Judgments nº T-393/11 of The General Court, May 14, 2013

• Resolution Date: May 14, 2013
• Issuing Organization: The General Court
• Decision Number: T-393/11

(Community trade mark – Opposition proceedings – Application for Community word mark CA’ MARINA – Earlier Community word mark MARINA ALTA – Relative ground for refusal – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T‑393/11,

Masottina SpA, established in Cornegliano (Italy), represented by N. Schaeffer, lawyer,

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

Bodegas Cooperativas de Alicante, Coop. V., established in Petrel (Spain),

ACTION seeking the annulment of the decision of the First Board of Appeal of OHIM of 4 May 2011 (Case R 518/2010-1), relating to opposition proceedings between Bodegas Cooperativas de Alicante, Coop. V. and Masottina SpA,

THE GENERAL COURT (First Chamber),

composed of J. Azizi (Rapporteur), President, M. Kancheva and E. Buttigieg, Judges,

Registrar: T. Weiler, Administrator,

having regard to the application lodged at the Registry of the General Court on 26 July 2011,

having regard to the response lodged at the Court Registry on 24 October 2011,

further to the hearing on 20 February 2013,

gives the following

Judgment

Background to the dispute

1 On 10 October 2007, the applicant, Masottina SpA, 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 mark in respect of which registration was sought is the word sign CA’ MARINA. 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, in particular wine, sparkling wine, spirits, liqueurs’.

3 The Community trade mark application was published in Community Trade Marks Bulletin No 10/2008 of 3 March 2008.

4 On 3 June 2008, Bodegas Cooperativas de Alicante, Coop. V. filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for in respect of all of the goods referred to in paragraph 2 above. That opposition was based, in particular, on the earlier Community word mark MARINA ALTA. That mark was registered, inter alia, for goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’.

5 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

6 On 12 February 2010, the Opposition Division upheld the opposition based on the mark reproduced in paragraph 4 above on the ground that the goods at issue were identical and that the similarities between the signs under comparison outweighed their dissimilarities.

7 On 6 April 2010, the applicant filed a notice of appeal with OHIM against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.

8 By decision of 4 May 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal. The Board of Appeal found, inter alia, that consumers who have been exposed to wines, among other beverages, sold under the MARINA ALTA trade mark and who are offered wines, among other beverages, under the name CA’ MARINA would, in all probability, believe that CA’ MARINA was a new line of wines created by the proprietor of the earlier mark or that there must be a commercial connection between the parties.

Forms of order sought by the parties

9 The applicant claims that the General Court should:

– annul the contested decision as well as the decision of the Opposition Division which preceded the adoption of the contested decision;

– reject the opposition and allow registration of the trade mark applied for;

– order Bodegas Cooperativas de Alicante to pay the costs.

10 OHIM contends that the General Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

Admissibility of Annexes A. 1 to A. 6 to the application

11 In its response, OHIM disputes the admissibility of the documents annexed under A. l to A. 5 to the application on the ground that they were submitted for the first time before the General Court. Those documents contained, respectively, a list of Community trade marks containing the term ‘marina’, a list of Community trade marks containing the term ‘marina’ registered for goods in Class 33, a list of registered Community trade marks containing the term ‘ca’, an excerpt from the web page of the specialised shop of Gall&Gall and photographs of that specialised shop. They were relied upon by the applicant in support of its complaints regarding the contested decision. In response to a question put by the Court to the applicant at the hearing, the latter stated that those documents had not been produced during the proceedings before OHIM.

12 Those documents, which were produced for the first time before the General Court, cannot be taken into consideration. The purpose of actions before the General Court is to secure review of the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and, accordingly, the role of the Court is not to re-evaluate the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need 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).

13 In its response, OHIM also takes the view that the production for the first time before the Court of the minutes of the ordinary meeting of Masottina of 25 November 2009 conferring on Mr A. B. the capacity of legal representative of that company, attached in Annex A. 6 to the application, is inadmissible. However, in response to a question put by the Court, OHIM declared that it no longer challenged the admissibility of that annex. Given that that annex had not been produced in order to dispute the legality of the contested decision, but in order to clarify the trade mark applicant’s claim, it must be considered to be admissible.

The infringement of Article 8(1)(b) of Regulation No 207/2009

Introduction

14 The applicant submits that the contested decision infringes Article 8(1)(b) of Regulation No 207/2009 in as much as the Board of Appeal found that there was a likelihood of confusion between the marks at issue.

15 As set out in Article 8(1)(b) of Regulation No 207/2009, 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, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two 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...