JUDGMENT OF THE GENERAL COURT (Second Chamber)

2 February 2016 (*)

(Community trade mark — Opposition proceedings — Application for the Community figurative mark ILLIRIA — Earlier Community word mark CASTILLO DE LIRIA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑541/14,

Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl, established in Salice Salentino (Italy), represented by D. Russo and V. Wellens, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar and H. Kunz, acting as Agents,

defendant,

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

Vicente Gandía Pla, SA, established in Chiva (Spain), represented by I. Temiño Ceniceros, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 21 May 2014 (Case R 917/2013-4) concerning opposition proceedings between Vicente Gandía Pla, SA and Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl,

THE GENERAL COURT (Second Chamber),

composed of M.E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 18 July 2014,

having regard to the response of OHIM lodged at the Court Registry on 17 November 2014,

having regard to the response of the intervener lodged at the Court Registry on 4 December 2014,

having regard to the decision of 12 January 2015 refusing to allow a reply to be lodged,

further to the hearing on 21 October 2015,

gives the following

Judgment

 Background to the dispute

1        On 27 January 2012, the applicant, Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl, 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 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 applied for 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: ‘wine’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 2012/36 of 21 February 2012.

5        On 11 May 2012 the intervener, Vicente Gandía Pla, SA, 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.

6        The opposition was based on, inter alia, the earlier Community word mark CASTILLO DE LIRIA, filed on 14 May 2009 and registered on 1 December 2009 under number 8299653 for goods in Classes 32, 33 and 39 and corresponding, for Class 33, to the following description: ‘Alcoholic beverages, in particular wine and sparkling wine’.

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

8        By decision of 21 March 2013, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the signs at issue.

9        On 21 May 2013, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 60 of Regulation No 207/2009, against the Opposition Division’s decision.

10      By decision of 21 May 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM annulled the decision of the Opposition Division. First, the Board of Appeal noted in paragraph 10 of the contested decision that wines are usually subject to widespread distribution, ranging from the food section of a department store to restaurants and cafes, and that the relevant public is the average consumer of everyday consumer goods who is deemed to be reasonably well informed and reasonably observant and circumspect. The Board of Appeal then held: first, in paragraph 17 of the contested decision, that the signs at issue bore a low degree of visual similarity; secondly, in paragraph 20 of that decision, that there was at least a medium degree of phonetic similarity between those signs; thirdly, in paragraph 25 of that decision, that, in so far as a substantial portion of consumers in the European Union would not associate the elements ‘illiria’ and ‘liria’ with a particular concept, the conceptual comparison remained neutral for the relevant public. Lastly, with regard to the overall assessment of the likelihood of confusion, the Board of Appeal held, in paragraph 29 of the contested decision, that, given that it was necessary to attach particular weight to the phonetic aspect, and considering that the elements other than ‘illiria’ and ‘liria’ had a lower distinctive character and that a substantial portion of the public would consider those terms to be meaningless words, there was a likelihood of confusion between the signs at issue in view of the identical goods.

 Forms of order sought

11      The applicant claims that the Court should:

–        set aside the contested decision;

–        order OHIM and the intervener to pay the costs incurred before both the Court and the Board of Appeal, together with any other relief which the Court may consider appropriate.

12      OHIM contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

13      The intervener contends that the Court should:

–        uphold the contested decision;

–        order the applicant to pay the costs incurred both in connection with the present action and in the proceedings before OHIM.

14      In its application the applicant raises a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.

15      The applicant claims, in particular, that the Board of Appeal made an incorrect analysis of the similarity between the signs at issue by placing wholly unjustified and undue weight on the last part of the earlier mark, namely ‘liria’, which is included in the last part of the mark applied for, ‘illiria’. Accordingly, it submits, the Board of Appeal took no account of the figurative elements of the mark applied for or of the first and longer part of the earlier mark. Finally, concerning the conceptual similarity of the signs at issue, the applicant maintains that consumers will not establish a link between those signs.

16      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with or similarity to the earlier mark and the identity or similarity of the goods or services covered by the two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. Article 8(2)(a)(i) of that regulation further provides that the term ‘earlier trade marks’ means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

17      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion (judgments of 10 September 2008 in Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, EU:T:2008:338, paragraph 70, and of 31 January 2012 in Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 23; see also, by analogy, judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 29, and of 8 May 2014 in Bimbo v OHIM, C‑591/12 P, ECR, EU:C:2014:305, paragraph 19).

18      Moreover, the likelihood of confusion on the part of the public must be assessed globally, account being taken of all factors relevant to the circumstances of the case (judgment in CAPIO, paragraph 17 above, EU:T:2008:338, paragraph 71; see also, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 22, and Bimbo v OHIM, paragraph 17 above, EU:C:2014:305, paragraph 20).

19      That global assessment implies some interdependence of the factors taken into account, in particular of the similarity of the marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25; see also, by analogy, judgment in Canon, paragraph 17 above, EU:C:1998:442, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 in the preamble to Regulation No 207/2009, which states that the concept of similarity should be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see judgment of 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 26 and the case-law cited).

20      Furthermore, the global assessment in relation to the visual, phonetic or conceptual similarity of the marks at issue must be based on the overall impression given by them, account being taken, in particular, of their distinctive and dominant components. It is apparent from the wording of Article 8(1)(b) of Regulation No 207/2009 — ‘there exists a likelihood of confusion on the part of the public’ — that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment in BÜRGER, paragraph 19 above, EU:T:2012:432, paragraph 27; see also, by analogy, judgment in SABEL, paragraph 18 above, EU:C:1997:528, paragraph 23, and Bimbo v OHIM, paragraph 17 above, EU:C:2014:305, paragraph 21).

21      For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in his imperfect recollection of them. 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 in BÜRGER, paragraph 19 above, EU:T:2012:432, paragraph 28 and the case-law cited; see also, by analogy, judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26).

22      It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.

23      In the first place, it is appropriate to confirm the conclusion of the Board of Appeal, which has not, moreover, been disputed by the applicant and which is apparent from paragraphs 9 and 10 of the contested decision, that, first, the territory to be taken into consideration is the European Union, given that the earlier mark is a Community mark, and, secondly, the relevant public in relation to which the likelihood of confusion must be assessed is, on the basis of the goods at issue, the average consumer of everyday consumer goods, who is deemed to be reasonably well informed and reasonably observant and circumspect (see also, to that effect, judgment of 29 February 2012 in Azienda Agricola Colsaliz di Faganello Antonio v OHIM — Weinkellerei Lenz Moser (SERVO SUO), T‑525/10, EU:T:2012:96, paragraph 21 and the case-law cited).

24      In the second place, it is established, as is evident from paragraph 12 of the contested decision, that the goods at issue are identical, a fact which has also not been contested by the applicant.

25      In the third place, as regards the similarity of the signs at issue, it must be recalled at the outset that, according to settled case-law, in relation to the goods at issue, namely wines, the element ‘castillo de’ included in the earlier mark is a generic element, and therefore with a weak distinctive character (see, to that effect, judgments of 16 September 2009 in Dominio de la Vega v OHIM — Ambrosio Velasco (DOMINIO DE LA VEGA), T‑458/07, EU:T:2009:337, paragraphs 40 and 50, and of 13 April 2011 in Bodegas y Viñedos Puerta de Labastida v OHIM — Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, EU:T:2011:173, paragraph 62). In addition, the figurative element of the mark applied for consists of simple circular lines. It follows that the distinctive and dominant elements of the signs at issue are, first, ‘liria’, as regards the earlier mark, and, secondly, ‘illiria’, in respect of the mark applied for, without, however, the figurative elements of the mark applied for and the word element ‘castillo de’, included in the earlier mark, being insignificant to the point of not having to be taken into consideration.

26      First, as regards the visual similarity of the signs at issue, the Board of Appeal took the view, at paragraph 17 of the contested decision, that they had a low degree of visual similarity on the ground that the elements ‘illiria’ and ‘liria’ contained a similar number of letters and the final part of the word ‘illiria’ was reproduced entirely in the last element of the earlier mark. The Board of Appeal added, at paragraph 18 of that decision, that the graphic components of the mark applied for did not have sufficiently imaginative or relevant characteristics to be likely to deflect the consumer’s attention from its most distinctive element, namely the term ‘illiria’.

27      Those findings must be approved and the arguments of the applicant challenging them must be rejected.

28      Thus, contrary to what is claimed by the applicant, the Board of Appeal did not fail to mention the visual and verbal elements other than the elements ‘illiria’ and ‘liria’, since the Board of Appeal mentioned, at paragraph 16 of the contested decision, the earlier mark in its entirety, thus including the element ‘castillo de’, and, at paragraphs 16 and 18 of that decision, noted the presence of a figurative element in the mark applied for. Therefore, the Board of Appeal carried out the examination of the similarity of the signs at issue by taking into account all the elements comprising the mark applied for and the earlier mark.

29      In accordance with the case-law mentioned at paragraph 25 above, the Board of Appeal was entitled, without erring, to hold that elements such as the figurative element present in the mark applied for, used in marks in the wine and spirits production sector, were often perceived as devoid of any distinctive character, with the result that those elements would, visually, attract less attention from consumers than the two word elements ‘illiria’ and ‘liria’. In addition, the consideration of the word element ‘castillo de’ and of the figurative elements of the mark applied for, as follows from paragraph 17 of the contested decision, provided the basis for the Board of Appeal’s conclusion that the signs at issue had a low degree of similarity.

30      It should be added that if, as the applicant claims, the Board of Appeal had not taken account of the word element ‘castillo de’ in the earlier mark and of the figurative element in the mark applied for, it would certainly not have found a low degree of visual similarity but, on the contrary, an average or even high degree of similarity.

31      It follows that the Board of Appeal took into consideration all of the elements comprising the signs at issue and was entitled to conclude, precisely because of the strong similarities existing between the element ‘liria’ in the earlier mark and the word element ‘illiria’ of the mark applied for, the first being wholly contained in the second and the letters of that word being in the same order as those in the second word, that there was a low degree of visual similarity between those signs.

32      Secondly, in respect of the phonetic similarity of the signs at issue, the Board of Appeal observed, at paragraph 19 of the contested decision, that the signs at issue would be broken down respectively into ‘i’, ‘lli’, ‘ri’ and ‘a’, and into ‘cas’, ‘ti’, ‘llo’ ‘de’, ‘li’, ‘ri’ and ‘a’. It added that, while those signs clearly differed in the number of syllables, it was undeniable that the elements ‘illiria’ and ‘liria’ exhibited a notable degree of phonetic similarity in most EU languages and, in particular, the very similar arrangement of their vowels, ‘i’, ‘i’, ‘i’ and ‘a’, on the one hand, and ‘i’, ‘i’ and ‘a’, on the other hand. The Board of Appeal added, at paragraph 20 of the contested decision, that wine was often purchased in bars or restaurants in which the level of noise could affect aural perception, with the result that it found that a medium degree of phonetic similarity existed between the signs at issue.

33      Those findings must also be upheld in their entirety and the applicant’s argument to the contrary, to the effect that the Board of Appeal failed to take into consideration the principle that consumers generally tend to focus on the first element of the sign, must, consequently, be rejected.

34      In that regard, it should be noted that the mark applied for contains four syllables and the earlier mark seven. The two signs are therefore pronounced differently. However, on the basis that the three last syllables of the earlier mark and the last three syllables of the mark applied for are identical and pronounced in the same way, there is some phonetic similarity between the two signs taken as a whole (see, to that effect, judgment of 27 September 2007 in La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, EU:T:2007:299, paragraph 123).

35      In addition, it should be borne in mind that, while it is true, as the applicant states, that consumers normally attach more importance to the beginning of words, it appears in the present case that the dissimilarity of the two signs at issue in relation to the first two words of the earlier mark and the first syllable of the mark applied for is not sufficient to neutralise, in particular from a phonetic point of view, the similarity found to exist between the most relevant part of the earlier mark, ‘liria’, and the single word element of the mark applied for, ‘illiria’ (see, to that effect, judgments of 4 May 2005 in Reemark v OHIM — Bluenet (Westlife), T‑22/04, ECR, EU:T:2005:160, paragraph 36, of 26 January 2006 in Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, EU:T:2006:27, paragraph 50, and in LA MER, paragraph 34 above, EU:T:2007:299, paragraph 125).

36      Thirdly, with regard to the conceptual similarity of the signs at issue, the Board of Appeal considered, in essence, at paragraph 25 of the contested decision, that the concept conveyed by the expression ‘castillo de’ did not play a significant role in showing that a product comes from a particular undertaking and in distinguishing it from the products of its competitors, with the result that, in so far as a substantial number of EU consumers would not associate the elements ‘illiria’ and ‘liria’ with a particular concept, the conceptual comparison remains neutral for the relevant public.

37      Those findings must also be upheld.

38      The applicant claims, however, that, while the expression ‘castillo de’ is commonly used by Spanish wine producers, the Board of Appeal failed to mention that it is precisely because it is widely used in the wine industry and because it is followed by a Spanish geographical name that the earlier mark has a low distinctive character for the Spanish public. The applicant adds that, with regard to consumers who will not understand either ‘liria’ or ‘illiria’, which will, therefore, be regarded as fanciful words, the signs at issue will be conceptually different. In both cases, therefore, it submits, consumers have no reason to establish a connection between the two marks and to confuse them.

39      In that regard, suffice it to state that, in any event, as the earlier mark is a Community trade mark, the likelihood of confusion must be assessed with regard to the public of the European Union as a whole and that, as the Board of Appeal correctly found in paragraph 22 of the contested decision, the expression ‘castillo de’, in so far as it is widely used by Spanish wine producers and corresponds to the equivalent words ‘château’, ‘castello’, ‘Schloss’ or ‘castle’ in other EU languages and in the designation of wines, will be considered to be descriptive by a substantial part of the relevant public, ensuring that the attention of that public will focus on the word ‘liria’, which for that public is fanciful.

40      Consequently, as the words ‘illiria’ and ‘liria’ are fanciful for the substantial part of the public which is not able to ascribe a meaning to them, it must be held, as the Board of Appeal correctly found at paragraph 25 of the contested decision, that a substantial part of the relevant public will not associate the elements ‘illiria’ and ‘liria’ with a particular concept and that the conceptual comparison will therefore remain neutral.

41      Furthermore, it must be stated that the applicant misreads the contested decision in so far as the fact that consumers understand neither the term ‘liria’ nor the term ‘illiria’, which will, therefore, be considered to be fanciful terms, will in no way have the consequence, as it claims, that the signs at issue will be conceptually different, but, as is apparent from paragraph 40 above, that the conceptual comparison will be neutral since those terms do not refer to any particular concept.

42      It follows from all of the foregoing that the Board of Appeal did not err in the examination of the similarity of the signs at issue.

43      Fourthly, and last, with regard to the examination of the likelihood of confusion, the Board of Appeal took the view at paragraphs 27 to 29 of the contested decision, in essence, first, that in respect of wines a particular importance had to be attached to the phonetic aspect, second, that the expression ‘castillo de’ was of low distinctive character for wines while the term ‘liria’ had no meaning for part of the relevant public and, lastly, that, taking into account, first, the degree of similarity between the terms ‘illiria’ and ‘liria’, in particular from a phonetic point of view, secondly, the fact that the other elements of the signs at issue had a less distinctive character and, thirdly, the fact that the terms ‘illiria’ and ‘liria’ would be perceived by a substantial part of the relevant public as devoid of any particular meaning, there was a likelihood of confusion between the signs at issue.

44      Those findings must also be upheld.

45      The applicant claims that the Board of Appeal failed to take into account, in the examination of the likelihood of confusion, the earlier mark in its entirety since, at paragraph 29 of the contested decision, it merely mentioned the elements ‘illiria’ and ‘liria’ without referring to the element ‘castillo de’.

46      It must be held that the applicant’s reading of the contested decision is incomplete and, therefore, incorrect in so far as, at paragraph 28 of the contested decision, the Board of Appeal stressed that the element ‘castillo de’ in the earlier mark had a weak distinctive character.

47      It necessarily follows from that finding that the distinctive and dominant element of the earlier mark is the element ‘liria’ and that the distinctive and dominant element of the mark applied for is the word element ‘illiria’.

48      Accordingly, having regard to the fact that, first, the goods are identical, secondly, it is settled case-law that for wines a particular importance must be attached to the phonetic aspect (see judgment in SERVO SUO, paragraph 23 above, EU:T:2012:96, paragraph 67 and the case-law cited), thirdly, that the element ‘castillo de’ featuring in the earlier mark is a generic element and the figurative element of the mark applied for is not very distinctive and, fourthly, that a similarity exists between the signs ‘liria’ and ‘illiria’, the Board of Appeal did not err in concluding that a likelihood of confusion existed between the signs at issue.

49      It follows from the foregoing that the single plea must be rejected and the action dismissed in its entirety.

 Costs

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

51      Furthermore, the intervener claims that the applicant should be ordered to pay the costs incurred by the intervener for the purposes of the opposition proceedings and the appeal before the Board of Appeal. In that regard, it must be borne in mind that, pursuant to Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case in respect of the costs incurred for the purposes of proceedings before the Opposition Division. Consequently, the intervener’s request that the applicant be ordered to pay the costs of the administrative proceedings before the Opposition Division must be declared inadmissible (see, to that effect, 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 77 and 78; of 10 December 2008 in MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 60, and of 25 June 2010 in MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, ECR, EU:T:2010:256, paragraph 51).

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl to pay the costs.

Martins Ribeiro

Gervasoni

Madise

Delivered in open court in Luxembourg on 2 February 2016.

[Signatures]