Judgments nº T-7/04 of Court of First Instance of the European Communities, November 12, 2008

• Resolution Date: November 12, 2008
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-7/04

In Case T-7/04,

Shaker di L. Laudato & C. Sas, established in Vietri sul Mare (Italy), represented by F. Sciaudone, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by O. Montalto and P. Bullock, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM having been

Limiñana y Botella, SL, established in Monforte del Cid (Spain),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 24 October 2003 (Case R 933/2002-2), relating to opposition proceedings between Limiñana y Botella, SL and Shaker di L. Laudato & C. Sas,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),

composed of: V. Tiili (Rapporteur), President, F. Dehousse and I. Wiszniewska-Bia-ecka, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the written procedure and further to the hearing on 17 June 2008,

gives the following

Judgment

Background to the dispute

1 On 20 October 1999 the applicant - Shaker di L. Laudato & C. Sas (-the applicant- or -Shaker-) - filed an application for 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 (-Regulation No 40/94-).

2 The trade mark for which registration was sought is the figurative mark reproduced below, which, according to the description contained in the application, is blue, sky-blue, yellow, red and white in colour:

3 The goods in respect of which registration was sought are - following an intervention by OHIM on 23 November 1999 and the withdrawal of one class of goods - in Classes 29 and 33 under the Nice Agreement of 15 June 1957 concerning the Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes - after being limited - to the following:

- Class 29: -jellies, jams, compotes-;

- Class 33: -Lemon liqueur from the Amalfi Coast-.

4 That application was published in Community Trade Mark Bulletin No 30/2000 of 17 April 2000.

5 On 1 June 2000, the opponent - Limiñana y Botella, SL - filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 against the registration of the mark applied for. The opposition was based on Spanish registration No 2 020 372, filed on 27 March 1996 for the word mark LIMONCHELO, covering goods in Class 33 (-Wines, spirits and liqueurs-).

6 The opposition concerned some of the goods covered by the Community trade mark application, namely, the goods within Class 33. It was based on all the goods covered by the earlier mark.

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

8 By decision of 9 September 2002, the Opposition Division upheld the opposition. It held that, in Spanish territory, there was a likelihood of confusion in view of the visual and phonetic similarities between the marks at issue and because the goods in question are identical.

9 On 7 November 2002, Shaker lodged an appeal with OHIM against the decision of the Opposition Division, pursuant to Articles 57 to 62 of Regulation No 40/94.

10 By decision of 24 October 2003 (-the contested decision-), the Second Board of Appeal dismissed the appeal. It held that, having regard to the similarity of the marks at issue and the congruence of the goods in question, there was a risk that Spanish consumers might confuse or associate their commercial origin.

Procedure before the Court of First Instance and the Court of Justice

11 By application lodged at the Registry of the Court of First Instance on 7 January 2004, Shaker brought an action for annulment of the contested decision, alleging: (i) infringement of Article 8(1)(b) of Regulation No 40/94; (ii) misuse of powers; and (iii) breach of the duty to state reasons.

12 By judgment of 15 June 2005 in Case T-7/04 Shaker v OHIM - Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2005] ECR II-2305 (-the judgment at first instance-), the Court of First Instance upheld Shaker-s action and annulled the contested decision.

13 In that judgment, the Court of First Instance first held that the goods were identical and then proceeded to compare the marks at issue. It held that the representation of the round dish decorated with lemons was the dominant component of the trade mark applied for (paragraph 59 of the judgment at first instance). It found that the word components of the trade mark applied for were not dominant at the visual level and that it was therefore not necessary to assess the phonetic and conceptual features of those components (paragraphs 60 to 64 of the judgment at first instance).

14 According to the Court of First Instance, the dominance of the figurative representation of a round dish decorated with lemons as compared with the other components of the mark applied for prevented any likelihood of confusion arising from visual, phonetic or conceptual similarities between the words -limonchelo- and -limoncello- which appear in the marks at issue (paragraph 66 of the judgment at first instance). It also found that the dominance of the figurative component (a round dish decorated with lemons) in the mark applied for meant that in that instance the assessment of the distinctive elements of the earlier trade mark did not affect the application of Article 8(1)(b) of Regulation No 40/94, given that that dominance of a round dish decorated with lemons prevented there being any likelihood of confusion with the earlier trade mark (paragraph 68 of the judgment at first instance).

15 The Court of First Instance therefore held that, notwithstanding the fact that the goods concerned were identical, there was not a sufficiently high degree of similarity between the marks at issue for there to be a likelihood of confusion (paragraph 69 of the judgment at first instance). Therefore, it upheld the first plea in law, ruled that it was not necessary to examine the other pleas and annulled the contested decision.

16 By application lodged at the Registry of the Court of Justice on 9 September 2005, OHIM brought an appeal by which it requested the Court to set aside the judgment at first instance. In support of its appeal, OHIM relied on two pleas in law, but withdrew the second in the course of the proceedings before the Court following a rectification made by the Court of First Instance, by order of 12 January 2006. The plea submitted by OHIM in the context of its appeal alleged error in the interpretation and application of Article 8(1)(b) of Regulation No 40/94.

17 By judgment of 12 June 2007, in Case C-334/05 P OHIM v Shaker [2007] ECR I-4259 (-the judgment on appeal- or -OHIM v Shaker-), the Court set aside the judgment at first instance, referred the matter back to the Court of First Instance and reserved the costs.

18 In its judgment, the Court stated, inter alia, as follows:

-37 In the present case the Court of First Instance, at paragraph 49 of the judgment under appeal, noted the case-law- according to which the global appreciation of the likelihood of confusion must be based on the overall impression created by the signs at issue.

38 However, it stated in paragraph 54 of the judgment under appeal that, if the trade mark claimed was a complex mark which was visual in nature, the assessment of the overall impression created by that mark and the determination as to whether there was a dominant element had to be carried out on the basis of a visual analysis. It added that, in such a case, it was only to the extent to which a potentially dominant element included non-visual semantic aspects that it might become necessary to compare that element with the earlier mark, also taking into account those other semantic aspects, such as for example phonetic factors or relevant abstract concepts.

39 On the basis of those considerations, the Court of First Instance, in the context of the analysis of the signs at issue, firstly held that the mark for which registration was sought contained a dominant element comprising the representation of a round dish decorated with lemons. It then inferred, in paragraphs 62 to 64 of the judgment under appeal, that it was not necessary to examine the phonetic or conceptual features of the other elements of that mark. It finally concluded, in paragraph 66 of the judgment, that the dominance of the figurative representation of a round dish decorated with lemons in comparison with the other components of the mark prevented any likelihood of confusion arising from the visual, phonetic or conceptual similarities between the words -limonchelo- and -limoncello- which appear in the marks at issue.

40 However, in so doing, the Court of First Instance did not carry out a global assessment of the likelihood of confusion of the marks at issue.

41 It is important to note that, according to the case-law of the Court, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components-

42 - it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.

43 It follows that the Court of First Instance incorrectly applied Article 8(1)(b) of Regulation No 40/94.

44 In those circumstances, OHIM is right to maintain that the judgment under appeal is vitiated by an error in law.-

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