JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
20 October 2021 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark PINAR Tam kivaminda Süzme Peynir Yumusacik ve Leziz – Earlier international figurative mark Süzme Peynir – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑560/20,
Yadex International GmbH, established in Frankfurt am Main (Germany), represented by N. Johnson, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Sütas Süt Ürünleri AS, established in Bursa (Turkey), represented by O. Ruhl, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 2 July 2020 (Case R 2126/2019-1), relating to opposition proceedings between Sütas Süt Ürünleri and Yadex International,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, C. Iliopoulos and R. Norkus (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 7 September 2020,
having regard to the response of EUIPO lodged at the Court Registry on 26 February 2021,
having regard to the response of the intervener lodged at the Court Registry on 24 February 2021,
having regard to the decision of 31 March 2021 rejecting the application to join Cases T‑559/20 and T‑560/20,
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 9 November 2017, the applicant, Yadex International GmbH, obtained the international registration designating the European Union numbered 1396036, from the International Bureau of the World Intellectual Property Organization (WIPO). On 5 April 2018, the European Union Intellectual Property Office (EUIPO) received notification of the international registration, pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2        The trade mark that is the subject of the international registration designating the European Union is the following figurative sign:
3        The goods for 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: ‘Butter; butter cream; curdled milk; milk-based desserts; dips [dairy products]; low-fat spreads from dairy products; cream cheese; yoghurt; yoghurt drinks; cheese; cheese dips; white cheese; hard cheese; cheese mixtures; kephir [milk beverage]; margarine; milk; milk creams [yoghurt]; drinking milk or milk-containing beverages; milk products; powdered milk for food purposes; milkshakes; whey; dairy products; quark; cream [dairy products]; edible oils; edible fats; soymilk [milk substitute]; rice milk [milk substitutes]’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 66/2018 of 6 April 2018.
5        On 31 July 2018, the intervener, Sütas Süt Ürünleri AS, filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, read in conjunction with Article 196 of that regulation, to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier international registration designating the European Union in respect of the figurative mark No 1161474, reproduced below, registered on 21 March 2013 for goods in Class 29 and corresponding, in particular, to the following description: ‘milk and milk products, namely, milk, cheese, yoghurt, ayran (drink based on yoghurt), cream, milk powder, milk-based beverages, milk-based beverages containing fruits, kefir (milk beverage); edible oils and fats, butter, margarine’:
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
8        On 23 July 2019, the Opposition Division upheld the opposition for all the goods in question, finding, in essence, that a likelihood of confusion existed.
9        On 23 September 2019, the applicant filed an appeal with EUIPO pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 2 July 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, the Board of Appeal held, first, that the relevant public was the general public in the European Union, whose level of attention was below average. Following the Opposition Division’s approach and for reasons of procedural economy, the Board of Appeal decided that it would be appropriate to assess the likelihood of confusion on the basis of the English-speaking part of that public, namely the public in Ireland, Malta and the United Kingdom. Secondly, it found that the goods in question were identical, highly similar and similar. Thirdly, the Board of Appeal held that the signs at issue were visually similar at least to a below-average degree and phonetically similar to an average degree. Conceptually, according to the Board of Appeal, the signs at issue conveyed two different concepts based on their descriptive figurative elements, the capacity of which to distinguish the signs at issue conceptually was fairly limited. The Board of Appeal found that, in any case, the signs at issue were not conceptually similar. Fourthly, the Board of Appeal considered that the earlier mark had a normal level of inherent distinctiveness. Consequently, the Board of Appeal concluded that there was a likelihood of confusion between the signs at issue, in accordance with Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision and allow its appeal of 23 September 2019 against the decision of the Opposition Division of 23 July 2019;
–        order the intervener to pay the costs, including those incurred in the appeal proceedings.
12      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay EUIPO’s costs.
13      The intervener contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In particular, the applicant disputes the definition of the relevant public, the assessment of the similarity between the signs at issue and the assessment of the distinctiveness of the earlier mark, as well as the conclusions drawn by the Board of Appeal from its earlier findings, during the global assessment of the likelihood of confusion.
15      EUIPO and the intervener dispute the applicant’s arguments.
16      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall 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. Under Article 196(1) of Regulation 2017/1001, an international registration designating the European Union shall be subject to opposition in the same way as EU trade mark applications.
17      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
18      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
19      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
20      In the present case, the Board of Appeal held that, in so far as the earlier mark was an international registration designating the European Union, the relevant territory was that of the whole European Union. However, for reasons of procedural economy, the Board of Appeal decided that it would be appropriate to assess the likelihood of confusion on the basis of the English-speaking part of the public in that territory, namely the public located in Ireland, Malta and the United Kingdom. As regards the composition of the public and its level of attention, the Board of Appeal held that it consisted of the general public, whose level of attention was below average, considering that the goods at issue were inexpensive, everyday consumer goods.
21      The applicant does not dispute the Board of Appeal’s assessment in paragraphs 19 and 20 of the contested decision that the relevant public consists of average consumers in the general public in the territory of the European Union. However, whilst not expressly calling into question the relevant public’s level of attention, the applicant submits that the Board of Appeal rightly considered that the relevant public had an average level of attention. The applicant also claims that the Board of Appeal erred as regards the linguistic profile of the relevant public it adopted in its assessment of the likelihood of confusion. Products bearing the name ‘süzme peynir’ would be aimed exclusively at Turkish-speaking consumers in the European Union. In addition, according to the applicant, those products are offered exclusively in ethnic markets targeted specifically at the Turkish and Turkish-speaking community.
22      EUIPO and the intervener dispute the applicant’s arguments.
23      In the first place, as regards the linguistic profile of the relevant public, it must be held, as the Board of Appeal found, that since the international registration of the earlier figurative mark designates the European Union, the relevant territory is the whole of the European Union. It is not therefore appropriate to restrict the relevant public solely to the Turkish-speaking public located in the territory of the EU, since the absence of a likelihood of confusion on the part of that public cannot rule out the possibility that such a likelihood of confusion may exist for the non-Turkish-speaking public in that territory (see, to that effect, judgment of 10 March 2016, LG Developpement v OHIM – Bayerische Motoren Werke (MINICARGO), T‑160/15, not published, EU:T:2016:137, paragraph 19). That case-law also applies where there is an application to designate the European Union as a territory in which an international registration is protected (judgment of 17 February 2017, Batmore Capital v EUIPO – Univers Poche (POCKETBOOK), T‑596/15, not published, EU:T:2017:103, paragraph 31).
24      As to the Board of Appeal’s decision to base its assessment on the English-speaking public, it must be borne in mind that, according to settled case-law, for registration of an EU trade mark to be refused, it is sufficient that a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation 2017/1001 exists in a part of the European Union (see judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). It follows that the Board of Appeal could, for reasons of procedural economy, restrict the assessment of the likelihood of confusion to the English-speaking public.
25      None of the applicant’s arguments claiming that the relevant public consists only of Turkish-speaking consumers can call into question the Board of Appeal’s findings indicated in the previous paragraph.
26      First, as regards the applicant’s argument that only Turkish-speaking consumers in the European Union would be targeted by products bearing the name ‘süzme peynir’, it should be stated, first, that there is nothing in the wording of the application for registration of the figurative mark PINAR Tam kivaminda Süzme Peynir Yumusacik ve Leziz to suggest that the goods at issue are aimed exclusively at a Turkish and Turkish-speaking clientele. The general terms used to designate the goods in that application suggest instead that those goods are intended for normal, average customers of the food products (see, to that effect, judgment of 25 November 2003, Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU), T‑286/02, EU:T:2003:311, paragraph 32).
27      Moreover, the mere fact that the word element ‘süzme peynir’ means something to the Turkish-speaking public is not sufficient to establish and define a particular category of consumers targeted by the application for registration of the figurative mark PINAR Tam kivaminda Süzme Peynir Yumusacik ve Leziz (see, to that effect, judgment of 25 November 2003, Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU), T‑286/02, EU:T:2003:311, paragraph 33).
28      In any event, supposing that food products are created in order to suit the tastes of a target group of consumers, there is nothing to prevent those products from also being appreciated and purchased by the broader general public of the EU Member States.
29      What is more, as regards the applicant’s allegation that goods bearing the name ‘süzme peynir’ would be offered exclusively in ethnic markets specifically targeting the Turkish and Turkish-speaking community, and leaving aside the unsubstantiated nature of that allegation, it must be remembered that, as particular marketing methods for the goods covered by the marks may vary over time and according to the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks, which pursues an aim in the general interest, namely that the relevant public is not exposed to the risk of being misled as to the commercial origin of the goods in question, cannot depend upon the commercial objectives, whether implemented or not, and by their nature subjective, of the trade mark proprietors (judgment of 12 January 2006, Devinlec v OHIM – TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraph 104).
30      It follows from the foregoing that the applicant’s argument that the relevant public consists only of Turkish-speaking consumers is unfounded.
31      In the second place, as regards the relevant public’s level of attention, it should be pointed out that the applicant’s assertion that the Board of Appeal found the relevant public’s level attention to be average with regard to the goods at issue is based on a misreading of the contested decision. It is clear from paragraph 19 of that decision that the Board of Appeal found a level of attention that was below average and not average.
32      In any event, having regard to the relevance of the nature of the goods at issue, which are foodstuffs intended for mass consumption, purchased frequently and at low prices, the Court must hold, as did the Board of Appeal, that the relevant public’s level of attention with regard to the goods at issue will be lower than average (see, to that effect, judgment of 5 May 2015, Lidl Stiftung v OHIM –Horno del Espinar (Castello), T‑715/13, not published, EU:T:2015:256, paragraph 26).
33      Accordingly, the Board of Appeal was fully entitled to find that the relevant public’s level of attention was lower than average.
Comparison of the goods and services
34      The applicant does not dispute the Board of Appeal’s assessment, in paragraph 24 of the contested decision, that the goods referred to in paragraphs 3 and 6 above are identical, highly similar and similar. Moreover, nothing in the file is capable of challenging that assessment.
Comparison of the signs at issue
35      The global assessment of the likelihood of confusion must, in relation to 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 at issue plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
36      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the signs at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see, to that effect, judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
37      In the present case, the earlier mark comprises the word element ‘süzme peynir’ and a figurative element. The word element is in blue font and positioned in the centre, though slightly above the figurative element, which is an oval shape depicting two cows below the word element, in a rural farm scene.
38      As to the mark applied for, it consists of several word and figurative elements. As regards the word elements, the upper section of the mark applied for contains the word element ‘pinar’, in green capital letters in bold font, surrounded by various embellishments in blue, green and red, in different sizes. The lower, left-hand section in the mark applied for contains the word elements ‘tam kivaminda’, in light green font and also surrounded by embellishments, in the same colour. Underneath, the word elements ‘süzme’ and ‘peynir’ are positioned one below the other, both in blue font. The lower part of the element ‘peynir’ includes a blue line set at a slight angle. Lastly, below the word element ‘peynir’ there are more word elements, ‘yumusacik ve leziz’, in white font on a light green background. The figurative element, in the bottom, right-hand section, consists of an image of two slices and a block of white cheese.
Distinctive and dominant elements of the signs at issue
39      According to the case-law, for the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38).
40      For the purposes of assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition, and secondarily, account may be taken of the relative positions of the various components in the arrangement of the composite mark (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM – Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).
41      Consequently, it should be borne in mind that, where a mark consists of both word and figurative elements, the former are, in principle, more distinctive than the latter, as the average consumer will more easily refer to the services at issue by citing the name of the mark than by describing its figurative element (see judgments of 20 September 2017, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 39, and of 25 May 2016, Ice Mountain Ibiza v EUIPO – Marbella Atlantic Ocean Club (ocean ibiza), T‑6/15, not published, EU:T:2016:310, paragraph 45 and the case-law cited).
42      It is in the light of those considerations that the presence of any distinctive and dominant elements in the signs at issue must be assessed.
43      As regards the distinctive and dominant elements of the earlier mark, the Board of Appeal found in paragraph 29 of the contested decision that the word element ‘süzme peynir’ was not meaningful for a substantial part of the English-speaking public and was the most distinctive element of that mark. It is also, in essence, apparent from paragraphs 29, 31, 33 and 38 of the contested decision that, according to the Board of Appeal, the figurative element of the earlier mark, namely a depiction, within an oval shape, of two cows in a rural farm scene, is devoid of distinctiveness in that it shows a connection with the goods at issue.
44      As regards the mark applied for, the Board of Appeal stated in paragraph 30 of the contested decision that the word elements ‘pinar’, ‘süzme peynir’, ‘tam kivaminda’ and ‘yumusacik ve leziz’ had no meaning for a substantial part of the relevant public. On account of their lack of meaning and their considerably larger size, the Board of Appeal found that the elements ‘pinar’ and ‘süzme peynir’ were equally co-dominant. It found that the word elements ‘tam kivaminda’ and ‘yumusacik ve leziz’ played a secondary role in the overall impression of the mark applied for, in view of their small size and their position. As to the figurative elements of that mark, the Board of Appeal decided that the main figurative element, consisting of an image of two slices and a block of white cheese, representative of the goods at issue, was devoid of distinctiveness for the goods at issue. According to the Board of Appeal, the other figurative elements, namely the use of colours, fonts and minor embellishments around the element ‘pinar’, did not play an important role in the overall impression of the mark applied for, although they were not negligible.
45      While not contesting the Board of Appeal’s finding as to the primary role of the word element ‘süzme peynir’ in the earlier mark, the applicant reproaches the Board of Appeal for having erred in considering that the word element ‘süzme peynir’ was distinctive as regards the goods at issue. In particular, the applicant claims in essence that, as a large part of the relevant public, familiar with the Turkish language, would understand it to mean ‘cottage cheese’, that word element would therefore be descriptive with regard to the goods at issue. In any event, according to the applicant, even a non-Turkish-speaking consumer will recognise that element as a Turkish name for the product offered.
46      As regards the mark applied for, the applicant claims that the Board of Appeal erred in finding that the word element ‘pinar’ constituted a secondary element in the overall impression produced by that mark. According to the applicant, that element plays a dominant role in the mark applied for, given its design typical of a brand name and its positioning above the descriptive word element ‘süzme peynir’. The applicant claims that even a non-Turkish-speaking consumer will understand that the element ‘süzme peynir’ designates a product with the trade mark PINAR, that impression being reinforced by the presence of the terms ‘tam kivaminda’ and ‘yumusacik ve leziz’ and of the figurative element depicting sliced cheese.
47      EUIPO and the intervener dispute the applicant’s arguments.
48      As a preliminary point, it should be stated that the Board of Appeal was fully entitled to find, first, that the figurative element of the earlier mark, namely its depiction, within an oval shape, of two cows in a rural farm scene, showed a connection with the goods at issue and, therefore, had to be regarded as devoid of distinctiveness for the goods at issue, and, secondly, that the figurative element of the mark applied for, namely an image of two slices and a block of white cheese, represented the goods at issue and was, therefore, also devoid of distinctiveness for those goods, which is not disputed by the parties.
49      Moreover, it must be held that the Board of Appeal rightly found that the word elements ‘pinar’, ‘tam kivaminda’ and ‘yumusacik ve leziz’ in the mark applied for had no meaning for the relevant public and were distinctive for the goods at issue. The Board of Appeal also rightly considered that, in view of their small size and their positioning in the mark applied for, the word elements ‘tam kivaminda’ and ‘yumusacik ve leziz’ played only a secondary role in the overall impression of that mark, which is common ground between the parties.
50      That said, in the first place, as regards the distinctiveness of the word element ‘süzme peynir’, common to the signs at issue, it is also appropriate to consider that the Board of Appeal correctly found that element to be devoid of meaning for a substantial part of the English-speaking public and it was, therefore, distinctive with regard to the goods at issue.
51      None of the applicant’s arguments is capable of calling that finding by the Board of Appeal into question.
52      As regards, first, the applicant’s argument that a large part of the relevant public would be familiar with the Turkish language and, therefore, would understand the meaning of the word element ‘süzme peynir’ as being descriptive of the goods at issue, it should be borne in mind, as is evident from paragraphs 23 to 30 above, that the relevant public in the present case consists of English-speaking consumers.
53      Admittedly, and as the Board of Appeal stated in the contested decision, there is a community of people of Turkish origin within the English-speaking public in Ireland, Malta and the United Kingdom, who will understand the meaning of the word element ‘süzme peynir’ as being a reference to ‘filtered cheese/cottage cheese’. However, the existence of such a community within the English-speaking public does not lead to the conclusion that a large part of the relevant public is familiar with Turkish and, consequently, that the word element ‘süzme peynir’ is descriptive with regard to the goods at issue for that public. There is no evidence in the file that could establish that a significant part of the relevant public has sufficient knowledge of the Turkish language to understand that meaning, or that the part of that public which does not understand that meaning would be insignificant (see, to that effect, judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 38).
54      Secondly, as regards the applicant’s allegation that even a non-Turkish-speaking consumer would understand the word element ‘süzme peynir’ as a Turkish name for the goods at issue, it is sufficient to state, as EUIPO is correct to point out, that an understanding of a foreign language cannot, in general, be presumed (see, to that effect, judgment of 24 May 2011, Space Beach Club v OHIM – Flores Gómez (SpS space of sound), T‑144/10, EU:T:2011:243, paragraph 63 and the case-law cited). In that regard, it should be observed that nothing in the file supports a finding that an English-speaking consumer would be familiar with the Turkish language, which, incidentally, is not a matter of common knowledge. In those circumstances, it cannot be assumed that the English-speaking public will understand the Turkish term ‘süzme peynir’, or that it will necessarily attribute to it the meaning of ‘filtered cheese/cottage cheese’. Therefore, the applicant’s assertion, unsupported by evidence, must be rejected.
55      In the second place, as regards, first, the applicant’s contention that the Board of Appeal erred in finding that the word element ‘pinar’ plays a secondary role in the overall impression of the mark applied for, it should be stated that such a contention stems from a misreading of the contested decision. In that regard, it is important to remember, as is apparent from that decision, that the Board of Appeal did not consider the word element ‘pinar’ in the mark applied for to be a secondary element but stated in paragraph 30 of the contested decision that, since that element was, in essence, distinctive with regard to the goods at issue, and considering its considerably larger size in comparison with the word elements ‘tam kivaminda’ and ‘yumusacik ve leziz’, that element was, along with the word element ‘süzme peynir’, the co-dominant element of the mark applied for.
56      Secondly, it should be stated, contrary to the applicant’s allegations, that it has not been established in the present case that the word element ‘pinar’, due to its configuration allegedly typical of a brand name and to its positioning, itself plays a dominant role, or exercises by itself, in the mark applied for, the function of indication of origin.
57      It is admittedly true that the position and characteristics of the word element ‘pinar’, relied on by the applicant, namely, in particular, the coloured highlighting, the font in capital letters and its good legibility, are aspects that seek to emphasise that word element in the mark applied for, or even to influence its good legibility. However, the fact remains that, by reason of its size similar to that of the word element ‘pinar’, its stylisation and the underlining of its lower section, the word element ‘süzme peynir’ will equally be such as to make an impression on and to be remembered by the consumer.
58      It should be added that the word element ‘süzme peynir’, like the word element ‘pinar’, has no meaning for the relevant public (see paragraphs 49 to 54 above). However, the lack of meaning of those elements with regard to the goods at issue, which are a fortiori distinctive with regard to those goods, reinforces their dominance in the overall assessment of the mark applied for (see, to that effect, judgment of 16 September 2013, Gitana v OHIM – Teddy (GITANA), T‑569/11, not published, EU:T:2013:462, paragraph 57 and the case-law cited).
59      Accordingly, it must be held, contrary to the applicant’s claims, that the overall impression created by the mark applied for in the memory of the English-speaking public is dominated, jointly, as much by the word element ‘pinar’ as by the word element ‘süzme peynir’.
60      Thirdly, it has not been established that even a non-Turkish-speaking consumer will understand that the element ‘süzme peynir’ designates a product identified by the mark PINAR by reason of its simple font and its positioning below the word element ‘pinar’, or that such an impression will be strengthened by the presence of the terms ‘tam kivaminda’ and ‘yumusacik ve leziz’ and of the figurative element depicting sliced cheese. Those characteristics are not capable, on their own, of demonstrating that the non-Turkish-speaking public would understand the word element ‘süzme peynir’ as the name of a product identified by the mark PINAR, especially as that word element is devoid of meaning for the English-speaking public (see paragraphs 50 to 54 above). In any event, given that the co-dominant character of the word elements ‘pinar’ and ‘süzme peynir’ and the distinctiveness of the word element ‘süzme peynir’, it is appropriate to find that the applicant’s argument, according to which that latter word element should be regarded as the name of a product identified by the mark PINAR, is unfounded.
61      Having regard to all the foregoing considerations, the applicant’s contentions as to the distinctive and dominant elements of the signs at issue must be rejected.
The visual similarity
62      The Board of Appeal found in paragraph 31 of the contested decision that the signs at issue shared the word element ‘süzme peynir’, that being the most distinctive element of the earlier mark and repeated in the mark applied for as an independent and observable element. It noted that the signs at issue differed in respect of the word elements ‘pinar’, ‘tam kivaminda’ and ‘yumusacik ve leziz’, in the accompanying graphical elements, present in the mark applied for, and in the figurative elements of the earlier mark, namely a depiction, within an oval frame, of two cows in a rural scene. In view of the descriptive and secondary nature of the figurative elements of the signs at issue, the Board of Appeal found that they did not have a significant impact from the visual comparison perspective. The Board of Appeal found the signs at issue to be visually similar at least to a below-average degree.
63      The applicant disputes that assessment by the Board of Appeal. It considers that, despite the similarity resulting from the presence of the word element ‘süzme peynir’, the signs at issue are visually different. First, the applicant claims that the configuration of the word element ‘süzme peynir’ in the signs at issue shows differences that are not inconsiderable. In particular, they stem from the fact that, in the earlier mark, the words ‘süzme’ and ‘peynir’ are positioned next to each other and within the depiction of a landscape whilst, in the mark applied for, they are positioned one above the other and presented without other graphical elements.
64      Secondly, according to the applicant, the signs at issue differ in respect of the word element ‘pinar’, which constitutes the dominant element of the mark applied for. Lastly, it claims that the similarity between the signs at issue does not coincide in their overall impression, which prevents them from being regarded as visually similar.
65      EUIPO and the intervener dispute the applicant’s arguments.
66      In the first place, it should be stated that the word element ‘süzme peynir’, which constitutes the most distinctive element of the earlier mark, is fully included in the mark applied for, in the same blue colour, in lower-case letters apart from the capital letters at the beginning, and in a very similar font.
67      In that regard, contrary to the applicant’s claim, the configuration of the terms ‘süzme peynir’ in the signs at issue is not such that it allows a considerable difference to be established between those signs, from a visual perspective. Whilst in the earlier mark, the two words are positioned next to each other whereas, in the mark applied for, they are placed one above the other, those two words will, in any event, be perceived as forming an indivisible whole by reason of the identical font and colours in each sign (see, to that effect, judgment of 9 March 2012, Ella Valley Vineyards v OHIM – HFP (ELLA VALLEY VINEYARDS), T‑32/10, EU:T:2012:118, paragraph 43), creating, therefore, a similar visual impression between the signs at issue. That is particularly so in the case at hand since, in accordance with the case-law cited in paragraph 35 above, the consumer normally perceives a mark as a whole without proceeding to analyse its various details.
68      Furthermore, that similar visual impression is not eliminated either by the insertion of the word element ‘süzme peynir’ into the figurative element present in the earlier mark, namely a depiction, within an oval frame, of two cows in a rural scene, or by the presence of the additional word elements ‘pinar’, which is surrounded by various embellishments coloured blue, green and red, in different sizes, ‘tam kivaminda’ and ‘yumusacik ve leziz’, also surrounded by embellishments in the same colour, or by the presence of the figurative element in the mark applied for, depicting sliced cheese. First, the figurative elements in the signs at issue are descriptive of the goods at issue (paragraph 48 above) and less likely, therefore, to influence the visual impression of the signs at issue.
69      Secondly, it should be remembered, contrary to the applicant’s suggestion, that the word element ‘pinar’ is not the only dominant element of the mark applied for but co-dominates it along with the word element ‘süzme peynir’. Consequently, the word element ‘süzme peynir’ is just as likely to make an impression on and to be remembered by the consumer as the word element ‘pinar’. Accordingly, although it is true that the presence of the additional word element ‘pinar’ in the mark applied for signifies a visual difference between the signs at issue, it is not capable of eliminating the visual similarity created by the common element ‘süzme peynir’, which co-dominates the mark applied for and is, moreover, the most distinctive element of the earlier mark (see, to that effect and by analogy, judgment of 16 May 2007, La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), T‑137/05, not published, EU:T:2007:142, paragraph 46). That is particularly so as regards the word elements ‘tam kivaminda’ and ‘yumusacik ve leziz’ which, as the Board of Appeal correctly held, by reason of their intrinsic characteristics indicated in paragraphs 44 and 49 above, although not inconsiderable, will not have a significant impact upon the visual comparison of the signs.
70      Therefore, regarding the resemblances between the signs at issue stated in paragraphs 66 to 69 above, the applicant cannot rely on the lack of coincidence of the signs at issue in their overall visual impression.
71      Consequently, it is appropriate to approve the Board of Appeal’s finding as to the existence of a visual similarity between the signs at issue at least to a below-average degree.
The phonetic similarity
72      The Board of Appeal found, in paragraph 32 of the contested decision, that the signs at issue coincided in the pronunciation of the common word element ‘süzme peynir’. Those signs differed in the pronunciation of the word ‘pinar’, present only in the mark applied for. Concurring with the Opposition Division, the Board of Appeal found that the word elements ‘tam kivaminda’ and ‘yumusacik ve leziz’ were not likely to be pronounced by consumers, on account of their secondary role in the mark applied for. The Board of Appeal also considered it unlikely that the figurative elements of the signs at issue would be pronounced orally either. The Board of Appeal found an average level of phonetic similarity between the signs at issue.
73      The applicant disputes that assessment by the Board of Appeal. It considers that in order to find phonetic similarity between the signs at issue, account has to be taken of the overall impression produced by those signs, which is determined by the intonation and, in particular, by the order as well as the stress on syllables in the pronunciation of the signs at issue. According to the applicant, the earlier mark has no equivalent of the elements ‘pinar’, ‘tam kivaminda’ and ‘yumusacik ve leziz’. Furthermore, by reason of its positioning as the first word element, the term ‘pinar’ plays a dominant role or, in any event, has at least the same importance as the common element ‘süzme peynir’ in the mark applied for. Therefore, the signs at issue are phonetically similar to a below-average degree, at most.
74      EUIPO and the intervener dispute the applicant’s allegations.
75      It should be remembered, as the Board of Appeal rightly stated, that when a consumer pronounces the signs at issue, most often only the dominant part will be pronounced (see, to that effect, judgment of 3 July 2013, GRE v OHIM – Villiger Söhne (LIBERTE american blend against a red background), T‑206/12, not published, EU:T:2013:342, paragraph 44).
76      Moreover, it should also be noted that a consumer will tend not to pronounce the secondary word elements in the signs at issue, simply to economise on words, particularly if they take quite a long time to pronounce and are easily separable when being pronounced (see, to that effect, judgments of 3 July 2013, Warsteiner Brauerei Haus Cramer v OHIM – Stuffer (ALOHA 100% NATURAL), T‑243/12, not published, EU:T:2013:344, paragraph 34 and the case-law cited, and of 6 October 2017, Kofola ČeskoSlovensko v EUIPO – Mionetto (UGO), T‑176/16, not published, EU:T:2017:704, paragraph 62).
77      Consequently, as regards the pronunciation of the word elements of the signs at issue, it should be stated that only the elements ‘süzme peynir’ of the earlier mark and the elements ‘pinar’ and ‘süzme peynir’ of the mark applied for will be pronounced by the consumers in question, given that the other word elements present in the mark applied for, namely the elements ‘tam kivaminda’ and ‘yumusacik ve leziz’ are, first, secondary for the reasons indicated in paragraph 49 above and, secondly, made up of elements that take a long time to pronounce and that are easily separable from the co-dominant elements of the mark applied for.
78      As regards the figurative elements and as is highlighted by the intervener, there is no need to take account of them for the purposes of the phonetic comparison of the signs at issue. Therefore, the fact that the figurative elements are left out of account when comparing the phonetic aspects of the signs at issue makes the similarities between the signs stand out more clearly than in the visual comparison (see, to that effect, judgment of 26 January 2016, LR Health & Beauty Systems v OHIM – Robert McBride (LR nova pure.), T‑202/14, not published, EU:T:2016:28, paragraph 78 and the case-law cited).
79      That being so, it is appropriate to find that the Board of Appeal was correct to find an average degree of phonetic similarity between those signs, on the basis of the identical pronunciation of the word element ‘süzme peynir’ in the two signs.
80      None of the applicant’s arguments submitting that the phonetic similarity should be regarded as being, at most, lower than average can call that finding into question.
81      First of all, although it is indeed true, as the applicant claims, that the order and stress of the syllables constitute important factors for assessing phonetic similarity between the signs at issue, the applicant does not explain what consequences those factors would have, in the present case, on the legality of the Board of Appeal’s finding as to the phonetic similarity between those signs.
82      Secondly, although it is also true that the consumer generally pays greater attention to the beginning of a mark than to its end, it should nevertheless be remembered that that argument cannot hold in all cases and cast doubt on the principle that assessment of the similarity of the marks must take into account the overall impression created by them (see judgment of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 38 and the case-law cited). Incidentally, it should be remembered that the word element ‘süzme peynir’, common to the signs at issue, while not positioned in the initial part of the mark applied for, co-dominates that mark along with the word element ‘pinar’ (see paragraphs 55 to 60 above). The result of this, contrary to the applicant’s suggestion, is that the difference made by the pronunciation of the word element ‘pinar’ is not capable of calling into question the average phonetic similarity stemming from the presence in the signs at issue of the common word element ‘süzme peynir’.
83      Thirdly, although it is indeed true that the signs at issue differ in the pronunciation of the word elements ‘tam kivaminda’ and ‘yumusacik ve leziz’, present only in the mark applied for, it should be remembered that the phonetic difference between the signs at issue, regarding the presence of those elements, cannot call into question the Board of Appeal’s finding as to the existence of an average phonetic similarity between the signs at issue, for the reasons indicated in paragraphs 75 to 78 above.
84      Consequently, the applicant’s contention regarding the degree of phonetic similarity between the signs at issue must be rejected as unfounded.
The conceptual similarity
85      The Board of Appeal found, in paragraph 33 of the contested decision, that the word elements of the signs at issue had no meaning for a substantial part of the English-speaking public. Having noted that the figurative element of the earlier mark evoked the concept of a farm, whereas the figurative element of the mark applied for referred to the concept of a block of white cheese, the Board of Appeal found that, in view of their descriptive character, the capacity of the figurative elements to distinguish the signs at issue conceptually was relatively limited. The Board of Appeal found that, in any event, since the signs at issue conveyed two different concepts, they were not conceptually similar.
86      The applicant claims that the signs at issue are only very slightly similar conceptually. In that regard, it considers that the lack of distinctiveness, or a low degree of distinctiveness, in one part of the signs at issue is no barrier to the conceptual similarity being recognised, albeit only to a low degree, in the present case. Moreover, the element ‘pinar’ in the mark applied for signifies a conceptual divergence between the signs at issue.
87      EUIPO and the intervener dispute the applicant’s allegations.
88      It should be noted that the applicant does not specify which element, weakly distinctive, or even devoid of distinctiveness, it considers validates the low degree of conceptual similarity between the signs at issue. However, in the light of the other arguments raised by the applicant in its application, that argument should be understood as seeking to limit any conceptual similarity between the signs at issue in the event of the Court finding, as the applicant submits it should, that the common word element ‘süzme peynir’ is descriptive of the goods in question and therefore displays conceptual content. In that regard, it is sufficient to note, as is apparent from paragraphs 50 to 54 above, that the Board of Appeal correctly found a lack of meaning in that word element for a substantial part of the relevant public.
89      In any event, even if the applicant maintains that the signs at issue display only a very low degree of conceptual similarity, notwithstanding the finding of a lack of descriptiveness in the word element ‘süzme peynir’, it should be noted that the Board of Appeal found that the signs at issue were not conceptually similar. Accordingly, it is from that perspective, more favourable to the applicant, that the finding of a very low degree of conceptual similarity, in so far as that perspective could, where appropriate, allow a difference between the signs at issue to be established and reduce any likelihood of confusion between those signs, that the merits of the Board of Appeal’s assessment of the likelihood of confusion must be examined.
90      It follows from all of those arguments that the signs at issue are visually similar at least to a below-average degree and phonetically similar to an average degree, whereas they are not conceptually similar.
The distinctiveness of the earlier mark
91      For a trade mark to possess distinctive character for the purposes of Regulation 2017/1001, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited). A trade mark’s distinctiveness must be assessed, first, by reference to those goods or services and, second, by reference to the perception of the relevant public, which consists of average consumers of those goods or services, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 34 and the case-law cited).
92      In the present case, the Board of Appeal found in paragraph 38 of the contested decision that, from the perspective of a substantial part of the relevant public, the earlier mark was devoid of meaning in respect of the goods it covered. Therefore, that mark enjoys average intrinsic distinctiveness as a whole, notwithstanding the presence of a non-distinctive figurative element, namely a depiction, within an oval frame, of two cows in a rural farm scene.
93      The applicant disputes that assessment by the Board of Appeal. According to the applicant, given that the relevant public consists of Turkish-speaking people for whom the word elements of the earlier mark ‘süzme peynir’ signify ‘cottage cheese’ and for whom that element and the figurative element of that mark are descriptive in respect of the goods at issue, that mark is devoid of distinctive character as a whole, or should not even have been registered.
94      EUIPO and the intervener dispute the applicant’s arguments.
95      In that regard, it is sufficient to note that the Board of Appeal was right to consider, first, that the relevant public was the English-speaking, and not Turkish-speaking, public and, secondly, that the word element ‘süzme peynir’ had no meaning for a substantial part of that public, so that it is distinctive. Accordingly, the earlier mark, considered as a whole, is not descriptive. Therefore, the applicant is not justified in alleging a lack of intrinsic distinctiveness in the earlier mark.
96      In any event, the validity of an earlier international trade mark designating the European Union may not be called into question in proceedings for registration of an EU trade mark but only in cancellation proceedings (see, by analogy, judgments of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 38, and of 11 September 2014, Continental Wind Partners v OHIM – Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, EU:T:2014:769, paragraph 59). Accordingly, in the context of the present action, the applicant cannot validly rely upon the lack of distinctiveness of the earlier mark or the unlawfulness of its registration.
97      Therefore, the applicant has not established that the Board of Appeal’s finding as to the average intrinsic distinctiveness of the earlier mark is flawed.
The overall assessment of the likelihood of confusion
98      A global assessment of the likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
99      The global assessment of the likelihood of confusion must, however, as regards the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression created by the marks, taking account of, inter alia, their distinctive and dominant elements (judgment of 14 October 2003, Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 47).
100    In the present case, the Board of Appeal found, having regard to (i) the identity and the similarities, to varying degrees, of the goods at issue; (ii) the fact that the signs at issue were visually similar at least to a below-average degree and phonetically similar to an average degree; (iii) the fact that those similarities could not be offset by a conceptual difference based on the lack of distinctiveness of the figurative elements of the signs at issue; and (iv) the average intrinsic distinctiveness of the earlier mark, that there was a likelihood of confusion for a substantial part of the English-speaking public.
101    The applicant disputes that finding. In particular, the applicant claims that the Board of Appeal incorrectly applied the principles according to which, first, the visual, phonetic and conceptual similarity of the signs at issue must be based on the overall impression created by them, given that the average consumer normally perceives a mark as a whole and does not proceed to analyse its details, and, secondly, the public perceives a mark as it encounters it. The applicant also considers, bearing in mind the interdependence aspect, in particular as regards the visual and phonetic differences and the absence, or the lower-than-average degree, of distinctiveness of the earlier mark, that the signs at issue are sufficiently different, so that, in the present case, a likelihood of confusion cannot be inferred.
102    EUIPO and the intervener dispute the applicant’s arguments.
103    It must be remembered, as is apparent from paragraph 34 above, that the goods at issue are identical and similar to varying degrees. It follows that, in order to eliminate the likelihood of confusion, that identity and similarity must be offset by a high degree of difference between the signs.
104    In the present case, it should be noted, as is evident from the findings made in paragraphs 66 to 71, 75 to 84, 88 and 89 above, that the signs at issue are visually similar at least to a below-average degree and phonetically similar to an average degree, whereas they are not conceptually similar.
105    First of all, although, according to the case-law, the conceptual differences may be such as to counteract, to a large extent, the visual or phonetic similarities between the marks at issue, that is subject to the condition that at least one of those marks has, from the relevant public’s perspective, a clear and specific meaning, so that the public is capable of grasping it immediately (judgment of 14 October 2003, BASS, T‑292/01, EU:T:2003:264, paragraph 54). However, in the present case, although the earlier mark conveys, in its figurative element, a concept of a farm, whereas the figurative element in the mark applied for refers to the concept of a block of white cheese, it should be noted that such concepts, relatively general and, in any event, based on elements devoid of distinctiveness (paragraph 48 above), will not, in the context of the goods concerned, give rise to associations that could make it easier for the signs at issue to be remembered on the basis of their respective meanings (see, to that effect and by analogy, judgment of 24 September 2019, IAK – Forum International v EUIPO – Schwalb (IAK), T‑497/18, not published, EU:T:2019:689, paragraph 92 and the case-law cited). In those circumstances, the conceptual difference between the signs at issue will not hold the attention of the relevant public, so that it cannot counteract the visual and phonetic similarities noted in paragraphs 66 to 71 and 75 to 84, respectively, above.
106    Next, as regards the applicant’s contention that the Board of Appeal incorrectly applied the principles mentioned in paragraph 101 above, leaving aside the abstract nature of that contention, suffice it to note, as follows from paragraphs 62 to 90 above, that the Board of Appeal was fully entitled, having taken into consideration the various elements of the signs at issue, to proceed to the comparison of those signs as a whole, taking account, in particular, of their distinctive and dominant elements. The applicant’s argument must, therefore, be rejected.
107    Lastly, it should be remembered, as is apparent from paragraph 95 above, that, contrary to the applicant’s claim, the Board of Appeal correctly found that the earlier mark enjoyed average intrinsic distinctiveness with regard to the goods at issue for the English-speaking public.
108    Accordingly, and taking into account all the relevant elements considered by the Board of Appeal in the context of the global assessment of the likelihood of confusion, it is appropriate to find that the Board of Appeal did not err in considering that, in the present case, there was a likelihood of confusion on the part of the relevant public.
109    It follows from all of the foregoing that the single ground of appeal, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected and the action dismissed in its entirety, without it being necessary to rule on the applicant’s head of claim asking the Court to allow its appeal against the Opposition Division’s decision of 23 July 2019.
Costs
110    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.
111    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Yadex International GmbH to pay the costs.
Marcoulli
Iliopoulos
Norkus
Delivered in open court in Luxembourg on 20 October 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.