JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

25 September 2014 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark SOTTO IL SOLE ITALIANO SOTTO il SOLE – Earlier Community word mark VIÑA SOL – Relative ground for refusal – Article 75 of Regulation (EC) No 207/2009 – Duty to state reasons)

In Case T‑605/13,

Alma-The Soul of Italian Wine LLLP, established in Bal Harbour, Florida (United States), represented by F. Terrano, lawyer,

applicant,

v

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

defendant,

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

Miguel Torres, SA, established in Vilafranca del Penedès (Spain), represented by J. Güell Serra, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 10 September 2013 (Case R 18/2013-2), concerning opposition proceedings between Miguel Torres, SA, and Alma-The Soul of Italian Wine LLLP,

THE GENERAL COURT (Seventh Chamber),

composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and V. Tomljenović, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 21 November 2013,

having regard to the response of OHIM lodged at the Court Registry on 11 March 2014,

having regard to the response of the intervener lodged at the Court Registry on 31 March 2014,

having regard to the decision of 16 May 2014 refusing to allow a reply to be lodged,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 4 March 2011, the applicant – Alma-The Soul of Italian Wine LLLP – filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The mark in respect of which registration was sought is the following figurative sign:

3        The goods in respect of which registration was sought are in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Wines’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 64/2011 of 1 April 2011.

5        On 30 June 2011, pursuant to Article 41 of Regulation No 207/2009, the intervener – Miguel Torres, SA – filed a notice of opposition to registration of the mark applied for, in respect of the goods referred to in paragraph 3 above.

6        To the extent that it was brought on the grounds referred to in Article 8(1)(b) and (5) of Regulation No 207/2009, the opposition was based on the following earlier trade marks:

–        the Community word mark VIÑA SOL, filed on 12 February 1997, registered on 29 October 1998 under No 462 523 and renewed on 5 March 2007, in respect of ‘alcoholic beverages (except beers)’ in Class 33;

–        the Spanish word mark VIÑA SOL, filed on 9 May 1944, registered on 13 January 1947 under No 152 231 and renewed on 11 September 2007, in respect of ‘all types of wines, except extra dry white table wines with characteristics similar to those of the Rhine’ in Class 33;

–        the Spanish word mark VIÑA SOL filed on 25 May 1973, registered on 21 March 1977 under No 715 524 and renewed on 25 March 2003, in respect of ‘brandy’ in Class 33.

7        To the extent that it was brought solely on the ground referred to in Article 8(1)(b) of Regulation No 207/2009, the opposition was based on the following earlier trade marks:

–        the Spanish figurative mark reproduced below, filed on 26 October 2007 and registered on 6 May 2008 under No 2 796 505 in respect of ‘alcoholic beverages (except beers)’ in Class 33:

–        the Community word mark SOL, filed on 17 October 2007 and registered on 2 May 2010 under No 6 373 971 in respect of ‘alcoholic beverages (except beers)’ in Class 33.

8        By decision of 30 October 2012, the Opposition Division, taking the earlier Community word mark SOL as its point of reference, upheld the opposition on the ground that there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009.

9        On 21 December 2012, the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.

10      By decision of 10 September 2013 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the Opposition Division’s decision and refused the trade mark application in its entirety. The Board of Appeal stated that, for reasons of procedural economy, it would examine the ground for opposition referred to in Article 8(5) of Regulation No 207/2009, taking the earlier Community word mark VIÑA SOL as its point of reference. It found that the relevant public consisted of average consumers in the European Union who were reasonably well informed and reasonably observant and circumspect. In its view, the marks at issue were similar to a medium degree for Spanish-, French- and Portuguese-speaking consumers, given that the dominant element of the earlier trade mark (‘sol’) and the dominant element of the mark applied for (‘sole’) were highly similar, whereas those marks were similar to only a low degree for Italian consumers. According to the Board of Appeal, the earlier trade mark had a reputation in the European Union with regard to wines. Taking into account the similarity of the signs at issue, the distinctive character and reputation of the earlier trade mark, and the fact that the goods covered by the marks at issue were identical, the Board of Appeal found that there was a link between the signs at issue for a substantial proportion of the relevant consumers (Spanish-, Italian-, French- and Portuguese-speaking consumers). It held that there was a risk of dilution, that is to say, a risk that the use without due cause of the mark applied for would be detrimental to the distinctive character of the earlier trade mark for the purposes of Article 8(5) of Regulation No 207/2009. The Board of Appeal concluded that the fact that the conditions laid down in Article 8(5) of Regulation No 207/2009 had been fulfilled with regard to Spanish-, Italian-, French- and Portuguese-speaking consumers was a sufficient ground for upholding the opposition.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

12      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of its action, the applicant raises four pleas in law, alleging respectively: (i) infringement of Article 64 of Regulation No 207/2009; (ii) infringement of Article 8(5) of Regulation No 207/2009; (iii) infringement of Article 8(1)(b) of Regulation No 207/2009; and (iv) infringement of Article 75 and Article 76(1) of Regulation No 207/2009.

14      It is necessary to begin by examining the fourth plea in law, which alleges infringement of Article 75 and Article 76(1) of Regulation No 207/2009.

15      By its fourth plea in law, the applicant submits that the Board of Appeal acted in breach of its duty to provide a statement of reasons in so far as it did not take into account evidence that the applicant had provided to OHIM. That evidence consisted, on the one hand, of pages, taken from various websites, concerning bottles of wine featuring trade marks containing the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’ and/or images of the Sun and, on the other, of examples of Community trade marks, registered for goods in Class 33, containing the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’, and/or images of the Sun.

16      The applicant submits that the Board of Appeal – without offering any justification for doing so – ignored that evidence, which was intended both to establish that consumers in the European Union are accustomed to trade marks for wine containing the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’ and/or images of the Sun and to show that the word ‘sol’ and translations thereof have a very weak distinctive character in the wine sector.

17      OHIM contends that the Board of Appeal implicitly took that evidence into account when it stated in the contested decision that, ‘[c]ontrary to [the applicant’s assertions], the word “sol” has no direct relationship with the goods in question since it is not descriptive’. According to OHIM, that succinct reasoning by the Board of Appeal implied that an examination of the evidence submitted by the applicant had not convinced it of the supposedly very weak distinctive character of the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’ or of images of the Sun.

18      The first sentence of Article 75 of Regulation No 207/2009 provides that decisions of OHIM are to state the reasons on which they are based. It is settled case-law that this obligation to state reasons has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU and that the statement of reasons required under the latter provision must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question. The duty to state the reasons on which decisions of OHIM are based has a twofold objective: to enable the persons concerned to ascertain the reasons for the measure so that they can defend their rights, and to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision (judgment of 21 October 2004 in KWS Saat v OHIM, C‑447/02 P, ECR, EU:C:2004:649, paragraphs 64 and 65, and judgment of 28 November 2013 in Herbacin cosmetic v OHIM – Laboratoire Garnier (HERBA SHINE), T‑34/12, EU:T:2013:618, paragraph 42).

19      It is true that – as OHIM contends – it can also be seen from case-law that the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its jurisdiction to review legality (judgment of 9 July 2008 in Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 55, and HERBA SHINE, paragraph 18 above, EU:T:2013:618, paragraph 42).

20      However, that is not the situation in the present case: neither the Opposition Division nor the Board of Appeal mentions the evidence provided by the applicant and, accordingly, the Board of Appeal’s assessment in the contested decision of the similarities between the signs at issue contains no reference to that evidence.

21      It cannot be held that the contested decision shows, even implicitly, that the Board of Appeal analysed that evidence in order to respond to the applicant’s arguments concerning the weak distinctive character of the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’, or of images of the Sun, in the wine sector.

22      In that regard, contrary to OHIM’s assertions, the Board of Appeal’s finding that the word ‘sol’ had no descriptive character does not permit the assumption that the Board of Appeal took into account the evidence intended to show that the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’, or images of the Sun, lacked distinctive character owing to their frequent use in the wine sector.

23      The contested decision contains no details on the basis of which it would be possible to determine whether the Board of Appeal took the evidence provided by the applicant into account or to understand the reasons why it may have considered such evidence to be irrelevant. Consequently, the Board of Appeal acted in breach of its duty to provide a statement of reasons.

24      As a result of that failure to provide a statement of reasons, and given that the evidence in question was intended to establish the weak distinctive character of the words ‘sol’ and ‘sole’ contained in the marks at issue, it is not possible to determine whether the Board of Appeal took that evidence into account in its assessment to the effect that those words constituted the dominant elements of those marks and, by extension, in its conclusion that those marks were similar.

25      Therefore, the result of the finding in paragraph 23 above that there was a breach of the duty to state reasons is that the General Court must uphold the applicant’s action for annulment.

26      It follows from the foregoing that the fourth plea in law must be upheld and, accordingly, that the contested decision must be annulled, without there being any need to examine the other pleas in law raised by the applicant.

 Costs

27      Under Article 87(2) 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. Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

28      Since the intervener has been unsuccessful, it must be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 10 September 2013 (Case R 18/2013‑2).

2.      Orders OHIM to bear its own costs and to pay the costs incurred by Alma-The Soul of Italian Wine LLLP.

3.      Orders Miguel Torres, SA, to bear its own costs.

Van der Woude

Wiszniewska-Białecka

Tomljenović

Delivered in open court in Luxembourg on 25 September 2014.

[Signatures]