JUDGMENT OF THE GENERAL COURT (First Chamber)

14 May 2013 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark CA’ MARINA – Earlier Community word mark MARINA ALTA – Relative ground for refusal – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑393/11,

Masottina SpA, established in Cornegliano (Italy), represented by N. Schaeffer, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Bodegas Cooperativas de Alicante, Coop. V., established in Petrel (Spain),

ACTION seeking the annulment of the decision of the First Board of Appeal of OHIM of 4 May 2011 (Case R 518/2010-1), relating to opposition proceedings between Bodegas Cooperativas de Alicante, Coop. V. and Masottina SpA,

THE GENERAL COURT (First Chamber),

composed of J. Azizi (Rapporteur), President, M. Kancheva and E. Buttigieg, Judges,

Registrar: T. Weiler, Administrator,

having regard to the application lodged at the Registry of the General Court on 26 July 2011,

having regard to the response lodged at the Court Registry on 24 October 2011,

further to the hearing on 20 February 2013,

gives the following

Judgment

 Background to the dispute

1        On 10 October 2007, the applicant, Masottina SpA, 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 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        The mark in respect of which registration was sought is the word sign CA’ MARINA. 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: ‘Alcoholic beverages, in particular wine, sparkling wine, spirits, liqueurs’.

3        The Community trade mark application was published in Community Trade Marks Bulletin No 10/2008 of 3 March 2008.

4        On 3 June 2008, Bodegas Cooperativas de Alicante, Coop. V. filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for in respect of all of the goods referred to in paragraph 2 above. That opposition was based, in particular, on the earlier Community word mark MARINA ALTA. That mark was registered, inter alia, for goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’.

5        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

6        On 12 February 2010, the Opposition Division upheld the opposition based on the mark reproduced in paragraph 4 above on the ground that the goods at issue were identical and that the similarities between the signs under comparison outweighed their dissimilarities.

7        On 6 April 2010, the applicant filed a notice of appeal with OHIM against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.

8        By decision of 4 May 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal. The Board of Appeal found, inter alia, that consumers who have been exposed to wines, among other beverages, sold under the MARINA ALTA trade mark and who are offered wines, among other beverages, under the name CA’ MARINA would, in all probability, believe that CA’ MARINA was a new line of wines created by the proprietor of the earlier mark or that there must be a commercial connection between the parties.

 Forms of order sought by the parties

9        The applicant claims that the General Court should:

–        annul the contested decision as well as the decision of the Opposition Division which preceded the adoption of the contested decision;

–        reject the opposition and allow registration of the trade mark applied for;

–        order Bodegas Cooperativas de Alicante to pay the costs.

10      OHIM contends that the General Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility of Annexes A. 1 to A. 6 to the application

11      In its response, OHIM disputes the admissibility of the documents annexed under A. l to A. 5 to the application on the ground that they were submitted for the first time before the General Court. Those documents contained, respectively, a list of Community trade marks containing the term ‘marina’, a list of Community trade marks containing the term ‘marina’ registered for goods in Class 33, a list of registered Community trade marks containing the term ‘ca’, an excerpt from the web page of the specialised shop of Gall&Gall and photographs of that specialised shop. They were relied upon by the applicant in support of its complaints regarding the contested decision. In response to a question put by the Court to the applicant at the hearing, the latter stated that those documents had not been produced during the proceedings before OHIM.

12      Those documents, which were produced for the first time before the General Court, cannot be taken into consideration. The purpose of actions before the General Court is to secure review of the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and, accordingly, the role of the Court is not to re-evaluate the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need to assess their probative value (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited).

13      In its response, OHIM also takes the view that the production for the first time before the Court of the minutes of the ordinary meeting of Masottina of 25 November 2009 conferring on Mr A. B. the capacity of legal representative of that company, attached in Annex A. 6 to the application, is inadmissible. However, in response to a question put by the Court, OHIM declared that it no longer challenged the admissibility of that annex. Given that that annex had not been produced in order to dispute the legality of the contested decision, but in order to clarify the trade mark applicant’s claim, it must be considered to be admissible.

 The infringement of Article 8(1)(b) of Regulation No 207/2009

 Introduction

14      The applicant submits that the contested decision infringes Article 8(1)(b) of Regulation No 207/2009 in as much as the Board of Appeal found that there was a likelihood of confusion between the marks at issue.

15      As set out in Article 8(1)(b) of Regulation No 207/2009, 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, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two 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 trade mark.

16      Furthermore, 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 goods or services concerned 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 designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).

 The relevant goods

17      In the contested decision, the Board of Appeal took the view that the goods at issue were identical (see point 13 of the contested decision).

18      The applicant submits that there is no identity between the goods. In that regard, it relies on the fact that the wine sector includes several categories and types of wine.

19      In response to the applicant’s argument, the Court notes that both the mark applied for and the earlier mark cover alcoholic beverages, including, in particular, wine, so that the marks at issue must be regarded as covering identical goods.

 The relevant public

20      It is apparent from the contested decision and from the file documents that the goods covered by the marks at issue are alcoholic beverages and that the earlier mark is a Community trade mark. The Board of Appeal concluded therefrom that the relevant public was composed of average, reasonably observant and circumspect consumers of alcoholic beverages, including wine, throughout the European Union (see point 12 of the contested decision).

21      However, the applicant complains that the Board of Appeal did not take into consideration the specific character of the wine sector, a sector in which consumers are extremely attentive and capable of choosing their own wine, whether it be the category of wine or its price. According to the applicant, the buyer of wine will choose the distribution channel, the price, the type of wine and the brand depending on the type of good that he wishes to purchase.

22      In that regard, the Court points out that, in the assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, account must be taken of the average consumer of the category of goods or services concerned, who is, in principle, reasonably well informed and reasonably observant and circumspect. However, 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, to that effect, Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).

23      In the present case, in the light of the category of the goods at issue, the relevant consumer is not limited to consumers of wines, but also includes consumers of other alcoholic beverages such as sparkling wines, spirits and liqueurs. In addition, it is not for the Board of Appeal to take into account a specific type of consumer within a larger category of goods, but the average consumer of that category. Consequently, in the present case, it is not for the Board of Appeal to define the relevant public on the basis of a certain type of extremely attentive consumer capable of choosing the category of wine and its price.

24      Furthermore, as regards consumers of wine, it must be noted that, as has been held by established case-law, wines are intended for the general public of the European Union. As wines are usually subject to widespread distribution, from the food section of a department store to bars and cafes, they are everyday consumer goods for which the relevant public is the average consumer of everyday consumer goods (see, to that effect, Case T‑32/10 Ella Valley Vineyards v OHIM – HFP (ELLA VALLEY VINEYARDS) [2012] ECR II‑0000, paragraph 25 and the case‑law cited). That consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, will demonstrate a reasonable level of attention in respect of wines and other alcoholic beverages.

25      Therefore, the fact that the marks at issue cover wine, in particular, does not mean that the relevant public must be defined as consisting of extremely attentive consumers. Consequently, the finding in the contested decision that the relevant public in the present case is composed of average, reasonably observant and circumspect consumers throughout the European Union must be confirmed.

 The comparison of the signs at issue

–       Introduction

26      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).

27      In the present case, the Board of Appeal considered, in essence, that the signs at issue had certain visual and phonetic similarities due to the term ‘marina’, which is reproduced identically in the two signs. In addition, that term will, according to the Board of Appeal, be understood as relating to the sea, so that the relevant public will perceive a conceptual similarity between the signs (see points 19 to 23 of the contested decision). The Board of Appeal therefore took the view that, even if the two signs must be taken as a whole, the element ‘marina’ has the strongest impact in both of the signs because many European Union consumers will associate it with pleasure, whereas the elements which accompany it are either short and meaningless (CA’), or a mere qualifier (ALTA) (see point 24 of the contested decision). The applicant disputes that assessment.

–       Visual comparison

28      The applicant submits that the term ‘marina’ is a generic term, of common use, which appears in more than 190 registered Community trade marks, four of which covering goods in Class 33, and, therefore, it cannot constitute the ‘distinctive nucleus’ of the marks at issue. The applicant deduces from the weak distinctive character of that word that the other elements of the signs at issue enable a perfect distinction between the two marks at issue to be established. It therefore criticises the Board of Appeal for not having sufficiently ‘determined’ and analysed the earlier mark.

29      In that regard, the Court notes that the signs at issue are both composed of two terms, namely, on the one hand ‘ca’’ and ‘marina’, and, on the other, ‘marina’ and ‘alta’.

30      Taking into account the fact that the signs at issue have the term ‘marina’ in common, which, as pointed out by the defendant, is the longest of the terms composing the signs, the Board of Appeal was entitled to take the view, without erring, that the signs at issue were visually similar to some extent, which would attract the attention of the relevant public (see point 19 of the contested decision). Furthermore, the Board of Appeal did not err in considering that the other elements of the signs at issue which distinguish them, namely, ‘ca’’ and ‘alta’, did not enable the similarity between the signs due to the word ‘marina’ to be reduced.

31      The applicant’s arguments set out in paragraph 28 above do not undermine the preceding assessment. Indeed, the Board of Appeal did not in any way restrict its comparison of the signs at issue to their alleged ‘distinctive nucle[i]’, composed of the word ‘marina’ in each of those signs. It correctly noted a visual similarity between the signs at issue, due to the presence in both of the signs of the word ‘marina’, and correctly noted that the presence of the other elements differentiating those signs did not enable that similarity to be reduced significantly.

32      Even if it were accepted that the word ‘marina’ is a commonly used term appearing in a large number of registered Community trade marks, which the applicant has not demonstrated in the present case (see paragraph 12 above), it does not follow that that term becomes negligible in the relevant public’s perception of those marks. Consequently, the terms ‘alta’ and ‘ca’’ cannot be regarded as dominant in such a way as to limit the assessment of visual similarity between the signs at issue to only those two terms. As has already been held, it is only if an element of a complex mark is dominant to the point of rendering all the other elements negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see, to that effect, OHIM v Shaker, paragraph 42, and the judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that element is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other elements are negligible in the overall impression created by that mark (see, to that effect, Nestlé v OHIM, paragraph 43). The applicant is therefore wrong to consider that the mark applied for consists ‘[firstly]’ of the word ‘ca’’.

33      Contrary to what the applicant submits, the Board of Appeal did not in any way consider that the apostrophe in the mark applied for was negligible. The Board of Appeal correctly took the view that the applicant’s argument that that apostrophe is visually striking is unconvincing (see point 22 of the contested decision). Indeed, given the size and the positioning of the apostrophe, the Board of Appeal was able to reject the argument that that apostrophe would be visually striking for the relevant public.

–       The phonetic comparison

34      The Board of Appeal considered that the signs at issue demonstrated a certain phonetic similarity, which would attract the attention of the relevant public due to the presence of the word ‘marina’ in each of the signs at issue, and that that degree of similarity was not significantly affected by the other elements of the signs at issue (see point 19 of the contested decision).

35      The applicant submits that the pronunciation of the two signs at issue is entirely different and cannot give rise to a likelihood of confusion in the light of the difference in the number of syllables between the signs at issue and the fact that, in each of those signs, the emphasis is placed on the second word, namely ‘alta’ for the earlier mark and ‘marina’ for the mark in respect of which registration is sought. According to the applicant, it follows that the ‘aural rhythm’ of the two signs at issue is totally different and that the dominant element in the opponent’s mark is, without a doubt, the word ‘alta’.

36      In that regard, the Court takes the view that, while it is true that the signs at issue have a different number of syllables and that, in a certain number of European Union languages, the emphasis may be placed on the last word of each of the signs at issue, those differences are not capable of calling into question the Board of Appeal’s assessment that there is a certain phonetic similarity between the signs at issue due to the presence of the word ‘marina’ in each of them. Contrary to what is put forward by the applicant, the phonetic differences that it identified do not enable the word ‘alta’ to be made the dominant element of the earlier mark to the point that the consumer does not perceive the word ‘marina’.

–       The conceptual comparison

37      As regards the mark applied for, the Board of Appeal considered that the element ‘ca’’ is practically without meaning everywhere in the European Union except in Venice (Italy), where it is the equivalent, in the local dialect, of the word ‘casa’, meaning house or palace. For that reason, the Board of Appeal considered that that element would be less easily remembered than the word ‘marina’, which is a familiar word in many parts of the European Union and which will be strongly associated with the sea, marinas or beaches by, at the very least, European Union consumers who speak Italian, Spanish, French, German or English. The Board of Appeal points out that the concept of the sea generally has pleasant connotations for the majority of consumers and is distinctive in connection with wines (see point 20 of the contested decision).

38      The applicant submits that the term ‘ca’’ of the mark applied for is an archaic term which, in the Venetian language, means a house which is situated on the coast of Venice or, sometimes, Veneto. The applicant submits that, taking into account the fame of the city of Venice, the consumer, in the European Union and worldwide, will immediately understand the semantic origin of ‘ca’’. According to the applicant, the term is recurrent. In that regard, the applicant invokes the university of Ca’ Foscari, the Ca’ Rizzonico, office of the Fondazione Musei Civici di Venezia, and the Venecian palaces, Ca’ d’oro, Ca’ Dario, Ca’ Farsetti, Ca’ Cirvan, Ca’ del Duca. Finally, the applicant also puts forward the significant use of that term in Community trade marks and refers, in that regard, to the contents of Annex A. 3 to the application.

39      The Court takes the view that the applicant’s reasoning in that respect must be rejected and that the Board of Appeal’s assessment must be confirmed. It cannot be inferred from the world‑wide fame of Venice that the average European Union consumer, other than a consumer with knowledge of the Venetian dialect, can understand the meaning of the word ‘ca’’. The reliance on the name of a university, a museum and of a Venetian palace is not enough to demonstrate such an understanding by average European Union consumers as a whole. In so far as concerns the argument based on the trade marks referred to by the applicant, that argument is inadmissible for the reasons put forward in paragraph 12 above.

40      It follows that, with the exception of consumers who understand the Venetian dialect, for whom the mark applied for means the ‘marine house’, other consumers will understand the mark applied for as relating to a ‘marina’, a term which refers, at the very least for the relevant public who speak French, English, Italian, German or Spanish, to the sea or a place bordering the sea or a marina. The relevant public will thus associate that term with the sea, the beach and with marinas, as stated by the Board of Appeal.

41      As regards the earlier mark, the Board of Appeal considered that the element ‘alta’, which accompanies the element ‘marina’, will be understood, for example, by Italian and Spanish consumers as the adjective ‘alta’ meaning ‘high’. According to the Board of Appeal, it is, therefore, a qualifier of the noun ‘marina’, which does not substantially affect the strong evocative power which that noun possesses, and all the more so since it is the second element, which constitutes, according to the Board of Appeal, an additional reason for finding that the word ‘marina’ leaves a stronger impression in the earlier mark (see point 23 of the contested decision). Furthermore, the Board of Appeal noted that the expression ‘high marine’ makes little sense. It therefore considered that it was unreasonable to assume that Spanish consumers will attribute this meaning to the earlier mark. According to the Board of Appeal, Spanish consumers will consider that expression to be the opponent’s commercial name for wines (see point 21 of the contested decision).

42      The applicant submits that the earlier mark could, at the very most, be understood by the average consumer as ‘high marine’. That said, the applicant does not, however, dispute the assessment made by the Board of Appeal as regards the conceptual scope of the earlier mark, as referred to in the preceding paragraph.

43      In view of the facts of this case, the Court considers that that assessment of the Board of Appeal must be confirmed for the reasons stated in the contested decision.

44      Finally, as regards the conceptual comparison of the signs at issue, the Board of Appeal took the view that it was unlikely that the difference in meaning between the signs, namely ‘marine house’ and ‘high house’ would be understood by consumers who are not familiar with Italian or Spanish. Furthermore, it considered that non-Spanish consumers would realise that both signs relate to the sea. It took the view that, in that context, the signs are conceptually similar (see point 21 of the contested decision).

45      The applicant submits that, from a conceptual point of view, the image evoked by the mark applied for is completely different from the image evoked by the earlier mark.

46      The Court takes the view that the Board of Appeal was correct in considering that the relevant public would perceive the word ‘marina’ in both signs as referring to the sea. Consequently, the Board of Appeal was also correct in considering that the signs at issue were conceptually similar. The other elements of the signs at issue cannot call that assessment into question. Indeed, for a large part of the relevant public, the elements ‘ca’’ and ‘alta’ have no meaning and thus are not capable of affecting the perception of strong conceptual similarity between the signs as a result of the common word ‘marina’. As regards the small portion of the relevant public for whom the terms ‘ca’’ and ‘alta’ have a meaning, they will associate the two signs conceptually, since both signs refer to a ‘marina’. As the Board of Appeal pointed out in points 21 and 24 of the contested decision, since the expression ‘high marine’ makes no real sense, that public will understand that mark as referring to a type of ‘marina’ and the mark applied for as referring to a house by the ‘marina’. Similarly, as the Board of Appeal correctly observed, it is probable that the two signs at issue will be understood as designating two different lines or varieties of product from the same undertaking or from two economically‑linked undertakings (see point 25 of the contested decision).

–       Conclusion

47      In the light of the foregoing, it must be considered overall that the signs at issue have a high degree of visual, phonetic and conceptual similarity, due to the presence in each of them of the word ‘marina’. Even though that term is not dominant to the point of rendering the other elements of the signs at issue negligible, the similarity between those signs on account of that term outweighs the differences between them resulting from the elements ‘ca’’and ‘alta’.

48      It follows that the Board of Appeal did not err in finding that the overall assessment of the marks at issue shows that the strongest impression is made by the element common to those marks, namely the term ‘marina’, which, for a large part of the relevant public, will be associated with the pleasures derived from the sea, whereas the element ‘ca’’ is short and without meaning for the majority of consumers, and the element ‘alta’ is only a qualifier of the term ‘marina’.

 The likelihood of confusion

49      As regards the global assessment of the likelihood of confusion, the Court recalls that such an assessment entails some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast‑Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).

50      Given the identical nature of the goods at issue and the significant visual, phonetic and conceptual similarity of the signs at issue, for at least part of the relevant public, the Board of Appeal was correct in considering that there is a likelihood of confusion between the marks at issue. Indeed, consumers exposed to wines sold under the earlier mark could believe that the wines sold under the mark applied for come from the same undertaking or connected undertakings (see point 25 of the contested decision).

51      That assessment is not called into question by the applicant’s argument that, contrary to the Board of Appeal’s finding, the term ‘marina’ does not have distinctive character because it is of common use and appears in a large number of Community trade marks, including marks registered for goods in Class 33.

52      The fact that a mark has been registered means that that mark has a minimum of inherent distinctiveness, since Article 7(1)(b) of Regulation No 207/2009 precludes registration of a mark which is devoid of distinctive character. Therefore, the registration of the earlier mark signifies that that mark has a minimum degree of distinctiveness. However, this case concerns only an opposition and the minimum degree of distinctiveness of the earlier mark is not at issue. As is apparent from Articles 41 and 42 of Regulation No 207/2009, there is no need to examine the absolute grounds for refusal referred to in Article 7 of that regulation in the context of opposition proceedings. The grounds on which an opposition may be based, as laid down in Article 42(1) of Regulation No 207/2009, are merely the relative grounds for refusal in Article 8 of that regulation. Those are the terms on which OHIM is required to give a decision on the opposition under Article 42(5) of Regulation No 207/2009 (see, to that effect, the judgment of 13 July 2012 in Case T‑255/09 Caixa Geral de Depósitos v OHIM – Caixa d’Estalvis i Pensions de Barcelona (la Caixa), not published in the ECR, paragraph 86 and the case-law cited). If the applicant considered that the earlier Community trade mark had been registered contrary to the provisions of Article 7 of Regulation No 207/2009, it should have submitted an application for a declaration of invalidity pursuant to Article 52 of that regulation (see the judgment of 13 April 2011 in Case T‑345/09 Bodegas y Viñedos Puerta de Labastida v OHIM – Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), not published in the ECR, paragraph 65).

53      Furthermore, it must be noted that, as set out in paragraph 12 above, all the evidence furnished by the applicant in support of its claim that the term ‘marina’ is devoid of distinctive character is inadmissible. In addition, that term is not in any way descriptive of the goods at issue and, therefore, it has a certain distinctive character in relation to those goods.

54      The applicant also disputes the Board of Appeal’s assessment on the ground that the goods at issue are different. In that regard, it claims that the mark applied for relates to high quality goods, sold for approximately EUR 13, with the result that the consumer will turn to a specialised distribution channel in which the goods are selected and where consumers will receive assistance from experts. The applicant considers that, in the absence of advice when making their selection, consumers are attentive and place their trust in products which they have already sampled and with which they are familiar and that they may thus be able to compare the ‘special [brand]’ and a ‘general [brand]’ of wine, in reliance on the product’s guarantee of quality.

55      In the light of that argument, it must be pointed out that the relevant consumers of the alcoholic beverages concerned will demonstrate a reasonable level of attention (see paragraph 24 above).

56      Furthermore, the fact that the wines marketed by the applicant under the mark applied for are, as the case may be, quality wines sold at relatively high prices is not relevant, since registration was sought not only for wines, irrespective of their quality, but also for sparkling wines, spirits and liqueurs (see, to that effect, the judgment of 25 October 2006 in Case T‑13/05 Castell del Remei v OHIM – Bodegas Roda (ODA), not published in the ECR, paragraph 46).

57      In addition, it has already been held that, since particular marketing strategies for goods covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions, whether given effect or not, which are by their very nature subjective for the proprietors of the marks (see the judgment of 15 March 2007 in Case C‑171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 59, and Case T‑363/06 Honda Motor Europe v OHIM – Seat (MAGIC SEAT) [2008] ECR II‑2217, paragraph 63). Thus, the use that the applicant intends to make of the mark applied for is irrelevant in that respect. In the context of opposition proceedings, OHIM may take account of the list of goods only as it appears in the trade mark application, subject to any amendments thereto (see the judgment of 13 April 2005 in Case T‑286/03 Gillette v OHIM – Wilkinson Sword (RIGHT GUARD XTREME sport), not published in the ECR, paragraph 33, and see also, to that effect, Case T‑364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 89).

58      Consequently, the fact that the applicant wishes to use the mark applied for only for high quality alcoholic beverages of a certain price and possibly to distribute its goods by a specific distribution channel is irrelevant for the purposes of assessing the likelihood of confusion. Furthermore, the fact that those goods are of different qualities or are distributed by separate channels does not prevent a finding that there is a likelihood of confusion, since those goods can be perceived as designating product lines from the same producer.

59      In view of the foregoing, the applicant is wrong to claim that Article 8(1)(b) of Regulation No 207/2009 has been infringed on the grounds that the earlier mark was not sufficiently analysed, that there is no likelihood of confusion between the conflicting signs, that there is no identity between the goods and that the distribution channels and the targeted public were not taken into account.

60      Therefore, the Court considers that, for the above reasons, the applicant’s action must be dismissed in its entirety, without there being any need to give a ruling on the admissibility of the applicant’s applications for annulment of the Opposition Division’s decision and for registration of the mark applied for as a Community trade mark.

 Costs

61      Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

62      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Masottina SpA to pay the costs.

Azizi

Kancheva

Buttigieg

Delivered in open court in Luxembourg on 14 May 2013.

[Signatures]