JUDGMENT OF THE GENERAL COURT (Second Chamber)
6 April 2022 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark NUTRIFEM AGNUBALANCE – Earlier EU word mark NUTRIBEN – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑370/21,
Biogena GmbH & Co KG, established in Salzburg (Austria), represented by I. Schiffer, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J.F. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Alter Farmacia, SA,
established in Madrid (Spain),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 22 April 2021 (Case R 1208/2020‑5), relating to opposition proceedings between Alter Farmacia and Biogena,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, P. Škvařilová-Pelzl and I. Nõmm (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 30 June 2021,
having regard to the response of EUIPO lodged at the Court Registry on 30 September 2021,
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
I.      Background to the dispute
1        On 22 June 2018, the applicant, Biogena GmbH & Co. KG, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1430349 designating the European Union in respect of the word mark NUTRIFEM AGNUBALANCE. That international registration was notified to the European Union Intellectual Property Office (EUIPO) on 25 October 2018 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 goods and services in respect of which protection of the international registration in question was sought are in Classes 5, 29 and 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose 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: ‘Nutritional additives, especially antioxidants for medical purposes; dietetic products and nutritional supplements for medical purposes; preparations for the production of beverages for medical purposes; dietetic products for special medical purposes (balanced diets); foods for babies especially milk powder for babies; dietary and nutritional supplements for sports and increased performance for medical purposes; mineral nutritional additives; starch for dietetic and pharmaceutical purposes; nutritional additives, primarily composed of vitamins, amino acids, minerals and trace elements for medical purposes; herbal teas for medical purposes’;
–        Class 29: ‘Preserved, dried and cooked fruits and vegetables; vegetable extracts and concentrates (purees) for culinary purposes (except essential oils)’;
–        Class 30: ‘Dried kitchen herbs; preserved herbs and spices; herbal teas not for medical purposes, black teas; tea essences, tea extracts, instant teas, tea mixes’.
3        The international registration designating the European Union was published in European Union Trade Marks Bulletin
No 204/2018 of 26 October 2018.
4        On 26 February 2019, Alter Farmacia, SA filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods and services referred to in paragraph 2 above, alleging a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
5        The opposition was based on the earlier EU word mark NUTRIBEN, filed on 7 May 2004 and registered on 2 August 2005 under No 3823333 in respect of goods in Classes 5, 29, 30 and 32 corresponding, for each of those classes, to the following description:
–        Class 5: ‘Dietetic food products for medical purposes; dietetic substances adapted for medical use; food for babies; vitaminised products’;
–        Class 29: ‘Meat, fish and poultry; meat extracts; eggs, milk and milk products; preserved fruits and vegetables; jellies, jams, compotes’;
–        Class 30: ‘Tea, cocoa, sugar, flour and preparations made from cereals; ices’;
–        Class 32: ‘Mineral and aerated waters and other non-alcoholic drinks; fruit juices’.
6        On 21 March 2019, EUIPO sent a communication to the applicant, informing it, inter alia, that the opposition had been found admissible, that the time limit set for the opponent to substantiate it would expire on 26 July 2019, and that the time limit set for the applicant to submit its observations would expire on 26 September 2020.
7        On 12 August 2019, EUIPO sent the applicant the evidence put forward in support of the opposition and extended the time limit for the applicant to submit its observations until 17 October 2019.
8        On 17 October 2019, the applicant submitted its observations on the opposition, which included a request for proof that the earlier mark had been put to use. On the same day, it sent EUIPO the power of attorney given to a lawyer for the purposes of representation in the proceedings.
9        On 4 November 2019, EUIPO transmitted the applicant’s observations to the opponent and informed the opponent that the time limit for submitting its observations in response would expire on 9 January 2020.
10      On 9 January 2020, the opponent submitted its observations in response.
11      On 14 January 2020, EUIPO sent a communication, directly to the applicant and not to its representative, transmitting the opponent’s observations in response and informing the applicant, in essence, that it did not consider it appropriate for new observations in response to be submitted, and that it would rule on the opposition solely on the basis of the evidence already provided.
12      On 17 April 2020, the Opposition Division upheld the opposition.
13      On 14 June 2020, the applicant filed a notice of appeal, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
14      By decision of 22 April 2021 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal filed by the applicant against the decision of the Opposition Division.
15      In the first place, the Board of Appeal took the view that the error made by EUIPO during the opposition proceedings, consisting of sending some of its communications directly to the applicant rather than to its appointed representative, did not result in an infringement of the rights of the defence.
16      In the second place, the Board of Appeal found that the Opposition Division had correctly concluded that there was a likelihood of confusion on the part of the relevant public, on the basis of the perception of the Polish-speaking general public in the European Union whose level of attention varied from average to high depending on the nature of the goods in question. The Board of Appeal found, first, that the goods at issue in Class 5 were identical, those in Class 29 were in part identical and in part had at least a high degree of similarity, and those in Class 30 were in part identical and, in part, had at least an average degree of similarity. Second, in the context of its analysis of the comparison of the signs, the Board of Appeal found, inter alia, that the element ‘nutri’, which is common to both marks, would not be understood by the Polish-speaking general public as a reference to ‘nutrition’. The Board of Appeal inferred from this: (i) that the signs at issue were visually similar at least to a low degree, phonetically similar to a low degree, and that the conceptual comparison was irrelevant; and (ii) that the earlier mark had an average degree of inherent distinctive character with regard to the goods at issue. Third, and consequently, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public, including with regard to the goods in Class 5 for which that public has a high level of attention when purchasing them.
II.    Forms of order sought
17      The applicant claims that the Court should:
–        annul the contested decision;
–        grant the international registration in respect of all the goods;
–        order EUIPO to pay the costs.
18      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
III. Law
A.      The jurisdiction of the Court to hear the head of claim in which the Court is asked to give directions
19      EUIPO states that the applicant’s second head of claim amounts to a request that it be given directions.
20      It must be stated that, in so far as, by that head of claim, the Court is asked to grant the registration of the mark applied for, such a request amounts to asking the Court to order EUIPO to register the mark applied for (see, to that effect, judgment of 16 May 2017, Metronia v EUIPO – Zitro IP (TRIPLE O NADA), T‑159/16, not published, EU:T:2017:340, paragraphs 14 and 16).
21      In that regard, it should be recalled that, in the context of the review based on Article 263 TFEU, the Court has no jurisdiction to issue directions to the EU institutions, bodies, offices and agencies (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited).
22      It follows that the applicant’s second head of claim, by which it asks the Court, in essence, to give directions to EUIPO, must be rejected as having been brought before a court which does not have the jurisdiction to hear it.
B.      Substance
23      In support of the action, the applicant puts forward, in essence, two pleas in law. The first plea in law concerns the Board of Appeal’s failure to take into account the infringement by EUIPO, during the opposition proceedings, of Article 60(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), which allegedly led to the breach of its rights of the defence. The second plea in law alleges infringement of Article 8(1)(b) of Regulation 2017/1001.
1.      The first plea in law, alleging breach of the applicant’s rights of the defence during the opposition proceedings
24      The applicant complains that the Board of Appeal did not draw the necessary inferences from the error made by EUIPO during the opposition proceedings, which consisted in sending some of its communications directly to the applicant rather than through its appointed representative, in breach of Article 60(1) of Delegated Regulation 2018/625. The applicant submits that, as a result of that error, it believed that its representative was in receipt of all the documents and was in a position to submit the necessary observations, whereas she had not been given the opportunity to do so. By failing to annul the Opposition Division’s decision on that ground, the Board of Appeal therefore infringed Article 94 of Regulation 2017/1001.
25      EUIPO considers, in essence, that the Board of Appeal correctly concluded that the error made during the opposition proceedings was not capable of affecting the content of the Opposition Division’s decision.
26      According to the second sentence of Article 94(1) of Regulation 2017/1001, EUIPO’s decisions are to be based only on reasons on which the parties concerned have had an opportunity to present their comments. That provision affirms, in EU trade mark law, the general principle of protection of the rights of the defence in EU law. Under that principle, any person adversely affected by a decision of a public authority must have been afforded the opportunity effectively to make known his or her views before the adoption of that decision. The right to be heard extends to all the matters of fact or of law which form the basis for that decision, but not to the final position which the public authority intends to adopt (see, to that effect, judgments of 17 December 2010, Storck v OHIM (Shape of a chocolate mouse), T‑13/09, not published, EU:T:2010:552, paragraph 52 and the case-law cited, and of 1 June 2016, Grupo Bimbo v EUIPO (Shape of a bar with four circles), T‑240/15, not published, EU:T:2016:327, paragraph 61 and the case-law cited).
27      Moreover, it follows from the case-law that the rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity actually has an effect on the ability of the undertakings involved in the dispute to defend themselves. Consequently, non-compliance with rules in force whose purpose is to protect the rights of the defence can vitiate the administrative procedure only if it is shown that the procedure could have had a different outcome if the rules had been observed (see judgment of 17 December 2010, Shape of a chocolate mouse, T‑13/09, not published, EU:T:2010:552, paragraph 53 and the case-law cited).
28      In the present case, it should be pointed out, in the first place, that an irregularity was committed during the opposition proceedings by EUIPO, since EUIPO incorrectly sent some of its communications directly to the applicant rather than through its representative, in breach of Article 60(1) of Delegated Regulation 2018/625.
29      In the second place, and consequently, it is necessary to examine whether the irregularity in question had a specific effect on the applicant’s ability to defend itself during the opposition proceedings. More specifically, in the circumstances of the present case, it must be ascertained whether the Board of Appeal correctly found that that irregularity had no effect on the outcome of the opposition proceedings or whether, on the contrary, it should have held that it could not be excluded that the content of the Opposition Division’s decision could have been different had it not been for that error.
30      It should be noted that the applicant did not inform EUIPO of the appointment of a representative until 17 October 2019, that is to say, on expiry of the time limit set for the applicant to submit its observations on the opposition and, if appropriate, to submit a request for proof that the earlier mark had been put to use.
31      The only consequence of the irregularity in question was therefore that the applicant was informed directly, rather than through its representative, of the observations submitted in reply by the opponent, and of EUIPO’s choice not to offer the applicant an opportunity to submit additional observations in response, since it had decided to rule solely on the basis of the information already in its possession.
32      Accordingly, in so far as EUIPO had decided not to make use of the option available to it under Article 8(6) of Delegated Regulation 2018/625 to allow the applicant to submit further observations in response, it was not possible for the irregularity in question to affect the applicant’s ability to exercise its rights of the defence.
33      The first plea in law must, therefore, be rejected.
2.      Second plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
34      The applicant considers that the Board of Appeal incorrectly found that there was a likelihood of confusion on the part of the relevant public, thereby disregarding Article 8(1)(b) of Regulation 2017/1001. In that regard, it disputes the merits of the Board of Appeal’s assessments relating to the level of attention of the relevant public, the comparison of the goods in question and the signs at issue, as well as the global assessment of the likelihood of confusion.
35      EUIPO considers that the Board of Appeal did not make any of the errors of assessment alleged by the applicant and that it validly concluded that there was a likelihood of confusion.
36      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
37      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 32 and the case-law cited).
38      For the purpose of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).
39      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
40      The present plea in law must be examined in the light of those considerations.
(a)    The relevant public
41      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 or services 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).
42      In the present case, the Board of Appeal found that the goods at issue were aimed mainly at the general public and, in part, at professionals and that, although some of the goods at issue in Class 5 involved a higher than average level of attention at the time of purchase, the other goods in question in that class, and those in Classes 29 and 30, involved only an average level of attention. Like the Opposition Division, the Board of Appeal based its assessment on the perception of the Polish-speaking general public within the European Union.
43      Against that analysis, the applicant submits, in essence, that the relevant public has a high level of attention for all of the goods at issue in Class 5.
44      EUIPO argues that the Board of Appeal correctly found that a high level of attention was present only for the part of the goods in question, namely those which had medical use.
45      In the first place, as concerns the relevant territory, since the protection of the earlier mark extends to the entirety of the European Union, it is the perception of the marks at issue by the consumer of the goods in question within the whole of that territory that must be considered. However, since, in accordance with the case-law cited in paragraph 39 above, it is sufficient that a relative ground for refusal exists in part of the European Union, the Board of Appeal was entitled to rely on the perception of the Polish-speaking general public for the purpose of finding that there was a likelihood of confusion between those marks.
46      In the second place, as concerns the determination of the relevant public and its level of attention, the Board of Appeal was, first, fully entitled to find, in paragraph 37 of the contested decision, that the goods in question in Classes 29 and 30, which concern, respectively, ‘preserved, dried and cooked fruits and vegetables; vegetable extracts and concentrates (purees) for culinary purposes (except essential oils)’ and ‘dried kitchen herbs; preserved herbs and spices; herbal teas not for medical purposes, black teas; tea essences, tea extracts, instant teas, tea mixes’, are types of everyday consumer goods aimed at the general public which has an average level of attention when purchasing them.
47      Furthermore, the Board of Appeal also correctly found, in essence, that those goods could also concern a professional public, which is likely to have a higher level of attention, but that that fact was irrelevant, since, when assessing the likelihood of confusion, account must be taken of the public with the lowest level of attention (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM – Société de Développement et de Recherche Industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 21 and the case-law cited).
48      Second, as concerns the goods at issue in Class 5, the Board of Appeal divided them into two categories.
49      The first category comprises ‘nutritional additives, especially antioxidants for medical purposes; dietetic products and nutritional supplements for medical purposes; preparations for the production of beverages for medical purposes; dietetic products for special medical purposes (balanced diets); dietary and nutritional supplements for sports and increased performance for medical purposes; starch for dietetic and pharmaceutical purposes; nutritional additives, primarily composed of vitamins, amino acids, minerals and trace elements for medical purposes; herbal teas for medical purposes’. With regard to those goods, the Board of Appeal found, in essence, in paragraph 36 of the contested decision, that both the professional public and the general public have a higher than average level of attention when purchasing them, in so far as those goods are likely to affect the consumers’ state of health. That finding, which moreover is not disputed by the applicant, must be upheld.
50      The second category comprises ‘foods for babies especially milk powder for babies’ and ‘mineral nutritional additives’. With regard to those goods, the Board of Appeal followed an analysis equivalent to that summarised in paragraphs 46 and 47 above, which led to the Board of Appeal taking into account a consumer with an average level of attention when purchasing those goods.
51      It is true that an equivalent assessment has occasionally been adopted by the Court, both with regard to nutritional additives (judgment of 7 October 2015, Atlantic Multipower Germany v OHIM – Nutrichem Diät + Pharma (NOxtreme), T‑186/14, not published, EU:T:2015:754, paragraphs 43 and 44) and food for babies (judgment of 28 March 2012, Hipp v OHIM – Nestlé (Bebio), T‑41/09, not published, EU:T:2012:163, paragraph 29).
52      However, the fact remains that the applicant is correct in arguing that those goods are likely to affect the consumer’s state of health, with the result that the consumer has a high level of attention when purchasing them.
53      It should be noted that, although ‘foods for babies especially milk powder for babies’ and ‘mineral nutritional additives’ do not, as such, constitute pharmaceutical products, they fall within the ‘paramedical’ field, that is to say, they are linked, in the broad sense, to health.
54      Owing to that link with health, the majority of the most recent of the Court’s case-law found that a level of attention is higher than average when that type of goods is purchased (see, as regards nutritional additives, judgments of 28 May 2020, Aurea Biolabs v EUIPO – Avizel (AUREA BIOLABS), T‑724/18 and T‑184/19, EU:T:2020:227, paragraph 50, and of 5 October 2020, SBS Bilimsel Bio Çözümler v EUIPO – Laboratorios Ern (apiheal), T‑53/19, not published, EU:T:2020:469, paragraphs 30 and 32; and, as regards food for babies, judgments of 7 May 2019, Sona Nutrition v EUIPO – Solgar Holdings (SOLGAR Since 1947 MultiPlus WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA), T‑152/18 to T‑155/18, not published, EU:T:2019:294, paragraph 25; of 28 November 2019, August Wolff v EUIPO – Faes Farma (DermoFaes), T‑643/18, not published, EU:T:2019:818, paragraph 27; and of 5 October 2020, Laboratorios Ern v EUIPO – SBS Bilimsel Bio Çözümler (apiheal), T‑51/19, not published, EU:T:2020:468, paragraphs 30 and 32).
55      It should be noted, first, that the purchase of ‘mineral nutritional additives’ differs from that of other foods, since it is driven by an effort to improve health. It can therefore be assumed that the consumer’s level of attention will be higher than average when purchasing ‘mineral nutritional additives’. Second, as regards ‘foods for babies especially milk powder for babies’, since it is necessary for the well-being and health of children, and moreover those of a young age, it is likely to be the subject of a level of attention from consumers which is at least above average, even if it is an everyday consumer product marketed by large retailers (see, to that effect, judgment of 13 May 2015, Ferring v OHIM – Kora (Koragel), T‑169/14, not published, EU:T:2015:280, paragraph 38).
56      It follows that the Board of Appeal made an error of assessment by finding that there was an average level of attention at the time of purchase of some of the goods at issue in Class 5.
(b)    The comparison of the goods
57      In assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
58      According to the case-law, in order for goods or services to be regarded as in competition with each other, there must be an element of interchangeability between them (see judgment of 17 February 2017, Hernández Zamora v EUIPO – Rosen Tantau (Paloma), T‑369/15, not published, EU:T:2017:106, paragraph 26 and the case-law cited).
59      The complementary nature of the goods and services concerns those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgments of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 48 and the case-law cited, and of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited). Thus, for the purposes of the assessment of whether the goods and services are complementary, the perception of that public of the importance of a product or service for the use of another product or service should, ultimately, be taken into account (judgment of 28 April 2021, Klaus Berthold v EUIPO – Thomann (HB Harley Benton), T‑284/20, not published, EU:T:2021:218, paragraph 74).
60      In paragraphs 46 to 52 of the contested decision, the Board of Appeal found that the goods at issue in Class 5 were identical, those in Class 29 were in part identical and, in part, had at least a high degree of similarity, and those in Class 30 were in part identical and, in part, had at least an average degree of similarity.
61      The applicant disputes the Board of Appeal’s assessment as to the degree of similarity between some of the goods in question in Classes 29 and 30.
62      EUIPO, in its response, adopts the analysis of the Board of Appeal.
63      As a preliminary point, it should be noted that some of the Board of Appeal’s assessments are not disputed by the applicant and must be confirmed, since they are not vitiated by any error of assessment.
64      The Board of Appeal found, first, that the goods at issue in Class 5 were identical to some of the goods in the same class covered by the earlier mark and, second, that ‘preserved, dried and cooked fruits and vegetables’ in Class 29 and ‘herbal teas not for medical purposes, black teas; tea essences, tea extracts, instant teas, tea mixes’ in Class 30 were identical to some of the goods in the same classes covered by the earlier mark.
65      In the first place, the applicant disputes the merits of the Board of Appeal’s assessment, in paragraph 50 of the contested decision, that ‘vegetable extracts and concentrates (purees) for culinary purposes (except essential oils)’ and ‘preserved fruits and vegetables’ in the same class, covered by the earlier mark, were ‘similar to a high degree at least’. The applicant argues that the mere fact that the goods in question can be used together does not establish their similarity.
66      It should be noted that the possibility of using the goods referred to in paragraph 65 above together is not the only relevant factor, within the meaning of the case-law cited in paragraph 57 above, which was taken into account by the Board of Appeal. The Board of Appeal also referred, in essence, to the fact that the goods in question are similar in nature, frequently have the same commercial origin, use the same distribution channels, and are aimed at the same public.
67      In the light of all of those elements, the Board of Appeal did not make an error of assessment by finding that there was a high degree of similarity between the goods referred to in paragraph 65 above.
68      More specifically, it should be noted that there is likely to be an element of interchangeability, within the meaning of the case-law cited in paragraph 58 above, between, on the one hand, ‘vegetable extracts and concentrates (purees) for culinary purposes (except essential oils)’, covered by the mark applied for, and, on the other hand, ‘preserved vegetables’, covered by the earlier mark, with the result that those goods may be considered to be in competition with each other.
69      In the second place, the applicant complains that the Board of Appeal found, in paragraph 52 of the contested decision, that there was at least an average degree of similarity between, on the one hand, ‘dried kitchen herbs; preserved herbs and spices’ in Class 30, covered by the mark applied for, and, on the other hand, ‘preserved fruits and vegetables’ in Class 29, covered by the earlier mark.
70      It is true that the Board of Appeal was correct in noting that the goods referred to in paragraph 69 above have points in common since they are plant-based in nature, that ‘dried kitchen herbs; preserved herbs and spices’ may be used in conjunction with ‘preserved fruits and vegetables’ in culinary preparations, and that they may be marketed in the same sales outlets and purchased by the same consumers.
71      However, by finding that there was ‘at least an average’ degree of similarity, the Board of Appeal overestimated the degree of similarity of the goods referred to in paragraph 69 above. First, there is no close connection, within the meaning of the case-law cited in paragraph 59 above, which would have been likely to cause the relevant public to perceive those goods as complementary, but only a much more indirect relationship arising from the fact that ‘dried kitchen herbs; preserved herbs and spices’ may possibly be used to give colour or flavour to preparations in which ‘preserved fruits and vegetables’ may be used. Second, it is not a well-known fact that those goods are necessarily marketed in the same or neighbouring shelves in the shops.
72      Under those conditions, the Board of Appeal should have concluded that there was a weak degree of similarity between the goods referred to in paragraph 69 above (see, by analogy, judgment of 4 October 2016, Lidl Stiftung v EUIPO – Horno del Espinar (Castello), T‑549/14, not published, EU:T:2016:594, paragraph 76).
(c)    The comparison of the signs
73      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).
74      For the purpose of assessing the distinctive character of an element making up 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, account should be taken, in particular, of 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 (see judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited; of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 38 and the case-law cited; and of 23 May 2019, Dentsply De Trey v EUIPO – IDS (AQUAPRINT), T‑312/18, not published, EU:T:2019:358, paragraph 37 and the case-law cited).
(1)    The distinctive and dominant elements of the signs
75      As regards the distinctive and dominant elements of the signs at issue, the Board of Appeal found, in paragraphs 60 to 69 of the contested decision, first, that the element ‘nutri’, which is common to both marks, would not be understood by the Polish-speaking general public as a reference to ‘nutrition’ and, second, that the element ‘ben’ of the earlier mark and the elements ‘fem’ and ‘agnubalance’ of the mark applied for did not have any meaning for that public.
76      The applicant argues, first of all, that the element ‘nutri’, which is common to the signs at issue, is descriptive of the entirety of the goods at issue in Class 5, in that it is the abbreviation of ‘nutrition’ and ‘nutritional’, which are known to the entire public of the European Union. The applicant states, in that regard, that many EU trade marks make use of that term. Next, the applicant considers that the second elements of those signs, namely ‘ben’ and ‘fem’ respectively, are understood as referring to ‘son’ and ‘female’. Lastly, the applicant considers that the element ‘agnubalance’ constitutes the distinctive and dominant element of the mark applied for.
77      EUIPO considers that the Board of Appeal did not make any error of assessment when determining the distinctive and dominant elements of the signs at issue.
78      In the first place, as regards the element ‘agnubalance’ of the mark applied for, the Board of Appeal found, in paragraph 69 of the contested decision, that it had distinctive character with regard to the goods in question. That assessment, which has not been disputed by the applicant, must be upheld. The applicant considers, however, that this is the most distinctive element of the signs at issue, in so far as the element ‘nutri’ will be understood as a reference to nutrition, and the elements ‘ben’ and ‘fem’ as referring to ‘son’ and ‘female’ respectively.
79      It is therefore necessary, in the second place, to examine whether the Polish-speaking general public will perceive the element ‘nutri’, which is common to the signs at issue, as a reference to nutrition.
80      If that is the case, it will be necessary to conclude that the element ‘nutri’, which is common to the signs at issue, is descriptive of at least one of the qualities of some of the goods in question. The descriptive nature of that element would then considerably reduce its relative weight in the comparison of those signs, including the visual and phonetic comparisons, even though its presence would always need to be taken into account (see, to that effect, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 67 and the case-law cited).
81      If the opposite is true, that is to say, if it were to be concluded that the Polish-speaking general public will not perceive the element ‘nutri’, which is common to the signs at issue, as a reference to ‘nutrition’, as the Board of Appeal found in the contested decision, it would follow that that element has an average degree of distinctive character in those signs. Its presence would therefore constitute an important point of similarity.
82      First, it should be noted that the fact that ‘nutrition’ is an English word does not give rise to a presumption that the meaning of its abbreviation ‘nutri’ will be understood by the Polish-speaking general public, since the Polish consumer’s knowledge of English is not a well-known fact (judgment of 29 April 2020, Kerry Luxembourg v EUIPO – Döhler (TasteSense By Kerry), T‑108/19, not published, EU:T:2020:161, paragraph 63).
83      Furthermore, although it has been accepted that in some sectors, such as the technology or computing sectors, English is frequently or normally used, so that it can be inferred that the public concerned has a knowledge of that language (see, to that effect, judgment of 29 April 2020, TasteSense By Kerry, T‑108/19, not published, EU:T:2020:161, paragraph 63), that is not the case in the sector to which the products in question belong.
84      Similarly, although it has also been accepted that many consumers in the European Union know basic English vocabulary (see judgment of 29 April 2020, TasteSense By Kerry, T‑108/19, not published, EU:T:2020:161, paragraph 64 and the case-law cited), it must be stated that the term ‘nutrition’, to which the abbreviation ‘nutri’ refers, cannot be considered to be part of the basic vocabulary in English.
85      Second, and as a consequence, it is necessary to ascertain whether the Board of Appeal correctly found that the applicant had not demonstrated, during the administrative procedure, that the meaning of the element ‘nutri’, which is common to the signs at issue, was known to the Polish-speaking general public or at least to a significant part thereof.
86      In Annexes 2, 7, 8 and 10 to the appeal against the Opposition Division’s decision, the applicant submitted evidence regarding the perception of the element ‘nutri’, which is common to the signs at issue, by the Polish-speaking general public.
87      That evidence was correctly summarised by the Board of Appeal in paragraph 62 of the contested decision as proof of the existence ‘of a company “NUTRICIA Polska” with a seat in Poland … and its two suppliers … based in Poland and twelve international trade mark registrations including the term [“nutri”] and originating from Poland’.
88      It is apparent from Annex 2 to the appeal against the Opposition Division’s decision, consisting of an extract from the website ‘nutricia.polandtrade.de’, that a company ‘Nutricia Polska’ exists. The existence of that company and of its suppliers is also evidenced by Annexes 7 and 8 to that appeal, which contain extracts from the website ‘nutricia.com.pl’. As for Annex 10 to that appeal, it consists of an extract from a WIPO database listing Polish trade mark registrations containing the term ‘nutri’.
89      However, it must be stated that such evidence is not sufficient to demonstrate an understanding of the meaning of the element ‘nutri’, which is common to the signs at issue, by the Polish-speaking general public.
90      It is true that the extensive use by economic operators in Poland, in their commercial names, of the element ‘nutri’, which is common to the signs at issue, may be indicative of the Polish-speaking general public’s knowledge of its meaning, in so far as it would show that there is willingness on the part of those operators to make use of a term known by the Polish consumers. The same would apply to a large number of trade marks aimed at Polish consumers containing the element ‘nutri’. However, Annexes 2, 7 and 8 to the appeal against the Opposition Division’s decision show only that a very limited number of economic operators in Poland have used that element in their commercial names or filed registrations including it.
91      In the third place, as regards the Board of Appeal’s assessments that the relevant public will not perceive the meaning of the element ‘ben’ and the element ‘fem’ in the signs at issue, it must be stated that the applicant has not provided any evidence to support its argument that the Polish-speaking general public will know those elements even if they have no meaning in Polish.
92      In the light of the foregoing, it must be held that no element of the signs at issue has a greater distinctive character than the others or dominates its overall impression.
(2)    The visual, phonetic and conceptual comparison of the signs
93      The Board of Appeal found, in paragraphs 70 to 76 of the contested decision, that the signs in question were at least visually similar to a low degree, phonetically similar to a low degree, and that their conceptual comparison was irrelevant.
94      The applicant submits that the signs at issue are visually and phonetically different.
95      EUIPO adopts the analysis in the contested decision.
96      From the visual point of view, it should be pointed out that the signs at issue have in common the element ‘nutri’, constituting their first six letters, and the letter ‘e’, present in eighth position in each of the two marks. The two marks differ in their seventh and ninth letters and in the element ‘agnubalance’, present solely in the mark applied for.
97      Although the applicant is correct to highlight the significant visual and phonetic differences between the signs at issue, the fact remains that the presence of the common element ‘nutri’ in those signs means that there is a minimum degree of similarity between them.
98      In those circumstances, it must be concluded that the Board of Appeal was fully entitled to find, in essence, that the signs at issue were visually and phonetically similar to a low degree.
99      Lastly, as regards the conceptual comparison, it should be noted that the Board of Appeal was entitled to find, in essence, in paragraph 76 of the contested decision, that that comparison was neutral, in so far as the signs at issue will not be perceived by the Polish-speaking general public as having any meaning.
(d)    The likelihood of confusion
100    A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
101    The Board of Appeal considered that there was a likelihood of confusion on the part of the relevant public, including with regard to the goods for which that public has a high level of attention when purchasing them.
102    Against that analysis, the applicant argues that such a likelihood of confusion cannot exist because of the lack of similarity between the signs, the weak distinctive character of the earlier mark and the high level of attention of the relevant public.
103    As a preliminary point, it should be noted that the Board of Appeal was correct to find, in paragraphs 77 to 79 of the contested decision, that the earlier mark had an average inherent distinctive character. For the reasons set out in paragraphs 79 to 90 above, it must be concluded that the applicant has not shown that the element ‘nutri’, which is common to the signs at issue, is descriptive for the relevant public with regard to all or part of the goods in question, such as to weaken the distinctive character of the earlier mark.
104    It is necessary to differentiate the examination of the likelihood of confusion for the relevant public depending on which of three categories of goods the marketing under the mark applied for concerns, namely, first, those in Classes 29 and 30, with the exception of ‘dried kitchen herbs; preserved herbs and spices’; second, those ‘dried kitchen herbs; preserved herbs and spices’; and, third, the goods in Class 5.
105    As regards the goods in the first category, the Board of Appeal was fully entitled to find that there was a likelihood of confusion on the part of the relevant public when purchasing them. For the reasons set out in paragraphs 64 to 67 above, those goods are either identical or highly similar to some of the goods covered by the earlier mark. In accordance with the case-law cited in paragraph 100 above, that identity or strong similarity between the goods in question is such as to offset the lower degree of similarity between the signs at issue, with the result that there is a likelihood of confusion on the part of the relevant public.
106    By contrast, the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public when purchasing the goods in the second category (‘dried kitchen herbs; preserved herbs and spices’). For the reasons set out in paragraphs 69 to 72 above, the Board of Appeal should have found that there was a low degree of similarity between those goods and the goods covered by the earlier mark. Accordingly, in so far as there is both a low degree of similarity between the signs and the goods and the earlier mark does not have highly distinctive character, which might give it greater protection, a likelihood of confusion could not be found.
107    The Board of Appeal also erred in finding that there was a likelihood of confusion on the part of the relevant public when purchasing the goods in the third category, namely the goods at issue in Class 5, on account of the high level of attention of the consumer, as has been found in paragraphs 49 to 56 above.
108    It follows from the case-law that although the relevant public only rarely has the chance to make a direct comparison between the different marks, but must rely on ‘an imperfect recollection of them’, a high level of attention on the part of the relevant public may lead to the conclusion that it will not confuse the marks in question despite the lack of direct comparison between the different marks (see, to that effect, judgment of 22 March 2011, Ford Motor v OHIM – Alkar Automotive (CA), T‑486/07, not published, EU:T:2011:104, paragraph 95).
109    In the present case, in the light of the level of attention of the relevant public, the differences between the signs at issue are sufficient for that public not to perceive that the goods at issue in Class 5, whatever their degree of similarity with the goods covered by the earlier mark, come from the same undertaking or, as the case may be, from economically linked undertakings.
110    That conclusion is not invalidated by the emphasis placed by the Board of Appeal, in paragraph 85 of the contested decision, on the possibility that the relevant public may consider the mark applied for to be a variant of the earlier mark. Such an analysis is based on the premiss that the first word constituting the mark applied for, ‘nutrifem’, will be associated with the earlier mark ‘nutriben’. However, such an association cannot be held to exist in the case of a public with a high level of attention, on account of the differences between the elements ‘fem’ and ‘ben’.
111    In the light of the foregoing, the second plea in law must be upheld in so far as the Board of Appeal found that there was a likelihood of confusion on the part of the relevant public with regard, first, to the goods in Class 5 and, second, to ‘dried kitchen herbs; preserved herbs and spices’ in Class 30, and the present action must be partially upheld, solely to that extent.
112    The action must be dismissed as to the remainder.
IV.    Costs
113    Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
114    In the present case, since the action has been upheld only in respect of some of the goods in question, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of EUIPO of 22 April 2021 (Case R 1208/2020‑5) in so far as it concerns the goods in Class 5 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 the ‘dried kitchen herbs; preserved herbs and spices’ in Class 30 thereof;
2.      Dismisses the action as to the remainder;
3.      Orders each party to bear its own costs.
Tomljenović
Škvařilová-Pelzl
Nõmm
Delivered in open court in Luxembourg on 6 April 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.