Judgment;Abstract — ECLI:EU:T:2019:763
Date: 2019-10-24
Language of the case: English
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - successful
Origin: Poland

summary of those pleas. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (see, to that effect, judgment of 22 June 2017, Biogena Naturprodukte v EUIPO (ZUM wohl), T‑236/16, EU:T:2017:416, paragraph 11 and the case-law cited). 68 It should be noted that, as EUIPO pointed out, the applicant makes a general claim that there is no similarity between the goods and services at issue, without however putting forward any supporting arguments that would call into question the Board of Appeal’s assessment in respect of the comparison of the services covered by the mark applied for and the goods covered by the earlier marks, in particular. 69 It follows that that claim does not meet the requirements of the Rules of Procedure and that, consequently, the complaint must be declared inadmissible within the meaning of the case-law cited in paragraph 67 above. Comparison of the signs at issue 70 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). 71 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 of 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 43). 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). 72 The assessment of the similarity of the signs at issue must be carried out in the light of those considerations. 73 In the present case, the mark applied for consists of four slightly stylised word elements, namely ‘flis’, in gold, ‘happy’, in yellow, and ‘moreno’ and ‘choco’, in white. The sign also consists of figurative elements, such as a brown gradient background, with a lighter shade in the upper part and a darker shade in the lower part, and a golden crown placed above the word element ‘flis’ and to the left of the word ‘happy’. 74 The earlier marks contain a single word element, ‘moreno’. Earlier mark No 30702839 comprises that word element in grey on a black background framed by a grey border. As for earlier mark No 30702840, it comprises the same word element with the first and last letters ‘m’ and ‘o’ larger than the others and two figurative elements representing two vertical lines placed at each end. – Identification of the distinctive and dominant elements of the mark applied for 75 The applicant submits, in essence, that the dominant element is not the word element ‘moreno’, but the gold-coloured crown that is placed at the centre of the sign applied for, that crown also being protected by two EU figurative marks registered in the applicant’s name, one in the same colour and the other in black. The applicant claims that the crown is not a negligible element, but is, on the contrary, a distinctive element of the sign referring to its proprietor, the applicant, and that the crown, in addition to being a dominant element, is distinguished by its golden colour on a dark black and brown background. 76 EUIPO and the intervener dispute those arguments. 77 For the purpose of assessing the distinctive character of an element of 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 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 (judgment of 8 November 2016, For Tune v EUIPO — Gastwerk Hotel Hamburg (fortune), T‑579/15, not published, EU:T:2016:644, paragraph 34). 78 Furthermore, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting the word elements than by describing the figurative element of that mark (see, to that effect, judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 38 and the case-law cited). 79 As regards the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35). 80 In the first place, it should be noted, as the Board of Appeal and EUIPO pointed out, that the word ‘moreno’ is the distinctive element of the sign applied for, on the ground that that word has no meaning in German. The applicant’s argument that the word element ‘moreno’ has a meaning in Spanish, a meaning which the German-speaking general public is supposed to perceive in that word element, cannot call that conclusion into question, since, as the applicant admits, Spanish is hardly known to the German-speaking general public and that argument is not substantiated in any way. In that regard, it should be recalled that, as stated in paragraph 28 above, the evidence put forward by the applicant in support of its argument was declared inadmissible. 81 Furthermore, the Board of Appeal’s assessment in paragraph 33 of the contested decision, which is not disputed by the applicant, that the relevant public would understand the words ‘happy’ and ‘choco’ (by reference to the German word ‘Schokolade’) as the pleasure to be derived from consuming the goods covered by the mark applied for and as the key ingredient or flavour of the goods at issue, respectively, must be upheld. Consequently, it must be stated, first, that the word element ‘choco’ is allusive in that it clearly refers to chocolate or to an abbreviation thereof (see, to that effect, judgment of 25 January 2017, Sun System Kereskedelmi és Szolgáltató v EUIPO — Hollandimpex Kereskedelmi és Szolgáltató (Choco Love), T‑325/15, not published, EU:T:2017:29, paragraph 57) and, secondly, that the element ‘happy’ has weak distinctive character. 82 As regards the figurative elements, it must be noted that the background, both by virtue of its geometric shape and the brown colour gradient, even though the latter may refer to the colour of coffee or chocolate, is banal and cannot attract the attention of the relevant public. 83 Moreover, the applicant’s argument seeking, in essence, to demonstrate that the crown is distinctive on the ground that it was the subject of two earlier applications for registration of EU figurative marks No 008328346 and No 015001266 cannot succeed. 84 It should be noted that figurative marks No 008328346 and No 015001266 consist of the word element ‘flis’, that is to say, a part of the applicant’s trade name, and a figurative element, such as, respectively, a black-coloured crown and a gold-coloured crown. 85 In that regard, it should be noted that the sign of which those figurative marks consist is entirely included in the mark applied for. However, while the word ‘flis’, placed below the crown, is not clearly discernible, with the result that the relevant public will not pay any particular attention to it, it should be noted that the distinctive character of the gold crown must be assessed in the light of the overall impression of the sign in respect of which registration is sought in the present case. As observed by EUIPO, that crown will be perceived by the relevant public as laudatory instead of indicating a commercial origin of the goods and services as originating from a particular undertaking. 86 Therefore, the Board of Appeal’s assessment in paragraphs 32 and 33 of the contested decision that, in essence, first, the word element ‘moreno’ is the distinctive element, the word ‘choco’ is allusive and the word element ‘happy’ has weak distinctive character and, secondly, the figurative elements are devoid of distinctive character, with the exception of the element representing the golden crown, which is however laudatory and, consequently, is not particularly distinctive, must be upheld. Furthermore, it should be noted that the word ‘flis’ will go unnoticed in the overall impression of the sign applied for. 87 In the second place, the Board of Appeal’s assessment in paragraphs 33 and 34 of the contested decision that the word ‘moreno’ is the dominant element of the sign applied for owing to its central position in the sign and the significantly larger size of its letters than that of the remaining elements ‘happy’ and ‘choco’, must be upheld. Furthermore, the figurative elements are not capable of calling that conclusion into question, since, in the overall impression of the sign, the brown gradient background and the crown positioned in the upper left part of the sign appear negligible and secondary, respectively. 88 Accordingly, the contested decision is free of error in that respect. – The visual similarity 89 The applicant submits that, even though the signs at issue share the word element ‘moreno’, they are dissimilar in that they do not share the same features, structure, stylisation or colour combination. In that regard, it claims that the sign applied for is dissimilar to the earlier signs on account of the presence of the words ‘happy’ and ‘choco’, the gold-coloured crown, the use of the colours brown, black, white, gold and yellow, and the stylisation of the letter ‘m’ in the word element ‘moreno’. 90 EUIPO and the intervener dispute those arguments. 91 In the present case, the earlier marks consist of the single word ‘moreno’, whereas the mark applied for comprises four word elements, namely ‘flis’, ‘happy’, ‘moreno’ and ‘choco’, including the word element shared with the earlier signs. 92 Thus, the signs at issue share the same sequence of letters in the same order, namely ‘m’, ‘o’, ‘r’, ‘e’, ‘n’ and ‘o’, and the fact that those signs are partially identical may create a certain impression of visual similarity on the part of the relevant public (see, to that effect, judgment of 6 December 2018, Tomasz KawałkoTrofeum v EUIPO — Ferrero (KINDERPRAMS), T‑115/18, not published, EU:T:2018:882, paragraph 48 and the case-law cited). 93 In that regard, although the presence in each of the signs at issue of several letters in the same order may be of some importance in the assessment of the visual similarity between the two signs at issue (judgment of 20 October 2016, Clover Canyon v EUIPO — Kaipa Sportswear (CLOVER CANYON), T‑693/15, not published, EU:T:2016:620, paragraph 29), the fact that the earlier sign is entirely included in the sign applied for reinforces the visual similarity of those signs (judgment of 15 June 2011, Graf-Syteco v OHIM — Teco Electric & Machinery (SYTECO), T‑229/10, not published, EU:T:2011:273, paragraph 34). 94 The fact that, first, the mark applied for consists of a different number of words and, secondly, the word ‘moreno’ is at the centre of the expression ‘flis happy moreno choco’ is insufficient to counteract all of the visual similarity, on the basis that the six letters of the word ‘moreno’ are the same and the sole word element of the earlier marks is included in the mark applied for. Moreover, the word element ‘flis’, placed below the golden crown, is hardly noticeable and will go unnoticed. 95 In the light of the overall impression of each of the signs at issue, the figurative elements cannot call that assessment into question. First, the brown gradient background present in the mark applied for and the black background that is only present in earlier mark No 30702839 referred to in the first indent of paragraph 6 above are negligible and have no influence on the relevant public, since they are ordinary shapes and colours that have no originality. Secondly, the gold-coloured crown appears secondary, contrary to what is claimed by the applicant, on the basis of its relatively small size compared to the other word and figurative elements and its position in the upper left part of the mark applied for, the relevant public paying, furthermore, greater attention to the word elements. Thirdly, as regards the word elements, it must be noted that the grey and white colours and the font are not particularly notable. 96 It follows that the Board of Appeal’s assessment in paragraphs 35 and 37 of the contested decision that the signs at issue are visually similar must be upheld on the ground, first, that the fact that the word element ‘moreno’ is the same cannot be offset by the decorative differences between the signs and, secondly, that the dominant element of the mark applied for reproduces the sole word element of the earlier marks. 97 Therefore, the Board of Appeal was fully entitled to conclude that the signs at issue were visually similar. – The phonetic similarity 98 The applicant submits that the signs at issue are not phonetically similar in that the sign applied for consists of 3 words, 7 syllables and 16 letters, whereas the earlier signs consist of a single word, 3 syllables and 6 letters. According to the applicant, that difference affects the rhythm and intonation of the name in the signs. 99 EUIPO and the intervener dispute those arguments. 100 It must be recalled that the phonetic reproduction of a composite sign corresponds to that of all its word elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level. Therefore, the figurative elements of the earlier sign should not be taken into account for the purpose of a phonetic comparison of the signs at issue (see judgment of 15 October 2015, Wolverine International v OHIM — BH Stores (cushe), T‑642/13, not published, EU:T:2015:781, paragraph 62 and the case-law cited). 101 Although the signs at issue are of a different length and consist of a different number of words, the overall impression produced by them leads to the finding that they are phonetically similar, owing to their common component (see, to that effect, judgment of 20 October 2011, COR Sitzmöbel Helmut Lübke v OHIM — El Corte Inglés (COR), T‑214/09, not published, EU:T:2011:612, paragraph 63). 102 The fact that the number of syllables of the signs at issue is different is not sufficient to rule out any similarity between the marks, which must be assessed on the basis of the overall impression produced by their full pronunciation (see, to that effect, judgment of 28 October 2010, Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, not published, EU:T:2010:458, paragraph 39 and the case-law cited; judgment of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 50). 103 As a preliminary remark, as follows from paragraph 85 above, the word element ‘flis’ will not be pronounced by the relevant public on the basis that it is hardly discernible. 104 In the present case, the other word elements of the mark applied for, taken as a whole, comprise a total of seven syllables grouped into three words, namely ‘hap’, ‘py’, ‘mo’, ‘re’, ‘no’, ‘cho’ and ‘co’, whereas the earlier marks consist of the same single word element composed of three syllables, namely ‘mo’, ‘re’ and ‘no’. 105 It should be noted that, even though the signs at issue have a distinct syllabic structure on the basis that they contain a different number of words, they are similar, since the single word element ‘moreno’ making up the earlier marks is included in the mark applied for and will be pronounced in the same way and with the same intonation, so that the word elements ‘happy’ and ‘choco’ in the mark applied for are not capable of counteracting that phonetic similarity (see, to that effect, judgments of 8 November 2016, fortune, T‑579/15, not published, EU:T:2016:644, paragraph 49 and the case-law cited, and of 17 October 2018, Szabados v EUIPO — Sociedad Española de Neumología y Cirugía Torácica (Separ) (MicroSepar), T‑788/17, not published, EU:T:2018:691, paragraphs 31 and 32). 106 Consequently, the Board of Appeal was fully entitled to find in paragraphs 36 and 37 of the contested decision that the signs at issue were phonetically very similar. – The conceptual similarity 107 The applicant submits that, although the term ‘moreno’ has no particular meaning in German, the average German consumer would understand perfectly that the word ‘moreno’ means ‘brown’ in Spanish and thus refers to the brown colour of the cocoa or coffee-based products covered by the earlier marks. In that regard, the applicant claims in support of those arguments that, first, Spanish is one of the most widely spoken languages in the world and, secondly, the average German consumer does have some knowledge of Spanish gained, for example, from professional experience, a hobby, general knowledge or interests. 108 EUIPO and the intervener dispute those arguments. 109 In the present case, it is undisputed that the term ‘moreno’ has no meaning in German and that the word elements ‘happy’ and ‘choco’ are weakly distinctive and allusive, respectively, with the result that the Board of Appeal’s assessment made, in essence, in paragraphs 36 and 37 of the contested decision is free of error in that respect. 110 Furthermore, the applicant’s argument that the relevant public would be able to understand that the word ‘moreno’ means ‘brown’ in Spanish and thus the link to the goods covered by the earlier marks cannot succeed. 111 First, it should be recalled that Annexes A.9 and A.10 to the application, respectively printouts of a Spanish-English online dictionary and a one-page printout from the online encyclopaedia Wikipedia, were declared inadmissible for the reasons set out in paragraph 28 above. Since that evidence must be disregarded, irrespective of its probative value, it must be noted that the applicant does not sufficiently demonstrate that the relevant public, consisting of the average German consumer, would have a sufficient knowledge of Spanish to identify the word ‘moreno’ as meaning ‘brown’. 112 Secondly, it is not established that the relevant public would perceive the word element ‘moreno’ as having a clear meaning in the signs at issue and thus revealing a link between that word and, on the one hand, the goods and services covered by the mark applied for and, on the other hand, the goods covered by the earlier marks. 113 Accordingly, no conceptual comparison can be made in the present case. 114 It follows from all the foregoing that the signs at issue are similar. The likelihood of confusion 115 The applicant submits that the visual, phonetic and conceptual differences between the signs at issue exclude any likelihood of confusion on the part of the consumer and states that the comparison should also be based on the distinctive and dominant components. In that regard, it claims that the earlier marks lack distinctive character, which the Board of Appeal clearly overlooked in its assessment of the likelihood of confusion, since, citing examples in support of its arguments, the applicant claims that the word element is commonly used by other manufacturers to describe a type of confectionery or goods in Classes 30 and 35. The applicant adds that, should the Court uphold the contested decision, the intervener would be justified in taking legal action against other companies using the term ‘moreno’ to describe a food product. Moreover, it claims that the Board of Appeal did not take into account the evidence that it provided and that it did not give sufficient reasons for upholding the opposition. 116 EUIPO and the intervener dispute those arguments. 117 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). 118 In the present case, a finding that the earlier marks have a weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although, admittedly, the distinctive character of the earlier marks must be taken into account when assessing the likelihood of confusion (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 24), it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited). 119 In particular, as regards the distinctive character of the earlier marks, it should be recalled that, in opposition proceedings, and in order to avoid infringing Article 8(1)(b) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EU trade mark is based (judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47). In this respect, the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 41). 120 Therefore, the Board of Appeal’s assessment in paragraph 35 of the contested decision that the word ‘moreno’ is the distinctive element of the earlier marks, which has no meaning in German, whereas the figurative elements appear to be negligible or secondary, must be upheld, and that assessment cannot be called into question by the applicant’s argument seeking to establish that the earlier marks are devoid of distinctive character. 121 Consequently, with regard to the list of goods for which the earlier marks were actually registered, the Board of Appeal was fully entitled, bearing in mind the principle of interdependence referred to in paragraph 117 above, to conclude that there was a likelihood of confusion between the signs at issue, with the exception of the services in Class 35 covered by the mark applied for, corresponding to the following description: ‘retailing or wholesaling of cookie molds, wholesaling and retailing of cookie molds via the internet’. The relevant public is likely to believe that the goods and services at issue originate from the same undertaking or at least from economically linked undertakings in that, first, the goods and services at issue are in part identical and in part similar and, secondly, the signs at issue, as a whole, have visual and phonetic similarities. 122 The applicant’s argument that the Board of Appeal did not take into account the evidence it produced in its application cannot succeed, since that evidence was produced for the first time before the Court and was declared inadmissible, as follows from paragraph 28 above. Moreover, contrary to what is claimed by the applicant, it should be noted that the Board of Appeal has set out in sufficient detail the reasons which led it to conclude that there is a likelihood of confusion between the marks at issue. The claim alleging infringement of the principle of the protection of legitimate expectations and the principle of legal certainty 123 The applicant essentially submits, that EUIPO’s previous decision-making practice is crucial because it makes it possible to foresee EUIPO’s actions and to evaluate the chances of success of an application for registration. It claims that, in the present case, the effect of the contested decision is that no other trade mark containing the word element ‘moreno’ may be registered in future because there is a likelihood of confusion with the earlier marks. In that regard, the applicant provides two examples of opposition proceedings (No B 2 706 78 and No B 2 734 861) in which EUIPO had decided to reject an opposition in its entirety due to the lack of distinctiveness of an earlier mark in order to demonstrate that EUIPO’s previous decision-making practice supports registration of the mark applied for having regard to the principle of the protection of legitimate expectations and the principle of legal certainty. 124 EUIPO and the intervener dispute those arguments. 125 According to settled case-law, decisions concerning registration of a sign as an EU trade mark, which the Boards of Appeal are called on to take under Regulation No 207/2009, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous practice of the Boards of Appeal (see judgment of 14 November 2017, Claranet Europe v EUIPO — Claro (claranet), T‑129/16, not published, EU:T:2017:800, paragraph 96 and the case-law cited). 126 Furthermore, although EUIPO must take into account decisions already taken and consider with especial care whether it should decide in the same way or not, compliance with the principle of legality requires that the examination of any trade mark application be stringent and full and be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (judgment of 16 January 2019, Poland v Stock Polska sp. z o.o. and EUIPO, C‑162/17 P, not published, EU:C:2019:27, paragraph 60). 127 In the present case, in so far as the Board of Appeal conducted a full and specific assessment of the existence of a likelihood of confusion between the signs at issue before partially refusing to register the mark applied for, the applicant cannot successfully cite previous decisions of EUIPO for the purpose of casting doubt on the finding that registration of the mark applied for is incompatible with Regulation No 207/2009 (see, to that effect, judgment of 14 November 2017, claranet, T‑129/16, not published, EU:T:2017:800, paragraph 97 and the case-law cited). 128 It follows from all the foregoing that the action must be dismissed in respect of the amended list of goods covered by the earlier marks. The second head of claim, seeking alteration of the contested decision 129 It must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, 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 (see judgment of 16 May 2017, Airhole Facemasks v EUIPO — sindustrysurf (AIR HOLE FACE MASKS YOU IDIOT), T‑107/16, EU:T:2017:335, paragraph 45 and the case-law cited). 130 In the present case, it must be noted that in the contested decision the Board of Appeal adopted a position on whether there was a likelihood of confusion between the signs at issue with regard to the initial list of goods covered by the earlier marks, with the result that the Court has the power to alter that decision in that regard. 131 It follows from the considerations set out in paragraphs 12 to 14 and 48 to 128 above that the Board of Appeal was required to find that, contrary to what the Opposition Division found, there was a likelihood of confusion between the signs at issue on the part of the relevant public, in respect of all the goods and services for which registration was sought, with the exception of the services in Class 35 covered by the mark applied for, corresponding to the following description: ‘Retailing or wholesaling of cookie molds; wholesaling and retailing of cookie molds via the internet’. 132 In the light of all the foregoing, it must be concluded that the conditions for the exercise of the Court’s power to alter decisions are satisfied and that the opposition must be upheld in respect of all the goods and services for which registration was sought, with the exception of the services referred to in paragraph 131 above. Costs 133 Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. However, if it appears justified in the circumstances of the case, the General Court may order that one party, in addition to bearing its own costs, pay a proportion of the costs of the other party. 134 In the present case, the applicant, EUIPO and the intervener have, respectively, partially failed in so far as the contested decision has been annulled in part. Consequently, each party must be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Eighth Chamber) hereby: 1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 May 2018 (Case R 1464/2017-1) in so far as it refuses registration of the mark applied for in respect of the following goods: ‘coffee substitutes; tea; cocoa; cocoa products; chocolate-based beverages, all aforementioned goods also as instant form’, with the exception of cocoa as regards the latter; 2. Upholds the opposition in respect of all the goods and services referred to in the application for registration, with the exception of the services in Class 35 corresponding to the following description: ‘Retailing or wholesaling of cookie molds; wholesaling and retailing of cookie molds via the internet’; 3. Dismisses the action as to the remainder; 4. Orders each party to bear its own costs. Collins Barents Passer Delivered in open court in Luxembourg on 24 October 2019. E. Coulon A. M. Collins Registrar President * Language of the case: English.