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URL: http://www.bailii.org/eu/cases/EUECJ/2011/T35809_J.html
Cite as: [2011] EUECJ T-358/09, [2011] EUECJ T-358/9

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JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

13 April 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark TORO DE PIEDRA – Earlier Community figurative mark D. ORIGEN TORO – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 – Right to be heard – Obligation to state the reasons on which a decision is based – Article 75 of Regulation No 207/2009)

In Case T-358/09,

Sociedad Agricola Requingua Ltda, established in Santiago (Chile), represented by E. Vorbuchner, C. Ley and M. Heidelberg, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Consejo Regulador de la Denominación de Origen Toro, established in Toro (Spain),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 18 June 2009 (Case R 1117/2008-2) concerning opposition proceedings between Consejo Regulador de la Denominación de Origen Toro and Sociedad Agricola Requingua Ltda,

THE GENERAL COURT (Seventh Chamber),

composed of A. Dittrich, President, I. Wiszniewska-Białecka and M. Prek (Rapporteur), Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Registry of the Court on 16 September 2009,

having regard to the response lodged at the Registry of the Court on 16 December 2009,

further to the hearing on 10 November 2010,

gives the following

Judgment

Background to the dispute

1 On 30 August 2004, the applicant, Sociedad Agricola Requingua Ltda, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 word sign TORO DE PIEDRA.

3 The goods in respect of which registration was sought are in Class 33 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 corresponded to the following description: ‘alcoholic beverages (except beers), including wines’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 19/2005 of 9 May 2005.

5 On 19 July 2005, Consejo Regulador de la Denominación de Origen Toro filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based, inter alia, on the earlier Community trade mark No 1220573, filed on 25 June 1999 and registered on 30 August 2002, for ‘wines with designation of origin “Toro”’, in Class 33, which is reproduced below:

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8 On 16 April 2007, pursuant to Article 44 of Regulation No 40/94 (now Article 43 of Regulation No 207/2009), the applicant restricted the goods referred to in its application for registration to ‘wines’ alone, in Class 33.

9 On 30 May 2008, the Opposition Division upheld the opposition.

10 On 28 July 2008, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.

11 By decision of 18 June 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. First, basing its decision exclusively on the earlier trade mark, the Board of Appeal considered that the relevant public consisted of the average consumer in the European Union. Secondly, with regard to the comparison of the goods covered by the marks at issue, it held that they were identical. Thirdly, regarding the comparison of the signs, the Board of Appeal held that, visually and phonetically, there was similarity due to the presence of the word ‘toro’ in the two marks. This proximity was reinforced by a strong conceptual similarity, in that the main figurative element of the earlier trade mark and the trade mark applied for have the same meaning, namely ‘stone bull’. Consequently, the Board of Appeal found that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 40/94.

Forms of order sought by the parties

12 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs of the opposition proceedings, the proceedings before the Board of Appeal and the present proceedings.

13 OHIM contends that the Court should:

– dismiss the application;

– order the applicant to pay the costs.

Law

Admissibility of certain annexes to the application

14 OHIM challenges the admissibility of Annexes A6 to A8 to the application in that they were submitted for the first time before the Court.

15 At the hearing, the applicant acknowledged that those annexes had not been produced in the course of the proceedings before OHIM. It added, however, in essence, that their purpose was merely to substantiate the arguments submitted before the Board of Appeal, which would justify their being taken into account by the Court.

16 The purpose of an action before the Court is to review the legality of decisions of the OHIM Boards of Appeal within the meaning of Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. To admit such evidence would be contrary to Article 135(4) of the Court’s Rules of Procedure, which prohibits the parties from changing the subject-matter of the proceedings before the Board of Appeal (Case T-128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II-701, paragraph 18, and Case T-336/03 Éditions Albert René v OHIM – Orange (MOBILIX) [2005] ECR II-4667, paragraph 16).

17 It follows that Annexes A6 to A8 to the application must be declared inadmissible, irrespective of how they may be connected to the submissions made by the applicant before the Board of Appeal.

The claim for annulment of the contested decision

18 In support of its claim for annulment of the contested decision, the applicant relies, in essence, on three pleas in law, alleging infringement of Article 8(1)(b), of Article 75, second sentence, and of Article 75, first sentence, of Regulation No 207/2009.

The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

– Arguments of the parties

19 According to the applicant, the Board of Appeal was wrong in finding that there was a likelihood of confusion between the marks at issue.

20 With regard to the relevant public, this is the average consumer in the European Union who, having regard to the goods covered, will have a high level of attention.

21 In relation to the comparison of the signs at issue, the applicant considers that, in the light of the recent case-law of the Court, they must be considered to be different visually, phonetically and conceptually. It alleges, in particular, that the Board of Appeal gave too much importance to the presence of the word ‘toro’ in the two signs.

22 Thus, in visual terms, the Board of Appeal wrongly held that the word ‘toro’ was the only relevant element for the purposes of the comparison. In phonetic terms, the applicant maintains that the signs at issue are pronounced differently. Lastly, in conceptual terms, it is argued that the signs do not have the same meaning. Whereas the earlier trade mark is interpreted by the relevant public as referring to a wine-producing region, the trade mark applied for will be perceived as a reference to a stone bull. It claims, in this regard, that it is impossible to determine whether the figurative element of the earlier trade mark represents a statue.

23 With regard to the assessment of the overall likelihood of confusion, the applicant submits that, apart from the differences between the signs at issue, the Board of Appeal should also have taken into consideration the fact that the earlier trade mark is of merely low distinctiveness.

24 OHIM contests the arguments put forward by the applicant.

– Findings of the Court

25 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, 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.

26 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 line of case-law, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (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).

27 With regard, in the first place, to the relevant public, in the present case the protection of the earlier trade mark extends to all of the European Union. What must be taken into account, therefore, is the perception which the consumer of the goods in question has of the marks at issue within the whole of the European Union. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, 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 76 and the case-law cited).

28 In relation to the consumer’s level of attention when purchasing the goods in question it should be pointed out that, for the purposes of the overall assessment of the marks at issue, the average consumer is assumed to be reasonably well-informed and reasonably observant and circumspect. It should, however, 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 and that the consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 14 November 2007 in Case T-101/06 Castell del Remei v OHIM – Bodegas Roda (CASTELL DEL REMEI ODA), not published in the ECR, paragraph 51 and the case-law cited).

29 In the present case, registration of the mark is sought for wines in general, and not specifically for quality wines that would be sold at relatively high prices. As the goods referred to in the application for registration are intended for everyday consumption, it must be concluded that the consumer, as a general rule, will show an average level of attention when purchasing them.

30 In the second place, in relation to the comparison of the goods in question, it is common ground that they are identical.

31 In the third place, in relation to the comparison of the signs at issue, it is settled case-law that the global assessment of the likelihood of confusion must, with regard to the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by them, 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 assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23).

32 In general, 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).

33 In the present case, it should be noted that the marks at issue are, on the one hand, a figurative mark consisting of two elements – in the background, a grey arch with the inscription ‘d. origen’ and, in the foreground, a black set of images comprising a bunch of grapes and a form that will be perceived as the statue of an animal placed on a base on which is written ‘toro’ – and, on the other hand, the word mark TORO DE PIEDRA.

34 First, with regard to the visual comparison of the signs, the fact that the word ‘toro’ is present in both marks constitutes a particularly important factor of similarity, in view of the considerable role that it plays in the perception of each of those marks by the relevant public. Indeed, in the earlier mark, the word ‘toro’ appears in the foreground of the mark and is written in a way that makes it stand out clearly, while, in the trade mark applied for, that word is situated at the beginning of the sign. It should be recalled that the consumer is known to pay greater attention, generally, to the beginning of a word sign than to the end (Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II-2737, paragraph 51). Nevertheless, since the signs at issue also have word and figurative differences – that are not, however, such as to eclipse the similarity resulting from the common component ‘toro’ – the Board of Appeal rightly found that there was an average level of similarity.

35 With regard to the applicant’s argument concerning the allegedly low distinctiveness of the word ‘toro’, in that it is frequently used for goods in Class 33, it must be pointed out that the truth of this has not been established. The only evidence adduced by the applicant in support of its claim consists of a list of trade marks that include the words ‘toro’, ‘toros’ or ‘torro’, registered in various States for goods in Classes 32 and 33. However, simply listing a relatively limited number of trade marks, without information making it possible to measure how much they are known by the reference public, does not support the conclusion that that public makes an association between the word ‘toro’ and the goods in question.

36 Secondly, with regard to the phonetic comparison of the signs, the Board of Appeal found that they were similar, without specifying the degree of that similarity. That finding must be upheld considering, first, the identical pronunciation of the word ‘toro’ and, second, the fact that the signs at issue consist of five syllables. Since the other word elements of the signs are pronounced differently, an average degree of phonetic similarity must be accepted.

37 Thirdly, regarding the conceptual comparison of the signs, it appears that the word ‘toro’ will be perceived by a part of the relevant public – particularly Romance language speaking consumers – as a reference to an animal, which may bring the signs at issue closer together.

38 That impression of similarity will be reinforced, as OHIM rightly emphasises, by the fact that the trade mark applied for may be understood, at least by the Spanish language speaking public, as a reference to a stone bull, which corresponds to the figurative component present in the foreground of the earlier trade mark.

39 The applicant claims, moreover, in essence, that in the case of the earlier trade mark the word ‘toro’ will be understood as a reference to a wine-producing region and, in the case of the trade mark applied for, it will be associated with the animal. That argument is not convincing. If such were the case, since the goods covered by the trade mark applied for consist of wines, it should logically be concluded that the word ‘toro’ appearing in it will also be understood as a reference to a wine-producing region, which would result in the signs at issue being conceptually similar.

40 Consequently, given that the marks at issue are, at least for a part of the relevant public, strongly similar on a conceptual level and have an average degree of phonetic and visual similarity, it must be held that they are similar overall.

41 With regard, in the fourth place, to the global assessment of the likelihood of confusion, this entails some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between the 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 VENADO with frame and Others, paragraph 27 above, paragraph 74).

42 In the present case, since, first, the goods covered by the marks at issue are identical and, second, the signs at issue are similar, the Board of Appeal rightly found that there is a likelihood of confusion on the part of the relevant public.

43 That finding is not called into question by the various arguments put forward by the applicant.

44 In relation, first, to the applicant’s claim that the earlier trade mark is only weakly distinctive, which would prevent a finding that there is a likelihood of confusion between the marks at issue, that must be rejected, without it being necessary to analyse the extent of the distinctiveness of the earlier trade mark.

45 Even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion, in particular, as in the present case, where the goods in question are identical and the signs at issue are similar (see, to that effect, Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-949, paragraph 61, and Case T-134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 70).

46 Furthermore, to accept that argument would be to disregard the factor of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that, where the earlier mark is only of weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the signs in question. Such a result would not be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 207/2009 (see PAGESJAUNES.COM, paragraph 45 above, paragraph 71 and the case-law cited).

47 As regards, secondly, the reference to the position adopted by the Court in its judgments of 18 December 2008 in Case T-285/06 Torres v OHIM – Bodegas Cándido (TORRE DE FRIAS), not published in the ECR; Case T-286/06 Torres v OHIM – Vinícola de Tomelloso (TORRE DE GAZATE), not published in the ECR; Case T-287/06 Torres v OHIM – Bodegas Peñalba López (Torre Albéniz) [2008] ECR II-3817; and Case T-8/07 Torres v OHIM – Gala-Salvador Dalí (TG Torre Galatea), not published in the ECR, this is not convincing either, in view of the factual differences that distinguish those cases from the present case. Contrary to what the applicant claims, the Board of Appeal did not depart from the reasoning of the case-law followed by the Court. As OHIM has argued, the word ‘toro’ cannot be compared to the word ‘torre’, frequently used to indicate a geographic locality, which will constitute the distinctive, or indeed the dominant component of the mark.

48 In the light of all the above, the first plea must be rejected.

The second plea, alleging infringement of Article 75, second sentence, of Regulation No 207/2009

– Arguments of the parties

49 The applicant alleges that the Board of Appeal did not take into account the arguments that it had put forward in its observations of 3 February 2009 concerning the case-law of the Court cited at paragraph 47 above, which amounts to refusing it the right to be heard.

50 OHIM contests the argument put forward by the applicant.

– Findings of the Court

51 Pursuant to the second sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in the law of trade marks by that provision. According to that general principle of European Union law, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt (see Case T-317/05 Kustom Musical Amplification v OHIM (Shape of a guitar) [2007] ECR II-427, paragraphs 24, 26 and 27 and the case-law cited).

52 Without its being necessary to examine whether the applicant’s right to be heard has been infringed in the present case, it is sufficient to recall that the rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity has actually had an effect on the ability of the person concerned to defend himself. Consequently, non-compliance with rules in force whose purpose is to protect the rights of the defence can vitiate the administrative procedure only if it is shown that the latter could have had a different outcome if the rules had been observed (see Case T-410/07 Jurado Hermanos v OHIM (JURADO) [2009] ECR II-1345, paragraph 32 and the case-law cited).

53 As stated in the context of examining the first plea, the Board of Appeal was fully entitled to find that there was a likelihood of confusion.

54 Accordingly, the second plea in law must be rejected.

The third plea, alleging infringement of Article 75, first sentence, of Regulation No 207/2009

– Arguments of the parties

55 The applicant complains that the Board of Appeal did not give a sufficient statement of the reasons on which the contested decision was based. That decision does not make it possible to understand the reasons why, first, the judgments in TORRE DE FRIAS, TORRE DE GAZATE, Torre Albéniz and TG Torre Galatea, in paragraph 47 above, are not applicable to the circumstances of the present case and, secondly, no consequences were drawn from the list referred to in paragraph 35 above.

56 OHIM contests the arguments put forward by the applicant.

– Findings of the Court

57 Under the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to state the reasons on which they are based. It is settled case-law that that duty has the same scope as that laid down by Article 253 EC and its purpose is, first, to allow interested parties to know the justification for the measure adopted so as to enable them to protect their rights and, second, to enable the European Union judicature to review the legality of the decision (see Case T-16/02 Audi v OHIM (TDI) [2003] ECR II-5167, paragraphs 87 and 88; Joined Cases T-124/02 and T-156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraphs 72 and 73; and Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraph 43).

58 However, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see Mozart, paragraph 57 above, paragraph 55 and the case-law cited).

59 In the present case, the Board of Appeal found, first, that the goods were identical. It then made a visual, phonetic and conceptual comparison of the signs at issue and concluded that they were similar. It inferred from this that, under the terms of Article 8(1)(b) of Regulation No 207/2009, there was a likelihood of confusion between those signs. That reasoning enabled the parties fully to understand the reasons for the Board of Appeal’s decision and provided the Court with sufficient material for it to exercise its power of review. The contested decision is not, therefore, vitiated by any defect in the statement of the reasons on which it is based.

60 The plea alleging a failure to state sufficient reasons cannot, therefore, be accepted.

61 Consequently, the third plea in law must be rejected, and therefore the action must be dismissed as a whole.

Costs

62 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1. Dismisses the action;

2. Orders Sociedad Agricola Requingua Ltda to pay the costs.

Dittrich

Wiszniewska-Białecka

Prek

Delivered in open court in Luxembourg on 13 April 2011.

[Signatures]

* Language of the case: English.