Gervais Danone v EUIPO - Mahou (B'lue) (Judgment) [2016] EUECJ T-803/14 (28 April 2016)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark B’lue — Earlier EU word mark BLU DE SAN MIGUEL — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Compagnie Gervais Danone, established in Paris (France), represented by A. Lakits-Josse, lawyer,

European Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

the intervener in the proceedings before the General Court, successor in law to San Miguel, Fabricas de Cerveza y Malta, SA, the other party to the proceedings before the Board of Appeal of EUIPO, being

Mahou, SA, established in Barcelona (Spain), represented by A. Gómez-López, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 30 September 2014 (Case R 1382/2013-5), relating to opposition proceedings between San Miguel, Fabricas de Cerveza y Malta, SA and Compagnie Gervais Danone,

composed of D. Gratsias (Rapporteur), President, M. Kancheva and C. Wetter, Judges,

having regard to the application lodged at the Court Registry on 9 December 2014,

having regard to the response of EUIPO lodged at the Court Registry on 24 March 2015,

having regard to the response of the intervener lodged at the Court Registry on 27 March 2015,

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 rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

1 On 10 January 2012, the applicant, Compagnie Gervais Danone, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in Class 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘isotonic beverages [not for medical purposes]; high energy drinks’.

4 The trade mark application was published in Community Trade Marks Bulletin No 69/2012 of 11 April 2012.

5 On 5 July 2012, San Miguel, Fabricas de Cerveza y Malta, 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 all the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier EU word mark BLU DE SAN MIGUEL, which was registered on 23 October 2009 under the number 8237455 and covers goods and services in Classes 32, 38 and 43 corresponding, for each of those classes, to the following description:

– Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;

– Class 38: ‘Telecommunications and communications services, including communications by computer terminals, digital communications and communications by global computer networks’;

– Class 43: ‘Services for providing food and drink; temporary accommodation’.

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 23 May 2013, the Opposition Division upheld the opposition in respect of all the contested goods referred to in paragraph 3 above.

9 On 22 July 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 30 September 2014 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal and confirmed the rejection of its EU trade mark application.

11 The Board of Appeal found, first of all, that the relevant public consisted of all consumers within the European Union and that the goods concerned were directed at the general public, the level of attention of which was average. Next, it upheld the Opposition Division’s finding that the goods covered by the contested mark, namely isotonic beverages (not for medical purposes) and high energy drinks, fell within the category of non-alcoholic drinks covered by the earlier mark. Furthermore, the Board of Appeal took the view that the signs being compared were visually similar to a low degree, but were, by contrast, phonetically similar to a certain degree, and that, in addition, they referred to the same concept, namely the colour blue. In those circumstances, in the light, in addition, of the average distinctiveness of the earlier mark — inter alia since the element ‘de san miguel’ is not descriptive — and of the particular importance which the initial part of that mark, that is to say the element ‘blu’, has, the Board of Appeal found that a likelihood of confusion between that mark and the contested mark could not be excluded.

– dismiss the action and ‘declar[e] that the’ contested decision ‘is in accordance with [Regulation No 207/2009]’;

15 In support of its action, the applicant puts forward a single plea in law alleging, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant takes the view, contrary to the Board of Appeal’s findings, that the significant differences between the contested mark and the earlier mark exclude any likelihood of confusion. That is why it maintains that the Board of Appeal’s global assessment of that likelihood of confusion is erroneous. In that regard, it sets out five complaints against the contested decision. First, it submits that the Board of Appeal found that the element ‘blu’ referred to the colour blue but failed to draw from that the conclusion that that element was descriptive and therefore had only a weak impact. Secondly, it maintains that the Board of Appeal failed to consider the fact that the impact of differences in short signs, such as the contested mark, is great. Thirdly, it takes the view that the Board of Appeal failed to consider the fact that the overall differences between the signs at issue outweighed the slight similarities between them. Fourthly, it submits that the Board of Appeal also failed to take account of the particular conditions under which the goods covered by the contested mark — which are sold only in self-service shops — are marketed, which makes the impact of the visual differences greater. Fifthly and lastly, it maintains that the Board of Appeal failed to take into account the distinctive and dominant character of the element ‘san miguel’ in the earlier mark.

17 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 5 February 2015 in Red Bull v OHIM — Sun Mark (BULLDOG), T‑78/13, EU:T:2015:72, paragraph 21 and the case-law cited).

18 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment in BULLDOG, cited in paragraph 17 above, EU:T:2015:72, paragraph 22 and the case-law cited). Furthermore, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect (judgment of 23 March 2012 in Barilla v OHIM — Brauerei Schlösser (ALIXIR), T‑157/10, EU:T:2012:148, paragraph 18).

19 It is in the light of those considerations that it must be assessed whether there is in the present case a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

20 It must be noted at the outset that the applicant does not, in the present case, dispute the Board of Appeal’s definition of the relevant public and that public’s level of attention. Furthermore, as that definition is not marred by error, it must be accepted. First of all, the Board of Appeal was right in pointing out that, since the earlier mark is an EU trade mark, it was the perception of consumers within the European Union that was relevant. Likewise, the Board of Appeal did not make an error of assessment in finding that the goods covered both by the contested mark and by the earlier mark are aimed at a wide public. Those goods belong to the category of non-alcoholic beverages and are not aimed at a professional or specialist public. Lastly, the Board of Appeal rightly found that the level of attention of that public had to be regarded as neither particularly high nor particularly low. It is true that, according to settled case-law, the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 May 2015 in Ferring v OHIM — Kora (Koragel), T‑169/14, EU:T:2015:280, paragraph 21 and the case-law cited). However, the fact remains that, in the present case, there is nothing to indicate that the high energy drinks and isotonic beverages, not for medical purposes, covered by the contested mark would be the subject of greater or less attention than that which the average consumer generally pays to everyday consumer goods.

21 It must be pointed out, still at the outset, that the applicant also does not dispute the Board of Appeal’s finding that the goods under comparison are identical, inasmuch as the goods covered by the contested mark — high energy drinks and isotonic beverages (not for medical purposes) — fall within a category of goods which is covered by the earlier mark. As that finding is not, moreover, marred by error, it must be upheld. Consequently, the present plea must be examined only in the light of the comparison of the signs at issue.

Whether the elements of which the signs at issue consist have distinctive and dominant character

22 According to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment in ALIXIR, cited in paragraph 18 above, EU:T:2012:148, paragraph 21).

23 It is also established case-law that a composite trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the composite mark, unless that component constitutes the dominant element in the overall impression created by the composite mark. That is the case where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (see judgment of 8 December 2011 in Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy), T‑586/10, EU:T:2011:722, paragraph 27 and the case-law cited).

24 In the first place, the applicant complains that the Board of Appeal did not take into account the descriptive and therefore ‘weak’ character of the element ‘blu’ in the earlier mark, although it found that that element referred to a certain colour. Furthermore, the applicant submits that, as the earlier mark is BLU DE SAN MIGUEL, the distinctive and dominant element of that mark is clearly ‘san miguel’. It maintains that, consequently, the Board of Appeal erred in according importance to the element ‘blu’ in the comparison of the signs and, ultimately, in the assessment of the likelihood of confusion between the marks at issue.

25 In that regard, it must be borne in mind at the outset that, according to settled case-law, the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them. Accordingly, in certain circumstances, on account, in particular, of its position in the sign or its size, a descriptive element may make an impression on consumers and be remembered by them (see judgment of 22 May 2012 in Olive Line International v OHIM — Umbria Olii International (O·LIVE), T‑273/10, EU:T:2012:246, paragraphs 56 and 57 and the case-law cited).

26 In the present case, the Board of Appeal was right not to find that the descriptiveness of the element ‘blu’ in the earlier mark was a factor which was capable of precluding, as a matter of principle, that element from being dominant in that mark. It is therefore necessary to examine the distinctive character of that element and to determine whether or not it is dominant in the earlier mark.

27 In that regard, it must be pointed out that, as was found by the Board of Appeal, the element ‘blu’ will generally be perceived by consumers as a reference to the colour blue. For the great majority of consumers in the European Union, that element will be interpreted as a variant spelling of the English word designating that colour, ‘blue’, which is part of the basic vocabulary capable of being understood by an average consumer, even if he is not English-speaking and has only a rudimentary knowledge of English. Furthermore, a certain number of European consumers will establish a connection between the element ‘blu’ and the word which designates the colour blue in their native languages if that word is identical to that element or is very similar to it visually or phonetically. That is, in particular, the case for German, French, Italian or Dutch consumers, who designate that colour in their native languages by the terms ‘blau’, ‘bleu’, ‘blu’ and ‘blauw’ respectively.

28 As the applicant points out, that reference to the colour blue may refer to the appearance of the goods in Class 32 covered by the earlier mark, which include non-alcoholic beverages. Furthermore, irrespective of the evidence which the applicant has provided regarding the use of the element ‘blu’ or ‘blue’ in relation to goods in Class 32, it is common knowledge that terms referring to a colour may be used in order to designate goods in the beverages sector, including non-alcoholic beverages.

29 However, it is important to point out that the purpose of a reference, in a mark, to a particular colour, inter alia in the beverages sector, may, depending on the context, be just as much, if not more, to associate the beverages designated with positive images or symbols conveyed by that colour as to describe, in an objective manner, the appearance of those beverages. In the present case, the element ‘blu’ is not used in a banal way in the earlier mark as an adjective of colour which qualifies the term designating the beverages covered by that mark. It is situated at the beginning of that mark and is used as a noun which is qualified by the element ‘de san miguel’, with the result that the mark, as a whole, appears to evoke a particular shade of the colour blue. The consumer will thus tend to associate that element just as much with the concept of the colour blue itself and with the various concepts that that colour generally symbolises, such as purity, coolness, serenity or the liquid element, as with the colour of the beverage which it designates. Consequently, although the element ‘blu’, taken in isolation, has a weak distinctive character with regard to the relevant goods, that weak distinctive character is in part offset by the evocative character which its use in the earlier mark confers upon it (see, to that effect and by analogy, judgment of 21 May 2015 in Wine in Black v OHIM — Quinta do Noval-Vinhos (Wine in Black), T‑420/14, EU:T:2015:312, paragraph 36).

30 In addition, contrary to what the applicant maintains, the weak distinctive character of the element ‘blu’, taken in isolation, does not have the effect of automatically conferring on the other element of the earlier mark, ‘san miguel’, a distinctive and dominant character. Whether that other element has such a distinctive and dominant character must be assessed in the light of its inherent qualities and of the weight that it has in that mark in relation to the element ‘blu’.

31 In that regard, it must be pointed out that it is true that, for those consumers in the European Union who attribute no particular meaning to the element ‘de’ and, at most, identify the element ‘san miguel’ only as a proper noun which, as the case may be, designates the producer of the goods at issue, that element may be regarded as having some distinctive character. However, that element constitutes the last part of the sign in the earlier mark, whereas it is the element ‘blu’ which constitutes the first part of that sign. It is settled case-law that consumers generally pay greater attention to the first part of a sign (see judgment of 13 May 2015 in Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, EU:T:2015:279, paragraph 42 and the case-law cited). Furthermore, the element ‘san miguel’ will, at most, be perceived by that part of the relevant public as a Spanish proper noun and will not, in their eyes, be particularly original or fanciful. It must therefore be held that, in those circumstances, none of the elements of the earlier mark can be considered dominant or negligible. It is therefore the overall impression created by that mark which must be taken into account (judgment in O·LIVE, cited in paragraph 25 above, EU:T:2012:246, paragraph 62).

32 In addition, it must be pointed out that, contrary to what the Board of Appeal found, the element ‘de san miguel’ will be only weakly distinctive for those consumers in the European Union who attribute a specific meaning to the element ‘de’, understood as a preposition indicating origin, and, consequently, to the element ‘de san miguel’, as indicating either the place from which the goods covered by the mark come or the producer or designer of the goods designated by the element ‘blu’. Furthermore, in that case, it is the element ‘blu’ which will be understood as the term which specifically designates the goods covered by the earlier mark or as a particular line in the range of goods of the producer in question, whereas the element ‘san miguel’ will be understood as a more generic term referring to the origin of those goods. Accordingly, as the Opposition Division pointed out, some consumers will tend to refer to the mark at issue in an abbreviated way by means of its first and specific element, ‘blu’. In any event, as the Board of Appeal pointed out, for that part of the relevant public, it is the element ‘blu’ which will enable the consumer to distinguish the earlier mark from other marks including the element ‘San Miguel’.

33 Consequently, in such a situation, for part of the relevant public, the element ‘de san miguel’, although it does not constitute a negligible element in the earlier mark, will not, however, be regarded as having distinctive and dominant character. For the other part of that public, which will understand the expression of which the earlier mark consists in the sense referred to in paragraph 32 above, the element ‘blu’ will constitute the dominant element in that mark.

34 Consequently, the Board of Appeal did not err in according importance to the element ‘blu’, since, as is apparent from paragraphs 27 to 32 above, that element is, in any event, at least as important as the other elements in the earlier mark, or even, in some cases, dominant.

35 In that regard, it is not possible to accept the applicant’s argument that the Board of Appeal’s assessment means that the proprietor of the mark BLU DE SAN MIGUEL is given an excessive monopoly on the word ‘blu’ and the almost identical words which correspond to it in other languages of the European Union, although the public interest requires that any undertaking must be free to use such signs and indications to describe the characteristics of its own goods.

36 First, it is apparent from the case-law referred to in paragraph 25 above that the weak distinctive character of an element of a composite mark, in particular on account of its descriptive content in view of the goods at issue, does not necessarily imply that that element cannot constitute a dominant element and therefore an element which is relevant in assessing the likelihood of confusion. Furthermore, as the Court of Justice has held, the individual assessment of each sign, as required by the settled case-law of the Court of Justice, must be made in the light of the particular circumstances of the case and cannot therefore be regarded as being subject to general presumptions (judgment of 8 May 2014 in Bimbo v OHIM, C‑591/12 P, ECR, EU:C:2014:305, paragraph 36). It is not therefore giving an excessive monopoly to the proprietor of the earlier mark to take the view that, in the light of the particular circumstances of the present case, the element ‘blu’ constitutes, at the very least, a non-negligible element of that mark. On the contrary, reasoning, such as that of the applicant, which is based on the presumption that the weak distinctive character of an element of a composite mark would necessarily lead to its being regarded as negligible would mean that the proprietor of that mark would be improperly denied the rights attached to his registration on the sole ground that that mark includes descriptive elements.

37 Secondly, the applicant’s argument is based, implicitly but necessarily, on considerations relating to the general interest of ensuring that signs describing the characteristics of goods and services may be freely used by all traders offering those goods and services, considerations which are relevant in assessing whether there is an absolute ground for refusal of registration for the purposes of Article 7 of Regulation No 207/2009. By contrast, such considerations are not relevant in assessing, as is the case here, whether there are relative grounds for refusal, within the meaning of Article 8 of that regulation, which pursue different aims from the absolute grounds for refusal and are intended to protect the individual interests of proprietors of earlier marks that come into conflict with the sign applied for and thus guarantee the trade mark as an indication of origin if there is a likelihood of confusion (see judgment of 22 October 2015 in BGW Beratungs-Gesellschaft Wirtschaft, C‑20/14, ECR, EU:C:2015:714, paragraphs 23 to 26 and the case-law cited).

38 In the second place, it must be pointed out that the contested mark is characterised by the importance of the word sign in that mark, which is at least equal to that of the graphic and figurative elements in that mark.

39 In that regard, it is true that, according to settled case-law, where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant. In the case of a composite mark, the figurative element may rank equally with the word element (judgment of 6 October 2015 in Monster Energy v OHIM — Balaguer (icexpresso + energy coffee), T‑61/14, EU:T:2015:750, paragraph 37). It is appropriate therefore to examine the intrinsic qualities of the figurative element and the word element of the contested mark, as well as the respective positions of those elements, in order to identify the dominant component (judgment of 16 January 2008 in Inter-Ikea v OHIM — Waibel (idea), T‑112/06, EU:T:2008:10, paragraph 49).

40 In the present case, as the Board of Appeal pointed out, the contested sign comprises, first, a word element, ‘b’lue’, the first letter of which is written in upper case and which is the subject of only slight stylisation that is characterised by the use of bold, dark-grey type. Secondly, that sign comprises a figurative element, which is positioned below the word element and consists of nine grey drops, which are arranged in a semi-circle and decrease in size going from left to right. Contrary to what the applicant states, those drops are rather smaller than the letters of which the stylised word element ‘b’lue’ consists. Lastly, those elements are placed within a rectangle on a white background with grey shading at the top and bottom.

41 It must be stated, first of all, that the stylisation of the word element and also the other graphic components surrounding that element, such as the background and the colours, are relatively banal, with the result that they are in no way capable of diverting the attention of consumers from the word element ‘b’lue’. The same is true of the figurative element, which has no particular originality and is, in view of the goods covered by the mark in question, highly descriptive. That figurative element is also relatively unobtrusive in its size and shape as well as in its colour, which is, moreover, identical to that of the word element. Lastly, the figurative element refers to the same concepts of coolness and the liquid element as the word element, in which, notwithstanding its fanciful written form, consumers will easily recognise the English word which designates the colour blue. Accordingly, both by means of its position below the word element and its conceptual content, the figurative element contributes towards highlighting that word element and cannot be regarded as the dominant element in the contested mark. Consequently, the word element ‘b’lue’ must be regarded as being at least equal in importance to that figurative element.

42 Visually, the Board of Appeal found that the signs at issue were similar to a low degree on account of the identity of three letters, that is to say, ‘b’, ‘l’ and ‘u’, which is offset by the differences relating to the number of words of which those signs consist and the presence in the contested mark of a figurative element and of an apostrophe placed after the first letter of the word element. The applicant takes the view that the signs are very different visually. In particular, it submits that, in short signs, such as that at issue in the present case, differences of one letter are of major importance and that, in addition, on account of that shortness, the addition of the apostrophe in the contested mark is all the more striking. Furthermore, the applicant maintains that the earlier word mark contains fourteen letters and five syllables and is therefore very different from the short sign of which the contested mark consists, which is stylised, fanciful and associated with a logo. The applicant’s arguments relating to the relative weight of the visual differences between the signs in the general impression created by those signs will be examined in paragraphs 63 to 74 below, in the context of the global assessment of the likelihood of confusion.

43 It must be held, first of all, that the Board of Appeal’s assessment as regards the low degree of visual similarity between the signs is not marred by error.

44 As the Board of Appeal found, the signs at issue have in common three letters, ‘b’, ‘l’ and ‘u’, which form, on the one hand, the whole of the first element in the earlier mark, BLU, and, on the other hand, the first three letters of the sole word element in the contested mark ‘b’lue’. Furthermore, there are only four letters in the contested mark, the only other letter being the last letter, ‘e’. In addition, as is apparent from paragraphs 27 to 37 above, the element ‘blu’ is at least as important as the other elements in the earlier mark, or even dominant for part of the relevant public. Similarly, as is apparent from paragraphs 39 to 41 above, the word element ‘b’lue’ also constitutes an element which is at least as important as the other elements of which the contested mark consists.

45 Furthermore, contrary to what the applicant seeks to show, the visual differences that exist between the signs at issue only partially counteract the visual similarities between them.

46 First of all, although it is true that, when faced with short signs, the relevant public is likely to perceive the differences between them more clearly (see, to that effect, judgment of 3 December 2014 in Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, EU:T:2014:1020, paragraph 47 and the case-law cited), the fact remains that, in the present case, the visual differences between the contested mark and the earlier mark will not divert the consumers’ attention from their similarities.

47 First, the apostrophe placed after the first letter in the element ‘b’lue’ will, it is true, attract attention on account of its unusual and fanciful nature. However, that specific spelling feature, to which consumers will attribute no value other than an aesthetic value, will not prevent them from perceiving the sequence of four letters in the element ‘b’lue’ as forming a whole and from recognising in that element, taken as a whole, a fanciful written form of the English word ‘blue’. The Board of Appeal therefore erred in finding that that apostrophe ‘interrupted’ that sequence. Secondly, the presence of the letter ‘e’ at the end of the element ‘b’lue’ constitutes a difference which will be only slightly perceptible, on account, in particular, of the fact that the element ‘blu’ in the earlier mark and the element ‘b’lue’ in the contested mark contain the same uninterrupted sequence of the first three letters, ‘b’, ‘l’ and ‘u’, in the same order. What matters in the assessment of the visual similarity of two word marks is, rather than their respective number of letters, the presence, in each of them, of several letters in the same order (see, to that effect, judgment of 25 March 2009 in Kaul v OHIM — Bayer (ARCOL), T‑402/07, ECR, EU:T:2009:85, paragraphs 82 and 83). Furthermore, both the element ‘blu’ in the earlier mark and the element ‘b’lue’ in the contested mark will be read as a spelling variant of the word ‘blue’. Lastly, it is true that the graphic components of the contested sign, in particular the figurative element situated below the word element ‘b’lue’, do not appear in the earlier mark. However, as pointed out in paragraph 41 above, those components, which are relatively banal and unobtrusive, are not dominant in the contested sign and contribute, on the contrary, towards highlighting the word element ‘b’lue’.

48 Next, it must be pointed out that the earlier mark contains four words and five syllables, whereas the contested mark contains only a single word consisting of one sole syllable. However, since the element ‘blu’ constitutes the first part of the earlier mark, the additional presence in that mark of the element ‘de san miguel’, which is not, as pointed out in paragraph 32 above, dominant, is not capable of diverting the attention of consumers from the visual similarity which exists between that first element in the earlier mark and the word element in the contested mark.

49 Consequently, the Board of Appeal was right to find that there is a low degree of visual similarity between the two signs at issue.

50 As regards the phonetic comparison, the applicant submits that, phonetically, the dominant element of the earlier mark is ‘san miguel’, which has no counterpart in the contested mark, with the result that there are also significant phonetic dissimilarities between the signs at issue.

51 In that regard, as the Board of Appeal pointed out, since the apostrophe placed after the first letter of the word element in the contested sign has no impact on the pronunciation of that element, the latter will be pronounced in the same way as the first element in the earlier mark, ‘blu’. Since the average consumer will identify those two elements as fanciful variants of the English word ‘blue’, he will pronounce both of them in the same way as that word and, in particular, will not pronounce the ‘e’ at the end of the element ‘b’lue’ in the contested mark. Accordingly, as the Board of Appeal found, the contested mark is fully included in the earlier mark from a phonetic standpoint. Consequently, the degree of phonetic similarity between those marks is greater than the degree of visual similarity between them (see to that effect, judgment in O·LIVE, cited in paragraph 25 above, EU:T:2012:246, paragraph 65).

52 Furthermore, it is true that the earlier mark includes, in addition to the element ‘blu’, the element ‘de san miguel’, which substantially increases the number of syllables pronounced in that mark by comparison with the contested mark, which consists of only one syllable. In addition, that element is very different phonetically from the contested mark. However, first, owing to the fact that the element ‘blu’ is at the beginning of the earlier mark and will therefore be pronounced first by consumers and also to the fact that the element ‘de san miguel’ in that mark is not dominant, those differences will not completely counteract the phonetic identity between the first element in that mark and the contested mark. Secondly, account must be taken of the fact that, as stated in paragraph 32 above, some of the consumers who attribute a meaning to the expression ‘blu de san miguel’ of which the earlier mark consists will tend to abbreviate that expression by pronouncing only the first element, ‘blu’. Those consumers will therefore tend to perceive the signs at issue as very similar phonetically.

53 Consequently, the Board of Appeal did not err in not finding that there were no great dissimilarities between the signs at issue from a phonetic standpoint. On the contrary, the Board of Appeal should have found not only that, as it stated, the signs were similar to a certain degree, but also that, for part of the relevant public, that degree of similarity was very high.

54 As regards the conceptual comparison, the applicant submits that the there is a great difference between the signs at issue as a result of the presence, in the earlier mark, of the element ‘de san miguel’, which is perceived as a Spanish expression, whereas there is no element in the contested mark which refers to Spain.

55 In that regard, it is common ground that, as pointed out in paragraphs 27 and 41 above, both of the signs at issue refer to the concept of the colour blue. In particular, it must be pointed out, as regards the contested mark, that the apostrophe used in a fanciful way in the word element ‘b’lue’ does not have the effect of splitting that element into two parts, with the result that each of those parts evokes a conceptual content which is different from that to which that element taken as a whole refers (see, to that effect, judgment of 23 September 2009 in Arcandor v OHIM — dm drogerie markt (S-HE), T‑391/06, EU:T:2009:348, paragraph 47). Furthermore, like the element ‘blu’ in the earlier mark, the word element in the contested mark is not used in association with a noun which it qualifies in the manner of an adjective of colour, but as a noun referring to the actual concept of the colour blue. Consequently, for the same reasons as those set out in paragraph 29 above, that word element will evoke the concepts of purity, coolness, serenity or the liquid element which are symbolised by the colour blue and that evocation is reinforced by the figurative element of the contested mark, which represents nine drops placed in a semi-circle below that word element.

56 The earlier mark contains, in addition to the element ‘blu’, an expression, ‘de san miguel’, which may, in Spanish, mean ‘from San Miguel’ or ‘manufactured (or designed) by San Miguel’, according to whether the element ‘san miguel’ refers, in the mind of the consumer, to a town in Spain, a producer manufacturing the goods covered by the earlier mark or the designer of the goods in question.

57 However, those consumers in the European Union who do not speak Spanish or another Romance language such as French, Italian, Portuguese or Romanian, will not necessarily attribute any specific meaning to the word ‘de’ and, consequently, to the expression as a whole. By contrast, as the applicant states, that part of the relevant public is, however, able to identify the term ‘san miguel’ as a proper noun of Spanish origin. Consequently, even that part of the relevant public will not regard the element ‘de san miguel’ as a fanciful designation which is devoid of any meaning, but will tend to interpret it as an indication of the origin of the goods. It is true that, as the applicant has pointed out, the contested mark does not contain such a reference to Spain or to the Hispanic world. Nevertheless, the addition of that concept in the earlier mark will not have the effect of completely counteracting the conceptual identity between the first element in the earlier mark, ‘blu’, and the contested mark in the mind of that part of the relevant public. The reference to the Hispanic world conveyed by the element ‘de san miguel’ is not particularly specific or evocative in relation to the relevant goods. Furthermore, as the word ‘de’ has no particular meaning, that reference does not have the effect of specifically defining the reference to the colour blue contained in the element ‘blu’, with the result that the whole formed by the word elements of which the earlier mark consists does not have an independent conceptual content which replaces that of each of its elements. Consequently, that reference to the Hispanic world will coexist in the consumer’s mind with the reference to the colour blue, without the latter losing its independence. In addition, given the importance which the public attaches to the first part of signs and the evocative nature of the colour blue in relation to the relevant goods, that public will be more aware of the conceptual identity between the first element of the earlier mark and the contested mark than of the differences arising out of the other elements of the earlier mark. Consequently, for that part of the relevant public, there is at least some conceptual similarity between the signs at issue.

58 Furthermore, so far as concerns the other part of the relevant public, which is able to attribute a meaning to the preposition ‘de’ and to the expression ‘blu de san miguel’ as a whole, the conceptual similarity will be even greater. As stated in paragraph 32 above, in that case, it is the element ‘blu’ which will be understood as the term which specifically designates the goods covered by the earlier mark or as a particular line in the range of goods of the producer in question, whereas the term ‘san miguel’ will necessarily be understood as a more generic term referring to the geographical or commercial origin of those goods. Accordingly, the specific conceptual content of the element ‘san miguel’ which, moreover, will seem relatively banal, in particular to Spanish-speaking consumers, will play an altogether subsidiary role as opposed to the conceptual content of the element ‘blu’, which, as pointed out in paragraph 55 above, has some evocativeness. The conceptual identity between that element and the contested mark will therefore appear all the more striking to that part of the relevant public.

59 It follows from the foregoing that the applicant’s argument as to the great difference between the signs as a result of the presence of the element ‘de san miguel’ in the earlier mark must be rejected.

60 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see judgment of 21 June 2012 in Kavaklidere-Europe v OHIM — Yakult Honsha (Yakut), T‑276/09, EU:T:2012:313, paragraph 52 and the case-law cited).

61 In the present case, in the context of the global assessment of the likelihood of confusion, the Board of Appeal found that the earlier mark was endowed with an average degree of distinctiveness. Next it found that the part of the relevant public which understands the expression ‘blu de san miguel’ will remember the element ‘blu’ as the element which makes it possible to distinguish that sign from other signs containing the element ‘san miguel’. Furthermore, according to the Board of Appeal, the part of the relevant public which does not fully understand that expression will also tend to remember and recall the element ‘blu’ most easily. Lastly, the Board of Appeal found that, taking into consideration the fact that end consumers will tend to acquire the end products without an in-depth analysis, the mainly visual differences between the signs at issue will not be enough to counteract their phonetic and, especially, conceptual similarities and consequently to exclude a likelihood of confusion between those two signs.

62 The applicant takes the view that that conclusion is incorrect and sets out five complaints against the global assessment of the likelihood of confusion carried out by the Board of Appeal, which have been referred to in paragraph 15 above. As is apparent from paragraphs 33, 34 and 45 to 48, the first, second and fifth complaints relating, respectively, to the weak distinctive character of the element ‘blu’, the impact of differences on short signs and the distinctive and dominant character of the element ‘san miguel’ must be rejected.

63 As regards the fourth complaint, alleging that the particular conditions under which the goods covered by the contested mark are marketed are restricted to the sale of those goods in shops by means of self-service, it must be stated that that complaint is related to the third, more general complaint, alleging that the overall differences between the signs at issue outweigh the slight similarities between them. The applicant argues that its goods are sold by means of self-service in order to claim that consumers will rely mainly on the visual aspect of the mark applied for, with the result that the great visual differences between that mark and the earlier mark will outweigh the slight similarities between them, in particular the phonetic similarities. It is therefore necessary to examine that complaint within the more general context of the examination of the overall impression created by the signs at issue and, in particular, of the respective weight of the various aspects of those signs.

64 In that regard it must be pointed out that the category of non-alcoholic beverages, which is covered by the earlier mark, covers a very wide category of goods which tends to be the subject of widespread distribution, ranging from department stores and other retail shops to restaurants and bars (see, to that effect, judgment of 11 September 2014 in Aroa Bodegas v OHIM — Bodegas Muga (aroa), T‑536/12, EU:T:2014:770, paragraph 55).

65 As regards the contested mark, it must be pointed out that the applicant maintains that the goods covered by that mark are aimed at a specific group of consumers, athletes, with the result that they are not sold in bars or restaurants, but, in general, in self-service retail shops.

66 In that regard, it must be borne in mind that, even though oral communication concerning goods sold in self-service shops and the corresponding trade marks is not excluded, the visual perception of the trade marks at issue will usually occur prior to purchase because the goods and their associated trade marks are displayed in those shops. Consequently, in such a situation, the phonetic aspect of the marks at issue is generally of less importance than the visual aspect (see, to that effect, judgment of 11 December 2013 in Eckes-Granini v OHIM — Panini (PANINI), T‑487/12, EU:T:2013:637, paragraph 65). However, even if, as the applicant suggests, the goods covered by the contested mark are used by consumers in the course of intense sporting activities, that fact does not, contrary to what the applicant suggests, preclude the possibility that those goods may be sold under conditions which are different from those of self-service selling. Consequently, like the goods covered by the earlier mark, those goods may also be sold after being ordered orally, for example inside sports clubs or fitness clubs, which may, moreover, contain a bar or a restaurant. In such a situation in which the goods are ordered orally, the phonetic similarity between the goods may be of particular importance (see, to that effect, judgment of 19 May 2015 in Granette & Starorežná Distilleries v OHIM — Bacardi (42 VODKA JEMNÁ VODKA VYRÁBĚNÁ JEDINEČNOU TECHNOLOGIÍ 42%vol.), T‑607/13, EU:T:2015:292, paragraph 110).

67 Consequently, in the light of the wide range of conditions under which both the goods covered by the earlier mark and those covered by the contested mark may be sold, it must be held that there is no factor which makes it possible to attribute a preponderant weight to the visual aspect or, conversely, to the phonetic aspect in the global assessment of the likelihood of confusion. Depending on the situation, each of those aspects is capable of being sometimes of particular importance and sometimes of less importance (see, to that effect, judgment in Koragel, cited in paragraph 20 above, EU:T:2015:280, paragraph 83).

68 In any event, it must be pointed out that, as set out in paragraphs 49, 57 and 58 above, there is between the signs at issue, first, a low degree of visual similarity and, secondly, some conceptual similarity, indeed a high degree of conceptual similarity for part of the relevant public. Consequently, even in a situation in which the phonetic similarities may be of less importance, in particular where the goods at issue are sold by means of self-service, the differences which exist between the signs at issue will not necessarily outweigh the similarities between those signs. The applicant’s complaint alleging that the Board of Appeal failed to take account of the conditions under which the goods covered by the contested mark are sold must therefore be rejected.

69 Furthermore, the applicant does not dispute that the earlier mark has an average degree of distinctiveness, as was pointed out by the Board of Appeal. In that regard, it is apparent from the documents in the file that the intervener did not expressly submit, before the adjudicating bodies of EUIPO, that the earlier mark had a particularly distinctive character, which had been acquired through the use made of that mark or through the reputation which it has. Nonetheless, it must be pointed out that the distinctive character of the earlier mark varies according to the part of the relevant public concerned. In that regard, it may, it is true, be maintained that, for the part of the relevant public which does not understand the meaning of the expression ‘blu de san miguel’ and which, as stated in paragraph 57 above, will interpret that combination of words as the association of a reference to the colour blue and a reference to the Hispanic world, the earlier mark may have some distinctive character. However, the fact remains that, for the part of the relevant public which attributes a specific meaning to that expression, as stated in paragraph 58 above, that distinctive character will be weakened, inasmuch as that public will tend to confer a descriptive value on that expression, in spite, moreover, of the evocativeness of the element ‘blu’. The Board of Appeal thus erred in finding that the earlier mark was generally distinctive to an average degree.

70 However, according to settled case-law, although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is nonetheless only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the marks and between the goods or services covered. Conversely, to give priority to the weak distinctive character of a trade mark in the assessment of the likelihood of confusion would point to the conclusion that, where a mark has only weak distinctive character, there is a likelihood of confusion only where it is reproduced fully by the trade mark in respect of which registration is sought, whatever the degree of similarity between the marks at issue. Such a result would not be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 207/2009 (see judgment in O·LIVE, cited in paragraph 25 above, EU:T:2012:246, paragraph 79 and the case-law cited).

71 In the present case, it must be pointed out that the goods covered by the marks at issue are identical. Furthermore, the signs of which those marks consist are similar overall, in particular phonetically and conceptually, above all for the part of the public which is able to attribute a specific meaning to the expression of which the earlier mark consists.

72 As stated in paragraph 32 above, that part of the relevant public will tend to use the first part of that mark to distinguish it from other signs including the element ‘san miguel’, or even to abbreviate the name of that mark by using only that first part to designate it. That first part, which consists of the element ‘blu’, is highly similar to the contested mark visually and is identical to it phonetically and conceptually.

73 Furthermore, as the Board of Appeal pointed out in essence, it is necessary to take into account the average level of attention of the relevant public, which will tend to acquire the goods at issue without an in-depth analysis. Lastly, according to settled case-law, it is necessary to take into account the fact that the average consumer only rarely has a chance to compare the various marks directly, so he must rely on his imperfect recollection of them (see judgment of 2 February 2016 in Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris v OHIM — Vicente Gandía Pla (ILLIRIA), T‑541/14, EU:T:2016:51, paragraph 21 and the case-law cited).

74 Consequently, in the particular circumstances of the present case, the weakened distinctive character of the earlier mark for part of the relevant public does not constitute a decisive factor, inasmuch as it cannot be capable of offsetting, for that part of the relevant public, the identity of the goods and the importance of the similarities, in particular phonetic and conceptual, in the overall impression created by the marks at issue.

75 In those circumstances, it must be held that a likelihood of confusion between the marks at issue cannot be ruled out, at least for the part of the public that is able to attribute a specific meaning to the expression of which the earlier mark consists. As the earlier mark is an EU trade mark, its unitary character can be relied on in opposition proceedings against any application for registration of an EU trade mark which would adversely affect its protection, even if only in relation to the perception of consumers in part of the European Union (judgment of 18 September 2008 in Armacell v OHIM, C‑514/06 P, EU:C:2008:511, paragraph 57). Consequently, notwithstanding its error in assessing the distinctive character of the earlier mark, the Board of Appeal was right to find that such a likelihood of confusion existed.

76 It is apparent from all of the foregoing that the single plea in law must be rejected and, as a result, the present action must be dismissed.

77 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.

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Gervais Danone v EUIPO - Mahou (B'lue) (Judgment) [2016] EUECJ T-803/14 (28 April 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T80314.html Cite as: [2016] EUECJ T-803/14, ECLI:EU:T:2016:251, EU:T:2016:251

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