JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
12 July 2019 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark Tropical — Earlier national word mark TROPICAL — Relative ground for refusal — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) — Similarity of the goods — Likelihood of confusion — Coexistence of the marks)
In Case T‑276/17,
Tadeusz Ogrodnik, residing in Chorzów (Poland), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO having been
Aviário Tropical, SA, established in Loures (Portugal),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 February 2017 (Case R 2125/2016‑1), relating to invalidity proceedings between Aviário Tropical and Mr Ogrodnik,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 8 May 2017,
having regard to the response lodged at the Court Registry on 12 July 2017,
having regard to the written questions put by the Court to the parties and their answers to those questions, which were lodged at the Court Registry on 8 June 2018,
further to the hearing on 11 September 2018,
gives the following
Judgment
Background to the dispute
1        On 31 October 2003, the applicant, Mr Tadeusz Ogrodnik, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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 in respect of which registration was sought are in Classes 5 and 31 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, for each of those classes, to the following description:
–        Class 5: ‘Veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, terraristics, fauna breeding and flora cultivation’;
–        Class 31: ‘Food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals, food for fauna containing nutritives, products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals; excluding birdfeed and bird treats’.
4        On 6 September 2004, the EU trade mark application was published in Community Trade Marks Bulletin No 36/2004. On 7 September 2007, the mark applied for was registered under number 3435773.
5        On 21 November 2011, Aviário Tropical, SA, filed an application with EUIPO for a declaration that the contested mark was invalid in respect of all the goods for which it had been registered.
6        In support of its application for a declaration of invalidity, Aviário Tropical invoked the following earlier national word mark:
TROPICAL
7        The ground for invalidity relied on in support of that application was that referred to in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001).
8        Following a request from the applicant, Aviário Tropical submitted documents intended to prove genuine use of the earlier mark.
9        On 15 July 2013, the Cancellation Division rejected the application for a declaration of invalidity in its entirety, finding that Aviário Tropical had not proved genuine use of the earlier mark during the relevant periods in respect of all of the goods for which that mark was registered.
10      On 4 October 2013, Aviário Tropical filed an 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 Cancellation Division.
11      By decision of 22 September 2014, the Fourth Board of Appeal of EUIPO allowed that appeal and upheld the application for a declaration of invalidity in respect of all of the goods covered by the contested mark (‘the first decision of the Board of Appeal’). In particular, it held that Aviário Tropical had proved genuine use of the earlier mark in Portugal as regards, at the very least, ‘food for fish’ in Class 31 and that it was unnecessary to examine whether the earlier mark had been put to genuine use in respect of the other goods which it covered, namely live fish and live plants. The Board of Appeal also took the view that there was a likelihood of confusion with the earlier mark.
12      On 4 December 2014, the applicant brought an action, pursuant to Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), against the first decision of the Board of Appeal.
13      By its judgment of 21 July 2016, Ogrodnik v EUIPO — Aviário Tropical (Tropical) (T‑804/14, not published, EU:T:2016:431), the Court annulled the first decision of the Board of Appeal. After endorsing the Board of Appeal’s finding that it is sufficient to note that genuine use of the earlier mark had been established in respect of ‘food for fish’, and the finding that ‘food for fish’ in Class 31 covered by the earlier mark and food for fauna in the same category covered by the contested mark were identical, the Court held that the Board of Appeal had made three errors in that decision. In the first place, it held that there was an error of assessment regarding some of the goods in Class 31 covered by the contested mark, since ‘products and preparations for the cultivation of plants and aquarium plants’ and ‘products and preparations for the breeding of birds, reptiles and amphibians’, covered by that mark, could not be identical to ‘food for fish’ covered by the earlier mark. In the second place, as regards the contested goods in Class 5, the Court held that the criteria followed by the Board of Appeal could not have led it to the conclusion that there was an average degree of similarity between the goods concerned. In the third place, the Court held that the first decision of the Board of Appeal was vitiated by a failure to state reasons in so far as the Board of Appeal failed to adjudicate on the applicant’s arguments relating to the coexistence of the marks at issue. As a result of that failure, the Court indicated that it was not able to exercise its power of alteration.
14      Following the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), the case was referred back to EUIPO. By decision of 14 February 2017 (‘the contested decision’), the First Board of Appeal annulled the decision of the Cancellation Division and declared that the contested mark was invalid for all of the goods concerned In particular, it found as follows:
–        in the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), the Court confirmed that the relevant public is that of Portugal, that it is made up of both the general public and business customers wishing to install an aquarium or start breeding fish, and that that public displays an average, or above average, level of attentiveness;
–        as regards the comparison of the goods, the Court confirmed that food for fauna in Class 31 covered by the contested mark was identical to ‘food for fish’ in Class 31 covered by the earlier mark; as regards ‘products and preparations for the cultivation of plants and aquarium plants’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for flora cultivation’ in Class 5, covered by the contested mark, the latter are similar to a low degree to ‘food for fish’ in Class 31 covered by the earlier mark; on the other hand, ‘products and preparations for the breeding of birds, reptiles and amphibians’ (the contested goods in Class 31), ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics’, for ‘terraristics’ and for ‘fauna breeding’, in Class 5, are similar to an average degree to ‘food for fish’ in Class 31 covered by the earlier mark. Consequently, the contested goods in Classes 5 and 31 were in part identical and in part similar to ‘food for fish’ covered by the earlier mark;
–        in view of the fact that the signs were on the whole similar, a likelihood of confusion could not be excluded for any of the contested goods, even for those having only a low degree of similarity with the goods covered by the earlier mark. Furthermore, consumers might think that the contested mark was another version of the earlier mark to which a figurative element had been added. It therefore had to be confirmed that there was a likelihood of confusion;
–        the evidence provided by the applicant in order to demonstrate the peaceful coexistence of the two marks over several years did not demonstrate that that coexistence was based on the absence of a likelihood of confusion. Consequently, the argument based on the peaceful coexistence of the marks could not influence the assessment of the likelihood of confusion in the present case.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision;
–        dismiss the appeal brought by the other party against the decision of the Cancellation Division;
–        order EUIPO to pay the costs.
16      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the applicant’s second head of claim
17      By his first and second heads of claim, the applicant requests the Court, respectively, to annul the contested decision and dismiss the appeal brought by Aviário Tropical against the decision of the Cancellation Division.
18      First, EUIPO submits that, under Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), the Court has jurisdiction only to annul or, alternatively, to alter the contested decision. Second, EUIPO submits, in essence, that, by his second head of claim, the applicant seeks to challenge the force of res judicata attaching to the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), in so far as that judgment has already validated part of the findings on which the contested decision is based, namely the fact that genuine use of the earlier mark had indeed been proved in respect of ‘food for fish’. Thus, EUIPO argues, the applicant can no longer challenge the Board of Appeal’s finding, upheld by the Court, that the Cancellation Division had erred in holding that genuine use of the earlier mark had not been proved. For those two reasons, EUIPO contends that the applicant’s second head of claim is inadmissible.
19      In the first place, as is apparent from paragraph 179 of the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), it should be understood that, by his second head of claim, the applicant requests the Court, in essence, to alter the contested decision, as provided for in Article 65(3) of Regulation No 207/2009. Such an application for alteration is not incompatible with the applicant’s claim seeking annulment of the contested decision, since alteration of the contested decision implies, in itself, that that decision is annulled.
20      In the second place, as is apparent from paragraphs 9, 11 and 13 above, the Cancellation Division had rejected the application for a declaration of invalidity in its entirety on the ground that Aviário Tropical had not proved genuine use of the earlier mark relied on in support of its application. By contrast, the Board of Appeal took the view that that use had been proved in respect of ‘food for fish’ in Class 31. The Court endorsed the Board of Appeal’s position (judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431, paragraph 25).
21      In the light of the authority of res judicata attaching to the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), the applicant may not, by the present action, seek to challenge findings already made by the Court in that judgment.
22      It follows from the foregoing that the applicant’s second head of claim requesting that the appeal brought by Aviário Tropical against the decision of the Cancellation Division be dismissed is inadmissible only in so far as it seeks to challenge the Board of Appeal’s findings, already upheld by the Court, relating to proof of genuine use of the earlier mark.
Substance
23      In support of his action, the applicant relies on a single plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof.
24      In particular, the applicant submits that the Board of Appeal committed four errors. First, he argues, the Board of Appeal wrongly concluded that some of the goods in Class 31, namely ‘products and preparations for the cultivation of plants and aquarium plants’ and ‘products and preparations for the breeding of birds, reptiles, amphibians’, covered by the contested mark, were in part similar to a low degree and in part similar to an average degree to ‘food for fish’ covered by the earlier mark. Second, he argues, the Board of Appeal wrongly found that the goods in Class 5, namely ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, terraristics, fauna breeding and flora cultivation’ covered by the contested mark, were in part similar to an average degree and in part similar to a low degree to ‘food for fish’ covered by the earlier mark. By those first two complaints, the applicant submits that the Board of Appeal, in the comparison of the goods, did not correctly assess the degree of similarity between the goods at issue. In the light of the relevant factors determining the relationship between those goods, as stated in the case-law of the Court of Justice and of the General Court, the Board of Appeal should have found that those goods were different. In particular, the applicant submits that the factor relating to the intended purpose of the goods, as resulting from the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442, paragraph 23), was defined too broadly by the Board of Appeal. Furthermore, the applicant takes the view that the other relevant factors resulting from the case-law of the Court of Justice and of the General Court, and followed in the present case by the Board of Appeal, were not sufficient to find any degree of similarity between the goods at issue. Third, he submits, the Board of Appeal erred in concluding that, with regard to the goods referred to above, there was a likelihood of confusion on the part of the relevant public. Fourth, he argues, the Board of Appeal applied erroneous criteria when concluding that the argument based on ‘previous coexistence’ cannot ‘influence the finding of likelihood of confusion in this case’.
Preliminary observations
25      Pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof, upon application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid 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. Furthermore, under Article 8(2)(a)(ii) of that regulation (now Article 8(2)(a) of Regulation 2017/1001), the term ‘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.
26      According to settled 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 that 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).
27      For the purposes of the application of 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 (judgments of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 41, and of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42).
28      It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined.
The relevant territory and the relevant public
29      As has already been held in the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), the relevant territory is that of Portugal and the relevant public consists both of the general public and of business customers wishing to install an aquarium or start breeding fish, with that relevant public displaying an average, or above average, level of attentiveness. That assessment has the force of res judicata.
Comparison of the goods
30      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, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). However, that list is not exhaustive. Other factors may also be taken into account, such as the distribution channels of the goods concerned (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).
31      It is apparent from the judgment of 29 September 1998, Canon, (C‑39/97, EU:C:1998:442, paragraph 23), that the assessment of the similarity of the goods requires all the relevant factors of the case to be taken into account, with the result that, according to the specific circumstances of each case, one particular factor may be more or less relevant than others. Thus, it is not apparent from the provisions of Regulation No 207/2009 or from the case-law of the EU Courts that either of the criteria referred to in paragraph 30 above would, in itself, when met, support the conclusion, in all circumstances, that the goods at issue are identical or similar.
32      Furthermore, it should be recalled that the principle of legal certainty requires that legal rules be clear and precise, and it aims to ensure that situations and legal relationships governed by EU law remain foreseeable (see, by analogy, judgment of 29 March 2012, Spain v Commission, T‑398/07, EU:T:2012:173, paragraph 107 and the case-law cited). It is apparent from that case-law that, in the comparison of the goods and services, it is for EUIPO to adopt a sufficiently strict definition for each factor of comparison. A factor of comparison which is defined too broadly would not make it possible to determine the relationship between the goods and services compared according to the Canon case-law cited in paragraph 30 above. Moreover, an overly broad definition of the factors of comparison would not make it possible to meet the objectives of foreseeability and sound administration which EUIPO is obliged to apply (see, to that effect and by analogy, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73).
33      It is in the light of the foregoing that it is necessary to determine whether the Board of Appeal was able to find that the goods at issue in the present case are similar.
The comparison of all the goods in dispute
34      As a preliminary point, it should be recalled that, in its judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431, paragraphs 34 and 45), the Court held that ‘food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’, ‘food for plants containing nutritives’, and ‘products and preparations for the breeding of fish, ornamental fish and breeded small animals’ in Class 31, covered by the contested mark, were identical to ‘food for fish’ covered by the earlier mark. That assessment by the Court, which, moreover, the applicant no longer disputes, now has the force of res judicata.
35      Consequently, in the present case, as regards the goods in Class 31, only the similarity between ‘food for fish’, on the one hand, and ‘products and preparations for the cultivation of plants and aquarium plants’ and ‘products and preparations for the breeding of birds, reptiles and amphibians’, on the other, need be examined. In the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431, paragraphs 43 and 44), the Court had held that those goods were not examples of food for fauna referred to before the expression ‘especially’ used in the list of goods in Class 31 covered by the contested mark and, therefore, those goods could not, on that ground, be regarded as identical to the ‘food for fish’ covered by the earlier mark.
36      In that context, the applicant argues that the goods in question are not similar. In essence, he submits, first, that the Board of Appeal relied in particular on an unlawful criterion, namely that of the market segment, and, second, that the Board of Appeal defined too broadly the criteria for determining the relationship between the goods. In any event, the criteria used to compare the contested goods are, he submits, insufficient for a finding that there is any degree of similarity between those goods.
37      It is therefore appropriate to examine below, first, the relevance of the criteria chosen by the Board of Appeal in the contested decision and, second, the application of those criteria to the goods concerned.
–       The relevance of the criteria chosen by the Board of Appeal
38      In the present case, the Board of Appeal held that the goods at issue in Classes 5 and 31 were in part similar to a low degree and in part similar to an average degree. It relied on various criteria, namely the nature, complementarity, intended purpose, use for the same purposes, commercial origin, market segment, consumers and the points of sale of those goods.
39      In that regard, it must be noted that the criteria relating to the nature, intended purpose, use and complementarity of the goods at issue are criteria acknowledged by the case-law, as is apparent from paragraph 30 above. Furthermore, it is apparent from the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), that the factors of marketing by the same undertakings and the point of sale, which tend to be confused with the factor of the distribution channel, are relevant factors for the purposes of the comparison of goods. The same is true of the question as to whether it is the same persons who buy the same product (judgment of 21 July 2016, Tropical, T‑804/14, not published, EU:T:2016:431, paragraphs 61 and 62).
40      During the hearing, EUIPO explained that the market segment criterion could not under any circumstances be regarded as an independent criterion, but rather as an additional criterion seeking to reinforce the Board of Appeal’s findings on the similarity of the goods at issue.
41      As regards the market segment criterion, it should be noted that nothing precluded the Board of Appeal from relying on an additional criterion such as the market segment criterion, since, first, the list of criteria established by the case-law cited in paragraph 30 is not exhaustive and, second, the fact that the goods come within a homogenous economic sector and have characteristics in common or meet similar needs does not, in itself, appear entirely irrelevant for the assessment of whether the goods are similar.
42      Consequently, it should be held that, in the contested decision, the Board of Appeal did not rely on irrelevant criteria.
43      It is therefore necessary to ascertain whether the factors relating to the comparison of the goods, followed by the Board of Appeal, were defined sufficiently strictly in the present case, in accordance with paragraph 32 above, and whether those factors in fact enabled the Board of Appeal to find, without making an error, that the goods were similar.
–       ‘Products and preparations for the cultivation of plants and aquarium plants’ in Class 31, and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics [and] fauna breeding’ and ‘disinfecting and sanitary products and preparations for flora cultivation’ in Class 5
44      As regards, first, ‘products and preparations for the cultivation of plants and aquarium plants’ in Class 31, and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics [and] fauna breeding’ in Class 5, the Board of Appeal found that those goods and ‘food for fish’ are similar on the ground, in particular, that they are complementary, that they may be manufactured and sold by the same undertakings and that they may be bought by the same consumers. That degree of similarity, it found, is low for ‘products and preparations for the cultivation of plants and aquarium plants’ in Class 31, and average for ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics [and] fauna breeding’ in Class 5.
45      The applicant submits, in essence, that the goods at issue are different in terms of their nature, intended purpose and method of use, and that, consequently, the criteria followed by the Board of Appeal in paragraph 44 above are not sufficient to find that there is similarity in the present case.
46      In that regard, it should be recalled that, according to the case-law, although the complementary nature of the goods at issue represents only one factor amongst several others, such as the nature, the method of use or the distribution channels of those goods, in the light of which the similarity of the goods can be assessed, the fact remains that it is an autonomous criterion capable of being the sole basis for the existence of such a similarity (judgment of 21 January 2016, Hesse v OHIM
C‑50/15 P, EU:C:2016:34, paragraph 23).
47      In the present case, the applicant has not disputed the Board of Appeal’s assessment that the goods at issue are essential for keeping fish alive, or could be given to fish requiring specific care, such that they have a complementary connection with the goods covered by the earlier mark; nor has the applicant disputed the fact that those goods are generally manufactured and sold by the same undertakings. A fortiori, the applicant has therefore not adduced evidence capable of calling into question the Board of Appeal’s findings.
48      In those circumstances, in view of the case-law cited in paragraph 46 above, since the goods at issue are complementary, may be manufactured and sold by the same undertakings and aimed at the same consumers, the Board of Appeal did not err in finding that the goods have a low or average degree of similarity, even if those goods are not necessarily sold in the same points of sale.
49      As regards, second, the comparison of ‘disinfecting and sanitary products and preparations for flora cultivation’, including aquarium plants, with the earlier ‘food for fish’, the Board of Appeal found, in paragraph 31 of the contested decision, that all those goods are aimed at the same public, are used for the same purposes, namely fishkeeping, and could come from the same undertakings. Nevertheless, in the light of the different nature of those goods, the Board of Appeal found that there was a low degree of similarity.
50      In that regard, the applicant does not dispute the fact the relevant goods may be aimed at the same public, as the Court acknowledged in its judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431, paragraph 68). Nor does the applicant dispute the fact that ‘disinfecting and sanitary products and preparations for flora cultivation’ may have the same intended purpose as the earlier ‘food for fish’, namely fishkeeping.
51      Furthermore, contrary to what the applicant argues, the finding that ‘disinfecting and sanitary products and preparations for flora cultivation’ may come from the same undertakings as ‘food for fish’, in so far as those goods and preparations are aimed at the cultivation of aquarium plants, is supported by several items of evidence in the administrative file. More specifically, it is apparent from paragraph 31 of the contested decision that the file contains labels of goods sold by the other party, some of which are for feeding fish and the others for maintaining the quality of water in an aquarium.
52      It is true that, in its judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431, paragraph 68), the Court had held that, in the present case, the identity of the consumers of the goods at issue was insufficient for a finding that the goods have an average degree of similarity, even if those goods are marketed in the same point of sale. However, in the contested decision, the Board of Appeal did not rely on only those two criteria, namely the identity of the consumers and the point of sale of the goods, since it also took into account the intended purpose of the relevant goods, which is a criterion acknowledged by the case-law cited in paragraph 30 above. Furthermore, the Board of Appeal was fully entitled to define the intended purpose of the goods as being limited to fishkeeping. Those three criteria, taken together, support the conclusion that the relevant goods in the present case are similar.
53      Consequently, in the present case, even though the goods differ in nature and method of use, as the applicant submits, the Board of Appeal acted correctly in relying on several relevant factors determining the relationship between the goods and was able to find, without erring, that ‘disinfecting and sanitary products and preparations for flora cultivation’, including plants for aquariums, and ‘food for fish’ were similar to a low degree.
–       ‘Products and preparations for the breeding of birds, reptiles and amphibians’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in Class 5
54      As regards ‘products and preparations for the breeding of birds, reptiles and amphibians’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in Class 5, the Board of Appeal found that those goods are similar, to an average degree, to ‘food for fish’ on the grounds, in essence, that they are used in particular for the same purposes and are aimed at the same users owning small pets, that they are generally manufactured and distributed by the same undertakings and are part of the same market segment, in the present case that of small pets, and that they are sold in the same points of sale.
55      The applicant submits, in essence, that the goods at issue differ in nature, intended purpose and method of use, and that, even if their distribution channels were identical and even if they were intended for the same public, those elements would be insufficient to demonstrate that the goods are similar in the present case.
56      In the present case, it should be noted that, by relying on the concept of ‘small pets’, the Board of Appeal defined particularly broadly the criteria relating to the consumer of the goods at issue and the intended purpose of those goods.
57      As regards the consumers of the goods at issue, the definition of the relevant public used by the Board of Appeal, namely, ‘owners of small pets’ is broader than the definition of the relevant public followed in paragraph 23 of the contested decision and referred to in paragraph 29 above, which is limited to the public wishing to set up an aquarium or to start breeding fish. Furthermore, even if they are produced and sold by the same undertakings, or even if they are the same in nature, the fact remains that products and preparations for the breeding of birds, reptiles and amphibians are aimed at a public which differs from the public for food for fish, referred to above (see, to that effect, judgment of 21 July 2016, Tropical, T‑804/14, not published, EU:T:2016:431, paragraph 67). In that regard, it is in no way apparent from the case file that a consumer who wishes to set up an aquarium or breed fish will also buy goods intended for birds, reptiles or amphibians.
58      Furthermore, as regards the intended purpose of ‘products and preparations for the breeding of birds, reptiles and amphibians’ chosen by the Board of Appeal, namely ‘food for pets’, it must be stated, as the applicant has done, that that intended purpose can cover very different animals such as, for example, cats, dogs or small rodents, which have very different needs and for which food for fish clearly cannot be used. Consequently, contrary to what has been set out in paragraph 54 above, the factor of comparison relating to the common intended purpose of the goods at issue, as defined in the present case, does not establish a sufficiently direct relationship between the contested goods in accordance with the Canon case-law cited in paragraph 30 above.
59      In addition, in the present case, as the applicant submits, it cannot be inferred from the mere fact that the relevant goods come within the same market segment and use the same distribution channels that they are similar.
60      First, the criterion relating to the market segment, as defined very broadly by the Board of Appeal as being that of pets, can cover a very large number of goods intended for consumers, animals and very different uses, with the result that that criterion for the purposes of determining the relationship between those goods is of minimal, or even no, relevance. Second, as the applicant has rightly argued, in view of the fact that the same undertaking may produce or distribute very different goods, and that very disparate goods may be sold in the same point of sale, such as a supermarket, the criteria relating to the distribution channels of the goods are also insufficient, in the present case, to lead to a finding that those goods are similar.
61      Consequently, the Board of Appeal was wrong to find, in paragraphs 28 and 29 of the contested decision, that ‘products and preparations for the breeding of birds, reptiles and amphibians’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in Class 5, on the one hand, and ‘food for fish’, on the other, are similar to an average degree, whereas the relevant factors determining the relationship between those goods are insufficient, in the present case, for a finding that there is any degree of similarity.
The comparison of the signs
62      It is apparent from paragraph 34 of the contested decision that, according to the Board of Appeal, the marks are similar overall on the ground that, considered as a whole, they are phonetically identical, and, on the visual and conceptual levels, highly similar.
63      That finding, which, moreover, is not disputed by the parties, had already been made in the first decision of the Board of Appeal and had been upheld by the Court in its judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431, paragraph 117). Since that judgment has the force of res judicata, it must be concluded that the marks at issue are similar overall.
The likelihood of confusion
64      It should be recalled that, in the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), the Court already examined whether there was a likelihood of confusion with regard to the goods covered by the contested mark which were held to be identical to those covered by the earlier mark referred to in paragraph 34 above.
65      However, in view of the Board of Appeal’s failure to adjudicate on the applicant’s arguments relating to the peaceful coexistence of the marks, the Court could not give a final ruling on the global assessment of the likelihood of confusion, even with regard to goods considered to be identical (judgment of 21 July 2016, Tropical, T‑804/14, not published EU:T:2016:431, paragraph 177).
66      It was therefore for the Board of Appeal to once more carry out a global assessment of the likelihood of confusion in the light of the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431), both with regard to the goods which the Court already considered to be identical, referred to in paragraph 34 above, and with regard to the other goods covered by the marks at issue; it had been held that the Fourth Board of Appeal’s assessment of the similarity of those goods was incorrect.
67      In the contested decision, the Board of Appeal found that, in view of the fact that the marks are similar overall, on the ground that they are phonetically identical and, on the visual and conceptual levels, have a high degree of similarity, a likelihood of confusion could not be excluded for the relevant public, even for goods displaying only a low degree of similarity with the goods covered by the earlier mark. The Board of Appeal added that, in the absence of sufficient evidence capable of demonstrating that the coexistence of the marks was based on the absence of a likelihood of confusion between the marks, for the goods at issue, the applicant’s arguments relating to the peaceful coexistence of the marks could not have any bearing on whether there was any likelihood of confusion.
68      The applicant disputes, on three grounds, the Board of Appeal’s finding as to the existence of a likelihood of confusion. First, he submits that the goods which the Board of Appeal held to have a low or average degree of similarity are different and that, furthermore, the contested decision does not draw a sufficient distinction between the various degrees of similarity between the goods. Second, the applicant submits that the word ‘tropical’ is descriptive for ‘food for fish’, since that word in the context of ‘food for fish’ indicates clearly and without ambiguity that the food is intended for tropical fish. In those circumstances, he argues, the degree of distinctiveness of the earlier mark must be held to be non-existent, or in any event, very low. Third, the applicant submits that the Board of Appeal applied an incorrect criterion in the assessment of the peaceful coexistence of the marks.
69      EUIPO disputes the applicant’s arguments.
The similarity of the goods and the Board of Appeal’s determination of the degree of similarity
70      In the present case, it is apparent from paragraph 61 above that ‘products and preparations for the breeding of birds, reptiles and amphibians’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in Class 5 are not similar to ‘food for fish’ covered by the earlier mark.
71      However high the degree of similarity between the signs may be, it is not possible to find that there is a likelihood of confusion if the cumulative conditions of Article 8(1)(b) of Regulation No 207/2009 are not met, in particular, in the present case, if the goods at issue are not, at the very least, similar to a low degree.
72      Consequently, in view of the fact that, as regards the goods referred to in paragraph 70 above, the condition relating to similarity of the goods at issue is not met, the Board of Appeal could not find that there was a likelihood of confusion between the marks at issue in respect of those goods.
73      By contrast, as regards the other contested goods, namely ‘products and preparations for the cultivation of plants and aquarium plants’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics [and] fauna breeding’ and ‘therapeutic, disinfecting and sanitary products and preparations for flora’ in Class 5, as is apparent from paragraphs 48 and 53 above, they are similar to ‘food for fish’ covered by the earlier mark. Consequently, the applicant’s arguments relating to the absence of similarity of those goods must be rejected.
74      Furthermore, it is apparent from the contested decision that the Board of Appeal classified the degree of similarity of the goods at issue as low or average, depending on the goods referred to. The applicant thus errs in alleging that the Board of Appeal did not sufficiently explain the degree of similarity of the goods at issue.
The low or even non-existent distinctiveness of the earlier mark
75      It should be noted that the applicant’s arguments relating to the low or even non-existent degree of distinctiveness of the earlier mark have already been examined and rejected by the Court in paragraphs 129 to 136 of the judgment of 21 July 2016, Tropical (T‑804/14, not published, EU:T:2016:431). Since that judgment has the force of res judicata, it is not necessary to re-examine the applicant’s arguments.
The peaceful coexistence of the marks
76      In paragraph 42 of the contested decision, the Board of Appeal held that the evidence adduced by the proprietor of the contested mark did not demonstrate that the coexistence of the marks at issue was based on the absence of any likelihood of confusion between the marks for the goods in question.
77      The applicant submits that the Board of Appeal did not apply the proper legal standard, even though it may be argued that it is consistent with certain case-law of the Court. According to the applicant, just as an opponent cannot be required to prove actual confusion, the proprietor of a mark contested in invalidity proceedings cannot be required to provide negative proof — namely the absence of confusion. The applicant therefore concludes that, since he furnished the required proof of use of the same mark on the same market for the same goods over a substantial period of time (16 years), the marks have coexisted because of the absence of any likelihood of confusion.
78      EUIPO disputes the applicant’s arguments.
79      In the present case, it should be recalled that, according to the case-law of the Court of Justice, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public. The absence of a likelihood of confusion may thus be inferred from the peaceful nature of the coexistence of the marks at issue on the market concerned (judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 82).
80      However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the proprietor of the contested mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the mark upon which he relies and the mark of the other party to the proceedings on which the opposition is based, and provided that the mark upon which he relies and the mark at issue are identical (judgment of 11 May 2005, Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, EU:T:2005:169, paragraph 86). To that end, it is open to such a proprietor to put forward a body of evidence to that effect. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time when the application for registration of the contested mark was filed is particularly relevant. In addition, in so far as, according to the case-law, the coexistence of two trade marks must be sufficiently lengthy to be capable of influencing the perception of the relevant consumer, the duration of the coexistence also constitutes an essential factor (see judgment of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 80 and the case-law cited).
81      In view of the abovementioned case-law, the applicant cannot exempt himself from his obligation to demonstrate that the peaceful coexistence on which he relies is based on the absence of any likelihood of confusion between the marks at issue on the part of the relevant public; that demonstration may be made by way of a body of evidence.
82      In the present case, the Board of Appeal accepted, in paragraph 41 of the contested decision, that the various items of evidence provided by the applicant indeed demonstrated a continuous long period of undisputed use of the marks at issue on the Portuguese market.
83      However, it is not possible to infer from the mere fact that the two marks at issue coexisted without challenge over a long period that that coexistence was based on the absence of a likelihood of confusion on the part of the relevant public. It is sufficient to state, as did the Board of Appeal, that that continuous long period of undisputed use does not provide any evidence demonstrating that the relevant public recognised each of the marks at issue before the time when the application for registration of the contested mark was filed. The Board of Appeal was therefore correct to take the view, in paragraph 42 of the contested decision, that that evidence was insufficient to demonstrate that the coexistence of the marks at issue was based on the absence of any likelihood of confusion between them.
84      Furthermore, contrary to what the applicant contends, the absence of any likelihood of confusion cannot be inferred from the mere fact that the applicant for a declaration of invalidity did not, at an earlier stage, oppose the registration of the contested national mark or apply for a declaration that it was invalid, even where there has been significant use of those marks, as was the case, according to the applicant, in Portugal (see, to that effect, judgment of 5 July 2016, Future Enterprises v EUIPO — McDonald’s International Property (MACCOFFEE), T‑518/13, EU:T:2016:389, paragraph 110; see also, to that effect and by analogy, as regards the existence of a likelihood of confusion, judgment of 11 May 2005, GRUPO SADA, T‑31/03, EU:T:2005:169, paragraphs 85 and 86).
85      It follows from the foregoing that the applicant’s argument relating to the peaceful coexistence of the two marks must be rejected as unfounded. The Board of Appeal was therefore fully entitled to find, in paragraph 43 of the contested decision, that that argument could not influence the findings relating to a likelihood of confusion in this case.
Conclusion on the outcome of the action
86      In the light of all the foregoing considerations, the Board of Appeal did not err in finding that that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 with regard to ‘food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’, ‘food for fauna containing nutritives’, ‘products and preparations for the breeding of fish, ornamental fish and breeded small animals’, ‘products and preparations for the cultivation of plants and aquarium plants’, in Class 31, and ‘disinfecting and sanitary products and preparations for use in aquaristics [and] fauna breeding’ and ‘veterinary, therapeutic, disinfecting and sanitary products for flora cultivation’ in Class 5, covered by the contested mark. Therefore, the action must be dismissed in so far as it concerns those goods.
87      By contrast, the Board of Appeal erred in finding that there is a likelihood of confusion as regards ‘products and preparations for the breeding of birds, reptiles, amphibians’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in Class 5. The contested decision must therefore be annulled in so far as it upholds the application for a declaration of invalidity in respect of those goods.
88      Furthermore, as regards the applicant’s request that the appeal brought against the decision of the Cancellation Division be dismissed and therefore that the contested decision be altered in that regard, it must be recalled that, although the power of the General Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position, it may be exercised in situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452, paragraph 72). In the present case, the applicant has already submitted on several occasions, before the Cancellation Division and before the Board of Appeal, his arguments and evidence regarding the application for a declaration of invalidity of the contested mark for ‘products and preparations for the breeding of birds, reptiles and amphibians’ in Class 31 and for ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in Class 5 covered by the earlier mark. The Court is therefore now in a position to determine, on the basis of the elements of fact and law as established, the decision which the Board of Appeal was required to take. Thus, the Court decides, pursuant to Article 65(3) of Regulation No 207/2009, that the contested decision should be altered in so far as the application for alteration is admissible in accordance with paragraph 22 above, and the appeal brought by the other party against the decision of the Cancellation Division of EUIPO of 15 July 2013 must be dismissed in so far as that appeal seeks to have the contested mark annulled in respect of those goods.
Costs
89      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.
90      In the present case, EUIPO and the applicant have failed on some heads, since the contested decision must be annulled in part, in accordance with the form of order sought by the applicant. Both have applied for the opposing party to be ordered to pay the costs.
91      In those circumstances, EUIPO must be ordered to pay half of the applicant’s costs and half of its own costs. The applicant must be ordered pay half of EUIPO’s costs and half of his own costs.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 February 2017 (Case R 2125/2016‑1) in so far as, in that decision, the Board of Appeal upheld the application for a declaration of invalidity in respect of ‘products and preparations for the breeding of birds, reptiles, amphibians’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in Class 5;
2.      Dismisses the appeal brought by Aviário Tropical, SA, against the decision of the Cancellation Division of EUIPO of 15 July 2013 (R 1948/2013‑4) in so far as that appeal seeks the annulment of the trade mark TROPICAL in respect of ‘products and preparations for the breeding of birds, reptiles, amphibians’ in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in Class 5;
3.      Dismisses the action as to the remainder;
4.      Orders Mr Ogrodnik to pay half of EUIPO’s costs and half of his own costs;
5.      Orders EUIPO to pay half of Mr Ogrodnik’s costs and half of its own costs.
Kanninen
Calvo-Sotelo Ibáñez-Martín
Reine
Delivered in open court in Luxembourg on 12 July 2019.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.