Case T‑268/18

(Publication by extracts)

Luciano Sandrone

v

European Union Intellectual Property Office

 Judgment of the General Court (Seventh Chamber), 27 June 2019

(EU trade mark — Opposition proceedings — Application for EU word mark Luciano Sandrone — Earlier EU word mark DON LUCIANO — Genuine use of the earlier mark — Article 47(2) and (3) of Regulation (EU) 2017/1001 — Relative ground for refusal — Article 8(1)(b) of Regulation 2017/1001 — Application for an EU word mark consisting of a first name and of a surname — Earlier mark consisting of an honorific title and a first name — Neutrality of the conceptual comparison — No likelihood of confusion)

1.      EU trade mark — Definition and acquisition of the EU 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 — Word marks Luciano Sandrone and DON LUCIANO

(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))

(see paragraphs 64, 91, 97-104)

2.      EU trade mark — Definition and acquisition of the EU 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 of the marks in question — Assessment of the distinctiveness of an element composing a trade mark

(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))

(see paragraphs 71, 73)

3.      EU trade mark — Definition and acquisition of the EU 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 — Criteria for assessment

(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))

(see paragraphs 93, 96)

Résumé

In the judgment in Sandrone v EUIPO (T‑268/18), delivered on 27 June 2019, the Court annulled the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 February 2018, by which it annulled the decision of 12 April 2017 of the Opposition Division rejecting the opposition brought by the proprietor of the earlier word mark DON LUCIANO, registered for ‘Alcoholic beverages (except beer)’, against the application for registration of the word mark Luciano Sandrone for ‘Alcoholic beverages except beer; preparations for making alcoholic beverages’.

As regards the comparison of signs, the Court, on an examination, first of all, of a dominant element, overturned the Board of Appeal’s assessment that the first name Luciano, in the sign which is the subject of the trade mark application, is perceived as rare by the relevant public of Germany and Finland. The Court distinguished here between the very attribution of the first name and its knowledge by the relevant public, in view of the numerous exchanges within the European Union and of current means of electronic communication. It stated that, although it is well known that the first name Luciano is not very common among the population of Germany and Finland, that fact alone does not mean that this first name will be perceived as a rare first name in those Member States.

The Court therefore came to the conclusion that the Board of Appeal should have considered that the elements ‘luciano’ in the earlier mark and ‘sandrone’ in the sign which is the subject of the trade mark application were dominant, the former of which it was correct in finding, the latter of which it was not, since that surname is not perceived as common.

As regards the conceptual comparison, the Court notes that the Board of Appeal did not identify any concept with which the first name and surname at issue could be associated and, therefore, the sole fact that the relevant public will associate the sign applied for with a first name and a surname and therefore with a specific person, imaginary or real, and that the earlier mark will be perceived as referring to a person named Luciano is irrelevant for the purposes of a conceptual comparison of the signs at issue. It therefore rejected the assessment made by the Board of Appeal and considered, as observed by EUIPO, which had departed in its written submissions from the Board of Appeal’s assessment on that point, that, in the present case, a conceptual comparison was not possible, since the first names and surname contained in the signs at issue do not contain any concept.

As regards the global assessment of the likelihood of confusion, the Court noted that the Board of Appeal has, first, made errors by failing to take into account the dominant aspect of the element ‘sandrone’ in the sign covered by the trade mark application and that it is not possible to make a conceptual comparison. Secondly, it also stated that it was wrong not to take into account several specific features of the goods at issue, namely that, in the wine-growing world, names carry great weight, whether surnames or names of vineyards, since they are used to reference and describe wines. Thus, it is considered that it is that distinctive element ‘sandrone’ which will serve to identify the applicant’s wines, or the name as a whole, that is to say, ‘Luciano Sandrone’, but not the element ‘luciano’ alone. The Court emphasised that the Board of Appeal also did not take into account the prevalence of real or assumed Spanish or Italian first names or surnames in the wine market and the fact that consumers are used to trade marks which contain such names, so that they will not assume that every time such a first name or surname occurs in a trade mark in conjunction with other elements, that it indicates that the goods for which it is used all emanate from the same source.

The Court therefore concluded that in the wine sector, where the use of signs consisting of surnames or first names is very common, it was implausible that the average consumer might believe that there is an economic link between the proprietors of the signs at issue merely because they share the Italian first name Luciano. It cannot be concluded from that fact alone, as far as concerns trade marks covering wines, that there is a likelihood of confusion since the relevant public will not expect only one producer to use such a common first name as an element of a trade mark.