JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 February 2019 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark Djili — Earlier national word mark GILLY — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑231/18,
Et Djili Soy Dzhihangir Ibryam, established in Dulovo (Bulgaria), represented by C.-R. Romiţan, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by D. Gája and D. Walicka, and subsequently by D. Gája and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Victor Lupu, residing in Bucharest (Romania),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 31 January 2018 (Case R 1902/2017-5), relating to opposition proceedings between Mr Lupu and Et Djili Soy Dzhihangir Ibryam,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 April 2018,
having regard to the request for a stay of proceedings lodged at the Court Registry by the applicant on 4 April 2018,
having regard to the observations made by EUIPO on the request for a stay of proceedings, lodged at the Court Registry on 27 April 2018,
having regard to the decision of 4 June 2018 rejecting the request for a stay of proceedings lodged by the applicant,
having regard to the response lodged at the Court Registry on 14 June 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 1 June 2016, the applicant, Et Djili Soy Dzhihangir Ibryam, 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 following figurative sign:
3        The goods and services in respect of which registration was sought are in Class 29 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: ‘Jellies, jams, compotes, fruit and vegetable spreads; ground nuts; broad beans; potato chips; dried edible mushrooms; fruit preserves; vegetables, tinned [canned (Am.)]; dates; beans; prepared pistachio; prepared walnuts; processed pumpkin seeds; edible sunflower seeds; sunflower seeds, prepared; seeds, prepared; dried figs’.
4        The trade mark application was published in European Union Trade Marks Bulletin No 2016/106 of 9 June 2016.
5        On 31 August 2016, the opponent, Mr Victor Lupu, 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 Class 29.
6        The opposition was based on the earlier Romanian word mark GILLY, registered on 21 September 2009, covering goods in Class 29 corresponding to the following description: ‘meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats including seeds and roasted peanuts’.
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 31 July 2017, the Opposition Division rejected the opposition for all the goods covered by the mark applied for, on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
9        On 31 August 2017, the opponent 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 31 January 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal. In particular, it considered that a likelihood of confusion between the two marks at issue could not be ruled out, since, inter alia, they had an average degree of similarity, the goods they covered were in part identical and in part highly similar, and the inherent distinctiveness of the earlier mark was normal.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        dismiss the opponent’s appeal;
–        order the opponent to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant puts forward a single plea in law alleging, in essence, infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, it claims that the Board of Appeal committed several errors concerning the phonetic and conceptual perception of the signs and in the overall assessment of the likelihood of confusion, in the light, inter alia, of differences in the pronunciation of the signs in question and of the use of the mark applied for on the market with other signs used by the applicant to identify its goods, while the opponent ceased to use the sign GILLY in 2010.
14      EUIPO disputes those arguments.
Preliminary observations
15      The applicant claims, as a preliminary point, that, first, the opponent registered the earlier trade mark in bad faith, with the intention of creating confusion and an association with its goods and that, second, it ceased using it as from 2010.
16      As regards the first argument, it must be noted that bad faith, as wrongful conduct, is a particularly significant factor in the context of an application for a declaration of invalidity under Article 59(1)(b) of Regulation 2017/1001. It is not, however, a factor that must be taken into account in opposition proceedings brought under Article 8 of Regulation 2017/1001 (see, by analogy, judgment of 3 May 2012, Conceria Kara v OHIM — Dima (KARRA), T‑270/10, not published, EU:T:2012:212, paragraph 84 and the case-law cited).
17      As regards the second argument, as underlined by settled case-law, the issue of proof of genuine use must be raised expressly and in good time before the Opposition Division, genuine use being an issue which, once raised by the party applying for the mark, must be settled before a decision is given on the opposition proper (see, to that effect, judgment of 22 March 2007, Saint-Gobain Pam v OHIM
–
Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraphs 34 and 37 and the case-law cited). Accordingly, that issue cannot be raised for the first time before the Board of Appeal (see, by analogy, judgment of 22 March 2007, PAM PLUVIAL, T‑364/05, EU:T:2007:96, paragraph 39) or before the General Court (see, to that effect, judgment of 7 November 2007, NV Marly v OHIM — Erdal (Top iX), T‑57/06, not published, EU:T:2007:333, paragraph 18).
18      In the present case, it is apparent from the file that the applicant did not submit a request in sufficient time to require that proof of the genuine use of the earlier mark be submitted during the procedure before EUIPO.
19      Accordingly, the applicant’s line of argument alleging that, first, the opponent registered the earlier mark in bad faith and, second, that he ceased using it as from 2010 must be rejected.
The single plea-in-law alleging infringement of Article 8(1)(b) of Regulation 2017/1001
20      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, 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. Furthermore, under
Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means
trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
21      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 32 and the case-law cited).
22      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).
The relevant public
23      According to settled 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).
24      In the present case, the Board of Appeal was right to find, in paragraph 24 of the contested decision, that the relevant public was the general public, whose level of attention was average in so far as the goods in question are mass-consumption goods (see, to that effect, judgments of 28 June 2011, Oetker Nahrungsmittel v OHIM — Bonfait (Buonfatti), T‑471/09, not published, EU:T:2011:307, paragraph 75 and the case-law cited, and of 25 September 2014, Giorgis v OHIM — Comigel (Shape of two packaged goblets), T‑474/12, EU:T:2014:813, paragraphs 16 and 17 and the case-law cited).
25      It must, moreover, be borne in mind that, under Article 8(1)(b) of Regulation 2017/1001, the existence of a likelihood of confusion must be assessed with regard to the public in the territory in which the earlier mark is protected (see paragraph 20 above). Since, in the present case, the earlier mark is a Romanian mark, the relevant public is that of Romania.
The comparison of the goods
26      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
27      In the present case, in paragraph 28 of the contested decision, the Board of Appeal rightly found, without being contradicted on that point by the applicant, that the goods covered by the marks at issue were in part identical and in part highly similar.
The comparison of the signs
28      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).
–       The visual comparison of the signs
29      The Board of Appeal rightly considered, in paragraphs 37 to 39 of the contested decision, that, first, the signs at issue differed, in particular, in terms of their first and last letters, and that, second, both signs were composed of five letters, having the two letters ‘i’ and ‘l’ in common, with the letter ‘l’ appearing as the fourth letter in both signs.
30      In so far as the Board of Appeal then found, in paragraph 37 of the contested decision, which the applicant does not dispute, that the visual appearance and stylisation of the contested sign had no counterpart in the earlier mark, it must be recalled that, since the earlier mark is a word mark, the visual appearance and stylisation of the sign applied for are irrelevant for the purpose of the visual comparison of the signs at issue (see, to that effect, judgment of 13 February 2007, Ontex v OHIM
–
Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 74 and the case-law cited).
31      In so far as the signs at issue are also composed of five letters, but differ in particular in terms of three of those five letters, with only one being the same and appearing in the same position in both signs, it must nevertheless be held that the Board of Appeal was right to find, without being challenged by the applicant on that point, that there was a low degree of visual similarity between those signs.
–       The phonetic comparison of the signs
32      Contrary to the Opposition Division, the Board of Appeal considered that the pronunciation of the word elements ‘dji’ and ‘gi’ of the mark applied for and of the earlier mark respectively was almost identical. The sound produced by the letter ‘d’ of the mark applied for is hardly perceptible for the Romanian public since it is followed by the letters ‘j’ and ‘i’. Thus, the combination of those three letters is perceived in the same way as the sound produced by the combination of the letters ‘g’ and ‘i’ of the earlier mark. In support of those statements, while agreeing that the word element ‘dji’ is not common in Romanian, the Board of Appeal relied on the example of the pronunciation of the word ‘djinn’ which exists in that language, as well as the pronunciation of the word ‘gimnastic’. Those two words show that the initial elements ‘dji’ and ‘gi’ are pronounced almost identically in Romanian. Furthermore, the Board of Appeal pointed out that the sound produced by the pronunciation of the letter ‘l’ of the mark applied for is identical to that produced by the pronunciation of the element ‘ll’ of the earlier mark. Finally, the sound produced by the pronunciation of the last letter ‘i’ of the mark applied for is also perceived by Romanian consumers as being identical to that of the last letter ‘y’ of the earlier mark. The Board of Appeal therefore considered that the signs at issue were phonetically very similar, if not almost identical.
33      The applicant disputes that assessment, claiming that the word ‘djinn’ does not exist in Romanian, since it derives from a foreign word which has been adapted in Romanian and that the conclusion of the Board of Appeal based on that point is therefore incorrect. It adds that the pronunciation in Romanian of the word ‘gymnastic’ does not correspond to that set out by the Board of Appeal.
34      EUIPO disputes the applicant’s arguments.
35      It should be noted at the outset that the rules of pronunciation of EU languages are not subject to the discretion of the parties and that it is for the Board of Appeal to make its own assessment of the pronunciation of the marks at issue (see, to that effect, judgment of 21 September 2017, Novartis v EUIPO — Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 101).
36      In that regard, it must be noted that, independently of the specific examples it invokes in paragraph 41 of the contested decision, the Board of Appeal considered that the word element ‘gi’ of the earlier mark is pronounced in almost the same way as the word element ‘dji’ of the mark applied for, in Romanian. In this regard, EUIPO claims in its written pleadings that the combination of the letters ‘d’, pronounced as [d], and ‘ji’, pronounced as [ʒi], must be pronounced as [ʤi] in Romanian, while the combination of the letters ‘g’ and ‘i’ will also be pronounced as [ʤi] in Romanian.
37      Moreover, it must be observed that, although the applicant disputes the Board of Appeal’s assessment of the pronunciation of the signs at issue, it does not clearly set out how, in its view, those signs should be pronounced in Romanian.
38      As regards the applicant’s argument that the word ‘djinn’ on which the Board of Appeal based its finding that the elements ‘dji’ and ‘gi’ are pronounced in almost the same way, is not a Romanian word, it must be held that whether or not that word is of foreign origin is irrelevant in the present case. That foreign origin cannot call into question the Board of Appeal’s assessment in paragraph 36 above that the word element ‘dji’ will be pronounced as [ʤi] in Romanian. The applicant’s argument therefore fails to call into question the Board of Appeal’s statement in which it considered that the pronunciation of the word element ‘dji’ of the word ‘djinn’, to which it refers by way of example, will be almost identical to that of the word element ‘gi’ in Romanian.
39      Moreover, in so far as the applicant also disputes the Board of Appeal’s assessment concerning the pronunciation of the word ‘gimnastic’, by claiming that it is based on the English pronunciation of the word ‘gymnastic’ and not on its Romanian pronunciation, it must be pointed out that the applicant has adduced no evidence in support of its argument that, in Romanian, the word element ‘gi’ of the word ‘gimnastic’ will be pronounced as [gi]. Once again, the applicant has failed to call into question the Board of Appeal’s assessments summarised in paragraph 36 above.
40      Finally, it must be noted that the Board of Appeal pointed out, without being challenged by the applicant on those points, that the sound produced by the pronunciation of the letter ‘l’ of the mark applied for will be identical to that produced by the pronunciation of the element ‘ll’ of the earlier mark. Moreover, the sound produced by the pronunciation of the final letter ‘i’ of the mark applied for will be perceived by Romanian consumers as identical to that produced by the pronunciation of the final letter ‘y’ of the earlier mark.
41      Accordingly, in the light of those factors, it must be held that none of the arguments raised by the applicant is capable of calling into question the Board of Appeal’s assessment that the signs at issue were phonetically highly similar, if not almost identical.
–       The conceptual comparison of the signs
42      The Board of Appeal found that the signs were meaningless for the Romanian public and that a conceptual comparison was therefore irrelevant in the present case.
43      The applicant disputes the Board of Appeal’s assessment and considers that a conceptual comparison of the signs is relevant in the present case. In that regard, it claims that the opponent registered the earlier mark with the intention of creating confusion and an association between its own goods and those of the applicant. In support of its argument, the applicant also complains of similarities between another figurative sign, which it sought to register with EUIPO on 3 July 2009 and the sign used by the opponent up to 2010.
44      EUIPO disputes the applicant’s arguments.
45      In that regard, it must be held that none of the applicant’s arguments calls into question the Board of Appeal’s finding that the relevant public will not attribute meaning to either of the two signs at issue. Neither the claims that the earlier mark was registered in bad faith nor the alleged similarity between elements falling outside the scope of the subject matter of the action are capable of establishing any meaning for either of the two signs at issue. Consequently, the Board of Appeal was right to find in paragraph 45 of the contested decision that no conceptual comparison of the signs was possible in the present case (see, to that effect, judgment of 22 May 2012, Retractable Technologies v OHIM — Abbott Laboratories (RT), T‑371/09, not published, EU:T:2012:244, paragraph 41).
The likelihood of confusion
46      The Board of Appeal considered, in the present case, that there was a likelihood of confusion between the signs at issue for the relevant public, in the light of the partial identity and high degree of partial similarity of the goods, as well as the very high degree of phonetic similarity of the signs. It considered, in particular, that that factor should be taken into account particularly since the goods in question were all likely to be purchased or recommended orally.
47      The applicant claims that there is no likelihood of confusion between the signs at issue. First, it submits that the earlier mark is not used by its proprietor and that it had been used only for a few months in 2009 and 2010. Next, the applicant claims, in essence, that the opponent implemented a strategy intended to take advantage of the mark applied for and, to that end, registered several marks including the Romanian word mark DJILI, which was cancelled by the Romanian courts. Finally, the applicant claims that the use of the mark applied for on the market will prevent consumers from confusing it with the earlier mark.
48      EUIPO disputes the applicant’s arguments.
49      For the reasons set out in paragraphs 15 to 19 above, it is necessary at the outset to reject the applicant’s arguments that, since the earlier trade mark was no longer used by the opponent who had registered it with the sole intention of taking advantage of the mark applied for, any likelihood of confusion between the marks at issue must be ruled out.
50      Moreover, in so far as the applicant relies on the specific patterns of use of the mark applied for on the market, that is to say alongside a figurative element representing a parrot, in order to establish that the relevant public cannot confuse the marks at issue, it suffices to recall that the application for registration of the mark applied for only concerned the sole figurative sign reproduced in paragraph 2 above, which does not include that figurative element representing a parrot. It is apparent from the case-law that, in principle, the likelihood of confusion is to be assessed on the basis of a comparison between the mark applied for, as described in the EUIPO register, and the earlier mark, as registered (see, to that effect, judgment of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 35). Accordingly, that argument must be regarded as unfounded.
51      Finally, the Board of Appeal considered that, in the present case, the visual perception of the signs at issue was likely to play a significant role. Moreover, it stated that the phonetic perception of those signs cannot, however, be disregarded. In that regard, it recalled that, in the present case, the pronunciation of those signs was almost identical and that the goods in question, which overlap, were likely to be purchased or recommended orally. There are no grounds to call those assessments into question, and,
moreover, they are not disputed by the applicant.
52      It must therefore be held that none of the arguments raised by the applicant is capable of calling into question the Board of Appeal’s finding that, since there was both a low degree of visual similarity between the signs at issue and they were phonetically very similar if not identical, and since the phonetic perception of those signs cannot be ignored in the present case and they concerned goods which were in part identical and in part highly similar, there is a likelihood of confusion between the marks in question.
53      In the light of all the foregoing considerations, the single plea in law and, accordingly, the applicant’s first head of claim must be rejected as unfounded.
The claim seeking alteration of the contested decision
54      The applicant claims that the Court should dismiss the opponent’s appeal and thus, essentially, alter the contested decision.
55      It should be recalled that the review carried out by the General Court under Article 72(3) of Regulation 2017/1001 is a review of the legality of the decisions of the EUIPO Boards of Appeal. It may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 72(2) of Regulation 2017/1001 (see judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 71 and the case-law cited).
56      As the plea in law relied on by the applicant in support of its application for annulment must be rejected, as established above, the contested decision is not vitiated by any of the grounds of unlawfulness referred to in Article 72(3) of Regulation 2017/1001. It is therefore not necessary to grant the applicant’s application to alter the contested decision, and the second head of claim must be rejected.
57      In the light of the above findings, the present action must be dismissed in its entirety.
Costs
58      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.
59      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Et Djili Soy Dzhihangir Ibryam to pay the costs.
Frimodt Nielsen
Kreuschitz
Półtorak
Delivered in open court in Luxembourg on 12 February 2019.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.