Judgment — ECLI:EU:T:2017:811
Date: 2017-11-16
Language of the case: English
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

summary form, coherently and intelligibly in the application itself. Similar requirements are called for where a submission is made in support of a plea in law (judgments of 3 December 2014, M & Co., T‑272/13, not published, EU:T:2014:1020, paragraph 19, and of 12 November 2015, WISENT VODKA, T‑450/13, not published, EU:T:2015:841, paragraph 19). 66 In the present case, the applicant claims infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(2) of Regulation No 2868/95. It submits that the intervener has failed to provide evidence of genuine use of the four earlier national marks on the basis of the evidence provided during the administrative procedure but that it is appropriate to take into account only those earlier national trade marks, since the intervener failed to establish its right to the earlier international registration during the relevant period. 67 In that regard, it must be held that, contrary to what the intervener claims, the essential matters of law and of fact on which the applicant relies, such as judgments of the Court of Justice and the General Court or evidence provided during the administrative procedure, are stated coherently and intelligibly in the text of the application itself. Consequently, EUIPO has been able to prepare its defence and the Court is in a position to rule on the substance of that plea. 68 The second plea in law is accordingly admissible. 69 In addition, as EUIPO claims, the Board of Appeal held that the intervener had succeeded in establishing genuine use of the earlier trade mark in Germany. In examining whether there had been genuine use of the earlier marks, the Board of Appeal was entitled to take into account the earlier international registration that took effect in Germany. 70 It should be noted that the applicant merely maintains that the intervener had not justified its claim that it was entitled to the earlier international registration during the relevant period and reproduces, in essence, the decision of the Opposition Division rejecting the opposition on the basis that there had been no genuine use of earlier national trade marks. 71 The Board of Appeal was entitled to take into account the earlier international registration. Consequently, on the basis of the finding by the Board of Appeal of genuine use of the aforementioned registration in Germany, the Board of Appeal was entitled not to examine whether there had been genuine use of the other earlier marks. 72 Furthermore, as EUIPO states, by merely claiming that it was required to prove genuine use only in respect of the earlier national marks, the intervener does not contest the Board of Appeal’s assessment of the evidence of genuine use of the earlier international trade mark in Germany. 73 Consequently, the second plea in law must be rejected as unfounded. The third plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 74 The applicant submits, in the first place, that Gullon is a well-known trade mark. In the second place, it asserts that, as regards the comparison of the marks at issue, the main word in the mark applied for is ‘gullon’, which is different from the words comprising the earlier mark DAR VIDA. In addition, it claims that the Spanish expression ‘dar vida’, meaning ‘giving life’, is a common expression and, consequently, the words comprising that expression must be considered to have rather limited distinctive character. Further, the applicant maintains that the mark applied for will be perceived as a new mark of the Gullon family of trade marks. Lastly, it is the applicant’s submission that the consumer’s attention is usually drawn initially to the first element of the mark. In the third place, with regard to the comparison of the goods, the applicant considers that the goods are similar. In the fourth place, it is of the opinion that, with regard to the common element ‘vida’, the intervener cannot monopolise that word, given that it is used frequently to refer to dietary biscuits, wholegrain bread and dietary pastries. Moreover, the applicant asserts that it is the proprietor of two other trade marks containing that Spanish expression. In the fifth place, regarding the likelihood of confusion, the applicant is of the opinion that the Board of Appeal misapplied the law, since the signs at issue are both phonetically and visually different, and it is irrelevant that the signs have some letters in common, given the presence of the word ‘gullon’, the most significant element of the mark applied for. Thus, the applicant submits that there are sufficient differences between the signs to lead to a different overall impression and the consumer will not assume that the goods covered by the mark applied for have the same origin as those designated by the earlier marks. 75 EUIPO and the intervener contest those arguments. 76 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an 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. 77 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, in order for registration of an EU trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see judgment of 5 May 2015, Skype v OHIM — Sky and Sky IP International (SKYPE), T‑183/13, not published, EU:T:2015:259, paragraph 18 and the case-law cited). 78 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 17 and the case-law cited). 79 Further, that global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services covered. Accordingly, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa. Consequently, it is necessary to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19). 80 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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 the likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited, and of 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 28 and the case-law cited). 81 In addition, the Court was able to find that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (see, by analogy, judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 37). 82 However, even in the circumstances set out in paragraph 81 above, it is necessary to determine, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 34). The relevant public and territory 83 With regard to the relevant public, the applicant submits, in its second plea, that the territories to be taken into account are those of the four earlier trade marks, namely Denmark, Finland, Sweden and the United Kingdom. Further, by stating that consumers will understand the Spanish expression ‘dar vida’ as it is a common expression, the applicant appears to consider that Spain is also part of the relevant territory. 84 As established in paragraphs 27 to 60 above, the Board of Appeal was entitled to find that the intervener had established its right to the earlier international trade mark during the relevant period and that, consequently, that earlier mark took effect, in particular, in Germany, the country in which the Board of Appeal found that the applicant had established the genuine use of that earlier trade mark for five years. Consequently, the Board of Appeal did not err when it found, in paragraph 24 of the contested decision, that the relevant territory for the analysis of the likelihood of confusion was Germany. 85 In accordance with the case-law referred to in paragraph 77 above, the existence of a likelihood of confusion between the trade marks at issue in Germany would be a sufficient ground for rejecting the applications for registration of the contested sign without it being necessary to assess whether such a likelihood of confusion also exists in the rest of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 83). 86 With regard to the relevant public, the applicant does not contest the Board of Appeal’s assessment in paragraph 24 of the contested decision that the relevant public is the public at large, that is to say, the average consumer who is reasonably well informed and reasonably observant and circumspect. There is no reason to call into question that assessment. Comparison of the goods 87 In paragraph 25 of the contested decision, the Board of Appeal found that the goods referred to by the mark applied for and those covered by the earlier international registration were identical. That finding must be endorsed and is not disputed by the parties. Comparison of the signs 88 Before starting to analyse the potential existence of a likelihood of confusion, in accordance with the case-law set out in paragraphs 78 to 82 above, it is necessary to reject at the outset the applicant’s argument that the intervener cannot monopolise the word ‘vida’ because it is commonly used to refer to dietary products. In support of that argument, the applicant has produced a list of EU trade marks including that word, which have been registered, inter alia, for goods in Class 30. It follows from case-law that the fact that there is a need for a sign to be available for economic operators cannot be one of the relevant factors to be taken into account in the assessment of whether there is a likelihood of confusion. The answer to the question as to whether there is a likelihood of confusion must be based on the perception by the public of the goods covered by the mark of the proprietor on the one hand and the goods covered by the sign used by the third party on the other (see, by analogy, judgment of 10 April 2008, adidas and adidas Benelux, C‑102/07, EU:C:2008:217, paragraph 30). – Visual comparison of the signs 89 On a visual level, the Board of Appeal found, in paragraph 30 of the contested decision, that the signs at issue were visually similar to an average degree because of the considerable similarity between the word elements ‘dar vida’ and ‘darvida’. 90 In the first place, the applicant asserts that the expression ‘dar vida’ has limited distinctive character, since consumers will perfectly understand the usual meaning of that expression, namely, ‘giving life’. 91 In that regard, it is appropriate to note that the relevant territory is Germany. According to Article 8(1)(b) of Regulation No 207/2009, it is in the eyes of the public of the territory in which the earlier mark is protected that the likelihood of confusion must be assessed. The sign DARVIDA is not protected in Spain and the conclusion that the expression ‘dar vida’ is a commonly used expression can only apply to Spanish-speaking consumers. The same cannot be said for German-speaking consumers, given that that expression has no meaning in German. 92 In addition, as EUIPO submits, the applicant does not contest the Board of Appeal’s conclusion that the word ‘darvida’ has no meaning in German and has adduced no proof that that expression has limited distinctive character in the relevant territory, namely Germany. 93 Consequently, the Board of Appeal was entitled to find that, much like the expression ‘dar vida’, the word ‘darvida’ has no meaning for the German consumer. 94 In the second place, the applicant submits that the trade mark Gullon is well known. In support of that argument, the applicant produced a list of the marks that it has registered containing the word ‘gullon’, as well as a news article about the applicant’s investments taken from the website of a Spanish daily newspaper, a news article about the growth of the applicant taken from the website of another Spanish daily newspaper and extracts from the applicant’s website. According to settled case-law, it is the recognition by the relevant public of the earlier mark and not that of the mark applied for that must be taken into account when determining whether there is a likelihood of confusion between the two marks (see judgment of 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 50 and the case-law cited). Therefore, that argument must be rejected. 95 In the third place, it is the applicant’s submission that, since the consumer’s attention is usually drawn initially to the first element of the trade mark, the consumer will pay more attention to the word ‘gullon’ than to the word ‘darvida’. 96 First, it is to be noted that the presence in each of the marks of several letters in the same order may be of some importance in the assessment of the visual similarity between the signs at issue (see judgment of 20 October 2016, Clover Canyon v EUIPO — Kaipa Sportswear (CLOVER CANYON), T‑693/15, not published, EU:T:2016:620, paragraph 29 and the case-law cited). 97 Second, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two marks are similar (see judgment of 20 October 2016, CLOVER CANYON, T‑693/15, not published, EU:T:2016:620, paragraph 30 and the case-law cited). 98 Furthermore, while it has previously been held, as the Board of Appeal also notes in paragraph 30 of the contested decision, that the consumer normally attaches more importance to the first part of a word mark than the subsequent parts, it has also been held that that consideration does not hold true in all cases (see judgment of 20 October 2016, CLOVER CANYON, T‑693/15, not published, EU:T:2016:620, paragraph 31 and the case-law cited). 99 Lastly, it should be pointed out that the validity of the argument that the beginning of the mark applied for is the part that particularly attracts the consumer’s attention cannot be assessed independently of the facts of the case, in particular the specific characteristics of the signs at issue (see, to that effect, judgment of 13 April 2011, United States Polo Association v OHIM — Textiles CMG (U.S. POLO ASSN.), T‑228/09, not published, EU:T:2011:170, paragraph 37). 100 In any event, the fact that the first element of the mark applied for is the element that distinguishes it from the earlier mark cannot call in question the application of the principle that the assessment of the similarity of signs must take account of the overall impression created by them (judgment of 20 October 2016, CLOVER CANYON, T‑693/15, not published, EU:T:2016:620, paragraph 32 and the case-law cited). Contrary to the applicant’s claims, the fact that the signs at issue differ because of the word ‘gullon’, which is the first element of the mark applied for, is insufficient to counteract the visual similarity produced by the seven-letter word ‘darvida’, which comprises the second element of the mark applied for and the earlier mark in its entirety (see, to that effect, judgment of 20 October 2016, CLOVER CANYON, T‑693/15, not published, EU:T:2016:620, paragraph 32 and the case-law cited). 101 The Board of Appeal was, therefore, fully entitled to find that the signs at issue had an average degree of visual similarity. – Phonetic comparison of the signs 102 In the light of the case-law set out in paragraphs 97 to 100 above, it is necessary to endorse the Board of Appeal’s conclusion that the signs at issue have an average degree of phonetic similarity, since the three syllables ‘dar’, ‘vi’ and ‘da’ are identical, despite the fact that the word ‘gullon’ appears at the beginning of the mark applied for. – Conceptual comparison of the signs 103 In paragraph 32 of the contested decision, the Board of Appeal stated that, since neither the word ‘gullon’ nor the word ‘darvida’ had any meaning in German, the conceptual comparison of the signs is neutral. That finding, which is not, in any case, contested by the parties, cannot be called into question. Global assessment of the likelihood of confusion. 104 In paragraphs 36 to 39 of the contested decision, the Board of Appeal found that, taking into account the identity of the relevant goods, the average level of visual and phonetic similarity of the signs at issue, the normal level of attention of the relevant public and the normal degree of inherent distinctiveness of the earlier mark, there was a likelihood of confusion. In addition, the Board of Appeal upheld the opposition without examining the earlier national trade marks, since the likelihood of confusion had been established between the mark applied for and the earlier international registration. 105 The applicant asserts that the signs at issue are different both visually and phonetically and that the word ‘gullon’ is the most significant element. 106 EUIPO and the intervener dispute the applicant’s arguments. 107 First, it must be conceded that there is no sufficiently direct and specific link between the goods referred to by the mark applied for and those covered by the earlier international trade mark, namely, biscuits, and the Spanish word ‘darvida’, which means ‘giving life’. 108 Further, as stated in paragraph 91 above, the Spanish expression ‘dar vida’ has no meaning for the public at large in Germany. 109 Consequently, the Board of Appeal was entitled to find that the earlier trade mark has a normal degree of intrinsic distinctiveness for the relevant public. 110 Furthermore, it should be added, as noted in paragraphs 101, 102 and 109 above, that the signs have an average degree of visual and phonetic similarity, the level of attention of the relevant public is normal and the earlier mark has a normal degree of distinctiveness. 111 It should be noted that the goods covered by the earlier international trade mark and those that are the subject of the mark applied for are identical. There may be a likelihood of confusion, despite a low degree of similarity between the marks, where the similarity of the goods or services covered by the marks is considerable (judgment of 10 May 2011, Emram v OHIM — Guccio Gucci (G), T‑187/10, not published, EU:T:2011:202, paragraph 73). In the present case, as has already been stated, the goods designated by the mark applied for and those covered by the earlier marks are identical. That identity is a factor that increases the likelihood of confusion between the signs at issue, in spite of the fact that the signs at issue have an average degree of visual and phonetic similarity, the level of attention of the relevant public is normal and the earlier trade mark has a normal degree of distinctiveness. 112 Taking into account the factors listed in paragraph 104 above, the Board of Appeal was entitled to find that there was a likelihood of confusion between the marks at issue, in that there was a likelihood that the public may believe that the goods at issue come from the same undertaking. 113 In the light of the foregoing, it is necessary to reject the third plea and, therefore, to dismiss the action in its entirety. Costs 114 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. 115 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Eighth Chamber) hereby: 1. Dismisses the action; 2. Orders Galletas Gullón, SA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Hug AG. Collins Kancheva Barents Delivered in open court in Luxembourg on 16 November 2017. E. Coulon A. M. Collins Registrar President * Language of the case: English.