JUDGMENT OF THE GENERAL COURT (Third Chamber)
7 February 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark representing a crayfish — Earlier international registration of the figurative mark РАКОВЫЕ ШЕЙКИ — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑775/16,
Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’, established in Kiev (Ukraine), represented by R. Žabolienė and I. Lukauskienė, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Moscow Confectionery Factory ‘Krasnyiy oktyabr’ OAO, established in Moscow (Russia), represented by O. Spuhler, M. Geitz and J. Stock, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 11 August 2016 (Case R 2419/2015-1), relating to opposition proceedings between Moscow Confectionary Factory ‘Krasnyiy oktyabr’ and Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen (Rapporteur), President, I.S. Forrester and E. Perillo, Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 8 November 2016,
having regard to the response of EUIPO lodged at the Court Registry on 20 December 2016,
having regard to the response of the intervener lodged at the Court Registry on 17 January 2017,
further to the hearing on 21 November 2017,
gives the following
Judgment
Background to the dispute
1        On 8 October 2013, the applicant, Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’, filed an application for protection in the European Union of international registration No 1191921 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        The international registration in respect of which protection was sought is the following figurative sign:
3        The goods in respect of which protection was sought are in Class 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: ‘confectionery, caramels [candy]’.
4        The colours red, yellow and white were claimed.
5        The particulars of the international registration provided for in Article 152(1) of Regulation No 207/2009 (now Article 190(1) of Regulation 2017/1001) were published in Community Trade Marks Bulletin No 30/2014 of 14 February 2014.
6        On 26 May 2014, the intervener, Joint-Stock Company ‘Krasnyiy oktyabr’, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the application for protection of the international registration in respect of the goods referred to in paragraph 3 above.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and the opposition was based on international registration No 1102599, with effect in Bulgaria, Benelux, Germany, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia and the United Kingdom, of the following figurative sign registered in respect of goods in Class 30, namely ‘sweetmeats [candy]’:
8        The colours red, white and black were claimed.
9        The opposition was based on all the goods covered by the earlier right and was directed against all the goods covered by the applicant’s international registration.
10      On 7 October 2015, the Opposition Division rejected the opposition in its entirety. It found that, irrespective of the identity of the goods and the conceptual similarity of the pictures of crayfish, the visual and phonetic differences between the signs were sufficient to offset the similarities and that there was therefore no likelihood of confusion.
11      On 3 December 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.
12      By decision of 11 August 2016 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Opposition Division’s decision and refused the contested international registration protection in the European Union.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
14      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
15      The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
16      Pursuant to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the 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).
18      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 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
19      As regards the determination of the relevant public, it is apparent from paragraph 20 of the contested decision that the Board of Appeal considered that the relevant public consisted of the public at large and that its level of attention varied from low, in the case of low-priced confectionary designed for mass consumption, to average, in the case of luxury confectionary. The Board of Appeal further considered, in paragraph 21 of the contested decision, that the relevant territories for the global assessment of the likelihood of confusion were Bulgaria, Benelux, Germany, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia and the United Kingdom.
20      Having regard to the contents of the file, it is appropriate to endorse that definition of the relevant public, which, moreover, is not disputed by the parties.
The comparison of the goods
21      As regards the comparison of the goods, it is apparent from paragraph 23 of the contested decision that the Board of Appeal found them to be identical, since, on the one hand, ‘confectionary’ covered by the contested right was identical to ‘sweetmeats [candy]’ covered by the earlier right and, on the other, ‘caramels [candy]’ covered by the contested right were included in ‘sweetmeats [candy]’ of the earlier right and were therefore also identical.
22      Having regard to the contents of the file, it is appropriate to endorse that assessment of the comparison of the goods, which, moreover, is not disputed by the parties.
The comparison of the signs
23      From a visual perspective, the applicant submits, in the first place, that the assessment that the figurative elements were the elements that catch the consumer’s eye most owing to their central position and size is contrary to the principle that word elements are more distinctive than figurative elements. Furthermore, it maintains that the Board of Appeal did not consider the role played by the difference in the colour used for the word elements. It takes the view that the word elements ‘crabs’ and ‘раковЫе шейки’ should be considered to be the dominant elements in the signs at issue or should at least be considered to be equal in importance to the figurative elements.
24      In the second place, the applicant submits that the fact that the signs at issue contain a vertical line of several representations of crayfish in the centre of the sign is irrelevant; that is the standard composition with regard to candy wrappers.
25      In the third place, it submits that the comparison of the figurative elements was also erroneous. First, trade marks are not meant to confer a monopoly on the use of certain general visual elements, such as the representation of a crayfish. Secondly, in the light of the differences between them, the representations of crayfish create a different overall impression. The applicant takes the view that the representation is more stylised and simplified in the contested sign than it is in the earlier sign, in which the crayfish is shown in a more realistic and lifelike manner. In the earlier sign, the four crayfish face to the left, whereas in the contested sign, the six and a half crayfish face alternately to the left and right. It also maintains that the signs also differ in the colours of the crayfish, which is represented in dark red in the earlier sign and in light red in the sign applied for.
26      As regards the phonetic comparison, the applicant observes that the Board of Appeal was right in stating that the part of the relevant public with knowledge of Russian will pronounce the word elements in the earlier sign and that the signs at issue are therefore phonetically dissimilar. Moreover, for those consumers who perceive the element ‘раковЫе шейки’ as a figurative element rather than as a word element, that element would only strengthen the visual dissimilarity between the signs.
27      On a conceptual level, the applicant submits that the signs at issue are dissimilar because of the different meanings of the word elements in both signs. The word element ‘раковЫе шейки’ in the earlier sign will, in its view, be understood by consumers who understand Russian as meaning ‘crayfish necks’, whereas the word element ‘crabs’ in the contested sign will be understood by English-speaking consumers as meaning ‘crab’. The applicant maintains that it is obvious that the words ‘crab’ and ‘crayfish’ designate different animals. Even though both animals are crustaceans, such an association is insufficient for the purpose of a conceptual comparison.
28      EUIPO and the intervener dispute those arguments.
29      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, inter alia, 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
30      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
31      In the present case, it should be noted that, following its analysis of the comparison of the signs, the Board of Appeal considered that the signs at issue were ‘visually similar to an average degree’, that they could not be compared phonetically ‘by consumers that do not understand Cyrillic letters’ and that they were ‘aurally dissimilar for Bulgarian-speaking consumers and consumers with some knowledge of Russian’, as well as ‘conceptually similar’ (see paragraphs 31 to 34 of the contested decision).
32      As a starting point, the Court notes that the signs at issue were described as follows in the contested decision.
33      First, in paragraph 24 of the contested decision, the Board of Appeal stated that the sign at issue depicted a rectangular label consisting of a white square with yellow and red wavy lines on the sides, that, on each side, between the wavy lines the word ‘crabs’ is written six times in red, stylised capital letters, and that in the middle of the sign there were six and a half figurative representations of red crayfish arranged in a vertical line, with the crayfish face alternatively to the right and to the left.
34      Secondly, in paragraph 25 of the contested decision, the Board of Appeal also pointed out that the earlier sign consisted of a rectangular label containing four stylised graphic representations of crayfish facing to the left arranged in a vertical line in the centre of the sign, that it contained the word elements ‘раковЫе шейки’ and ‘карамель’, written in Cyrillic letters in black and repeated twice (their transliterations being ‘rakovye šejki’ and ‘karameľ), that a round seal with various illegible elements was depicted on two sides of the sign, twice on the left side and three times on the right side and that, on the left side of the sign, some words written vertically appeared in Cyrillic and, according to the description of the sign in the registration certificate, their transliterations were ‘kond’, ‘f-ka’ and ‘krasnyj octyabr’.
35      The applicant submits in that respect that the Board of Appeal did not correctly evaluate the relative importance of the word and figurative elements of the signs at issue.
36      In the first place, the applicant relies on the case-law in accordance with which, when a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 15 December 2009, Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, not published, EU:T:2009:507, paragraph 45 and the case-law cited).
37      However, as was pointed out in paragraph 26 of the contested decision, it is also settled case-law that, in certain cases, figurative elements of a sign can have the same or more weight than the word elements (see, to that effect, judgments of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Palmos Łańcut (WISENT), T‑449/13, not published, EU:T:2015:839, paragraphs 81 to 84, and of 30 November 2015, Hong Kong Group v OHIM — WE Brand (W E), T‑718/14, not published, EU:T:2015:916, paragraph 45). Such cases depend on the circumstances of the individual case and cannot be limited, as the applicant infers, solely to the situations cited by the Board of Appeal by way of example in paragraph 26 of the contested decision, in which reference is made to the case where ‘the importance of the word element is weakened by its insignificant position and relatively small size’ or where ‘the figurative element is conceptually linked with the word element’ (see judgment of 26 April 2016, Franmax v EUIPO — Ehrmann (Dino), T‑21/15, not published, EU:T:2016:241, paragraph 72 and the case-law cited).
38      In the second place, it was precisely in its assessment of the circumstances of the present case for the purposes of the comparison of the signs at issue that the Board of Appeal came to the conclusion that those signs were ‘visually similar to an average degree’ for the following reasons (see contested decision, paragraph 32).
39      First, the Board of Appeal was right to consider, in paragraphs 27 to 30 of the contested decision, that the figurative representations of crayfish were the elements that caught the consumer’s eye most in the two signs at issue. In the contested sign, those figurative elements stood out because of their central position and the size of the word elements. The representations of crayfish, situated in the centre of that sign, were significantly larger than the word element ‘crabs’, which was placed at the very edges of the sign and hidden between the yellow and red wavy lines.
40      Similarly, in the earlier sign, the figurative representations of crayfish were the most distinctive elements of the earlier sign since its word elements consisted of Russian words written in Cyrillic letters which were incomprehensible and illegible for the non-Russian-speaking and non-Bulgarian-speaking public. For consumers with knowledge of Russian (such as some consumers in Latvia, Estonia and Lithuania) or Bulgarian, the Board of Appeal found that they would understand the word element ‘раковЫе шейки’ as meaning ‘crayfish necks’ or ‘of a crayfish’ and that, consequently, the figurative representations of crayfish would be conceptually linked to that word element and would retain its power to visually attract. Moreover, for those consumers who understood its meaning, the word element ‘карамель’ would not be distinctive because it would be descriptive of the goods at issue. Consequently, as the Russian- and Bulgarian-speaking part of the relevant public would make a link between the word and figurative elements in the earlier mark, the Board of Appeal was entitled to consider that those consumers would remember both types of element and that, for them, the representations of crayfish had a considerable weight in the overall visual impression of the contested sign (see judgment of 26 April 2016, Dino, T‑21/15, not published, EU:T:2016:241, paragraph 72 and the case-law cited).
41      As was the case for the contested sign, the importance of the figurative elements present in the earlier sign was reinforced by the size of the representations of crayfish which were significantly larger than the word elements and by the fact that they were arranged in a vertical line.
42      Regard being had to such observations, it was permissible for the Board of Appeal to find that the figurative representations of crayfish had considerable weight in the overall visual impression of the signs at issue (see contested decision, paragraphs 27 and 30).
43      Secondly, after having duly pointed out that the signs at issue were similar in so far as they contained graphic representations of crayfish arranged in a vertical line in the centre of the sign, the Board of Appeal correctly pointed out the differences between those signs in its assessment of their similarity.
44      Accordingly, in paragraph 31 of the contested decision, the Board of Appeal stated that, in the contested sign, the representations were more stylised and simplified than in the earlier sign in which the crayfish was shown in a more realistic and lifelike manner. It also pointed out that, in the earlier sign, the four crayfish all faced to the left, whereas in the contested sign the six and a half crayfish faced alternately to the left and right. The Board of Appeal was also correct in considering that the signs at issue differed in their word elements and additional graphic elements: the wavy lines in the contested sign and the seals in the earlier sign.
45      Moreover, as noted by the Board of Appeal in that same paragraph of the contested decision, even though the crayfish faced different sides, showed different degrees of stylisation and differed in their total number, the visual comparison of the signs at issue still gave the impression of a certain symmetry, which was a factor of similarity between the two signs (see judgment of 26 April 2016, Dino, T‑21/15, not published, EU:T:2016:241, paragraph 70 and the case-law cited).
46      Thus, contrary to what the applicant asserts in its arguments which focus on the differences rather than the similarities, the Board of Appeal cannot be accused of having failed to take account, in its overall assessment, of the visual similarity of the differences referred to above.
47      Thirdly, the Board of Appeal was in a position to state, in paragraph 31 of the contested decision, that the representations of crayfish had considerable weight in the two signs at issue because of their similar structure. The two signs contained a vertical line of several representations of crayfish in the centre of the sign. Similarly, in both signs the representations of crayfish were the largest individual elements and were significantly larger that the word and additional figurative elements. Finally, the word elements and the additional figurative elements placed at the sides of the sign also formed a vertical line.
48      The analysis of the Board of Appeal is in no way called into question by the other arguments raised by the applicant in that regard.
49      First of all, the applicant submits that the Board of Appeal failed to consider the importance of the role played by the difference in colour used for the word elements. It is true, as the applicant submits, that the word element of the earlier sign was written in black whereas the word element of the contested sign was written in red. However, such a difference cannot suffice for it to be considered that the word elements ‘crabs’ and ‘раковЫе шейки’ constituted the dominant elements in the signs at issue, or at the very least, that they were of equal importance to the figurative elements. That difference in colour does not alter the analysis of the visual comparison of the signs made by the Board of Appeal in the contested decision.
50      Similarly, the statement that it is common for candy wrappers to have the main elements in the centre or at the sides, positioned vertically, so as to be visible when the candies are wrapped cannot suffice to call into question the fact that the signs at issue contained a vertical line of several graphic representations of crayfish at the centre of the sign. Moreover, the protection granted by the right at issue is not limited to candy wrappers.
51      Finally, so far as concerns the argument that marks are not meant to confer a monopoly on the use of certain general visual elements, in this instance the image of a crayfish, the Court recalls that the advantage of the legal regime of the EU trade mark lies precisely in the fact that it enables holders of an earlier mark to oppose the registration of later marks which take unfair advantage of the distinctive character of the original mark. Hence, far from according an unfair and unjustifiable monopoly to the proprietors of an earlier mark, that regime enables those proprietors to protect and exploit the substantial investment made to promote their earlier mark (see judgment of 26 April 2016, Dino, T‑21/15, not published, EU:T:2016:241, paragraph 87 and the case-law cited).
52      So far as concerns the visual comparison of the signs, it must therefore be concluded that the Board of Appeal correctly considered that, given the importance of their similarities and the weak role played by their differences, the signs at issue were visually similar to an average degree.
53      As regards the phonetic comparison of the signs, it is not disputed that the signs at issue either did not give rise to such a comparison because their word elements were incomprehensible and illegible for the relevant consumers, such as those who were not able to pronounce the word elements of the earlier sign written in Cyrillic letters, or could be recognised only by the consumers who spoke Bulgarian or who had knowledge of Russian, for whom the signs at issue were different phonetically (see contested decision, paragraphs 32 and 33).
54      Regard being had to the contents of the file, it is appropriate to endorse those assessments of the phonetic comparison of the signs, which, moreover, are not disputed by the parties.
55      In relation to the conceptual comparison of the signs, the Board of Appeal was also right to consider, in paragraph 34 of the contested decision, that the signs were conceptually similar to the extent that they both contained representations of crayfish which had a significant weight in the overall impression and that their word elements were meaningless for the parts of the relevant public who did not understand Russian or Bulgarian in order to be able to grasp the meaning of the word element ‘раковЫе шейки’ or who did not understand English or French so as to be able to understand the word element ‘crabs’.
56      In that regard, contrary to what the applicant submits, it is of little importance to point out that, for the part of the relevant public who would understood the word element ‘раковЫе шейки’ of the earlier sign or the word element ‘crabs’ of the contested sign, there would be a conceptual difference between the signs.
57      In any event, the Court recalls that, in order 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 No 207/2009 exists in part of the European Union. Thus, the Board of Appeal was entitled to rely only on the perception of the Netherlands, German, Greek, Spanish, Croatian, Italian, Cypriot, Polish, Portuguese, Romanian and Slovak public for the conceptual comparison of the signs at issue (see, to that effect, judgment of 9 December 2014, DTL Corporación v OHIM — Vallejo Rosell (Generia), T‑176/13, not published, EU:T:2014:1028, paragraph 97 and the case-law cited).
58      In conclusion, the Board of Appeal was entitled to conclude that the signs at issue were visually similar to an average degree and that they were conceptually similar.
The distinctiveness of the earlier right
59      The applicant submits, in essence, that the Board of Appeal failed to examine its arguments and the evidence concerning the low degree of distinctiveness of the earlier right. It maintains that the word element ‘раковЫе шейки’ and the image of a crayfish lack distinctiveness with regard to the goods in Class 30 because they have been used since the 19th century to market those goods. It takes the view that, in the present case, the evidence relating to Russia, Belarus and Ukraine during the period of the Soviet Union should have been taken into account in assessing the distinctiveness of the earlier right in Lithuania, Latvia and even in Bulgaria.
60      EUIPO contends that, as the applicant and the intervener relied on the same items of evidence in support of their arguments, the conclusions reached by the Board of Appeal are equally valid with regard to the other party’s claim of enhanced distinctiveness as they are with regard to the applicant’s claim of a lower degree of distinctiveness. It states that, in the present case, the Board of Appeal considered that the evidence furnished did not cover any of the relevant territories as it related to Russia, Ukraine and Belarus. EUIPO submits that, in addition, it cannot be maintained that those territories are relevant in so far as they, like Lithuania and Latvia, formed part of the Soviet Union more than 25 years ago. No evidence was filed to establish that that historic relationship would still have an influence on the perception of the mark and its distinctiveness a quarter of a century later. It takes the view that the inherent distinctiveness of the earlier mark has to be assessed at the time of the decision and that there is no evidence that, at the time the contested decision was taken, the earlier mark had a weaker distinctive character in all of the relevant territories. EUIPO submits that it should, in fact, be borne in mind that the earlier mark is an international registration designating several individual Member States and that each of them thus forms a distinct basis of the opposition. In its view, the Board of Appeal therefore correctly assessed the degree of inherent distinctiveness of the earlier mark in concluding that that mark was neither descriptive nor allusive with regard to the goods at issue and, consequently, possessed a normal degree of inherent distinctiveness.
61      In essence, the intervener takes the view that the Board of Appeal was right in finding that the earlier right had at least a normal degree of distinctiveness. In that regard, by letter of 11 September 2017, on which the other parties were able to submit observations, on 6 October 2017 in the case of EUIPO and on 9 October and 14 November 2017 in the case of the applicant, the intervener informed the Court that the EU figurative mark registered on 7 July 2017 under number 15948185, of which it was the proprietor and which covered goods in Class 30, confirmed that the element consisting of a crayfish in the earlier right was distinctive on its own for the trade circles addressed.
62      As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous factors, in particular the public’s recognition of the trade mark on the market in question. Since the more distinctive the earlier mark the greater the likelihood of confusion, marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see judgment of 24 November 2016, CG v EUIPO — Perry Ellis International Group (P PRO PLAYER), T‑349/15, not published, EU:T:2016:677, paragraph 66 and the case-law cited).
63      In the present case, in paragraph 37 of the contested decision, the Board of Appeal considered that the evidence filed during the opposition proceedings in relation to the alleged weak distinctiveness of the word element ‘раковЫе шейки’ did not concern the relevant territories for the assessment of the likelihood of confusion (namely, Bulgaria, Benelux, Germany, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia and the United Kingdom), but territories outside of the European Union (namely, Russia, Belarus and Ukraine). Such evidence should thus not have been taken into account in the assessment of the distinctiveness acquired by the earlier right within the territories of the Member States covered by that international registration, even if it were to be assumed that some of those Member States may be singled out in the light of their 20th century history.
64      Consequently, in the absence of any relevant information in the file such as to establish the low degree of distinctiveness of the earlier right, the Board of Appeal was entitled to conclude, in paragraph 39 of the contested decision, that that assessment was based on its inherent distinctiveness. Since the earlier sign is neither descriptive of nor allusive to the goods concerned, it possessed a normal degree of inherent distinctiveness.
65      The applicant’s arguments seeking to call that assessment into question must therefore be rejected.
66      There is no need to adjudicate in that regard on the elements communicated during the proceedings in the intervener’s letter of 11 September 2017, which concern an EU trade mark registered after the adoption of the contested decision. In addition to the fact that that mark, of which the intervener is the proprietor, is currently being challenged in annulment proceedings brought by the applicant, which the latter was able to indicate to the Court in its observations of 14 November 2017, it should be noted that, although the Court assesses the legality of the decision of the Board of Appeal by reviewing the application of EU law made by the Board of Appeal in the light, inter alia, of the facts which were submitted to it, it cannot, by contrast, carry out such a review by taking account of new facts produced before it (see, to that effect, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 54 and the case-law cited).
The global assessment of the likelihood of confusion
67      The applicant claims that the Board of Appeal was wrong to conclude that there was a likelihood of confusion. It submits that the Board of Appeal should have taken account of the differences between the signs and the weak distinctiveness of the earlier right.
68      EUIPO and the intervener dispute those arguments.
69      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
70      In the present case, as is rightly set out in paragraphs 44 and 45 of the contested decision, taking into account the identity of the goods at issue and the consumer’s imperfect recollection, but also the considerable importance of the graphic representations of crayfish in the overall visual impression of both signs and of the coinciding arrangement of the crayfish in a vertical line in the centre of the signs, where the similarities outweigh the differences, the Board of Appeal was fully entitled to consider that the degree of similarity between the signs at issue was not so weak so as to be able to rule out a likelihood of confusion.
71      Accordingly, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected as unfounded.
72      The action must therefore be dismissed.
Costs
73      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’ to pay the costs.
Frimodt Nielsen
Forrester
Perillo
Delivered in open court in Luxembourg on 7 February 2018.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.