Altunis v EUIPO - Hotel Cipriani (CIPRIANI) (Intellectual, industrial and commercial property - Judgment) [2018] EUECJ T-438/16 (01 March 2018)

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(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark CIPRIANI — Earlier EU word mark HOTEL CIPRIANI — Genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009 (now Article 47(2) of Regulation (EU) 2017/1001) — Relative ground for refusal — Likelihood of confusion — Similarity of the goods and services — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001))

Altunis-Trading, Gestão e Serviços, Lda, established in Funchal (Portugal), represented by A. Vanzetti, S. Bergia and G. Sironi, lawyers,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and D. Walicka, acting as Agents,

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

Hotel Cipriani Srl, established in Venice (Italy), represented initially by P. Cantrill, Solicitor, and B. Brandreth, Barrister, and subsequently by B. Brandreth, A. Poulter and P. Brownlow, Solicitors,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 7 June 2016 (Case R 1889/2015‑4), relating to opposition proceedings between Hotel Cipriani and Altunis-Trading, Gestão e Serviços,

composed of A.M. Collins, President, M. Kancheva and J. Passer (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 5 January 2017,

having regard to the response of the intervener lodged at the Court Registry on 12 January 2017,

1 In 1956, Mr Guiseppe Cipriani — the father of Mr Arrigo Cipriani, the legal representative of the applicant, Altunis-Trading, Gestão e Serviços, Lda — and a third party created Hotel Cipriani SpA, the legal predecessor of the intervener, Hotel Cipriani Srl.

2 In 1966, the shares in Hotel Cipriani SpA held by the third party referred to in paragraph 1 above were transferred to Stondon, Ondale and Patmore Company Ltd.

3 In 1967, Mr Giuseppe Cipriani and Stondon, Ondale and Patmore Company concluded an agreement under which all of the shares in Hotel Cipriani SpA held by Mr Cipriani were transferred to Stondon, Ondale and Patmore Company (‘the 1967 Agreement’). Furthermore, the agreement contained a series of provisions relating to the use of the name Cipriani.

4 On 27 September 2012, the applicant filed an application for protection in the European Union of international registration No 1127870 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)).

5 The international registration in respect of which protection was sought is the word sign CIPRIANI.

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

7 On 28 June 2013, the intervener filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to the application for protection in respect of all the goods referred to in paragraph 6 above, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 The opposition was based on the earlier EU word mark HOTEL CIPRIANI designating services in Class 42 (now Class 43) and corresponding to the following description: ‘Hotels, hotel reservation, restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption’.

9 On 22 July 2015, the Opposition Division upheld the opposition brought by the intervener in respect of all the goods referred to in paragraph 6 above.

10 On 21 September 2015, 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 Opposition Division’s decision.

11 By decision of 7 June 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal as follows: first, the Board of Appeal noted the genuine use of the earlier mark. Secondly, it considered that there was an average degree of similarity between the goods in question and the services protected by the earlier trade mark and that the degree of similarity between the marks was rather high. Accordingly, it concluded that there was a likelihood of confusion on the part of the relevant public concerning all of the contested goods.

– reject the opposition brought by the intervener and refer the case back to EUIPO;

14 The applicant raises two pleas in law, the first alleging infringement of Article 15 and Article 42(2) of Regulation No 207/2009 (now Article 18 and Article 47(2) of Regulation 2017/1001) as well as of Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), and the second alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

15 In addition, the applicant submits that any action brought by the intervener against the Cipriani Group, to which the applicant belongs, concerning the name Cipriani constitutes an infringement of the 1967 agreement, an agreement which, it argues, is binding on the parties.

First plea in law, alleging infringement of Articles 15, 42(2) and 8(1)(b) of Regulation No 207/2009, read in conjunction with Rule 22(3) of Regulation No 2868/95

17 As a preliminary point, it should be noted that the applicant does not dispute that the mark HOTEL CIPRIANI has been put to genuine use in respect of the intervener’s hotel services, namely the services relating to ‘hotels’ and ‘hotel reservation’ (‘the hotel services’). As regards the intervener’s bar and restaurant services, namely ‘restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption’ (‘the bar and restaurant services’), the applicant also does not dispute the findings set out in the contested decision concerning the time and place of use of the mark in respect of those services.

18 By contrast, it disputes the findings concerning the extent and nature of use of the bar and restaurant services, which led the Board of Appeal to conclude that the mark was being put to genuine use in respect of those services.

19 In accordance with settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), read in the light of recital 10 of Regulation No 207/2009 (now recital 24 of Regulation 2017/1001) and Rule 22(3) of Regulation No 2868/95 that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is sound commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. By contrast, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedi & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).

20 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

21 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM — Espadafor (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

22 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).

23 In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence of the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).

24 In essence, this plea is divided into two parts, as follows: in the first place, the applicant considers that the Board of Appeal did not sufficiently examine the fact that the bar and restaurant services constitute services which are ancillary to the hotel services; in the second place, the applicant notes that, for the bar and restaurant services, the intervener uses signs that are different from the mark on which the opposition is based.

First part of the first plea in law, alleging that the bar and restaurant services are ancillary to the hotel services

25 The applicant submits that the Board of Appeal made manifest errors of assessment in considering that the intervener had adduced evidence that the mark HOTEL CIPRIANI had been put to genuine use in respect of the bar and restaurant services in the five years preceding the filing of the mark CIPRIANI. In addition, in its view, the mark HOTEL CIPRIANI has not been put to genuine use as regards the bar and restaurant services, as those services are merely ancillary to the hotel services.

26 According to the applicant, it is clear from the case-law of the Court that, in order for it be possible to find that a mark has genuinely been used, it is not sufficient for the mark to be associated with a service. Although proof of use has been furnished for the hotel services, the intervener has failed to furnish proof of the genuine use of the mark in respect of the bar and restaurant services.

27 EUIPO refutes the assertion regarding the ancillary nature of the bar and restaurant services, emphasising that the evidence of use contained in the case file shows that those services have been provided separately and independently from the hotel services. They are also offered to customers from outside the hotel (Hotel Cipriani) and represent a significant proportion of that hotel’s revenue.

28 The intervener concurs with the Board of Appeal’s interpretation, supported by EUIPO, as regards the independent nature of the bar and restaurant services. It contends that those services have a particular reputation, independent of the hotel services. Moreover, it contends that the bar and restaurant services are recommended to and made use of by customers not staying at the hotel.

29 As stated in paragraph 18 of the contested decision, and as follows from the analysis of the documents in EUIPO’s case file sent to the Court, in order to establish the genuine use of the earlier mark, the intervener furnished, inter alia, the following evidence:

– the undated witness statement of Mr Philip Calvert, Vice‑President for legal and commercial affairs of Belmond Ltd, the holding company of Hotel Cipriani Srl, which summarises the indications of place, time, extent and nature contained in the attached evidence;

– several invoices featuring the sign HOTEL CIPRIANI, dating from 4 June 2008 to 26 September 2011 and thereby falling within the relevant period, which refer primarily to bar and restaurant services and are addressed to customers established in, inter alia, Belgium, Denmark, France, Italy, Finland and the United Kingdom; the address of the hotel also appears on the invoices;

– screenshots from the Tripadvisor website with information and comments concerning ‘belmond hotel Cipriani’; the comments cover a long period and some of them fall within the relevant period;

– an extract from the magazine You & Your Wedding, dated 1 September 2010 concerning ‘hotel cipriani’ and its restaurant and catering services;

– an extract from the Best Hotels guide, dating from 2011, bearing the sign HOTEL CIPRIANI written in Italian and English;

– an extract from the Departures Venice guide in which the sign HOTEL CIPRIANI is used on certain images and refers to hotel, restaurant and bar services;

– an article from the magazine Condé Nast Traveller, dating from January 2009, indicating amounts in pounds sterling and euros and referring to accommodation, restaurant and bar services provided by ‘hotel cipriani’;

– a price list for ‘bar cipriani’ bearing the sign HOTEL CIPRIANI at the bottom of the last page; the list of ingredients is in English;

– a price list dating from 2008 which features the sign HOTEL CIPRIANI and displays the prices in euros for the services of accommodation and delivery of food and drink;

– a brochure relating to banquet services bearing the sign HOTEL CIPRIANI, written in English and Italian, the prices of which are expressed in euros;

– a copy of a ‘children’s menu’ setting out a list of dishes in English and Italian.

30 As regards the analysis of the extent of use in the contested decision, the Board of Appeal found that the trade mark had been used as a trade mark not only for hotel services, but also for services relating to food and drink. Furthermore, it is clear from the documents produced by the intervener that, even though the restaurants and bars located in the hotel had their own name, customers chose them and recognised them because of the sign HOTEL CIPRIANI. In addition, consumer comments and guides make express mention of the words ‘hotel cipriani’ and they also explain that that hotel provides bar and restaurant services and that it is possible to organise weddings and other events there. According to the documents produced by the intervener, the services relating to food and drink account for close to 30% of the hotel’s total revenue.

31 Genuine use must be proven by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned, and cannot be supposed on the basis of probabilities (judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 37). The mark must have been used publicly and outwardly (judgments of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37, and of 30 April 2008, Rykiel création et diffusion de modèles v OHIM – Cuadrado (SONIA SONIA RYKIEL), T‑131/06, not published, EU:T:2008:135, paragraph 38).

32 As EUIPO submits, it should be noted that the intervener’s bar and restaurant services are mentioned in brochures and guides that include the mark HOTEL CIPRIANI. Furthermore, it is apparent from a number of invoices dating from the relevant period that those services have economic value and a significant commercial volume, independent of the hotel services.

33 It follows from the foregoing that, as regards the alleged ancillary nature of the intervener’s restaurant services, the Board of Appeal was fully entitled to find that there had been genuine use of the earlier mark, including for the services of ‘cafeterias, bars, catering; delivery of beverages for immediate consumption’ in Class 42 (now Class 43). Consequently, the first part of this plea must be rejected.

Second part of the first plea in law, alleging that different marks are used in respect of the bar and restaurant services

34 According to the applicant, the intervener uses signs that are different from the mark HOTEL CIPRIANI and do not contain the words ‘hotel cipriani’ to designate its bar and restaurant services. Therefore, in its view, consumers will not make a connection between the bar and restaurant services, on the one hand, and the hotel services, on the other. Thus, it argues that genuine use of the mark HOTEL CIPRIANI has not been demonstrated in respect of those bar and restaurant services.

35 EUIPO refutes the assertion that the use of a name other than the mark HOTEL CIPRIANI in respect of the bar and restaurant services will lead the relevant public not to associate those services with the earlier trade mark. It argues that the intervener’s bars and restaurants, offered under different signs, are generally, even constantly, mentioned in connection with the earlier trade mark. Furthermore, EUIPO maintains that it is common for customers of the intervener’s bars and restaurants to mention the earlier trade mark when referring to restaurant services. In addition, EUIPO contends that the applicant has not adduced any evidence that the use of different names together with the earlier trade mark would affect the genuine nature of the use of that mark.Therefore, in EUIPO’s view, the Board of Appeal correctly assessed the genuine use of the earlier mark by carrying out a global assessment of all the evidence produced, especially the invoices, booklets and brochures.

36 The intervener emphasises that it is possible to adduce evidence of use of the mark HOTEL CIPRIANI by establishing a link between the use of the mark and the bar and restaurant services provided under a different name. Such a link is, it argues, likely to be established by the common use by third parties of the earlier trade mark in such a way as to denote those services.Lastly, the intervener contends that, since those bar and restaurant services have been provided under the sign ‘HOTEL CIPRIANI’, they are capable of conferring genuine use on the earlier trade mark, even if they were held to be services ancillary to the hotel services or bearing a different name to that mark. Moreover, the intervener remarks that it is surprising that the applicant disputes that the mark HOTEL CIPRIANI has been put to genuine use in respect of the bar and restaurant services. In a judgment of 9 December 2008 of the High Court of Justice (England and Wales), Chancery Division, in a dispute between the intervener and the chairman of the applicant company in the present case, the reputation of the mark CIPRIANI and its use by the intervener were recognised in respect of restaurant services.

37 Having regard to that judicial decision of 2008, it follows from a consistent line of case-law that, while EUIPO is not bound by decisions delivered by national authorities, EUIPO may nevertheless take those decisions into consideration, without them being binding or even determinative, as indicia in the assessment of the facts of the case (see judgment of 18 March 2016, Karl-May-Verlag v OHIM — Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 36 and the case-law cited). Accordingly, the parties may rely on those decisions delivered by the national authorities, as indicia, in support of their arguments.

38 In that regard, as EUIPO observed, the applicant has not proved that the relevant public would consider that the intervener’s bar and restaurant services were offered under the other signs referred to in paragraph 34 above, at the expense of the earlier mark.

39 On the contrary, it is apparent from the documents referred to by the applicant that the earlier mark is always indicated in bold and in capitals, whereas the other signs are barely visible. In addition, the invoices produced by the intervener in EUIPO’s case file show that its invoices feature the earlier mark in the header, whereas the other signs appear only on some of them and, if so, in small print.

40 According to the case-law, there is no rule in the EU trade mark system that obliges the opponent to prove the use of the earlier mark on its own, independently of any other mark or sign. Therefore, a case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company (see, to that effect, judgments of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34, and of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100). Thus, as contended by EUIPO, joint use of the name of the mark with the earlier mark cannot undermine the function of the mark as a means of identifying the services at issue (see, to that effect, judgment of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 36).

41 The Board of Appeal was thus fully entitled to find that there had been genuine use of the earlier mark, including for the services of ‘cafeterias, bars, catering; delivery of beverages for immediate consumption’. Consequently, the second part of the first plea in law must also be rejected and, accordingly, so also must that plea in law in its entirety.

Second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 concerning the assessment of the similarity between the goods and services at issue

42 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an 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, pursuant to Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), the term ‘earlier trade marks’ means inter alia 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.

43 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or 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).

44 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right to conclude that the conditions for applying Article 8(1)(b) of Regulation No 207/2009 were met in the present case.

45 As a preliminary point, it should be noted that before the Court the applicant does not dispute the findings of the Opposition Division, reproduced by the Board of Appeal, that the relevant public is that of the European Union.

46 The applicant criticises the Board of Appeal on the ground that it concluded, incorrectly interpreting the concept of complementarity and its assessment criteria, that the goods covered by the application for protection were similar to the services covered by the earlier mark. It concedes that the bar and restaurant services are closely connected with the contested goods. However, besides the existence of a close connection between the goods and services in question, the applicant argues that complementarity also requires that consumers believe that the same undertaking is responsible for the manufacture of those goods and for the provision of those services. That assessment must not be carried out by reference to abstract parameters, but in relation to the real likelihood of potential confusion on the part of consumers. However, according to the applicant, the Board of Appeal compared the goods and services in question without taking the circumstances of the particular case into consideration. Furthermore, the applicant submits that it is settled case‑law that, as a general rule, goods and services are, by their nature, different. Therefore, in its view, the Board of Appeal was wrong to conclude that the goods in Class 32 and the hotel services were complementary. In addition, the applicant submits that no similarity can be found between those goods and services.

48 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño Original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

49 Goods or services which are complementary are those with a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

50 It must be noted that the bar and restaurant services necessarily use the goods in question. It is obvious that restaurants and bars cannot effectively provide their services without offering and providing drinks to their customers. Bar service and the delivery of drinks are, by their nature, related to restaurant services and intended for the same public. Furthermore, food may be offered for sale in places which provide food and drink. Such goods are thus used and offered as part of the services of restaurants, brasseries and cafes. Those goods are therefore closely related to those services (judgments of 15 February 2011, Yorma’s v OHIM — Norma Lebensmittelfilialbetrieb (YORMA’S), T‑213/09, not published, EU:T:2011:37, paragraph 46, and of 13 April 2011, Bodegas y Viñedos Puerta de Labastida v OHIM — Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, not published, EU:T:2011:173, paragraph 52).

51 The applicant claims that the comparison must not be carried out by reference to abstract parameters, but in relation to the real likelihood of potential confusion on the part of consumers.

52 In that regard, the Board of Appeal rightly noted that it was common, nowadays, for ‘restaurants [to] not only sell but also produce their own beverages: coffee, wine …, beer … or … freshly squeezed juices, smoothies and cocktails’. Conversely, ‘many bakeries not only sell bread and pastries, but also offer coffee and small snacks, e.g. breakfasts, served at the table’.

53 Lastly, the applicant cites a number of decisions of the Board of Appeal or of the Opposition Division of EUIPO, and a judgment of 9 March 2005, Osotspa v OHIM — Distribution & Marketing (Hai) (T‑33/03, EU:T:2005:89), which, in its view, confirm the difference between the services in Class 42 (now Class 43) and the goods in Class 32.

54 EUIPO, in reply, contends that it is settled case-law that the legality of its decisions must be assessed solely with regard to Regulation No 207/2009 as interpreted by the Courts of the European Union and not on the basis of EUIPO’s previous decision-making practice. In that regard, EUIPO cites the case-law of the General Court which, it argues, establishes that beverages and bar and restaurant services in Class 42 (now Class 43) are complementary (judgments of 15 February 2011, YORMA’S, T‑213/09, not published, EU:T:2011:37, paragraph 46; of 13 April 2011, PUERTA DE LABASTIDA, T‑345/09, not published, EU:T:2011:173, paragraph 52, and of 18 February 2016, Harrys Pubar and Harry’s New York Bar v OHIM — Harry’s New York Bar and Harrys Pubar (HARRY’S BAR), T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraphs 59, 60 and 71). It cites in particular a judgment of 4 June 2015, Yoo Holdings v OHIM — Eckes‑Granini Group (YOO) (T‑562/14, not published, EU:T:2015:363, paragraphs 25 and 26), according to which the fruit drinks and fruit juices included in Class 32 and covered by the earlier marks were complementary to the services in Class 43.

55 The intervener contends that the decisions of the EUIPO authorities are irrelevant and that the applicant’s interpretation of the judgment of 9 March 2005, Hai (T‑33/03, EU:T:2005:89), is incorrect.

56 Having regard to the decisions of the adjudicating bodies of EUIPO, it should be borne in mind that the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU Courts, and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 5 February 2015, nMetric v OHIM (SMARTER SCHEDULING), T‑499/13, not published, EU:T:2015:74, paragraph 50).

57 With regard to the judgment of 9 March 2005, Hai (T‑33/03, EU:T:2005:89), it is clear that, in paragraphs 41 to 46 of that judgment, the Court states that the services in Class 42 (now Class 43) and the goods in Class 32 are ‘less similar’ having regard to the comparisons between the other goods and services covered by the marks at issue, of which it should be noted that some of the goods are included within the same class, namely Class 32.

58 Furthermore, the Court concluded, in paragraph 46 of that judgment, that the services included inter alia in Class 42 (now Class 43), covered by the trade mark application and including the services ‘accommodation and catering for guests’, on the one hand, and the goods covered by the earlier marks, included in Class 32 and designating ‘non-alcoholic drinks; syrups and other preparations for making beverages’, on the other hand, could not be regarded as being similar. In this respect, it should be noted that, although the numbers of the classes are identical in both cases and the goods concerned are also identical, the services concerned in Class 42, described in paragraph 5 of that judgment and recalled above, do not strictly correspond to the services as defined in paragraph 8 above.

59 More generally, the facts which gave rise to Case T‑33/03 must be distinguished from the facts relating to the present case described above. Case T‑33/03 primarily concerned energy drinks intended for a young public and usually subject to widespread distribution, for example in supermarkets (judgment of 9 March 2005, Hai, T‑33/03, EU:T:2005:89, paragraphs 38 and 63).

60 It follows from the foregoing that that case-law is not applicable in the present case. By contrast, as regards the comparison of the goods and services at issue, it should be recalled, as EUIPO has observed, that the General Court has, on numerous occasions, found similarity between the goods in Class 32 and the services in Class 42 (now Class 43) in its recent case-law (judgments of 4 June 2015, YOO, T‑562/14, not published, EU:T:2015:363, paragraphs 25 and 26; of 18 February 2016, HARRY’S BAR, T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraph 71, and of 18 February 2016, Harrys Pubar and Harry’s New York Bar v OHIM — Harry’s New York Bar and Harrys Pubar (HARRY’S NEW YORK BAR), T‑84/14 and T‑97/14, not published, EU:T:2016:83, paragraph 75).

61 Therefore, the Board of Appeal acted correctly in law in finding that the goods and services at issue were similar to a certain degree (see, to that effect, judgments of 12 December 2014, Comptoir d’Épicure v OHIM — A‑Rosa Akademie (da rosa), T‑405/13, EU:T:2014:1072, paragraphs 97 and 98 and the case-law cited, and of 4 June 2015, YOO, T‑562/14, not published, EU:T:2015:363, paragraphs 25 to 28).

62 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In 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).

63 The Board of Appeal took the view that the earlier sign is of average distinctiveness. Furthermore, the marks at issue are word marks of which the signs are visually and phonetically similar, in so far as they coincide in the word element ‘cipriani’. The Board of Appeal held that the element ‘hotel’ of the earlier trade mark differentiates the signs from each other, but that the distinctiveness of that element is weak with regard to the services provided by or in a hotel. Thus, the Board of Appeal concluded that the marks are visually and phonetically highly similar. When compared conceptually, the signs are neutral: that comparison has no impact on the assessment of the similarity of the marks.

64 The applicant has not disputed the Board of Appeal’s findings concerning the similarity between the signs at issue and the average distinctiveness of the earlier mark.

65 In the light of the foregoing, it must be held that the Board of Appeal was fully entitled to find that the earlier sign was of normal distinctiveness and that the marks were visually and phonetically highly similar.

66 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and, in particular, between the similarity of the 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 (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).

67 In the contested decision, the Board of Appeal considered that, in view of the normal distinctiveness of the earlier mark, the average degree of similarity between the goods and services at issue, the high degree of visual and phonetic similarity between the signs at issue and the neutral degree of conceptual similarity between those signs, there was a likelihood of confusion on the part of the relevant public with regard to the goods and services in question.

68 The applicant disputes that finding. According to the applicant, in order to conclude that there was a likelihood of confusion, the Board of Appeal should have carried out a comparison of the goods in question with the hotel services, on the one hand, and the restaurant services, in respect of which no proof of genuine use had been furnished, on the other. It asserts that such an analysis would have led to such a likelihood being ruled out, as it is obvious that goods in Class 32 bear no resemblance to services in Class 43. Furthermore, while it concedes that beverages are necessarily offered in the context of a restaurant’s activities, it considers that the beverages denoted by the mark CIPRIANI cannot be connected to the intervener by consumers, as consumers are capable of distinguishing between the provider of the service and the producer of the goods offered.The applicant submits that, since consumers will not think that the intervener produced the beverages, any likelihood of confusion between the marks must be ruled out.

69 EUIPO remarks that it is fairly common for restaurants to produce their own beverages. Thus, it is highly likely that the relevant public will be led to believe that the beverages are marketed by the same undertaking or to ascribe a ‘common commercial origin’ to the goods and services being provided. In addition, in support of its contention, EUIPO highlights the fact that the applicant itself adopts such behaviour. As a member of the Cipriani Group, the applicant produces and markets foods and beverages under the same mark as is used for its restaurants throughout the world, ‘with the aim to make the customers associate the “Cipriani” restaurants with the products bearing such mark’. In producing its own food and beverages, the applicant wishes to emphasise that it is marketing the goods offered, which it has manufactured itself.

70 The intervener supports and reproduces the arguments put forward by the Board of Appeal and by EUIPO. It also contends that it is fairly common for restaurants to not only sell but also produce their own beverages.

71 It should be recalled that the goods designated by the application for protection and the services covered by the earlier mark are closely connected and complementary.

72 The intervener was right to point out that ‘the fact that a restaurant sells goods under another brand does not preclude the consumer understanding that it is very common for it to sell goods under its own brand’. Thus, the consumer may actually be led to believe that a restaurant sells its own goods under its own brand, in addition to selling goods of different brands.

73 Furthermore, the Board of Appeal found a rather high similarity between the signs, without being challenged by the applicant.

74 Consequently, in view of the normal distinctiveness of the earlier trade mark, the average degree of similarity between the goods and services at issue, the high degree of visual and phonetic similarity between the signs at issue and the neutral degree of the conceptual similarity between those signs, there is a likelihood of confusion on the part of the relevant public.

75 It follows from the foregoing that the Board of Appeal was fully entitled to find that there was a likelihood of confusion between the application for protection and the earlier mark within the meaning of Article 8(1)(b) of Regulation No 207/2009. The plea in law based on the absence of any likelihood of confusion on the part of the relevant public must be rejected.

76 The foregoing conclusion cannot be altered by the existence of an agreement signed in 1967 between Mr Giuseppe Cipriani and Stondon, Ondale and Patmore Company, and in particular Clause 3 thereof.

77 The applicant submits that the contested decision did not take the 1967 agreement into consideration in the global assessment of the merits of the intervener’s opposition and that the opposition is contrary to that agreement in so far as, by that agreement, the applicant and the intervener had agreed that their respective marks could coexist.

79 It should be recalled that, in essence, the 1967 agreement restricts the right of its signatories to use the name Cipriani in the course of a new activity solely for a period of five years following its conclusion. On the other hand, it follows from Clauses 3.1 and 3.2 of the agreement that both Stondon, Ondale and Patmore Company and Mr Giuseppe Cipriani and his family could, in accordance with the applicable legal rules on the subject, create new businesses using the Cipriani name at the end of the five-year period (see, to that effect, judgment of 29 June 2017, Cipriani v EUIPO — Hotel Cipriani (CIPRIANI), T‑343/14, EU:T:2017:458, paragraph 59).

80 It must be held that the applicant makes that argument in the form of a mere observation, in paragraph 44 of its application, without developing it as a separate plea in law in support of its action for annulment. It follows, both from the overall presentation of the application and, explicitly, from the summary set out at the end of that document, that ‘Altunis appeals against the decision of the Board of Appeal on two grounds’, which were the subject of the analysis set out in paragraphs 17 to 75 above.

81 Moreover, the applicant has not identified, either during the proceedings before EUIPO or before the Court, any specific argument which serves to connect the allegation of infringement of the 1967 agreement to the pleas in law raised in support of its action. In particular, the applicant does not explain how the alleged infringement of the 1967 agreement could lead to the pleas raised in its action being upheld.

82 It should be recalled that, in accordance with the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, the application must contain the subject matter of the dispute, the pleas and arguments on which the application is based and a summary of those pleas. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (judgments of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 27, and of 3 December 2014, Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, not published, EU:T:2014:1020, paragraphs 17 and 18).

83 Accordingly, in the light of the foregoing, the argument based on the 1967 agreement is inadmissible (see, to that effect, judgment of 18 February 2016, HARRY’S BAR, T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraphs 25 to 28).

85 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

86 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) >> Altunis v EUIPO - Hotel Cipriani (CIPRIANI) (Intellectual, industrial and commercial property - Judgment) [2018] EUECJ T-438/16 (01 March 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T43816.html Cite as: EU:T:2018:110, ECLI:EU:T:2018:110, [2018] EUECJ T-438/16

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