Judgments nº T-589/18 of Tribunal General de la Unión Europea, December 19, 2019

• Resolution Date: December 19, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-589/18

(EU trade mark - Opposition proceedings - Application for the EU figurative mark MIM NATURA - Earlier international word and figurative registrations MM and MM and earlier national word mark MUMM - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-589/18,

Vins el Cep, SL, established in Sant Sadurní d’Anoia (Spain), represented by J. Vázquez Salleras and G. Ferrer Gonzalvez, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Markakis 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

Rotkäppchen-Mumm Sektkellereien GmbH, established in Eltville (Germany), represented by W. Berlit, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 12 July 2018 (Case R 2270/2017-1), relating to opposition proceedings between Rotkäppchen-Mumm Sektkellereien and Vins el Cep, SL,

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović, President, F. Schalin (Rapporteur) and I. Nõmm, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 1 October 2018,

having regard to the response of EUIPO lodged at the Court Registry on 25 January 2019,

having regard to the response of the intervener lodged at the Court Registry on 26 April 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 11 April 2016, the applicant, Vins el Cep, SL, 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 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: ‘Alcoholic beverages (except beer)’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 71/2016 of 18 April 2016.

5 On 27 April 2016, the intervener, Rotkäppchen-Mumm Sektkellereien GmbH, 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 referred to in paragraph 3 above.

6 The opposition was based on the following earlier rights:

- the international registration of the word mark MM, designating the European Union, which was filed and registered on 4 July 2008 under the number 976438 in respect of goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’;

- the international registration of the figurative mark reproduced below, designating the European Union, which was filed and registered on 23 July 2008 under the number 979082 in respect of goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’:

- the German word mark MUMM, which was registered on 16 April 2014 under the number 302014042199 in respect of goods in Class 33 corresponding to the following description: ‘Alcoholic beverages, except beers and champagne’.

7 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).

8 On 24 August 2017, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion with the earlier international registration of the word mark MM.

9 On 23 October 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.

10 By decision of 12 July 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.

11 The Board of Appeal, like the Opposition Division, began by comparing the mark applied for with the earlier international registration of the word mark MM. To that end, it analysed the mark applied for. It found, in paragraph 25 of the contested decision, that the figurative element of that mark was limited to the stylisation of the letters and the presence of a device consisting of a crown. It took the view that that device was quite common in connection with the goods applied for. It likewise found, in paragraph 26 of the contested decision, that part of the relevant public, consisting of average consumers with an average level of attention, would, on account of its small size, secondary position and proximity to the words ‘natural’ in English, Spanish and Portuguese, ‘naturel’ in French, ‘naturlig’ in Danish and ‘naturale’ in Italian, pay only scant attention to the word ‘natura’ in the mark applied for. Lastly, in paragraph 27 of the contested decision, the Board of Appeal found that the term ‘mim’, which was in a central position, was the element that was most likely to attract the attention of the average consumer.

12 At the end of the assessment of the likelihood of confusion, the Board of Appeal found, in paragraphs 37 and 38 of the contested decision, that, in view of the similarity between the sign applied for and the earlier international registration of the word mark MM and the identity of the goods they covered, the likelihood of confusion was real in a substantial part of the European Union.

13 The Board of Appeal then examined the likelihood of confusion with the earlier German word mark MUMM.

14 It first of all found, in paragraph 42 of the contested decision, that there was visual similarity between the signs at issue, connected, in particular, with the presence of the letter ‘m’ in each of those signs, and that the presence, in the sign applied for, of the letter ‘i’, the device of the crown and the word ‘natura’ and, in the earlier sign, of an additional letter ‘m’ did not outweigh that similarity. Next, in paragraph 43 of the contested decision, it found that there was phonetic similarity, in spite of, in particular, the difference relating to the presence of the vowel ‘i’ in the sign applied for and the vowel ‘u’ in the earlier sign. Lastly, in paragraph 44 of the contested decision, it found that it was not possible to make a conceptual comparison, because the signs as a whole had no meaning in any language.

15 After finding that the goods covered by the marks at issue were identical, since the mark applied for included the goods covered by the earlier mark, the Board of Appeal concluded, in paragraphs 47 to 49 of the contested decision, that the identity of the goods attenuated any differences between those marks and that therefore the similarity of the marks pointed to the existence of a likelihood of confusion in Germany.

Forms of order sought

16 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

17 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

18 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 in that, first, the Board of Appeal erred in finding that the mark applied for was similar to the earlier international registration of the word mark MM and to the earlier German word mark MUMM and in that, secondly, the Board of Appeal erred in focusing its analysis on the presence of the letter ‘m’ in the signs under comparison.

19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

20 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 signs 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 signs 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).

21 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes...