CEDC International v OHMI - Fabryka Wodek Polmos Lancut (WISENT VODKA) (Judgment) [2015] EUECJ T-450/13 (12 November 2015)

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(Community trade mark — Opposition proceedings — Application for Community figurative mark WISENT VODKA — Earlier national three-dimensional mark ŹUBRÓWKA — Relative grounds for refusal — Similarity of the marks — Article 8(1)(b) and 8(5) of Regulation (EC) No 207/2009)

CEDC International sp. z o.o., established in Oborniki Wielkopolskie (Poland), represented by M. Siciarek, J. Mrozowski and G. Rząsa, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Walicka, acting as Agent,

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

Fabryka Wódek Polmos Łańcut SA, established in Łańcut (Poland), represented by A. Gorzkiewicz, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 10 June 2013 (Case R 1734/2011-4), relating to opposition proceedings between Przedsiębiorstwo Polmos Białystok and Fabryka Wodek Polmos Łańcut SA,

composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 23 August 2013,

having regard to the response of OHIM lodged at the Court Registry on 20 December 2013,

having regard to the response of the intervener lodged at the Court Registry on 10 December 2013,

having regard to the rejoinder of the intervener lodged at the Court Registry on 25 July 2014,

having regard to the order of 3 March 2015 joining Cases T‑449/13 and T‑450/13 for the purposes of the oral procedure,

1 On 7 July 2008, the intervener, Fabryka Wódek Polmos Łańcut SA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 Registration as a mark was sought for the following figurative sign (‘the mark applied for’):

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: ‘vodka’.

4 The Community mark application was published in Community Trade Marks Bulletin No 47/2008 of 24 November 2008.

5 On 17 February 2009, Przedsiębiorstwo Polmos Białystok, which was replaced by the applicant, CEDC International sp. z o.o. following a merger by acquisition on 27 July 2011, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– Polish word mark No 86410, ŻUBRÓWKA, registered for ‘alcoholic beverages’ in Class 33 of the Nice Agreement;

– Community figurative mark No 5585138, registered for ‘alcoholic beverages (except beers); vodka and mixed drinks containing vodka’, in Class 33 of the Nice Agreement, reproduced below:

– Community three-dimensional mark No 6215719, registered for ‘alcoholic beverages (except beers); vodka and mixed drinks containing vodka’, in Class 33 of the Nice Agreement, reproduced below:

– Polish figurative marks Nos 80990, 80991, 46050, 125911 and 208988, registered for ‘alcoholic beverages’ in Class 33, reproduced below:

– Polish three-dimensional marks Nos 189866 and 208090, registered for ‘alcoholic beverages’ in Class 33, reproduced below:

– Polish figurative mark No 62081, registered for ‘vodkas’ in Class 33, reproduced below:

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and 8(5) of Regulation No 207/2009.

8 Reputation was claimed for all of the earlier marks referred to in paragraph 6.

9 By decision of 23 June 2011, the Opposition Division held that the opposition was well founded under Article 8(5) of Regulation No 207/2009. The Opposition Division took into consideration, among the earlier marks, the three-dimensional Community mark, No 6215719, and the earlier Polish mark, No 189866. In the first place, it found that, visually, those marks and the mark applied for had minor similarities, that, phonetically, they had no similarities, and that, conceptually, they were similar because they evoked the concept of a bison and represented a bottle containing a blade of grass. In the second place, it found that, as a result of their longstanding and intensive use, the blade of grass in the bottle and the representation of the bison had become highly distinctive elements and were connected to the applicant from the perspective of the relevant Polish public. In the third place, the Opposition Division found that the mark applied for is associated with the highly distinctive elements of those earlier marks, which would allow the intervener to benefit unduly from the investments made by the applicant in its marks.

10 On 23 August 2011 the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11 By decision of 10 June 2013 (‘the contested decision’), the Fourth Board of Appeal upheld the appeal and annulled the decision of the Opposition Division. In its examination of whether there was a likelihood of confusion between the marks at issue, in the first place, the Board of Appeal found, with regard to the relevant public, that, since the earlier marks were Community marks and Polish national marks, the relevant territory comprised the Member States of the European Union, including Poland, and that the relevant public was the public at large in those States, including Poland. In the second place, the Board of Appeal observed that the diagonal line shown by the marks at issue could not be perceived as a blade of grass. In the third place, with regard to the mark applied for, it found that the verbal element ‘wisent’, which in English, German and Dutch denotes the European bison, was the most distinctive and dominant element of that mark and that its figurative elements, consisting of a representation of a bovine animal and a coat of arms, were less dominant and distinctive than the verbal element. Furthermore, it stated that the other elements of that mark were decorative, descriptive, illegible or hardly legible, and were therefore of secondary importance. In the fourth place, the Board of Appeal compared the mark applied for with the earlier Community mark, No 6215719, and found that they were overall dissimilar. Thus, the Board of Appeal, first, described that Polish mark as a complex mark, consisting of the non-distinctive black and white representation of four bottles which, inter alia, display a label featuring the word element ‘żubrówka’, which is the most distinctive and dominant element, a figurative element consisting of the representation of a bison, which is less distinctive and dominant, and a thin, slightly curved, diagonal line, which is of secondary importance. Secondly, it found that, since the most distinctive and dominant elements of the marks at issue, that is to say, the word elements ‘wisent’ and ‘żubrówka’, were different, and the figurative elements were also different, those marks were visually and phonetically dissimilar. Thirdly, the Board of Appeal considered that the marks at issue were conceptually dissimilar, because the word elements of the marks at issue had different meanings for different consumers and, since the bovine animal was depicted very differently in the marks at issue and was not the most distinctive and dominant element of those marks, its presence in the marks could not lead to any conceptual similarity. In the fifth place, the Board of Appeal compared the mark applied for with the earlier Polish mark, No 189866, and found that, overall, they differed. Thus, first, the Board of Appeal described that earlier Polish mark as a complex mark consisting, inter alia, of a non-distinctive representation of a bottle, traversed by a thin straight vertical green line, slightly inclined to the left, and on to which a label is affixed comprising a circle containing a blurred image in brown and green surmounted by the word element ‘żubrówka’ in black and yellow. Secondly, it considered that, visually, the marks at issue coincided in that they both showed a thin line, but differed as to the other more distinctive word and figurative elements. Thirdly, the Board of Appeal took the view that, phonetically, the marks at issue were not similar. Fourthly, it found that, conceptually, despite the image of the bovine animal present in the mark applied for, Polish consumers would not associate the word element ‘wisent’ in that mark with the concept of a bison, alluded to by the element ‘żubrówka’, which forms part of the earlier Polish mark. In the sixth place, the Board of Appeal examined the other earlier marks and found that, overall, they differed from the mark applied for owing to, in particular, differences between the word elements of those marks, which would be perceived as the most distinctive and dominant elements, and between the representations of a bovine animal in both the mark applied for and in some earlier marks. Since no similarities were found to exist between the marks at issue, the Board of Appeal took the view that, notwithstanding the identical nature of the goods concerned, or the claimed enhanced distinctiveness and reputation of the earlier marks, one of the necessary prerequisites both for a finding that there was a likelihood of confusion and for enjoyment of the protection of the mark’s reputation had not been satisfied.

15 OHIM submits that the action is partially inadmissible, in that it lacks clarity and precision. According to OHIM, the applicant has not specified which findings of the contested decision constituted an infringement of the legal provisions, or which parts of that decision it sought to criticise.

16 The applicant submits that the action is sufficiently clear and precise, in that the application for annulment is based on 11 earlier marks which are visually either identical or very similar and refer to the same concepts, that is to say, the concept of the ‘bison’ resulting from the term ‘żubrówka’, and the representation of that animal, and the concept of the blade of grass. Furthermore, it states that the complaints contained in its application refer to all of the conceptual and visual comparisons made by the Board of Appeal and to its methodology, which, according to the applicant, are wrong.

17 Under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, the application must include a brief statement of the grounds relied on. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (judgment of 27 September 2005 in Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, ECR, EU:T:2005:340, paragraph 27, and judgment of 3 December 2014 in Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, EU:T:2014:1020, paragraphs 17 and 18).

18 The Court is thus obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which that head of claim is based are not indicated coherently and intelligibly in the application itself (judgment of 18 July 2006 in Rossi v OHIM, C‑214/05 P, ECR, EU:C:2006:494, paragraph 37).

19 In order to guarantee legal certainty and the sound administration of justice it is therefore necessary, in order for an action to be admissible, that the essential matters of law and fact relied on are stated, at least in summary form, coherently and intelligibly in the application itself. Similar requirements are called for where a submission is made in support of a plea in law (judgment in M & Co., cited in paragraph 17 above, EU:T:2014:1020, paragraph 19; see also, to that effect, judgment of 19 November 2008 in Rautaruukki v OHIM (RAUTARUUKKI), T‑269/06, EU:T:2008:512, paragraphs 34 and 37).

20 In the present case, it is clear from the applicant’s written pleadings that by its arguments it, first, contests all of the Board of Appeal’s comparisons of the marks at issue made in its assessment of whether there was a likelihood of confusion between those marks and, secondly, it criticises the Board of Appeal for the arbitrary nature of its findings relating to the decorative or less striking nature of the element consisting of a blade of grass inserted in a bottle and for not examining certain evidence presented by the applicant to demonstrate that that element would be perceived as an indicator of commercial origin.

21 Although it is true that, in its application, the applicant did not separately challenge each of the Board of Appeal’s comparisons, the fact nonetheless remains that it did globally challenge the Board of Appeal’s comparisons of the marks at issue in a sufficiently coherent and intelligible manner on the basis of common elements of the earlier marks. Similarly, it criticised in a sufficiently coherent and intelligible manner the fact that the Board of Appeal did not take into consideration certain evidence presented to it and the arbitrary nature of the reasoning relating to the element consisting of a blade of grass inserted in a bottle.

22 It follows that, in its application, the applicant contested the Board of Appeal’s comparison of the marks in a manner consistent with the requirements of Article 177(1)(d) of the Rules of Procedure, with the result that OHIM and the intervener were able to prepare their defence and the Court is able to understand the applicant’s criticisms of the contested decision.

23 Accordingly, the action is admissible in its entirety. The plea of inadmissibility raised by OHIM must therefore be rejected.

Admissibility of certain of OHIM’s arguments put forward for the first time before the Court

24 The applicant claims that OHIM’s arguments that the representations of a bison and of a blade of grass inserted in a bottle lack, or have a very low degree of, distinctiveness were advanced for the first time before the Court and conflict with the Board of Appeal’s reasoning that the word element ‘wisent’ of the mark applied for is not descriptive. According to the applicant, those arguments cannot therefore be taken into account.

25 Thus, in essence, the applicant raises the inadmissibility of OHIM’s arguments, presented, in its opinion, for the first time before the Court, and which conflict with the content of the contested decision.

26 In reply to a question put by the Court at the hearing, OHIM stated that the arguments presented are not new, but that OHIM had acted on the basis of information provided by the applicant itself during the procedure before the Board of Appeal and that, by its contentions, OHIM had reacted to the applicant’s arguments relating to the figurative elements of the marks at issue, which, in OHIM’s opinion, were not well founded.

27 In that respect, it must be recalled that the purpose of actions before the Court under Article 65 of Regulation No 207/2009 is to secure review of the legality of decisions of the Boards of Appeal of OHIM, and that Article 188 of the Rules of Procedure provides that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. Accordingly, claims made by the parties which change the subject-matter of the dispute must be rejected as inadmissible by virtue of Article 65(2) of Regulation No 207/2009, in conjunction with Article 188 of the Rules of Procedure (judgment of 12 November 2014 in Murnauer Markenvertrieb v OHIM — Healing Herbs (NOTFALL), T‑188/13, EU:T:2014:942, paragraph 29).

28 In its pleadings, OHIM stated, first, that the representation of a bison is widely used for vodka flavoured with bison grass, since that grass is the preferred food of bison and, secondly, that the thin line which, according to the applicant, represents a blade of grass is not a distinctive element for the product concerned, nor a particularly striking or original one, since the insertion of a blade of grass into a bottle of distilled alcohol is the typical and traditional method of producing that kind of flavoured vodka.

29 First, it must be pointed out that, as is clear from paragraph 6 of the contested decision, the intervener had raised before the Board of Appeal the descriptive nature and, accordingly, the lack of distinctiveness of the figurative elements in the marks at issue, consisting of a representation of a bison and of a blade of grass inside a bottle. According to the intervener, those elements should be ignored in the comparison of the marks at issue due to their association with the goods in question. It must also be pointed out that those arguments and the argument relating to the descriptive nature of the terms ‘wisent’, ‘bison’ and ‘żubr’ were also raised by the intervener in its pleadings before the Court.

30 Secondly, it must be noted that, as the applicant submits, the Board of Appeal, in its comparison of the marks at issue, expressly discounted the possibility that the verbal element ‘wisent’ in the mark applied for might be descriptive of the goods in question. The Board of Appeal found, in paragraph 20 of the contested decision, that ‘the word [‘wisent’] [was] not descriptive for the goods at issue irrespective of whether the vodka in question would be flavoured with a tincture of a specific type of grass … eaten by [bison].’

31 Thirdly, it must be stated that the Board of Appeal found, in the contested decision, that the figurative elements of the marks at issue were either less distinctive or secondary. As regards the figurative elements consisting of the representation of a bison, the Board of Appeal found, in paragraphs 21, 25, 31, 42, 48, 54 and 60 of the contested decision, that they were less distinctive than the verbal elements in the marks at issue. As regards the thin line present in the mark applied for, it stated in paragraph 21 of the contested decision that ‘[a]ll other elements [were] clearly secondary within the overall impression of the complex mark because they [would] be perceived as decorative (the shape of the label, the gold-coloured top with the red ribbon underneath and the thin diagonal line) and/or as descriptive (the word element “vodka”) and/or because they [were] illegible or hardly visible (the illegible textual elements on top and at the bottom of the label, the word “Lancut” written on the red ribbon underneath the gold top and the thin diagonal line).’ As regards the earlier marks featuring a thin line, it merely stated, in paragraphs 32, 67, 73 and 79 of the contested decision that, first, that element played a secondary role and was presented very differently in the marks at issue and, secondly, that ‘[t]he mere fact that this component of the earlier complex mark shows some similarity with a component of the ... complex mark [applied for] which only plays a secondary role within the overall impression created by it cannot render the marks similar.’

32 It follows that, contrary to what the applicant claims, OHIM’s arguments that the representation of a bison lacks, or has a very low degree of, distinctiveness and that a blade of grass inserted in a bottle lacks distinctiveness relate to legal issues which had previously been raised before the Board of Appeal and examined by the latter; they therefore form part of the dispute before the Board of Appeal. Consequently, the applicant cannot reasonably claim that they were advanced for the first time before the Court.

33 Furthermore, the fact that, as the applicant submits, OHIM’s arguments may conflict with the Board of Appeal’s findings, in particular the finding that the element ‘wisent’ of the mark applied for is not descriptive, is irrelevant to the examination of the admissibility of the arguments relating to the low degree of descriptiveness of the representation of a bison and of a thin line on the basis that they were allegedly raised out of time.

34 In any event, it must be made clear that, by the arguments referred to in paragraph 28 above, OHIM does not contradict the reasoning of the contested decision, as reproduced in paragraph 31 above, given that the Board of Appeal found, first, that the figurative elements consisting of a representation of a bovine animal would be perceived as less distinctive and dominant than the verbal elements and, secondly, that the thin line present in both the mark applied for and in certain earlier marks would be perceived as ‘decorative and/or less striking’.

35 Finally, it must be stated, as OHIM submitted at the hearing, that, by its arguments, OHIM confined itself to responding to the applicant’s claims relating to the reputation and the highly distinctive character of the representation of a bison and to the original, striking and highly distinctive character of the thin line representing a blade of grass, which, as indicated in paragraph 34 above, was made on the basis of arguments which do not alter the reasoning of the contested decision.

36 Consequently, OHIM cannot reasonably be criticised, as in the case of the judgment of 14 May 2009 in Fiorucci v OHIM — Edwin (ELIO FIORUCCI), T‑165/06, ECR, EU:T:2009:157, paragraph 64, relied on by the applicant, for having presented to the Court arguments seeking to broaden the grounds of the Board of Appeal’s decision.

37 It must therefore be held that those arguments of OHIM are admissible. The plea of inadmissibility raised by the applicant must consequently be rejected.

38 The applicant essentially raises two pleas in law in support of its action. The first alleges infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009, and the second alleges infringement of Article 75 and Article 76(1) and (2) of that regulation.

39 By its first plea in law, the applicant, in essence, challenges the findings of the Board of Appeal that none of the earlier marks which it relied on is similar to the mark applied for, and it criticises the Board of Appeal for not carrying out an overall assessment of the likelihood of confusion and for not taking into account the reputation claimed for most of the earlier marks.

40 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for may not be registered if, because of its identity with, or similarity to, an earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘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 Community trade mark.

41 According to established case-law, the risk that the public might 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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

42 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

43 Thus, the existence of a similarity between the marks at issue is a precondition for the application both of Article 8(1)(b) of Regulation No 207/2009 and of Article 8(5) of that regulation (judgment of 24 March 2011 in Ferrero v OHIM, C‑552/09 P, ECR, EU:C:2011:177, paragraph 51).

44 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is to say, the visual, phonetic and conceptual aspects (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and of 10 September 2008 in Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, EU:T:2008:338, paragraph 89).

45 Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception which the consumer of the goods in question has of the marks at issue in that territory. However, it must be borne in mind that, for a Community trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the Community (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).

46 It is in the light of those principles that the Court must examine the issue relating to the similarity of the marks at issue, which is necessary in order to establish whether a likelihood of confusion exists.

47 In the interests of clarity and simplification, the Court considers it appropriate to focus the analysis on the substance of the applicant’s arguments relating to the earlier Polish three-dimensional mark, No 189866 (hereinafter ‘the earlier mark’), taken into consideration by the Opposition Division in order to assess whether there was a likelihood of confusion.

48 Neither the applicant nor the other parties to the proceedings before the Court dispute the findings of the Board of Appeal concerning, first, the definition of the relevant public and, secondly, the identity or similarity of the goods concerned.

49 First, with regard to the definition of the relevant public, it must be pointed out that the Board of Appeal acted correctly in finding, in paragraph 14 of the contested decision, that, since the earlier mark was registered in Poland, the relevant territory was composed of that Member State and that the relevant public was therefore the general public of that State. Secondly, with regard to the similarity of the goods in question, it must be observed that the Board of Appeal was correct, as is clear from paragraph 83 of the contested decision, in finding that those goods, in the case of the earlier mark, from Class 33 and consisting of ‘alcoholic beverages’ and, in the case of the mark applied for, from Class 33 and consisting of ‘vodka’ were identical.

50 With regard to the examination of the similarity of the marks at issue, the applicant essentially criticises the Board of Appeal, in the first place, for having used the wrong methodology when comparing the marks at issue; in the second place, for having wrongly concluded that the marks at issue were not conceptually similar; in the third place, for having wrongly concluded that the marks at issue were not visually similar; and, in the fourth place, for not having correctly assessed the effect of the diagonal line on the comparison of the marks at issue.

51 By contrast, it is common ground that the marks at issue are not phonetically similar. It must be observed that the verbal elements of those marks, that is to say, ‘wisent’, ‘vodka’ and ‘lancut’ in the case of the mark applied for, and ‘żubrówka’, the only visible verbal element in the earlier mark, are pronounced differently. Thus, as the Board of Appeal observed in paragraph 68 of the contested decision, that dissimilarity would exist even if the verbal element ‘żubrówka’ were not visible. Consequently, the marks at issue cannot be considered to be phonetically similar.

52 In the interests of consistency, the Court considers it appropriate, in the first place, to examine the first complaint relating to the methodology used in the comparison of the marks at issue; in the second place, to examine the fourth complaint, relating to the assessment of the diagonal line present in the marks at issue; in the third place, to examine the third complaint, relating to the visual similarity of the marks at issue; and, in the fourth place, to examine the second complaint relating to the conceptual similarity of the marks at issue.

53 The applicant, in essence, challenges the methodology used by the Board of Appeal in the comparison of the marks at issue.

55 In the first place, the applicant claims that the Board of Appeal wrongly took into account factors which should have been examined as part of the global assessment of the likelihood of confusion, as is the case with the distinctive and dominant character of certain elements.

56 In this regard, it should be observed that, according to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by those signs, 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 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

57 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, cited in paragraph 56 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment in OHIM v Shaker, paragraph 56 above, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).

58 In accordance with well-established case-law, when assessing 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 complex mark (judgment in MATRATZEN, cited in paragraph 44 above, EU:T:2002:261, paragraph 35, and judgment of 18 June 2013 in Rocket Dog Brands v OHIM — Julius-K9 (K9 PRODUCTS), T‑338/12, EU:T:2013:327, paragraph 23).

59 First, the Board of Appeal found, in paragraphs 20 and 21 of the contested decision, that the verbal element ‘wisent’ in the mark applied for was the most distinctive and dominant element, while the figurative element of that mark, consisting of a representation of a bovine animal which, as it indicated in paragraph 18 of the contested decision, might be perceived as a bison, would be regarded as less distinctive and dominant. According to the Board of Appeal, where a mark is made up of verbal and figurative elements, the former must, in principle, be regarded as more distinctive and dominant than the latter.

60 Secondly, in the case of the earlier mark, the Board of Appeal found, in paragraph 66 of the contested decision, that this consisted, inter alia, of a non-distinctive representation of a bottle traversed by a thin straight and vertical green line, slightly inclining to the left, and depicting a label comprising a circle with a vague graphic image inside, coloured brown and green, and surmounted by the verbal element, ‘żubrówka’, represented in black and yellow. Furthermore, it found, in paragraph 67 of the contested decision, that the verbal elements and the other figurative elements of the marks at issue were more distinctive than the thin line present in those marks.

61 It follows from the case-law cited in paragraph 56 above that, when comparing the marks at issue, the Board of Appeal must examine them and, where appropriate, determine which are the distinctive and dominant elements so that they may be taken into consideration in the assessment of the similarity of those marks.

62 Thus, the Board of Appeal was right, when comparing the marks at issue, to determine the most distinctive and dominant elements and to take those elements into account in the comparison of those marks.

63 Therefore, contrary to what the applicant claims, it cannot validly be argued that the Board of Appeal confused the stages of the examination of the likelihood of confusion.

65 In the second place, the applicant claims that, since the Board of Appeal confused the two stages of the examination of the likelihood of confusion, it should also, when comparing the marks at issue, have taken into account other factors, such as the identity of the goods in question, the high reputation of the earlier marks, the repute and enhanced distinctiveness of those marks and the fact that consumers recognise the blade of grass as an indication of origin.

66 In that regard, first, it must be recalled, as has been concluded in paragraph 63 above, that the Board of Appeal did not confuse the stages of the examination of the likelihood of confusion. Secondly, it must be noted that, in accordance with the case-law cited in paragraphs 42 and 43 above, the identity or similarity of the marks at issue is a necessary prerequisite for the application of Article 8(1)(b) and 8(5) of Regulation No 207/2009. Thus, it is only if there is some similarity, even faint, between the marks at issue that the Board of Appeal is required to carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the repute or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public (judgment in Ferrero v OHIM, cited in paragraph 43 above, EU:C:2011:177, paragraph 66).

67 Therefore, contrary to what the applicant claims, the Board of Appeal was not required, in the present case, to take into consideration, when comparing the marks at issue, elements such as the identity of the goods in question, the high reputation, the renown, or the enhanced distinctiveness of the marks, or the existence of a family of marks.

69 In the third place, the applicant criticises the Board of Appeal for not taking into account other relevant factors, such as the similarity of certain figurative elements in the marks at issue. More specifically, the applicant criticises the Board of Appeal on the ground that it failed to examine the similarities in the representation of the bison viewed in profile in both the mark applied for and the earlier mark.

70 OHIM and the intervener contend that the Board of Appeal correctly applied the principles governing the similarity of the marks, since those marks were compared in their entirety by taking into account their distinctive and dominant elements in accordance with the case-law. The intervener adds that the Board of Appeal, in its comparison of the marks at issue, also took into account the differences between the representations of the animals in those marks.

71 As has been stated in paragraphs 59 and 60 above, the Board of Appeal found, first, that the verbal element ‘wisent’ in the mark applied for was the most distinctive and dominant element of that mark, because, in principle, verbal elements must be regarded as more distinctive and dominant than figurative elements, and, secondly, that the earlier mark comprised a circle with a vague graphic element inside, coloured brown and green, and surmounted by the verbal element, ‘żubrówka’, represented in black and yellow. Thus, in paragraphs 67 and 69 of the contested decision, it found that the marks at issue were not similar, because, visually, they had in common only a thin line which played a secondary role and, conceptually, even though the relevant Polish public might associate the verbal element ‘żubrówka’ in the earlier mark with the idea of a European bison, the verbal element ‘wisent’ in the mark applied for, which was the most distinctive and dominant element, had no meaning for that public, and the representation of the bovine animal in that mark, which on its own did not dominate that mark, could not be perceived as a European bison.

72 It follows that, when comparing the marks at issue, the Board of Appeal, on the one hand, reduced the significance of the figurative elements of the mark applied for as against the verbal element ‘wisent’, in particular the representation of a bovine animal which may be perceived as a European bison, and on the other hand, it did not take into account the representation of the bison in the earlier mark, finding it to be a vague element.

73 In order to determine whether the Board of Appeal was right to proceed in that manner, it is appropriate to consider: (i) whether the verbal element ‘wisent’ stands out as the dominant element in the overall impression created by the mark applied for; (ii) whether that element is more distinctive than the other figurative elements of that mark; and (iii) whether the figurative element consisting of a representation of a bison viewed in profile in the earlier mark was perceptible and therefore had to be taken into consideration in the comparison of the marks at issue.

74 First, with regard to the dominant nature of the verbal element ‘wisent’ in the mark applied for, it must be pointed out that, where a sign consists of both figurative and word elements, it does not automatically follow that the word element must always be considered to be dominant. In the case of a composite mark, the figurative element may rank equally with the word element (judgments of 24 November 2005 in Simonds Farsons Cisk v OHIM — Spa Monopole (KINJI by SPA), T‑3/04, ECR, EU:T:2005:418, paragraphs 45 and 47, and of 23 November 2010 in Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, ECR, EU:T:2010:476, paragraph 37).

75 Similarly, it must be recalled, as was observed in paragraph 57 above, that it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.

76 In the present case, it must be noted that, contrary to what the Board of Appeal concluded in paragraph 20 of the contested decision, the verbal element ‘wisent’ in the mark applied for is not the dominant element of that mark. By its characteristics, the representation of a bison in the mark applied for cannot be considered to be negligible in the overall impression created by those characteristics.

77 It is true, as the Board of Appeal observed, that the verbal element ‘wisent’ has a central position in the first bottle of the mark applied for, and that it is written in large capital letters in a striking colour red. However, the figurative element, consisting of the stylised representation of a bovine animal viewed in profile looking to the left and which, according to paragraph 18 of the contested decision, may be perceived as a European bison, is of a similar size to that of the verbal element ‘wisent’ and accordingly occupies a comparable space in that mark. Furthermore, as a result of the rearing position of the animal above that element and its intense green colour, the figurative element gives an impression of predominance.

78 It follows that, as a result of its shape, its size, its colour and its position, that representation of a bison viewed in profile clearly helps to establish the image of the mark applied for which the relevant public will retain in mind, with the result that it cannot be discounted in the perception of those factors.

79 However, despite those findings of the Board of Appeal relating to the dominant character of that verbal element and the applicant’s criticisms, it is clear from the contested decision that the Board of Appeal did not draw the necessary conclusions after it qualified the element ‘wisent’ of the mark applied for as ‘dominant’ and that it did not exclude the figurative element of that mark from the comparison of the marks at issue. As can be seen from paragraph 21 of the contested decision, the Board of Appeal took that figurative element into consideration and found that it was less distinctive, since the verbal element ‘wisent’ was, in its opinion, the more distinctive. Similarly, it is apparent from that paragraph that the Board of Appeal also took into consideration the coat of arms represented on the second bottle and that it found that the other figurative and verbal elements of that mark, that is to say, the shape of the label, the gold-coloured top with the red ribbon underneath, the thin diagonal line, the descriptive verbal element ‘vodka’ and the verbal element ‘Lancut’, were secondary.

80 It is therefore necessary to examine whether the verbal element ‘wisent’ in the mark applied for is the most distinctive element of that mark.

81 Secondly, with regard to the more distinctive character of that verbal element, it must be observed that, in accordance with the case-law, where a composite mark consists of both a verbal element and a figurative element and the latter is of equal or lesser importance than the former, the assessment of the visual similarity of the signs at issue must be carried out on the basis of the overall impression created by those signs and not solely on the basis of the similarity of the verbal elements (see, to that effect, judgment in Nestlé v OHIM, cited in paragraph 57 above, EU:C:2007:539, paragraphs 46 and 47).

82 It is true that the judgment of 14 July 2005 in Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, ECR, EU:T:2005:289, paragraph 37, relied on by the Board of Appeal in paragraph 20 of the contested decision, was intended to establish a rule based on general experience, according to which, where a mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer would more easily refer to the goods in question by quoting the name of the mark than by describing the figurative element. Nevertheless, that rule of general experience has been clarified and nuanced by subsequent case-law which has held that, having regard to the characteristics of the figurative element, it could either contribute visually to the overall impression created by that mark (judgment of 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 32) or be the dominant element of that mark (judgments of 6 October 2011 in Galileo International Technology v OHIM — Galileo Sistemas y Servicios (GSS GALILEO SISTEMAS Y SERVICIOS), T‑488/08, EU:T:2011:574, paragraph 47, and of 31 January 2013 in K2 Sports Europe v OHIM — Karhu Sport Iberica (SPORT), T‑54/12, EU:T:2013:50, paragraph 40).

83 In the present case, it must be pointed out that, contrary to the findings of the Board of Appeal, the figurative element in the mark applied for, consisting of the stylised representation of a bovine animal which may be perceived as a European bison, is, as a result of its characteristics, just as distinctive as the verbal element ‘wisent’ of that mark and therefore contributes, to the same extent as that verbal element, to the overall impression created by those marks. As has been stated in paragraph 77 above, that figurative element is of a similar size to that of the verbal element ‘wisent’, and accordingly occupies a comparable space in that mark. Furthermore, as a result of the rearing position of the animal above the verbal element and its intense green colour, the figurative element gives an impression of predominance.

84 The same considerations apply to the figurative element consisting of a coat of arms, represented in white and grey on the second bottle, on what appears to be the rear view of a single bottle, occupying the central part of that bottle and of a larger size than the verbal element ‘wisent’.

85 In those circumstances, the fact that those figurative elements are accompanied by the verbal element ‘wisent’ does not, contrary to what the Board of Appeal concluded in paragraph 21 of the contested decision, mean that they will be perceived as less distinctive than that verbal element. In view of their characteristics, the Court considers that those figurative elements are just as distinctive as the verbal element.

86 In the light of the foregoing, the Court takes the view that the Board of Appeal erred in finding that the figurative elements of the mark applied for, consisting of a representation of a bison and a representation of a coat of arms, were less distinctive than the verbal element ‘wisent’ of that mark.

87 Thirdly, with regard to the perception of the figurative element consisting of a representation of a bison in the earlier mark, it must be stated that the Board of Appeal’s findings, in paragraph 66 of the contested decision, that there is ‘a circle with a vague unclear image inside, in the colours brown and green, surrounded by a verbal element in yellow and black in which the word “żubrówka” may be perceived’ cannot be accepted. It is apparent from numerous documents in the administrative file relating to that mark that, even though the image provided of that mark is small in size, the naturalistic representation of a bison standing on four legs in a circle against a background of trees, coloured green, brown and black, is clearly perceptible in that mark. That representation of a bison occupies a central position in the earlier mark and is of a slightly larger size than the only perceptible verbal element of that mark, that is to say, the term ‘żubrówka’, represented in yellow and black and placed above that representation. In addition, that representation is framed between two black figurative elements and set above a figurative element resembling a signature.

88 Thus, the figurative element consisting of a naturalistic representation of a bison cannot be discounted in the overall impression created by that mark. Furthermore, as is apparent from the case-law cited in paragraph 82 above, that element cannot be considered to be less distinctive than the verbal element ‘żubrówka’, given its visibility by reason of its central position in the earlier mark, its size in comparison with the verbal element ‘żubrówka’ and the fact that it is set in a circle surmounted by that verbal element and framed by two black figurative elements which make it stand out. In view of those characteristics, the Court considers that it is just as distinctive as the verbal element.

89 The Board of Appeal was therefore wrong in failing to take into account, when comparing the marks at issue, the figurative element consisting of a representation of a bison in a circle against a background of trees, which was clearly perceptible in the earlier mark. As the applicant has rightly submitted, the comparison between the marks at issue must be carried out on the basis of all of their various components, both figurative and verbal.

90 The consequences of that error and of that referred to in paragraph 86 above will be examined in the context of the visual and conceptual comparisons of the marks at issue (see paragraphs 109 to 116 and 125 to 130 below).

91 With regard to the argument that consideration should be given to the fact that the relevant public would identify the figurative element consisting of a thin straight, slightly inclining or diagonal line as being a blade of grass, this will be examined in the context of the complaint relating to the impact of that element on the comparison of the marks at issue, which deals, inter alia, with the issue of the relevant public’s perception of that element (see paragraphs 95 to 105).

The impact of the line present in the marks at issue on the comparison of those marks

92 The applicant criticises the Board of Appeal’s assessment of the line present in both the mark applied for and the earlier mark, according to which that element will be perceived simply as a thin straight, slightly inclining or diagonal line, and not as blade of grass. In the applicant’s opinion, the blade of grass is a distinctive element due to its original or striking character and will be perceived, in itself, as an indication of commercial origin.

94 The Board of Appeal, first of all, observed in paragraph 17 of the contested decision that, contrary to the findings of the Opposition Division, the marks at issue did not contain a blade of grass, but rather a diagonal line, represented differently, and that those marks therefore had to be compared on the basis of that perception. Next, it found that, both in the case of the mark applied for (see paragraph 21 of the contested decision) and in the case of the earlier mark (see paragraph 67 of the contested decision), the line included in those marks had a secondary role.

95 In that regard, it is important to point out that, in accordance with the case-law, the examination of the similarity of the marks at issue takes into consideration those marks in their entirety, as they have been registered or as they have been applied for (judgments of 2 December 2009 in Volvo Trademark v OHIM — Grebenshikova (SOLVO), T‑434/07, ECR, EU:T:2009:480, paragraph 37, and of 9 March 2012 in EyeSense v OHIM — Osypka Medical (ISENSE), T‑207/11, EU:T:2012:121, paragraph 26). Likewise, it must be observed that, in accordance with the case-law, the similarity of the marks at issue must be assessed from the point of view of the average consumer, by reference to the intrinsic qualities of those marks (judgments of 2 September 2010 in Calvin Klein Trademark Trust v OHIM, C‑254/09 P, ECR, EU:C:2010:488, paragraph 46, and of 19 June 2012 in H.Eich v OHIM — Arav (H.EICH), T‑557/10, EU:T:2012:309, paragraph 47).

96 In the present case, it is clear from the examination of the marks at issue that, as represented, the earlier mark and the mark applied for contain a figurative element consisting of a thin line which traverses the bottle, and which, moreover, is represented differently. In the case of the mark applied for, it is of a slightly darker yellow than the colour of the bottle, and it traverses the bottle diagonally from the top right to the bottom left. In the case of the earlier mark, that line is thin, inclining slightly to the left, green in colour and interrupted by the label.

97 Those schematic representations of what might be a blade of grass cannot, however, be perceived, contrary to what the applicant claims, as an actual blade of grass. The feature of the marks referred to in paragraph 96 above, as represented, will be perceived as what it is, that is to say, a simple line, and not as a blade of grass. Only a more realistic representation of a blade of grass, or an actual image of a blade of grass placed inside a bottle, could evoke the image of a blade of grass, which, moreover, might be confirmed by the description of that image. However, that is not the case here.

98 As the applicant claims, the fact that consumers recognise the blade of grass as an indication of commercial origin of its goods is not sufficient to establish that those consumers, when they encounter the marks at issue, as represented, will perceive the straight, slightly inclining or diagonal line traversing each of the bottles as a blade of grass.

99 Thus, given its perception of that figurative element as a simple straight, slightly inclining or diagonal line traversing a bottle, the Board of Appeal was correct in finding that, as there were other figurative elements, that element was less distinctive and played a secondary role in the assessment of the similarity of the marks at issue.

100 That finding cannot be invalidated by the applicant’s argument that the blade of grass is a particularly striking or original element. In this regard, it must be recalled, as has been indicated in paragraph 99 above, that the figurative element in the marks at issue, as represented, is a straight, slightly inclining or diagonal line which will be perceived as a line traversing the bottles and not as a blade of grass. As a straightforward shape, that line does not appear to be particularly original or striking. Furthermore, in the case of both the mark applied for and the earlier mark, that line is subordinate due to the presence of other verbal and figurative elements in those marks. Thus, it becomes less visible, and accordingly its capacity to have an impact on the mind of the consumer is diminished.

101 Furthermore, the fact that, as the applicant claims, the blade of grass in a bottle has been registered by various national trade mark offices and as a Community mark, or the fact that it has acquired a distinctive character through the use made of it cannot have consequences either for the perception of that element or for its secondary, less distinctive character. In that regard, first, it is necessary to observe that the absence of an absolute ground for refusal of registration as a mark of a blade of grass or a diagonal line in a bottle cannot prejudice the role played by such a figurative element in the comparison of other marks in which that element is included among the figurative elements. Secondly, suffice it to note that, although the acquisition of distinctive character through use is relevant in the context of absolute grounds for refusal, it is not, however, relevant in the context of relative grounds for refusal, as in the present case in respect of whether there is a likelihood of confusion (judgment of 28 June 2012 in I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, ECR, EU:T:2012:327, paragraph 67).

102 However, the fact that, as OHIM and the intervener have contended, that element may have a weak distinctive character or be devoid of such character, with regard to the goods concerned, because it amounts to a description of one of the methods of producing flavoured vodkas, something which cannot be monopolised by the applicant, does not mean that it can be disregarded in the assessment of the similarity of the marks at issue.

103 Assuming that that element does have a weak distinctive character, as a result of its capacity to evoke a method of production of the goods in question, that fact alone would not prevent it from being taken into consideration in the overall impression created by the marks at issue. Thus, it must be recalled that the descriptive character or the weak distinctive character of an element forming part of a composite mark does not, in certain circumstances, prevent it from being regarded as significant and from being taken into consideration in the comparison of the marks at issue (judgment of 25 March 2010 in Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, ECR, EU:T:2010:123, paragraphs 44 to 48), or even from being capable of making an impression on consumers and being remembered by them (judgments of 13 June 2006 in Inex v OHIM –Wiseman (Representation of a cowhide), T‑153/03, ECR, EU:T:2006:157, paragraph 32, and of 14 September 2011 in Olive Line International v OHIM — Knopf (O-live), T‑485/07, EU:T:2011:467, paragraph 85; see also, to that effect, judgment of 13 July 2004 in AVEX v OHIM — Ahlers (a), T‑115/02, ECR, EU:T:2004:234, paragraph 20). In the present case, as was stated in paragraph 99 above, it will be taken into consideration as a secondary element in the overall impression created by the marks at issue.

104 Accordingly, the Board of Appeal was correct in finding, first, that the straight, slightly inclining or diagonal line present in the earlier mark and in the mark applied for will be perceived as a thin line and not as a blade of grass and, secondly, that that line is less distinctive and plays a secondary role in the overall impression created by the marks at issue.

106 The applicant disputes the visual comparison of the marks at issue and submits that they are similar to a certain extent by reason of the presence in both of a representation of a bison and of a blade of grass, and of the use of the colour green.

107 OHIM and the intervener contend, in essence, that the correspondence between elements which play only a secondary role is not sufficient for the conclusion that the marks at issue are similar.

108 The Board of Appeal found, in paragraph 67 of the contested decision, that the earlier mark and the mark applied for were not visually similar, because their only common element was the straight, slightly inclining line, which was a secondary figurative element, while the other, much more distinctive, verbal and figurative elements did not correspond to one other.

109 In the first place, as follows from paragraph 87 above, since the representation of a bison against a background of trees is perceptible in the earlier mark, that element cannot be discounted in the overall impression created thereby. Similarly, as was indicated in paragraph 88 above, the naturalistic representation of a bison standing on its four legs, against a background of trees, coloured brown, green and black, is just as distinctive as the verbal element of the earlier mark, that is to say, the verbal element ‘żubrówka’, which is the only visible verbal element, and it is not dominant.

110 Thus, it should be noted that the mark applied for and the earlier mark have in common one of the distinctive elements of those marks, that is to say, the representation of a bison, viewed in profile and looking to the left. In the case of the mark applied for, it is a stylised and dynamic representation of a bison, in a rearing position and coloured green, while in the case of the earlier mark it is a naturalistic and static representation of a bison, standing on its four legs in a circle, against a background of trees, coloured brown, green and black. Similarly, those marks have in common certain non-distinctive and/or secondary elements, that is to say, the representation of a common bottle and a thin line, which, however, is in a different position in each of those marks and is represented in different colours.

111 Contrary to the arguments of OHIM and the intervener, as indicated in paragraphs 85 and 88 above, those representations of a bison do not play a secondary role, but are just as distinctive as the verbal elements ‘wisent’ and ‘żubrówka’ of the marks at issue.

112 By contrast, the marks at issue differ in their verbal elements, that is to say, ‘wisent’ in the mark applied for and ‘żubrówka’ in the earlier mark. However, contrary to the arguments of OHIM and the intervener, as indicated in paragraphs 78 and 88 above, those verbal elements do not dominate the overall impression created by those marks, inasmuch as the representation of a bison cannot be disregarded in either. Likewise, the marks at issue differ due to the presence of a coat of arms in the mark applied for and by the presence of other verbal and figurative elements of secondary importance due to their position, their size, their visibility or their meaning. That is the case, in the earlier mark, with regard to the fanciful line in the upper part of the bottle, the figurative elements in black or the element that appears to represent a signature and, in the case of the mark applied for, with regard to the shape of the label, the gold-coloured top with the red ribbon underneath, and the verbal elements ‘vodka’ and ‘Lancut’.

113 Contrary to the arguments of OHIM, the fact that the marks at issue contain different verbal elements does not preclude a finding that the marks at issue are visually similar. It is apparent from the case-law that the visual differences resulting from the presence of different verbal elements in the marks at issue may not be such as to affect the visual perception of those marks (judgment of 5 December 2012 in Consorzio vino Chianti Classico v OHIM — FFR (F.F.R.), T‑143/11, EU:T:2012:645, paragraph 40). In the present case, the differences resulting from the presence of the different verbal elements are not such as to eclipse the visual similarity resulting from the fact that the marks at issue both contain bison, the image of which will easily be retained by consumers in their memory as a result of their position within the marks at issue and their size.

114 However, that similarity, at most, is no more than weak, bearing in mind the differences introduced by the particular stylisation of the bison in the mark applied for, by the different colours in which the bison are represented, by the different positions of the bison, rearing in the mark applied for and standing on four legs in the earlier mark, by the representation of the coat of arms in the second bottle of the mark applied for and by the less distinctive and secondary figurative elements in the marks at issue (see, to that effect, judgment of 20 October 2011 in Scatizza v OHIM — Jacinto (Horse Couture), T‑238/10, EU:T:2011:613, paragraph 32). Thus, contrary to the intervener’s arguments, those differences do not preclude the impression of similarity, even faint similarity, conveyed by the presence in the marks at issue of the representation of a bison, viewed in profile and looking to the left.

115 Moreover, it must be made clear that the distinctive figurative element consisting of the representation of the coat of arms on the second bottle, which, as has been stated in paragraph 84 above, appears to correspond to the back of that bottle, plays a less important role in the overall impression created by the marks at issue and does not remove the impression of a low degree of similarity given by those marks by the presence in each, in the view corresponding to the front part of the bottle, of the representation of a bison viewed in profile and looking to the left on a bottle traversed by a vertical or diagonal line.

116 Therefore, it must be stated that, considered as a whole, as is required by the case-law, the mark applied for and the earlier mark are, at most, visually similar to a low degree.

117 That conclusion cannot be invalidated, either by OHIM’s argument that the animal represented in the mark applied for is not perceived as a bison, since, in the stylised representation, its characteristic features, in particular its mane, are absent, or by the intervener’s argument that it will be perceived as a bull, due to its rearing and aggressive position.

118 In that regard, it should first be made clear that the Board of Appeal, in paragraph 18 of the contested decision, described the figurative element as ‘a stylised [green] image ... of a bovine animal, which may be perceived as a bison’. Next, it should be noted that the stylised representation of the bison contains characteristic features of that animal, in particular the mane, perceptible as the salient feature behind its head, separated from the rest of its body by clear thin lines and emphasised by the rearing position of the animal. Thus, those elements are sufficient to evoke in the mind of the relevant Polish public the image of a bison, regardless of whether, as OHIM and the intervener contend, the rearing position of that animal, from a biological perspective, is a characteristic of bovine animals other than the bison, such as bulls, as a result of their size and their respective weight.

119 Furthermore, with regard to the intervener’s arguments that the words ‘wisent’ and ‘żubr’, and the representations of the animals to which they refer convey information about the type of vodka, it must be recalled, as the Board of Appeal observed in paragraph 20 of the contested decision, that the term ‘wisent’ is not descriptive of vodka flavoured with bison grass. The Court thus takes the view that those considerations also apply to the representation of the bison to which both that term and the Polish term ‘żubr’ refer, inasmuch as neither term allows a direct and specific link to be made with the goods in question, with the result that the relevant public, when confronted with that verbal element, would immediately perceive, without further consideration, a description of the goods in question or of one of their characteristics (see judgments of 7 July 2011 in Cree v OHIM (TRUEWHITE), T‑208/10, EU:T:2011:340, paragraph 14 and the case-law cited, and of 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, EU:T:2012:210, paragraph 16 and the case-law cited). Furthermore, as the intervener maintains, the fact that consumers may perceive the term ‘żubrówka’ as a type of vodka rather than as a mark does not take away from the impression of a low degree of similarity created by the representation of a bison viewed in profile and looking to the left in the marks at issue and the correspondence between certain secondary elements, such as the representation of the bottle and the straight, slightly inclining or diagonal line, of different colours, in those marks. In those circumstances, as the intervener maintains, the fact that the applicant’s legal predecessor stated, in a procedure for registration of a separate Community mark, that the term ‘żubrówka’ was descriptive of a type of vodka cannot, even if proved, affect the present case.

120 Finally, as OHIM has stated, the mere fact that the representation of a bison is commonly used to identify vodka flavoured with bison grass would not be sufficient to establish in the present case that that element has a weak distinctive character or is devoid of such character for the goods in question, particularly in view of the fact that, as the applicant has claimed, it contested that use before the national courts. In those circumstances, as the intervener maintains, the fact that the applicant’s legal predecessor claimed, in a procedure for registration of a separate Community mark, that the representation of a bison was used for a type of vodka cannot, even if proved, affect the present case.

121 In the light of all of the foregoing, the Court considers that the Board of Appeal erred in concluding that there was no visual similarity between the marks at issue. The consequences of that error will be examined in paragraphs 135 to 139 below.

122 By its arguments, the applicant submits, in essence, that, conceptually, the marks at issue are strongly similar, or even identical, as a result in particular of the use of a blade of grass in the bottle, the terms ‘wisent’ and ‘żubrówka’ and the representation of a bison viewed in profile.

123 OHIM and the intervener maintain that the marks at issue cannot be regarded as being conceptually similar inasmuch as none of the marks evokes a clear concept for the relevant public.

124 The Board of Appeal found in paragraph 69 of the contested decision that the Polish consumer was liable to associate the term ‘żubrówka’ in the earlier mark with the concept of a bison. However, it found that the term ‘wisent’ in the mark applied for was meaningless for that consumer and that the representation of a bovine animal in that mark was not likely to be perceived as such. It accordingly concluded that the marks at issue were not conceptually similar.

125 In that respect, it must be observed that, in accordance with the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content (judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24, and of 21 April 2010 in Peek & Cloppenburg and van Graaf v OHIM — Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, ECR, EU:T:2010:152, paragraph 63).

126 First, as follows from paragraph 87 above, since the representation of a bison is perceptible in the earlier mark, the Court considers that the concept of a ‘bison’ will be conveyed by that mark, and, as follows from paragraph 117 above, the Board of Appeal found in paragraph 18 of the contested decision that the representation of the bovine animal in the mark applied for could be perceived as a bison. The Board of Appeal, however, contradicts itself when it asserts in paragraph 69 of the contested decision, when making the conceptual comparison of the marks at issue, that ‘[t]he image of the bovine animal in the [mark applied for] … may even not be perceived as a “wisent”’. As has been stated in paragraph 118 above, and contrary to the intervener’s arguments, the representation of a bovine animal in the mark applied for presents characteristics of a bison, in particular its mane, making it possible to identify it as a bison and to find that, as in the case of the earlier mark, such an image conveys the concept of a bison.

127 Secondly, the representations of a bison are accompanied, in the case of the mark applied for, by the element ‘wisent’, which is meaningless in Polish but which signifies ‘bison’ in, inter alia, English and German, and, in the case of the earlier mark, by the element ‘żubrówka’, which evokes a bison in the mind of the Polish public, due to the fact that it contains the element ‘żubr’, which means ‘bison’ in Polish.

128 Thirdly, the fact that, in the case of the mark applied for, the relevant public is not in a position to understand the meaning of the verbal element ‘wisent’ cannot neutralise the semantic concordance arising out of the fact that, as was indicated in paragraph 125 above, the concept of a ‘bison’ is conveyed by one of the distinctive figurative elements both of the mark applied for and of the earlier mark. The mere fact that the mark applied for contains a verbal element which has no meaning for the relevant public does not make it conceptually different overall from the earlier mark (see, to that effect, judgment in Horse Couture, cited in paragraph 114 above, EU:T:2011:613, paragraph 40).

129 Fourthly, in any event, it must be observed that, contrary to OHIM’s arguments, the verbal element ‘wisent’ of the mark applied for will be understood by the relevant Polish public having a sufficient knowledge of English or German as meaning ‘bison’, which, in accordance with the case-law, will strengthen the concept conveyed by the more distinctive figurative element of that mark for that part of the Polish public (judgment of 17 April 2008 in Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, EU:T:2008:114, paragraph 91, and judgment in Horse Couture, cited in paragraph 114 above, EU:T:2011:613, paragraph 39).

130 The Court, accordingly, takes the view that the relevant public will perceive the earlier mark and the mark applied for as referring, on a conceptual level, to the concept of a ‘bison’ due to the use of a figurative element, that is to say, the representation of a European bison viewed in profile and looking to the left, but which is presented in a rearing position in the case of the mark applied for, and is standing on four legs in the case of the earlier mark. Thus, those marks have, to a certain extent, an analogous basic semantic content which that figurative element conveys directly. Furthermore, as has been indicated in paragraphs 85 and 88 above, that element is just as distinctive as the verbal elements ‘wisent’ and ‘żubrówka’ and cannot therefore be regarded as being secondary. Consequently, the Court takes the view that, as the Opposition Division had stated, those marks have a certain degree of conceptual similarity.

131 That finding cannot be invalidated by OHIM’s argument, based on case-law, that, in the case of composite marks consisting of a number of verbal elements with no particular meaning and a number of different figurative elements, the marks at issue are not conceptually similar because they do not evoke a clear concept (judgment in F.F.R., cited in paragraph 113 above, EU:T:2012:645, paragraph 49). In that regard, it must be stated that, in the present case, unlike the case relied on by OHIM, the mark applied for and the earlier mark correspond in one of their distinctive figurative elements, that is to say, the representation of a bison, and do not contain different figurative elements capable of introducing conceptual differences between them.

132 Thus, it must first be made clear, as the Board of Appeal observed on a number of occasions in the contested decision, that the other figurative elements in the marks at issue, that is to say, the bottles, the top, the label, the terms ‘vodka’ and ‘lancut’ or the thin straight, slightly inclining or diagonal line — some of those mentioned by OHIM — are either common or banal elements, or play merely a secondary role in the overall impression created by the marks at issue, and cannot introduce significant conceptual differences between them. Furthermore, both the shape of the bottle and the thin line present in the marks at issue are capable of conveying the same concept, that is to say, that of a bottle traversed by a straight, slightly inclining or diagonal line, giving rise to a new conceptual concordance to be added to that previously found in respect of the more distinctive figurative element.

133 Secondly, it must be observed that the figurative element of the mark applied for consisting of the representation of a coat of arms, which evokes the concept of an emblem, cannot remove the impression of similarity resulting from the presence, in the marks at issue, of the concept of a bison, conveyed both by the figurative elements of those marks and at least by the verbal element of the earlier mark. Unlike the case cited in paragraph 131 above, the presence of that element in the rear view of the bottle and the fact that that element is separated from the verbal element ‘wisent’ and from the representation of the bison does not in any way change the concept of a ‘bison’ conveyed by the marks at issue. Furthermore, as was stated in paragraph 115 above, that element plays a less important role than the verbal element ‘wisent’ and the figurative element consisting of the representation of a bison in the overall impression created by the mark applied for, because of its position. Consequently, the difference resulting from the evocation of the concept of an emblem by the figurative element present in the second view of the bottle in the mark applied for neither alters the common concept of a ‘bison’ conveyed by the marks at issue, nor neutralises the similarity of the marks at issue as a result of the fact that those marks coincide in the concept of a bison.

134 Contrary to what OHIM maintains, the fact that different concepts may be conveyed by the marks at issue cannot lead to a situation in which no clear concept is evoked. On the contrary, the marks at issue convey the concept of a bison due to the presence, in each, of the representation of a bison, which constitutes a significant distinctive element, and the presence in the earlier mark of the verbal element ‘żubrówka’. The presence of the coat of arms in the second view of the mark applied for, conveying the concept of an emblem, is added to the concept of a bison without disturbing the concept primarily evoked by that mark. However, as was stated in paragraph 133 above, that difference does not neutralise the similarity of the marks at issue, because they coincide in the common concept of a bison. In any event, the secondary elements, which are also conceptually concordant, consisting of the representation of a bottle and a straight, slightly inclining or diagonal line, may harmoniously incorporate the semantic content conveyed by the marks at issue, by referring above all to the concept of a bison and, moreover, to that of a bottle traversed by a line.

135 Thus, it must be held that the contested decision is vitiated by errors in the assessment of the visual similarity and of the certain conceptual similarity of the marks at issue. The Board of Appeal was therefore wrong to conclude in paragraph 70 of the contested decision that the marks at issue were overall dissimilar.

136 Having regard to the low degree of visual similarity, at most, and a certain conceptual similarity between the marks at issue, the Court considers that those marks have a low degree of similarity.

137 It is apparent from the contested decision that, in the present case, the Board of Appeal did not carry out a global assessment of the likelihood of confusion. It merely held, in paragraphs 83 and 85 of the contested decision, that, due to the differences found, in particular at the visual, phonetic and conceptual levels, the opposition based on Article 8(1)(b) and 8(5) of Regulation No 207/2009 could not succeed.

138 However, having regard to the existence, first, of at most a low degree of visual similarity between the earlier mark, containing the representation of a bison, and the mark applied for (see paragraph 116 above) and, secondly, a certain conceptual similarity between those two marks (see paragraph 130 above), the Court considers that the Board of Appeal ought to have carried out an overall assessment of the likelihood of confusion and examined whether the other conditions of Article 8(5) of Regulation No 207/2009 had been satisfied.

139 The Board of Appeal therefore erred in taking the view that, due to the visual, phonetic and conceptual differences, the grounds of opposition based on Article 8(1)(b) and 8(5) of Regulation No 207/2009 were without merit.

140 Since the Board of Appeal based its decision solely on the lack of similarity between the marks at issue and rejected, for that reason alone, the two grounds on which the opposition was based, it is not for the Court, in the present case, to carry out an overall examination of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, or to assess whether the other conditions set out in Article 8(5) of that regulation are met (judgment of 6 October 2011 in Seven v OHIM — Seven for all mankind (SEVEN FOR ALL MANKIND), T‑176/10, EU:T:2011:577, paragraph 58).

141 Given that the first plea, alleging infringement of Article 8(1)(b) and 8(5) of Regulation No 207/2009, is well founded, the action must be upheld and the contested decision annulled, without it being necessary to examine the second plea.

142 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

143 Since OHIM and the intervener have been unsuccessful in the present case, they must, in accordance with the form of order sought by the applicant, be ordered to bear their own costs and to pay the costs incurred by the applicant.

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 10 June 2013 (Case R 1734/2011-4);

2. Orders OHIM and Fabryka Wódek Polmos Łańcut SA to bear their own costs and to pay those of CEDC International sp. z o.o.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> CEDC International v OHMI - Fabryka Wodek Polmos Lancut (WISENT VODKA) (Judgment) [2015] EUECJ T-450/13 (12 November 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T45013.html Cite as: [2015] EUECJ T-450/13, ECLI:EU:T:2015:841, EU:T:2015:841

Court of Justice of the European Communities (including Court of First Instance Decisions)