JUDGMENT OF THE GENERAL COURT (Third Chamber)
28 February 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark smål – Earlier EU figurative mark and earlier national word mark SUMOL – Relative ground for refusal – No likelihood of confusion – Identity of the goods – Enhanced distinctiveness of the earlier marks through use – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑279/23,
Sumol + Compal Marcas SA, established in Carnaxide (Portugal), represented by R. Milhões, 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 being
Kåska Oy, established in Helsinki (Finland),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová‑Pelzl and I. Nõmm (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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 action under Article 263 TFEU, the applicant, Sumol + Compal Marcas SA, seeks the annulment and the alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 March 2023 (Case R 2295/2022-5) (‘the contested decision’).
Background to the dispute
2        On 24 March 2021, Kåska Oy filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for covers goods in Classes 32 and 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, corresponding, for each of those classes, to the following description:
–        Class 32: ‘Alcohol free beverages’;
–        Class 33: ‘Beverages (alcoholic -), except beer; alcoholic beverages (except beer); alcoholic beverages (except beers); alcoholic beverages [except beers]; alcoholic beverages except beers; alcoholic beverages, except beer’.
4        On 12 July 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.
5        The opposition was based on the following earlier marks:
–        the Portuguese word mark SUMOL, which was registered under the number 142201 and covers, inter alia, ‘soft drinks and fruit juices’ in Class 32;
–        the EU figurative mark registered under the number 18289973, which covers, inter alia, ‘non-alcoholic beverages’ in Class 32 and ‘alcoholic beverages (except beer)’ in Class 33 and is reproduced below:
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) 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).
7        On 23 September 2022, the Opposition Division rejected the opposition.
8        On 23 November 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal. It found that:
–        the relevant public was both that of Portugal as regards the earlier Portuguese word mark and that of the European Union as regards the earlier EU figurative mark and consisted of the general public, which was deemed to have an average level of attention;
–        the goods in Class 32 covered by the mark applied for were identical to those in the same class covered both by the earlier Portuguese word mark and the earlier EU figurative mark and those in Class 33 were identical to those in the same class covered by the earlier EU figurative mark;
–        the term ‘sumol’, which constitutes both the earlier Portuguese word mark and the word element of the earlier EU figurative mark, first, had only a low degree of inherent distinctiveness with regard to the Portuguese-speaking public, which would see in it an allusion to the term ‘sumo’ (juice) both with regard to the goods in Class 32 and those in Class 33 and, secondly, had an average degree of distinctiveness for the rest of the relevant public;
–        in essence, even though the figurative elements of the earlier EU figurative mark occupied an important position in the overall impression created by that mark, the word element of that mark constituted its most dominant and distinctive element;
–        the word and figurative elements of the mark applied for were equally distinctive and dominant;
–        there was a low degree of visual and phonetic similarity and no conceptual similarity between the earlier Portuguese word mark and the mark applied for;
–        the same reasoning applied to the comparison of the earlier EU figurative mark and the mark applied for, the degree of visual similarity being even lower on account of the figurative elements;
–        it was not necessary to examine the evidence which the applicant had put forward for the purposes of establishing enhanced distinctiveness through use of the earlier marks as regards the goods in Class 32 and it was sufficient to proceed on the basis of the premiss that that was the case;
–        in essence, in the light of the low degree of similarity between the signs at issue, notwithstanding the identity of the goods at issue, even if the earlier marks had enhanced distinctiveness with regard to the goods in Class 32, no likelihood of confusion on the part of the relevant public, for the purposes of Article 8(1)(b) of Regulation 2017/1001, could be found to exist.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        annul the Opposition Division’s decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
Law
12      In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits that the Board of Appeal made a number of errors in assessing the likelihood of confusion by underestimating the degree of similarity between the signs at issue, by not taking into account the principle of interdependence between the degrees of similarity of the goods and of the signs, even though the goods at issue are identical, and by not taking into account the high and enhanced degree of distinctiveness of the earlier marks by virtue of their use.
13      EUIPO, which disputes the applicant’s arguments, contends that the plea must be rejected.
14      Article 8(1)(b) of Regulation 2017/1001 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, 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. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
15      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).
16      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 in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part 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 76 and the case-law cited).
17      In the first place, it must be pointed out that the Board of Appeal’s assessments relating to the definition of the relevant public and the identity of the goods at issue, which are not disputed by the applicant, are not incorrect and must therefore be endorsed.
18      Thus, the Board of Appeal could validly define, in paragraphs 17 to 22 of the contested decision, the relevant public as consisting of the general public – in Portugal as regards the earlier Portuguese word mark and in the European Union as regards the earlier EU figurative mark – with an average level of attention.
19      Likewise, the Board of Appeal was right in finding, in paragraphs 24 to 27 of the contested decision, first, that the goods in Class 32 covered by the mark applied for were identical to some of the goods in that class covered by the earlier marks and, secondly, that the goods in Class 33 covered by the mark applied for were identical to some of the goods in that class covered by the earlier EU figurative mark.
20      In the second place, as regards the examination of the merits of the Board of Appeal’s finding that there would be no likelihood of confusion if the mark applied for were registered in respect of ‘alcohol free beverages’ in Class 32, it must be pointed out that, in response to the claim that the earlier marks had enhanced distinctiveness through use as regards the goods in Class 32, the Board of Appeal found that, even if that were the case, the registration of the mark applied for would not give rise to such a likelihood of confusion.
21      According to settled case-law, 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
22      Furthermore, the distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion. The examination of the distinctive character of the earlier trade mark is particularly relevant in cases where there is only a low degree of similarity between the signs at issue and where it is necessary to determine whether that low degree of similarity may be offset by a high degree of similarity between the goods at issue (judgment of 28 September 2016, The Art Company B & S v EUIPO – G-Star Raw (THE ART OF RAW), T‑593/15, not published, EU:T:2016:572, paragraph 39).
23      As is stated in recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends, in particular, on the public’s recognition of the earlier mark on the market in question. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
24      As a result, the examination of the present plea depends on the merits of the Board of Appeal’s assessment relating to the degree of similarity between the signs at issue, which must be sufficiently low to make it possible to rule out any likelihood of confusion, notwithstanding the identity of the goods at issue and any enhanced distinctiveness of the earlier marks as a result of their use in connection with those goods.
25      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).
26      For the purposes 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 that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).
27      Furthermore, a ssessment 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 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). 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).
28      The Court takes the view that it is appropriate to begin by analysing the possibility of a likelihood of confusion on the basis of the earlier Portuguese word mark.
29      With regard to that mark, the Board of Appeal, first, found, in essence, in paragraphs 36 and 37 of the contested decision, that, as the earlier mark was a Portuguese trade mark, the term constituting that mark was likely to be weakly distinctive since it would be understood as a reference to the term ‘sumo’, which meant ‘juice’ in Portuguese. As regards the mark applied for, the Board of Appeal pointed out, in paragraphs 43 and 44 of the contested decision, that the word element and the figurative elements of the mark applied for were equally distinctive and dominant.
30      The Board of Appeal’s assessments as regards the overall impression created by the mark applied for and by the earlier Portuguese word mark appear to be well founded and must therefore be endorsed.
31      Secondly, the assessments, in paragraphs 45 to 48 of the contested decision, regarding the low degree of similarity between the signs at issue are not vitiated by any error.
32      The Board of Appeal based its finding that there was a low degree of visual similarity between the signs on the fact that they coincided only in the presence of the letters ‘s’ ‘m’ and ‘l’, which were placed in the same order, although those letters were partially in a different position, and differed in their other two letters. It also highlighted the fact that the signs consisted of a different number of letters, that the stylisation of the mark applied for played a significant role in the overall impression created by that mark and that the public would also take into account the diacritical mark which was present above the vowel only in that mark. In paragraphs 49 and 50 of the contested decision, it found, in essence, that the mark applied for contained only one syllable, whereas the earlier mark contained two syllables, in particular for the Portuguese-speaking public, and concluded that the signs at issue were also phonetically similar to a low degree. Lastly, in paragraph 53 of the contested decision, it found that the signs at issue were conceptually dissimilar, since the mark applied for had no meaning.
33      In that regard, to begin with, as regards the visual comparison of the signs, it must be stated that, in view of the significance of the differences between the signs at issue – the partially different positioning of the letters in common, the presence of the letters ‘u’ and ‘o’ only in the earlier mark and the presence of the letter ‘a’ only in the mark applied for and the use of a diacritical mark above the latter – the fact that the signs at issue have only the letters ‘s’, ‘m’ and ‘l’ in common and in the same order can mean only that there is a low degree of similarity.
34      Consequently, the finding in paragraph 48 of the contested decision must be endorsed, even though the Board of Appeal erred in taking into account, in paragraph 46 of the contested decision, the ‘eye-catching stylisation’ of the mark applied for as a differentiating factor between the signs at issue. Since the earlier mark is a word mark, its proprietor is entitled to use it in different scripts, for example, in a form comparable to that of the mark applied for (see, to that effect, judgment of 26 March 2020, Alcar Aktiebolag v EUIPO – Alcar Holding (alcar.se), T‑77/19, not published, EU:T:2020:126, paragraph 65 and the case-law cited).
35      Next, as regards the phonetic comparison of the signs, the Board of Appeal was right in finding that the different number of syllables was a differentiating factor. Consequently, the applicant’s claim that the pronunciations of the marks at issue have in common the pronunciation of the letter ‘s’ at the beginning of the marks and of the letter ‘m’ in the middle of the words and are brought closer together by the pronunciation of the two elements ‘mol’ and ‘mal’ at the end of those marks can give rise only to a low degree of similarity.
36      Lastly, the conceptual comparison of the signs at issue must be held to be neutral in the circumstances of the present case. First, it is common ground that the mark applied for does not have any conceptual content. Secondly, although the word of which the earlier mark consists may be understood by the relevant public as a reference to the term ‘sumo’, meaning ‘juice’ in Portuguese, it must be pointed out that such a concept is descriptive of the goods in question and will not, in the context of those goods, give rise to associations that could make it easier for that sign to be remembered (see, to that effect, judgment of 20 October 2021, Yadex International v EUIPO – Sütas Süt Ürünleri (PINAR Süzme Peynir), T‑559/20, not published, EU:T:2021:713, paragraph 103 and the case-law cited).
37      In view of the foregoing, it must be held that the degree of similarity between the signs at issue is sufficiently low to rule out any likelihood of confusion, notwithstanding the identity of the goods in Class 32 covered by the earlier Portuguese word mark and by the mark applied for, even if the earlier mark has enhanced distinctiveness through use with regard to those goods, as the Board of Appeal correctly found in paragraphs 68 and 69 of the contested decision.
38      The Court also takes the view that the examination of the possibility of a likelihood of confusion on the basis of the earlier EU figurative mark leads to the same conclusion.
39      The figurative elements of the marks at issue – which are not negligible in the overall impression created by those marks – contribute towards decreasing the degree of visual similarity between them even more.
40      As regards the phonetic and conceptual comparison of the signs, the same findings as those made in paragraphs 35 and 36 above are applicable to the relevant Portuguese-speaking public and to any part of the relevant public which will not pronounce the letter ‘å’ in the mark applied for in the same way as the letter ‘o’ in the word element of the earlier mark. By contrast, for the part of the relevant public, in particular that which speaks Swedish, for which the letters ‘å’ and ‘o’ will have the same pronunciation, the marks at issue are phonetically similar to an average degree, and not a low degree, as is stated in paragraph 50 of the contested decision. That degree of similarity, which is higher than that which the Board of Appeal found to exist, does not, however, affect the merits of its finding that there is no likelihood of confusion. First, the applicant made no claim of enhanced distinctiveness by virtue of use as regards the non-Portuguese-speaking part of the relevant public. Secondly, it must be pointed out that, since the goods at issue are above all sold in self-service shops, the phonetic aspect of the marks at issue is generally of less importance than the visual aspect of those marks (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 65 to 67, and of 25 January 2017, Anton Riemerschmid Weinbrennerei und Likörfabrik v EUIPO – Viña y Bodega Botalcura (LITU), T‑187/16, not published, EU:T:2017:30, paragraph 35). It necessarily follows that the very low degree of visual similarity plays a preponderant role in the present case.
41      From a conceptual standpoint, it must be observed that the whole of the relevant public, including the non-Portuguese-speaking public, will perceive the figurative elements of the earlier EU figurative mark – namely the representation of a cut orange and bubbling in the form of small bubbles – as meaning that the goods marketed are sparkling orange-juice-based or orange-flavoured beverages. However, such a meaning must be regarded as not being capable of attracting the attention of the relevant public for reasons similar to those set out in paragraph 36 above.
42      Consequently, as regards the registration of the mark applied for in respect of ‘alcohol free beverages’ in Class 32, the Board of Appeal validly ruled out the possibility of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
43      In the third place, as regards the Board of Appeal’s assessment that the registration of the mark applied for in respect of ‘beverages (alcoholic -), except beer; alcoholic beverages (except beer); alcoholic beverages (except beers); alcoholic beverages [except beers]; alcoholic beverages except beers; alcoholic beverages, except beer’ in Class 33 would not give rise to any likelihood of confusion for the relevant public, it is necessary to take into account the earlier EU figurative mark, since that mark covers identical goods. The applicant does not claim, in its written pleadings, that there could be a likelihood of confusion between the earlier Portuguese word mark and the mark applied for if the latter were registered in respect of goods which are not identical to those which are covered by the earlier Portuguese word mark.
44      For reasons which are similar to those set out in paragraphs 39 to 41 above, it must be held that the Board of Appeal was right in finding, in the contested decision, that there was no likelihood of confusion, notwithstanding the fact that the goods at issue were identical, in view of the particularly low degree of similarity between the signs at issue and of the fact that, since the applicant had not claimed enhanced distinctiveness acquired through use of its earlier figurative mark in respect of the goods in Class 33, that mark had, in principle, to be recognised as having only a degree of inherent distinctiveness which varied from low to average, depending on the part of the relevant public concerned.
45      In the light of the foregoing, the applicant’s single plea must be rejected and, as a result, the action must be dismissed.
Costs
46      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.
47      Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that the parties are summoned to attend a hearing. As no hearing has taken place, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Sumol + Compal Marcas SA and the European Union Intellectual Property Office (EUIPO) each to bear their own costs.
Schalin
Škvařilová‑Pelzl
Nõmm
Delivered in open court in Luxembourg on 28 February 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.