Judgments nº T-500/18 of Tribunal General de la Unión Europea, October 03, 2019

• Resolution Date: October 03, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-500/18

(EU trade mark - Opposition proceedings - Application for the EU word mark MG PUMA - Earlier EU word mark GINMG - Relative ground for refusal - Similarity of the signs - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-500/18,

Puma SE, established in Herzogenaurach (Germany), represented by P. Trieb and M. Schunke, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by K. Zajfert, A. Folliard-Monguiral and H. O’Neill, acting as Agents,

defendant,

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

Destilerias MG, SL, established in Vilanova i la Geltru (Spain), represented by E. Manresa Medina and J. Manresa Medina, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 June 2018 (Case R 2019/2017-2), relating to opposition proceedings between Destilerias MG and Puma,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,

Registrar: E. Hendrix, Administrator,

having regard to the application lodged at the Court Registry on 20 August 2018,

having regard to the response of EUIPO lodged at the Court Registry on 30 November 2018,

having regard to the response of the intervener lodged at the Court Registry on 26 November 2018,

further to the hearing on 13 June 2019,

gives the following

Judgment

Background to the dispute

1 On 15 February 2016 the applicant, Puma SE, 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 word sign MG PUMA.

3 The goods in respect of which registration was sought are in Classes 32 and 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, for each of those classes, to the following description:

- Class 32: ‘Beer; non-alcoholic beer; porter; mineral water [beverages]; spring water; table waters; non-alcoholic beverages; fruit drinks; juices; preparations for making beverages; syrups for making beverages; isotonic beverages; sports drinks; energy drinks; energy drinks containing caffeine’;

- Class 33: ‘Alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based; pre-mixed alcoholic beverages’.

4 The trade mark application was published in Community Trade Marks Bulletin No 40/2016 of 29 February 2016.

5 On 30 May 2016 the intervener, Destilerias MG, SL, 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 in Class 33 referred to in paragraph 3 above.

6 The opposition was based in particular on the following earlier EU figurative mark:

7 That trade mark covers goods in Class 33 corresponding to the following description: ‘Alcoholic beverages, in particular gin and gin-based preparations’.

8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

9 On 17 August 2017 the Opposition Division upheld the opposition.

10 On 19 September 2017 the applicant 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 6 June 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. More specifically, it found that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, was established on the grounds, inter alia, that (i) the goods at issue were identical; and (ii) the marks at issue had a low degree of visual and phonetic similarity.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs, including those incurred before the Board of Appeal.

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 a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. More specifically, it argues that the marks at issue were not similar, so that there was no likelihood of confusion within the meaning of that provision.

15 EUIPO and the intervener dispute the arguments put forward by the applicant.

Preliminary observations

16 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with or similarity to an 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.

17 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 marks 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 marks 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).

18 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).

19 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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).

20 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to contribute to identifying the goods and services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods and services covered by that mark (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM - Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T-472/08, EU:T:2010:347, paragraph 47 and the case-law cited).

21 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM - Hukla Germany (MATRATZEN), T-6/01, EU:T:2002:261, paragraph 35).

22 Lastly, it must be recalled that the existence of a degree of similarity between the marks at issue as regards one of the relevant aspects examined, namely visual, phonetic or conceptual similarity, precludes the finding that those marks, considered as a whole, are devoid of similarity (see, to that effect, judgment of 2 December 2009, Volvo Trademark v OHIM - Grebenshikova (SOLVO), T-434/07, EU:T:2009:480, paragraphs 31 and 50).

Comparison of the marks at issue

23 In the present case, the Board of Appeal took the view, first, that the relevant public consisted of the English-speaking general public of the European Union, without calling into question the Opposition Division’s assessment that that public’s level of attention was average. Secondly, it found that the relevant public would draw a distinction, in the earlier mark, between the word ‘gin’, which is descriptive, and letters ‘mg’, which are distinctive. It also found that both the letters ‘mg’ and the word ‘puma’ in the mark applied for were distinctive. Thirdly, it held that, in those circumstances, the fact that the marks at issue shared the letters ‘mg’ was sufficient to establish visual and phonetic similarity between those marks. However, it found that those marks were...