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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Schweppes International v EUIPO - May (MAY TEA) (EU trade mark - Judgment) [2025] EUECJ T-1066/23 (26 February 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T106623.html Cite as: EU:T:2025:181, ECLI:EU:T:2025:181, [2025] EUECJ T-1066/23 |
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JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 February 2025 (*)
( EU trade mark - Invalidity proceedings - EU figurative marks MAY TEA - International registration of the earlier figurative marks МАЙСКИЙ - International registration of the earlier word mark МАЙСКИЙ ЧАЙ - Relative ground for invalidity - No likelihood of confusion - Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) )
In Joined Cases T‑1066/23 to T‑1069/23,
Schweppes International Ltd, established in London (United Kingdom), represented by G. Bloret-Pucci, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
May OOO, established in Fryazino (Russia), represented by M. Knitter, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović and W. Valasidis (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure, in particular the decision of 30 September 2024 joining Cases T‑1066/23 to T‑1069/23 for the purposes of the decision closing the proceedings,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its actions under Article 263 TFEU, the applicant, Schweppes International Ltd, seeks the annulment and the alteration of the decisions of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2023 (Cases R 72/2022‑1, R 77/2022‑1, R 75/2022‑1 and R 73/2022‑1) (together, ‘the contested decisions’).
I. Background to the dispute
2 On 26 November 2020, the intervener, May ΟΟΟ, filed an application with EUIPO seeking a declaration of invalidity in respect of each of the following figurative marks:
– the EU trade mark reproduced below, registered following an application filed on 27 November 2015 (Case T‑1066/23):
– the EU trade mark reproduced below, registered following an application filed on 5 September 2016 (Case T‑1067/23):
– the EU trade mark reproduced below, registered following an application filed on 22 March 2019 (Case T‑1068/23):
– the EU trade mark reproduced below, registered following an application filed on 9 July 2019 (Case T‑1069/23):
3 The goods covered by the contested marks in respect of which invalidity was sought were in Classes 30 and 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 corresponded, for each of those classes, to the following description:
– Class 30: ‘Flavoured tea-based beverages (non medicinal); flavoured ice tea (non medicinal)’;
– Class 32: ‘Non-alcoholic tea flavoured beverages [or sodas]’.
4 The applications for a declaration of invalidity were based on the following earlier rights:
– International Registration designating the European Union No 1 262 351 of 25 June 2015 of the figurative mark reproduced below for goods in Class 30 and corresponding to the following description: ‘Tea-based beverages; tea; iced tea’:
– International Registration designating Germany No 832 458 of 2 July 2004 of the figurative mark reproduced below for goods in Class 30 and corresponding to the following description: ‘Coffee, tea, cocoa, sugar, rice, tapioca (manioka), sago; artificial coffee; flour and cereal preparations, confectionery, bakery products; ice-cream; honey, golden syrup; yeast, baking powder; salt, mustard; vinegar, sauce (condiment); spices; edible ices’:
– International Registration designating the Czech Republic, Germany, France, Latvia, Poland and Slovakia No 678 625 of 4 August 1997 of the word mark МАЙСКИЙ ЧАЙ for goods in Class 30 and corresponding to the following description: ‘Tea’.
5 The ground relied on in support of the applications for a declaration of invalidity was that set out in Article 60(1)(a) of 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), read in conjunction with Article 8(1)(b) of that regulation.
6 By four decisions adopted on 16 November 2021, the Cancellation Division rejected the applications for a declaration of invalidity.
7 On 13 January 2022, the intervener filed a notice of appeal with EUIPO against each of the decisions of the Cancellation Division.
8 By the contested decisions, the Board of Appeal upheld the intervener’s appeals, annulled the decisions of the Cancellation Division and upheld the applications for a declaration of invalidity on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
9 In this instance, the Board of Appeal based its analysis on the earlier international registration of the word mark МАЙСКИЙ ЧАЙ (‘the earlier mark’) and focused its assessment on the part of the relevant public consisting of Latvian consumers that speak English and Russian or have at least a basic knowledge of those languages. First, it found that that part of the relevant public would understand the contested marks as being the literal translation of the Cyrillic script of the earlier mark and therefore would directly associate the terms ‘майскиий чай’ with the terms ‘may tea’.
10 Second, the Board of Appeal found that, having regard to the identity or the similarity of the goods covered by the marks at issue and irrespective of the normal distinctive character of the earlier mark, the conceptually identical nature of the marks at issue was, for the part of the relevant public taken into consideration in its examination, sufficient to outweigh the visual or phonetic differences between those marks due to the different languages.
11 Third, the Board of Appeal found that that part of the relevant public might believe that the goods covered by the contested marks came from the same undertaking or from economically linked undertakings and might also perceive those marks as being a variation of the earlier mark adapted to meet the needs of consumers throughout the market of the European Union.
12 In those circumstances, the Board of Appeal, after noting that a likelihood of confusion established in only one of the Member States relevant to the dispute was sufficient to declare the contested marks invalid, upheld the applications for a declaration of invalidity on the basis of the earlier mark and considered that it was not necessary to assess those applications on the basis of the other earlier rights relied on by the intervener.
II. Forms of order sought
13 The applicant claims that the Court should:
– annul and alter the contested decisions;
– order EUIPO to pay the costs, including those incurred in the proceedings before EUIPO.
14 EUIPO contends that the Court should:
– dismiss the actions;
– order the applicant to pay the costs in the event that an oral hearing is convened.
15 The intervener contends that the Court should:
– dismiss the actions;
– order the applicant to pay the costs.
III. Law
A. Applicable law ratione temporis
16 Given the date on which each of the applications for registration of the contested marks was filed, namely 27 November 2015 (Case T‑1066/23), 5 September 2016 (Case T‑1067/23), 22 March 2019 (Case T‑1068/23) and 9 July 2019 (Case T‑1069/23), which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed, for Cases T‑1066/23 and T‑1067/23, by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), on the one hand, and, for Cases T‑1068/23 and T‑1069/23, by the substantive provisions of Regulation 2017/1001, on the other (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
17 Consequently, for Cases T‑1066/23 and T‑1067/23, as regards the substantive rules, the references made by the Board of Appeal in the contested decisions, and by the applicant and the intervener in their written pleadings, to Article 8(1)(b) and Article 60(1)(a) of Regulation 2017/1001 must be understood as referring, respectively, to Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009, the provisions of which are, in essence, identical.
18 Furthermore, given that, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
B. Substance
1. The claims for annulment of the contested decisions
19 In support of its actions, the applicant relies on a single plea in law alleging, in Cases T‑1066/23 and T‑1067/23, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, and, in Cases T‑1068/23 and T‑1069/23, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.
20 The applicant puts forward, in essence, three complaints. By its first complaint, the applicant argues that the Board of Appeal failed to establish that the Latvian part of the relevant public who understood both Russian and English was not negligible. By its second complaint, the applicant argues that the Board of Appeal made errors of assessment relating to the conceptual comparison of the signs at issue. By its third complaint, the applicant criticises the Board of Appeal’s global assessment of the likelihood of confusion.
21 Under, first, Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof, and, second, Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) thereof, an EU trade mark is to be declared invalid, on application by the proprietor of an earlier trade mark, if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
22 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. 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).
23 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009 and Article 8(1)(b) of Regulation 2017/1001, 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).
24 The single plea in law relied on by the applicant must be examined in the light of the principles set out above.
(a) Preliminary observations
25 The Board of Appeal found that the relevant territory was that of the Member States in which the earlier mark was protected, namely the Czech Republic, Germany, France, Latvia, Poland and Slovakia. In addition, the Board of Appeal stated that the goods at issue were directed at the public at large which had an average level of attention.
26 In paragraphs 45 to 47 of the contested decisions, the Board of Appeal further found, adopting the findings of the Cancellation Division, that, first, the ‘flavoured tea-based beverages (non medicinal)’ and ‘flavoured ice tea (non medicinal)’ in Class 30 covered by the contested marks were identical to the ‘tea’ in Class 30 covered by the earlier mark and, second, that the ‘non-alcoholic tea flavoured beverages [or sodas]’ in Class 32 covered by the contested marks were similar to the ‘tea’ covered by the earlier mark.
27 There is no reason to call into question those findings, which, moreover, are not disputed by the applicant.
(b) The comparison of the signs
28 According to the case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
(1) The distinctive and dominant elements
29 After stating that the contested marks each comprised two terms as well as figurative elements, the Board of Appeal found that the term ‘may’ had a normal distinctive character, whereas the term ‘tea’, being a basic, commonly used English word, was devoid of distinctive character. According to the Board of Appeal, those findings also apply to the word elements ‘майский’ and ‘чай’ of the earlier mark for the part of the relevant public which understands those elements as having the same meaning as the English word combination ‘may tea’.
30 As regards the figurative elements of the contested marks, the Board of Appeal found, in essence, after recalling the applicable case-law, that the average consumer would more readily refer to the goods at issue by quoting the clearly visible word elements of those marks than by describing their figurative elements. In paragraph 36 of the contested decisions, the Board of Appeal found, in particular, that the black background on which the word element ‘may tea’ was depicted was of a purely decorative nature and was accordingly devoid of distinctive character. It found that the other figurative elements included in the marks being contested in Cases T‑1067/23 to T‑1069/23 were either devoid of distinctive character, as regards the figurative elements in the shape of bottles, or had a weak distinctive character, as regards those reproduced in the shape of leaves or fruit evoking the fruity flavours of the goods at issue.
31 There is no reason to call into question those findings, which, moreover, are not disputed by the applicant.
(2) The visual comparison
32 The Board of Appeal concluded that the signs at issue were not visually similar. Notwithstanding the presence of some coinciding letters in the word elements of those signs, the Board of Appeal found that those elements were different overall, and that they had a different orthographic structure in view of the length of each of the words of which they were composed. It also stated that the marks at issue differed due to the presence of figurative elements in the contested marks, the earlier mark being a word mark.
33 There is no reason to call into question those findings by the Board of Appeal, which, moreover, are not disputed by the applicant.
(3) The phonetic comparison
34 The Board of Appeal found that the signs at issue displayed only a low degree of phonetic similarity, if any. It stated that the earlier mark would be pronounced as ‘maiskii tchai’ while the contested marks would be pronounced according to the English pronunciation rules.
35 Neither the applicant nor EUIPO disputes that finding.
36 The intervener maintains, however, that the signs at issue display a high degree of phonetic similarity. In particular, it argues that consumers will tend to focus on the beginning of those signs. The first syllable ‘mai’ of the term ‘mai – ski’ of the earlier mark is phonetically ‘identical to the word stem “mai” in the sign “mai – ti”’ of the contested marks. In addition, due to its descriptive character, the term ‘tchai’ (tea) will be ignored by the public.
37 Regarding the pronunciation of the word elements of the signs at issue, which are pronounced ‘mei – tii’ and ‘mai – ski – tchai’, it must however be stated that it coincides only in the first phoneme ‘m’. In addition, it is common ground that the signs differ phonetically by the rest of the phonemes, as well as by the number of syllables and, therefore, by their length. As the word elements ‘may tea’ and ‘майский чай’ borrow from different alphabets, they will also be pronounced according to equally different pronunciation rules, which will further accentuate the phonetic difference between those signs. Accordingly, the English pronunciation of the word element, namely ‘mei – tii’, has perceptible differences as compared to the Russian pronunciation of the word element ‘mai – ski – tchai’. The fact that the term ‘tchai’ does not have distinctive character is not such as to call that finding into question.
38 In those circumstances, and contrary to the intervener’s assertions, the signs at issue display a very low degree of phonetic similarity, if any.
(4) The conceptual comparison
39 In this instance, the Board of Appeal focused its analysis on the part of the relevant Latvian public which, as it speaks and understands both English and Russian, or has, at least, a basic knowledge of those languages, will directly associate the words ‘майский чай’ with the words ‘may tea’, which form part of the basic vocabulary of both languages. It found, in paragraphs 43 and 44 of the contested decisions, that the marks at issue were conceptually identical on the ground that for that public, the expression ‘may tea’ in the contested marks, written in Latin characters, would be perceived as being a literal English translation of the expression ‘майский чай’ in the earlier mark, written in Cyrillic characters. Accordingly, it found that those marks had, for that part of the relevant public, the same literal meaning, namely ‘May tea’.
40 In addition, the Board of Appeal stated that the comparable grammatical structure of the signs at issue, namely an adjective followed by the noun, facilitates, on the part of the target public, the immediate perception of the common meaning of those signs, so that their conceptual association derives from a straight-forward thought process. Their different scripts merely demonstrate that the contested marks have been adapted for all consumers throughout the market of the European Union, while the earlier mark more specifically addresses the public that understands Russian.
41 The applicant argues that the Board of Appeal was incorrect to consider that the signs at issue were conceptually identical for the part of the relevant Latvian public taken into account in support of its assessment. According to the applicant, those signs display, at most, only a low degree of conceptual similarity.
42 The applicant largely relies, as regards that point, on the case-law stating that, in essence, a linguistic difference, in so far as it requires translation on the part of the consumer, is capable of preventing the relevant public, to a greater or lesser extent, from making an immediate conceptual comparison (judgment of 28 June 2011, Oetker Nahrungsmittel v OHIM – Bonfait (Buonfatti), T‑471/09, not published, EU:T:2011:307, paragraph 82; see, also, judgment of 16 December 2015, Rotkäppchen-Mumm Sektkellereien v OHIM – Ruiz Moncayo (RED RIDING HOOD), T‑128/15, not published, EU:T:2015:977, paragraph 28 and the case-law cited).
43 In that regard, the applicant submits that the Latvian public will need to make a twofold intellectual effort, namely (i) a translation of the terms ‘may tea’ in the contested marks into Latvian and (ii) a translation of the terms ‘майский чай’ in the earlier mark into Latvian, before being able to compare the meaning of those marks. Moreover, the applicant maintains that it is unlikely that consumers, when buying products in supermarkets, will translate a sign written in Russian and another sign written in English into Latvian in order to discover the hidden meaning of the signs at issue.
44 The applicant also emphasises that there are several differences between the alphabets concerned preventing any immediate conceptual comparison by the relevant public.
45 Lastly, the applicant argues that the Board of Appeal, in essence, erred in law in inferring from the judgment of 20 June 2012, Kraft Foods Schweiz v OHIM – Compañía Nacional de Chocolates (CORONA) (T‑357/10, not published, EU:T:2012:312), that the Latvian public’s good level of Russian would lead that public, in principle, to associate the signs at issue conceptually.
46 EUIPO and the intervener dispute the applicant’s arguments.
47 It must be borne in mind that, according to the case-law, a linguistic difference between signs cannot, in itself, automatically suffice to rule out the existence of a conceptual similarity from the point of view of the relevant consumers. The fact remains, however, that such a difference, in so far as it requires translation on the part of the consumer, is capable, depending on, inter alia, the relevant public’s knowledge of languages, the degree of closeness between the languages concerned and the actual terms used in the signs at issue, of preventing the relevant public, to a greater or lesser extent, from making an immediate conceptual comparison (see judgment of 10 February 2021, Herlyn and Beck v EUIPO – Brillux (B.home), T‑821/19, not published, EU:T:2021:80, paragraph 64 and the case-law cited).
48 In this instance, it should be noted, as a preliminary point, that the expressions ‘may tea’ in English and ‘майский чай’ in Russian have the same meaning, namely ‘May tea’.
49 As regards the perception of the conceptual content of the signs at issue by the Latvian public, it should first be borne in mind that the Board of Appeal rightly found that a part of that public had at least a basic knowledge of English. As the Board of Appeal stated in paragraphs 34 and 35 of the contested decisions, the term ‘may’ will be understood by that public as referring to the fifth month of the year not only because that term forms part of basic English vocabulary, but also because it is similar to its Latvian equivalent ‘maijā’. Moreover, it must be considered that the average Latvian consumer is also capable of understanding the term ‘tea’, which is also a word in basic English vocabulary.
50 Next, it must be emphasised, as was also rightly found by the Board of Appeal, that a part of the relevant Latvian public has at least a basic knowledge of Russian so as to understand the expression ‘майский чай’. Although the Board of Appeal did not expressly state that the Latvian public has a mother-tongue level of command of Russian, it is common ground that the terms ‘майский’ and ‘чай’ form part of a basic knowledge of that language.
51 In those circumstances, even assuming that the Latvian public has only some knowledge of English, it must be borne in mind that the expression ‘may tea’, which forms part of the basic vocabulary of that language, allows for an immediate conceptual comparison with the expression ‘майский чай’ on the part of the Latvian public, which has at least a basic knowledge of English and Russian.
52 Contrary to the applicant’s assertions, the part of the relevant Latvian public that has at least a basic knowledge of English and Russian may therefore understand, without either making a twofold intellectual effort or going through a complex thought process, the conceptual meaning of the elements ‘may tea’ of the contested marks and the elements ‘майский чай’ of the earlier mark and immediately associate them conceptually.
53 The judgments relied on by the applicant cannot call that finding into question.
54 First, the terms ‘may tea’ in English and ‘майский чай’ in Russian form part of basic vocabulary, unlike the words concerned by the case-law cited by the applicant, such as those in the English-language title of the fairy tale Little Red Riding Hood, namely the words ‘red riding hood’, and the word ‘rotkäppchen’ in German referred to in the judgment of 16 December 2015, RED RIDING HOOD (T‑128/15, not published, EU:T:2015:977, paragraph 31).
55 Second, the grammatical structure of the word elements of the marks at issue is identical, because, in each of those marks, it consists of an adjective followed by a noun. That grammatical structure common to those elements is therefore likely to enable the Latvian public which has only, at least, a basic command of English and Russian immediately to understand their meaning. By contrast, in the case-law recalled by the applicant, the word elements of the signs at issue differ in terms of their grammatical structure. In particular, in the judgment of 15 October 2014, El Corte Inglés v OHIM – English Cut (The English Cut) (T‑515/12, not published, EU:T:2014:882, paragraph 31), the adjective ‘English’ is placed in the first position in the English expression ‘The English Cut’ of the mark applied for, while the equivalent adjective in Spanish ‘inglés’ occupies the second position in the Spanish expression ‘El Corte Inglés’ of the earlier marks.
56 In addition, the judgment of 28 June 2011, Buonfatti (T‑471/09, not published, EU:T:2011:307), also relied on by the applicant, concerns the translation of marks that rely on incorrect grammatical structures, composed of an adjective placed in the first position (‘buon’ and ‘bon’) and a participle in the second position (‘fatti’ and ‘fait’), whereas, in this instance, the marks at issue are grammatically correct, with the result that their comparison, contrary to the case relied on by the applicant, cannot involve an in-depth linguistic analysis which would prevent an immediate conceptual comparison on the part of the public concerned.
57 Furthermore, the applicant’s argument that it is unlikely that the relevant public will translate the contested marks to bring their meaning closer to the underlying meaning of the earlier mark when buying the goods at issue in supermarkets is irrelevant. It should be noted that the target public, which has at least a basic knowledge of English and Russian, is, in any event, in a position immediately to associate the word elements of the marks at issue. Moreover, the Board of Appeal did not rely on the methods of distribution of the goods covered by the marks at issue to substantiate the conceptual comparison it found to be present.
58 Lastly, as regards the assertion that the Board of Appeal was not entitled to rely on the judgment of 20 June 2012, CORONA (T‑357/10, not published, EU:T:2012:312), it must be noted that, contrary to the applicant’s assertions, the Board of Appeal did not infer from that judgment that the fact that the Latvian public has a good command of Russian is sufficient to result in a conceptual association. As is apparent from paragraph 38 of the contested decisions, the Board of Appeal merely noted that that judgment confirms that the relevant Latvian public’s good command of Russian is a matter of common knowledge. The claim thus follows from an erroneous reading of the contested decisions and must, on that ground, be rejected.
59 In those circumstances, having regard to the target public’s knowledge of languages and the actual terms used in the signs at issue, it must be concluded that the Board of Appeal correctly found that for the part of the relevant Latvian public that understands English and Russian or has at least a basic knowledge of those languages, those signs are conceptually identical, notwithstanding the difference in the alphabets of the languages concerned.
(c) The likelihood of confusion
60 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (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).
61 In order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, taking account of the category of goods or services in question and the circumstances in which they are marketed (see judgment of 17 October 2013, Isdin v Bial-Portela, C‑597/12 P, EU:C:2013:672, paragraph 20 and the case-law cited).
62 Furthermore, it follows from the case-law that when the elements of similarity between two signs arise from the fact that they share a component which has a weak distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is low (see judgment of 20 March 2024, Braunschweiger Versorgungs v EUIPO – B.F. Energy (BF energy), T‑245/23, not published, EU:T:2024:190, paragraph 76 and the case-law cited).
63 The Board of Appeal concluded, in paragraphs 51 to 53 of the contested decisions, that there was a likelihood of confusion or association on the part of the target public, namely the part of the relevant Latvian public that would understand the contested marks as being the literal translation of the Cyrillic script of the earlier mark, taking into account the identity or similarity of the goods at issue, the average level of attention of that public, and the fact that the conceptually identical nature of the marks at issue outweighed their phonetic and visual differences, irrespective of the normal distinctive character of the earlier mark.
64 The Board of Appeal also found that the average Latvian consumer might believe that the goods covered by the marks at issue came from the same undertaking or from economically linked undertakings. That public, while noticing the differences between the marks, could perceive the contested marks as being a variation of the earlier mark adapted to meet the needs of consumers throughout the market of the European Union. In that regard, the Board of Appeal stated that the use of different languages was a marketing practice in order to better adapt the marks to different national markets.
65 The applicant submits that there is no likelihood of confusion. It maintains, in essence, that the significant visual and phonetic differences between the marks at issue outweigh any possible conceptual similarity.
66 EUIPO and the intervener dispute the applicant’s arguments.
67 EUIPO reproduces, in that regard and in essence, the assessment of the Board of Appeal and notes in particular that, contrary to the applicant’s assertions, account should be taken of the Latvian public and not the entire public of the European Union. After specifying, inter alia, that the method of buying the goods covered by the marks at issue was only one factor among all the elements which it was required to take into account in that global assessment, EUIPO concludes, in essence, that the points of dissimilarity between the signs at issue are not sufficient to dispel the relevant consumer’s impression that those signs are similar.
68 In this instance, it is necessary, first, to note that the marks at issue have many visual differences in respect of both their word elements and, as the applicant states, their figurative elements, which, while they do not dominate the overall impression, are nonetheless not negligible. As regards everyday food products, as the applicant rightly emphasises, purchasing is primarily based on their visual aspects in so far as they are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the mark applied to that product (see, to that effect, judgments of 11 December 2013, Eckes-Granini v OHIM – Panini (PANINI), T‑487/12, not published, EU:T:2013:637, paragraphs 63 and 65, and of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 61 and the case-law cited).
69 Second, it follows from paragraphs 37 and 38 above that the marks at issue had, overall, a very low degree of phonetic similarity, if any.
70 Third, although the signs at issue, as has been concluded in paragraph 59 above, are conceptually identical for a part of the relevant public, the word elements ‘tea’ and ‘чай’, on which, in particular, that conceptual identity is based, are devoid, as has been noted in paragraph 29 above, of distinctive character given that, for that public, they are descriptive of the goods covered by the marks. Those signs being conceptually identical is therefore likely, in the circumstances of the case, to play a limited role in the assessment of the likelihood of confusion on the part of that part of the public, in accordance with the case-law cited in paragraph 62 above.
71 Fourth, as regards the EUIPO decisions relied on by the intervener, it is sufficient to note that, in its review of legality, the Court is not bound by EUIPO’s decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
72 In those circumstances, and although the goods at issue were directed at the public at large which had a merely average level of attention, it must be held that, taking into account the normal distinctive character of the earlier mark, which is not disputed by the applicant, and the significant visual and phonetic differences between the marks at issue, the Board of Appeal, irrespective of whether the marks are conceptually identical for the part of the relevant public which it took into account in its examination, made an error of assessment in finding that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 in Cases T‑1066/23 and T‑1067/23, and within the meaning of Article 8(1)(b) of Regulation 2017/1001 in Cases T‑1068/23 and T‑1069/23.
73 Therefore, as the error of assessment thus made by the Board of Appeal is such as to, in itself, lead to the annulment of the contested decisions in their entirety, it follows that the single plea in law must be upheld, without it being necessary to examine the first complaint of that plea, and, consequently, the contested decisions must be annulled.
2. The claims for alteration of the contested decisions
74 The applicant’s second head of claim, seeking alteration of the contested decisions, must be understood as asking the Court to adopt the decision which the Board of Appeal, in each of the present cases, should have adopted, in accordance with the provisions of Regulations No 207/2009 and 2017/1001.
75 It should be borne in mind that the power of the Court to alter decisions does not have the effect of conferring on that court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that board of appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
76 In this instance, the Board of Appeal, as has been stated in paragraphs 8 and 12 above, acknowledged that there was a likelihood of confusion on the part of the average relevant Latvian consumer and recalled that a likelihood of confusion established in only one of the Member States relevant to the dispute was sufficient to declare the contested marks invalid. After considering, in paragraph 56 of the contested decisions, that it was not necessary to examine whether there was such a likelihood of confusion as regards the other earlier rights relied on in support of the applications for a declaration of invalidity, as reproduced or referred to in paragraph 4 above, the Board of Appeal declared those marks invalid in their entirety.
77 As is apparent from paragraph 72 above, the Board of Appeal was required to find that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 or Article 8(1)(b) of Regulation 2017/1001, between the contested marks and the earlier mark for the part of the relevant public which it took into account in its examination.
78 However, given that the Board of Appeal did not examine, in the contested decisions, the question of the invalidity of the contested marks as regards the other earlier rights, as reproduced or referred to in paragraph 4 above, relied on in support of the intervener’s applications for a declaration of invalidity, the Court cannot find that there is no likelihood of confusion and cannot determine what decision the Board of Appeal should have taken regarding each of those applications for a declaration of invalidity, without substituting its own reasoning for that of the Board of Appeal.
79 It will be for the Board of Appeal to rule in that regard, in order to make the decision which it falls to it to give on the appeals that are still pending before it (see judgment of 17 October 2019, Alliance Pharmaceuticals v EUIPO – AxiCorp (AXICORP ALLIANCE), T‑279/18, EU:T:2019:752, paragraph 67 and the case-law cited).
80 As the Court is not able to exercise its power to alter the contested decisions, the claims for alteration of those decisions must be rejected.
IV. Costs
81 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. Under Article 134(2) of those rules, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared.
82 In this instance, EUIPO and the intervener have been unsuccessful for the main part and the applicant has requested only that EUIPO be ordered to pay the costs. Consequently, EUIPO must be ordered to bear its own costs and to pay all the costs incurred by the applicant before the Court. For its part, the intervener must bear its own costs.
83 Furthermore, in so far as the applicant has also claimed that EUIPO should be ordered to pay the costs relating to the ‘cancellation proceedings’, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division (see judgment of 24 January 2024, TA Towers v EUIPO – Wobben Properties (Building materials), T‑201/22, not published, EU:T:2024:27, paragraph 75 and the case-law cited). Consequently, although the applicant’s claim should be understood as referring to the invalidity proceedings as a whole, the part of that claim regarding the costs relating to the proceedings before the Cancellation Division, which do not constitute recoverable costs, is inadmissible.
84 As regards the part of that claim requesting that EUIPO be ordered to pay the costs of the proceedings before the Board of Appeal, it will be for the Board of Appeal to rule, in the light of the present judgment, on the costs relating to those proceedings (see judgment of 3 July 2024, AC Marca Brands v EUIPO – Teb Barcelona (saniteb +), T‑530/23, not published, EU:T:2024:436, paragraph 75 and the case-law cited).
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls the decisions of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2023 (Cases R 72/2022‑1, R 77/2022‑1, R 75/2022‑1 and R 73/2022‑1);
2. Dismisses the actions as to the remainder;
3. Orders EUIPO to bear its own costs and to pay those incurred by Schweppes International Ltd in the proceedings before the General Court;
4. Orders May OOO to bear its own costs.
Marcoulli | Tomljenović | Valasidis |
Delivered in open court in Luxembourg on 26 February 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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