JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
28 March 2019 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark Unifoska — Earlier EU word mark NITROFOSKA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑259/18,
Zakłady Chemiczne “Siarkopol” Tarnobrzeg sp. z o.o., established in Tarnobrzeg (Poland), represented by M. Kondrat, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
EuroChem Agro GmbH, established in Mannheim (Germany), represented by M. Schmidhuber and A. Haberer, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 February 2018 (Case R 1503/2017-5), relating to opposition proceedings between EuroChem Agro and Zakłady Chemiczne “Siarkopol” Tarnobrzeg,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 April 2018,
having regard to the response of EUIPO lodged at the Court Registry on 31 July 2018,
having regard to the response of the intervener lodged at the Court Registry on 3 August 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 20 January 2016, the applicant, Zakłady Chemiczne “Siarkopol” Tarnobrzeg sp. z o.o., 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 Unifoska.
3        The goods in respect of which registration was sought are in Class
1 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: ‘Mineral fertilising preparations; manures’.
4        The trade mark application was published in Community Trade Marks Bulletin No 21/2016 of 2 February 2016.
5        On 28 April 2016, the intervener,
EuroChem Agro GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on, inter alia, the earlier EU word mark NITROFOSKA, which covers goods in Class 1 corresponding to the following description: ‘Manures’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 1 June 2017, the Opposition Division upheld the opposition.
9        On 11 July 2017, the applicant 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 decision of the Opposition Division.
10      By decision of 7 February 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. More specifically, it found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on account, in particular, of the identity of the goods at issue, the similarity of the marks at issue and the average degree of distinctiveness of the earlier mark.
Forms of order sought
11      The applicant claims that the Court should:
–        annul or alter the contested decision and hold that the mark applied for must be registered;
–        order EUIPO to pay the costs.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      The applicant relies on two pleas in law, the first alleging infringement of Article 8(1)(b) of Regulation 2017/1001 and the second alleging infringement of the principles of the protection of legitimate expectations and legal certainty.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
14      In support of the first plea, the applicant submits that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the grounds, first, that the earlier mark is devoid of any distinctive character and, secondly, that the marks at issue are dissimilar.
15      EUIPO and the intervener dispute the applicant’s arguments.
16      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17      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 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 2017/1001, 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).
19      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others ), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
The relevant public
20      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
21      In the present case, it must be pointed out that, having regard to, inter alia, their intended use, the goods at issue may therefore be of interest, first, to members of the general public who garden and, secondly, to professionals such as farmers, gardeners and agricultural and horticultural undertakings which, in the course of their activities, grow plants and vegetables (see, to that effect, judgment of 25 September 2018, EM Research Organization v EUIPO — Christoph Fischer and Others (EM), T‑180/17, not published, under appeal, EU:T:2018:591, paragraph 42).
22      In those circumstances, the Board of Appeal was right in finding, a finding which has not, moreover, been disputed by the applicant, that the relevant public is the public in the European Union, which consists both of the general public and of professionals.
The comparison of the goods at issue
23      It must be pointed out that the manures covered by the marks at issue may include the mineral fertilising preparations covered by the mark applied for, with the result that the Board of Appeal was right in finding, a finding which has not, moreover, been disputed by the applicant, that the goods at issue are identical.
The comparison of the marks at issue
24      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
25      The Board of Appeal found that the marks at issue were visually and phonetically similar. Furthermore, it found that the conceptual comparison of those marks was ‘neutral’.
26      The applicant submits that the marks at issue are dissimilar inasmuch as they have only the element ‘foska’ in common, which is, in its submission, first, descriptive, and, secondly, situated at the end of those marks. Furthermore, the applicant submits that the element ‘nitro’ in the earlier mark is also descriptive.
27      In the first place, the applicant maintains that the element ‘foska’ in the marks at issue and the element ‘nitro’ in the earlier mark refer to the ingredients of manures. It argues that the element ‘foska’ thus refers either to phosphorus and potassium (paragraph 20 of the application) or to phosphorus alone (paragraphs 24 and 40 of the application) and the element ‘nitro’ refers to nitrogen. It submits that, since, first, farmers and gardeners pay great attention to the ingredients of the manures that they use and, secondly, the relevant public knows the symbols for the various chemical elements, namely, in the present case, the capital letter ‘P’ for phosphorus, the capital letter ‘K’ for potassium and the capital letter ‘N’ for nitrogen, that public will perceive the elements ‘foska’ and ‘nitro’ as information relating to those ingredients.
28      However, it must be pointed out, first, that, as has been stated in paragraph 22 above, the relevant public does not consist solely of professionals, whether farmers or gardeners, but also of the general public. The applicant does not establish, or even claim, that the general public pays particular attention to the composition of the manures that it uses.
29      Secondly, the applicant does not, in addition, establish that the general public knows the respective symbols for phosphorus, potassium and nitrogen. In that regard, it must be pointed out that the fact that those symbols are used throughout the world and are based on the Latin names for those chemical elements does not prove that the general public, which does not necessarily have any advanced knowledge of chemistry and does not necessarily speak a Latin language, is aware of those symbols.
30      Furthermore, first, as regards the element ‘foska’, it must be stated that that element does not contain the symbol for phosphorus and that the applicant itself casts doubt on its claim that that element is understood by the relevant public since, as has been pointed out in paragraph 27 above, it maintains that that element sometimes refers to phosphorus and potatssium and sometimes refers only to phosphorus. Secondly, as regards the element ‘nitro’, it must be stated that, although that element is included in the English word ‘nitrogen’, it is not included in the German word ‘Stickstoff’. Similarly, although that element is included in the French and Italian words ‘nitrogène’ and ‘nitrogeno’, it is not included in the words ‘azote’ and ‘azoto’, which are more commonly used. In those circumstances, the applicant has not established that the whole of the relevant public perceives the element ‘nitro’ as a reference to nitrogen.
31      It follows that the applicant has not established that the element ‘foska’ in the marks at issue and the element ‘nitro’ in the earlier mark enable the relevant public, in particular the general public, immediately to perceive, without further thought, a description of the goods in question or of one of their characteristics, with the result that those elements cannot be considered to be descriptive.
32      In the second place, although, as the applicant maintains, the relevant public normally attaches more importance to the first part of words, it must, however, be borne in mind that that does not apply in all cases and cannot call into question the principle that the examination of the similarity of trade marks must take into account the overall impression created by those marks (judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 38, and of 23 September 2011, NEC Display Solutions Europe v OHIM — C More Entertainment (see more), T‑501/08, not published, EU:T:2011:527, paragraph 38). In the present case, the marks at issue consist of only one word element of four syllables, with the result that it cannot be held that the relevant public pays significantly more attention to the first parts of those marks.
33      It therefore follows from the foregoing, first, that the Board of Appeal was right in finding, as regards the visual and phonetic comparison of the marks at issue, that those marks were similar inasmuch as they had the element ‘foska’ in common and, secondly, that the conceptual comparison of those marks was impossible as the applicant had not established, or even, as regards the mark applied for, taken as a whole, claimed, that the marks at issue had a meaning which would be understood by the whole of the relevant public.
The assessment of the likelihood of confusion
34      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
35      The Board of Appeal found that, in view of the identity of the goods at issue, the fact that the marks at issue had the element ‘foska’ in common was sufficient to establish that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
36      The applicant submits that there is no likelihood of confusion since the earlier mark is descriptive.
37      In that regard, in the first place, it must be borne in mind that it is not possible for a trade mark applicant to dispute that an earlier EU trade mark has a minimum degree of distinctiveness in the context of opposition proceedings brought in response to his application. If the applicant considered that the earlier EU trade mark had been registered contrary to the provisions of Article 7 of Regulation 2017/1001, it should have submitted an application for a declaration of invalidity pursuant to Article 59 of that regulation (see, to that effect, judgment of 14 May 2013, Masottina v OHIM — Bodegas Cooperativas de Alicante (CA' MARINA), T‑393/11, not published, EU:T:2013:241, paragraph 52 and the case-law cited).
38      In the second place, it must be noted, as is apparent from paragraph 31 above, that the earlier mark is not descriptive for at least part of the relevant public. That finding cannot be called into question by the applicant’s claim that the earlier mark is a generic term for the goods at issue.
39      Without it being necessary to rule on the admissibility of the evidence which the applicant has provided in that regard, the admissibility of part of which evidence is disputed by EUIPO and the intervener, first, it is sufficient to state that the applicant refers, in its application, to pages from various encyclopaedias (Annexes A.4 to A.6, A.9, A.11, A.15 and A.16), a page from the book by Abelshauser, W., et al., German Industry and Global Enterprise — BASF: The History of a Company, Cambridge University Press, Cambridge, 2003 (Annex A.11), a list of the results provided when the word ‘nitrophoska’ is entered in the search engine on the website ‘www.google.pl’ (Annex A.19), web pages relating to the marketing of four different producers’ manures (Annex A.20), Polish and EU trade mark registrations (Annex A.21) and abstracts of patents from the Espacenet database of the European Patent Office (EPO) (Annex A.22).
40      First of all, it cannot be deduced from the pages from encyclopaedias, the page from a book in respect of which the applicant has not provided any information regarding its dissemination to the relevant public and the abstracts of patents from the EPO’s database Espacenet that the general public knows the meaning of the term ‘nitrofoska’. On the contrary, the fact that that meaning appears in encyclopaedias, in a book relating to the history of a specific company or in an EPO database is capable of constituting an indication that that meaning is known only to certain professionals in the relevant public.
41      Next, as regards the Polish and EU trade mark registrations, it is sufficient to state that the relevant factor for the purposes of disputing the distinctive character of an element is its actual presence on the market and not its having been entered in registers or databases
(see, to that effect, judgment of 8 March 2013, Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77). However, it must be pointed out that the applicant has not put forward any information relating to the actual presence of those marks on the market.
42      Likewise, it must be pointed out that the list of results provided when the word ‘nitrophoska’ is entered in the search engine on the website ‘www.google.pl’ does not, in the absence of additional explanations, make it possible to identify the marks which are supposedly present on the market or the territory in which those marks are supposedly used, notwithstanding the fact that the top-level domain name of that site corresponds to the code for Poland. Moreover, it must also be pointed out that the word ‘nitrophoska’ does not correspond to the spelling of the earlier mark, that the first result in that list seems to refer to one of the intervener’s trade marks and that some results relate to top-level domain names corresponding to the codes of non-member States, with the result that those results do not necessarily appear to be capable of establishing that the term ‘nitrofoska’ is used in the European Union.
43      Lastly, as regards the web pages relating to the marketing of four different producers’ manures, it must be pointed out that the applicant has not provided any information relating to the presence of those producers on the market or, consequently, to the awareness of those producers on the part of the relevant public throughout the European Union, in particular the general public.
44      Secondly, first of all, it must be noted that the applicant simply referred, in paragraph 20 of the application, to Annexes A.7 and A.8, although those annexes do not correspond to the encyclopaedias to which that paragraph refers. Next, it must be pointed out that the reference to Annex A.10 in paragraph 21 of the application does not correspond to the content of that annex. Lastly, it must be stated that the applicant does not explain in what respect, first, Annexes A.23 to A.26 show that the element ‘foska’ is the abbreviated form of the word ‘phosphorus’ and, secondly, Annexes A.27 to A.32 show that the element ‘foska’ is commonly used in the marketing of manures.
45      According to settled case-law, it is necessary, for an action to be admissible, that the basic matters of fact and law relied on be indicated, at least in summary form, coherently and intelligibly in the application itself. In that regard, although the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed to it, a general reference to other documents, even those annexed to the application, cannot compensate for the lack of essential elements of the legal arguments, which, under Article 21 of the Statute of the Court of Justice of the European Union and Article 177 of the Rules of Procedure of the General Court, must be included in the application. Furthermore, it is not for the General Court to seek and identify in the annexes the pleas and arguments on which it may consider the action to be based, since the annexes have a purely evidential and instrumental function (see judgment of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 38 and the case-law cited).
46      In those circumstances, it follows from the foregoing that the first plea in law must be rejected.
The second plea in law, alleging infringement of the principles of the protection of legitimate expectations and legal certainty
47      In support of the second plea, the applicant submits that the Board of Appeal infringed the principles of the protection of legitimate expectations and legal certainty by departing from EUIPO’s previous practice according to which there can be no likelihood of confusion if the marks at issue have only descriptive elements in common.
48      EUIPO and the intervener dispute the applicant’s arguments.
49      In the present case, it is sufficient to note, as is apparent from paragraph 31 above, that the Board of Appeal was right in finding that the element ‘foska’ in the marks at issue was not descriptive, with the result that the applicant has not, in any event, shown that EUIPO failed to comply with its decision-making practice.
50      It follows that the second plea in law must be rejected and that the action must therefore be dismissed in its entirety.
Costs
51      Under Article 134(1) of the Rules of Procedure, 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 incurred by EUIPO and by the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Zakłady Chemiczne “Siarkopol” Tarnobrzeg sp. z o.o. to pay the costs.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 28 March 2019.
E. Coulon
S. Gervasoni
Registrar
President
* Language of the case: English.