Judgments nº T-811/19 of Tribunal General de la Unión Europea, January 20, 2021

• Resolution Date: January 20, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-811/19

(EU trade mark - Opposition proceedings - Application for EU figurative mark CABEÇA DE TOIRO - Earlier EU word mark SANGRE DE TORO - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T-811/19,

Enoport - Produção de Bebidas Lda, established in Rio Maior (Portugal), represented by J. Alves Coelho, 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 M. Ceballos Rodríguez and M. Robledo McClymont, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 9 September 2019 (Case R 394/2019-5), relating to opposition proceedings between Miguel Torres and Enoport - Produção de Bebidas,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins, President, V. Kreuschitz (Rapporteur) and Z. Csehi, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 November 2019,

having regard to the response of EUIPO lodged at the Court Registry on 14 May 2020,

having regard to the response of the intervener lodged at the Court Registry on 8 May 2020,

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 8 July 2016, the applicant, Enoport - Produção de Bebidas Lda, then called Enoport Produção de Bebidas, SA, 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 beers and brandy) including wine, spirits and liqueurs’.

4 The EU trade mark application was published in European Union Trade Marks Bulletin No 173/2016 of 13 September 2016.

5 On 13 December 2016, the intervener, Miguel Torres SA, 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 trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier EU word mark SANGRE DE TORO, which was registered on 29 October 1998 under number 462309, covering goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

8 On 19 December 2018, the Opposition Division upheld the opposition on the basis that there was a likelihood of confusion between the marks at issue and refused registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

9 On 14 February 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 9 September 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal.

11 In essence, first, the Board of Appeal considered that the relevant public was that of the European Union, composed of average consumers with an average level of attention and based its assessment on the Spanish part of that public (paragraphs 18, 19, 21 and 24 of the contested decision). Secondly, it endorsed the grounds adopted by the Opposition Division that the goods in question were identical (paragraphs 25 and 26 of the contested decision). Thirdly, the Board of Appeal found that the signs at issue were visually similar to a low degree, had an average degree of phonetic and conceptual similarity and, taken as a whole, were similar to a certain degree (paragraphs 38, 42, 46 and 47 of the contested decision). Fourthly, it concluded, in paragraph 57 of the contested decision, that the similarities between the signs and the enhanced distinctive character of the earlier mark gave rise to a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

13 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

14 The intervener contends that the Court should:

- dismiss the application;

- uphold the contested decision;

- order the applicant to pay the costs.

Law

The subject matter of the dispute and the law applicable ratione temporis

15 In support of its action, the applicant relies on two pleas, alleging, first, infringement of Article 95(1) of Regulation 2017/1001 and, secondly, infringement of Article 8(1)(b) of that regulation.

16 In this respect, it should be noted that when the application for registration of the contested trade mark was filed, on 8 July 2016 (see paragraph 1 above), Regulation 2017/1001, which became applicable only from 1 October 2017 (see Article 212, second paragraph, of that regulation), did not yet apply.

17 Given that the decisive date for the purposes of identifying the applicable substantive law is the date on which the application for registration was filed, the present dispute continues to be governed by Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, amending Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), as regards provisions that are not strictly procedural (see, to that effect, judgment of 2 March 2017, Panrico v EUIPO, C-655/15 P, not published, EU:C:2017:155, paragraph 2 and the case-law cited).

18 Therefore, references to the provisions of Regulation 2017/1001 in the contested decision and in the parties’ pleadings, as regards the substantive rules, must be understood as referring, in reality, to the identical provisions of Regulation No 207/2009. Accordingly, the second plea put forward by the applicant referring to a substantive provision, namely Article 8(1)(b) of Regulation 2017/1001, must be understood as referring to an infringement of Article 8(1)(b) of Regulation No 207/2009.

19 By contrast, in so far as Article 95(1) of Regulation 2017/1001 is a purely procedural provision (see to that effect, judgments of 13 February 2019, Nemius Group v EUIPO (DENTALDISK), T-278/18, not published, EU:T:2019:86, paragraphs 30 and 32, and of 20 September 2019, BASF Grenzach v ECHA, T-125/17, EU:T:2019:638, paragraph 96), which, according to the case-law, is held to apply on the date on which it enters into force (see judgment of 11 December 2012, Commission v Spain, C-610/10, EU:C:2012:781, paragraph 45 and the case-law cited), it is necessary to examine, in the context of the first plea, the infringement of that provision, as the...