Case T‑195/20

Sociedade da Água de Monchique, SA

v

European Union Intellectual Property Office

Judgment of the General Court (Second Chamber), 22 September 2021

(EU trade mark – Opposition proceedings – Application for the EU figurative mark chic ÁGUA ALCALINA 9,5 PH – Earlier EU word mark CHIC BARCELONA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

1. EU trade mark – Appeals procedure – Action before the EU judicature – Procedural role of the EUIPO – Right of the EUIPO, although designated as the defendant, to support the applicant’s claims – Action that has become devoid of purpose – None

   (Rules of Procedure of the General Court, Art. 172; European Parliament and Council Regulation 2017/1001, Art. 166(7))

   (see paragraphs 15, 17)

2. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity between the goods or services in question – Criteria for assessment – Bottled drinking water or mineral water – Alcoholic beverages

   (Council Regulation No 207/2009, Art. 8(1)(b))

   (see paragraphs 30, 31, 39-47, 50-70)

3. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Figurative mark chic ÁGUA ALCALINA 9,5 PH and word mark CHIC BARCELONA

   (Council Regulation No 207/2009, Art. 8(1)(b))

   (see paragraphs 33, 77, 78)

Résumé

Sociedade da Água de Monchique, SA, applied for registration of the EU figurative mark chic ÁGUA ALCALINA 9,5 PH.

Following an opposition filed by Mr Ventura Vendrell, the Board of Appeal of the European Union Intellectual Property Office (EUIPO) refused to register the mark applied for, inter alia, for the following goods in Class 32: ( 1 )‘Bottled drinking water; mineral water (non-medicated –); mineral water [beverages]’.

The opposition was based, inter alia, on the earlier EU word mark CHIC BARCELONA, registered for the following goods in Class 33: ‘Alcoholic beverages (except beer); wine; sparkling wines; liqueurs; spirits [beverages]; brandy’. The Board of Appeal found that there was a low degree of similarity between the goods at issue and concluded that there was a likelihood of confusion between the marks at issue. ( 2 )

The General Court annuls the decision of the Board of Appeal and holds that the goods in question are dissimilar.

Findings of the Court

As a preliminary point, the Court states that EUIPO may endorse an applicant’s claim for annulment of a decision of a board of appeal without the action becoming devoid of purpose. EUIPO is not obliged to defend systematically every contested decision and, given the independence of the Boards of Appeal, it may not amend or withdraw their decisions or give instructions to that effect.

As regards the comparison of the goods, the Court finds, first, that, due to the absence of alcohol in their composition, the bottled and mineral waters covered by the mark applied for differ in nature to all the goods covered by the earlier mark. In that regard, it points out that the effects in the consumption of alcohol are not found in the consumption of bottled water or mineral waters. Also, for a non-negligible part of the public of the European Union, alcohol consumption is likely to pose a genuine health problem.

Secondly, the purpose and method of use of the goods in question are different. Unlike bottled water and mineral waters, alcoholic beverages are not generally intended to quench thirst and do not correspond to a vital need.

Thirdly, the goods at issue are not complementary because the purchaser of one of the goods covered by the mark applied for is not obliged to purchase a product covered by the earlier mark and vice versa.

Fourthly, the goods at issue are not in competition with each other. Given the difference resulting from the presence or absence of alcohol, the average consumer would not regard them as interchangeable. Moreover, bottled water and mineral waters are, in general, significantly less expensive than alcoholic beverages. Since price can have a decisive influence on the question of product interchangeability, the goods in question are not, from that point of view, interchangeable.

Fifthly, as regards the distribution channels of the goods at issue, the fact that they can be sold in the same establishments does not mean that they must be regarded as similar.

Accordingly, the Court finds that the goods at issue are not similar to a low degree, but are dissimilar, and rules out any likelihood of confusion between the marks at issue.

( 1 ) 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.

( 2 ) Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).