Judgments nº T-472/08 of The General Court, September 03, 2010

• Resolution Date: September 03, 2010
• Issuing Organization: The General Court
• Decision Number: T-472/08

In Case T‑472/08,

Companhia Muller de Bebidas, established in Pirassununga (Brazil), represented by G. Da Cunha Ferreira and I. Bairrão, lawyers,

applicant,

v

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

defendant,

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

Missiato Industria e Comercio Ltda, established in Santa Rita Do Passa Quatro (Brazil),

ACTION brought against the decision of the First Board of Appeal of OHIM of 4 July 2008 (Case R 1687/2007‑1) relating to opposition proceedings between Companhia Muller de Bebidas and Missiato Industria e Comercio Ltda,

THE GENERAL COURT (Second Chamber),

composed of I. Pelikánová (Rapporteur), President, K. Jürimäe and S. Soldevila Fragoso, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 October 2008,

having regard to the response lodged at the Court Registry on 9 March 2009,

having regard to the reply lodged at the Court Registry on 12 May 2009,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

having regard to the reopening of the written procedure,

having regard to the written questions put to the parties by the Court,

having regard to the observations lodged by the parties at the Court Registry on 1 and 10 March 2010,

gives the following

Judgment

Background to the dispute

1 On 2 December 2003, Missiato Industria e Comercio Ltda filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade mark in respect of which registration was sought (‘the mark applied for’) is the figurative sign reproduced below:

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 Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Alcoholic beverages (except beers)’.

4 On 27 September 2004, the application for registration was published in Community Trade Marks Bulletin No 39/2004.

5 On 27 December 2004, the applicant, Companhia Muller de Bebidas, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods covered in the application for registration. That opposition was based, inter alia, on the following earlier rights (‘the earlier marks’):

– the Portuguese figurative mark, filed on 19 April 1991 and registered on 30 March 1993, under number 273105, in respect of ‘alcoholic beverages’ in Class 33 of the Nice Agreement, reproduced below:

– the Portuguese figurative mark, filed on 10 August 1998 and registered on 21 August 2001, under number 331952, in respect of ‘alcoholic beverages’ in Class 33 of the Nice Agreement, reproduced below:

– the Danish figurative mark, filed on 30 June 1995 and registered on 10 November 1998, under the reference VR 199803649, in respect of ‘liqueur made of sugar cane’ in Class 33 of the Nice Agreement, reproduced below:

– the series of United Kingdom figurative marks, filed and registered on 11 October 2000, under number 2248316, in respect of ‘alcoholic beverages made of sugar cane’ in Class 33 of the Nice Agreement, reproduced below:

– the Spanish figurative mark, registered on 22 October 2001, under number 2354943, in respect of ‘alcoholic beverages (except beers) made of sugar cane’ in Class 33 of the Nice Agreement, reproduced below:

– the Austrian figurative mark, filed on 29 June 1995 and registered on 18 December 1995, under number 161564, in respect of ‘alcoholic beverages made from distilled sugar cane’ in Class 33 of the Nice Agreement, reproduced below:

– the well‑known figurative mark in Portugal in respect of ‘alcoholic beverages’ in Class 33 of the Nice Agreement, reproduced below:

– the well‑known word mark in Portugal CACHAÇA 51, in respect of ‘alcoholic beverages’ in Class 33 of the Nice Agreement.

6 Before the Opposition Division, the applicant claimed that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009), between the marks at issue. The applicant also relied on its two alleged well‑known marks, within the meaning of Article 8(2)(c) of Regulation No 40/94 (now Article 8(2)(c) of Regulation No 207/2009), in Portugal.

7 By decision of 4 September 2007, the Opposition Division rejected the opposition in its entirety. That decision was the subject of an appeal to OHIM, which was brought by the applicant on 29 October 2007 pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).

8 By decision of 4 July 2008 (‘the contested decision’), the First Board of Appeal of OHIM dismissed that appeal. It concurred with the reasoning of the Opposition Division and found that the differences between the marks at issue precluded any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

Forms of order sought

9 The applicant claims that the Court should:

– annul the contested decision inasmuch as it upheld the decision of the Opposition Division authorising the registration of the mark applied for;

– order OHIM to pay the costs.

10 By letter filed at the Court Registry on 10 March 2010, the applicant withdrew its heads of claim seeking to have the contested decision altered and seeking a declaration that the registration of the mark applied for was invalid.

11 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Admissibility of the documents produced for the first time before the Court

12 In Annexes 9 to 11 to its application, the applicant enclosed documents which contain sworn declarations supporting the claim that the earlier word and figurative marks CACHAÇA 51 and Cachaça 51 were well known in Portugal (see paragraph 5 above).

13 OHIM submits that, if those documents were taken into account, they would change the subject‑matter of the proceedings before the Board of Appeal.

14 The documents in Annexes 9 to 11 to the application, which were produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and it is not necessary to assess their probative value (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited).

Substance

15 In support of its action for annulment of the contested decision, the applicant relies on a single plea in law, which is in two parts. The first part alleges infringement of Article 8(1)(b) of Regulation No 40/94, while the second part alleges infringement of Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009).

1. The second part of the single plea in law for annulment of the contested decision: infringement of Article 52(1)(a) of Regulation No 40/94

   16 As OHIM rightly observes, the second part of the single plea in law for annulment of the contested decision alleging infringement of Article 52(1)(a) of Regulation No 40/94 is devoid of purpose. That provision lists the relative grounds for invalidity of a Community trade mark that has already been registered, which was not the case in respect of the mark applied for.

   17 The Court must therefore dismiss as unfounded the second part of the single plea in law for annulment of the contested decision.

2. The first part of the single plea in law for annulment of the contested decision: infringement of Article 8(1)(b) of Regulation No 40/94

   18 By the first part of the single plea in law for annulment of the contested decision, alleging infringement of Article 8(1)(b) of Regulation No 40/94, the applicant complains that the Board of Appeal was wrong to find that the differences between the signs at issue were sufficient to prevent a likelihood of confusion on the part of the relevant public in the relevant territories, including Portugal, where the applicant had claimed that the earlier word and figurative marks CACHAÇA 51 and Cachaça 51 were well known.

   Arguments of the parties

   19 In support of the first part of its single plea in law for annulment alleging infringement of Article 8(1)(b) of Regulation No 40/94, the applicant essentially puts forward seven complaints, to the effect that the Board of Appeal misinterpreted that provision and settled case‑law according to which the global assessment of the marks at issue must be carried out in the light of their distinctive and dominant elements and that, therefore, its analysis is vitiated by several errors.

   20 By its first complaint, the applicant maintains that the Board of Appeal erred in not assessing the likelihood of confusion in the light of the real relevant public and, in particular, in finding that the relevant consumer was the...