Judgment of the General Court Third Chamber of 16 March 2022, Nowhere v EUIPO – Ye APE TEES, T-281/21

• Date: 16 March 2022
• Year: 2022

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The Court acknowledges that, in some cases, particular importance has been attached to the phonetic

similarity of the signs at issue, on account of the fact that the goods in question, belonging to the

beverages sector, and more particularly the alcoholic beverages sector, could be ordered orally after

their name had been seen on the menu or on the wine list. However, it adds that it is also clear from

the case-law that there is nothing to indicate that, as a general rule, consumers of drinks will buy such

goods in the course of a conversation where those goods are being ordered in a busy and noisy bar

or restaurant.

Furthermore, even if bars and restaurants are not negligible sales channels for those types of goods,

it is common ground that the consumer will be able to perceive the marks at issue visually in those

places, inter alia by examining the bottle which will be served to him or her or by other means, such

as on a menu or a drinks list, before placing an order orally. Moreover, and above all, it is not

disputed that bars and restaurants are not the only sales channels for the goods concerned. Those

goods are also sold in supermarkets or other retail outlets where consumers choose the product

themselves and must therefore rely primarily on the image of the trade mark applied to that product.

Consequently, although preponderant importance has sometimes been accorded to the phonetic

perception of marks in relation to beverages, that will not be appropriate in all cases.

In the present case, no evidence has been provided to show that the goods in question are mainly

ordered orally. On the contrary, if the relevant public is led to order them orally in bars and

restaurants, they will generally do so after seeing their name on a drinks list or a menu, or will be able

to examine the product which will be served to them, so that they will be able to perceive the mark

visually in order to express what they wish to purchase.

As a result, the Court concludes that there is no likelihood of confusion, annuls the decision of the

Board of Appeal and, in exercising its power to alter decisions, rejects the opposition brought by

Cody’s Drinks International.

Judgment of the General Court (Third Chamber) of 16 March 2022, Nowhere v EUIPO – Ye

(APE TEES), T-281/21

Link to the complete text of the judgment

EU trade mark – Opposition proceedings – Application for the EU figurative mark APE TEES – Earlier

national non-registered figurative trade marks representing an ape – Relative ground for refusal –

Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) – Rules

governing common-law actions for passing off – Agreement on the withdrawal of the United Kingdom

from the European Union and Euratom

Mr Junguo Ye sought registration from the European Union Intellectual Property Office (EUIPO) of the

EU figurative trade mark APE TEES in respect of various goods and services. Nowhere Co. Ltd filed a

notice of opposition to registration of that mark on the basis of three earlier non -registered figurative

trade marks, used in the course of trade in the United Kingdom, which, under the law applicable in

that country, it enabled it to prevent the use of the mark applied for.

By decision of 10 February 2021, the Board of Appeal of EUIPO rejected the opposition on the ground

that, after the withdrawal of the United Kingdom from the European Union and after the expiry of the

transition period provided for in the withdrawal agreement,

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Nowhere Co. could no longer rely on

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Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European

Atomic Energy Community (OJ 2020 L 29, p. 7).