JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
5 December 2012 (*)
(Community trade mark – Opposition proceedings – Application for a Community figurative mark ‘F.F.R.’ – Earlier national figurative marks CHIANTI CLASSICO – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) and 8(5) of Regulation (EC) No 207/2009)
In Case T‑143/11,
Consorzio vino Chianti Classico, established in Radda in Chianti (Italy), represented by S. Corona, G. Ciccone and A. Loffredo, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by V. Melgar and G. Mannucci, and subsequently by V. Melgar and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Fédération française de rugby (FFR), established in Marcoussis (France),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 10 January 2011 (Case R 43/2010-4), concerning opposition proceedings between Consorzio vino Chianti Classico and Fédération française de rugby (FFR),
THE GENERAL COURT (Fourth Chamber),
composed of I. Pelikánová, President, K. Jürimäe and M. van der Woude (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 9 March 2011,
having regard to the response lodged at the Registry of the General Court on 21 June 2011,
having regard to the order of 26 September 2011 refusing to grant leave to the FFR to participate in the proceedings as an intervener under Article 134(1) of the Rules of Procedure of the General Court,
having regard to the decision of 3 November 2011 refusing leave to lodge a reply,
having regard to the reassignment of the case to the Fourth Chamber on the ground that the Judge-Rapporteur initially designated was no longer able to act,
having regard to the measures of organisation of procedure of 14 May 2012,
further to the hearing on 20 June 2012,
gives the following
Judgment
Background to the dispute
1 On 13 February 2007, the Fédération française de rugby (FFR) filed an application for registration of a Community trade mark with 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the figurative sign reproduced below, with the description ‘orange-yellow: PMS reference 1235 C; gold: PMS reference 145 C; red: PMS reference 1795 C’:
3 The goods in respect of which registration was sought are in, inter alia, Class 33 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘alcoholic beverages (except beers)’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 40/2007 of 6 August 2007.
5 On 31 October 2007, the applicant, Consorzio vino Chianti Classico, filed a notice of opposition to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based on, inter alia, the following earlier rights:
– the Italian collective trade mark registration of the figurative mark reproduced below, which was filed on 18 July 1967 for ‘Wine of the area of Classic Chianti’ coming within Class 33,
– the Italian collective trade mark registration No 856049 of the figurative mark reproduced below, which was filed on 11 February 1999 and registered on 29 November 2001 for ‘Chianti wine’ coming within Class 33,
– the Italian collective trade mark registration No 856219 of the figurative mark reproduced below, claiming the colours ‘black, gold, white, red’, which was filed on 12 March 1999 and registered on 30 November 2001 for ‘wines’ coming within Class 33,
– the Italian collective trade mark registration No 1006311 of the figurative mark reproduced below, claiming the colours ‘red, black, shaded gold, white, brown’, which was filed on 20 June 2005 and registered on 5 May 2006 for ‘wines’ coming within Class 33,
– the Italian collective trade mark registration No 856048 for the figurative mark reproduced below, claiming the colours ‘black, gold, white, red’, which was filed on 11 February 1999 and registered on 29 November 2001 for ‘Chianti wine’ coming within Class 33,
– the United Kingdom collective trade mark registration No 1215633 of the figurative mark reproduced below, which was filed on 23 March 1984, registered on 18 September 1998 and renewed on 16 February 2005 for ‘Chianti wines’ coming within Class 33,
– the well-known trade mark in Germany and France, reproduced below,
7 The grounds relied on in support of the opposition were, inter alia, those laid down in Article 8(1)(b) and 8(5) of Regulation No 40/94 (now Article 8(1)(b) and 8(5) of Regulation No 207/2009).
8 By decision of 29 October 2009, the Opposition Division upheld, on the basis of the registration of the earlier trade mark in the United Kingdom, the opposition pursuant to Article 8(1)(b) of Regulation No 207/2009.
9 On 24 December 2009, the FFR filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 10 January 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM annulled the decision of the Opposition Division and rejected the opposition.
11 First, the Board of Appeal held that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the ground, essentially, that the mark applied for was ‘sufficiently distant’ from all of the earlier marks for such a likelihood to be excluded, even for identical goods and taking into consideration the enhanced distinctiveness of the earlier marks. As a preliminary point, the Board of Appeal defined the relevant public as being made up of the general public in the United Kingdom and Italy. Next, so far as concerns the comparison of the signs, the Board of Appeal held that, from a visual point of view, ‘the only similarity [was] limited to the fact that both trade marks [contained] in their centre the device of a rooster shown from the side and facing left’ before taking the view that ‘[that] coincidence ... should not be overestimated’ in view of the differences between those roosters, the respective designs of the marks at issue, and the word elements of each mark. The Board of Appeal went on to hold that, phonetically, the marks were clearly dissimilar. Conceptually, the Board of Appeal found that the comparison was ‘neutral’ on the grounds, first, that the rooster contained in the marks at issue could not in itself cause a relevant conceptual similarity, second, that the earlier mark resembled a seal, whereas the mark applied for was more akin to an armorial emblem and, third, that only the word sequence in the earlier mark had a meaning for the Italian public. Lastly, the Board of Appeal held that there was no likelihood of confusion with regard to the earlier marks, including in respect of the well-known mark in Germany and France, and it therefore did not find it necessary to examine whether the applicant had established the well-known character of that mark.
12 Second, as it took the view that the signs were dissimilar, the Board of Appeal also rejected the opposition in so far as it was based on Article 8(5) of Regulation No 207/2009.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– reject the application for registration of a Community trade mark for goods in Class 33;
– in the alternative, amend the contested decision and reject the application for a Community trade mark in respect of ‘wines’ in Class 33;
– order the FFR to bear its own costs and to pay the costs of the applicant, including those incurred in the course of the proceedings before OHIM.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay OHIM’s costs.
15 At the hearing, the applicant added to the form of order which it sought by requesting that it should not be ordered to pay the costs.
Law
16 In support of the present action, the applicant puts forward, in essence, two pleas in law alleging, first, misapplication of Article 8(1)(b) of Regulation No 207/2009 and, second, misapplication of Article 8(5) of that regulation.
The first plea in law, alleging misapplication of Article 8(1)(b) of Regulation No 207/2009
17 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 is not to be registered if, because of its identity with, or similarity to, an 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. In addition, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ should be understood as meaning, inter alia, on the one hand, trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, and, on the other, under Article 8(2)(c) of that regulation, trade marks which, on the date of application for registration of the Community trade mark, are ‘well known’ in a Member State within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.
18 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 from economically-linked undertakings constitutes a likelihood of confusion. According to the same 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 in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that 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).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
The relevant public
20 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
21 First, in view of the nature of the goods concerned, the Board of Appeal acted correctly in law in finding that the relevant public was made up of the general public; that finding is not disputed by the parties. Those consumers must be considered to be reasonably well informed and reasonably observant and circumspect.
22 Second, as regards the territory in relation to which the likelihood of confusion must be assessed, the Board of Appeal held, in paragraph 19 of the contested decision, that the opposition was based on six registered earlier marks, five of which were protected in Italy and one in the United Kingdom. In the light of that finding, the Board of Appeal defined the relevant public as being made up of average consumers of the goods in question in Italy and the United Kingdom; that finding is not disputed by the parties.
23 However, it must be noted that, in addition to the earlier marks registered in Italy and the United Kingdom, the opposition was also based on a ‘trade mark well known’ in Germany and France, referred to in paragraph 2(g) of the contested decision. In that context, on the assumption that that mark fulfilled the conditions of Article 8(2)(c) of Regulation No 207/2009 and therefore constituted an ‘earlier trade mark’ for the purposes of application of Article 8(1) of that regulation, the Board of Appeal ought to have taken into account, in the definition of the relevant pubic, the average consumers of the goods in question in Germany and France.
24 When questioned in that regard at the hearing, OHIM explained that it had, for reasons of procedural economy, confined its examination of the likelihood of confusion to the Italian collective trade mark registration No 856049, since this was closest to the mark applied for.
25 However, it should be borne in mind that the Board of Appeal could not, in the present case, exclude the existence of a likelihood of confusion and allow registration of the mark applied for without taking account of the perception of the marks at issue by the consumers in all of the territories in which the earlier marks are to be found.
26 It is therefore necessary to assess the soundness of the Board of Appeal’s analysis of the likelihood of confusion in the light of the perception on the part of the relevant public comprising consumers in Italy, the United Kingdom, France and Germany.
Comparison of the signs
27 According to settled case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30). The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such a likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
28 In the present case, the Board of Appeal took the view that the mark applied for was ‘sufficiently distant’ from all of the earlier marks. So far as concerns the visual aspect, the Board of Appeal found that there was a degree of visual similarity on account of the fact that both marks contain the device of a rooster in their centre, before holding that ‘[that] coincidence ... should not be overestimated’, given the significant differences between the roosters, the word elements and the respective designs of the marks at issue. The Board of Appeal went on to hold that the signs were phonetically different and that the conceptual comparison was ‘neutral’.
29 The applicant claims that the signs at issue are similar to a high degree. According to the applicant, the fact that the two marks at issue both contain a rooster is an important element of similarity in so far as there is a high degree of similarity between those roosters. Furthermore, the rooster is the dominant element of the marks at issue in view of its central position and size in each of those marks. Moreover, the applicant continues, the Board of Appeal did not take account of some of the elements common to both signs which would have led to the conclusion that the similarities between the signs are more significant than the differences.
30 OHIM takes the view that the visual and phonetic differences between the marks at issue are striking, while there is a very low degree of conceptual similarity between them as a result of the fact that both of those marks contain a representation of the same animal.
31 It must be noted that the contested decision contains a degree of ambiguity with regard to the similarity of the signs at issue. That decision states, on the one hand, that the mark applied for is ‘sufficiently distant’ from all of the earlier marks, but without explaining what is to be understood by the adjective ‘distant’. On the other hand, the contested decision refers, in paragraph 20, to a similarity of the marks.
32 When questioned in that regard in the context of a measure of organisation of procedure, OHIM stated at the hearing that, notwithstanding the Board of Appeal’s use of the word ‘similarity’ in paragraph 20 of the contested decision, that decision had to be regarded as concluding that there was no similarity between the signs.
33 However, despite OHIM’s submissions, it must be stated that the Board of Appeal found that there was a degree of similarity between the signs. It must be noted that the Board of Appeal referred, in paragraph 20 of the contested decision, to a ‘similarity’ between the signs and that it assessed the likelihood of confusion, whereas that assessment would have made no sense in the absence of similarity between the signs.
34 As regards the comparison of the signs, the Board of Appeal’s assessment must be upheld.
35 It must be noted at the outset that the Board of Appeal compared, first, the mark applied for with the earlier mark No 856049, finding that the earlier mark, registered in black and white, was more widely protected since that protection also extended to colour combinations. It then stated, in paragraph 23 of the contested decision, that the assessment of the similarity of the signs also applied to the remaining earlier marks.
36 It is therefore necessary to compare the mark applied for with all of the earlier marks.
37 Visually, it should be noted at the outset that, as the Board of Appeal correctly pointed out in paragraph 20 of the contested decision, the marks at issue both contain the figure of a rooster in their centre, at the same level and facing left. In addition, those roosters are similar to the extent that, as the applicant states, they both have a prominent crest and a very broad tail.
38 It must be noted that the identical nature of the rooster, which is represented in a similar way and bears common physical characteristics, constitutes a factor of visual similarity, given that that element fulfils, in view of its size and central position, an important role with regard to how the marks at issue are perceived.
39 Furthermore, the word elements of the marks at issue are visually different, as the Board of Appeal held in paragraph 20 of the contested decision, by reason of the differences between their length, structure and the letters which they contain. Likewise, the mark applied for is in the shape of a shield, whereas the earlier mark No 856049, like the other earlier marks, has concentric circles.
40 However, in view of their size and their position within the marks, it must be found that those differences are not such as to eclipse the visual similarity resulting from the fact that both contain roosters. Given that the average consumer must, as a general rule, place his trust in the imperfect picture of the marks that he has kept in his mind (see, to that effect, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26), the visual perception of the marks at issue will not be sufficiently affected by those visual differences.
41 It follows that, when viewed overall, the marks at issue have a certain degree of visual similarity given the significant presence of a rooster at the centre of each of them.
42 In that regard, as the Board of Appeal correctly held, it must be added that the visual similarity is weakened with regard to the earlier marks in respect of which certain colour combinations were claimed, in so far as those colour combinations are different to that of the mark applied for.
43 Phonetically, it is appropriate to confirm the assessment made by the Board of Appeal to the effect that the signs at issue are clearly dissimilar since the word elements of the marks at issue are pronounced very differently in all of the languages spoken by the relevant public.
44 In that regard, it is necessary to reject the applicant’s argument, based on, inter alia, a decision of the Second Board of Appeal of OHIM of 6 February 2007 in Case R 22/2006‑2 KIANTY EXPERIENCE v CONSORZIO DEL MARCHIO STORICO CHIANTI CLASSICO, to the effect that there is phonetic similarity resulting from the fact that the consumer, when describing the marks at issue by referring to their common figurative element, will use similar expressions including the word ‘rooster’. Contrary to what the applicant claims, it must be found that, when referring to the marks at issue, the public will most likely cite their word element but not describe their figurative element (see, to that effect, Joined Cases T‑5/08 to T‑7/08 Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe) [2010] ECR II‑1177, paragraph 67). That conclusion is all the more compelling because, as OHIM points out, consumers of products in the wine sector usually describe and recognise wine by reference to the word element which serves to identify it, in particular in bars and restaurants where wines are ordered orally after their names have been seen on the wine list (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), not published in the ECR, paragraph 38). The same is true for alcoholic beverages in general since these are also consumed in bars and restaurants.
45 Moreover, it must be noted that that conclusion is not called into question by the decision of OHIM in KIANTY EXPERIENCE v CONSORZIO DEL MARCHIO STORICO CHIANTI CLASSICO, relied on by the applicant. That decision concerned certain goods in Class 3, such as, inter alia, cleaning and laundry products, soaps or perfumery, but, unlike the present case, did not concern the wine or alcoholic beverages sector. In any event, that decision cannot therefore call into question the finding that, in the present case, the relevant public will be more inclined to identify the marks at issue by their word element and not by their figurative element.
46 Conceptually, it must be noted, first, that each of the word elements of the marks at issue belong to different languages and that they are therefore not able to be compared conceptually. The letters ‘ffr’ of the mark applied for make up the acronym of the Fédération française de rugby and are generally understood in that way by French-speaking consumers, whereas all of the word elements of the earlier marks are Italian.
47 If, however, some of the consumers who make up the relevant public have a sufficient knowledge of both French and Italian and are able to understand the word elements of the marks at issue, they would find that the signs at issue are conceptually dissimilar.
48 In addition, as the Board of Appeal correctly pointed out in paragraph 22 of the contested decision, the respective designs of the marks at issue also introduce conceptual differences between them. The mark applied for resembles an armorial emblem recalling the distinctive symbol associated with nobility or guilds used to identify people or professions, whereas the earlier marks are more akin to a seal indicating the mark of a sovereign authority such as that of the State and are designed to certify, or even seal, a particular object.
49 Finally, so far as concerns the applicant’s argument that the marks at issue recall the concept of pride, it should be noted that, while that argument must be interpreted as meaning that that idea is associated with the representation of the rooster, it is not, however, sufficiently immediate for the marks at issue to be considered to be conceptually similar. On the one hand, it cannot be inferred from the presence of the rooster that the marks suggest or transmit to the relevant public an idea of pride in relation to the goods in question. On the other hand, that idea is not sufficiently clear to lead to a finding of conceptual similarity on the part of the relevant public, in view of, inter alia, the conceptual differences resulting from the other elements of the marks at issue, referred to above.
50 It follows that, when viewed overall, the marks at issue are conceptually dissimilar in terms of content.
51 In the light of all the foregoing, it must be concluded that there is a low degree of similarity between the signs at issue. The existence of a certain degree of visual similarity, by reason of the presence, in the centre of the marks, of a rooster represented in a similar way, as the Board of Appeal correctly emphasised in paragraph 20 of the contested decision, is weakened by the phonetic and conceptual differences, as the Board of Appeal also properly observed, to the extent that it must be found that there is a low degree of overall similarity between the marks.
52 Accordingly, it is necessary to examine the Board of Appeal’s assessment of the likelihood of confusion in the contested decision.
The likelihood of confusion
53 A likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).
54 In the present case, at paragraph 29 of the contested decision, the Board of Appeal held that there was no likelihood of confusion, notwithstanding the identical nature of the goods in question and any enhanced distinctive character of the earlier marks.
55 First of all, the Board of Appeal’s assessment that the goods in question are identical, which has, moreover, not been disputed by the parties, should be upheld.
56 It should also be noted that there is a low degree of similarity between the signs at issue, in particular by reason of their phonetic and visual differences, which weaken the visual similarity of the signs.
57 Moreover, it should be borne in mind that, in accordance with the case‑law referred to in paragraph 44 above, the word elements of the marks at issue are significant to how the marks are perceived as a whole, since the relevant public is used to recognising goods by their word element. Particular consideration therefore needs to be given to the differences created by those elements both phonetically and visually.
58 So far as concerns the alleged distinctive character of the earlier marks, the Board of Appeal held, in paragraphs 25 and 26 of the contested decision, that the applicant had claimed and established the public’s recognition of the single figure of a ‘black rooster’, associated with Chianti Classico wines, without making any reference to, in particular, the enhanced distinctive character of an earlier mark. The applicant does not dispute that finding. Moreover, as the Board of Appeal correctly held, the figure of the black rooster is not reproduced in the mark applied for, which contains an orange rooster. Therefore, the relevant public will not associate figures in very different colours, such as the striking orange colour used in the mark applied for, with those wines.
59 Thus, even though the earlier marks have enhanced distinctive character, that fact cannot compensate for the absence of a likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009, in view of the conceptual, phonetic and visual differences, as well as the significance to be attributed, in the present case, to the differences between the word elements of the marks at issue.
60 In the light of the foregoing, it must be found that it is unlikely that the relevant public could believe that the goods in question come from the same undertaking or from economically-linked undertakings. Accordingly, the Board of Appeal acted correctly in law in holding that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.
61 That conclusion cannot be brought into question by the applicant’s argument relating to the special nature of the earlier mark, the function of which, as a collective trade mark registration, is to guarantee the quality of the goods in question. It must be noted that the applicant merely describes the particular features of the collective trade mark, without explaining to what extent the taking into account of those features might have had a bearing on the Board of Appeal’s conclusion and, therefore, lead to the annulment of the contested decision. In that regard, it must be held that a collective mark cannot enjoy enhanced protection under Article 8(1)(b) of Regulation No 207/2009, in particular if it has been found that the similarity between the signs was not sufficient to give rise to a likelihood of confusion.
62 In those circumstances, as the finding that there is no likelihood of confusion between the marks at issue is also valid in respect of all members of the relevant public, and therefore also with regard to the well-known mark in Germany and France, it is not necessary to establish whether that well-known mark fulfilled the conditions laid down in Article 8(2)(c) of Regulation No 207/2009.
63 It follows from all of the foregoing that the first plea in law must be rejected as being unfounded.
The second plea in law, alleging breach of Article 8(5) of Regulation No 207/2009
64 Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered where it is identical with, or similar to, the earlier trade mark and where it is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
65 It is also apparent from the wording of Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: first, that the marks at issue are identical or similar; second, that the earlier mark cited in opposition has a reputation; and, third, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Since those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (Case T‑67/04 Spa Monopole v OHIM – Spa‑Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II‑1825, paragraph 30).
66 In the present case, in paragraph 30 of the contested decision, the Board of Appeal, basing itself on the comparison of the signs made in the course of the examination of the ground of opposition derived from Article 8(1)(b) of Regulation No 207/2009, rejected the opposition in so far as it was based on Article 8(5) of that regulation, on the ground that the condition relating to the similarity of the signs had not been met.
67 However, it is apparent from paragraphs 27 to 52 above that the marks have a low degree of similarity.
68 Consequently, the Board of Appeal erred in rejecting the ground of opposition based on Article 8(5) of Regulation No 207/2009 for the reason that the marks were not at all similar, without examining the other conditions governing the applicability of that provision.
69 It follows that the contested decision must be annulled in so far as the Board of Appeal rejected the ground of opposition based on Article 8(5) of Regulation No 207/2009.
70 So far as concerns the applicant’s formal claim that the Court should reject the application for registration of a Community trade mark, it must be borne in mind that the power of the Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on the Court the power to carry out an assessment on which the Board of Appeal concerned has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (Case C‑263/09 P Edwin v OHIM [2011] ECR I‑0000, paragraph 72).
71 In the present case, since the Board of Appeal rejected the ground of opposition relating to Article 8(5) of Regulation No 207/2009 on the ground that the signs were not similar, without examining the other conditions governing the applicability of that provision, it is not for the Court, in the present case, to carry out that examination.
72 Consequently, the applicant’s application for alteration must be dismissed.
Costs
73 Under Article 87(3) of the Rules of Procedure, the Court may order that each party bear its own costs where each party succeeds on some and fails on other heads. In the present case, each party must be ordered to bear its own costs incurred in the course of the proceedings before the Court.
74 In addition, in so far as the applicant has also applied for costs incurred in the course of the proceedings before OHIM, it should be borne in mind that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case with regard to the costs incurred for the purposes of proceedings before the Opposition Division. Consequently, the applicant’s claim concerning the costs relating to the proceedings before the Opposition Division, which are not recoverable costs, is inadmissible. With regard to the applicant’s claim relating to the costs of the proceedings before the Board of Appeal, it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to those proceedings (see, to that effect, judgment of 28 June 2011 in Case T‑483/09 ATB Norte v OHIM – Bricocenter Italia (Affiliato BRICO CENTER), not published in the ECR, paragraph 69).
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 10 January 2011 (Case R 43/2010‑4) in so far as the Board of Appeal rejected the opposition based on Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark;
2. Dismisses the action as to the remainder;
3. Orders Consorzio vino Chianti Classico and OHIM each to bear the costs which they have incurred in the course of the proceedings before the General Court.
Pelikánová | Jürimäe | Van der Woude |
Delivered in open court in Luxembourg on 5 December 2012.
[Signatures]