Judgments nº T-830/19 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-830/19

(EU trade mark - Opposition proceedings - Application for EU figurative mark BLEND 42 VODKA - Earlier EU word mark and international figurative mark 42 BELOW - Relative ground for refusal - Likelihood of confusion - Relevant public - Similarity of the goods and services - Similarity of the signs - Global assessment of the 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-830/19,

Palírna U Zeleného stromu a.s., established in Ústí nad Labem (Czech Republic), represented by T. Chleboun, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Bacardi & Co. Ltd, established in Meyrin (Switzerland), represented by A. Parassina, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 5 September 2019 (Case R 2532/2018-2), relating to opposition proceedings between Bacardi & Co. and Palírna U Zeléného stromu,

THE GENERAL COURT (Second Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 4 December 2019,

having regard to the response lodged at the Court Registry on 12 May 2020,

having regard to the decision of 2 April 2020 joining Cases T-829/19 to T-831/19 for the purposes of the written part and any oral part of the procedure,

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 6 June 2014, the predecessor of the applicant, Palírna U Zeléného stromu a.s., 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, claiming the colours light blue and dark blue:

3 The goods and services in respect of which registration was sought are in Classes 33 and 35 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 33: ‘Alcoholic beverages (except beers); vodka’;

- Class 35: ‘Advertising; business management; business administration; office functions; mediation in the sale and purchase of goods in the field of alcoholic beverages’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2014/128 of 14 July 2014.

5 On 10 October 2014, the other party to the proceedings before EUIPO, Bacardi & Co. Ltd, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based, in particular, on the following earlier rights:

- the EU word mark 42 BELOW, the application for which was filed on 9 December 2010 and which was registered on 13 May 2011 under number 9 583 766 for goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers), including vodka, vodka-based and vodka-flavoured beverages’;

- the international registration designating Germany, Austria, Benelux, Cyprus, Spain, France, Greece, Ireland, Italy, Poland, the Czech Republic, the United Kingdom and Sweden, filed on 11 March 2009 under number 999 938 for, inter alia, ‘advertising, business, electronic commerce, direct marketing, sales promotions, trade fairs and exhibitions in relation to alcoholic beverages/distilled spirits; sales and promotional incentive schemes; loyalty programs; incentive marketing services and award programs; compilation of retail and consumer information into computer databases; management and operation of customer loyalty programs that identify and reward customers’ in Class 35, of the figurative mark represented below:

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

8 On 30 October 2018, the Opposition Division upheld the opposition. It considered that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, with the earlier EU trade mark regarding the goods in Class 33 covered by the mark applied for and with the earlier international mark regarding the services in Class 35 covered by the mark applied for.

9 On 20 December 2018, 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 5 September 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.

11 In the first place, the Board of Appeal considered that both the earlier EU trade mark and the earlier international mark had been registered for less than five years at the date on which the EU trade mark application was published. It concluded from this that the Opposition Division had been right to refuse to grant the request for proof of genuine use of those rights, lodged by the applicant pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001).

12 In the second place, regarding the determination of the relevant public, the Board of Appeal considered that the goods in Class 33 were targeted mainly at the general public, which had a normal level of attention when purchasing them, and the services in Class 35 were targeted mainly at a professional public, which had a higher level of attention when using those services.

13 In the third place, regarding the determination of the relevant territory, the Board of Appeal confined its assessment to the United Kingdom alone.

14 In the fourth place, regarding the comparison of the goods and services in question, the Board of Appeal considered that the goods in Class 33 in question were identical. Regarding the services in Class 35 covered by the mark applied for, the Board of Appeal considered that:

- the ‘advertising’ services were identical to the same services covered by the earlier international mark;

- the ‘office functions’ services were identical to the ‘compilation of retail and consumer information into computer databases’ covered by the earlier international mark;

- there was an average degree of similarity between the ‘business administration’ services and the ‘compilation of retail and consumer information into computer databases’ covered by the earlier international mark;

- there was an average degree of similarity between the ‘mediation in the sale and purchase of goods in the field of alcoholic beverages’ and the ‘trade fairs and exhibitions in relation to alcoholic beverages/distilled spirits’ covered by the earlier international mark;

- there was, at the very least, a low degree of similarity between the ‘business management’ services and the ‘advertising, business, electronic commerce, direct marketing, sales promotions’ covered by the earlier international mark.

15 In the fifth place, regarding the assessment of the distinctive and dominant elements of the earlier international mark and of the mark applied for, the Board of Appeal considered, first, that the number ‘42’ constituted their dominant visual element and, second, that their word elements were more distinctive than their figurative elements, which played only a secondary role in their overall impression. The Board of Appeal considered that the same was true of the colour used in the mark applied for. The Board of Appeal added that, although the number ‘42’ was likely to have only a weak distinctive character for part of the relevant public with regard to the goods in Class 33, it was distinctive with regard to the services in Class 35. It also considered that the word ‘below’ was distinctive with regard to the goods in question whereas the words ‘blend’ and ‘vodka’ had a weak distinctive character in that regard.

16 In the sixth place, the Board of Appeal considered, in essence, that the elements ‘42’ and ‘below’ played, overall, an equivalent role in the overall impression of the earlier EU trade mark.

17 In the seventh place, the Board of Appeal considered that the signs at issue were visually similar to an average degree and phonetically and conceptually similar to at least a low degree.

18 In the eighth place, the Board of Appeal considered that the earlier EU trade mark was highly distinctive with regard to some of the goods in Class 33 and, at the very least, had an average degree of inherent distinctiveness. The earlier international mark, for its part, had an average degree of inherent distinctiveness.

19 In the ninth place, the Board of Appeal considered that there was a likelihood of confusion between the marks at issue on account of the identity or similarity of the goods in question and the overall visual, phonetic and conceptual similarity of the signs. It referred, inter alia, to the dominant character of the element ‘42’ in the marks at issue and to the significance of phonetic...