(Community trade mark – Opposition proceedings – Application for a figurative Community trade mark containing the word element ‘CRISTAL CASTELLBLANCH’ – Earlier national word mark CRISTAL – Genuine use of the earlier mark – Likelihood of confusion – Article 8(1)(b), Article 15(2)(a) and Article 43(2) and (3) of Regulation (EC) No 40/94)

Judgment of the Court of First Instance (Third Chamber), 8 December 2005

Summary of the Judgment

(Council Regulation No 40/94, Arts 15(2)(a) and 43(2) and (3))

(Council Regulation No 40/94, Art. 8(1)(b))

1.Proof of genuine use of an earlier national or Community trade mark which forms the basis of an opposition against a Community trade mark application also includes proof of use of the earlier mark together with other signs, in so far as such use does not alter the distinctive character of that mark in the form under which it was registered.

(see paras 30-34)

2.For the average French consumer and professionals and specialists from the wine-growing and restaurant sectors there is a likelihood of confusion between the figurative sign comprising the word element ‘CRISTAL CASTELLBLANCH’, in respect of which registration is sought as a Community trade mark for ‘Spanish sparkling wines of the cava variety’, belonging to Class 33 of the Nice Agreement and the word mark CRISTAL registered earlier in France for ‘wines originating from France, namely Champagne, sparkling wines and alcoholic beverages (except beers)’ belonging to that same class, even though renown or reputation of the earlier mark for ‘wines from Champagne’ cannot be found for the whole of the public but only for professional consumers who are highly specialised in the field, given the identity or, at least, the high degree of similarity between the goods in dispute and the similarity of the respective signs.

(see paras 46, 67-68)

8 December 2005 (*)

(Community trade mark – Opposition proceedings – Application for a figurative Community trade mark containing the word element ‘CRISTAL CASTELLBLANCH’ – Earlier national word mark CRISTAL – Genuine use of the earlier mark – Likelihood of confusion – Article 8(1)(b), Article 15(2)(a) and Article 43(2) and (3) of Regulation (EC) No 40/94)

In Case T-29/04,

Castellblanch, SA, established in Sant Sadurni d’Anoia (Spain), represented by F. de Visscher, E. Cornu, É. De Gryse and D. Moreau, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by I. de Medrano Caballero, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Champagne Louis Roederer SA, established in Reims (France), represented by P. Cousin, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 17 November 2003 (Case R 37/2000-2), relating to opposition proceedings between Castellblanch, SA and Champagne Louis Roederer SA,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),

composed of M. Jaeger, President, V. Tiili and O. Czúcz, Judges,

Registrar: K. Andova, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 26 January 2004,

having regard to OHIM’s responses lodged at the Registry of the Court of First Instance on 4 June and 28 September 2004,

having regard to intervener’s response lodged at the Registry of the Court of First Instance on 1 June 2004,

further to the hearing on 4 July 2005,

gives the following

Background to the dispute

1.1 On 1 April 1996, Castellblanch, SA filed an application for a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2.2 The mark in respect of which registration was sought is the following figurative sign (‘the mark CRISTAL CASTELLBLANCH’):

Reports of Cases

JUDGMENT OF THE COURT (Tenth Chamber)

6 March 2025 *

(Reference for a preliminary ruling – Environment – Directive 2011/92/EU – Assessment of the effects of certain public and private projects on the environment – Article 2(1) and Article 4(2) – Projects covered by Annex II – Urban development projects – Article 4(4) and (5) – Obligations of the developer and the competent authority when the Member State concerned decides to require the determination provided for in those paragraphs 4 and 5 for those projects – Account taken of observations submitted by a third party, indicating a potential impact of the project concerned on an animal species covered by the strict protection provided for in Article 12 of Directive 92/43/EEC)

In Case C-41/24,

REQUEST for a preliminary ruling under Article 267 TFEU from the High Court (Ireland), made by decision of 1 December 2023, received at the Court on 22 January 2024, in the proceedings

Waltham Abbey Residents Association

An Bord Pleanála,

Ireland,

The Attorney General,

notice party:

O’Flynn Construction Co. Unlimited Company,

THE COURT (Tenth Chamber),

composed of D. Gratsias, President of the Chamber, J. Passer (Rapporteur) and B. Smulders, Judges,

Advocate General: J. Kokott,

Registrar: A. Calot Escobar,

having regard to the written procedure,

* Language of the case: English.

EN ECLI:EU:C:2025:140

JUDGMENT OF 6. 3. 2025 – CASE C-41/24 WALTHAM ABBEY RESIDENTS ASSOCIATION

after considering the observations submitted on behalf of:

–Waltham Abbey Residents Association, by J. Devlin, Senior Counsel, J. Kenny, Barrister-at-Law, and D. Healy, Solicitor,

–An Bord Pleanála, by. B. Foley, Senior Counsel, A. Carroll, Barrister-at-Law, and P. Reilly, Solicitor,

–Ireland, by M. Browne, Chief State Solicitor, S. Finnegan, K. Hoare and A. Joyce, acting as Agents, and by D. McGrath, Senior Counsel, F. Valentine, Senior Counsel, and E. O’Callaghan, Barrister-at-Law,

–the European Commission, by M. Noll-Ehlers and N. Ruiz García, acting as Agents,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

1This request for a preliminary ruling concerns the interpretation of Directive 2011/92/EU of the European Parliament and of the Council of 13 December 2011 on the assessment of the effects of certain public and private projects on the environment (OJ 2012 L 26, p. 1), as amended by Directive 2014/52/EU of the European Parliament and of the Council of 16 April 2014 (OJ 2014 L 124, p. 1) (‘Directive 2011/92’).

2The request has been made in proceedings between, on the one hand, Waltham Abbey Residents Association and, on the other hand, An Bord Pleanála (Planning Board, Ireland; ‘the Board’), Ireland and the Attorney General (Ireland), concerning authorisation granted by the Board for a strategic residential housing development.

Legal context

European Union law

Directive 2011/92

3Recitals 7 to 9 of Directive 2011/92 state:

(7)Development consent for public and private projects which are likely to have significant effects on the environment should be granted only after an assessment of the likely significant environmental effects of those projects has been carried out. …

(8)Projects belonging to certain types have significant effects on the environment and those projects should, as a rule, be subject to a systematic assessment.

ECLI:EU:C:2025:140

Projects of other types may not have significant effects on the environment in every case and those projects should be assessed where the Member States consider that they are likely to have significant effects on the environment.’

4Article 2(1) of that directive provides:

‘Member States shall adopt all measures necessary to ensure that, before development consent is given, projects likely to have significant effects on the environment by virtue, inter alia, of their nature, size or location are made subject to a requirement for development consent and an assessment with regard to their effects on the environment. Those projects are defined in Article 4.’

5Under Article 3(1) of that directive:

‘The environmental impact assessment shall identify, describe and assess in an appropriate manner, in the light of each individual case, the direct and indirect significant effects of a project on the following factors:

…

(b)biodiversity, with particular attention to species and habitats protected under [Council Directive 92/43/EEC of 21 May 1992 on the conservation of natural habitats and of wild fauna and flora (OJ 1992 L 206, p. 7), as amended by Council Directive 2013/17/EU of 13 May 2013 (OJ 2013 L 158, p. 193) (“Directive 92/43”)] and Directive 2009/147/EC [of the European Parliament and of the Council of 30 November 2009 on the conservation of wild birds (OJ 2010 L 20, p. 7)];

…’

6Article 4 of Directive 2011/92 provides:

1.Subject to Article 2(4), projects listed in Annex I shall be made subject to an assessment in accordance with Articles 5 to 10.

2.Subject to Article 2(4), for projects listed in Annex II, Member States shall determine whether the project shall be made subject to an assessment in accordance with Articles 5 to 10. Member States shall make that determination through:

(a)a case-by-case examination;

(b)thresholds or criteria set by the Member State.

Member States may decide to apply both procedures referred to in points (a) and (b).

3.Where a case-by-case examination is carried out or thresholds or criteria are set for the purpose of paragraph 2, the relevant selection criteria set out in Annex III shall be taken into account. Member States may set thresholds or criteria to determine when projects need not undergo either the determination under paragraphs 4 and 5 or an environmental impact assessment, and/or thresholds or criteria to determine when projects shall in any case be made subject to an environmental impact assessment without undergoing a determination set out under paragraphs 4 and 5.

4.Where Member States decide to require a determination for projects listed in Annex II, the developer shall provide information on the characteristics of the project and its likely significant effects on the environment. The detailed list of information to be provided is specified in Annex IIA. The developer shall take into account, where relevant, the available results of other relevant assessments of the effects on the environment carried out pursuant to Union legislation other than this Directive. The developer may also provide a description of any features of the project and/or measures envisaged to avoid or prevent what might otherwise have been significant adverse effects on the environment.

5.The competent authority shall make its determination, on the basis of the information provided by the developer in accordance with paragraph 4 taking into account, where relevant, the results of preliminary verifications or assessments of the effects on the environment carried out pursuant to Union legislation other than this Directive. The determination shall made available to the public and:

(a)where it is decided that an environmental impact assessment is required, state the main reasons for requiring such assessment with reference to the relevant criteria listed in Annex III; or

(b)where it is decided that an environmental impact assessment is not required, state the main reasons for not requiring such assessment with reference to the relevant criteria listed in Annex III, and, where proposed by the developer, state any features of the project and/or measures envisaged to avoid or prevent what might otherwise have been significant adverse effects on the environment.

Member States shall ensure that the competent authority makes its determination as soon as possible and within a period of time not exceeding 90 days from the date on which the developer has submitted all the information required pursuant to paragraph 4. In exceptional cases, for instance relating to the nature, complexity, location or size of the project, the competent authority may extend that deadline to make its determination; in that event, the competent authority shall inform the developer in writing of the reasons justifying the extension and of the date when its determination is expected.’

7Annex II.A of that directive contains the list of ‘information to be provided by the developer on the projects listed in Annex II’. That list reads as follows:

A description of the project, including in particular:

(a)a description of the physical characteristics of the whole project and, where relevant, of demolition works;

(b)a description of the location of the project, with particular regard to the environmental sensitivity of geographical areas likely to be affected.

A description of the aspects of the environment likely to be significantly affected by the project.

A description of any likely significant effects, to the extent of the information available on such effects, of the project on the environment resulting from:

(a)the expected residues and emissions and the production of waste, where relevant;

(b)the use of natural resources, in particular soil, land, water and biodiversity.

ECLI:EU:C:2025:140

JUDGMENT OF 6. 3. 2025 – CASE C-41/24 WALTHAM ABBEY RESIDENTS ASSOCIATION

4.The criteria of Annex III shall be taken into account, where relevant, when compiling the information in accordance with points 1 to 3.’

8Annex III to that directive sets out the ‘criteria to determine whether the projects listed in Annex II should be subject to an environmental impact assessment’.

Directive 2014/52

9Recitals 11 and 29 of Directive 2014/52 state:

(11)The measures taken to avoid, prevent, reduce and, if possible, offset significant adverse effects on the environment, in particular on species and habitats protected under [Directive 92/43] and Directive 2009/147 …, should contribute to avoiding any deterioration in the quality of the environment and any net loss of biodiversity, in accordance with the [European] Union’s commitments in the context of the [United Nations Convention on Biological Diversity, signed in Rio de Janeiro on 5 June 1992,] and the objectives and actions of the Union Biodiversity Strategy up to 2020 laid down in the [Communication from the Commission to the European Parliament, the Council, the Economic and Social Committee and the Committee of the Regions] of 3 May 2011 entitled ‘Our life insurance, our natural capital: an EU biodiversity strategy to 2020’ [(COM(2011) 244 final)]

…

(29)When determining whether significant effects on the environment are likely to be caused by a project, the competent authorities should identify the most relevant criteria to be considered and should take into account information that could be available following other assessments required by Union legislation in order to apply the screening procedure effectively and transparently. In this regard, it is appropriate to specify the content of the screening determination, in particular where no environmental impact assessment is required. Moreover, taking into account unsolicited comments that might have been received from other sources, such as members of the public or public authorities, even though no formal consultation is required at the screening stage, constitutes good administrative practice.’

Directive 92/43

10Article 6(3) of Directive 92/43 provides:

‘Any plan or project not directly connected with or necessary to the management of the site but likely to have a significant effect thereon, either individually or in combination with other plans or projects, shall be subject to appropriate assessment of its implications for the site in view of the site’s conservation objectives. In the light of the conclusions of the assessment of the implications for the site and subject to the provisions of paragraph 4, the competent national authorities shall agree to the plan or project only after having ascertained that it will not adversely affect the integrity of the site concerned and, if appropriate, after having obtained the opinion of the general public.’

11Article 12(1) of that directive provides:

‘Member States shall take the requisite measures to establish a system of strict protection for the animal species listed in Annex IV(a) in their natural range, prohibiting:

(a)all forms of deliberate capture or killing of specimens of these species in the wild;

(b)deliberate disturbance of these species, particularly during the period of breeding, rearing, hibernation and migration;

(c)deliberate destruction or taking of eggs from the wild;

(d)deterioration or destruction of breeding sites or resting places.’

12Point (a) of Annex IV to that directive mentions ‘all species’ of bats belonging to the suborder of ‘microchiroptera’.

Irish law

3 The goods in respect of which registration was sought fall within Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘wines and sparkling wines’.

4 On 24 November 1997, the application was published in Community Trade Marks Bulletin No 29/1997.

5 On 23 February 1998, Champagne Louis Roederer SA filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 to registration of that Community trade mark. The opposition was based on the following registrations of the word sign CRISTAL:

–French trade mark registration No 1 114 613 of 27 November 1979, renewed on 13 November 1989 (No 1 559 904) and on 20 December 1991 (No 1 713 576) for ‘wines originating from France, namely champagne, sparkling wines and alcoholic beverages (except beers)’, belonging to Class 33;

–international trade mark registration No 451 185, requested on 29 January 1980, applicable in Austria, the Benelux countries, Italy and Portugal for ‘wines originating from France, namely champagne and sparkling wines’, belonging to Class 33;

–German trade mark registration No DD 647 501 of 18 April 1991 for ‘alcoholic beverages (except beers)’, belonging to Class 33;

–United Kingdom trade mark registration No 1 368 211 applied for on 22 December 1988 for ‘wines from Champagne’, belonging to Class 33;

–Irish trade mark registration No 150 404 of 30 October 1992 for ‘alcoholic beverages (except beers)’, belonging to Class 33;

–Danish trade mark registration VR 06.021 1995 of 15 September 1995 for ‘champagne, sparkling wines, wine and Cognac’, belonging to Class 33.

6 The opposition was also based on well-known trade marks in Belgium, France, Great Britain and Germany for ‘wines from Champagne’.

7 The opposition concerned all of the goods covered by the earlier registrations for the sign CRISTAL and was directed against all of the goods covered by the trade mark applied for. The reasons given in support of that opposition were those laid down in Article 8(1)(a) and (b) of Regulation No 40/94.

8 By decision of 26 October 1999, the Opposition Division upheld the opposition. It based its decision solely on the earlier French mark (‘the earlier mark’). It held, firstly, that the evidence submitted by the intervener was sufficient to prove genuine use of the earlier mark, and secondly that, given the identity of the goods at issue and the similarity of the conflicting signs, as well as the highly distinctive character of the earlier mark on the French market, there was a likelihood of confusion on the part of the relevant public, namely the French consumer.

9 On 22 December 1999, the applicant filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94, against the Opposition Division’s decision.

10 During the procedure before the Board of Appeal the applicant limited its trade mark application to the following products, belonging to Class 33: ‘Spanish sparkling wines of the cava variety’.

11 By decision of 17 November 2003 (‘the contested decision’), the Board of Appeal dismissed the appeal. It found that the earlier mark had been used both genuinely and effectively and it concluded that there was similarity between the goods in question, along with similarity between the opposing signs which could have resulted in likelihood of confusion including likelihood of association on the part of the French public.

Forms of order sought

12 The applicant claims that the Court of First Instance should:

–annul the contested decision;

–order OHIM to pay the costs.

13 OHIM contends that the Court of First Instance should:

–dismiss the application;

–order the applicant to pay the costs.

14 The intervener claims that the Court of First Instance should:

–dismiss the application;

–order the applicant to pay the costs.

The admissibility of the documents produced for the first time before the Court of First Instance

15 The applicant submits that Annexes 23 to 30 of the intervener’s response must be declared inadmissible because they were produced for the first time before the Court of First Instance.

16 It should be noted that Annexes 23 and 24 are copies of national judicial decisions. Although produced for the first time before the Court of First Instance those documents do not serve as evidence in the narrow sense, but concern national case-law to which, even after the procedure before OHIM, a party is entitled to refer.

17 Annex 25 consists of a copy of an extract from a bilingual French-Spanish dictionary. It is not established that that document was produced before OHIM. However, that document demonstrates a fact which is set out in the contested decision, namely that the Spanish word ‘cava’ is the equivalent of the French term ‘champagne’. Thus, the fact that the intervener referred to a dictionary is immaterial given that what is actually shown by that reference is part of the factual framework of the procedure before the Board of Appeal.

18 Annexes 26 to 29 are copies of the correspondence between the Registry of the Court of First Instance and the intervener’s representative in relation to the current proceedings. The applicant cannot, therefore, plead that they are inadmissible.

19 Annex 30 consists of photos of the box in which bottles bearing the mark CRISTAL are marketed. It is apparent from the administrative file before OHIM that the documents produced before it include photos of that box. Thus, the Court of First Instance may take that annex into account.

20 Consequently, the allegations of inadmissibility in Annexes 23 to 30 of the response of the intervener must be rejected.

Substance

21 The applicant submits two pleas in support of its action. The first plea alleges infringement of Article 15(2)(a) and Article 43(2) and (3) of Regulation 40/94 and of Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1, ‘the implementing regulation’). The second plea alleges infringement of Article 8(1)(b) of Regulation No 40/94.

The first plea, alleging infringement of Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94 and of Rule 22(2) of the implementing regulation

Preliminary observations

22 In the context of the first plea the intervener submitted a ‘preliminary observation’ regarding the application of Article 43(2) and (3) of Regulation No 40/94 and Rule 22(1) of the implementing regulation which OHIM interpreted as a plea based on an argument relating to infringement of those provisions which had not been raised in the application, as permitted by Article 134(3) of the Rules of Procedure of the Court of First Instance, but which is inadmissible because it was not submitted before OHIM.

23 The intervener submits that the applicant never requested, in application of Article 43(2) and (3) of Regulation No 40/94, that it show use of the earlier mark and that OHIM never invited it, in application of Rule 22(1) of the implementing regulation, to prove such use, setting a deadline for it to do so. Thus, according to the intervener, as is evidenced by the judgment in Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-0000, contrary to the Board of Appeal’s approach it is unnecessary to consider whether the documentation produced by the intervener to prove the reputation of its mark does or does not attest to genuine use of that mark. The applicant’s first plea must therefore be rejected.

24 It is sufficient to note that, as the intervener does not contest the scope of the contested decision, which upheld the opposition, and is not seeking annulment or alteration of that decision (see, to that effect, Joined Cases T-160/02 to T-162/02 Naipes Heraclio Fournier v OHIM – France Cartes (sword in a pack of cards, knight of clubs and king of swords) [2005] ECR II-0000, paragraphs 17 to 20), its preliminary observation cannot be used in support of its submissions.

25 Therefore, it is not necessary to consider that preliminary observation.

The alleged alteration of the distinctive character of the earlier mark

26 The applicant submits that the intervener has not provided evidence of genuine use of the earlier mark and that the contested decision thus infringes Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94 and Rule 22(2) of the implementing regulation. Where a mark is composed of several elements only one or some of which are distinctive and have rendered the mark as a whole registrable, an alteration of that element or its omission or exchange for another element will generally mean that the distinctive character of that mark is altered. It refers in that respect to OHIM’s decisions in the past.

27 OHIM and the intervener contest the applicant’s arguments and affirm that use of the mark CRISTAL has been shown.

28 The Court of First Instance points out that, as is apparent from the ninth recital in the preamble to Regulation No 40/94, the Council considered that there was no justification for protecting an earlier trade mark except where that mark had actually been used. In accordance with that recital, Article 43(2) and (3) of Regulation No 40/94 provide that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of publication of the Community trade mark application against which an opposition has been filed (Case T-39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II-5233, paragraph 34, and Case T-356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II-0000, paragraph 25).

29 Under Rule 22(2) of the implementing regulation, proof of use must cover the place, time, extent and nature of use of the earlier mark.

30 In addition, it must be noted that, under the combined provisions of Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94, proof of genuine use of an earlier national or Community trade mark which forms the basis of an opposition against a Community trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see, to that effect, Case T-156/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO AIRE) [2003] ECR II-2789, paragraph 44).

31 In the present case the applicant submits that it is evident from the proof of use and of repute produced by the intervener that the latter used the earlier mark in a form different to the one under which it was registered. The earlier mark is used for bottles which have on their main and neck labels, in addition to the word ‘cristal’, the denomination ‘Louis Roederer’ several times, as well as a symbol that includes the letters ‘l’ and ‘r’ and some complementary figurative elements which appear several times. According to the applicant, the combination of the word ‘cristal’ with the denomination ‘Louis Roederer’, the letters ‘lr’ and the accompanying figurative elements substantially alters the identity of the earlier mark, especially when account is taken of the strong distinctive character of the words ‘Louis Roederer’, and does not constitute genuine use of the earlier mark CRISTAL. Therefore, the opposition filed by the intervener and, consequently, the contested decision are wholly unfounded.

32 The Court of First Instance points out, first, following the example of OHIM, that the applicant does not contest the place, time or extent of use of the earlier mark but only the nature of that use.

33 In the contested decision the Board of Appeal found that there is no precept in the Community trade mark system that obliges the opponent to prove the use of his earlier mark on its own, independently of any other mark. According to the Board of Appeal, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company, as is the case particularly in the context of the automobile and wine industries.

34 That approach must be followed. The situation is not that the intervener’s mark is used under a form different to the one under which it was registered, but that several signs are used simultaneously without altering the distinctive character of the registered sign. As OHIM rightly pointed out, in the context of the labelling of wine products joint affixing of separate marks or indications on the same product, in particular the name of the winery and the name of the product, is a common commercial practice.