Sun Stars & Sons v EUIPO - Valvis Holding (AC AQUA AC) (EU trade mark - Judgment) [2021] EUECJ T-638/19 (12 May 2021)

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(EU trade mark – Opposition proceedings – Application for the three-dimensional EU trade mark AC AQUA AC – Earlier three-dimensional EU and national trade marks VODAVODA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Sun Stars & Sons Pte Ltd, established in Singapore (Singapore), represented by M. Maček and C. Saettel, lawyers,

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

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

Valvis Holding SA, established in Bucharest (Romania), represented by D. Bogdan, G. Bozocea and M. Stănescu, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 6 August 2019 (Case R 649/2018-4), relating to opposition proceedings between Sun Stars & Sons and Valvis Holding,

composed of D. Spielmann (Rapporteur), President, U. Öberg and R. Norkus, Judges,

having regard to the application lodged at the Court Registry on 25 September 2019,

having regard to the response of EUIPO lodged at the Court Registry on 17 December 2019,

having regard to the intervener’s response lodged at the Court Registry on 12 December 2019,

having regard to the decision of 15 July 2020 joining Cases T‑637/19 and T‑638/19 for the purposes of the oral part of the procedure,

having regard to the designation of another Judge to complete the Chamber as one of its Members was prevented from acting,

having regard to the reassignment of the case to the Fifth Chamber and to a new Judge-Rapporteur,

1 On 5 January 2016, the intervener, Valvis Holding SA, 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 and services in respect of which registration was sought are in Classes 32, 35 and 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 32: ‘Mineral and aerated waters; still water; drinking water; quinine water; bottled water; aerated water (soda water); lemon barley water; orange barley water, coconut water as beverage; table waters; flavoured waters; spring water; glacier water; sparkling water (carbonated); mineral water [beverages]; flavoured mineral water; carbonated mineral water; aerated water; seltzer water; Lithia water; preparations for making mineral water; soda water; preparations for making soda water’;

– Class 35: ‘Advertising; business management, business administration; office functions; wholesaling and retailing, including via global computer networks, of mineral and aerated waters, still water, drinking water, quinine water, bottled water, aerated water (soda water), lemon barley water, orange barley water, coconut water as beverage; wholesaling and retailing, including via global computer networks, of table water, flavoured water, spring water, glacier water, sparkling water (carbonated), mineral water (beverages), flavoured mineral water, carbonated mineral water, aerated water; wholesaling and retailing, including via global computer networks, of seltzer water, Lithia waters, preparations for making mineral water, soda water, preparations for making soda water’;

– Class 39: ‘Transport, distribution, delivery, packaging and storage of mineral and aerated waters, still water, drinking water, quinine water, bottled water, aerated water (soda water), lemon barley water, orange barley water; transport, distribution, delivery, packaging and storage of coconut water as beverage, table water, flavoured water, spring water, glacier water, sparkling water (carbonated), mineral water (beverages), flavoured mineral water, carbonated mineral water, aerated water; transport, distribution, delivery, packaging and storage of seltzer water, Lithia water, preparations for making mineral water, soda water, preparations for making soda water’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/041 of 1 March 2016.

5 On 31 May 2016, the applicant, Sun Stars & Sons Pte Ltd, 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 and services referred to in paragraph 3 above.

– the three-dimensional EU trade mark, reproduced below, consisting of the shape of a bottle, registered on 20 April 2009 under No 7041098, covering goods in Classes 5 and 32 and corresponding, for each of those classes, to the following description:

– Class 32: ‘Aerated waters, mineral waters (beverages), table waters, spring waters’;

– the Slovenian three-dimensional mark, reproduced above, registered on 11 January 2010 under No 200970433, covering goods in Classes 5 and 32 and corresponding, for each of those classes, to the following description:

– Class 32: ‘Mineral waters and soda waters, namely natural spring waters’;

– the international registration designating Croatia for the figurative mark reproduced above, registered on 10 September 2009 under No 1019590, covering goods in Classes 5 and 32 corresponding, for each of those classes, to the following description:

– Class 32: ‘Mineral waters and soda waters, namely natural spring waters’.

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 3 November 2016, at the request of the intervener, the Opposition Division asked that the applicant be requested to furnish proof, pursuant to Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), that its earlier marks had been put to genuine use for the goods in respect of which they were registered and on which the opposition was based.

9 On 15 March 2017, the applicant submitted various documents to EUIPO with a view to establishing genuine use of the earlier EU trade mark and the earlier Slovenian mark.

10 By decision of 12 February 2018, the Opposition Division rejected the opposition in its entirety, on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

11 On 11 April 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

12 By decision of 6 August 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In the first place, it stated, as a preliminary point, that the applicant had not submitted any evidence in support of the existence, validity and scope of protection of the international registration designating Croatia in the opposition proceedings. Therefore, the Board of Appeal found that the examination of the opposition was limited to the earlier EU mark and the earlier Slovenian mark. In the second place, having confirmed, first, that the evidence submitted by the applicant was sufficient to establish genuine use of the EU trade mark to designate the goods in Class 32 and, second, having observed that none of the evidence referred to ‘mineral waters for medical purposes’ in Class 5 covered by the earlier mark, the Board of Appeal found that, in the absence of sufficient evidence demonstrating genuine use of the earlier Slovenian mark, the opposition based on that mark had to be rejected as being unfounded. In the third place, the Board of Appeal found, first, that the goods in Class 32 covered by the registered mark and the mark applied for were identical, second, that some of the services in Class 35 covered by the mark applied for were similar to an average degree to the applicant’s goods in Class 32 and, third, as regards some of the services in Class 35, and all the services in Class 39, it found that they were dissimilar. In the fourth place, the Board of Appeal found that the shape of the bottle was not a distinctive element of the earlier mark and that, therefore, the relevant public, in order to refer to the commercial origin of the goods covered by that mark, was more likely to take into account the word elements which appeared there than the shape of its packaging, namely the bottle. Lastly, in the fifth place, the Board of Appeal found that, on the part of the relevant public, with regard to the relevant goods and services in question and taking into account the low degree of visual similarity, the phonetic dissimilarity of the signs at issue and the lack of any conceptual comparison between the signs at issue, there was no likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001.

16 First, EUIPO and the intervener argue that Annexes A.10 to A.14 and Annexes A.16 and A.17 to the application are inadmissible on the ground that they were produced for the first time before the Court. According to the applicant, first, Annexes A.10 to A.13 seek to establish the alleged success of the shape of the bottle of the earlier mark, owing to its originality, on the market for mineral water bottles. Second, Annexes A.14, A.16 and A.17 are intended to establish a likelihood of confusion and of association on the part of consumers between the marks at issue.

17 Second, at the hearing, the applicant claimed that Annexes B.4 to B.8 to the intervener’s response were inadmissible on the ground that they were produced for the first time before the Court. According to the intervener, first, Annex B.4 is intended to demonstrate the state of the national proceedings concerning the cancellation of four Romanian marks and, second, Annexes B.5 to B.8 are intended to show that the square shape of the earlier bottle does not depart from the norms of the sector and is devoid of distinctive character in that it already exists on the market.

18 The annexes to the application and those to the intervener’s response set out above, which were produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so that it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

19 The documents referred to above must therefore be rejected as inadmissible and there is no need to assess their probative value.

20 It must be pointed out at the outset that, given the date on which the application for registration at issue was filed, namely 5 January 2016, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, in its original version (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

21 Furthermore, it must be recalled that, according to settled case-law, substantive rules are usually interpreted as applying to situations existing before their entry into force only in so far as it clearly follows from their terms, their objectives or their general scheme that such effect must be given to them (judgments of 12 November 1981, Meridionale Industria Salumi and Others, 212/80 to 217/80, EU:C:1981:270, paragraph 9, and of 11 December 2008, Commission v Freistaat Sachsen, C‑334/07 P, EU:C:2008:709, paragraph 44).

22 In that regard, it should be noted that, in the present case, the application for registration of the mark applied for was filed on 5 January 2016, the opposition was filed on 31 May 2016 and proof of use of the earlier mark was requested by the applicant on 3 November 2016. Articles 8 and 42 of Regulation No 207/2009, in its original version, and, as regards the examination of proof of use of the earlier mark, Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), are therefore applicable to the facts of the case.

23 It is true that the applicant refers, in its written pleadings, to the provisions of Regulation 2017/1001 which are not applicable in the present case, as established in paragraph 22 above. However, in so far as Article 8(1)(b) of Regulation 2017/1001 is identical to Article 8(1)(b) of Regulation No 207/2009, the references to the first article made by the applicant, the intervener and, where appropriate, by the Board of Appeal must be understood as referring to that second article. Similarly, the Board of Appeal’s reference to Article 47(2) and (3) of Regulation 2017/1001 must be understood as referring, in actual fact, to Article 42(2) and (3) of Regulation No 207/2009, before its amendment by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, amending Regulation No 207/2009 and Regulation No 2868/95, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21).

24 In support of its action, the applicant relies, in view of the explanation it provided at the hearing in response to a question from the Court on the clarification of the pleas in law actually raised, on two pleas in law, alleging, first, an error of assessment by the Board of Appeal as to the proof of genuine use of the earlier Slovenian mark and, second, infringement of Article 8(1)(b) of Regulation No 207/2009.

26 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 is not to 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

27 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 that 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).

28 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).

29 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).

30 It is in the light of the abovementioned principles that the present action must be examined.

31 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

32 In the present case, the Board of Appeal found, in paragraph 22 of the contested decision, that the relevant public consisted both of the general public within the European Union and of the professional public with at most an average level of attention with regard to the goods at issue.

33 The applicant does not dispute those assessments of the Board of Appeal. Moreover, there is no evidence in the file capable of casting doubt on those assessments.

34 According to settled case-law, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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).

35 Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods. By definition, goods intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

36 As regards the comparison of the goods and services covered by the earlier mark and the contested mark, first, the applicant does not dispute that ‘mineral and aerated waters; still water; drinking water; quinine water; bottled water; aerated water (soda water); lemon barley water; orange barley water, coconut water as beverage; table waters; flavoured waters; spring water; glacier water; sparkling water (carbonated); mineral water [beverages]; flavoured mineral water; carbonated mineral water; aerated water; seltzer water; Lithia water’, in Class 32 covered by the contested mark, are identical to the goods in Class 32 of the earlier mark, or that ‘preparations for making mineral water; soda water; preparations for making soda water’ are highly similar to the intervener’s goods in Class 32.

37 Second, the applicant submits that, contrary to the Board of Appeal’s assertion, the services in Classes 35 and 39 covered by the contested mark are similar to the goods in Class 32 of the earlier mark. More specifically, as regards, on the one hand, the services in Class 35, the applicant maintains that those services are similar to the goods covered by the earlier mark in that the retail services of the goods are similar to those goods. On the other hand, as regards the services in Class 39, the applicant submits that there is a complementary relationship between the services of transport, distribution, delivery, packaging and storage of water and water as a product in Class 32.

39 The Board of Appeal found, first, that the goods in Class 32 covered by the earlier mark and the contested mark were identical. Second, as regards the services ‘advertising; business management, business administration; office functions’ in Class 35, and all the services in Class 39, the Board of Appeal found that they were different. Third, it found that the services covered by the mark applied for ‘wholesaling and retailing, including via global computer networks, of table water, flavoured water, spring water, glacier water, sparkling water (carbonated), mineral water (beverages), flavoured mineral water, carbonated mineral water, aerated water; wholesaling and retailing, including via global computer networks, of seltzer water, Lithia waters, preparations for making mineral water, soda water, preparations for making soda water’ in Class 35, were similar to an average degree to the applicant’s goods in Class 32.

40 In that regard, in the first place, it should be noted that, in accordance with settled case-law, according to which, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited), the Board of Appeal was right to find, in paragraph 24 of the contested decision, that the abovementioned goods covered by the contested mark in Class 32 were identical to the goods covered by the earlier mark in the same Class and that ‘preparations for making mineral water; soda water; preparations for making soda water’ also in Class 32, were highly similar to goods of the earlier mark ‘mineral water’ in Class 32.

41 The applicant does not dispute those assessments of the Board of Appeal. Moreover, there is no evidence in the file capable of casting doubt on those assessments.

42 In the second place, the Board of Appeal was also right, in paragraph 25 of the contested decision, to endorse the findings of the Opposition Division according to which the services ‘advertising; business management, business administration; office functions’ in Class 35 and all the services in Class 39 covered by the contested mark were dissimilar to the goods in Class 32 covered by the earlier mark.

43 First, as regards the services in Class 35, it must be observed, as does EUIPO, that there is no evidence to establish that there is a close connection, within the meaning of the case-law referred to in paragraph 35 above, between the goods and services at issue in the present case. Those services target a professional public in that they are aimed at supporting or helping other businesses to carry out or improve their business. Those services therefore have a different nature, intended purpose and method of use in relation to the goods in Class 32 covered by the earlier mark. It should also be noted that there is no competitive relationship between those goods and those services.

44 Second, as regards the services in Class 39, it must be stated, as observed by EUIPO, that they are services intended for transportation, packaging and storage of different types of water-based beverages and preparations for making those beverages. Even though those services concern goods which are identical or highly similar to the goods in Class 32 covered by the earlier mark, it must be noted that those services are supplied by specialist companies in the transport and storage sector whose business does not involve the manufacture or sale of the goods in Class 32. Consequently, those services are different in terms of their nature, intended purpose and method of use to the goods at issue and are not complementary or in competition with those goods, in accordance with the case-law referred to in paragraph 35 above.

45 In the third place, it should be noted that the principles applicable to the comparison of goods also apply to the comparison between goods and services. It is true that, by their very nature, goods are generally different from services, but it nevertheless remains the case that they can be complementary or that services may have the same purpose or use as goods, and thus compete with each other. It follows that, in certain circumstances, goods and services may be found to be similar (see judgment of 7 September 2016, Victor International v EUIPO – Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 105 and the case-law cited). In particular, it is apparent from the case-law that retail services of certain goods can be closely linked to those goods where those goods are covered by those services (see, to that effect, judgment of 5 October 2011, Cooperativa Vitivinícola Arousana v OHIM – Sotelo Ares (ROSALIA DE CASTRO), T‑421/10, not published, EU:T:2011:565, paragraph 33). Therefore, the Board of Appeal was right to uphold, in paragraph 23 of the contested decision, the Opposition Division’s findings relating to the existence of an average degree of similarity between some of the goods in Class 32 covered by the earlier mark, on the one hand, and the retail services in Class 35 covered by the mark applied for and relating to the identical goods, on the other.

46 The relationship between those goods and those services is characterised by a close connection in the sense that those goods are indispensable or, at the very least, important for the provision of the services covered by the mark applied for, since those services are specifically provided when those goods are sold. The services and goods covered by the signs at issue are therefore complementary, as the Board of Appeal correctly observed in paragraph 26 of the contested decision.

47 In the light of all the foregoing, it must be held, first, that the goods in the same Class covered by the signs at issue are identical. Second, it should also be noted that the services of ‘wholesaling and retailing, including via global computer networks, of mineral and aerated waters, still water, drinking water, quinine water, bottled water, aerated water (soda water), lemon barley water, orange barley water, coconut water as beverage; wholesaling and retailing, including via global computer networks, of table water, flavoured water, spring water, glacier water, sparkling water (carbonated), mineral water (beverages), flavoured mineral water, carbonated mineral water, aerated water; wholesaling and retailing, including via global computer networks, of seltzer water, Lithia waters’ in Class 35 covered by the contested mark are, to an average degree, similar to the goods in Class 32 covered by the earlier mark. Third and finally, it should be noted that the services of ‘advertising; business management, business administration; office functions’ and the services of ‘wholesaling and retailing, preparations for making mineral water, soda water, preparations for making soda water’ in Class 35 and all the services in Class 39 covered by the contested mark are dissimilar to the goods in Class 32 covered by the earlier mark.

48 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).

49 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, 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 (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

50 In addition, it should be noted that the greater or lesser degree of distinctiveness of the elements common to a mark applied for and to an earlier mark is one of the relevant factors in assessing the similarity of the signs (see judgment of 8 June 2017, AWG v EUIPO – Takko (Southern Territory 23°48’25”S), T‑6/16, not published, EU:T:2017:383, paragraph 30 and the case-law cited). The descriptive, non-distinctive or weakly distinctive elements of a complex trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by the mark (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited).

51 In that regard, according to the case-law, for the purposes of assessing the distinctive character of a mark or an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or those services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 12 July 2012, Winzer Pharma v OHIM – Alcon (BAÑOFTAL), T‑346/09, not published, EU:T:2012:368, paragraph 78 and the case-law cited).

52 In the present case, it should first of all be noted that the two signs at issue consist of three-dimensional marks, which are complex, in that they consist of the shape of a transparent bottle with an octagonal base and word elements within a vertical label placed on one side of the bottle.

53 More specifically, as the Board of Appeal observed, in paragraph 28 of the contested decision, the mark applied for corresponds to a technical drawing, composed of four views, of a transparent bottle with an octagonal base, comprising eight sides, four of which are larger and the others narrower. It features, along one of its large sides, the word ‘aqua’ in capital letters preceded, at the top of the bottle, by a graphic element consisting of the horizontal combination of the letters ‘a’ and ‘c’ in capital letters, then followed, at the bottom of the bottle, by the same reverse graphic combination.

54 As regards the earlier mark, as the Board of Appeal observed, in paragraph 29 of the contested decision, it shows a single photographic view with four large sides and four other narrower sides. It features the word element ‘vodavoda’, in grey capital letters, written lengthwise on one of the large sides on what appears to be a white label. On the other sides of the bottle there appears to be embossed wording, but its meaning is unclear. Furthermore, it has a non-transparent cap.

55 In accordance with the case-law cited in paragraph 48 above, it is appropriate to examine, first of all, the applicant’s arguments relating to the distinctive character of the earlier mark, before making a visual, phonetic and conceptual comparison of the signs at issue.

56 In paragraph 32 of the contested decision, the Board of Appeal found that the shape of the bottle in question, as a whole, had no feature which the relevant public might remember as a distinctive element.

57 Thus, in paragraph 35 of the contested decision, it found that the relevant public, in order to refer to the commercial origin of that bottle, was more likely to cite the word elements on that bottle rather than to take account of the shape of its packaging. As regards the word element ‘vodavoda’ of the earlier mark, the Board of Appeal maintains that the distinctive character must be regarded as being weak with regard to the public which understands the term ‘voda’ as meaning ‘water’, namely the Slovenian, Polish, Bulgarian, Czech and Slovak public, and normal for the other part of the public which does not understand that meaning.

58 The applicant submits, in essence, that the particular octagonal shape of its bottle is the feature enabling it to distinguish itself from other bottles on the market and therefore constitutes the distinctive and dominant element of its mark. In particular, by relying on images of mineral water located on the internet, which it placed on the file, the applicant submits that the usual shape for packaging of still or mineral water is round and that square or octagonal shapes are not commonly used in that sector. As regards the long-lasting presence of the square shape on the market, the applicant states that most of those images refer to the United States market and not to the European market. In addition, it claims the originality and success of its bottle, created by a renowned designer, at various fairs, exhibitions and other international events. It concludes, finally, that the shape of the bottle of the earlier mark creates an overall impression on consumers which is stronger than the label or the word element ‘vodavoda’ of which it is composed.

60 In the first place, according to settled case-law, as EUIPO rightly pointed out at the hearing, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the shape of the product itself are no different from those applicable to other categories of trade marks. However, for the purpose of applying those criteria, the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it designates. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, by analogy, judgment of 7 May 2015, Voss of Norway v OHIM, C‑445/13 P, EU:C:2015:303, paragraph 90 and the case-law cited).

61 More specifically, since liquid goods must of necessity be packaged for sale, the average consumer will perceive the packaging first and foremost simply as a form of container. A three-dimensional trade mark consisting of such a container is not distinctive unless it permits the average consumer of the goods concerned, who is reasonably well informed and reasonably observant and circumspect, to distinguish those goods from the goods of other undertakings without any detailed examination or comparison and without being required to pay particular attention (see, to that effect and by analogy, judgment of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 38 and the case-law cited). In those circumstances, only a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character (see, by analogy, judgment of 24 February 2016, Shape of a contour bottle without fluting, T‑411/14, EU:T:2016:94, paragraph 39 and the case-law cited).

62 However, it does not follow from the case-law cited in paragraph 61 above that it is necessary systematically to restrict the sector for the purposes of comparison to the actual goods in respect of which registration is sought. It cannot be excluded that the consumers of a given product may in certain cases be influenced, in their perception of the trade mark which the product bears, by the marketing methods used for other goods which they also use. Thus, depending on the nature of the goods in question and the trade mark applied for, it may be necessary, for the purposes of assessing whether or not the trade mark is devoid of any distinctive character, to take into consideration a wider sector (judgment of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 32).

63 In particular, when, as in the present case, the trade mark for which registration is sought consists of the three-dimensional shape of the packaging of the goods in question – a fortiori where the goods, because of their very nature, must be packaged in order to be marketed, so that the packaging chosen imposes its shape on the goods and, for the purposes of examining an application for registration as a mark, must be assimilated to the shape of the product – the relevant norm or customs may be those which apply in the sector of the packaging of goods which are of the same type and intended for the same consumers as those goods in respect of which registration is sought (judgment of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 33).

64 It cannot be excluded that the average consumer, who is accustomed to seeing various products from different undertakings packaged in the same type of packaging, does not at first identify the use of that type of packaging by an undertaking for the marketing of a given product as being, of itself, an indication of origin, when the same product is marketed by competitors of that undertaking in other types of packaging. In that regard, it should be noted that the average consumer, who does not make a study of the market, will not know in advance that only one undertaking markets a given product in a certain type of packaging whilst its competitors use other types of packaging for that product (judgment of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 34).

65 Furthermore, it should be noted that it is well known that operators present on the food sector market, which is highly competitive, are all faced with the technical necessity of packaging for the marketing of those goods and subject to the need for them to be labelled. In that regard, although it is necessary to analyse the overall impression created by the appearance of the container constituting the mark applied for, it cannot be ruled out that the combination of elements constituting a three-dimensional mark is truly specific and cannot be regarded as altogether common, conferring on the container at issue a particular appearance which, having regard also to the overall aesthetic result, distinguishes it from the conventional bottles on the market (see, to that effect, judgment of 3 October 2018, Wajos v EUIPO (Form of a container), T‑313/17, not published, EU:T:2018:638, paragraphs 26, 31 and 34).

66 In the present case, as EUIPO and the intervener observed at the hearing and in accordance with the case-law cited above, the Board of Appeal correctly took into account, in paragraph 33 of the contested decision, a sector wider than that of mineral water. Therefore, the earlier mark, as registered, represents a transparent bottle of a common shape in the wide sector for beverage packaging and does not have any particular appearance which, having regard to the overall aesthetic result, differentiates it in relation to the conventional presentation of bottles on the market.

67 It follows that the shape of the bottle in question, as perceived by the relevant public, does not constitute an indication of origin in that it is not capable of individualising the goods and services in question and distinguishing them from those having another commercial origin. The shape of the bottle must therefore be regarded as having, at most, a weak inherent distinctive character.

68 In the second place, as regards the word elements making up the earlier mark, it must be noted, first, as the Board of Appeal states, in paragraph 43 of the contested decision, that the distinctive character of the word element ‘vodavoda’ is weak in that it has a certain descriptive dimension, to the extent that it is perceived by a part of the relevant public as alluding to one of the specific goods covered by the marks at issue, namely water. For the part of the public which does not understand the allusion to that concept, the distinctive character of that word element is normal in that it will perceive that word as being fanciful.

69 Having regard to all of the foregoing considerations, it must be held that the earlier mark has a weak distinctive character overall and that, contrary to the applicant’s assertions, the word element ‘vodavoda’ of the earlier mark is, for part of the relevant public, more distinctive, within the meaning of the case-law referred to in paragraphs 50 and 51 above, than the shape of the bottle at issue.

70 Visually, the Board of Appeal, after recalling the non-distinctive character conferred on the shape of the bottle in question, found that the relevant public will focus its attention on the word element ‘aqua’ of the mark applied for and on the element ‘vodavoda’ of the earlier mark, which must be regarded as being different and producing, overall, a low degree of visual similarity.

71 The applicant submits, in essence, that the signs at issue are highly similar visually. First, it states that, on account of the distinctive character of the shape of the bottle, consumers will perceive the packaging as an indication of the origin of the goods and services in question and not as mere packaging. Thus, the Board of Appeal did not take into consideration the specific characteristics of three-dimensional marks, in finding that the relevant public will pay greater attention to the word elements of which those marks consist rather than to the shape of the bottle in question. Second, the applicant claims that the marks at issue coincide in the presence of certain elements, such as the inscription along one side of the bottle, the similar length of the bottles at issue and the shape of their respective caps. Third and last, the applicant submits that the Board of Appeal incorrectly perceived or, at the very least, disregarded certain elements which characterise its bottle, such as the label on one of the sides of the bottle and the writing of the thickened and duplicated letters, arranged vertically, embossed on three other sides.

73 In that regard, it must, first, be observed that the signs at issue are three-dimensional signs consisting of an essentially square bottle shape. The signs at issue differ in the presence of word elements, namely ‘ac aqua ac’ in the mark applied for and ‘vodavoda’ in the earlier mark.

74 As regards the visual comparison, although it is evident that the shapes of the bottles in question introduce elements of visual similarity between the signs at issue, it is necessary nevertheless to uphold the Board of Appeal’s assessment that the visual similarity between the signs at issue, taken as a whole, is only weak.

75 Contrary to the applicant’s assertions, the impact of the shape of the bottle in question on the overall impression produced by the marks at issue is not enhanced by any dominant or distinctive character. As is apparent from the considerations set out in paragraphs 53, 54 and 66 above, the relevant public will perceive that shape as being a mere variant of the basic shape of packaging for those goods, which do not enable it to distinguish the product in question from those of other undertakings and will therefore attach no particular importance to that element.

76 It follows that it is necessary to examine the word elements of the marks at issue for the purposes of the visual comparison of those marks.

77 In that regard, first, as the Board of Appeal correctly observed, in paragraph 37 of the contested decision, the word elements of the marks at issue are visually completely different. The term ‘ac aqua ac’ of the mark applied for is not visually similar to the term ‘vodavoda’ of the earlier mark. Second, the marks at issue also differ in other figurative elements, of secondary importance due to their position, size, visibility or meaning, as is the case of the five horizontal lines on one of the sides of the bottle of the mark applied for and, in the earlier mark, the embossed wording which appears on three of its sides.

78 In those circumstances, it must be concluded that the similarity between the marks at issue resulting from the shape of the bottle is offset to a large extent by different elements, which means that, taken as a whole, those three-dimensional marks display, as the Board of Appeal correctly found, only a low degree of visual similarity.

79 The Board of Appeal found, in paragraph 38 of the contested decision, that the signs were not phonetically similar in so far as only the word elements of the marks at issue will be pronounced, namely ‘ac aqua ac’ as regards the contested mark and ‘vodavoda’ as regards the earlier mark.

80 The applicant does not dispute those assessments of the Board of Appeal. Moreover, there is no evidence in the file capable of casting doubt on those assessments.

81 The Board of Appeal found that the graphic combination of the letters ‘a’ and ‘c’, which make up the contested sign, has no meaning with regard to the goods and services in question. As regards the term ‘aqua’, it found that, for the part of the relevant public which understands Latin or, at the very least, a language of Romanic origin, that term could be understood as meaning ‘water’. However, the Board of Appeal states that, for those consumers, the term ‘vodavoda’ of the earlier mark has no meaning and that, conversely, it is unlikely, for Slovenian, Polish, Czech, Slovak or Bulgarian consumers who understand the term ‘vodavoda’ as meaning ‘waterwater’, to understand the term ‘aqua’. Lastly, it adds that consumers have no reason to translate that term in order to make a conceptual comparison between the signs at issue and it concludes, in paragraph 39 of the contested decision, that a conceptual comparison is neutral.

82 First of all, the applicant submits that the signs at issue are conceptually identical in that the shape of the bottle holds a conceptual message relating, both in respect of the term ‘aqua’ of the contested mark and the term ‘voda’ of the earlier mark, to the concept of ‘water’. To that effect, it maintains that the reference to that concept is understood by all consumers in the European Union as regards the term ‘aqua’ of the contested mark, whereas ‘vodavoda’ is understood only by some consumers, namely those who understand Slovenian, Czech, Slovak, Bulgarian or Polish.

84 In the first place, as regards the mark applied for, it should be noted, first, that the graphic combination of the letters ‘a’ and ‘c’, as the Board of Appeal correctly found in paragraph 39 of the contested decision, has no meaning with regard to the goods and services at issue and must therefore be regarded as fanciful. Consequently, as EUIPO suggests, those letters must not be taken into consideration in the conceptual comparison of the signs at issue. Second, it should be emphasised, as regards the element ‘aqua’ of that mark, that it consists of a common Latin term, meaning ‘water’, which the EU consumer may be assumed to know (see, to that effect, judgment of 28 November 2013, Vitaminaqua v OHIM – Energy Brands (vitaminaqua), T‑410/12, not published, EU:T:2013:615, paragraph 57). Furthermore, the meaning of the word ‘aqua’ will be understood by Romanian, Portuguese, Spanish and Italian consumers because of its closeness to its equivalents in their respective languages, namely the words ‘apa’, ‘água’, ‘agua’ and ‘acqua’. It will also be understood by the French consumer, given that the term ‘aqua’ is a common prefix in the French language having been borrowed from Latin (see, to that effect, judgment of 28 November 2013, vitaminaqua, T‑410/12, not published, EU:T:2013:615, paragraph 69).

85 In the second place, as regards the earlier mark, it must be held that the term ‘voda’ meaning ‘water’, understood by a part of the relevant public that understands Slovenian, Czech, Bulgarian, Polish or Slovak, will not necessarily be understood by all of the relevant public that understands the term ‘aqua’ of the mark applied for.

86 It is true, as the Board of Appeal states, in paragraph 39 of the contested decision, that the relevant consumer does not tend to translate marks. However, although a linguistic difference between the signs cannot automatically suffice to exclude the existence of a conceptual similarity from the point of view of the relevant consumers, such a difference is, nonetheless – in so far as it requires a translation on the part of the consumer – capable, depending on, inter alia, the linguistic knowledge of the relevant public, the degree of relationship between the languages concerned and the actual words used by the signs at issue, of preventing, at least to some degree, an immediate conceptual comparison by the relevant public (see, to that effect, judgment of 16 September 2013, Golden Balls v OHIM – Intra-Presse (GOLDEN BALLS), T‑437/11, EU:T:2013:441, paragraph 43 and the case-law cited).

87 In the present case, it must be held that, for a significant part of the relevant public, namely EU consumers to whom the Latin term ‘aqua’ is well-known (see paragraph 84 above) and those who understand the term ‘voda’ (see paragraph 85 above), there will be a certain conceptual similarity requiring prior translation, given the identical meaning of those two terms. However, that similarity between the signs at issue results solely from the descriptive elements ‘aqua’ and ‘voda’ which convey the same concept, in two different languages, namely ‘water’.

88 Therefore, in the light of the weak distinctive character of the common concept of ‘water’, it must be held that, contrary to the Board of Appeal’s assertions, a conceptual comparison, requiring prior translation, is possible in the present case and that, contrary to the applicant’s claims, the signs at issue have, at most, an average degree of conceptual similarity in that they refer to the same concept of ‘water’.

89 Accordingly, in so far as it has been established that there is, at most, an average degree of conceptual similarity, a low degree of visual similarity and a lack of phonetic similarity, it is necessary to assess globally whether, in the present case, there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

90 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

91 The Board of Appeal found, in paragraph 50 of the contested decision, that, in view of the low degree of visual similarity, the phonetic dissimilarity and the lack of any immediate conceptual comparison between the signs, there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the part of the relevant public with regard to the goods and services in question.

92 The applicant submits that there is a likelihood of association between the signs at issue on account of their visual and conceptual similarities, the existing similarity of the goods and services and the relevant consumer’s low level of attention. The consumer might believe that the words written on the bottles at issue, namely ‘aqua’ and ‘vodavoda’, cover different language versions of the same mark and therefore come from the same undertaking.

94 In that regard, it must be borne in mind that, according to the case-law cited in paragraphs 27 and 90 above, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs, the goods and 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 and services covered.

95 In addition, it should be noted that, according to settled case-law, it is likely that visual contact with the marks predominates in respect of everyday consumer goods (judgment of 15 April 2010, Cabel Hall Citrus v OHIM – Casur (EGLÉFRUIT), T‑488/07, not published, EU:T:2010:145, paragraph 54) and that, in any event, the mere association which the relevant public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision (see judgment of 14 November 2019, Société des produits Nestlé v EUIPO – Jumbo Africa (Representation of a human figure on an escutcheon), T‑149/19, not published, EU:T:2019:789, paragraph 47 and the case-law cited).

96 The selling arrangements for the bottles – namely their display as labelled goods in the food aisles of supermarkets or their being ordered in a bar or restaurant – mean that prior to purchase the consumer will concentrate mainly on the word and figurative elements on their labels, such as the trade mark’s name, logo and/or other figurative elements indicating the product’s origin (see, to that effect, judgment of 4 March 2010, Weldebräu v OHIM – Kofola Holding (Shape of a bottle with a helically formed neck), T‑24/08, EU:T:2010:71, paragraph 33).

97 In the light of all of the foregoing, it must therefore be held that, for consumers who do not understand the words ‘aqua’ of the mark applied for and ‘voda’ of the earlier mark, the differences identified between the marks in question, and in particular the lack of phonetic similarity, as well as a low degree of visual similarity, are sufficient to find that the overall impressions produced by the marks in question are sufficiently different to support the conclusion that there is no likelihood of confusion for consumers who do not understand the words ‘aqua’ and ‘voda’.

98 For the consumers who understand those words, any likelihood of confusion must a fortiori also be ruled out because, first, those consumers will attribute even less importance to those elements, which are, in two different languages, only a mere description of the goods concerned and, second, the impact of the conceptual similarity identified on the overall impression created by the marks in question is very low and it is therefore not decisive for the purposes of the global assessment of the likelihood of confusion. The conceptual similarity results solely from the common concept of ‘water’ which the signs at issue have and which attracts those consumers’ attention only to a limited extent.

99 Thus, in view of the weak distinctive character of the earlier mark, the low degree of visual similarity, the lack of phonetic similarity and the at most average conceptual similarity between the signs at issue, it must be held that the likelihood of confusion has not been established, even if the goods and services in question should be regarded as being identical.

100 Consequently, it must be held that, following a global assessment, the Board of Appeal was right to conclude that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, on the part of the relevant public, despite the error made in finding that the conceptual comparison was neutral.

101 In the light of all of the foregoing considerations, the second plea in law put forward by the applicant must be rejected and, accordingly, the action must be dismissed in its entirety, without it being necessary to examine the first plea, since, as EUIPO correctly points out, the earlier EU trade mark also covers Slovenian territory and there is therefore no need to assess the genuine use of the earlier Slovenian mark.

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Sun Stars & Sons v EUIPO - Valvis Holding (AC AQUA AC) (EU trade mark - Judgment) [2021] EUECJ T-638/19 (12 May 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T63819.html Cite as: ECLI:EU:T:2021:256, [2021] EUECJ T-638/19, EU:T:2021:256

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