Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Third Chamber)

1 February 2018 (*)

(EU trade mark — Opposition proceedings — EU figurative mark SANTORO — Earlier EU word mark SANGRE DE TORO — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑102/17,

Cantina e oleificio sociale di San Marzano, established in San Marzano di San Giuseppe (Italy), represented initially by F. Jacobacci and E. Truffo, and subsequently by I. Carli, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by P. Sipos, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Miguel Torres, SA, established in Vilafranca del Penedés (Spain), represented by J. Güell Serra, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 1 December 2016 (Case R 2018/2015-2), relating to opposition proceedings between Miguel Torres and Cantina e oleificio sociale di San Marzano,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 17 February 2017,

having regard to the response of EUIPO lodged at the Court Registry on 2 May 2017,

having regard to the response of the intervener lodged at the Court Registry on 11 May 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 5 November 2013, the applicant, Cantina e oleificio sociale di San Marzano, filed an application for registration of an EU 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 following figurative sign:

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 correspond to the following description: ‘Alcoholic beverages (except beers); brandy; peppermint liqueurs; rice alcohol; spirits [beverages]; bitters; anisette [liqueur]; anisette [liqueur]; aperitifs; arak [arrack]; alcoholic beverages (except beer); fruit (alcoholic beverages containing -); pre-mixed alcoholic beverages, other than beer-based; distilled beverages; cocktails; curacao; digesters [liqueurs and spirits]; alcoholic essences; alcoholic extracts; alcoholic fruit extracts; gin; mead [hydromel]; kirsch; liqueurs; nira [sugarcane-based alcoholic beverage]; rum; sake; cider; perry; piquette; wine; vodka; whisky.’

4        The EU trade mark application was published in Community Trade Marks Bulletin No 234/2013 of 10 December 2013.

5        On 10 March 2014, the intervener, Miguel Torres, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in Class 33.

6        The earlier marks relied on in support of the opposition were the Spanish word mark SANGRE DE TORO, registered under the number 280818, covering, inter alia, the goods ‘sparkling wines, oenology, wines, vermouths’ in Class 33 and the EU word mark SANGRE DE TORO, registered under the number 462309, covering the goods ‘alcoholic beverages (except beers)’ in Class 33.

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

8        On 28 August 2014, the applicant requested a restriction of the list of goods to ‘Italian wines’. EUIPO accepted that restriction.

9        By decision of 25 August 2015, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the marks at issue.

10      On 6 October 2015, the intervener 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 decision of the Opposition Division.

11      By decision of 1 December 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal and annulled the Opposition Division’s decision. The Board of Appeal found, in essence, that, in the light of the identical nature of the goods and the similarity of the signs covered by the mark applied for and the earlier EU word mark SANGRE DE TORO, there was, for the purposes of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion on the part of the relevant public.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

13      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      In support of its action, the applicant relies on three pleas in law. The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009 on the ground that the Board of Appeal did not correctly assess the question of the similarity of the goods at issue. The second plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009 on the ground that the Board of Appeal did not correctly assess the question of the similarity of the signs at issue. The third plea alleges infringement of Article 8(5) of Regulation No 207/2009 and a distortion of the evidence in relation to the assessment of the reputation of the earlier mark.

 Preliminary observations

15      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 must not 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. Furthermore, under Article 8(2)(a)(i) of Regulation No 207/2009 (now Article 8(2)(a)(i) of Regulation 2017/1001), ‘earlier trade marks’ means EU trade marks with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

16      According to settled case-law, the risk that the public may 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).

17      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 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).

18      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 goods 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 judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

19      Furthermore, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, 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 No 207/2009 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).

20      It is in the light of those considerations and having regard to the Board of Appeal’s assessment in the contested decision, that the applicant’s arguments alleging infringement of Article 8(1)(b) of Regulation No 207/2009, in so far as they are directed against the refusal to register the mark applied for for the purpose of covering goods in Class 33, must be examined.

 The first plea, relating to the similarity of the goods

21      The applicant disputes the reasoning that the goods at issue are identical or at least similar because the sub-category of goods in respect of which its sign was supposed to be protected, namely Italian wines, is included in the goods covered by the earlier mark, namely alcoholic beverages except beers.

 Admissibility

22      EUIPO submits that the first plea is inadmissible because it is limited to allegations which are neither clear nor coherent.

23      In that regard, it must be borne in mind that, under Article 177(d) of the Rules of Procedure of the General Court, an application in an action brought against a decision of a Board of Appeal of EUIPO must contain the subject matter of the proceedings, the pleas in law and arguments relied on and a summary of those pleas in law.

24      For an action to be admissible, it is necessary that the basic matters of fact and of law relied on be indicated, at least in summary form, coherently and intelligibly in the application itself (judgment of 18 October 2016, Eveready Battery Company v EUIPO — Hussain (POWER EDGE), T‑824/14, not published, EU:T:2016:614, paragraph 15). That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (judgments of 9 July 2010, Exalation v OHIM (Vektor-Lycopin), T‑85/08, EU:T:2010:303, paragraph 33, and of 13 September 2016, Perfetti Van Melle Benelux v EUIPO — PepsiCo (3D), T‑390/15, not published, EU:T:2016:463, paragraph 16).

25      In the present case, it is sufficiently clear from the application that the applicant disputes the Board of Appeal’s assessment that the goods at issue are identical because the goods covered by the earlier mark are not, in the applicant’s view, alcoholic beverages, except beers, but Spanish wines.

26      The statement of the applicant’s arguments was sufficiently clear to enable EUIPO and the intervener to prepare their defences, as is apparent from their respective responses, and is sufficiently clear to enable the Court to rule on the present plea, as is apparent from the findings set out below.

27      The first plea is therefore admissible and must be examined as to its substance.

 Substance

28      In support of its challenge to the reasoning that the goods at issue are identical or at least similar because the goods in respect of which its sign was supposed to be registered are included in the wider category of the goods covered by the earlier mark, the applicant submits that that reasoning constitutes a misinterpretation of the guidance set out in the judgments of 19 June 2012, The Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361) and of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN) (T‑126/03, EU:T:2005:288). The applicant takes the view that it is apparent from those judgments that the main principle to be followed in reading the list of goods and services protected by a registration is the accuracy of the description, so that the limits of the protection are fully understood and interpreted by any possible third parties, including potential competitors.

29      The applicant maintains that, in the present case, the intervener requested protection in respect of a wide range of goods, but proved genuine use of the mark exclusively in relation to one product, namely wine from Catalonia (Spain). Consequently, it takes the view that the scope of protection of the earlier mark should be limited to Spanish wine, which can be red or white, and that there is no proximity between those goods and the Italian wines covered by the mark applied for, which are exclusively red wines. According to the applicant, the goods covered by the earlier mark and the product covered by the mark applied for are so dissimilar on account of their origin, their method of production, the grape variety used, the distribution channels and the geographical indications that the mark applied for is unlikely to make the relevant public think of the earlier marks, with the result that the contested decision should be annulled.

30      EUIPO and the intervener submit that the Board of Appeal was right in finding that the goods were identical.

31      With regard to those arguments, it is important to point out that the applicant’s challenge to the identity of the goods covered by the signs at issue is based on the premiss that the earlier mark protects only Spanish wine. According to the applicant, the intervener has proved genuine use of its mark only in relation to Catalonian wine, with the result that that mark protects only Spanish wine. There is therefore, in the applicant’s view, no similarity between those Italian and Spanish wines.

32      Furthermore, it is important to bear in mind that the earlier EU word mark SANGRE DE TORO on which the opposition is based covers alcoholic beverages, except beers.

33      Pursuant to Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), if the trade mark applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition must furnish proof that, during the last five years preceding the date of publication of the EU trade mark application, the earlier EU 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 must be rejected.

34      In the present case, the applicant did not request proof of genuine use of the earlier EU trade mark in the course of the proceedings before EUIPO. Consequently, the scope of protection conferred by that mark cannot be restricted solely to Spanish wines. The goods protected by that mark are therefore alcoholic beverages, except beers.

35      Furthermore, it has been held that the particular ways in which the goods at issue are marketed are irrelevant for the purposes of analysing whether there will be a likelihood of confusion between those marks, since they may vary over time depending on the wishes of the proprietors of the marks at issue (see, to that effect, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59).

36      Consequently, the Board of Appeal was right in assessing whether there was a likelihood of confusion between the marks at issue by comparing the alcoholic beverages, except beers, covered by the earlier mark and the Italian wines covered by the mark applied for.

37      It was also right in finding that the goods were identical. According to settled case-law, where the goods covered by the earlier mark include the goods covered by the mark applied for, those goods are considered to be identical (judgments of 7 July 2005, Miles International v OHIM — Biker Miles (Biker Miles), T‑385/03, EU:T:2005:276, paragraph 32; of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34, and of 2 June 2010, Procaps v OHIM — Biofarma (PROCAPS), T‑35/09, not published, EU:T:2010:220, paragraph 37). The alcoholic beverages, except beers, covered by the earlier mark include the Italian wines covered by the mark applied for.

38      The foregoing assessments are not called into question by the judgments of 19 June 2012, The Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361) and of 14 July 2005, ALADIN (T‑126/03, EU:T:2005:288), which are relied on by the applicant. The findings in the judgment of 14 July 2005, ALADIN (T‑126/03, EU:T:2005:288, paragraph 45), which are relied on by the applicant, presuppose that genuine use of the earlier mark has been duly called into question. However, as has been stated in paragraph 34 above, that is not the case here.

39      As regards the applicant’s reliance on the judgment of 19 June 2012, The Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), it must be pointed out that the Court held that some of the general indications in the class headings of the Nice Classification are, in themselves, sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection conferred by the trade mark (judgment of 19 June 2012, The Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 54). Since the earlier mark covers alcoholic beverages, except beers, it must be held that that identification of the goods at issue is sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of protection. Consequently, it is to no avail that the applicant relies on a lack of precision with regard to the goods covered by the earlier mark in order to claim that the goods at issue are not identical.

40      The first plea must be rejected on the foregoing grounds.

 The second plea, relating to the similarity of the signs at issue

41      The applicant submits that the signs at issue are conceptually and graphically different and that they are sufficiently different phonetically. EUIPO and the intervener dispute those arguments.

42      In view of those challenges, it is important to point out that 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

43      In the present case, after finding that the level of attention of the relevant public was average overall, the Board of Appeal found that the signs under comparison were similar overall, especially given their phonetic similarity and, to a lesser extent, their visual similarity, while the conceptual comparison between the signs was essentially neutral from the perspective of a substantial and relevant part of the public in the European Union, namely the part that does not perceive any concepts in the signs at issue or that only perceives the reference to a tree or grapevine, an element that will be seen as a mere decoration or even as a descriptive reference to the goods.

44      As regards the definition of the relevant public, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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 judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

45      Since the goods at issue are, on the one hand, Italian wines and, on the other hand, alcoholic beverages, except beers, the Board of Appeal was right in finding that the relevant public consisted of, inter alia, average consumers paying an average degree of attention when purchasing those goods. As has already been held on numerous occasions, both the purchasers of wines in general and of alcoholic beverages comprise average consumers demonstrating a reasonable level of attention with regard to those goods (see, to that effect, judgments of 20 November 2007, Castellani v OHIM — Markant Handels und Service (CASTELLANI), T‑149/06, EU:T:2007:350, paragraph 48; of 14 May 2013, Masottina v OHIM — Bodegas Cooperativas de Alicante (CA’ MARINA), T‑393/11, not published, EU:T:2013:241, paragraphs 23 to 25; of 27 November 2014, Cantina Broglie 1 v OHIM — Camera di Commercio, Industria, Artigianato e Agricoltura di Verona (Ripassa ZENATO), T‑154/11, not published, EU:T:2014:997, paragraph 22, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO — Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 38). Furthermore, although, as the Board of Appeal stated, it is true that those beverages may also be aimed at a public which demonstrates an enhanced level of attention, it is necessary to take the public with the lowest level of attention into account in assessing the likelihood of confusion (see, to that effect, judgment of 19 April 2013, Hultafors Group v OHIM — Società Italiana Calzature (Snickers), T‑537/11, not published, EU:T:2013:207, paragraph 27).

46      Furthermore, since the earlier mark taken into account by the Board of Appeal is an EU trade mark, the Board of Appeal was right in concluding that whether there was a likelihood of confusion had to be assessed by taking into account the perception of the signs by the average consumer in the European Union.

 The visual similarity

47      The applicant submits that the two signs are graphically different and refers in that regard to a table in which those signs are placed side by side.

48      That argument does not make it possible to call into question the Board of Appeal’s assessment that the signs are, overall, visually similar to a certain degree. Besides the fact that the applicant does not put forward any specific argument in that regard, the Board of Appeal was right in finding that, although the sign applied for could be distinguished from the earlier mark on account of its figurative elements and the absence of the letters ‘gre’ and ‘de’, the signs coincided in the letters ‘san’ and ‘toro’. In the light of the fact that the word element in the contested sign is completely included in the earlier mark, the signs must be held to be visually similar to a certain degree.

 The phonetic similarity

49      The applicant submits that the signs at issue are sufficiently different from one another phonetically, because they have in common only the prefix ‘san’ and the word ‘toro’, but their tonic stresses are different.

50      That argument does not make it possible to call into question the Board of Appeal’s assessment that the signs are phonetically similar overall. As the Board of Appeal correctly stated, in the wine sector, consumers usually describe and recognise wines by reference to the word element, in particular when ordering in bars and restaurants. Furthermore, in view of the fact that the signs at issue have in common the same prefix, ‘san’, and the same ending, ‘toro’, they will be perceived as being similar from a phonetic standpoint. It is true that the two additional syllables in the earlier sign as compared with the sign applied for will give rise to different rhythms and pronunciations. However, those differences do not outweigh the phonetic similarity due to the elements in common ‘san’ and ‘toro’. Lastly, as regards the different tonic stresses of the terms ‘san’ and ‘toro’ on which the applicant relies, it must be held that that difference will not be perceived by the whole of the relevant public. Although those stresses may be perceived by the part of the relevant public which has a command of Spanish and Italian, they will not be perceived by the relevant public which has a command only of other languages of the European Union.

 The conceptual similarity

51      The applicant takes the view that the signs at issue are conceptually different. It submits, first, that the term ‘santoro’ covered by the trade mark application is related, from a conceptual standpoint, exclusively to the idea of sainthood and that the device shares the same semantic area, because it represents a tree symbolising life which has been born of blessed fields. Secondly, it submits that the term ‘sangre’ in the earlier mark will be perceived as referring to blood and that that reference is well-known throughout the European Union on account of the beverage sangria, which evokes the colour of red wine and of blood. The applicant takes the view that, for the consumer, the combination of the terms ‘sangre’ and ‘toro’ symbolises the Spanish tradition of corridas and feasts spread throughout Spain.

52      Having regard to those arguments, it must be borne in mind that, given the fact that the earlier mark is an EU trade mark and covers alcoholic beverages, except beers, whether there is a likelihood of confusion must be assessed by taking into account the perception of the signs by the average consumer in the European Union (see paragraph 46 above).

53      Contrary to what the applicant claims, a non-negligible part of the consumers in the European Union will not perceive the term ‘santoro’ as relating exclusively to the idea of sainthood. The Latin origin of that term and the spread of Latin and of Christianity in Europe over the centuries does not prove that that term or its prefix ‘san’ or ‘sanct’ will be perceived by the whole of the relevant public as referring to the concept of sainthood.

54      Likewise, the graphic representation of a tree or even of a grapevine in the sign applied for will not be perceived by the whole of the relevant public as symbolising life which has been created by nature or by goodness or which has been born of blessed fields. The applicant also errs in claiming that the term will be perceived by the whole of the relevant public as a word which designates an Italian noun or adjective.

55      As regards the terms ‘sangre’ and ‘toro’ in the earlier mark, the applicant errs in claiming that the term ‘sangre’ will be perceived by the whole of the relevant public as having a meaning because of its closeness to the term ‘sangria’. It cannot be held that the term ‘sangre’ will be perceived in that way by, inter alia, the relevant Hungarian, Finnish, Bulgarian, Polish or Swedish consumers.

56      Consequently, even though the part of the relevant public with a command of Spanish and Italian will perceive a clear difference as regards the conceptual comparison of the signs at issue, the Board of Appeal was right in finding that that comparison was essentially neutral from the perspective of a substantial and relevant part of the public in the European Union, namely the part that does not perceive any concepts in the signs at issue or that perceives only a reference to a tree or grapevine, an element that will be seen as a mere decoration or even as a descriptive reference to the goods.

 The likelihood of confusion

57      In view of the foregoing findings and of the global assessment of the likelihood of confusion carried out by the Board of Appeal, which is not disputed by the applicant, it must be held that there is a likelihood of confusion between the marks at issue. Having regard to the fact that the goods are identical, the average level of attention of the relevant public, the fact that the signs are phonetically similar and, to a lesser extent, visually similar, the fact that the goods at issue are, inter alia, generally consumed after being ordered orally, the normal inherent distinctive character of the earlier mark and the fact that the consumer must rely on his imperfect recollection of a trade mark, it must be confirmed that there is a likelihood of confusion between the earlier mark and the sign which is the subject of the trade mark application.

58      The second plea must be rejected on the foregoing grounds.

 The third plea, relating to the assessment of the reputation of the earlier mark

59      The applicant wishes, for the sake of completeness, to state that the intervener has not shown that the earlier mark has a reputation. It submits that none of the evidence submitted by the intervener proves that reputation.

60      EUIPO and the intervener take the view that the third plea is inadmissible because the Board of Appeal did not rule on whether the earlier mark has a reputation. The intervener submits that, in any event, the documents which it filed before the Opposition Division clearly prove that the earlier mark has a reputation in Spain in connection with wines.

61      With regard to those arguments, it must be pointed out that, in paragraph 55 of the contested decision, the Board of Appeal found that, since the opposition was fully successful on the basis of Article 8(1)(b) of Regulation No 207/2009 and of the earlier mark’s inherent distinctiveness, it was not necessary to evaluate the evidence of the earlier mark’s enhanced distinctiveness due to its reputation.

62      On the grounds set out above, it is necessary to confirm the Board of Appeal’s assessment that, taking into account the inherent distinctiveness of the earlier mark, there is a likelihood of confusion between the sign in respect of which registration was sought and that earlier mark. Consequently, the Board of Appeal could, without making an error, find that it was not necessary to evaluate the evidence which the intervener has submitted in order to prove that the earlier mark had enhanced distinctiveness due to its reputation.

63      The arguments which the applicant has put forward in support of the view that the intervener has not shown that the earlier mark has a reputation are therefore ineffective.

64      On those grounds, the third plea must also be rejected and consequently, the action must be dismissed in its entirety.

 Costs

65      Under Article 134(1) 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 forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Cantina e oleificio sociale di San Marzano to pay the costs.

Delivered in open court in Luxembourg on 1 February 2018.

*      Language of the case: English.

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