Case T-472/08
Companhia Muller de Bebidas
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark – Opposition proceedings – Application for Community figurative mark 61 A NOSSA ALEGRIA – Earlier national word mark CACHAÇA 51 and earlier national figurative marks Cachaça 51 and Pirassununga 51 – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
Summary of the Judgment
1. 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
(Council Regulation No 40/94, Art. 8(1)(b))
2. 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 – Similarity of the marks concerned
(Council Regulation No 40/94, Art. 8(1)(b))
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 of the marks concerned – Criteria for assessment – Complex mark
(Council Regulation No 40/94, Art. 8(1)(b))
4. 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 of the marks concerned
(Council Regulation No 40/94, Art. 8(1)(b))
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 – Similarity of the marks concerned
(Council Regulation No 40/94, Art. 8(1)(b))
1. For the average Portuguese, Spanish, United Kingdom, Austrian and Danish consumer, there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, between, first, the figurative sign 61 A NOSSA ALEGRIA, whose registration as a Community trade mark is sought for ‘Alcoholic beverages (except beers)’ in Class 33 of the Nice Agreement and, second, the word mark CACHAÇA 51 and the figurative marks Cachaça 51 and Pirassununga 51, registered earlier in Portugal, Spain, the United Kingdom, Austria and Denmark in respect of identical goods.
For the consumers concerned, the marks at issue will convey a visual impression and a phonetic impression which are similar to a low degree and a conceptual impression which is similar to an average or low degree.
The goods in question are usually widely distributed and are also sold not only in specialist shops, but in large shopping centres as well. Only secondary importance should therefore be accorded to the phonetic perception of the marks at issue in the overall impression created by them. By contrast, the visual and conceptual perceptions are preponderant in that overall impression.
Account should be taken of the fact that the marks at issue are based, visually and conceptually, on the association of alcoholic beverages or liqueurs made of sugar cane and, more specifically, in the case of the earlier Portuguese marks, cachaça, with a particular number, namely 51 in the earlier marks and 61 in the mark applied for, which do not or will not immediately call to mind, on the part of the relevant public, a given characteristic of the type of goods in question. That number is, in an identical fashion in the marks at issue, a two‑digit whole, natural, odd number, whose second digit, namely the unit, is 1. Moreover, the visual and conceptual dissimilarities between the marks at issue as a result of the graphic and value differences between the numbers 50 and 60 are attenuated by the fact that, first, the way in which the digit 5 is written is closer to the way in which the digit 6 is written than to the way in which other digits are written, and vice versa, and that, second, in ascending order of tens, the number 50 is immediately below the number 60, so that the relevant public, which is reasonably well informed and reasonably observant and circumspect, will attach a relatively close value to those numbers.
Moreover, the earlier marks and the mark applied for have, or, in the case of the earlier Portuguese word mark, may have in common, from a visual point of view, the representation of their numbers in a large size, in a central position in the sign, in simple white characters, which stand out on a dark background.
As regards the figurative elements of the figurative marks at issue, they are not, in themselves, capable of distinguishing sufficiently the earlier figurative marks and the mark applied for and from ruling out any likelihood of confusion.
Even if the relevant public were capable of perceiving certain dissimilarities between the marks at issue, there is a real likelihood that it would establish a link between those marks, in view of all the foregoing considerations, and of the identity of the goods covered by those marks. Ultimately, those dissimilarities do not appear sufficient to rule out any likelihood that the relevant public or, at the very least, the average Portuguese consumer of alcoholic beverages displaying an average level of attention might believe, relying on his imperfect overall recollection of those marks, that the goods covered by them come from the same undertaking or from economically‑linked undertakings.
(see paras 39, 104, 106-110, 112)
2. The global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered.
(see paras 46-47)
3. The 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. The comparison must be made by examining each of the marks in question as a whole, but that 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 may be the case, in particular, where that component is likely by itself to dominate the image of that mark recollected by the relevant public, with the result that the other components of the mark are negligible in the overall impression created by the mark. The fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible.
(see para. 48)
4. Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark.
(see para. 49)
5. In the context of the examination of an opposition brought by the proprietor of the earlier mark, under Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, there is nothing to prevent any visual similarity between a word mark and a figurative mark being determined, since both types of mark have graphic form capable of creating a visual impression.
(see para. 50)