Vins el Cep v EUIPO - Rotkappchen-Mumm Sektkellereien (MIM NATURA) (EU trade mark - Judgment) [2019] EUECJ T-589/18 (19 December 2019)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark MIM NATURA — Earlier international word and figurative registrations MM and MM and earlier national word mark MUMM — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

Vins el Cep, SL, established in Sant Sadurní d’Anoia (Spain), represented by J. Vázquez Salleras and G. Ferrer Gonzalvez, lawyers,

European Union Intellectual Property Office (EUIPO), represented by E. Markakis and H. O’Neill, acting as Agents,

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

Rotkäppchen-Mumm Sektkellereien GmbH, established in Eltville (Germany), represented by W. Berlit, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 12 July 2018 (Case R 2270/2017-1), relating to opposition proceedings between Rotkäppchen-Mumm Sektkellereien and Vins el Cep, SL,

composed of V. Tomljenović, President, F. Schalin (Rapporteur) and I. Nõmm, Judges,

having regard to the application lodged at the Court Registry on 1 October 2018,

having regard to the response of EUIPO lodged at the Court Registry on 25 January 2019,

having regard to the response of the intervener lodged at the Court Registry on 26 April 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 11 April 2016, the applicant, Vins el Cep, SL, 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

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

4 The trade mark application was published in European Union Trade Marks Bulletin No 71/2016 of 18 April 2016.

5 On 27 April 2016, the intervener, Rotkäppchen-Mumm Sektkellereien GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– the international registration of the word mark MM, designating the European Union, which was filed and registered on 4 July 2008 under the number 976438 in respect of goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’;

– the international registration of the figurative mark reproduced below, designating the European Union, which was filed and registered on 23 July 2008 under the number 979082 in respect of goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’:

– the German word mark MUMM, which was registered on 16 April 2014 under the number 302014042199 in respect of goods in Class 33 corresponding to the following description: ‘Alcoholic beverages, except beers and champagne’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 24 August 2017, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion with the earlier international registration of the word mark MM.

9 On 23 October 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 12 July 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.

11 The Board of Appeal, like the Opposition Division, began by comparing the mark applied for with the earlier international registration of the word mark MM. To that end, it analysed the mark applied for. It found, in paragraph 25 of the contested decision, that the figurative element of that mark was limited to the stylisation of the letters and the presence of a device consisting of a crown. It took the view that that device was quite common in connection with the goods applied for. It likewise found, in paragraph 26 of the contested decision, that part of the relevant public, consisting of average consumers with an average level of attention, would, on account of its small size, secondary position and proximity to the words ‘natural’ in English, Spanish and Portuguese, ‘naturel’ in French, ‘naturlig’ in Danish and ‘naturale’ in Italian, pay only scant attention to the word ‘natura’ in the mark applied for. Lastly, in paragraph 27 of the contested decision, the Board of Appeal found that the term ‘mim’, which was in a central position, was the element that was most likely to attract the attention of the average consumer.

12 At the end of the assessment of the likelihood of confusion, the Board of Appeal found, in paragraphs 37 and 38 of the contested decision, that, in view of the similarity between the sign applied for and the earlier international registration of the word mark MM and the identity of the goods they covered, the likelihood of confusion was real in a substantial part of the European Union.

13 The Board of Appeal then examined the likelihood of confusion with the earlier German word mark MUMM.

14 It first of all found, in paragraph 42 of the contested decision, that there was visual similarity between the signs at issue, connected, in particular, with the presence of the letter ‘m’ in each of those signs, and that the presence, in the sign applied for, of the letter ‘i’, the device of the crown and the word ‘natura’ and, in the earlier sign, of an additional letter ‘m’ did not outweigh that similarity. Next, in paragraph 43 of the contested decision, it found that there was phonetic similarity, in spite of, in particular, the difference relating to the presence of the vowel ‘i’ in the sign applied for and the vowel ‘u’ in the earlier sign. Lastly, in paragraph 44 of the contested decision, it found that it was not possible to make a conceptual comparison, because the signs as a whole had no meaning in any language.

15 After finding that the goods covered by the marks at issue were identical, since the mark applied for included the goods covered by the earlier mark, the Board of Appeal concluded, in paragraphs 47 to 49 of the contested decision, that the identity of the goods attenuated any differences between those marks and that therefore the similarity of the marks pointed to the existence of a likelihood of confusion in Germany.

18 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 in that, first, the Board of Appeal erred in finding that the mark applied for was similar to the earlier international registration of the word mark MM and to the earlier German word mark MUMM and in that, secondly, the Board of Appeal erred in focusing its analysis on the presence of the letter ‘m’ in the signs under comparison.

19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

20 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 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

21 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 of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

22 The perception of the marks by the average consumer of the category of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

23 It is in the light of the foregoing considerations that the applicant’s arguments must be examined.

24 For reasons of procedural economy, the Court considers it appropriate to assess whether the contested decision is lawful by beginning with an examination of whether the Board of Appeal was right in finding that there was a likelihood of confusion between the mark applied for and the earlier German word mark MUMM (see, to that effect, judgment of 25 January 2017, Sun System Kereskedelmi és Szolgáltató v EUIPO — Hollandimpex Kereskedelmi és Szolgáltató (Choco Love), T‑325/15, not published, EU:T:2017:29, paragraph 26).

25 The Board of Appeal, after first pointing out that, for the opposition to be upheld, it was sufficient that a relative ground for refusal existed in part of the European Union, also pointed out, in paragraph 41 of the contested decision, that the earlier mark MUMM was protected in Germany. It thus assessed whether there was a likelihood of confusion in the territory of that Member State, taking into account the relevant public consisting of average consumers who were members of the general public and paid an average level of attention when purchasing the goods at issue, in the present case alcoholic beverages. Lastly, the Board of Appeal found, in paragraph 46 of the contested decision, that the goods covered by the marks at issue were identical.

26 It must be pointed out that those findings on the part of the Board of Appeal are not disputed in the context of the present action and that there are, moreover, no grounds on which they could be called into question. It is therefore in the light of those findings that the merits of the various complaints that the applicant has made in the context of the present plea must be assessed. It must also be pointed out, as observed by the Board of Appeal, that, where goods are aimed both at consumers with an average level of attention and at consumers with a high level of attention, it is, of those two groups, that with the lower level of attention which must be taken into account (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited).

27 The applicant complains, in essence, that the Board of Appeal did not compare the signs at issue as a whole and disregarded the figurative element of the mark applied for. It submits that the mark applied for is a figurative mark consisting of the words ‘mim’ and ‘natura’, with typeface in an original font, and that it also incorporates graphic elements, such as a crown placed on the capital letter ‘I’, which bestow obvious distinctiveness upon it.

29 As is apparent from 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

30 It must also be borne in mind that, according to the case-law, where a mark consists of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by citing their name than by describing the figurative element (see judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited, and of 6 September 2013, Leiner v OHIM — Recaro (REVARO), T‑349/12, not published, EU:T:2013:412, paragraph 23 and the case-law cited).

31 In the present case, as regards, first, the figurative element consisting of a crown, it must be stated, as observed by EUIPO, that that figurative element will be perceived by the consumer as essentially decorative, or even laudatory (see, to that effect, judgment of 19 January 2017, Stock Polska v EUIPO — Lass & Steffen (LUBELSKA), T‑701/15, not published, EU:T:2017:16, paragraph 33 and the case-law cited). Likewise, as the Board of Appeal pointed out in paragraph 25 of the contested decision, a finding which the applicant does not dispute, the crown is a figurative element that is commonly used in the beverages sector, especially that of alcoholic beverages, and that also precludes it from being capable of having a decisive influence on the overall perception of the mark applied for and distinguishing the goods covered by that mark from those of other undertakings.

32 As regards, secondly, the element ‘natura’ in the mark applied for, besides being commonly used, in the context of the goods covered, to describe food and beverages that have undergone minimal processing and do not contain any preservatives or additives and therefore, in view of its allusive nature, being weakly distinctive with regard to the goods at issue, that term consists of small letters and occupies a secondary position in the mark applied for because it is placed directly under the element ‘mim’, with the result that the consumer will pay only scant attention to it.

33 As regards, thirdly, the font used, the applicant claims that it is original. However, it must be stated that that font, which, moreover, concerns only the element ‘mim’, because the term ‘natura’ is written in a standard font, is relatively simple and does not include any striking graphic elements apart from the bases of the capital letters ‘M’, the calligraphy of which is very slightly stylised, with the result that the consumer will not pay particular attention to it.

34 Furthermore, it must be borne in mind that, even though the 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, that principle does not, however, 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 judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

35 In that regard, it is evident that the Board of Appeal did not err in its assessment of the figurative elements in the mark applied for, when, in essence, it found that the word elements in that mark were more distinctive than the figurative elements, in particular the representation of a crown, and that the term ‘mim’, since it was in a central position in the mark applied for, was the element that was most likely to attract the attention of consumers.

36 From a visual standpoint, the Board of Appeal found, in paragraph 42 of the contested decision, that there was visual similarity between the signs at issue. In that regard, first, it pointed out that the mark applied for reproduced the letter ‘m’ in the earlier mark and that the public’s attention would be drawn to that letter as it appeared both at the beginning and at the end of the dominant word element in the mark applied for and also appeared at the beginning and the end of the earlier mark. Secondly, the Board of Appeal pointed out that the differences relating to the presence in the mark applied for of the capital letter ‘I’ and the device of the crown, to the descriptiveness of the word ‘natura’ and to the presence of the additional letter ‘m’ in the earlier sign were not visually significant.

37 The applicant disputes the Board of Appeal’s finding that the marks at issue are similar and takes the view that there are obvious visual differences. It submits that the mark applied for is a figurative mark consisting of the words ‘mim’ and ‘natura’, with typeface in an original font, and also incorporates graphic elements, such as a crown placed on the capital letter ‘I’, which bestow obvious distinctiveness upon it, whereas the earlier German word mark MUMM contains no distinctive visual element that resembles the sign applied for.

39 As regards the visual comparison, it must be pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

40 In the present case, it must be stated that, from a visual standpoint, the earlier sign MUMM and the dominant word element in the sign applied for, namely the element in capital letters ‘MIM’, begin and end with the capital letter ‘M’. They differ only in the presence of the capital letter ‘I’ in the middle of the element ‘MIM’ and in the presence of the capital letter ‘U’ and the additional final capital letter ‘M’ in the earlier sign MUMM. That dissimilarity, as well as the presence of figurative elements and of the element ‘natura’ solely in the sign applied for, cannot, in the light of the considerations set out in paragraphs 29 to 35 above, outweigh the abovementioned similarities between the signs at issue.

41 Accordingly, it must be held that the Board of Appeal was right in finding, in paragraph 42 of the contested decision, that there is visual similarity between the signs at issue.

42 In paragraph 43 of the contested decision, the Board of Appeal found that there was phonetic similarity on account, in particular, of the coincidence in the sound of the letter ‘m’, which the marks at issue had in common and which was situated at the beginning and at the end of those marks, whereas the presence of the word ‘natura’ in the mark applied for did not have any bearing, because consumers would not pronounce that word to describe the wine when ordering it. It found that the difference relating to the presence of the letter ‘u’ in the earlier mark and the letter i’ in the mark applied for did not outweigh the phonetic similarity due to the sound of the letter ‘m’, which those marks had in common.

43 The applicant submits that the phonetic comparison between the signs MUMM and MIM NATURA has to lead to the finding that those signs will be pronounced differently, in particular because the latter sign consists of two separate words. Furthermore, the applicant disputes the Board of Appeal’s finding, as set out in the phonetic comparison of the signs at issue, that the difference in the vowel ‘i’ in the mark MIM NATURA and the vowel ‘u’ in the earlier mark MUMM might not be heard in the noisy atmosphere of bars and restaurants. The applicant maintains, first, that that comparison between the signs at issue is not based on objective factors and, secondly, that, in fact, a diner in a restaurant has the opportunity to read the different existing options in the wine list and consult the waiter about them.

45 Regarding the phonetic comparison of the signs at issue, it must be stated that, since, as has been mentioned in paragraph 32 above, the element ‘natura’ can at the very most be taken into consideration only as a secondary element, the dominant word element of the sign applied for, namely ‘mim’, and the earlier sign MUMM coincide in the pronunciation of the letter ‘m’ at the beginning and the end of each of them. In that regard, the presence of the additional letter ‘m’ at the end of the earlier mark MUMM does not have any bearing, since, as the Board of Appeal pointed out in paragraph 43 of the contested decision, it does not alter the pronunciation of that mark.

46 The only difference in the pronunciation of the element ‘mim’ and the earlier mark MUMM lies ultimately in the pronunciation of the vowel ‘i’ in the former and the vowel ‘u’ in the latter. However, that difference appears to be secondary in comparison with the similarity resulting from the presence in common of the letter ‘m’ in the marks at issue.

47 Furthermore, the Board of Appeal was also entitled to find, without erring, that that difference would be of little relevance since it would, in particular, be attenuated in a noisy environment such as a bar or a restaurant, in which the goods concerned are often ordered orally, and that the difference in pronunciation of the signs at issue would not therefore be perceived by part of the relevant public (see, to that effect, judgment of 11 September 2014, Aroa Bodegas v OHIM — Bodegas Muga (aroa), T‑536/12, not published, EU:T:2014:770, paragraphs 54 to 56).

48 In that regard, it must be pointed out that the applicant’s argument that, in fact, a diner in a restaurant will also have the opportunity to read the different existing options in the wine list and consult the waiter about them does not in any way detract from the relevance of the Board of Appeal’s findings that the environment of a bar or a restaurant is generally noisy, which, with regard to goods in the wine sector which consumers often describe and recognise on the basis of a word element if they order them orally, alters, with regard to a significant part of the relevant public, the accuracy of the phonetic perception of the mark that designates those goods.

49 Accordingly, it must be held that the Board of Appeal was right in finding that there is phonetic similarity between the signs at issue.

50 The Board of Appeal pointed out, in paragraph 44 of the contested decision, that it was not possible to carry out a conceptual comparison of the marks at issue on account of their lack of meaning in any language.

51 The applicant submits, on the contrary, that the expression ‘mim natura’ clearly evokes a meaning of ‘nature’ and that the term ‘mumm’ is a German word which can mean ‘insides, bowels, backbone, intestines and courage’. It maintains that it follows that the different concepts which are conveyed by the marks at issue preclude any kind of conceptual connection between them and that it must therefore be concluded that there is no similarity between them and no likelihood of confusion.

52 EUIPO does not, in the response, set out any views as regards the conceptual comparison.

54 As regards the conceptual comparison, it must be pointed out, as the Board of Appeal observed in paragraph 26 of the contested decision, that, in the sign applied for, the element ‘natura’ is secondary and has at the very most a banal meaning with regard to describing beverages whilst the figurative element consisting of a crown conveys only a vague laudatory message. The Board of Appeal was therefore right in relying on the dominant element, namely the term ‘mim’, in carrying out the conceptual analysis of the mark applied for. In that regard, it did not err in finding that the mark applied for had no meaning in any language.

55 By contrast, as regards the meaning of the earlier sign MUMM, it must be pointed out that, as the applicant submits, contrary to what the Board of Appeal found in paragraph 44 of the contested decision, that sign is not devoid of any meaning in German, because, in that language, it means, inter alia, ‘courage’ or ‘guts’. EUIPO does not dispute that in the response. The intervener, although it does not claim that the term ‘mumm’ is totally lacking in meaning, confines itself to maintaining that it has no meaning with regard to the goods in question. Moreover, the meaning of the word ‘mumm’ as put forward by the applicant is borne out by the information given in the German-language dictionary Duden Online.

56 In those circumstances, if only one of the signs at issue, in the present case MUMM, conveys a concept or concepts, it must be held that those signs are not conceptually similar (see, to that effect, judgment of 12 June 2019, EOS Deutscher Inkasso-Dienst v EUIPO — IOS Finance EFC (IOS FINANCE), T‑583/17, not published, EU:T:2019:403, paragraph 87).

57 It follows from the foregoing that there are visual and phonetic similarities between the signs at issue. By contrast, they are not conceptually similar, contrary to what was found by the Board of Appeal, which took the view, in paragraph 44 of the contested decision, that it was not possible to carry out a conceptual comparison.

58 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

59 In the present case, the Board of Appeal found, in paragraph 47 of the contested decision, when carrying out the global assessment of the likelihood of confusion, that, given the coincidence in the letter ‘m’ at the beginning and at the end of the marks at issue, those marks were visually and phonetically similar. It took the view that the figurative elements of the mark applied for were merely decorative and that the additional word element ‘natura’ was descriptive and not very distinctive. It likewise pointed out that the goods in question were beverages which would often be ordered in noisy establishments and that the phonetic difference relating to the presence in the middle of those marks of the letters ‘i’ and ‘u’ respectively was not relevant. On account of the similarity of the marks at issue and the identity of the goods covered by those marks, the Board of Appeal found that there was a likelihood of confusion in Germany.

60 The applicant submits that the Board of Appeal, by relying on the supposed similarity of the signs at issue, erred in finding that there was a likelihood of confusion, whereas there is no such likelihood of confusion and it is perfectly possible for those signs to co-exist on the market, regardless of the reputation of the earlier mark.

62 In view of the foregoing assessments as regards the comparison of the marks at issue and the goods covered by those marks, the global assessment of the likelihood of confusion as carried out by the Board of Appeal must be upheld, notwithstanding the fact that the Board of Appeal found that it was not possible to carry out a conceptual comparison whereas it should have found that the marks at issue were not conceptually similar.

63 Although, according to the case-law, conceptual differences can, in certain circumstances, counteract the visual and phonetic similarities between the signs at issue, for there to be such a counteraction, at least one of those signs must have a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (see judgment of 27 October 2005, Editions Albert René v OHIM — Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 80 and the case-law cited).

64 However, it must be held that the conceptual difference between the signs at issue is not, in the circumstances of the present case, capable of counteracting the similarities that have been found to exist.

65 Although German consumers perceive the term ‘mumm’ as meaning ‘courage’ or ‘guts’, that word relates to abstract concepts which do not, in connection with the goods covered by the marks at issue, give rise to associations that could make it easier for the sign to be remembered on the basis of the meaning of the word element of which it consists (see, to that effect, judgment of 13 April 2005, Duarte y Beltrán v OHIM — Mirato (INTEA), T‑353/02, not published, EU:T:2005:124, paragraph 34).

66 Furthermore, even if the degree of similarity between the marks at issue were low, a likelihood of confusion on the part of German consumers can exist if the goods covered by the marks at issue are identical, which is the case here (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 21).

67 In those circumstances, the Board of Appeal was right in finding in paragraph 47 of the contested decision that, even if the average consumer was capable of detecting certain differences between the marks at issue, the risk that he might associate them with each other was very real.

68 It must therefore be held, as the Board of Appeal found, that there is a likelihood of confusion between the marks at issue, in view of the identity of the goods that they cover, the average level of attention of the relevant public and the fact that there are visual and phonetic similarities between the signs. The phonetic similarity is particularly important with regard to the goods at issue because those goods are, as the Board of Appeal pointed out (see paragraph 47 above), often consumed after being ordered orally.

69 Consequently, the contested decision must be upheld since it was found in that decision that there is a likelihood of confusion between the marks at issue.

The taking into account of the letter ‘m’ in the signs under comparison and the existence of earlier marks that consist of that letter and cover goods in Class 33 that are identical to those covered by the mark applied for

70 The applicant also disputes the Board of Appeal’s analysis in so far as the Board of Appeal, in the applicant’s view, focused on the presence of the letter ‘m’ in the marks under comparison although the presence of that letter is not sufficient to prevent registration of the mark applied for. In that regard, the applicant refers to EU trade marks which have been accepted for registration although they consist solely of the letter ‘m’ and cover goods in Class 33, which, according to the applicant, proves the weakness of the distinctive character of the marks that were relied on in support of the opposition in the present case. Lastly, the applicant submits that, although previous decisions adopted by EUIPO are not binding, the peaceful coexistence of numerous trade marks consisting solely of the letter ‘m’ which have been registered in respect of goods in Class 33 contradicts the argument that there are grounds for refusing registration of the mark applied for.

72 As regards the applicant’s argument that the Board of Appeal erred in focusing its analysis on the presence of the letter ‘m’ in the marks at issue, it must be pointed out that, in essence, that argument has already been addressed in paragraphs 35, 40 and 45 above. When the analysis of the marks at issue was carried out, it was found that the element ‘MIM’ in the mark applied for, an element which itself contains two occurrences of the letter ‘m’, had to be taken into account as the dominant element in that mark for the purposes of the comparison with the earlier mark, which contains three occurrences of the letter ‘m’.

73 The letter ‘m’ must therefore, in view of the composition of the marks at issue, be taken into account and it cannot be maintained that the Board of Appeal made an error of assessment in that regard. The applicant’s argument is therefore unfounded.

74 Accordingly, the applicant’s line of argument, in so far as it is also based on the existence of EU trade marks consisting solely of the letter ‘m’ that have already been registered in respect of goods in Class 33 and on the peaceful coexistence of those trade marks on the market, is ineffective, because it has no effect on the analysis of the marks at issue in the present case and the comparison of those marks.

75 Consequently, the single plea in law put forward by the applicant must be rejected as, in part, unfounded and, in part, ineffective and the action must therefore be dismissed in its entirety, without there being any need to examine whether there is also a likelihood of confusion between the mark applied for and the international registration of the word mark MM, designating the European Union (see, to that effect, judgment of 15 February 2017, Morgese and Others v EUIPO — All Star (2 STAR), T‑568/15, not published, EU:T:2017:78, paragraph 90).

76 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.

77 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) >> Vins el Cep v EUIPO - Rotkappchen-Mumm Sektkellereien (MIM NATURA) (EU trade mark - Judgment) [2019] EUECJ T-589/18 (19 December 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T58918.html Cite as: EU:T:2019:887, [2019] EUECJ T-589/18, ECLI:EU:T:2019:887

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