Karlovarske mineralni vody v EUIPO - Aguas de San Martin de Veri (VERITEA) (EU trade mark - Judgment) [2019] EUECJ T-28/19 (19 December 2019)

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(EU trade mark — Opposition proceedings — Application for the EU word mark VERITEA — Earlier EU word mark VERI — AGUA PURA DEL PIRINEO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Obligation to state reasons)

Karlovarské minerální vody a.s., established in Karlovy Vary (Czech Republic), represented by J. Mrázek, lawyer,

European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, J. Crespo Carrillo and H. O’Neill, acting as Agents,

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

Aguas de San Martín de Veri, SA, established in Bisaurri (Spain), represented by P. González-Bueno Catalán de Ocón, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 November 2018 (Case R 499/2018-5), relating to opposition proceedings between Aguas de San Martín de Veri and Karlovarské minerální vody,

composed of A. Marcoulli, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 15 January 2019,

having regard to the response of EUIPO lodged at the Court Registry on 11 June 2019,

having regard to the response of the intervener lodged at the Court Registry on 28 May 2019,

having regard to the written questions put by the Court to the applicant and to the intervener and their replies to those questions lodged at the Court Registry on 4 and 7 October 2019 respectively,

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,

1 On 29 June 2016, the applicant, Karlovarské minerální vody 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)).

3 The goods in respect of which registration was sought are in Classes 30 and 32 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:

4 The trade mark application was published in Community Trade Marks Bulletin No 2016/137 of 25 July 2016.

5 On 23 September 2016, the intervener, Aguas de San Martín de Veri, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

– the earlier EU word mark VERI — AGUA PURA DEL PIRINEO, registered on 20 November 2015 under No 14329593 for the goods in Class 32 corresponding to the following description: ‘Non-alcoholic beverages; hop extracts for use in the preparation of beverages; malt syrup for beverages; beer wort; malt wort; hops (extracts of -) for making beer; concentrates for use in the preparation of soft drinks; essences for making beverages; extracts for making beverages; beers; malt beer; non-alcoholic beer; low alcohol beer; beers enriched with minerals; lagers; shandy; beer-based cocktails; porter; stout’;

– the earlier Spanish word mark VERI, registered on 24 September 1976 under No 686133 for the goods in Class 32 corresponding to the following description: ‘All types of table water’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 By decision of 30 January 2018, the Opposition Division upheld the opposition based on the earlier EU word mark VERI — AGUA PURA DEL PIRINEO and thus refused registration of the mark applied for in respect of all the goods referred to in paragraph 3 above. Therefore, the Opposition Division held that it was not necessary to examine the opposition based on the earlier Spanish word mark VERI.

9 On 19 March 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 8 November 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal. The Board of Appeal found, in essence, that, given the identity and similarity between the goods at issue and the visual and phonetic similarity between the mark applied for and the earlier EU word mark VERI — AGUA PURA DEL PIRINEO, there existed a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.

13 In Annex A.1 to the application, the applicant submitted an analysis of the present case carried out by the former president of the Úřad průmyslového vlastnictví (Industrial Property Office, Czech Republic). In that annex, the applicant referred, without further details, to paragraphs 18 and 26 of the application.

14 According to EUIPO, Annex A.1 to the application is inadmissible because, on the one hand, it was submitted for the first time before the Court and, on the other, it was not accompanied by a translation into the language of the case before the Court, namely English.

15 In its reply to a written question by the Court, the applicant confirmed that it had not submitted the analysis which is the subject of Annex A.1 before either the Opposition Division or the Board of Appeal.

16 In accordance with settled case-law, the purpose of bringing an action before the General Court is to review the legality of the decisions of the Boards of Appeal of EUIPO within the meaning of Article 72 of Regulation 2017/1001. It follows from that provision that facts not relied on by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action brought before the General Court and that the latter cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see judgment of 20 March 2013, El Corte Inglés v OHIM — Chez Gerard (CLUB GOURMET), T‑571/11, EU:T:2013:145, paragraph 25 and the case-law cited).

17 In the light of the foregoing, the analysis which is the subject of Annex A.1 to the application, submitted for the first time before the Court, is inadmissible.

18 Therefore, the plea of inadmissibility raised by EUIPO must be upheld without there being any need to request that the applicant provide a translation of Annex A.1 in the language of the case.

19 In support of its action, the applicant relies, in essence, on two pleas in law. The first alleges breach of the obligation to state reasons. The second alleges infringement of Article 8(1)(b) of Regulation 2017/1001.

First plea in law, alleging, in essence, breach of the obligation to state reasons

20 The applicant claims, in essence, that the contested decision fails to give an adequate statement of reasons.

22 Under the first sentence of Article 94 of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based.

23 That obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU, and its objective is, first, to allow those concerned to know the reasons for the measure adopted in order to be able to protect their rights and, secondly, to enable the EU judicature to exercise its power to review the legality of the decision (judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86, and of 15 July 2014, Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 76).

24 However, in stating the reasons for the decisions which they are called upon to make, the Boards of Appeal are not obliged to take a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 3 March 2016, Ugly v OHIM — Group Lottuss (COYOTE UGLY), T‑778/14, not published, EU:T:2016:122, paragraph 67 and the case-law cited).

25 In the present case, first, the applicant merely confirms that the contested decision ‘does not contain the usual detailed statement of reasons’, without providing further elaboration on the findings of the Board of Appeal which, according to the applicant, were insufficiently reasoned.

26 Secondly, it must be stated that the grounds on the basis of which the Board of Appeal found that the conditions for Article 8(1)(b) of Regulation 2017/1001 to apply, as interpreted by the case-law of the Court of Justice and of the General Court, were satisfied in the present case appear clearly and sufficiently, inter alia, from paragraphs 45 to 50 of the contested decision and enable, first the applicant to know the reasons for the contested decision and, secondly, the Court to exercise its power to review the legality of that decision.

27 Therefore, it must be concluded that the Board of Appeal did not breach the obligation to state reasons and, accordingly, the first plea must be rejected.

Second plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

28 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

29 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

30 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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, by analogy, judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

31 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

32 Furthermore, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU 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 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

33 In the present case, in paragraphs 18 and 22 of the contested decision, the Board of Appeal took the view that the relevant territory for the purposes of assessing the likelihood of confusion was that of the European Union and that the relevant public consisted of the general public with an average level of attention. Moreover, in paragraph 19 of the contested decision, it found, in essence, that the assessment of the likelihood of confusion could be limited, in the present case, to the Spanish-speaking part of the relevant public. In addition, in paragraphs 27 and 28 of the contested decision, the Board of Appeal concluded that the goods covered by the marks at issue were identical or similar. Those findings, which, moreover, are not disputed by the parties, are free from error.

34 It is in the light of those considerations that it is necessary to examine the arguments relied on by the applicant in support of the plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

35 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

36 In question in the present case are, on the one hand, VERITEA, the word mark applied for, and, on the other, VERI — AGUA PURA DEL PIRINEO, the earlier EU word mark. In this respect, it should be noted that, even though the opposition was also based on the earlier Spanish work mark VERI (see paragraph 6 above), the Opposition Division and, subsequently, the Board of Appeal did not assess the opposition based on that mark since they had already upheld the opposition on the basis of the earlier EU word mark VERI — AGUA PURA DEL PIRINEO.

37 In paragraph 33 of the contested decision, the Board of Appeal stated that none of the elements which respectively make up the marks at issue was visually dominant in relation to the others.

38 In paragraph 35 of the contested decision, the Board of Appeal took the view, first, that in the earlier mark, the expression ‘agua pura del pirineo’ was descriptive of the goods covered by that mark, namely non-alcoholic beverages, because it could be understood by the Spanish-speaking part of the relevant public as referring directly or indirectly to the nature, characteristics, qualities and origin of those goods, in other words ‘pure water from the Pyrenees’. Therefore, the Board of Appeal found that that expression had a weak or even no distinctive character. Moreover, in paragraph 36 of the contested decision, the Board of Appeal took the view that, in the earlier mark, the element ‘veri’ had no meaning for the Spanish-speaking part of the relevant public and, therefore, in essence, that it was the most distinctive element of that mark.

39 Furthermore, in paragraph 37 of the contested decision, the Board of Appeal found that the mark applied for, as a whole, had no meaning for the Spanish-speaking public and was therefore distinctive. However, it could not rule out that, taking into account the goods in Class 30 covered by that mark, namely tea-based beverages, the relevant public might artificially isolate the basic English word ‘tea’ from the term ‘veri’ in the mark applied for. The Board of Appeal found that, in that scenario, the element ‘veri’ was distinctive, whereas the element ‘tea’, which refers to the nature of the goods covered by the mark applied for, was, in essence, descriptive.

40 In addition, in paragraphs 39 and 40 of the contested decision, the Board of Appeal took the view that the marks at issue were, overall, visually similar to an average degree in that the first part of each of those marks, which is the part consumers generally pay greater attention to, consists of the same term ‘veri’. According to the Board of Appeal, that similarity is not affected by the word elements which differentiate the marks at issue, taking into account their limited distinctive character. For the above reasons, the Board of Appeal also found, in paragraph 41 of the contested decision, a phonetic similarity between the marks at issue. In this respect, it stated that it could not be ruled out that, in the earlier mark, the expression ‘agua pura del pirineo’ might not be pronounced since the relevant public could regard it as a slogan, separated from the mark VERI by a hyphen.

41 Finally, in paragraph 42 of the contested decision, the Board of Appeal concluded that the marks at issue were conceptually dissimilar. In that regard, first, it observed that the mark applied for, as a whole, had no meaning for the Spanish-speaking public, even though the latter might recognise the element ‘tea’ in particular when the mark applied for is affixed to tea-based products. Secondly, in the earlier mark, the element ‘veri’ was meaningless, unlike the expression ‘agua pura del pirineo’.

42 The applicant disputes the Board of Appeal’s assessments relating, on the one hand, to the distinctive elements of the marks at issue and, on the other, to the visual and phonetic similarity between those two marks.

44 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347 paragraph 47 and the case-law cited).

45 A term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 24 February 2016, Tayto Group v OHIM — MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 63 and the case-law cited).

46 Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 22 June 2010, CM Capital Markets v OHIM — Carbon Capital Markets (CARBON CAPITAL MARKETS Emissions Compliance Solutions & Carbon Finance), T‑490/08, EU:T:2010:250, paragraph 39 and the case-law cited).

47 In the first place, the applicant submits, in essence, that the contested decision is vitiated by a contradiction in that it found, on the one hand, that the expression ‘agua pura del pirineo’, contained in the earlier mark, had a weak distinctive character and, on the other, that that expression was understood by the relevant public. According to the applicant, the relevant public perceives that expression as ‘a “significant” and “distinctive” sign’.

48 In that regard, it suffices to note that it is on the basis of the premiss, which is, moreover, correct, that the Spanish-speaking part of the relevant public understands the expression ‘agua pura del pirineo’ that the Board of Appeal could correctly hold that that part of the relevant public perceives that expression as describing the nature, characteristics and qualities of the goods covered by the earlier mark, namely ‘non-alcoholic beverages’, in the sense that those beverages consist of ‘pure water from the Pyrenees’ (see paragraph 38 above).

49 Having regard to the descriptive character of the expression ‘agua pura del pirineo’, the Board of Appeal was fully entitled to find, in paragraph 35 of the contested decision, that that expression had a weak or even no distinctive character.

50 That finding cannot be called into question by the applicant’s claim, which lacks clarity and is not substantiated in any way, that the expression ‘agua pura del pirineo’ is perceived as ‘a “significant” and “distinctive” sign’.

51 In the second place, the applicant claims that the Board of Appeal was wrong in finding that the element ‘veri’, common to the marks at issue, had a strong distinctive character. While recognising the fanciful character of the term ‘veri’, the applicant claims that any ‘glorification, exceptionality or unique character of [that] expression’ must be ruled out. In this respect, it notes that the register of the Czech Industrial Property Office includes many national and international marks containing the word element ‘veri’. Similarly, it submits that many EU marks include the term ‘veri’. Finally, according to the applicant, because many Spanish words contain the prefix ‘veri’, such as ‘verídico’, the Spanish-speaking part of the relevant public understands the meaning of that term, which is therefore not fanciful.

52 First of all, contrary to the applicant’s allegations, the Board of Appeal did not take the view that the element ‘veri’, common to the marks at issue, was ‘exceptional’ or had a strong distinctive character. Thus, in the absence of an indication on the degree of distinctiveness of the word element ‘veri’ in the contested decision, and of any other element warranting a high degree of distinctiveness, it must be held that the Board of Appeal has implicitly but necessarily taken the view that that element, meaningless in connection with the goods covered by the marks at issue (see paragraphs 38 and 39 above), had an average distinctive character.

53 Next, the applicant’s assertion that many Czech, international or EU marks contain the prefix ‘veri’ does not prevent the latter from being original or fanciful in connection with the goods in question. That finding is not invalidated by the fact that the EU marks VERIS, VERIFRUIT and VERIVAL have been registered for the goods in Class 32, as claimed by the applicant, which does not establish that the term ‘veri’ lacks originality in connection with those goods.

54 Moreover, the applicant did not claim nor, a fortiori, establish that the EU marks VERIS, VERIFRUIT and VERIVAL are known to the Spanish-speaking part of the relevant public and that that part of the public is exposed to a widespread use of those marks consisting of the term ‘veri’ in relation to the goods in question in Classes 30 and 32.

55 Furthermore, it should be noted, as does EUIPO, that while it is true that several Spanish words include the prefix ‘veri’, in the present case it has not been established that the Spanish-speaking part of the relevant public attributes a certain meaning to that prefix or that it would easily make the link between that prefix and the words in which it is included, or that that part of the relevant public attributes a specific meaning to that prefix.

56 Therefore, it must be held that the Board of Appeal did not commit an error of assessment in finding that the term ‘veri’, which forms the initial part of the marks at issue, is the most distinctive element of the earlier mark, taking into account its fanciful character.

57 Finally, as regards the mark applied for, it must be held that the applicant does not dispute the Board of Appeal’s assessment that that mark, as a whole, has no meaning for the Spanish-speaking part of the relevant public and is therefore distinctive. Moreover, there is no evidence in the file capable of casting doubt on that assessment.

58 In light of the above, the Board of Appeal’s assessments concerning the distinctive elements of the marks at issue must be confirmed.

59 The examination of the similarity between the marks at issue must take account of the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see, to that effect, judgment of 10 December 2008, Giorgio Beverly Hills v OHIM — WHG (GIORGIO BEVERLY HILLS), T‑228/06, not published, EU:T:2008:558, paragraph 28 and the case-law cited).

60 The applicant claims that the Board of Appeal erred in finding that the marks at issue were visually and phonetically similar. According to the applicant, the Board of Appeal reached such an incorrect conclusion because it failed to carry out a global assessment of the marks at issue. However, according to the applicant, the overall impression given by those marks is different.

62 In this respect, it suffices to state that the Board of Appeal assessed the visual and phonetic similarity between the marks at issue by taking into account all their constituent elements, without confining its examination to the element ‘veri’, which is common to those marks. In paragraph 39 of the contested decision, the Board of Appeal thus found that visually, the marks at issue, first, coincided in the sequence of the letters ‘v’, ‘e’, ‘r’ and ‘i’ which make up the initial part of those marks and, secondly, differed in their additional word elements, which have, however, a limited distinctive character. That is why it took the view, in paragraph 40 of the contested decision, that the marks at issue had only an average degree of visual similarity.

63 Similarly, it is clear from paragraph 41 of the contested decision that the Board of Appeal did not overlook the phonetic differences between the marks at issue resulting from, on the one hand, the letters ‘t’, ‘e’ and ‘a’ which make up the final part of the mark applied for and, secondly the expression ‘agua pura del pirineo’ which makes up the final part of the earlier mark. In the light of the above, the Board of Appeal therefore found that the marks at issue had an average degree of phonetic similarity.

64 Furthermore, the applicant’s argument that the contested decision did not set out the reasons why the expression ‘agua pura del pirineo’ was disregarded by the Board of Appeal must be rejected. It is clear from paragraphs 39 and 41 of the contested decision that the Board of Appeal did indeed take into account the difference between the marks at issue resulting, inter alia, from that expression (see paragraphs 40, 62 and 63 above). In addition, it is purely for the sake of completeness that the Board of Appeal considered that that expression, which is separated from the element ‘veri’ by a hyphen, might not be pronounced by the Spanish-speaking part of the relevant public, inasmuch as it could be understood as a slogan (see paragraph 41 of the contested decision).

65 Contrary to the applicant’s claims, the Board of Appeal therefore did not overlook the effect of the expression ‘agua pura del pirineo’ for the purposes of the comparison of the marks at issue.

66 In view of the findings in paragraphs 62 to 65 above and the fact that consumers generally attach more importance to the beginning of a sign than to the end (see, to that effect, judgment of 25 March 2009, L’Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 30), as a result of an overall examination of the marks at issue, the Board of Appeal was right in finding that those marks are visually and phonetically similar to an average degree because, regardless of the presence of differentiating elements, they coincide in the sequence of the letters ‘v’, ‘e’, ‘r’ and ‘i’ which make up the initial part of those marks and constitute the most distinctive element of the earlier mark.

67 That conclusion cannot be invalidated by the arguments put forward by the applicant.

68 First, the applicant submits that the mark applied for consists of only one term whereas the earlier mark is, by contrast, made up of five terms. However, notwithstanding the visual and phonetic differences between the marks at issue, duly noted by the Board of Appeal, the latter did not commit an error of assessment in finding that, overall, those marks are visually and phonetically similar to an average degree (see paragraphs 40 and 41 of the contested decision).

69 Secondly, the applicant claims, in essence, that the expression ‘agua pura del pirineo’ should have been taken into consideration because it is of considerable significance from a visual, phonetic and conceptual point of view. However, it follows from paragraphs 64 and 65 above that that expression, the descriptive character of which is not disputed by the applicant nor is the fact that it could be understood as a slogan by a part of the relevant public, has in fact been taken into consideration by the Board of Appeal. The Board of Appeal, however, took the view that, in the light of its weak distinctive character and the fact that consumers generally attach more importance to the initial part of a mark, which, in the present case, corresponds to the most distinctive part of the earlier mark, the expression ‘agua pura del pirineo’ did not affect the similarity between the marks at issue resulting from the presence of the term ‘veri’ in the initial part of each of the marks at issue. Thirdly, the applicant disputes the importance which has been attached to the element ‘veri’, common to the marks at issue, submitting that the principle that the average consumer attaches more importance to the beginning of a sign is a presumption which is not always applicable, as allegedly shown by the judgments of 16 May 2007, Trek Bicycle v OHIM — Audi (ALLTREK) (T‑158/05, not published, EU:T:2007:143), and of 3 May 2018, Gall Pharma v EUIPO — Pfizer (Styriagra) (T‑662/16, not published, EU:T:2018:242).

70 While it is true that, in the abovementioned judgments, the Court has stated, in essence, that although the consumer usually attaches more importance to the initial part of words, that finding cannot apply in all cases, the fact remains that the applicant did not put forward any argument to show that, in the present case, the relevant public would not attach particular importance to the initial part of each of the marks at issue.

72 Finally, it must be noted that the applicant does not dispute the Board of Appeal’s assessment according to which the marks at issue are conceptually different both in the main scenario, where the Spanish-speaking part of the relevant public considers that the mark applied for consists of only one fanciful word, and in the alternative, where that same public recognises the term ‘tea’ at the end of the mark applied for (see paragraph 42 of the contested decision).

73 In the light of the foregoing, the Board of Appeal did not commit an error of assessment in taking the view that, overall, the marks at issue are visually and phonetically similar to an average degree, and conceptually different.

74 In paragraph 47 of the contested decision, the Board of Appeal found that, in view of the visual and phonetic similarity and of the identity and similarity of the goods in question, the differences between those marks were insufficient, in essence, to rule out the existence of a likelihood of confusion on the part of the relevant Spanish-speaking public.

75 In paragraph 48 of the contested decision, the Board of Appeal added that, because the goods in question were in identical or similar categories, the marks at issue might be perceived as sub-brands, and that a substantial part of the relevant public might regard the goods designated by those marks as coming from the same undertaking or from economically linked undertakings. Moreover, for the Board of Appeal, the similarity between the marks at issue was such as to create a connection between them, considering the fact that the goods might be manufactured by the same commercial entities.

76 The applicant considers that any likelihood of confusion or association between the marks at issue must be ruled out in the present case given their lack of similarity.

78 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

79 In the first place, it should be noted that the goods in question are identical or similar (see paragraph 33 above).

80 In the second place, the marks at issue are visually and phonetically similar to an average degree, and conceptually different (see paragraph 73 above).

81 In that regard, it should be noted that the conceptual dissimilarity cannot counteract the visual and phonetic similarity between the marks at issue. Since the goods in question are everyday consumer goods which can be purchased on a self-service basis from shop shelves, or ordered orally, inter alia, in restaurants or bars, the visual or phonetic similarity between the marks at issue suffices to regard them as being overall similar (see, to that effect, judgments of 20 June 2012, Kraft Foods Schweiz v OHIM — Compañía Nacional de Chocolates (CORONA), T‑357/10, not published, EU:T:2012:312, paragraph 41; of 3 July 2013, Warsteiner Brauerei Haus Cramer v OHIM — Stuffer (ALOHA 100% NATURAL), T‑243/12, not published, EU:T:2013:344, paragraph 42 and the case-law cited; and of 9 February 2017, zero v EUIPO — Hemming (ZIRO), T‑106/16, not published, EU:T:2017:67, paragraph 54).

82 In the third place, the term ‘veri’, which is the most distinctive element of the earlier mark, appears in the initial part of the marks at issue, which is the part, in the present case, which will attract the attention of the Spanish-speaking part of the relevant public more.

83 In that regard, EUIPO’s argument that the term ‘veri’ dominates in the marks at issue, which has no basis in the contested decision and is not substantiated in any way, must, however, be rejected.

84 Having regard to the foregoing and the fact that, according to the case-law, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26), it must be concluded that the Board of Appeal did not commit an error of assessment in finding that there is a likelihood of confusion in the present case.

86 First, the applicant submits, in essence, that the Board of Appeal’s finding that a significant part of the relevant public would consider that the goods in question come from the same undertaking or from economically linked undertakings is not based on any real ground or foundation.

87 In this connection, it should be observed that the contested decision clearly sets out the reasons why it was considered that the conditions inherent to the existence of a likelihood of confusion were satisfied in the present case (see paragraphs 26, 74 and 75 above). That likelihood is apparent precisely from the fact that the relevant public will consider that the goods in question come from the same undertaking or from economically linked undertakings.

88 Secondly, the applicant claims that the contested decision is contrary to ‘the logic of consideration and material balance’ and to the applicant’s legitimate expectations.

89 First, the abovementioned claims are not substantiated in any way, not even briefly, and lack precision.

90 Secondly, the claim alleging breach of legitimate expectations cannot be accepted.

91 In this connection, it must be observed that the right to rely on the principle of the protection of legitimate expectations extends to any person who is in a situation where it is apparent that the EU authorities, inter alia, by giving him precise assurances, have caused him to entertain expectations which are justified (judgments of 22 June 2006, Belgium and Forum 187 v Commission, C‑182/03 and C‑217/03, EU:C:2006:416, paragraph 147, and of 25 October 2007, Komninou and Others v Commission, C‑167/06 P, not published, EU:C:2007:633, paragraph 63).

92 Three conditions must be satisfied in order to claim entitlement to the protection of legitimate expectations. First, precise, unconditional and consistent assurances originating from authorised and reliable sources must have been given to the person concerned by the EU authorities. Secondly, those assurances must be such as to give rise to a legitimate expectation on the part of the person to whom they are addressed. Thirdly, the assurances given must comply with the applicable rules (see judgment of 30 June 2005, Branco v Commission, T‑347/03, EU:T:2005:265, paragraph 102 and the case-law cited).

93 In the present case, it must be stated that the applicant has not established that EUIPO has given it precise assurances as regards the steps to be taken in respect of the request for registration of the mark applied for.

94 Thirdly, the applicant submits that the contested decision is contrary to EUIPO’s previous practice, which allegedly registered marks which were similar to the mark applied for and designated the same goods, such as VERIS, VERIFRUIT and VERIVAL.

95 It is clear from the case-law that the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of those Boards of Appeal (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65; see, also, judgment of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 68 and the case-law cited).

96 Moreover, although EUIPO must take into account decisions already taken and consider with especial care whether it should decide in the same way or not, compliance with the principle of legality requires that the examination of any trade mark application be stringent and full and be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and of 16 January 2019, Poland v Stock Polska sp. z o.o. and EUIPO, C‑162/17 P, not published, EU:C:2019:27, paragraph 60).

97 Although factual or legal grounds contained in an earlier decision may, admittedly, constitute arguments to support a plea alleging infringement of a provision of Regulation 2017/1001, it must be held that, in the present case, the applicant did not claim nor, a fortiori, establish that the circumstances which justified the registration of EU marks containing the element ‘veri’, such as VERIS, VERIFRUIT and VERIVAL were satisfied in the present case. In particular, the applicant did not establish that the connection between, on the one hand, the marks on which the opposition proceedings brought against the registration of the EU trade marks VERIS, VERIFRUIT and VERIVAL were based and, on the other, those latter marks is comparable to the connection, in the present case, between the earlier mark and the mark applied for (see, to that effect and by analogy, judgment of 16 March 2005, FLEXI AIR, T‑112/03, EU:T:2005:102, paragraph 68).

98 Moreover, the applicant has not shown which grounds that led to the registration of the EU trade marks VERIS, VERIFRUIT and VERIVAL were capable of invalidating the Board of Appeal’s finding concerning the existence of a likelihood of confusion in the present case.

100 In the light of the above, the present action must be dismissed in its entirety, without it being necessary to rule on the plea of inadmissibility raised in defence by EUIPO against the claim that the Court should reject the intervener’s opposition.

101 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.

102 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Karlovarske mineralni vody v EUIPO - Aguas de San Martin de Veri (VERITEA) (EU trade mark - Judgment) [2019] EUECJ T-28/19 (19 December 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T2819.html Cite as: ECLI:EU:T:2019:870, EU:T:2019:870, [2019] EUECJ T-28/19

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