Judgments nº T-637/15 of Tribunal General de la Unión Europea, May 31, 2017

• Resolution Date: May 31, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-637/15

(EU trade mark - Opposition proceedings - Application for the EU figurative mark SOTTO IL SOLE ITALIANO SOTTO il SOLE - Earlier EU word mark VIÑA SOL - Relative ground for refusal - Detriment to distinctive character - No similarity between the signs - Article 8(5) of Regulation (EC) No 207/2009) In Case T-637/15,

Alma-The Soul of Italian Wine LLLP, established in Coral Gables, Florida (United States), represented by F. Terrano, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, 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 Penedès (Spain), represented by J. Güell Serra, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 September 2015 (Case R 356/2015-2), relating to opposition proceedings between Miguel Torres and Alma-The Soul of Italian Wine,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 16 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 20 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 17 February 2016,

further to the hearing on 11 January 2017,

gives the following

Judgment

Background to the dispute

1 On 4 March 2011, the applicant, Alma-The Soul of Italian Wine LLLP, 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).

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: ‘Wines’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 64/2011 of 1 April 2011.

5 On 30 June 2011, the intervener, Miguel Torres, SA, filed a notice of opposition pursuant to 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 To the extent that it was brought on the grounds set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, the opposition was based on the following earlier trade marks:

- the EU word mark VIÑA SOL, which was filed on 12 February 1997, registered on 29 October 1998 under the number 462523 and renewed on 5 March 2007 in respect of ‘alcoholic beverages (except beers)’ in Class 33;

- the Spanish word mark VIÑA SOL, which was filed on 9 May 1944, registered on 13 January 1947 under the number 152231 and renewed on 11 September 2007 in respect of ‘all types of wines, except extra dry white table wines with characteristics similar to those of the Rhine’ in Class 33;

- the Spanish word mark VIÑA SOL, which was filed on 25 May 1973, registered on 21 March 1977 under the number 715524 and renewed on 25 March 2003 in respect of ‘brandy’ in Class 33.

7 To the extent that it was brought solely on the ground referred to in Article 8(1)(b) of Regulation No 207/2009, the opposition was based on the following earlier trade marks:

- the Spanish figurative mark which was filed on 26 October 2007, registered on 6 May 2008 under the number 2796505 in respect of ‘alcoholic beverages (except beers)’ in Class 33 and is reproduced below:

- the EU word mark SOL, which filed on 17 October 2007 and registered on 2 May 2010 under the number 6373971 in respect of ‘alcoholic beverages (except beers)’ in Class 33.

8 By decision of 30 October 2012, the Opposition Division, taking the earlier EU word mark SOL as its point of reference, upheld the opposition on the ground that there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009.

9 On 21 December 2012, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 10 September 2013 (‘the decision of 10 September 2013’), the Second Board of Appeal of EUIPO upheld the Opposition Division’s decision and rejected the application for registration in its entirety. However, the Board of Appeal stated that, for reasons of procedural economy, since the Opposition Division had upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, it would examine the ground for opposition set out in Article 8(5) of Regulation No 207/2009, taking the earlier EU word mark VIÑA SOL (‘the earlier mark’) as its point of reference. It found that the relevant public consisted of average consumers in the European Union who were reasonably well informed and reasonably observant and circumspect. It found, first, that the marks at issue were similar to a medium degree for Spanish-, French- and Portuguese-speaking consumers, given that the dominant element of the earlier trade mark, ‘sol’, and the dominant element of the mark applied for, ‘sole’, were highly similar and, secondly, that those marks were similar to only a low degree for Italian consumers.

11 According to the Board of Appeal, the earlier trade mark had a reputation in the European Union with regard to wines. Taking into account the similarity of the signs at issue, the distinctive character and reputation of the earlier trade mark and the fact that the goods covered by the marks at issue were identical, the Board of Appeal found that there was a link between the signs at issue for a substantial proportion of the relevant consumers, namely the Spanish-, Italian-, French- and Portuguese-speaking consumers. It held that there was a risk of dilution, that is to say, a risk that the use without due cause of the mark applied for would be detrimental to the distinctive character of the earlier trade mark for the purposes of Article 8(5) of Regulation No 207/2009. It concluded that the fact that the conditions laid down in Article 8(5) of Regulation No 207/2009 had been fulfilled with regard to Spanish-, Italian-, French- and Portuguese-speaking consumers was a sufficient ground for upholding the opposition.

12 On 21 November 2013, the applicant brought an action for the annulment of the decision of 10 September 2013 before the General Court, which, by judgment of 25 September 2014, Alma-The Soul of Italian Wine v OHIM - Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE) (T-605/13, not published, EU:T:2014:812), annulled that decision.

13 In essence, the General Court found that the decision of 10 September 2013 contained no details on the basis of which it would be possible to determine whether the Board of Appeal had taken the evidence provided by the applicant, which was intended to establish the weak distinctive character of the words ‘sol’ and ‘sole’ contained in the marks at issue, into account or to understand the reasons why it may have considered such evidence to be irrelevant. It therefore held that that decision was vitiated by a failure to provide a statement of reasons and that it was not possible to determine whether the Board of Appeal had taken that evidence into account in its assessment to the effect that those words constituted the dominant elements in those marks and, by extension, in its conclusion that those marks were similar.

14 Following the General Court’s judgment annulling the decision of 10 September 2013, the Second Board of Appeal of EUIPO re-examined the case and, by decision of 3 September 2015 (‘the contested decision’), confirmed the decision of 10 September 2013 and rejected the application for registration in its entirety.

15 The Board of Appeal stated that, in the light of the terms of the General Court’s judgment annulling the decision of 10 September 2013, its task was to assess the evidence filed by the applicant regarding the possibly weak distinctive character of the word ‘sun’ (in various languages) and of the representations of the sun in relation to the designated wine products for consumers in the European Union, which could affect the comparison of the signs at issue based on the dominant and distinctive elements of those signs. According to the Board of Appeal, that evidence could be divided into three categories, namely, first, extracts from a number of websites of various undertakings offering consumers in the European Union wines covered by trade marks that include the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’ and various images of the sun, secondly, lists of registered EU trade marks which cover goods in Class 33 and contain the same words or images and, thirdly, an earlier decision of the Opposition Decision dated 26 March 2004.

16 The Board of Appeal found that the earlier mark had a reputation with regard to wines within the European Union as at the date on which the application for the contested mark was filed, since that finding in the decision of 10 September 2013 had not been called into question by the applicant. It also concluded, after examining the evidence provided by the applicant, that the relevant consumers of the goods covered by the signs at issue were the same, that the signs at issue were similar for a proportion of those consumers, that the earlier mark had distinctive character, that there was a link between the signs at issue for a substantial proportion of the relevant consumers, that there was detriment to the distinctive character of the earlier mark and that there was no due cause for the use the mark applied for.

Procedure and forms of order sought

17 The applicant claims that...