JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
27 June 2019(*) (1)
(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)
In Case T‑268/18,
Luciano Sandrone, residing in Barolo (Italy), represented by A. Borra, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Kompari and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
J. García Carrión, SA, established in Jumilla (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 26 February 2018 (Case R 1207/2017-2), relating to opposition proceedings between J. García Carrión and Luciano Sandrone,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, E. Bieliūnas and A. Kornezov (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 27 April 2018,
having regard to the response lodged on 1 August 2018,
further to the hearing on 28 February 2019,
gives the following
Judgment
Background to the dispute
1 On 27 July 2015, the applicant, Mr Luciano Sandrone, who runs a one‑man private company bearing his surname and first name, filed an application for registration of a European Union trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign Luciano Sandrone.
3 The goods and services for which registration was sought are in Classes 16, 33 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for the goods at issue in the present case, to the following description: ‘Alcoholic beverages (except beer); preparations for making alcoholic beverages’ in Class 33.
4 The trade mark application was published in Community Trade Marks Bulletin No 2015/154 of 18 August 2015.
5 On 16 November 2015, J. García Carrión, SA, filed notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the trade mark applied for in respect of the goods in Class 33 referred to in paragraph 3 above.
6 The opposition was based on the earlier EU word mark DON LUCIANO, registered on 5 July 2002 under No 2211357 and duly renewed since then.
7 The goods for which the earlier mark has been registered are in Class 33 and correspond to the following description: ‘Alcoholic beverages (except beer)’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9 The applicant requested that the opponent produce evidence of genuine use of the earlier mark. The opponent complied with that request by supplying documents.
10 By decision of 12 April 2017, the Opposition Division rejected the opposition, ruling out any likelihood of confusion, despite the identity or similarity of the goods in question, since the only thing that the signs have in common is a first name, Luciano, which is less distinctive than a surname, such as in the present case, Sandrone, which allows a consumer, displaying an average level of attention, to differentiate those goods.
11 On 6 June 2017, the opponent filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.
12 By decision of 26 February 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division and upheld the opposition.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
14 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
15 In support of the action, the applicant relies, in essence, on two pleas in law, alleging, first, that the Board of Appeal infringed Article 47(2) and (3) of Regulation 2017/1001 and, second, that it breached Article 8(1)(b) of that regulation.
The alleged infringement of Article 47(2) and (3) of Regulation 2017/1001
16 The applicant considers that the opponent has not proved genuine use of the earlier mark with the documents that it has produced.
17 Pursuant to Article 47(2) of Regulation 2017/1001, in essence, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the five-year period preceding the date of filing of the trade mark application, the earlier trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition. In the absence of proof to this effect, the opposition is to be rejected.
18 According to case-law, the purpose of Article 47(2) and (3) of Regulation 2017/1001 is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 38). There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39).
19 In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of that case. That assessment implies a certain interdependence between the factors taken into account. Thus, the fact that the commercial volume achieved under the mark was not high may be offset by the fact that the use of the mark was extensive or very regular, and vice versa. The turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
20 It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold must be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. Therefore, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (see, to that effect, judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).
21 In addition, genuine use of the trade mark requires that the mark be used publicly and outwardly by the undertaking (see, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
22 Under Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), proof of use must relate to the place, duration, extent and nature of use of the earlier mark.
23 In the present case, it should be stated that the Board of Appeal found that the reference period was between 18 August 2010 and 17 August 2015 inclusive (see paragraph 24 of the contested decision). The opponent provided various documents as proof of the genuine use of the earlier mark during that time, namely, first, 53 invoices issued between 2011 and 2015 sent to various clients in Spain or other EU countries; second, an announcement of the wine ‘DON LUCIANO 2009 D.O. — La Mancha’, on sale for 1 euro per bottle, in the wine catalogue of a supermarket chain, during a two-week period from 15 to 31 October 2010; and, third, pictures of wine bottles with the name Don Luciano on their labels in an undated brochure and a screenshot from the opponent’s website ‘dated 2014’ (paragraph 26 of the contested decision).
24 It must be stated at the outset that there were not 54 invoices, as the Board of Appeal stated in paragraph 26 of the contested decision, but, as is apparent from Annex A 15 to the application, 53 invoices, in so far as the opponent produced the same invoice twice (which is dated 12 March 2014, bearing the reference 0903386681 and is included in that annex successively under number 506 and under number 513). When questioned on that point at the hearing, EUIPO stated that it was content to leave the matter to the discretion of the Court.
25 In the contested decision (paragraphs 27 to 34), the Board of Appeal examined each of the four criteria referred to in paragraph 22 above.
Place of use
26 As regards the place of use, it is apparent from the invoices produced that they related to a large part of the territory of the European Union, that is to say, 11 Member States (see paragraph 29 of the contested decision), which the applicant does not dispute. It must therefore be held that that criterion is satisfied.
Duration of use
27 As regards the duration of use, the Board of Appeal noted that the invoices produced related to the period from 2011 to 2015, that the wine catalogue was dated October 2010 and that the screenshot of the opponent’s website was ‘dated 2014’.
28 It is apparent from the case-law that consistency of use is established by the repetition of acts which contribute to it, the earlier mark being required to have been used, at the very least, for a part of that period (see, to that effect, judgment of 25 April 2018, Walfood v EUIPO — Romanov Holding (CHATKA), T‑312/16, not published, EU:T:2018:221, paragraph 113), and not, as the applicant wrongly claims, during that five-year period without interruption.
29 It must be stated that the 53 invoices produced are spread over a period from 21 October 2011 to 1 December 2015. Such a period of more than 4 years represents almost all of the relevant time and the invoices at issue illustrate a high degree of regularity in sales. Consequently, the Board of Appeal was entitled to find, in paragraphs 26, 27 and 32 of the contested decision, that the invoices produced covered the 2011-2015 period.
30 As regards the other two items of evidence, namely the catalogue dated October 2010 and the screenshot of the opponent’s website ‘dated 2014’, the applicant contests their relevance on the ground that a catalogue is not evidence of marketing as such and that, in the alternative, that evidence relates only to the month of October 2010. In addition, the applicant claims that the year 2014 displayed on the screenshot is only the date of the copyright.
31 However, the inclusion of the earlier mark in a supermarket’s catalogue during a wine festival, at the beginning of the relevant period (October 2010), is, contrary to the applicant’s submissions, an indication of the use of that mark during the relevant period. As regards the argument that a catalogue does not constitute evidence of sales as such, it must be observed that, while it is true that a catalogue is not evidence of sales, it is, however, proof that the goods in question have been placed on the market and that those goods have actually been offered for sale to consumers.
32 The combination of both items of evidence, namely the catalogue and the invoices, covering the years 2010 to 2015, therefore enables the entire relevant time to be covered.
33 Lastly, as regards the screenshot of the opponent’s website, the Court finds that, although the applicant is in fact correct in maintaining that the reference to ‘2014’ refers to the copyright, that argument is, however, ineffective, since the opponent submitted other evidence covering the whole of the relevant period, including numerous invoices from 2014.
34 Having taken into account all of those factors, it must be held that the Board of Appeal was entitled to state, in the context of a global assessment, that the criterion of the duration of use of the earlier mark was satisfied.
The extent of use
35 With regard to the extent of use, the applicant submits, in essence, that the Board of Appeal erred in finding, in paragraph 33 of the contested decision, that the invoices submitted could ‘be considered as samples and d[id] not represent the total sales, as it c[ould] be inferred from their non-consecutive numbering’.
36 First of all, the Court observes, as did the Board of Appeal, that, alone on the basis of the 53 invoices produced in Annex A 15 to the application, ‘the quantities sold are far from being negligible’, in that often several thousand bottles were sold (up to 21 000 per invoice, namely 3 500 cases of six bottles of red wine: invoices of 29 January 2013, number 500, and of 13 January 2014, number 503). Consequently, despite the fact that the opponent’s prices are very low, the total amounts excluding value added tax (VAT) are themselves non-negligible (for example EUR 19 950 and EUR 18 270: abovementioned invoices 500 and 503; EUR 15 072 for 19 200 bottles (3 200 cases, namely 2 000 of red wine and 1 200 of white wine): invoice of 31 March 2013, number 477; EUR 13 972.50 for 20 250 bottles (3 375 cases) of red wine: invoice of 12 March 2014, number 506; EUR 8 482.50 for 9 750 bottles (1 625 cases) of red wine: invoice of 21 January 2015, number 510; EUR 7 005.24 for 10 614 bottles (1 250 cases of white wine, 269 cases of red wine and 250 cases of rosé wine): invoice of 23 November 2011, number 492; EUR 5 714 for 3 600 bottles (600 cases) and 3 600 half-bottles (150 packs of 24) of red wine: invoice of 31 January 2012, number 496; EUR 5 472 for 6 000 bottles (1 000 cases) of red wine: invoice of 24 October 2011, number 489, etc.).
37 Such invoices therefore provide ample evidence to establish the extent of the use.
38 Next, the Court endorses the Board of Appeal’s finding, in paragraph 33 of the contested decision, that the 53 invoices produced can be regarded as a sample of sales on account of ‘their non-consecutive numbering’. The Court has previously held that invoices submitted were provided ‘by way of illustration’, which was demonstrated by their non-consecutive numbering, and that therefore they ‘cannot represent the amount of actual sales of goods bearing the mark’ (see, to that effect, judgment of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 65).
39 In any event, even if the invoices produced did represent all the sales concluded during the relevant period, they already provide ample evidence of the extent of use, as noted in paragraph 37 above.
Nature of use
40 As regards the nature of use, the applicant states, first of all, that the presence of a wine in a catalogue or a brochure does not formally amount to marketing of that wine. That argument has, however, already been rejected in paragraph 31 above.
41 Next, according to the applicant, the invoices, the catalogue and the brochure do not refer to the earlier mark as registered, and therefore, the terms used in that evidence do not establish genuine use of the earlier mark. However, it must be stated, first, that although it is true that several invoices actually mention ‘D. LUCIANO’, the Board of Appeal explained, in paragraph 30 of the contested decision, that that was due to a lack of space, to the fact that in Spanish, the capital letter ‘D’ was an abbreviation of ‘Don’, that space on the invoices was limited, that ‘VINO D. LUCIANO’ was accompanied by several other items indicating the nature of the goods in question and that there was no indication that another wine would be sold by the opponent under the mark D. LUCIANO. The Court considers those explanations to be plausible.
42 Lastly, as regards the fact that the labels present in the catalogue and the brochure show the earlier mark in a graphic form different to that of the registration, since it replicates handwritten writing, the Court notes that any word mark must be capable of being represented in one way or another, in particular, as far as concerns wine, on labels. Since word marks are thus considered to be used as registered in so far as the graphic additions do not alter the general impression that they produce (see, to that effect, judgment of 12 December 2014, Ludwig Schokolade v OHIM — Immergut (TrinkFix), T‑105/13, not published, EU:T:2014:1070, paragraph 49), the Court finds, as EUIPO correctly stated in its reply, that the earlier mark has in the present case indeed been used as it was registered.
Conclusion as regards the first plea
43 It follows from the examination of the contested decision, in the light of the four criteria laid down in Rule 22(3) of Regulation No 2868/95, that the Board of Appeal was entitled to find, in the context of its overall assessment of the evidence adduced by the opponent, that the opponent had established genuine use of the earlier mark. The Court therefore rejects the first plea in law.
The alleged infringement of Article 8(1)(b) of Regulation 2017/1001
44 Under Article 8(1)(b) of Regulation 2017/1001, 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 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.
45 According to the 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 relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
46 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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, to that effect, judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
47 The Board of Appeal found, in paragraph 40 of the contested decision, that the relevant public consisted of consumers in the European Union and that, in view of the nature of the goods at issue, the relevant public included the general public whose level of attention is average.
48 The applicant does not dispute that analysis, but instead contends that its goods and those of the opponent necessarily target different consumers on account of their respective prices.
49 It should be noted in that regard that, according to settled case-law, alcoholic drinks are, in general, everyday consumer goods, which are usually subject to widespread distribution, ranging from the food section of supermarkets, department stores and other retail sales outlets, to restaurants and cafés (see, to that effect, judgments of 11 September 2014, Aroa Bodegas v OHIM — Bodegas Muga (aroa), T‑536/12, not published, EU:T:2014:770, paragraph 55, and of 4 May 2016, Bodegas Williams & Humbert v EUIPO — Central Hisumer (BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN), T‑193/15, not published, EU:T:2016:266, paragraph 24). Since a consumer of alcoholic drinks is a member of the general public, deemed to be reasonably well informed and reasonably observant and circumspect, he will have an average level of attention (see judgment of 4 May 2016, BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN, T‑193/15, not published, EU:T:2016:266, paragraph 25 and the case‑law cited; see also, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 39).
50 Nevertheless, it has also been held in the case-law that, if the mark applied for refers specifically to quality wines, sold at relatively high prices, the consumer may have a high level of attention (see, to that effect, judgments of 13 April 2011, Sociedad Agricola Requingua v OHIM — Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 29, and of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 24 (not published)).
51 In the present case, however, registration of the mark is sought for wines in general, and not specifically for quality wines sold at relatively high prices. Therefore, under the case-law cited in paragraphs 49 and 50 above, the goods referred to in the application for registration must be intended for everyday consumption, so that the consumer, as a general rule, will show an average level of attention when purchasing them (see, to that effect, judgment of 13 April 2011, TORO DE PIEDRA, T‑358/09, not published, EU:T:2011:174, paragraph 29). The Court therefore rejects the applicant’s argument on this point as unfounded.
The comparison of the goods
52 In paragraphs 42 to 44 of the contested decision, the Board of Appeal stated that the goods covered by the sign which is the subject of the trade mark application and those covered by the earlier mark were identical, as regards ‘alcoholic beverages except beer’, covered by that sign, and ‘wines’ covered by that mark for which genuine use had been established, and that they had ‘an average degree of similarity’, as regards ‘preparations for making alcoholic beverages’, to which that sign refers, and the abovementioned ‘wines’.
53 The applicant, while accepting that the sign which is the subject of the trade mark application and the earlier mark cover, in both cases, wines, nevertheless submits that the Board of Appeal failed to take into account several differences in the respective terroir, grape variety, label and price of the wines in question.
54 The Court finds, as did EUIPO, that it is clear from the case-law (see judgment of 5 October 2017, Versace 19.69 Abbigliamento Sportivo v EUIPO — Gianni Versace (VERSACE 19.69 ABBIGLIAMENTO SPORTIVO), T‑336/16, not published, EU:T:2017:691, paragraphs 57 and 58 and the case-law cited), that price range is not a relevant criterion for the purposes of the comparison of the goods; there is no subcategory of ‘luxury wines’, particularly, in the present case, the goods covered by the registration applied for are not in any way limited to ‘luxury wines’ but cover wines in general. That argument must therefore be rejected.
55 As regards the characteristics of the origin of the goods (terroir) or their nature (grape variety), it must be noted that the sign which is the subject of the trade mark application is not intended to be registered, for example, in respect of wines sold under the name ‘Barolo’, which is, however, covered by a protected designation of origin, but generally in respect of ‘alcoholic beverages except beer’. In accordance with settled case-law, all those goods must therefore be taken into account for the purposes of assessing whether there is a likelihood of confusion (see, to that effect, judgment of 30 June 2015, VIÑA ALBERDI, T‑489/13, EU:T:2015:446, paragraph 29 (not published)).
56 It is true that the Courts of the European Union have qualified that approach when the earlier mark or the trade mark application referred to goods covered by a designation of origin. Thus, for example, in the case which gave rise to the judgment of 30 June 2015, VIÑA ALBERDI (T‑489/13, EU:T:2015:446), the earlier mark had been registered specifically for ‘wines from Italy’. In that regard, this Court held that the designation of origin of a product could constitute a relevant consideration when purchased in so far as it was, for the consumer, an indication of its geographical origin and of the specific qualities inherent in it (paragraph 35). However, the fact that the consumer takes account of the designation of origin of a wine at the point of purchase cannot be regarded as being of such systemic importance that, as a consequence, wines of different designations of origin may constitute subcategories of goods capable of being considered separately from one another (paragraph 37). In that case, the Court held that ‘wines from Italy’ and the other wines were similar to an average degree (paragraph 46). In the same vein, the Court has held that the ‘Rioja wines’ covered by the mark which was sought and the ‘wines from Porto’ covered by one of the earlier marks had a low degree of similarity (see, to that effect, judgment of 15 February 2007, Bodegas Franco-Españolas v OHIM — Companhia Geral da Agricultura das Vinhas do Alto Douro (ROYAL), T‑501/04, not published, EU:T:2007:54, paragraph 43).
57 Unlike the cases referred to in paragraph 56 above, in the present case, the applicant did not restrict the goods covered by the registration applied for to certain designations of origin, or indeed to certain grape varieties. The applicant cannot therefore rely on any argument based on an allegedly different origin and grape variety of its wines in relation to those covered by the earlier mark.
58 Lastly, as regards the argument based on the various labels affixed to the goods designated by the signs at issue, it is sufficient to point out that, according to the case-law, such an argument is ineffective, since it is incapable of preventing the finding that there is any likelihood of confusion between the marks contained in the labelling (see, to that effect, judgment of 13 July 2005, Murúa Entrena v OHIM — Bodegas Murúa (Julián Murúa Entrena), T‑40/03, EU:T:2005:285, paragraphs 58 to 61).
59 The Board of Appeal was therefore entitled to find that the goods covered by the sign which is the subject of the trade mark application, namely ‘alcoholic beverages (except beer)’, and the ‘wines’ covered by the earlier mark, both of which are in Class 33, were identical, it having, in addition, been stated that the Board of Appeal’s finding that ‘preparations for making alcoholic beverages’ and ‘wines’ were of an average degree of similarity is not disputed.
The comparison of the signs
60 According to the 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, namely their visual, phonetic and conceptual aspects (judgments of 21 January 2016, Rod Leichtmetallräder v OHIM — Rodi TR (ROD), T‑75/15, not published, EU:T:2016:26, paragraph 25; of 28 March 2017, Regent University v EUIPO — Regent’s College (REGENT UNIVERSITY), T‑538/15, not published, EU:T:2017:226, paragraph 27; and of 8 November 2017, Steiniger v EUIPO — ista Deutschland (IST), T‑80/17, not published, EU:T:2017:784, paragraph 43).
61 Furthermore, the global assessment of the likelihood of confusion must, so 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 the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Account must also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must rely on his imperfect recollection of them (see judgments of 28 March 2017, REGENT UNIVERSITY, T‑538/15, not published, EU:T:2017:226, paragraph 28, and of 8 November 2017, IST, T‑80/17, not published, EU:T:2017:784, paragraph 44).
62 In the present case, both the earlier mark and the sign covered by the trade mark application are word marks. The Board of Appeal did not take the view, before carrying out the visual, phonetic and conceptual comparison of the signs at issue, that those signs had a dominant element. It was only in the course of that comparison that it stated, first, as regards the earlier mark, that the word ‘Luciano’ was more distinctive than the word ‘Don’ (paragraph 51 of the contested decision). Second, as regards the sign which is the subject of the trade mark application, the Board of Appeal stated that the distinctiveness of the element ‘Luciano’ is less than that of the element ‘Sandrone’, which has a higher intrinsic value for the Spanish, French, Italian and Portuguese public since it is a rare surname. However, it considered that that finding does not apply throughout the territory of the European Union, in particular in Germany and Finland, where the element ‘Luciano’ is as distinctive as the element ‘Sandrone’ (paragraphs 48 and 50 of the contested decision).
63 The applicant challenges the last of those findings.
64 It must therefore be ascertained whether the Board of Appeal’s assessment of the distinctive and dominant elements of the signs at issue is vitiated by errors of assessment.
– The distinctive and dominant elements of the signs at issue
65 The sign which is the subject of the trade mark application consists of two words, one of seven letters, ‘Luciano’, the other of eight letters, ‘Sandrone’. The earlier mark is also composed of two words, the first of three letters, ‘Don’, the second of seven letters, ‘Luciano’.
66 As regards the earlier mark, it should be noted that the element ‘Luciano’ prevails over the element ‘Don’, if only by reason of the brevity of the latter element, but also, as the Board of Appeal stated in paragraph 51 of the contested decision, because it will be understood as a Spanish honorific title indicating ‘Sir/Mister’ or as an Italian title for priests which will, moreover, be understood as such by a significant part of the public of the European Union, including the German and Finnish public, in support of which the Board of Appeal referred to the German dictionary Duden. The Board of Appeal was therefore entitled to conclude that, for the relevant public, the element ‘Luciano’ was more distinctive than the element ‘Don’, which the applicant does not, moreover, dispute. That finding does not, however, call into question the determination of the distinctiveness of the element ‘Luciano’ as such (see paragraph 102 below).
67 Nevertheless, although the element ‘Luciano’ is more distinctive than the word ‘Don’, it does not render the latter element negligible.
68 As regards the sign which is the subject of the trade mark application, as the Board of Appeal correctly stated in paragraph 46 of the contested decision, the words forming that sign will probably be perceived as a combination of a first name and a surname by the relevant public throughout the European Union. It then stated that the name Sandrone would not be perceived as a common surname, even in Italy, and that the first name Luciano would, by contrast, be perceived as a very common first name in Spain, Italy and Portugal, as well as in France where the equivalent name ‘Lucien’ is similar (paragraph 47 of the contested decision). It therefore held, for the public in those territories, that the degree of distinctiveness of ‘Luciano’ is lower than that of ‘Sandrone’, which, as a rare surname, has a ‘higher intrinsic value’ (paragraph 48 of the contested decision).
69 The parties do not dispute that assessment by the Board of Appeal.
70 By contrast, according to the Board of Appeal, in Germany or Finland, the element ‘Luciano’ would be perceived as a rare first name. It also overturned the Opposition Division’s finding that the Italian first name Luciano was familiar to the public of the European Union as a whole as a result of the celebrity of the Italian tenor Luciano Pavarotti. According to the Board of Appeal, ‘to [its] knowledge’, it is the surname Pavarotti which is famous rather than the full name Luciano Pavarotti and a significant part of the public in the European Union would not remember his first name (paragraph 48 of the contested decision). On that basis, the Board of Appeal concluded that both the first name Luciano and the surname Sandrone were rare for the German and Finnish public and that, for that public, the first element was therefore as distinctive as the second (paragraph 50 of the contested decision).
71 The Court observes, in that regard, that, according to the case-law, it is possible that, in a part of the European Union, a surname has as a general rule a greater degree of distinctiveness than a first name. It is necessary, however, to take account of factors specific to the case and, in particular, the fact that the surname in question is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character (judgments of 5 October 2011, Cooperativa Vitivinícola Arousana v OHIM — Sotelo Ares (ROSALIA DE CASTRO), T‑421/10, not published, EU:T:2011:565, paragraph 50, and of 11 July 2018, Enoitalia v EUIPO — La Rural Viñedos y Bodegas (ANTONIO RUBINI), T‑707/16, not published, EU:T:2018:424, paragraph 38), as well as of the possible reputation of the person requesting that his first name and surname be taken together to be registered as a mark (judgment of 24 June 2010, Becker v Harman International Industries, C‑51/09 P, EU:C:2010:368, paragraphs 36 and 37).
72 In the present case, it must be noted, as the applicant claims, that the Board of Appeal’s statement that the first name Luciano would be perceived as a rare first name in Germany or in Finland is not based on any specific evidence.
73 In that regard, it should be noted that the mere fact that a first name is not very common within the population of one Member State or another does not necessarily mean that that first name will be perceived by the relevant public as rare in that Member State. Indeed, a first name which is relatively well known within the European Union or internationally will not be perceived by the relevant public as rare, even in Member States where that first name is not very common.
74 In the present case, since the Board of Appeal was entitled to find, in paragraph 47 of the contested decision, that the first name Luciano will be perceived as a very common first name in Spain, Italy, Portugal and France, that is to say, in a substantial part of the European Union, it cannot reasonably be maintained, in view of the numerous exchanges within the European Union and of current means of electronic communication, that that first name will be perceived as rare by the relevant public of Germany and Finland. In other words, while 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 that first name will be perceived as a rare first name in those Member States, as the Board of Appeal stated in paragraph 48 of the contested decision.
75 Accordingly, it must be concluded that, for the general public of the European Union as a whole, the most distinctive element of the sign which is the subject of the trade mark application is the element ‘Sandrone’, a surname which is not perceived as common, but which does not render the element ‘Luciano’ negligible.
76 After having examined the intrinsic qualities of each of the components of the signs at issue, having compared them with those of the other components, it must therefore be held that the Board of Appeal should have, before carrying out the visual, phonetic and conceptual comparison of the signs at issue, found the presence of a more distinctive element in each of the signs at issue, namely the element ‘Luciano’ in the earlier mark, which it was correct in finding, and the element ‘Sandrone’ in the sign covered by the trade mark application which it did not find with regard to a part of the relevant public. The consequences of that error will be determined below.
– Visual comparison
77 The Board of Appeal noted that the signs at issue had the word ‘Luciano’ in common, whereas they differed in the presence of the first word of the earlier mark, ‘Don’, and the second word in the sign that is the subject of the trade mark application, ‘Sandrone’. It concluded from this that they were visually similar to a degree that would at least be classified as low (paragraph 54 of the contested decision).
78 That assessment is irreproachable. Although the applicant considers that the signs at issue are visually different on account of their difference in length and rhythm, the fact remains that they have the element ‘Luciano’ in common, and that there is therefore, at least, a low degree of visual similarity between the two signs.
– Phonetic comparison
79 Phonetically, according to the Board of Appeal, the signs at issue share the pronunciation of the word ‘Luciano’, which is indisputable. It also noted that the sign which is the subject of the trade mark application was longer than that forming the earlier mark and that the signs at issue began and ended with different syllables, and therefore have, at the very least, a low degree of phonetic similarity.
80 The applicant’s arguments in that regard, relating to the difference in length and rhythm of the signs at issue, must also be rejected. Although it is true that the two signs differ in that the earlier mark contains, in its first element, the monosyllable ‘Don’, whereas the sign in respect of which registration is sought includes, in its second element, a word of three syllables ‘san-dro-ne’ on which the accent falls heavily, the fact remains that the element which they have in common (‘Luciano’) could be pronounced at the point of purchasing the goods in question, thereby justifying the Board of Appeal’s finding that the signs at issue are phonetically similar at least to a low degree.
– Conceptual comparison
81 In paragraphs 52 and 53 of the contested decision, the Board of Appeal states that the relevant public will associate the sign in respect of which registration is sought with a first name and a surname, that is to say, with a specific person (imaginary or real) who has the first name Luciano and is a member of the Sandrone family, and it will also consider the earlier mark as referring to a person with the first name Luciano. The Board of Appeal therefore concluded ‘thus consumers in particular in Germany and Finland might interpret the marks at issue as referring to the same person (whether virtual or real) characterised by the rare name “Luciano”’. According to the Board of Appeal, the signs at issue are therefore conceptually similar to an average degree (paragraph 53 of the contested decision).
82 Both the applicant and EUIPO harbour doubts in that regard. The applicant submits that the signs at issue are conceptually different, while EUIPO contends that the comparison between them is neutral in that respect. Furthermore, according to EUIPO, the case-law is unsettled on this point since, in certain judgments, the EU Courts have held that it was possible to make a conceptual comparison between signs containing a surname or first name, while in other judgments it was held that a conceptual comparison of that type of sign was not possible.
83 The Court considers it therefore necessary to clarify the case-law on this point. In that regard, it must be borne in mind that the purpose of the conceptual comparison is to compare the ‘concepts’ that the signs at issue convey. The term ‘concept’ means, according to the definition given, for example, by the Larousse dictionary, a ‘general and abstract idea used to denote a specific or abstract thought which enables a person to associate with that thought the various perceptions which that person has of it and to organise knowledge about it’.
84 Similarly, according to the case-law, conceptual similarity means that the signs at issue convey analogous semantic content (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
85 Therefore, a first name or a surname which does not convey a ‘general and abstract idea’ and which is devoid of semantic content, is lacking any ‘concept’, so that a conceptual comparison between two signs consisting solely of such first names or surnames is not possible.
86 Conversely, a conceptual comparison remains possible where the first name or surname in question has become the symbol of a concept, due, for example, to the celebrity of the person carrying that first name or surname, or where that first name or that surname has a clear and immediately recognisable semantic content.
87 The Court has thus previously held that the relevant public would perceive marks containing surnames or first names of persons as having no specific conceptual meaning, unless the first name or surname is particularly well known as the name of a famous person (see, to that effect, judgments of 18 May 2011, IIC v OHIM — McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 40; of 8 May 2014, Pedro Group v OHIM — Cortefiel (PEDRO), T‑38/13, not published, EU:T:2014:241, paragraphs 71 to 73; and of 11 July 2018, ANTONIO RUBINI, T‑707/16, not published, EU:T:2018:424, paragraph 65).
88 In the present case, the Board of Appeal did not identify any concept with which the first name and surname in question could be associated. Nor have the parties put forward any such arguments.
89 Therefore, the mere fact that the relevant public will associate the sign the registration of which is sought with a first name and a surname and thus with a specific, imaginary or real person, and that the earlier mark will be perceived as designating a person called Luciano is irrelevant for the purposes of a conceptual comparison of the signs at issue.
90 Consequently, the Board of Appeal’s assessment that the signs at issue are conceptually similar to an average degree must be overturned. As observed by EUIPO, it must be concluded that, in the present case, a conceptual comparison is not possible, since the first names and surname contained in the signs at issue do not convey any concept.
91 In the light of all the foregoing considerations, the Court upholds the findings set out by the Board of Appeal concerning the at-least-weak degree of visual and phonetic similarity of the signs at issue and overturns its findings as regards the average degree of conceptual similarity of those signs, since a conceptual comparison of those signs is not possible in the present case.
Global assessment of the likelihood of confusion
92 The applicant’s argument, in paragraph 63 of the application, that the likelihood of confusion should be assessed in the light of the impression of the EU consumer and not of consumers in one or two countries of the European Union (namely Germany and Finland) must be rejected at the outset. It must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T–82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). Consequently, the applicant is not justified in claiming that the Board of Appeal erred in relying on the existence of a likelihood of confusion in only two countries of the European Union in order to refuse the registration applied for, without prejudice to whether or not, in the present case, the alleged likelihood of confusion for German or Finnish consumers has been established.
93 As regards the assessment of the likelihood of confusion, it is clear from the case‑law that that assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. 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 (judgments of 28 March 2017, REGENT UNIVERSITY, T‑538/15, not published, EU:T:2017:226, paragraph 71, and of 8 November 2017, IST, T‑80/17, not published, EU:T:2017:784, paragraph 64).
94 On the basis of the principle of interdependence referred to in paragraph 93 above, the Board of Appeal held that there was a likelihood of confusion between the signs at issue at least for the relevant German and Finnish public, given that those signs were visually and phonetically similar at least to a low degree and conceptually similar to an average degree and that the goods at issue were identical or similar to an average degree.
95 However, by mechanically applying the principle of interdependence, without taking account of all the relevant factors, the Board of Appeal did not carry out the global assessment of the likelihood of confusion correctly.
96 It must be held that, according to the case-law, whilst it is true that, by virtue of the principle of interdependence, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, conversely there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where identical goods are involved and there is a weak degree of similarity between the marks at issue (judgment of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 132 (not published); see also, to that effect, judgments of 12 July 2006, Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 67 and 68; and of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraphs 44 and 48).
97 In the present case, first, the Board of Appeal did not assess the similarity of the signs at issue correctly, since it wrongly concluded that the element ‘Luciano’ was as distinctive as the element ‘Sandrone’ in the sign for which registration was sought and wrongly concluded that the signs at issue were conceptually similar to an average degree (see paragraphs 75 and 90 above).
98 Second, the Board of Appeal did not take into account the specific qualities of the goods at issue. According to the case-law, the perception of the marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (judgment of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 27).
99 In the present case, in the wine-growing world, names carry great weight, whether surnames or names of vineyards, since they are used to reference and designate wines. In general, it should be noted that consumers usually describe and recognise wines by reference to the word element which identifies them and that this element designates, in particular, the grower or the estate on which a wine is produced (judgments of 27 February 2014, Pêra-Grave v OHIM — Fundação Eugénio de Almeida (QTA S. JOSÉ DE PERAMANCA), T‑602/11, not published, EU:T:2014:97, paragraph 35, and of 11 July 2018, ANTONIO RUBINI, T‑707/16, not published, EU:T:2018:424, paragraph 49; see also, to that effect, judgment of 13 July 2005, Julián Murúa Entrena, T‑40/03, EU:T:2005:285, paragraph 56). Thus, it is the 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.
100 Third, 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 the goods in question all emanate from the same source (see, to that effect, judgment of 3 June 2015, GIOVANNI GALLI, T‑559/13, EU:T:2015:353, paragraph 116 (not published) and the case-law cited).
101 Therefore, in the wine sector, where the use of signs consisting of surnames or first names is very common, it is 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, which is perceived as very common, according to paragraph 47 of the contested decision, in Spain, France, Italy and Portugal, and in respect of which it has not been established that it might be perceived as rare in other countries of the European Union. 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 (see, to that effect, judgment of 8 February 2019, Serendipity and Others v EUIPO — CKL Holdings (CHIARA FERRAGNI), T‑647/17, not published, EU:T:2019:73, paragraph 71; see also, by analogy, judgment of 3 June 2015, GIOVANNI GALLI, T‑559/13, EU:T:2015:353, paragraph 117 (not published)).
102 Fourth, the Board of Appeal also failed to take into consideration the low degree of distinctiveness of the element common to both marks, namely ‘Luciano’, arising from the fact that that first name is likely to designate a potentially indeterminate number of persons and that therefore all of the relevant public will be able to distinguish the earlier mark from the mark for which registration is sought, since the latter also includes the element ‘Sandrone’, a surname having a higher intrinsic value (see paragraphs 68 and 69 above).
103 That conclusion is supported by the case-law of the Court of Justice, according to which it cannot be accepted that any surname which forms an earlier mark may be relied on effectively to oppose registration of a mark composed of a first name and that surname (see, to that effect, judgment of 24 June 2010, Becker v Harman International Industries, C‑51/09 P, EU:C:2010:368, paragraph 39). It cannot therefore always be held that there is a likelihood of confusion where an earlier mark consisting of a surname is included in another mark by adding a first name to it. That consideration is equally valid when the earlier trade mark consists, in particular, of a first name and the sign for which registration is sought consists of a combination of that first name and a surname (judgment of 3 June 2015, GIOVANNI GALLI, T‑559/13, EU:T:2015:353, paragraph 125 (not published)).
104 In the light of all the foregoing, and having regard to the weak degree of visual and phonetic similarity between the signs at issue and to the fact that it is not possible to make a conceptual comparison of them, it must be concluded that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue.
105 On those grounds, the Court therefore upholds the second plea in law of the action and annuls the contested decision, without it being necessary to rule on the applicant’s other arguments, alleging, first, the reputation of the sign which is the subject of the trade mark application and, second, the decision-making practice of EUIPO.
Costs
106 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
107 Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 February 2018 (Case R 1207/2017-2);
2. Orders EUIPO to bear its own costs and to pay those incurred by Mr Luciano Sandrone.
Tomljenović | Bieliūnas | Kornezov |
Delivered in open court in Luxembourg on 27 June 2019.