JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
7 February 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark Dr. Jacob’s essentials — Earlier international word mark COMPAL ESSENCIAL — Earlier national and international figurative marks FRUTA essencial and Compal FRUTA essencial — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001))
In Case T‑656/17,
Sumol + Compal Marcas, SA, established in Carnaxide (Portugal), represented by A. de Sampaio, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Söder and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ludwig Manfred Jacob, residing in Heidesheim (Germany), represented by W. Berlit, lawyer,
ACTION for annulment of the decision of the Fifth Board of Appeal of EUIPO of 11 July 2017 (Case
R 2067/2016‑5), relating to opposition proceedings between Sumol + Compal Marcas and Mr Jacob,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins (Rapporteur), President, M. Kancheva and G. De Baere, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 September 2017,
having regard to the response of EUIPO lodged at the Court Registry on 13 December 2017,
having regard to the response of the intervener lodged at the Court Registry on 23 October 2017,
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 16 February 2015, the intervener, Mr Ludwig Manfred Jacob, 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 in respect of which registration was sought are in Classes 5, 29, 30 and 32 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: ‘Pharmaceutical preparations; Sanitary preparations for medical purposes; Dietetic preparations adapted for medical use; Nutritional supplements; Food supplements for non-medical purposes’;
–        Class 29: ‘Weed extracts for food; Alginates for culinary purposes; Jellies, jams, compotes, fruit and vegetable spreads; Oils and fats; Processed fruits, fungi and vegetables (including nuts and pulses); Dairy products and dairy substitutes; Stews; Fruit-based snack food; Soy chips; Soya [prepared]; Extracts for soups; Canned soups; Yucca chips; Prepared salads’;
–        Class 30: ‘Baked goods, confectionery, chocolate and desserts; Ice, ice creams, frozen yoghurts and sorbets; Salts, seasonings, flavourings and condiments; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Sugars, natural sweeteners, sweet coatings and fillings, bee products; Packaged tea [other than for medicinal use]; Aromatic preparations for making non-medicated infusions; Aromatic preparations for making non-medicated tisanes; Aromatic teas [other than for medicinal use]; Flowers or leaves for use as tea substitutes’;
–        Class 32: ‘Beers; Mineral and aerated waters and other non‑alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages, except non-alcoholic beverages with a base of coffee or with coffee flavouring, and preparations for the aforesaid beverages’.
4        The trade mark application was published in Community Trade Marks Bulletin No 056/2015 of 24 March 2015.
5        On 24 June 2015, the applicant, Sumol + Compal Marcas, SA, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        international registration No 860539,
filed on 18 July 2005, of the word mark COMPAL ESSENCIAL, with an extension of protection to the European Union;
–        Portuguese registration No 426382, registered on 29 February 2008, and international registration No 969360, filed on 31 March 2009, with an extension of protection to the United Kingdom, of the following figurative mark:
–        Portuguese registration No 426383, registered on 6 March 2008, and international registration No 970169, filed on 31 March 2009, with an extension of protection to the United Kingdom, of the following figurative mark:
–        Portuguese registration No 530005, registered on 10 November 2014, of the following figurative mark:
–        Portuguese registration No 530007, registered on 6 August 2014, of the following figurative mark:
7        The earlier marks No 426382 and No 426383 and the international registrations No 860539, No 969360 and No 970169 cover goods in Classes 29 and 32, corresponding, for each of those classes, to the following description:
–        Class 29: ‘Fruit pulp (liquid fruit paste); preserved fruits and vegetables’;
–        Class 32: ‘Non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
8        The earlier marks No 530005 and No 530007 cover goods in Classes 5, 29 and 32, corresponding, for each of those classes, to the following description:
–        Class 5: ‘Food for babies, in particular: soups, fruit jams, fruit pulp (liquid fruit pastes), fruit and/or vegetable purées, fruit and/or vegetable juices, gruel’;
–        Class 29: ‘Fruit pulp (liquid fruit paste); preparations and purées of fruits and/or vegetables; jellies, jams, compotes; dairy
beverages containing fruits or fruit juices; yoghurts; milk and other milk-based beverages, substitutes for milk products and other dairy products’;
–        Class 32: ‘Beers; mineral and aerated waters and other non‑alcoholic beverages; fruit and/or vegetable drinks and fruit and/or vegetable juices; syrups and other preparations for making beverages’.
9        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).
10      On 12 September 2016, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
11      On 12 November 2016, 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.
12      By decision of 11 July 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal in its entirety,
on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
13      The Board of Appeal found, in paragraphs 19 to 21 of the contested decision, that the goods at issue were directed at the general public and at a specialised public, such as nutrition experts, in Portugal and in the United Kingdom, where the earlier marks had been registered.
That public had an average level of attention, likely to vary according to the quality and the price of the goods.
14      In paragraphs 22 and 23 of the contested decision, the Board of Appeal endorsed the Opposition Division’s assessment as regards the comparison of the goods covered by the mark applied for and those covered by the earlier marks, according to which some goods covered by the marks at issue were identical or highly similar, some were similar to a low degree and some were not similar.
15      First of all, the Board of Appeal compared the mark applied for with the earlier figurative mark reproduced in the second indent of paragraph 6 above. It concluded, in paragraphs 40 to 42 of the contested decision, that the word element ‘essencial’ or ‘essential’ of the earlier mark and the element ‘essentials’ of the mark applied for were descriptive and laudatory terms, referring to food products or beverages containing nutritionally important and necessary ingredients. Accordingly, those elements had inherently weak distinctive character. The similarities pertaining to those elements were insufficient to counteract the differences linked to the other elements, in particular the expression ‘Dr. Jacob’s’ contained in the mark applied for. The Board of Appeal
held that the mark applied for and that earlier mark were similar to an average degree visually and similar to a low degree phonetically and conceptually.
16      In addition, the Board of Appeal compared the mark applied for with the earlier figurative mark reproduced in the fourth indent of paragraph 6 above. It concluded, on the basis of the additional elements contained in that earlier mark, in particular the jar and the word ‘compal’ surrounded by a ‘tree device’, that that mark and the mark applied for were similar to a low degree visually, phonetically and conceptually.
17      As regards the comparison of the mark applied for and the earlier figurative mark reproduced in the second indent of paragraph 6 above, the Board of Appeal concluded, in paragraph 55 of the contested decision, that the similarities pertaining to the weak common elements, namely ‘essencial’ or ‘essential’ in the earlier mark and ‘essentials’ in the mark applied for, were insufficient to counteract the differences linked to the other elements of the marks at issue and, in particular, the expression ‘Dr. Jacob’s’ in the mark applied for, also having regard to the fact that the element ‘essential’ or ‘essencial’ of the earlier mark has weak inherent distinctive character in respect of the goods at issue.
18      Next, the Board of Appeal stated, in paragraph 56 of the contested decision, that, in addition to the arguments set out in paragraph 17 above, the other elements of the earlier figurative mark reproduced in the fourth indent of paragraph 6 above, in particular the jar and the word ‘compal’ surrounded by a ‘tree device’, made it possible to rule out any likelihood of confusion. It stated that the same applied in regard to
the earlier marks No 426383 and No 530007 and the international registrations No 970169 and No 860539, all of which also included the element ‘compal’.
19      Finally, the Board of Appeal concluded that there was no likelihood of confusion between those marks in spite of the fact that the marks at issue covered identical or highly similar goods.
Forms of order sought
20      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
21      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
22      The applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, by which it argues that the Board of Appeal erred in finding that there is no likelihood of confusion between the marks at issue.
23      The applicant claims, more specifically, first, that the Board of Appeal failed to take some of the earlier marks into account, secondly, that there is a high degree of visual similarity between the marks at issue due to the resemblance of the dominant elements, namely the word elements ‘essencial’ or ‘essential’, on the one hand, and ‘essentials’, on the other hand, and, thirdly, that the Board of Appeal failed to have regard to the rule of interdependence between the similarity of the trade marks and that of the goods and services covered.
24      EUIPO and the intervener dispute the applicant’s arguments.
25      As a preliminary point, it must be noted that the applicant does not challenge the definition of the relevant public, as set out in paragraph 13 above, or the Board of Appeal’s assessment regarding the comparison of the goods covered by the mark applied for and those covered by the earlier marks, set out in paragraph 14 above, according to which some goods covered by the marks at issue were identical or highly similar, some were similar to a low degree and some were not similar.
26      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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.
27      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).
28      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
29      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).
30      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account
and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
31      It is in the light of those considerations that the applicant’s arguments should be examined.
32      The applicant complains that the Board of Appeal’s comparison of the marks was not exhaustive in so far as it failed to take into account the earlier colour marks, namely the earlier marks No 426383 and No 530007 and the international registration No 970169, set out in the third and fifth indents of paragraph 6 above. The applicant claims that the similarity between those marks and the mark applied for, in particular the similarity of the colours, contributes to the likelihood of confusion.
33      It must be held that neither the Board of Appeal nor the Opposition Division compared the earlier colour marks with the mark applied for. The Board of Appeal merely indicated, in paragraph 56 of the contested decision, that the earlier marks No 426383 and No 530007 and the international registration No 970169 contained the element ‘compal’, which, in the Board of Appeal’s view, precluded any likelihood of confusion between the signs.
34      It must be stated that, by failing to take into account all the relevant elements of those earlier marks, in particular their colours, even though these
might constitute additional similarities, the Board of Appeal did not compare the marks at issue in their entirety.
35      EUIPO cannot succeed in its argument that the fact that the marks at issue contain colours cannot result in a likelihood of confusion either because colours are considered to be distinctive only if they are fanciful or arbitrary. According to the case-law, the visual comparison of the signs at issue must be carried out on the basis of all of their various constituent elements (judgment of 11 September 2014, Aroa Bodegas v OHIM — Bodegas Muga (aroa), T‑536/12, not published, EU:T:2014:770, paragraph 38). The colours of the signs are constituent elements which must be taken into account. In that regard, it must also be held that EUIPO’s arguments according to which, first, the examination of the colours does not influence the phonetic or conceptual comparison and, secondly, in the present case, the colours are of secondary importance in comparison with the graphic and word elements are irrelevant because those factors do not render superfluous the analysis of the colours in the course of the visual comparison.
36      In view of the foregoing, it must be held that the Board of Appeal erred in failing to take into account all the relevant elements of the earlier marks No 426383 and No 530007 and of the international registration No 970169. Consequently, it did not carry out a global assessment of the similarity of the marks at issue.
37      It must therefore be held that the Board of Appeal incorrectly applied Article 8(1)(b) of Regulation No 207/2009. The first part of the single plea in law must therefore be upheld. Consequently, the contested decision must be annulled, without it being necessary to examine, first, the applicant’s arguments that there is a high degree of visual similarity between the marks at issue due to the resemblance of the dominant elements and, secondly, the allegedly incorrect application of the principle of interdependence.
Costs
38      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
39      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear his own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 July 2017 (Case R 2067/2016‑5);
2.      Orders EUIPO to pay, in addition to its own costs, those incurred by Sumol + Compal Marcas, SA;
3.      Orders Mr Ludwig Manfred Jacob to bear his own costs.
Collins
Kancheva
De Baere
Delivered in open court in Luxembourg on 7 February 2019.
E. Coulon
A. M. Collins
Registrar
President
*      Language of the case: English.