JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
10 March 2021 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark KERRYMAID – Earlier EU figurative mark Kerrygold – Relative ground for refusal – Geographical name – Dominant element – Peaceful coexistence – Article 8(1)(b) of Regulation (EC) No 207/2009 – Application of the law ratione temporis)
In Case T‑693/19,
Kerry Luxembourg Sàrl, established in Luxembourg (Luxembourg), represented by F. Traub, lawyer, and I. Connor, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and S. Hanne, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ornua Co-operative Ltd, established in Dublin (Ireland), represented by E. Armijo Chávarri and A. Sanz Cerralbo, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 23 July 2019 (Case R 2473/2013-5), relating to opposition proceedings between
Kerry Luxembourg and Ornua,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira (Rapporteur), President, M. Kancheva and T. Perišin, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 9 October 2019,
having regard to the response of EUIPO lodged at the Court Registry on 18 December 2019,
having regard to the response of the intervener lodged at the Court Registry on 8 January 2020,
further to the hearing on 18 November 2020,
gives the following
Judgment
Background to the dispute
1        On 28 June 2011, the applicant, Kerry Luxembourg Sàrl, formerly Kerry Group Services International Limited, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2        Registration as a mark was sought for the word sign KERRYMAID.
3        The goods in respect of which registration was sought are in Classes 29 and 30 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:
–        Class 29: ‘Cheese; Cheese products; Dairy products; Dairy spreads; Cheese spreads; Edible oils and fats; Snack foods and prepared meals; Meat, fish, poultry and game; Preserved, dried and cooked fruits and vegetables; Vegetable and oil based spreads; Lard; Margarine; Butter; Vegetable lard; Yoghurts; Custard style yoghurts; Dairy products containing or flavoured with custard, Imitation cheese; Cheese substitutes; Imitation cream; Cream substitutes’;
–        Class 30: ‘Snack foods and prepared meals; Sandwiches; Crackers filled with cheese; Cereal; Snack foods flavoured with cheese; Frozen desserts; Custard; Imitation custard; Custard mixes; Custard powder; Cheesecakes; Dessert sauces; Confectionery’.
4        The EU trade mark application was published in
the Community Trade Marks Bulletin of 23 August 2011.
5        On 23 November 2011, the intervener, Ornua Co-operative Ltd, formerly The Irish Dairy Board Co-operative Ltd, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on 18 earlier marks composed exclusively or in part of the word ‘kerrygold’ and registered for goods in Classes 1, 5, 29, 30, 32 and 33.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b), Article 8(4) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b), Article 8(4) and Article 8(5) of Regulation 2017/1001). The opposition was also based on the claim that the mark KERRYGOLD was a well-known mark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.
8        By decision of 22 October 2013, the Opposition Division upheld the opposition in respect of all the goods covered by the mark applied for and rejected the application for registration in its entirety on the basis of Article 8(5) of Regulation No 207/2009. The opposition was upheld on the basis of the following EU figurative mark (‘the earlier mark’):
9        That mark was registered on 1 March 2011 under No 9 379 652 in respect of goods in Class 29 corresponding to the following description: ‘Dairy produce (for food); milk, skimmed milk, butter milk, sour milk, edible cream, all especially in liquid, condensed, frozen or powder form; milk products (for food); UHT milk; milk drinks, mainly of milk or of skimmed milk; butter, cheese, yoghurt, whey for food (not as a beverage), sour milk products, butter preparations, cheese preparations, curds (quark); edible oils and fats, including butter oils, milk fat, milk semi-fats; milk products as semi-manufactured products for the foodstuffs industry; food products made substantially from milk, milk products, edible oils or edible fats with or without water; dried (preserved) milk, as a foodstuff; casein and caseinates for food; desserts based on milk, cream, yogurt; edible spreads; bread spreads, mainly of a mixture of one or more dairy products, especially butter, cream, milk, skimmed milk or butter milk, with water, optionally with milk proteins; bread spreads mainly of cheese, with milk and/or skimmed milk, optionally with flavourings’.
10      On 9 December 2013, the applicant filed a notice of appeal against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
11      On 29 January 2014, the intervener brought an infringement action before the Juzgado de lo Mercantil de Alicante (Commercial Court,
Alicante, Spain)
on the basis of Article 9(1)(b) and (c) of Regulation No 207/2009 (now Article 9(2)(b) and (c) of Regulation 2017/1001) against the applicant, concerning the sale of goods bearing the sign KERRYMAID on the Spanish market.
12      In the light of that action, the proceedings before the Board of Appeal were suspended.
13      By decision of 18 March 2015, the Juzgado de lo Mercantil de Alicante (Commercial Court, Alicante) dismissed the infringement action
on the grounds that the only similarity between the marks at issue lay in the common element ‘kerry’, which refers to the Irish county known for cattle breeding, and that it had been established that the marks coexisted peacefully in Ireland and the United Kingdom.
14      On 30 April 2015, the intervener brought an appeal against that decision before the Audiencia Provincial de Alicante (Provincial Court, Alicante, Spain), which decided to stay the proceedings and to refer questions to the Court of Justice for a preliminary ruling.
15      By judgment of 20 July 2017, Ornua (C‑93/16, EU:C:2017:571), the Court of Justice held as follows:
–        Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark and a national mark peacefully coexist, does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion between that EU trade mark and that sign;
–        Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the elements which, according to the European Union trade marks court hearing an infringement action, are relevant for assessing whether the proprietor of an EU trade mark is entitled to prohibit the use of a sign in part of the European Union not covered by that action, may be taken into account by that court to assess whether that proprietor is entitled to prohibit the use of that sign in the part of the European Union which is the subject of the infringement action, provided that the market conditions and the sociocultural circumstances are not significantly different in one of those parts of the European Union and in the other;
–        Article 9(1)(c) of Regulation No 207/2009 must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark with a reputation and a sign peacefully coexist, does not allow the conclusion that in another part of the European Union, where that peaceful coexistence is absent, there is due cause legitimising the use of that sign.
16      By judgment of 6 February 2018, the Audiencia Provincial de Alicante (Provincial Court, Alicante) dismissed the intervener’s appeal and upheld the decision of the Juzgado de lo Mercantil de Alicante (Commercial Court, Alicante).
17      By decision of 23 July 2019 (‘the contested decision’), the Fifth Board of Appeal partially annulled the decision of the Opposition Division and upheld the opposition based in particular on Article 8(1)(b) of Regulation 2017/1001 for all the goods covered by the mark applied for, with the exception of ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’ in Class 29.
18      In the first place, as regards the ground of opposition based on Article 8(1)(b) of Regulation 2017/1001, as a preliminary point, the Board of Appeal held that the evidence produced by the intervener showed genuine use of the earlier mark for ‘dairy products, butter, cheese, dairy/butter and oil spreads’.
Moreover, the Board of Appeal stated that, since the earlier mark was not subject to the proof of use requirement and had been registered for a more ample list of goods, which included the goods in respect of which genuine use had been established, the appeal would be assessed on the basis of that mark.
19      Next, first, the Board of Appeal found, in the light of the nature of the goods at issue, that the relevant public was the general public, whose level of attention varied from low to average.
It also stated that the relevant public in respect of the earlier mark was the public of the European Union.
20      Second, the Board of Appeal found that, with the exception of ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’, all the goods covered by the mark applied for were similar or identical to the goods in Class 29 in respect of which the earlier mark was registered.
21      Third, the Board of Appeal held, in essence, that the word element ‘kerrygold’, which has no meaning for a large part of the relevant public, lent
an average degree of distinctiveness to the earlier mark.
22      Fourth, the Board of Appeal held that the signs at issue had an average degree of visual and phonetic similarity. However, it found that, conceptually, the signs at issue were not similar for the part of the relevant public that is unaware of the geographical reference contained in the term ‘kerry’. The Board of Appeal held that, overall, the signs at issue were similar to an average degree.
23      Consequently, the Board of Appeal concluded
that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for the ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’ in Class 29 covered by the mark applied for, which were found to be dissimilar to the goods covered by the earlier mark. The Board of Appeal concluded, on the other hand, that there was a likelihood of confusion for the other goods covered by the mark applied for in Class 29 and for all the goods covered by the mark applied for in Class 30, which were found to be identical or similar to the goods covered by the earlier mark. The Board of Appeal also held that the peaceful coexistence of
the signs at issue in Ireland and the United Kingdom did not allow the conclusion
that likelihood of confusion was absent for the part of the relevant public that is unaware of the geographical reference contained in the term ‘kerry’.
24      In the second place, as regards the ground of opposition based on Article 8(5) of Regulation 2017/1001, the Board of Appeal found that the conditions relating to the application of that provision were not satisfied. In particular, it held that the evidence provided by the intervener, with the exception of that relating to the earlier mark in Ireland for ‘butter’, was not sufficient to establish that the earlier marks had achieved a supposedly high level of recognition in the rest of the European Union. The evidence submitted demonstrated a certain use, to varying extents, in several Member States, but did not establish that a significant part of the relevant public was aware of the earlier marks in the territories in which reputation was claimed. The Board of Appeal also found that the applicant had due cause for the use of the mark applied for in Ireland. In those circumstances, the Board of Appeal concluded that it was entirely artificial to uphold the opposition under that article.
25      In the third place, as regards the ground of opposition based on Article 8(4) of Regulation 2017/1001, the Board of Appeal rejected the opposition based on that ground. In particular, the Board of Appeal found that the goods for which the opponent claimed unregistered rights in the sign KERRYGOLD, in the territories of Belgium, Denmark, Germany, Greece, Spain, France, Ireland, Malta, the Netherlands and the United Kingdom, were dissimilar to the remaining contested goods ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’ in Class 29. However, given that the intervener had not claimed that the laws of those Member States provided protection for dissimilar goods, the opposition based on that article could not
be upheld.
Forms of order sought
26      The applicant claims that the Court should:
–        partially annul the contested decision in so far as it dismissed its appeal against the Opposition Division’s decision;
–        reject the intervener’s opposition to registration of the mark applied for;
–        order EUIPO and the intervener to pay the costs.
27      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Determination of the applicable regulation ratione temporis
28      Given the date on which the application for registration in question was filed, namely
28 June 2011, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
29      Accordingly, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their arguments to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to the identical provisions of Article 8(1)(b) of Regulation No 207/2009.
Admissibility of the documents produced for the first time before the Court
30      The intervener submits that Annexes A6 to A14 and A20 to the application were not produced in the proceedings before EUIPO. It argues that those documents are new documents, produced for the first time before the Court and are therefore inadmissible.
31      The applicant stated at the hearing that it was
true that those annexes had not been produced in the proceedings before EUIPO, but that they nevertheless supported facts and arguments put forward during the proceedings.
32      In the present case, it is not disputed that those documents, which comprise two brochures of the European Commission on County Kerry (A6 and A7), an extract from a brochure published by Kerry County Council on tourist activity in the region (A8), an extract from a brochure published by the Irish National Tourism Development Authority on tourism in Ireland (A9), the table of contents, in German and French, of a brochure on activities in Kerry (A10 and A11), an extract from a report published by Kerry County Council on the socio-economic profile of the county (A12), PowerPoint slides showing the results of internet searches of the word ‘kerry’ (A13 and A14) and a copy of the judgment of 21 March 1991 of the Chúirt Uachtarach (Supreme Court, Ireland) (A20), were not part of the administrative file submitted by the applicant before the Board of Appeal.
33      It must be noted that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes
of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so
it is not the Court’s function to review the facts in the light of documents produced for the first time before it.
34      The mere fact that those documents support only the facts and arguments raised during the proceedings before EUIPO cannot allow the Court to re-examine the facts in the light of evidence adduced for the first time before it, since the legality of a decision taken by a Board of Appeal must be assessed in the light of the information available to it.
35      Consequently, those documents must be excluded
and there is no need to examine their probative value (see, to that effect, judgment of 10 May 2016, August Storck v EUIPO (Representation of white and blue square-shaped packaging), T‑806/14, not published, EU:T:2016:284, paragraph 15 and the case-law cited).
Substance
36      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
37      The applicant submits, in essence, that the Board of Appeal erred in concluding that there was a likelihood of confusion in the present case. More specifically, the applicant disputes the findings of the Board of Appeal relating to the relevant public’s perception of the geographical name ‘kerry’, the distinctive character of the earlier mark and the similarity of the signs at issue.
38      EUIPO and the intervener dispute the applicant’s arguments.
39      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 is not to 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.
40      According to settled case-law, 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. According to that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of 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 26 June 2014, Basic v OHIM – Repsol YPF (basic), T‑372/11, EU:T:2014:585, paragraph 21 and the case-law cited).
41      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 26 June 2014, basic, T‑372/11, EU:T:2014:585, paragraph 22 and the case-law cited).
The relevant public
42      The Board of Appeal first of all held, in paragraph 50 of the contested decision, that, in the light of the nature of the goods at issue, the relevant public consisted
of the general public.
43      The Board of Appeal then stated, also in paragraph 50 of the contested decision, that the level of attention of the relevant public varied from low to average.
44      Lastly, the Board of Appeal found, in paragraph 46 of the contested decision, that, in the light of the earlier mark,
the relevant public was composed of the public of the European Union.
45      Those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant, must be endorsed.
The comparison of the goods at issue
46      The Board of Appeal found, in paragraphs 55 to 73 of the contested decision, that, except for ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’, all the goods covered by the mark applied for were similar or identical to the goods in Class 29 in respect of which the earlier mark was registered.
47      Those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant, must be endorsed.
The comparison of the signs at issue
48      According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see, to that effect, judgment of 1 March 2016, BrandGroup v OHIM – Brauerei S. Riegele, Inh. Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 29 and the case-law cited).
49      In the present case, the marks to be compared are the following:
–        the mark applied for is the word sign KERRYMAID;
–        the earlier mark, reproduced below, is a composite mark consisting of the word element ‘Kerrygold’, and a figurative element representing a grazing black and white cow:
–       The dominant and distinctive elements of the signs at issue
50      The applicant complains, in essence, that the Board of Appeal found that the dominant element of the earlier mark was the word element ‘kerrygold’, rather than its figurative elements. The applicant submits, in that regard, that the term ‘kerry’ is devoid of distinctive character because it is descriptive. That term associated with the goods covered by the earlier mark would be perceived by the whole of the relevant public as an indication of their geographical origin and would
therefore not be registrable as such. The applicant submits, on the other hand, that the figurative elements of the earlier mark, on account of their combination and colour, are distinctive for the goods covered by that mark and must be regarded as the ‘dominant and distinctive elements’ of that mark.
51      EUIPO and the intervener dispute the applicant’s arguments.
52      As a preliminary point, it must, first, be recalled that 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 1 March 2016, SPEZOOMIX, T‑557/14, not published, EU:T:2016:116, paragraph 28 and the case-law cited).
53      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 for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods 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 for which the mark has been registered (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).
54      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. 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. 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 (see judgment of 19 September 2018, Eddy’s Snack Company v EUIPO – Chocoladefabriken Lindt & Sprüngli (Eddy’s Snackcompany), T‑652/17, not published, EU:T:2018:564, paragraph 39 and the case‑law cited).
55      Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).
56      Second, it should be noted that the applicant does not dispute the Board of Appeal’s finding that the term ‘gold’, included in the word element of the earlier mark, will be understood by a large majority of the relevant public as a laudatory term evocative of high quality. That term, taken in isolation, has limited distinctive character.
57      Nor does the applicant dispute the Board of Appeal’s finding that the mark applied for did not contain any dominant element.
58      By its first complaint, the applicant disputes, in essence, the Board of Appeal’s finding that the term ‘kerry’ will be perceived as an indication of the geographical origin of the goods covered by the earlier mark only by the Irish public and possibly by the United Kingdom public.
59      The applicant stated
before the Board of Appeal that Kerry is
a known tourist destination frequented
by visitors from all over the world, is one of the best-known regions in Ireland and is ranked third for
overseas
visitors behind the capital city Dublin, and Cork.
The applicant further stated that Kerry is a well-known destination among European travellers and has traditionally been one of Ireland’s premier tourist destinations.
Tourism in Kerry is now one of the largest industries in the region along with agriculture. For the whole of the Irish public,
the name Kerry has the geographic meaning of the well-known county, Kerry.
60      In its assessment of the term ‘kerry’, the Board of Appeal, in essence, drew a distinction between two categories of public, namely, on the one hand, members of the European public who live in Ireland, who have visited Ireland or, possibly, who live in the United Kingdom, because of its proximity to Ireland, and, on the other, members of the European public who do not live in Ireland or who have never visited Ireland.
61      Thus, the Board of Appeal found, in paragraph 85 of the contested decision, that the applicant’s statements allowed for the conclusion
that the word ‘kerry’, in relation to dairy products such as butter, milk or cheese, was likely to be understood as a reference to the geographical location of County Kerry, Ireland, by members of the European public who live in Ireland, who have visited Ireland or, possibly, who live in the United Kingdom, because of its proximity to Ireland.
62      It also found in the same paragraph that there was no clear indication that the non-English-speaking public of mainland Europe would understand that term as such. No evidence had been adduced to support the conclusion
that the term ‘kerry’ was understood by the European public as a whole as a geographical indication. The applicant’s arguments on the alleged knowledge of the term ‘kerry’ were mostly valid for members of the European public who live in Ireland, who have visited Ireland, or, possibly, who live in the United Kingdom, because of its proximity to Ireland. On the other hand, there was no reason to suppose that the term ‘kerry’ would be understood, by members of the European public who do not live in Ireland or who have never visited that country, as a reference to the Irish county Kerry.
63      The applicant again submits, in the application, that County Kerry is a tourist destination known worldwide. It is one of the most well-known regions of Ireland and is the second most popular regional tourist destination for overseas visitors, and in particular from mainland Europe, after Dublin. County Kerry is also an important agricultural region, widely known
in particular for its dairy products and other food products,
and is also known as a region with a rich political, literary, artistic and sporting heritage.
64      In support of those claims, the applicant submits to the Court a number of documents which must be rejected as inadmissible, as concluded in paragraph 35 above.
65      Moreover, it should be noted, as observed by EUIPO, that the evidence submitted by the applicant is not capable of showing that the term ‘kerry’ will be understood by the relevant public as a whole as a geographical indication.
66      First, irrespective of the relevance of the period referred to, the figures set out in paragraphs 32 and 33 of the application, relating to the number of foreign nationals, counted on the basis of their geographical origin, who visited County Kerry between 2011 and 2015, cannot be regarded as significant and representative in relation to the whole of the relevant public, consisting of the general public of the European Union, whose population, without taking into account Ireland and the United Kingdom, was
more than 430 million people in 2011 according to the European Union’s statistical office (Eurostat). Thus, it is not appropriate to list the number of foreign tourists who visited County Kerry, but to establish the perception of the term ‘kerry’ by the whole of the relevant public, including persons who have not visited
County Kerry or Ireland and who comprise the majority of that public. The figures submitted by the applicant do not relate to the whole of the relevant public, or even to most of that public which is composed of persons who have never visited Ireland or County Kerry. On the contrary, they focus on what, in the light of the European Union as a whole, is the very small and negligible fraction of the relevant public who visited that geographical area (see, to that effect, judgment of 25 October 2018, Devin v EUIPO – Haskovo (DEVIN), T‑122/17, EU:T:2018:719, paragraphs 46 and 48).
67      Second, the mere fact that County Kerry may have a detectable presence on the internet cannot suffice to establish, in line with the required legal and case-law standards, that it would be known by a significant part of the relevant public (see, to that effect, judgment of 25 October 2018, DEVIN, T‑122/17, EU:T:2018:719, paragraph 39). Those data do not show that the
average non-English-speaking consumer will perceive, directly and immediately, the term ‘kerry’ as a geographical location in Ireland. In the present case, the relevant public covers a much wider public than a small group of foreign tourists who would browse the internet in search of
information on County Kerry and who would intend to visit Ireland.
68      Third, the fact that County Kerry is a region with a rich political, literary, artistic and sporting heritage does not establish
that the term ‘kerry’ will be understood by the relevant public as a whole as a geographical indication. Such a claim presupposes that the average EU consumer of dairy products has an extremely high degree of knowledge of political, literary, artistic or sporting matters (see, to that effect, judgment of 25 October 2018, DEVIN, T‑122/17, EU:T:2018:719, paragraph 60).
69      Fourth, the applicant cannot properly
rely, in support of its claims, on the judgment of 7 January 2004, Gerolsteiner Brunnen (C‑100/02, EU:C:2004:11), relating to a likelihood of aural
confusion between the word mark Gerri and the sign KERRY Spring.
70      In that case, the Bundesgerichtshof (Federal Court of Justice, Germany), hearing an appeal on a point of law, held that there was a likelihood of aural
confusion for the purposes of Article 5(1)(b) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) between ‘GERRI’ and ‘KERRY’, since experience shows that, when ordering orally, customers shorten ‘KERRY Spring’ to ‘KERRY’.
71      However, the outcome of the appeal on a point of law depended on the interpretation of Article 6(1)(b) of Directive 89/104 and, more particularly, on whether use ‘as a trade mark’ excludes the applicability of that provision.
72      In those circumstances, the Bundesgerichtshof (Federal Court of Justice) decided, by order of 7 February 2002, to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
–        is Article 6(1)(b) of Directive 89/104 also applicable if a third party uses the indications referred to therein as a trade mark?
–        if so, must that use as a trade mark be taken into account when considering, pursuant to the final clause of Article 6(1) of Directive 89/104, whether use has been in accordance with ‘honest practices in industrial or commercial matters’?
73      In response to the questions raised, the Court of Justice ruled in the operative part of the judgment of 7 January 2004, Gerolsteiner Brunnen (C‑100/02, EU:C:2004:11), that Article 6(1)(b) of Directive 89/104 was to be interpreted as meaning that, where there exists a likelihood of aural
confusion between a word mark registered in one Member State and an indication, in the course of trade, of the geographical origin of a product originating in another Member State, the proprietor of the trade mark may, pursuant to Article 5 of Directive 89/104, prevent the use of the indication of geographical origin only if that use is not in accordance with honest practices in industrial or commercial matters. It is for the national court to carry out an overall assessment of all the circumstances of the particular case in that regard.
74      It follows that the question whether the term ‘kerry’, associated with the goods in question, would be understood by the relevant public as an indication of their geographical origin has not been examined by the Court of Justice, with the result that no conclusion can be drawn with regard to the present case.
75      In the light of all the foregoing considerations, it must be held that, in addition to the fact that the applicant’s claims are not supported by any evidence, they are not, in any event, capable of establishing that the term ‘kerry’, associated with the goods in question, will be understood by the relevant public as a whole as a geographical indication.
76      Accordingly, the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s assessment that there was no clear indication that the non-English-speaking public of mainland Europe would understand the term ‘kerry’ as a geographical indication of the goods at issue, and that assessment
must be endorsed.
77      By its second complaint, the applicant submits that the term ‘kerry’ is not registrable as such for any of the goods for which the earlier mark was registered, since it will be perceived by the relevant public as an indication of the geographical origin of the goods. Thus, according to the applicant, it is neither dominant nor distinctive.
78      At the outset, it should be noted, first, that the registration of geographical names as trade marks where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with that category in the mind of the relevant class of persons, is excluded as, second, is the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned (see judgment of 20 November 2018, St Andrews Links v EUIPO (ST ANDREWS), T‑790/17, not published, EU:T:2018:811, paragraph 23 and the case‑law cited).
79      However, it must be noted that,
in principle, Article 7(1)(c) of Regulation No 207/2009 does not preclude the registration of geographical names which are unknown to the relevant class of persons – or at least unknown as the designation of a geographical location – or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there (see judgment of 20 November 2018, ST ANDREWS, T‑790/17, not published, EU:T:2018:811, paragraph 24 and the case-law cited).
80      It should also be noted that, according to settled case-law, it is possible that, due to linguistic, cultural, social and economic differences between the Member States, a sign which is devoid of distinctive character or descriptive of the goods or services concerned in one Member State is not so in another Member State (see judgment of 26 February 2016, Mederer v OHIM – Cadbury Netherlands International Holdings (Gummi Bear-Rings), T‑210/14, not published, EU:T:2016:105, paragraph 83 and the case-law cited).
81      In the present case, it should be noted that the applicant’s argument is based on the premiss that the term ‘kerry’, associated with the goods in question, will be perceived by the whole of the relevant public as an indication of their geographical origin.
82      However, it has been concluded in paragraph 75 above that, apart from the fact that the applicant’s claims in that regard are not supported by any evidence, they are not, in any event, capable of establishing that the term ‘kerry’ will be understood by the relevant public as a whole as a geographical indication.
83      Accordingly, the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s finding that the term ‘kerry’ included in the earlier mark had, for the majority of the relevant public, except the Irish public and possibly the
United Kingdom public, distinctive character in relation to the goods for which the earlier mark was registered, and that finding
must be upheld.
84      Even if the relevant public as a whole were to perceive the term ‘kerry’ as a geographical indication when it is used in relation to the goods covered by the earlier mark, as the applicant submits, the Board of Appeal’s finding that the word element ‘kerrygold’ is the dominant element of the earlier mark would
not
be called into question.
85      After stating in paragraph 88 of the contested decision that the figurative elements of the earlier mark were descriptive or decorative, the Board of Appeal found, in paragraph 89 of the contested decision, that the part that visually stood out, that is to say, the dominant part, was the composite word element ‘kerrygold’, on account of its size and position in the earlier mark.
86      It follows that the Board of Appeal did not find that the word element ‘kerrygold’ was the dominant element of the earlier mark by relying simply on the presence of the term ‘kerry’, as the applicant appears to maintain.
87      In the light of the foregoing considerations, it must be held that, in addition to the fact that the applicant’s argument is based on an unsubstantiated premiss, it is, in any event, ineffective.
88      By its third complaint, the applicant submits that the figurative elements of the earlier mark
should, on account of their combination and colour, have been regarded by the Board of Appeal as the dominant and distinctive elements of the earlier mark.
89      As a preliminary point, it should be borne in mind that, according to settled case-law, where a trade mark consists of both word and figurative elements, the former are, in principle, more distinctive than the latter, because the relevant public will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 3 October 2019, Puma v EUIPO – Destilerias MG (MG PUMA), T‑500/18, not published, EU:T:2019:721, paragraph 33 and the case-law cited).
90      In the present case, the figurative elements of the earlier mark consist of a stylised script of the word element ‘kerrygold’, in a white and rounded font on a green background above which a grazing black and white cow is depicted and below which are three white flowers, with a thinly
curved white line on the left and the right of the flowers.
91      It must be held, as did the Board of Appeal, that, first, the representation of a grazing cow, as regards milk products, which are the goods for which the earlier mark was registered, will be perceived by the relevant public as an element that is descriptive of the nature of those goods.
92      It has been observed in paragraph 55 above that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).
93      Second, the flowers, the white lines, the green background and the font used will be perceived by the relevant public as purely decorative elements. Those elements, by their simple, ordinary and not very stylised representation, cannot convey any message that can be remembered by consumers, and consumers will not therefore regard them as dominant and distinctive elements.
94      It follows from the foregoing that, contrary to the applicant’s assertions, the Board of Appeal did not make an error of assessment in not regarding the figurative elements of the earlier mark as the dominant and distinctive elements of that mark.
–       The visual similarity of the signs at issue
95      The applicant submits, in essence, that the Board of Appeal erred in law by disregarding the geographical meaning of the word ‘kerry’. Thus, in the light of that finding, combined with the other visual differences, the signs at issue have at best only a very low degree of visual similarity.
96      EUIPO and the intervener dispute the applicant’s arguments.
97      The Board of Appeal found, in paragraph 92 of the contested decision, that, overall, there was an average degree of visual similarity between the signs at issue, on account of the common presence of the term ‘kerry’, placed in the first part of the signs, which has distinctive character for a large part of the relevant public, and the fact that the final parts of the signs consist of the same number of letters and the same last letter ‘d’.
98      By its argument, the applicant submits, in essence, that the Board of Appeal’s errors of assessment, relating to the determination of the distinctive and dominant elements of the earlier mark, are also to be found in its assessment of the visual similarity of the signs at issue, with the result that, if it had correctly determined the distinctive and dominant elements of the earlier mark, it would have found that the signs at issue had at best only a very low degree of visual similarity.
99      It has previously been found that, first, the applicant had not adduced any evidence capable of calling into question the Board of Appeal’s assessment that there was no clear indication that the non-English-speaking public of mainland Europe would understand the term ‘kerry’ as a geographical name. Second, the Board of Appeal did not make an error of assessment in not regarding the figurative elements of the earlier mark as distinctive and dominant.
100    It follows that the applicant’s argument must be rejected.
101    Moreover, it should be observed, as the Board of Appeal did, that the signs at issue are visually similar to an average degree.
102    In that regard, it should be noted at the outset that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 19 May 2011, PJ Hungary v OHIM – Pepekillo (PEPEQUILLO), T‑580/08, EU:T:2011:227, paragraph 75 and the case-law cited).
103    It should also be borne in mind that the earlier mark is a figurative sign composed of the word element ‘kerrygold’, written in a white and rounded font, on a green background above which a grazing
black and white cow is depicted. The green background has the shape of a rectangle, with a curved bottom and straight sides. Below
the word element, three white flowers are depicted, with a thinly
curved white line on the left and
the right of the flowers. The mark applied for is a word sign composed of a
single element, ‘kerrymaid’.
104    In the present case, the word elements of the signs at issue coincide in their length and structure. They both begin with the term ‘kerry’, to which another term of the same length is added, which ends with the same letter. They differ, however, in their final term. The word element of the earlier mark ends with the term ‘gold’, whereas the word element of the mark applied for ends with the term ‘maid’. The signs at issue also differ in that there is no figurative element in the mark applied for. As described in paragraph 90 above, the earlier mark contains various figurative elements.
105    Although the signs at issue are visually different on account of the figurative elements of the earlier mark, the presence of the term ‘gold’ in the earlier mark and the term ‘maid’ in the mark applied for, the relevant public will nevertheless perceive a visual similarity on account of the common element ‘kerry’, placed in the initial part of the word elements of the signs. That common term consisting of five letters has inherent distinctive character for a large part of the relevant public, so that it is likely to create an impression of visual similarity
on the part of that public. In addition, according to case-law, the consumer generally pays greater attention to the beginning of a mark than to the end (see judgment of 19 May 2011, PEPEQUILLO, T‑580/08, EU:T:2011:227, paragraph 77 and the case‑law cited). The other elements of the signs at issue and, in particular, the figurative elements of the earlier mark do not call that similarity into question, as has been shown in paragraphs 88 to 94 above. Moreover, according to the
case-law, where a trade mark consists of both word and figurative elements, the former are, in principle, more distinctive than the latter, because the relevant public will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 3 October 2019, MG PUMA, T‑500/18, not published, EU:T:2019:721, paragraph 33 and the case-law cited).
106    It follows that the common term ‘kerry’ confers an average degree of visual similarity on the signs at issue.
107    Accordingly, the Board of Appeal did not make an error of assessment in finding that the signs at issue were, overall, visually similar to an average degree.
–       The phonetic similarity of the signs at issue
108    The applicant submits that the observations concerning the visual similarity of the signs at issue apply mutatis mutandis to the phonetic similarity.
109    EUIPO and the intervener dispute the applicant’s arguments.
110    The Board of Appeal found, in paragraph 93 of the contested decision, that the signs at issue coincided phonetically in the common element ‘kerry’, pronounced first, and in the final letter ‘d’. On the other hand, it found that the pronunciation of the signs differed because of the presence of the term ‘gold’ at the end of the earlier mark and the term ‘maid’ at the end of the mark applied for. Noting, however, that the consumer’s attention was focused primarily on the beginning of the signs, it found that the signs at issue were, overall, phonetically similar to an average degree.
111    It should be observed that the applicant’s arguments are no different from those raised in relation to visual similarity.
112    In those circumstances and in so far as those
arguments
were
rejected in the examination of the visual similarity of the signs at issue, they
must also be rejected as regards phonetic similarity.
113    Moreover, it should be noted, as the Board of Appeal did, that the signs at issue are phonetically similar to an average degree.
114    It must be stated, in that regard, that the word elements of the signs at issue coincide in their syllabic structure and their identical sound pattern. They both consist of three syllables, coinciding in the first two syllables which make up the common term ‘kerry’ and in the final letter ‘d’. Furthermore, that phonetic identity relates to the beginning of the word elements of the signs, which determines, to a significant extent, the overall impression conveyed by the signs to the relevant public. As has been observed in paragraph 105 above, the consumer generally pays greater attention to the beginning of a mark than to the end (see judgment of 19 May 2011, PEPEQUILLO, T‑580/08, EU:T:2011:227, paragraph 77 and the case-law cited). The final word elements of the signs at issue are not such that that similarity could be called into question.
115    It follows that the common term ‘kerry’ confers an average degree of phonetic similarity on the signs at issue.
116    Accordingly, the Board of Appeal did not make an error of assessment in finding that the signs at issue were, overall, phonetically similar to an average degree.
–       The conceptual similarity of the signs at issue
117    The applicant submits, in essence, that the fact that the signs at issue have the term ‘kerry’ as their only common element leads to the perception that the goods in question have the same geographical origin. However, according to the applicant, the fact that, in
the mind of the public, the goods have the ‘same geographical origin’ prevents the relevant public from thinking that the goods have the same commercial origin.
118    At the hearing, in response to a question from the Court, the applicant stated that there was no conceptual similarity between the signs at issue.
119    It must therefore be noted
that the applicant does not dispute the Board of Appeal’s finding on that point.
120    In any event, it should be observed, as the Board of Appeal did, that the signs at issue are not conceptually similar.
121    In that regard, first, it has been found
in paragraph 76 above that the applicant had not adduced any evidence capable of calling into question the Board of Appeal’s assessment that the term ‘kerry’ has no meaning for the non-English-speaking part of the relevant public.
122    Second, it must be noted, as did the Board of Appeal, that, first of all, the term ‘gold’ contained in the earlier mark will be understood by the relevant public as a laudatory term indicating the high quality of the goods. Next, the figurative elements of the earlier mark convey the image of a grazing cow. Lastly, the term ‘maid’ contained in the mark applied for will be understood as referring to the concept of ‘female servant’ only by the English-speaking public.
123    It follows from the foregoing that the signs at issue do not convey
analogous semantic content.
124    According to the case-law, conceptual similarity means that the signs at issue convey
analogous semantic content (see, to that effect, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
125    Accordingly, the Board of Appeal did not make an error of assessment in finding that, overall, the signs at issue were not conceptually similar from the point of view of the non-English-speaking public, which includes a large part of the relevant public.
126    In the light of all the foregoing, it must be concluded that the signs at issue are visually and phonetically similar to an average degree, but that they are not conceptually similar.
127    Consequently, it must be found that the signs at issue are similar overall.
The global assessment of the likelihood of confusion
128    The applicant disputes the Board of Appeal’s finding that there is a likelihood of confusion and submits, first, that the Board of Appeal erred in finding that the term ‘kerry’ in the earlier mark had distinctive character. Second, the Board of Appeal erred in disregarding
the evidence of use submitted by the intervener showing that ‘kerrygold’ was promoted as an Irish product. As a result of that association with Ireland, the relevant public is likely to regard the term ‘kerry’, which appears in the earlier mark, as having Irish connotations. Third, the Board of Appeal erred in departing from the judgment of 7 January 2004, Gerolsteiner Brunnen (C‑100/02, EU:C:2004:11), in its assessment of the distinctive character of the term ‘kerry’. Fourth, the Board of Appeal erred in disregarding the judgment of the Audiencia Provincial de Alicante (Provincial Court, Alicante) and a judgment of the First Chamber of the Qorti Ċivili (Civil Court, Malta). Fifth, the Board of Appeal erred in finding that peaceful coexistence could be taken into consideration only for Ireland and the United Kingdom, since only consumers from those Member States perceive the word ‘kerry’ as a geographical indication.
129    EUIPO and the intervener dispute the applicant’s arguments.
130    The Board of Appeal, taking into account the average visual and phonetic similarity of the signs at issue, the average degree of distinctiveness of the earlier mark and the, at most, average level of attention of the relevant public, concluded that, in respect of the goods in Classes 29 and 30 covered by the mark applied for, which were found to be identical or similar to the goods covered by the earlier mark, there could be a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 for a significant part of the relevant public which is not aware of the geographical reference contained in the term ‘kerry’. The Board of Appeal stated that the peaceful coexistence of the signs at issue in Ireland and the United Kingdom did not allow the conclusion that there was no likelihood of confusion for the part of the relevant public residing in those Member States.
131    On the other hand, the Board of Appeal found that there was no likelihood of confusion in respect of the goods in Class 29 covered by the mark applied for which were found to be different from the goods covered by the earlier mark, namely ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’.
132    By its arguments, the applicant disputes, in essence, the Board of Appeal’s finding that there is a likelihood of confusion in respect of the goods in Classes 29 and 30 covered by the mark applied for which were found to be identical or similar to the goods covered by the earlier mark.
133    In that regard, it must be noted, first of all, that 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
(judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17).
134    Next, the fact that, in part of the European Union, an EU trade mark and a national mark peacefully coexist, does not allow the conclusion that, in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion between that EU trade mark and that sign (see, to that effect, judgment of 20 July 2017, Ornua, C‑93/16, EU:C:2017:571, paragraph 38).
135    Lastly, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 119 and the case‑law cited).
136    In the present case, it is apparent from the preceding paragraphs that, first, with the exception of ‘meat, fish, poultry and game’ and ‘preserved, dried and cooked fruits and vegetables’, all the goods covered by the mark applied for were similar or identical to the goods in Class 29 covered by the earlier mark.
137    Second, the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s finding that the term ‘kerry’ included in the earlier mark had, for the majority of the relevant public, except the Irish public and possibly the United Kingdom public, distinctive character in relation to the goods for which the earlier mark was registered. It must therefore be held, as the Board of Appeal did in paragraph 88 of the contested decision, that the combined term ‘Kerrygold’, which, as a whole, has no relevant meaning for a large part of the relevant public of the European Union, confers an average degree of distinctiveness on the earlier mark.
138    Third, the signs at issue are visually and phonetically similar to an average degree.
139    Therefore, it must be concluded, as the Board of Appeal did, that, in the global assessment of the likelihood of confusion, in the present case, in respect of the goods covered by the mark applied for which are similar or identical to the goods in Class 29 covered by the earlier mark, there may be a likelihood of confusion for the part of the relevant public which is not aware of the geographical reference contained in the word ‘kerry’ and which corresponds to a large part of the relevant public. The element ‘kerry’, which is common to the signs at issue, could lead consumers to think that the mark applied for is an additional version of the earlier mark.
140    That finding is not called into question by the applicant’s arguments.
141    In the first place, the applicant submits, in essence, that the Board of Appeal erred in law by disregarding the evidence submitted by the intervener as
to how the earlier mark is used. According to the applicant, that evidence shows that ‘kerrygold’ is heavily promoted as an Irish product. As a result of that association with Ireland, the relevant public is likely to regard the term ‘kerry’, which appears in the earlier mark, as having Irish connotations. This also reflects reality because the term ‘kerry’ does not have the function of indicating commercial origin, but is a statement of the geographical origin with strong links to agriculture in Ireland. Thus, disregarding that evidence would have led the Board of Appeal to carry out an abstract assessment of the dispute, detached from reality.
142    In that regard, first, the examination of the likelihood of confusion which the EUIPO authorities are called on to carry out is a prospective examination. As particular marketing strategies for the goods or services covered by the marks may vary over time and depend on the wishes of the proprietors of those marks, the prospective analysis
of the likelihood of confusion between two marks cannot be dependent on marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (see, to that effect, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59).
143    It follows that that examination necessarily entails an abstract assessment, which is based not on the circumstances in which the goods are marketed, but on the ‘objective’ arrangements for the marketing of the goods covered by the marks at issue, that is to say, those which it is normal to expect for the category of goods covered by the marks at issue.
144    In those circumstances, the intervener’s use of the earlier mark is irrelevant for the purposes of analysing the likelihood of confusion and, therefore, the Board of Appeal was not required to take into consideration the evidence relied on.
145    Second, even if the taking into consideration of that evidence
would have enabled the Board of Appeal to conclude that the term ‘kerry’ had Irish connotations for the relevant public, as the applicant submits, mere connotations cannot suffice, in any event, to establish, in accordance with the required legal and case-law standards, that the relevant public as a whole perceives the term ‘kerry’ as a geographical indication when it is used in relation to the goods covered by the earlier mark.
146    For a sign to be regarded as descriptive, there must be a sufficiently direct and specific link between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods or services in question or of one of their characteristics (see judgment of 25 October 2018, DEVIN, T‑122/17, EU:T:2018:719, paragraph 18 and the case-law
cited).
147    The applicant’s argument must therefore be rejected as unfounded.
148    In the second place, the applicant submits, in essence, that the Board of Appeal erred in departing from the judgment of 7 January 2004, Gerolsteiner Brunnen (C‑100/02, EU:C:2004:11), in its assessment of the distinctive character of the term ‘kerry’.
149    It should be noted that that argument of the applicant is no different from the argument advanced for the purposes of disputing the distinctive and dominant elements of the earlier mark.
150    It has been concluded, in that regard, in paragraphs 68 to 74 above, that the applicant cannot properly
rely on the judgment of 7 January 2004, Gerolsteiner Brunnen (C‑100/02, EU:C:2004:11), in support of its claims, since, contrary to its submissions, it does not appear, on reading the judgment in question, that the Court of Justice examined whether the term ‘kerry’, associated with the goods
in question, would be understood by the relevant public as an indication of their geographical origin. Therefore, no conclusion may be drawn from this with regard to the present case.
151    The applicant’s argument must therefore be rejected as unfounded.
152    In the third place, the applicant maintains, in essence, that the Board of Appeal erred in disregarding the judgment of the Audiencia Provincial de Alicante (Provincial Court, Alicante) and a judgment of the First Chamber of the Qorti Ċivili (Civil Court).
153    In that regard, it must be borne in mind that Regulation No 207/2009 does not contain any provision by which EUIPO is bound by a decision, even now definitive, by an EU trade mark court delivered in an action for infringement, in the context of the exercise of its exclusive jurisdiction over registration of EU trade marks and, in particular, when, in so doing, it examines oppositions lodged against applications to register EU trade marks (judgment of 21 July 2016, Apple and Pear Australia and Star Fruits Diffusion v EUIPO, C‑226/15 P, EU:C:2016:582, paragraph 48).
154    The applicant’s
argument must therefore be rejected as ineffective.
155    In the fourth place, the applicant submits, in essence, that the Board of Appeal erred in finding that peaceful coexistence could be taken into consideration only for Ireland and the United Kingdom, since only consumers in those Member States perceived the term ‘kerry’ as a geographical indication. The applicant submits, in that respect, that peaceful coexistence was ruled out for the other countries of the European Union without any valid reason or explanation, since the reasons given by the Board of Appeal related to a fact and not to a market condition or sociocultural circumstance, as envisaged
by the judgment of 20 July 2017, Ornua (C‑93/16, EU:C:2017:571). Furthermore, it is for the intervener to demonstrate, which it did not do, that the market conditions or sociocultural circumstances prevailing in the European Union are different from those in Ireland and the United Kingdom. Lastly, the Board of Appeal erred in stating that coexistence was limited, in Ireland and the United Kingdom, to a very restricted
range of consumer goods and that the intervener allowed
the applicant to coexist for commercial and shareholder-related reasons.
156    In that regard, it should be noted that the Court of Justice stated, in paragraph 46 of the judgment of 20 July 2017, Ornua (C‑93/16, EU:C:2017:571), as follows:
‘Although, for the purpose of assessing whether Ornua is entitled to prohibit the use of the sign KERRYMAID in Spain, the referring court should consider taking into account elements present in Ireland and the United Kingdom, it should first of all ensure that there is no significant difference between the market conditions or the sociocultural circumstances which may be observed, respectively, in the part of the European Union covered by the infringement action and in that in which the geographical area corresponding to the geographical word contained in the sign at issue is located. It cannot be excluded that the conduct which can be expected of the third party so that its use of the sign follows honest practices in industrial or commercial matters must be analysed differently in a part of the European Union where consumers have a particular affinity with the geographical word contained in the mark and the sign at issue than in a part of the European Union where that affinity is weaker.’
157    It must therefore be held that, contrary to the applicant’s assertions, the consumer’s affinity with the geographical term is a relevant factor for the purposes of assessing the likelihood of confusion and its possible neutralisation, so that it is inconceivable that the effects of the peaceful coexistence of the marks at issue in one part of the European Union could be extrapolated to another part of the European Union by transposing them to all or part of the European Union where there is no such coexistence.
158    The applicant’s argument that peaceful coexistence was ruled out for the other countries of the European Union without any valid reason or explanation must therefore be rejected as unfounded.
159    Moreover, it should be recalled that, according to the case-law, admittedly, the possibility cannot be excluded that, in certain cases, the coexistence of earlier marks on the market might reduce the likelihood of confusion which the EUIPO authorities find exists as between two marks at issue. However, that possibility can be taken into consideration only if, at the very least, the applicant for the EU trade mark has duly demonstrated, during the proceedings before EUIPO concerning relative grounds for refusal, that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 12 April 2016, Auyantepui Corp. v EUIPO – Magda Rose (Mr Jones), T‑8/15, not published, EU:T:2016:213, paragraph 36 and the case-law cited).
160    Thus, where the opposition to the registration of an EU trade mark is based on an earlier EU trade mark and the coexistence of that earlier mark with a trade mark identical to the mark applied for is relied on in support of there being no likelihood of confusion between the marks at issue, it is for the party relying on that coexistence to establish proof of it throughout the European Union (see judgment of 10 April 2013, Höganäs v OHIM – Haynes (ASTALOY), T‑505/10, not published, EU:T:2013:160, paragraph 49 and the case-law cited). Where the
earlier mark is an EU trade mark and, therefore, the relevant territory for the assessment of the likelihood of confusion is the whole of the European Union, an alleged coexistence in part of the territory of the European Union would not have the effect of ruling out a likelihood of confusion throughout the European Union (see, to that effect, judgment of 20 July 2017, Ornua, C‑93/16, EU:C:2017:571, paragraph 38).
161    It therefore follows from the foregoing that the burden of proof lies with the party claiming
the existence of peaceful coexistence and, moreover, where the opposition to the registration of an EU trade mark is based on an earlier EU trade mark, coexistence must be proved for the entire territory of the European Union.
162    In paragraph 107 of the contested decision, the Board of Appeal stated, without being contradicted, that the applicant claimed that the signs at issue had coexisted for a long time. The Board of Appeal also stated that the applicant’s arguments and observations related mostly to Ireland, while the applicant also referred to the United Kingdom in its written statement setting out the grounds of appeal.
163    The applicant’s argument that it is for the intervener to show that the
market conditions or sociocultural circumstances
prevailing in the European Union were different from those existing
in Ireland and the United Kingdom must therefore be rejected as unfounded.
164    Lastly, the applicant misinterprets paragraph 108 of the contested decision when attributing some of the intervener’s assertions to the Board of Appeal. The applicant claims that the Board of Appeal stated, in that paragraph, that, first, coexistence in Ireland and the United Kingdom was limited to a restricted
range of goods and, second, the intervener’s lack of opposition was based on commercial and shareholder-related reasons. As EUIPO states, and as the intervener confirms, that paragraph, which begins with ‘the opponent asserts’, is a reminder of the arguments put forward by the intervener in response to the applicant’s claim that the signs at issue had coexisted for a long time.
165    The applicant’s argument that the Board of Appeal erred in stating, first, that coexistence was limited in Ireland and the United Kingdom to a very restricted
range of consumer goods and, second, that the intervener allowed
the applicant to coexist for commercial and shareholder-related reasons must therefore be rejected as unfounded.
166    Having regard to all the foregoing considerations, it must be held that the Board of Appeal was correct in finding that there was a likelihood of confusion on the part of the non-English-speaking section of the relevant public between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) of Regulation No 207/2009, for the goods at issue.
167    In those circumstances, the single plea in law must be rejected as unfounded and, consequently, the action must be dismissed in its entirety, without there being any need to rule on the applicant’s head of claim seeking rejection of the intervener’s opposition to registration of the mark applied for.
Costs
168    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.
169    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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Kerry Luxembourg Sàrl to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Ornua Co-operative Ltd.
Costeira
Kancheva
Perišin
Delivered in open court in Luxembourg on 10 March 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.