Tsakouridis (European citizenship) [2010] EUECJ C-145/09 (08 June 2010)

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(Community trade mark – Opposition proceedings – Application for Community word mark RIOJAVINA – Earlier Community collective figurative mark RIOJA – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

Félix Muñoz Arraiza, residing in Logroño (Spain), represented by J. Grimau Muñoz and J. Villamor Muguerza, lawyers,

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

Consejo Regulador de la Denominación de Origen Calificada Rioja, established in Logroño, represented by J.I. Martínez De Torre, lawyer,

1 On 12 November 2004 the applicant, Félix Muñoz Arraiza, 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)).

3 The goods and services in respect of which registration was sought are in Classes 29, 30 and 35 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, for each of those classes, after the restriction made during the proceedings before OHIM, to the following description:

4 The Community trade mark application was published in Community Trade Marks Bulletin No 44/2005 of 31 October 2005.

5 On 9 November 2005, the intervener, the Consejo Regulador de la Denominación de Origen Calificada Rioja (‘the CRD’), filed, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), a notice of opposition to registration of the mark applied for in respect of the goods and services listed in paragraph 3 above.

7 The opposition, based on all the goods and services covered by the earlier registrations and in particular, so far as the present action is concerned, on wines, in Class 33, was directed against all the goods and services covered by the trade mark application.

8 In support of the opposition, the CRD relied in particular on the ground for refusal referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

9 On 19 March 2008 the Opposition Division, on the basis of that provision, partially upheld the opposition, in respect of the following goods and services covered by the trade mark application:

10 The Opposition Division rejected the opposition in so far as it concerned all the other goods and services covered in the trade mark application, because of lack of similarity between those goods and services and the goods covered by the earlier marks.

11 On 5 May 2008 the applicant filed an appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Opposition Division’s decision, in so far as that decision partially upheld the opposition, in respect of some goods and services.

12 By decision of 29 January 2009 (‘the contested decision’), the Second Board of Appeal of OHIM, endorsing the position taken by the Opposition Division, dismissed that appeal.

13 As regards comparison of the goods and services, the Board of Appeal, like the Opposition Division, held that there was a low degree of similarity between vinegars and wines. In addition, it held that there was also a low degree of similarity between sole agencies, representation services, wholesaling, retailing, export, import, all the aforesaid relating to vinegars, on the one hand, and wines, on the other, for the reasons stated by the Opposition Division in its decision, which were not disputed by the applicant before the Board of Appeal.

14 As regards comparison of the signs, the Board of Appeal, taking into consideration solely earlier Community collective mark No 226118, on the ground that that mark covers the same goods and has the same dominant element ‘rioja’ as earlier international mark No 655291, endorsed the Opposition Division’s finding that the marks at issue show a high degree of visual, phonetic and conceptual similarity.

15 The Board of Appeal held that the low degree of similarity between the goods and services specified was offset by the high degree of similarity between the marks at issue, so that European consumers could easily be led to believe that the vinegars and services concerned, marketed under the trade mark RIOJAVINA, come from the same undertakings which own wineries producing wines marketed under earlier mark No 226118, a likelihood that is all the greater given that Rioja wines enjoy a reputation.

16 The Board of Appeal pointed out that the fact that the applicant is the proprietor of an earlier Spanish trade mark RIOJAVINA covering vinegars, which is identical to the Community mark applied for, does not preclude the CRD’s earlier mark No 226118 from being effectively characterised in law as a mark that is earlier than the Community trade mark applied for, or preclude the CRD from relying on that earlier mark as a basis for opposition.

17 The fact asserted that the applicant’s Spanish trade mark RIOJAVINA coexisted with the CRD’s earlier mark No 226118 does not mean that there has been no confusion in Spain and above all it does not provide evidence that there can be no likelihood of confusion in other Member States of the European Union.

20 The applicant relies on a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.

21 It should be observed first of all that since OHIM upheld the opposition only in part and the assessment of the Board of Appeal was limited, in the interest of procedural economy, to a comparison of the mark applied for solely with earlier mark No 226118, the present action relates only to whether there is a likelihood of confusion between, on the one hand, the word mark RIOJAVINA, applied for in respect of ‘vinegars’, in Class 30, and ‘sole agencies, representation services, wholesaling, retailing, export, import; all the aforesaid relating to vinegars’, in Class 35, and, on the other hand, the CRD’s earlier mark No 226118, registered in respect of wine, in Class 33.

22 Earlier mark No 226118 is a Community collective mark within the meaning of Article 64 of Regulation No 40/94 (now Article 66 of Regulation No 207/2009). Under the provisions of Article 8(1) of Regulation No 40/94, in conjunction with Article 64(3) of that regulation (now Article 66(3) of Regulation No 207/2009), that mark enjoys like any other Community mark protection against any infringement resulting from the registration of a Community trade mark that involves a likelihood of confusion.

23 The applicant maintains, however, that there is no question of a likelihood of confusion in this case. First, since the CRD is an administrative body, and more specifically a local agency of the Spanish Ministry of the Environment and Rural and Marine Affairs responsible for ensuring the quality of Rioja wines, and not a producer of Rioja wine, it is not an undertaking which the applicant might attempt to compete with. Secondly, it is difficult to imagine that a consumer would think that the applicant’s goods came from such an administrative body.

24 With regard to the first point, if the applicant considered that the earlier mark had not been put to genuine use by its proprietor or, as it is a collective mark, by any person who has authority to use it (see Article 65(2) and Article 68 of Regulation No 40/94 (now Article 67(2) and Article 70 of Regulation No 207/2009, respectively)), he should have lodged a request for proof of genuine use of that mark, under Article 43(2) of Regulation No 40/94 (now Article 42(2) of Regulation No 207/2009). Since no such request was lodged the applicant cannot dispute the fact that earlier mark No 226118 is likely to be used for the goods in respect of which it was registered, namely wines.

25 With regard to the second point, 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 (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraph 30 and case-law cited).

26 The precise commercial origin that the relevant public will attribute to the goods or services covered by each of the two marks at issue is therefore of little importance so far as a likelihood of confusion between them is concerned. What is important is whether that commercial origin could be perceived by the relevant public as being the same in both cases.

27 In the present case, earlier mark No 226118 constitutes in the mind of the relevant public, comprising both the general public and the specialised public of the European Union, an indication of the commercial origin of the wines which bear that mark. Whatever the precise commercial origin of those goods, that is to say, without needing to determine whether that public will think that the wines covered by the earlier mark come from the CRD or from an undertaking, it cannot be ruled out automatically that, were the marks at issue and the goods and services which they cover to be identical or similar, the same public would attribute that same commercial origin to the goods and services covered by the mark applied for, which would amount to there being a likelihood of confusion.

28 Therefore, contrary to what the applicant claims, the fact that the CRD is not a producer of Rioja wine does not in itself mean that there could be no question of a likelihood of confusion.

29 It is therefore necessary to consider whether, as the applicant claims, the Board of Appeal was wrong to endorse the Opposition Division’s finding with regard to the existence of a likelihood of confusion in this case.

30 Article 8(1)(b) of Regulation No 40/94 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, that 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 trade mark.

31 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 the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and of the goods or services in question and taking into account all relevant factors in the case, in particular the interdependence between the similarity of the signs and that of the goods or services identified (see GIORGIO BEVERLY HILLS, paragraph 25 above, paragraphs 30 to 33 and case-law cited).

32 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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 Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and case-law cited).

33 In view of the nature of the goods and services at issue, the relevant public is, as stated in paragraph 27 above, both the general public and the specialised public of the European Union.

34 As regards, in the first place, comparison of the goods, the Court finds that the Board of Appeal was correct in concluding that there is a low degree of similarity between vinegar and wine.

35 Even though vinegar, unlike wine, is not a drink, the fact remains that both products can be used in food preparation. Also, vinegar is commonly obtained by acetous fermentation of wine.

36 In that respect, the applicant’s argument that it is possible to produce vinegar from hydro-alcoholic solutions other than wine, and thus obtain various sorts of vinegar (cider vinegar, fruit vinegar, alcohol vinegar, cereal vinegar, malt vinegar, honey vinegar, lactoserum vinegar), does not detract from the fact that, as the Board of Appeal found, and this was not challenged before the Court, the type of vinegar most commonly produced and consumed is wine vinegar. The applicant has moreover expressly stated its intention to market wine vinegar under the trade mark applied for.

37 As regards the applicant’s references to the rules for making Rioja wines (choice of grape varieties used) and for ageing them (storage in oak casks, with minimum ageing periods), those references, which may be appropriate in order to distinguish Rioja wines from other wines, are, however, totally irrelevant as regards the sole question at issue in this case, namely whether vinegar and wine are similar goods.

38 The reference made to the judgment of 15 February 2007 in Case T-501/04 Bodegas Franco-Españolas v OHIM – Companhia Geral da Agricultura das Vinhas do Alto Douro (ROYAL), not published in the ECR, is to a case that is completely different from the present case, and does not call into question the validity of the Board of Appeal’s assessment.

39 The fact that in that case, which concerned an alleged likelihood of confusion between a trade mark ROYAL, applied for in respect of Rioja wine, and an earlier mark ROYAL FEITORIA, registered for Port wine, the Court held that Rioja and Port wines, although they were both alcoholic drinks, had only a low degree of similarity because of their obvious differences that are well known to the average consumer (Rioja wine is drunk during a meal whereas Port wine is drunk before or after a meal), does not in any way mean that OHIM was wrong to note in the present case, with regard to vinegar and wine, factors which were sufficient to conclude that those goods were similar, if only to a low degree.

40 It is clear from the above considerations that the arguments put forward by the applicant do not call into question the validity of the Board of Appeal’s assessment with regard to the existence of a low degree of similarity between vinegar and wine.

41 As regards the services referred to in the trade mark application in respect of which the opposition was upheld, namely ‘sole agencies, representation services, wholesaling, retailing, export, import; all the aforesaid relating to vinegars’ in Class 35, the Board of Appeal endorsed the Opposition Division’s findings that those services also had a low degree of similarity with wine, essentially because of the complementary and ancillary nature of marketing activities within companies in the vinegar and wine sectors.

42 The fact remains, as OHIM found, that the applicant does not put forward any argument criticising the Board of Appeal’s assessment with regard to the services and merely challenges exclusively the Board of Appeal’s assessments with regard to the goods (vinegar and wine).

43 Moreover, the Court observes that, in view of the close link between any product and its marketing, the Board of Appeal was right, having correctly established the existence of a low degree of similarity between vinegar and wine, also to conclude that there is the same degree of similarity between, on the one hand, the marketing services expressly described as ‘relating to vinegars’ – namely ‘sole agencies, representation services, wholesaling, retailing, export, import; all the aforesaid relating to vinegars’, in Class 35 – and, on the other hand, wine.

44 In conclusion, the applicant has not established that the Board of Appeal was wrong to find that the goods and services referred to in the trade mark application, in respect of which the opposition was upheld, are similar, although only to a low degree, to the product covered by the earlier mark.

45 In the second place, so far as comparison of the signs is concerned, it should be noted that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, 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 appreciation of such likelihood of confusion. In this 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 case-law cited).

46 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 45 above, paragraph 41 and case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, paragraph 42). That could be the case in particular where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Nestlé v OHIM, paragraph 43).

47 In the contested decision, the Board of Appeal, for reasons of procedural economy, merely compared the mark applied for with earlier Community mark No 226118. In that comparison it adopted the finding of the Opposition Division that those marks show a high degree of visual, phonetic and conceptual similarity.

48 In that regard, the Court finds that the Board of Appeal rightly held that the word element ‘rioja’, common to both the marks at issue, constituted the dominant element of each of those marks. That element attracts the attention of the relevant public both by its position within those marks (at the beginning of the mark applied for and in the centre of the earlier mark) and by the reputation it enjoys, as the parties agree, within the greater part of the European Union in connection with Rioja wines.

49 With regard to visual similarity, it should be observed, as in essence the Board of Appeal did, that the presence in the marks at issue of the word element ‘rioja’ – where that element appears at the beginning of the mark applied for and, in the case of earlier Community mark No 226118, is printed diagonally in large letters in the centre of that mark – gives, if not a high degree, at least a significant degree of visual similarity, despite the presence of other less important elements that differentiate between the marks at issue, namely, the word element ‘vina’ placed at the end of the mark applied for and the various word and figurative elements surrounding the central element ‘rioja’ in earlier mark No 226118.

50 As regards the various references made by the parties to certain specific ways of applying the marks at issue on the goods concerned, the applicant for his part referring to the application of the earlier mark on labels with larger dimensions or on the backs of bottles, and the CRD, for its part, stressing the graphics specifically used by the applicant in the printing of the word mark applied for, those various references are irrelevant in assessing the visual similarity of the marks at issue, since such an assessment is made on the basis of the signs as registered or applied for at OHIM.

51 With regard to phonetic similarity, it should be observed, as in essence the Board of Appeal did, that there is a high degree of phonetic similarity between the marks at issue because of the common word element ‘rioja’. The element ‘vina’ of the mark applied for, situated at the end of the mark and thus less phonetically important, is not such as to reduce that phonetic similarity significantly. As to the four elements ‘consejo’, ‘regulador’, ‘denominacion origen’ and ‘calificada’, placed on the four sides of the earlier mark and, in the case of two of them, printed vertically and thus difficult to read, they are clearly secondary within that mark.

52 As to conceptual similarity, it is appropriate to uphold the Board of Appeal’s finding that, in essence, there is a high degree of conceptual similarity. The term ‘riojavina’ in the mark applied for, like the term ‘rioja’ in the earlier mark, which was itself conceptually strengthened by the representation of a bunch of grapes and a vine leaf, refer directly so far as the relevant public is concerned to grapevine products and, more especially, to Rioja wine.

53 It is clear from the above considerations that the Board of Appeal was right to conclude that there was a high degree of similarity between the marks at issue.

54 With regard, in the third place, to the global assessment of the likelihood of confusion, such an assessment implies 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 low degree of similarity between those goods or services may be offset by a high 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).

55 In the present case, the Court finds, like the Board of Appeal, that the low degree of similarity between the goods and services concerned is offset by the high degree of similarity between the marks at issue, so that the relevant public is likely to believe that the vinegar and the services for marketing the vinegar offered under the RIOJAVINA mark have the same commercial origin as the wines marketed under earlier Community mark No 226118.

56 As regards the fact that the applicant is the proprietor of a Spanish mark RIOJAVINA and has marketed vinegars in Spain under that mark for over 50 years, it should be noted that that fact, assuming it to be established, by no means proves that there is no likelihood of confusion on the part of Spanish consumers as to the commercial origin of the vinegar marketed under that mark. Moreover, and in any event, the public in respect of which the likelihood of confusion is being considered is not the Spanish public but, more widely, the public of the European Union.

57 As to the argument that the CRD cannot attempt to monopolise the use of the word ‘rioja’ within a sector, namely the vinegar sector, in which it cannot develop any activity, it should be noted that under Article 12(b) of Regulation No 40/94 (now Article 12(b) of Regulation No 207/2009) ‘[a] Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade … indications concerning the … geographical origin … of the goods … provided he uses them in accordance with honest practices in industrial or commercial matters’.

58 Likewise, Article 64(2) of Regulation No 40/94 (now Article 66(2) of Regulation No 207/2009), which provides that, ‘[i]n derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1’, also provides that ‘[a] collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters’ and that, ‘in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name’.

59 However, contrary to what the applicant appears to suggest, the opposition proceedings brought by the CRD do not seek in any way to monopolise, in breach of the abovementioned provisions, use of the word ‘rioja’, whether for vinegar or for any other product.

60 Those proceedings brought by the CRD are intended solely to ensure, through Article 8(1) of Regulation No 40/94, that it has protection for its intellectual property rights arising from the registration of earlier Community mark No 226118 against any infringement resulting from the registration of a Community mark involving a likelihood of confusion.

61 As to the allegation that the CRD did not oppose the registration of other Community marks containing the word ‘rioja’, including one covering goods in Class 30 (vinegars), it is irrelevant for an assessment of the only question at issue in this case, namely whether, as OHIM observed in the context of the opposition proceedings brought by the CRD against the mark applied for by the applicant, there is a likelihood of confusion between that mark applied for and earlier mark No 226118.

62 Since, contrary to what the applicant maintains, OHIM did not err in finding that there was in this case a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, the single plea relied on by the applicant, alleging infringement of that provision, must be rejected.

63 It is therefore appropriate, without the need to consider the applicant’s claim for ‘[allowing] registration of the mark applied for in respect of Classes 29, 30 and 35’, to dismiss the present action in its entirety.

64 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 the applicant has been unsuccessful, he must be ordered to pay the costs incurred by OHIM and by the CRD, in accordance with the forms of order sought by those parties.

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