shaker claims that there is no likelihood of confusion between the marks at issue since they are not sufficiently similar. In addition, the earlier trade mark possesses only a weak distinctive character as it is merely the translation of the word ‘limoncello’ into Spanish, describing in a general way liqueur made from lemon zest and alcohol. According to Shaker, the Board of Appeal omitted to carry out an overall assessment of the marks at issue, having held, wrongly, that the word ‘limoncello’ was the dominant component of the trade mark applied for.
25 OHIM contends that the Board of Appeal correctly assessed the existence of a likelihood of confusion.
26 At the outset, it should be borne in mind that the validity of a national trade mark – in this case the opponent’s – may not be called into question in proceedings for registration of a Community trade mark, but only in cancellation proceedings brought in the Member State concerned (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 55, and Case T-134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), ECR II-0000, paragraph 36). Thus, the trade mark LIMONCHELO must be held to be a valid trade mark in Spain for the purposes of the present proceedings.
27 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark or the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 40/94, an earlier trade mark means a trade mark registered in a Member State where the date of application for registration is earlier than the date of application for registration of the Community trade mark.
28 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, economically linked undertakings constitutes a likelihood of confusion.
29 Under that case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services at issue, account being taken of all factors relevant to the circumstances of the case, in particular the interdependence of the similarity of the signs and the similarity of the goods or services covered (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).
30 For the purposes of that global assessment, the average consumer is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer’s level of attention is likely to vary according to the category of goods or services in question and that the consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26, and Case T-186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II-1887, paragraph 38).
31 In the present case, the mark on which the opposition was based is a national trade mark registered in Spain. Therefore, the relevant territory for assessing the likelihood of confusion is Spanish territory.
32 Given that the goods in question are everyday goods, the relevant public is made up of average Spanish consumers who are reasonably well informed and reasonably observant and circumspect.
33 It is not in dispute that the Class 33 goods covered by the marks at issue are identical. The Opposition Division and the Board of Appeal took the view that the liqueurs covered by the earlier trade mark also covered the lemon liqueurs coming from the Amalfi coast. Thus, there is no need to examine further the similarity between the goods in question.
Comparison of the marks at issue
34 As is clear from settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the opposing signs, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47 and the case-law cited).
35 Shaker claims that the signs at issue are not similar, while OHIM contends that they are similar.
36 The signs at issue are the following:
Earlier trade mark | Trade mark applied for |
LIMONCHELO | 
|
37 The earlier trade mark comprises a single component, that is to say, the word component LIMONCHELO. Given that it is the only component of that mark, Shaker’s claim that that word has become common in the Spanish language is not relevant for the purposes of the comparison of the marks at issue.
38 The trade mark applied for is, for its part, a figurative mark, comprising the word ‘limoncello’, written in white; the expression ‘della costiera amalfitana’, written in yellow; the word ‘shaker’, written in blue in a frame with a white background in which the letter ‘k’ represents a glass; and the figurative representation of a large round plate which has a white centre and a rim decorated, first, with drawings of yellow lemons on a dark background and, second, with an intermittent strip of turquoise and white. All the components of the trade mark applied for are set against a dark blue background.
39 The Board of Appeal held that the word ‘limoncello’ was the dominant component of the trade mark applied for and that, therefore, the marks at issue were visually and phonetically practically identical, while Shaker claims, in essence, that as the word ‘limoncello’ does not have distinctive character, since it describes lemon-based liqueurs, it cannot be the dominant component of that mark for the purposes of the comparison of the marks at issue.
40 It should be borne in mind that, according to the case-law, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components are negligible in the overall impression created by that mark (OHIM v Shaker, paragraphs 41 and 42, and Case C-193/06 P Nestlé v OHIM [2007] ECR I-114, paragraphs 42 and 43).
41 It should be noted, first, that the figurative component of the trade mark applied for, consisting of the representation of the round dish decorated with lemons, occupies a place visually as important as the word ‘limoncello’ in the mark. Then, it should be noted that the words ‘della’, ‘costiera’ and ‘amalfitana’ are placed beneath the word ‘limoncello’ and are written in much smaller yellow letters and, therefore, are clearly secondary in relation to the word ‘limoncello’. As regards the word ‘shaker’, it is only just visible in the mark taken as a whole, as it is located at the bottom of the mark and is written in little blue letters in a frame with a white background. The image of the glass in the letter ‘k’ goes almost unnoticed. The component ‘shaker’ is thus negligible in the overall impression created by the trade mark applied for.
42 Moreover, it should be recalled that consumers of the goods in question usually describe and recognise the goods in question by reference to the verbal element which identifies them (see, to that effect, Case T-40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II-2831, paragraph 56, and judgment of 12 March 2008 in Case T-332/04 Sebirán v OHIM – El Coto de Rioja (Coto d’Arcis), paragraph 38). Inasmuch as the figurative component of the trade mark applied for consists solely of a round plate decorated with lemons, that component does not attract the attention of the average consumers of the goods in question, who are regularly confronted with images of lemons affixed to lemon-based liqueurs. The word which the relevant public will remember is, rather, the word ‘limoncello’, in view of its prominent location and its position in relation to the other components, the fact that it is written in large white letters on a blue background, which makes it stand out from that background, and its size as compared with all the other word components of that composite mark. Thus, Shaker’s claim that although the round plate decorated with lemons constitutes a decorative component, it is much more likely than the word component to distinguish the goods described, and to capture the attention of the relevant consumer, cannot be accepted.
43 In those circumstances, it must be held that the word ‘limoncello’ is likely to dominate the overall impression created by the trade mark applied for in the minds of the relevant public.
44 That finding cannot be called into question by Shaker’s argument that the word ‘limoncello’ does not have distinctive character because it is descriptive. Without examining the issue of whether the word ‘limoncello’ is descriptive for the relevant public, it should be borne in mind that, in any event, the possibly weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since – because, in particular, of its position in the sign or its size – it may make an impression on consumers and be remembered by them (Case T-153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II-1677, paragraph 32, and PAGESJAUNES.COM, paragraph 54; see also, to that effect, Case T‑115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II-2907, paragraph 20).
45 Consequently, it is not necessary to rule, at this stage of the assessment, on the possibly weak distinctive character of the word ‘limoncello’, since it is obvious, having regard to the findings at paragraphs 41 to 43 of this judgment, that it is that word which is likely to make an impression on consumers and be remembered by them (see, to that effect, PAGESJAUNES.COM, paragraph 55).
46 Thus, so far as concerns the visual comparison of the marks at issue, each considered as a whole, it must be held that there is a certain similarity between them. The words ‘limoncello’ and ‘limonchelo’ are visually practically identical and, therefore, it must be held that the earlier mark is included in the trade mark applied for. It should be pointed out that the differences associated with the addition of the round plate decorated with lemons and with the other word or figurative components which are negligible, or at the very least, secondary, as has been held at paragraph 41 of this judgment, are not sufficiently significant to override the similarity created by the word ‘limoncello’, which is the first word of the trade mark applied for and thus attracts the consumer’s attention more.
47 As regards the phonetic comparison, it should be noted that the words ‘limoncello’ and ‘limonchelo’ are phonetically similar. The first two syllables ‘li’ and ‘mon’ are pronounced identically, and the two syllables ‘cello’ and ‘chelo’, although written differently, are pronounced in a similar way in Spain. Contrary to Shaker’s claim, the Spanish public pronounces the word ‘limoncello’ according to the Italian rules of pronunciation, that is to say, in the same way as the word ‘limonchelo’ in Spanish. Although the marks at issue are different as regards the number of words they contain, there is a phonetic similarity between those marks, as the earlier trade mark is entirely included in the trade mark applied for.
48 Furthermore, the common component of the two marks at issue is the first word of the trade mark applied for and is thus the first word pronounced. Neither the addition of the expression ‘della costiera amalfitana’ nor the addition of the word ‘shaker’ casts doubt on that similarity, because it can in no way be excluded that, when ordering orally, the relevant consumer will pronounce only that first word. It is worth noting that a lemon-based liqueur is often consumed following an order made orally, as a digestif after a meal. In that regard, Shaker’s argument that, in the restaurant, the customer orders the good in a generic way (‘a limoncello’) without being able to do so on the basis of a specific mark, and that the relevant purchase is thus the one made beforehand by the restaurant owner, who has the possibility of selecting the good on the basis of the trade mark, cannot succeed. Restaurants may have several brands available and, therefore, the end consumer can still make a choice when ordering. The word ‘limoncello’ thus constitutes the dominant component of the trade mark applied for from a phonetic point of view. Therefore, there is a significant phonetic similarity between the marks at issue.
49 As regards the conceptual comparison of the marks at issue, it is not excluded that the words ‘limoncello’ or ‘limonchelo’ may refer to a lemon-based liqueur. As regards the expression ‘della costiera amalfitana’, that is probably understood as indicating that the goods in question come from a particular coast. Therefore, the conceptual meaning, for the Spanish public, of the trade mark applied for is ‘lemon-based liqueur coming from a particular coast’. Thus, the sole conceptual difference as compared with the earlier trade mark is the specification that this liqueur comes from a particular coast. However, there is nothing to prevent the goods covered by the earlier trade mark from coming from the same coast, even though the word which comprises that mark is written in accordance with the Spanish rules of spelling. In addition, it must be borne in mind that any likelihood of confusion cannot be ruled out solely on the ground that the places of production of the drinks in question are different (see, to that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraphs 29 and 30, and the order of the Court of Justice of 24 April 2007 in Case C-131/06 P Castellblanch v OHIM, paragraph 46). Consequently, there is also a conceptual similarity between the marks at issue.
50 In those circumstances, it must be found that there is a certain similarity between the marks at issue. Therefore, the finding of the Board of Appeal, at paragraph 21 of the contested decision, that the marks are practically identical from a visual and phonetic point of view, cannot be accepted. However, that error is not significant enough, in itself, to lead to the annulment of the contested decision if the Board of Appeal correctly found that there was a likelihood of confusion.
51 As a result, it is necessary to carry out another global assessment as to whether there is a likelihood of confusion between the marks at issue.
The likelihood of confusion
52 It should be recalled that a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and the interdependence of the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Canon, paragraph 17).
53 The Board of Appeal’s position, regarding the existence of a likelihood of confusion, is set out in paragraph 22 of the contested decision as follows:
‘As a consequence of the likeness of the marks and the congruence of the Class 33 goods they cover, there is a likelihood of consumers in Spain confusing or associating their commercial origin.’
54 Shaker maintains that the visual, phonetic and conceptual differences between the marks at issue offset the identical nature of the goods in question, and that there is, therefore, no likelihood of confusion between the marks at issue, an argument which is reinforced by the weak distinctive character of the earlier trade mark LIMONCHELO, which thus only benefits from a reduced protection.
55 It should be pointed out, in that regard, that the Board of Appeal did not examine at all the distinctive character of the earlier trade mark LIMONCHELO or of the Italian word ‘limoncello’. However, even if the Board of Appeal – wrongly – did not acknowledge that those words have weak distinctive character, such an error cannot lead to the annulment of the contested decision.
56 It should be noted that the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, Canon, paragraph 24) it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (PAGESJAUNES.COM, paragraph 70; see, to that effect, Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-949, paragraph 61).
57 In addition, the approach argued for by Shaker in that respect would have the effect that the factor of the similarity of the marks would be disregarded in favour of the factor based on the distinctive character of the earlier national mark, which would then be given undue importance. The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question (order of the Court of Justice of 27 April 2006 in Case C‑235/05 P L’Oréal v OHIM, paragraph 45). Such a result would not, however, be consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 (judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v Devinlec and OHIM, paragraph 41, and PAGESJAUNES.COM, paragraph 71).
58 It follows from the foregoing, and in particular from the fact that the relevant public retains only an imperfect picture of the marks at issue – such that their common component, the word ‘limoncello’ or ‘limonchelo’, creates a certain similarity between them – and from the interdependence of the various factors to take into account, that, as the goods in question are identical, there is, in the present case, a likelihood of confusion.
59 As a result, it must be held that the Board of Appeal correctly found that a likelihood of confusion existed. Therefore, the first plea in law must be rejected.
The second plea in law, alleging misuse of powers
60 Shaker considers that, given the manifest error of assessment vitiating the contested decision, OHIM misused its powers.
61 According to Shaker, OHIM’s manifest error of assessment arises, first, from its taking into account solely the word ‘limoncello’ for the trade mark applied for when assessing the likelihood of confusion with the earlier trade mark, an approach which is not consistent with carrying out a global assessment of the various factors which might give rise to a likelihood of confusion.
62 Secondly, Shaker considers that there is a manifest error of assessment in the stances taken by OHIM throughout the application procedure in that they are totally contradictory. For that purpose, Shaker compares OHIM’s letter of 23 November 1999 with the contested decision.
63 OHIM disputes Shaker’s arguments.
64 It is necessary to bear in mind that the concept of misuse of powers has a precisely defined scope in Community law and refers to cases where an administrative authority has used its powers for a purpose other than that for which they were conferred on it. In that respect, it has been consistently held that a decision may amount to a misuse of powers only it if appears, on the basis of objective, relevant and consistent evidence, to have been taken for purposes other then those stated (Joined Cases T‑551/93 and T-231/94 to T-234/94 Industrias Pesqueras Campos and Others v Commission [1996] ECR II-247, paragraph 168; T-19/99 DKV v OHIM (COMPANYLINE) [2000] ECR II-1, paragraph 33; T-337/99 Henkel v OHIM (RED AND WHITE ROUND TABLET) [2001] ECR II‑2597, paragraph 66; and Case T-247/01 eCopy v OHIM (ECOPY) [2002] ECR II-5301, paragraph 22).
65 It should be pointed out that Shaker puts forward no evidence from which it could be inferred that the adoption of the contested decision had a purpose other than that of ascertaining whether the trade mark applied for should or should not be refused registration under Article 8(1)(b) of Regulation No 40/94.
66 In relation to the allegation that the Board of Appeal took into account solely the word ‘limoncello’, suffice it to state that, as has been held above, the Board of Appeal rightly found that there was, in the present case, a likelihood of confusion between the marks at issue. Therefore, the alleged errors that the Board of Appeal possibly made in reaching that decision are not sufficient to lead to the annulment of the contested decision.
67 In relation to the allegedly contradictory position taken by OHIM, Shaker claims that, by asserting in its letter of 23 November 1999 the need to restrict the application for registration to the specific class of goods comprising lemon liqueurs coming from the Amalfi coast, on account of the specific nature of the origin of limoncello in the determination of the consumer’s choice, OHIM wished to avoid the likelihood of confusion regarding the origin of the liqueur. OHIM thereby asserted the intrinsic ability of the trade mark applied for to identify the lemon liqueur produced in the Amalfi coast region. By contrast, in the contested decision, the Board of Appeal took the view – in contradictory fashion, according to Shaker – that the same expression could create a likelihood of confusion in the mind of the average Spanish consumer.
68 That line of reasoning cannot succeed. When it requested the restriction of the class of goods for which the trade mark applied for could be registered, OHIM was ascertaining whether the trade mark applied for was covered by the absolute grounds for refusal – and, in particular, by Article 7(1)(g) of Regulation No 40/94 – in that, without that restriction, there could have been a risk of misleading the consumer as to the geographic origin of the goods covered by the mark. OHIM therefore in no way stated that the geographic indication would exclude all likelihood of confusion in the event of opposition raised under Article 8(1)(b) of that regulation.
69 Consequently, the second plea in law must be rejected.
The third plea in law, concerning the duty to state reasons
70 Shaker claims that the contested decision is vitiated by a failure to state reasons in that it did not set out, clearly and unequivocally, the reasoning followed by the Board of Appeal. The reasoning of the contested decision is characterised by the number of omissions made by the Board of Appeal when comparing the marks and in its assessment of the likelihood of confusion.
71 OHIM disputes Shaker’s arguments.
72 To the extent that Shaker’s arguments relate to an allegation of manifest error of assessment, they have already been examined in the context of the first plea in law.
73 As regards the reasoning of the contested decision as such, it should be noted first that, under the first sentence of Article 73 of Regulation No 40/94, decisions of OHIM are to state the reasons on which they are based. In addition, Rule 50(2)(h) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides that the Board of Appeal’s decision must contain the reasons for the decision. That duty has the same scope as that enshrined in Article 253 EC. It is settled case-law that the statement of reasons required under Article 253 EC must clearly and unequivocally set out the reasoning of the body which adopted that act. That duty has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Community judicature to exercise its power to review the legality of the decision Whether a statement of reasons satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (Joined Cases T-124/02 and T-156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraphs 72 and 73, and judgment of 21 November 2007 in Case T-111/06 Wesergold Getränkeindustrie v OHIM – Lidl Stiftung (VITAL FIT), paragraph 62).
74 Shaker alleges that the Board of Appeal asserted that the two marks were visually and phonetically very similar without carrying out any assessment.
75 In that regard, it should be noted that the Board of Appeal stated, in paragraph 18 of the contested decision, after reiterating the content of Article 8(1)(b) of Regulation No 40/94 and the interpretation given to it by the case-law, that it agreed with the Opposition Division that the marks at issue, regard being had to the goods covered by them, were confusingly similar for the purposes of Article 8(1)(b) of Regulation No 40/94.
76 It pointed out that the lemon liqueur coming from the Amalfi coast, covered by the trade mark applied for, was clearly included in the ‘liqueurs’ category, covered by the earlier trade mark. Then, it stated that the dominant component of the trade mark applied for was the name ‘limoncello’, as it was that word, and not the colourfully ornate label on which it appeared, which would be the main distinguishing component for the consumer in question. It held that, taking account of the larger lettering of the word ‘limoncello’ and its prominent position, it was likely that the additional smaller words appearing underneath would, in the main, be overlooked by consumers.
77 The Board of Appeal found that the earlier trade mark consisted of the sign LIMONCHELO; that, visually and phonetically the marks were very close to one another; and that it was unnecessary, given the immediately apparent overall resemblance between the signs, to undertake the exercise of deconstructing them letter by letter, syllable by syllable, with a view to establishing their similarity. The Board of Appeal held that the marks looked and sounded virtually the same.
78 It thus found that, as a consequence of the likeness of the marks and the congruence of the goods they cover, there was a likelihood of consumers in Spain confusing or associating their commercial origin.
79 Even on the assumption that the reasoning of the contested decision is brief and does not sufficiently state the reasons for which the Board of Appeal reached its conclusion, account should be taken of the more detailed reasoning on that point which is contained in the Opposition Division’s decision. The Board of Appeal stated, in paragraph 18 of the contested decision, that it agreed with the Opposition Division that the marks, in respect of the Class 33 goods covered by them, were confusingly similar for the purposes of Article 8(1)(b) of Regulation No 40/94. In view of the continuity in terms of functions between the Opposition Divisions and the Boards of Appeal – as demonstrated by Article 62(1) of Regulation No 40/94 (Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 30, and Case T-323/03 La Baronia de Turis v OHIM – Baron Philippe de Rothschild (LA BARONNIE) [2006] ECR II-2085, paragraphs 57 and 58) – that decision and its reasoning are part of the context in which the contested decision was adopted, a context which is known to Shaker and which enables the Court to exercise fully its power to review the soundness of the assessment of the likelihood of confusion. It must be pointed out that the Opposition Division stated in its decision in what way the marks at issue were visually and phonetically similar and the reasons for which a likelihood of confusion existed in the present case.
80 Lastly, Shaker claims that the contested decision does not state the reasons for which the pleas and evidence put forward by Shaker do not enable it to be concluded that there is no likelihood of confusion between the marks at issue in the minds of the relevant consumers.
81 In that regard, it is sufficient to recall that, in stating the reasons for the decision which they are called on to make, the institutions are not obliged to take a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (order of the Court of First Instance of 18 February 2008 in Case T‑327/06 Altana Pharma v OHIM – Avensa (PNEUMO UPDATE) [2008], paragraph 18; see, to that effect, Case T‑204/03 Haladjian Frères v Commission [2006] ECR II-3779, paragraph 199).
82 It should be observed that, in the present case, the Board of Appeal set out, in the contested decision, the facts and legal considerations which led it to take that decision, as is apparent from the description of the contested decision in paragraphs 75 to 78 of this judgment. Thus, it cannot be criticised for not having replied to Shaker’s claim that the word ‘limoncello’ is of a purely descriptive nature and has become an everyday word in the generic descriptions of a type of liqueur, or to Shaker’s argument that OHIM itself suggested limiting the goods covered by the registration of the trade mark applied for to lemon liqueurs coming from the Amalfi Coast, on the ground that the trade mark would be misleading if the liqueur in question had a different origin.
83 Consequently, the third plea in law, alleging breach of the duty to state reasons, must be rejected.
84 It follows from all of the foregoing that the action must be dismissed in its entirety.
Costs
85 Shaker requests that OHIM be ordered to pay all the costs relating to the proceedings instituted before the Court of First Instance and to the appeal proceedings before the Court of Justice. As regards the second ground of appeal raised by OHIM before the Court of Justice, by which OHIM criticised the clearly contradictory and illogical nature of the judgment set aside, OHIM must in any event – according to Shaker – be ordered to pay the costs in relation to that plea, independently of whether the Court of First Instance upholds the pleas concerning the likelihood of confusion. Shaker points out that OHIM abandoned that plea following the order of the Court of First Instance of 12 January 2006, which found in favour of Shaker’s submissions on that point.
86 OHIM requests that Shaker be ordered to pay all the costs arising from the proceedings before the Court of First Instance and the Court of Justice.
87 In the judgment of the Court of First Instance, OHIM was ordered to pay the costs. In the judgment of the Court of Justice, the Court reserved the costs. It is therefore for the Court of First Instance to decide, in the present judgment, on all of the costs relating to the various proceedings, in accordance with Article 121 of the Rules of Procedure.
88 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful in relation to all its heads of claim, in the absence of exceptional reasons in the present case, the costs should not be divided. Therefore, the applicant must be ordered to pay the costs incurred by OHIM before the Court of First Instance and the Court of Justice, in accordance with the forms of order sought by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Shaker di L. Laudato & C. Sas to pay all the costs of the proceedings before the Court of First Instance and the Court of Justice.
Tiili | Dehousse | Wiszniewska-Białecka |
Delivered in open court in Luxembourg on 12 November 2008.
[Signatures]