JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
19 April 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark PROTICURD — Earlier national word marks PROTI and PROTIPLUS — Earlier national figurative mark Proti Power — Relative ground for refusal — Obligation to state reasons — Article 75 of Regulation (EC) No 207/2009 (now Article 94 of Regulation (EU) 2017/1001) — Genuine use of the earlier marks — Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) — Goods not similar — No likelihood of confusion)
In Case T‑25/17,
Bernhard Rintisch, residing in Bottrop (Germany), represented by A. Dreyer, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Schifko, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Compagnie laitière européenne SA, established in Condé-sur-Vire (France),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 8 November 2016 (Case R 247/2016-4) relating to opposition proceedings between Mr Rintisch and Compagnie laitière européenne,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, M. Kancheva (Rapporteur) and G. De Baere, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 January 2017,
having regard to the response lodged at the Court Registry on 24 April 2017,
having regard to the change in the composition of the Chambers of the General Court,
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 12 August 2008, Compagnie laitière européenne SA, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration designating the European Union of the word mark PROTICURD. The international registration was based on French registration No 83556037.
2        On 13 November 2008, the international registration was notified to the European Union Intellectual Property Office (EUIPO) in accordance with Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
3        The goods in respect of which registration was applied for are in Classes 5 and 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:
–        Class 5: ‘Pharmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’;
–        Class 29: ‘Milk powders, whey proteins; milk beverages, with milk predominating; proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’.
4        The international registration was published in Community Trade Marks Bulletin No 46/2008 of 17 November 2008.
5        On 25 June 2009, the applicant, Mr Bernhard Rintisch, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        the German word mark PROTI, registered on 3 March 1997 under the number 39702429 in respect of goods in Classes 29 and 32 corresponding, for each of those classes, to the following description:
–        Class 29: ‘milk products, namely milk-protein and whey-protein for mixing in foodstuffs; dietetic foodstuffs not for medical purposes, as included in Class 29, namely food-preparations with high protein content for enrichment of foodstuffs; dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts as well as carbohydrates, always in particular in powder form’;
–        Class 32: ‘preparations, particularly proteins, also supplemented with vitamins and or mineral salts as well as carbohydrates, each particularly in powder form, for beverage preparation’.
–        the German word mark PROTIPLUS, registered on 20 May 1996 under the number 39549559 in respect of goods in Classes 29 and 32 corresponding, for each of those classes, to the following description:
–        Class 29: ‘milk products, protein, in particular in powder form’;
–        Class 32: ‘preparations, particularly protein, particularly in powder form, for beverage preparation’.
–        the German figurative mark Proti Power, registered on 5 March 1997 under the number 39608644 in respect of goods in Classes 29 and 32 corresponding, for each of those classes, to the following description: ‘Milk products; protein, carbohydrates, each particularly in powder form, also as dietetic foodstuffs not for medical purposes, as included in Class 29’ (Class 29) and ‘Preparations, particularly proteins and carbohydrates, in particular in powder form, for beverage preparation’ (Class 32), as reproduced below:
7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 8 June 2010, the applicant, who was asked by the Opposition Division, at the request of the intervener, to furnish proof of use of his earlier German marks, provided, inter alia, an affidavit dated 1 July 2008, stating that those marks were used in relation to ‘protein concentrates as food supplements for the field of sport and fitness’ in Germany and stating the turnovers in respect of those marks between 2000 and 2007, as well as brochures and price lists for the year 2008, labels, and invoices showing sales of various goods under those marks in Germany between 2006 and 2008.
9        On 20 January 2011, the Opposition Division upheld the opposition in respect of the goods in Classes 5 and 29 covered by the mark applied for, but, on the other hand, rejected the opposition in respect of the goods in Class 31, which are not the subject matter of the present action. It found, inter alia, that the proof of use submitted showed that the earlier marks had been used in respect of the goods ‘protein concentrates as food supplements for the field of sport and fitness’ in Class 29 and in respect of the goods ‘protein concentrates as food supplements for the field of sport and fitness, for beverage preparation’ in Class 32.
10      On 21 March 2011, the intervener brought an action with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11      By decision of 14 March 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO partially annulled the Opposition Division’s decision and rejected the opposition in respect of all the goods covered by the mark applied for in Class 5, namely ‘pharmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’, and some of the goods in Class 29, namely ‘milk powders’ and ‘milk beverages, with milk predominating’, although it rejected the action in respect of the following goods in Class 29: ‘whey proteins, proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’, thereby refusing them the protection of the international registration designating the European Union. In its analysis, the Board of Appeal essentially focused on the earlier mark PROTI, on the ground that the outcome of the action would not be rendered different by taking into account the earlier marks PROTIPLUS and Proti Power.
12      In the first place, as regards genuine use of the earlier mark, the Board of Appeal found, in essence, that it was possible to infer from the documents produced by the applicant that he had, in respect of the relevant period (which ran from 17 May 2004 to 16 May 2009), proved the genuine use of the earlier mark with respect to ‘preparations, particularly proteins, also supplemented with vitamins and or mineral salts, as well as carbohydrates, each particularly in powder form, for beverage preparation’ in Class 32.
13      In the second place, as regards the assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal pointed out, first, that the relevant public consisted of average consumers in Germany, but also consisted of professionals in respect of ‘pharmaceutical preparations’. Secondly, as regards the comparison of the goods, it found, first of all, that the goods ‘pharmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’ in Class 5 covered by the mark applied for were dissimilar to the goods ‘protein concentrates as foods supplements for beverage preparation’ in Class 32 concerned by the earlier mark, in the light of their different purposes, one medical and the other nutritional, the absence of any complementarity between them and their production by different undertakings. Next, it found that the goods at issue ‘milk powders, milk beverages, with milk predominating’ in Class 29 and the earlier goods in Class 32 were remotely similar, despite their different natures, in the light of their substitutability or complementarity. Lastly, it found that the contested goods ‘whey proteins, proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’ in Class 29 were similar to the earlier goods ‘protein concentrates as food supplements for beverage preparation’ in Class 32, as all those goods are proteins, can be used for the same purpose and are aimed at the same public, for example sportspersons. Thirdly, as regards the comparison of the signs, the Board of Appeal, first of all, pointed out that the element ‘proti’, although it was an abbreviation of the term ‘protein’, was not perceived as such or as descriptive by the German public, that the English element ‘curd’ was distinctive for the German public and that neither of those two elements dominated the overall impression of the contested mark. Next, it found that the signs at issue were visually and aurally similar to an average degree because the earlier sign was fully contained in the beginning of the contested sign and the element ‘curd’ in the contested sign could not alter that finding. Lastly, it stated that it was not possible to make a conceptual comparison of them. Fourthly, it dismissed the possibility of there being a likelihood of confusion in respect of the dissimilar goods in Class 5, as one of the conditions of Article 8(1)(b) of Regulation No 207/2009 was not fulfilled, and then accepted that it was present for the similar goods in Class 29 consisting in ‘whey proteins, proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’ and, lastly, dismissed it for the goods in Class 29 consisting in ‘milk powders, milk beverages, with milk predominating’, since the weak similarity of the goods as compared to those in respect of which genuine use of the earlier mark could be proven was not offset by a sufficient similarity of the signs such as to give rise to a likelihood of confusion.
14      By application lodged at the Registry of the General Court on 19 May 2014, M. Rintisch appealed against the decision of the Fourth Board of Appeal of 14 March 2014, relying on three grounds: (i) infringement of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001); (ii) infringement of Article 42(2) of the same regulation (now Article 47(2) of Regulation 2017/1001); and (iii) infringement of Article 8(1)(b) of that regulation.
15      In its judgment of 24 September 2015, Rintisch v OHIM — Compagnie laitière européenne (PROTICURD) (T‑382/14, not published, EU:T:2015:686), the Court upheld the first plea in law and annulled the decision of the Fourth Board of Appeal of 14 March 2014. In the first place, the Court held that the applicant’s argument to the effect that the Fourth Board of Appeal had failed to give reasons in its decision concerning the proof of genuine use of the earlier mark PROTI for goods in Class 29 was admissible only in so far as it concerned ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’, for which that mark had been registered. The Court held that the applicant’s argument was inadmissible inasmuch as it concerned ‘milk products, namely milk-protein and whey-protein for mixing in foodstuffs’, and ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely food-preparations with high protein content for enrichment of foodstuffs’, for which the earlier mark had been registered given that, first, in its decision of 20 January 2011, the Opposition Division had found that the applicant had not made out proof of genuine use of the earlier mark for those goods and, second, those considerations had not been questioned by the Board of Appeal, with the result that they did not form part of the subject matter of the proceedings before it (judgment of 24 September 2015, PROTICURD, T‑382/14, not published, EU:T:2015:686, paragraphs 16 to 37).
16      In the second place, the Court held that the Board of Appeal had infringed its obligation to state reasons under Article 75 of Regulation No 207/2009 as it was not clearly and unequivocally apparent whether or not the Board of Appeal concurred with the Opposition Division’s assessment that the applicant had proven genuine use of its earlier marks for certain goods in Class 29, which had to be taken into consideration in order to determine the likelihood of confusion. The Board of Appeal had omitted to rule explicitly on that determination by the Opposition Division either by upholding it or overturning it (judgment of 24 September 2015, PROTICURD, T‑382/14, not published, EU:T:2015:686, paragraph 59).
17      The Court accordingly annulled the decision of the Board of Appeal of 14 March 2014, without examining whether or not the earlier mark PROTI had been put to genuine use for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’, in Class 29, without assessing the likelihood of confusion between the conflicting marks.
18      By decision of the Presidium of the Boards of Appeal of 5 February 2016, the case was referred for a new ruling to the Fourth Board of Appeal under reference R 247/2016-4.
19      By decision of 8 November 2016 (‘the contested decision’), the Board of Appeal annulled the decision of the Opposition Division of 20 January 2011 in so far as the protection for the international registration designating the European Union was refused for goods in Class 5, namely ‘pharmaceutical preparations, dietetic substances for medical purposes; dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’, and certain goods in Class 29, namely ‘milk powders, milk beverages, with milk predominating’, and rejected the opposition for those goods.
20      In the first place, as regards proof of genuine use of the goods in Class 29 and Class 32, the Board of Appeal found that the applicant had not explained which evidence was to serve as proof of use of the goods concerned in Classes 29 and 32. The Board of Appeal observed in that regard that since the applicant had omitted to link the evidence adduced by it to the goods concerned, as it was required to do, the Board did its best to understand the evidence and to link it to the goods concerned, particularly in the light of the applicant’s affidavit in which he stated that the marks were used for ‘[p]rotein concentrates as food supplements for the field of sport and fitness’.
21      The Board of Appeal found that the evidence adduced by the opposing party was such as to prove that the earlier mark PROTI was used in Germany and contained sufficient information on the duration, extent and nature of its use.
22      The Board of Appeal found that it was possible to infer from the evidence adduced by the applicant that he had sold protein preparations in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates. It based that conclusion on the descriptions of the goods given in the brochure and on the labels provided by the applicant, according to which powdered protein concentrates are to be mixed with liquids, such as low-fat milk, in order to be consumed, whilst noting that that description was generally in line with the affidavit produced by the applicant.
23      The Board of Appeal reiterated that, in accordance with the General Remarks and the Explanatory Notes to the Nice Classification, Class 29 includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation, whilst Class 32 includes mainly non-alcoholic beverages, as well as beer, which includes also preparations for making beverages.
24      The Board of Appeal further stated that proteins in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates are supplements added to the beverages which normally fall within Class 32, and that these types of goods would fall within Class 29 only if they were added to milk beverages, beverages with milk predominating, or to milk powders, which was not apparent from the evidence adduced in the instant case. The Board of Appeal added that the fact that the protein is predominantly of milk origin or can be added to milk and milk beverages did not change the assessment on this point.
25      The Board of Appeal further stated that it was not apparent from the evidence adduced by the opposing party that it had marketed syrups or other preparations for making beverages in Class 32, for which the earlier mark is registered, other than protein preparations in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates.
26      The Board of Appeal accordingly concluded that, for the purposes of the opposition proceedings, it had to deem the earlier mark to be registered solely for proteins in powder form for supplementing beverages with vitamins or minerals as well as with carbohydrates in Class 32.
27      In the second place, as regards the assessment of the relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal reproduced word for word the statement of reasons from its decision of 14 March 2014, the content of which is summarised in paragraph 13 above.
II.    Forms of order sought
28      The applicant claims that the Court should:
–        annul the contested decision in so far as it annulled the Opposition Division’s decision and rejected the opposition;
–        order EUIPO to pay the costs.
29      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
III. Law
30      The applicant relies, in essence, on three pleas in law in support of its action. The first alleges infringement of Article 42(2) of Regulation No 207/2009, in that the Board of Appeal concluded, incorrectly, that the applicant had not made out proof of genuine use of the mark PROTI for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely proteins’, for which the mark was registered. The second alleges infringement of Article 75 of Regulation No 207/2009, in that the Board of Appeal omitted to rule explicitly on the Opposition Division’s considerations relating to proof of genuine use of the earlier mark PROTI for the goods in Class 29 for which it was registered. The third alleges infringement of Article 8(1)(b) of that regulation, in that the Board of Appeal concluded, incorrectly, that there was no likelihood of confusion between the earlier mark PROTI and the contested mark for the goods in Class 5 and certain of the goods in Class 29, namely ‘milk powders, milk beverages, with milk predominating’.
31      It is appropriate to begin by examining the second plea in law, alleging infringement of the obligation to state reasons laid down in Article 75 of Regulation No 207/2009.
A.      Second plea in law: infringement of Article 75 of Regulation No 207/2009
32      The applicant submits, in essence, that in failing to rule explicitly on the question whether the Opposition Division had correctly assessed in its decision of 20 January 2011 the proof of use of the earlier mark for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’ the Board of Appeal infringed the obligation to state reasons in its decisions laid down in Article 75 of Regulation No 209/2007.
33      EUIPO disputes those arguments.
34      In that regard, it must be recalled that, under Article 75 of Regulation No 207/2009, decisions of EUIPO must be reasoned. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has a two-fold objective, being, on the one hand, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, on the other, to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 7 June 2017, Mediterranean Premium Spirits v EUIPO — G-Star Raw (GINRAW), T‑258/16, not published, EU:T:2017:375, paragraph 88).
35      Furthermore, the duty to state reasons does not require the Board of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (judgments of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19, and of 7 June 2017, MediterraneanPremium Spirits v EUIPO — G-Star Raw (GINRAW), T‑258/16, not published, EU:T:2017:375, paragraph 89).
36      In addition, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its review (judgment of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55, and of 7 June 2017, GINRAW, T‑258/16, not published, EU:T:2017:375, paragraph 90).
37      In the present case, in paragraph 57 of the judgment of 24 September 2015, PROTICURD (T‑382/14, not published, EU:T:2015:686), the Court held that, in its assessment of the evidence of use put forward by the applicant, the Board of Appeal had not provided any statement of reasons referring explicitly to any product whatsoever in Class 29, either recognising or negating the genuine use of the earlier marks for such goods. Therefore, the Court considered that the Board of Appeal had not complied with its obligation to state reasons under Article 75 of Regulation No 207/2009 (judgment of 24 September 2015, PROTICURD, T‑382/14, not published, EU:T:2015:686, paragraphs 63 and 64).
38      As discussed in paragraphs 22 to 26 above, it is readily apparent from paragraphs 26 to 31 of the contested decision that the Board of Appeal considered that the evidence adduced by the applicant showed that he had marketed protein preparations in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates under the earlier mark PROTI. The Board of Appeal stated in that regard that these types of goods are supplements added to beverages which usually fall within Class 32. The Board of Appeal further observed that those goods could fall within Class 29 only if they were added to a milk beverage or to a beverage with milk predominating before being marketed, but that the evidence adduced by the applicant did not show that those goods were marketed in that form. The Board of Appeal further observed that the evidence adduced by the applicant did not show that he had marketed syrups or other beverage preparations in Class 32, for which the earlier mark is registered, other than protein preparations in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates. Consequently, the Board of Appeal concluded that, for the purposes of the opposition proceedings, the earlier mark PROTI had to be deemed to have been registered for protein preparations in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates in Class 32.
39      It is thus implicitly but necessarily clear from the contested decision that the Board of Appeal considered that the applicant had not made out proof of genuine use of the earlier mark PROTI for goods in Class 29 for which it is registered, but that such proof had however been made out in respect of the goods in Class 32, for which it is also registered. It follows that, contrary to the applicant’s assertions, the Board of Appeal did provide a statement of reasons to the requisite legal standard in the contested decision as to the question whether he had made out proof of genuine use of the earlier mark PROTI for goods in Class 29 for which it is registered.
40      Therefore, the second plea in law, alleging infringement of Article 75 of Regulation No 207/2009, must be rejected as unfounded.
B.      First plea in law: infringement of Article 42(2) of Regulation No 207/2009
41      The applicant submits, firstly, that, contrary to what the Board of Appeal found in the contested decision, he established a link between the evidence produced in the context of the opposition proceedings and the use of the earlier marks for the goods in Classes 29 and 32. Thus, in his observations of 8 June 2010 and of 27 October 2010, the applicant established a link between certain documents produced before the Board of Appeal, namely labels and invoices, and certain goods in Class 29 for which the earlier mark PROTI was registered.
42      Secondly, the applicant submits that the evidence submitted by him before the Board of Appeal not only proves the genuine use of the earlier mark PROTI for ‘preparations, particularly proteins, also supplemented with vitamins and or mineral salts, as well as carbohydrates, each particularly in powder form, for beverage preparation’, in Class 32, for which it is registered, but also for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’ in Class 29, for which the earlier mark PROTI is also registered. The applicant submits in particular that the protein powders marketed under the earlier mark PROTI are intended to be mixed with water, milk or other foods, such as yogurts or desserts, in order to increase the protein content of the latter, for consumption. In the applicant’s submission, Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) has as its primary objective clarity in the wording of the goods and the services in order to define clearly the scope of the protection of a mark, but does not preclude a given good from falling within different classes or from being included in two parts of a same class. Thus, in the present case, it may be considered that the protein powders marketed under the earlier mark PROTI are both beverage preparations in Class 32 and dietetic foodstuffs not for medical purposes in Class 29.
43      The applicant submits that, in any event, under Article 9(2) of the Trademark Law Treaty adopted at Geneva on 27 October 1994, the scope of the protection of a mark is not determined definitively by the classification. Limiting the scope of the protection of the earlier mark PROTI to preparations for beverages in Class 32 would be contrary to the economic approach that should be adopted in this case, such as that adopted by the Bundesgerichtshof (Federal Court of Justice, Germany) and would therefore unduly undermine the legitimate interest of the proprietor of a mark in enjoying suitable freedom of economic movement. The applicant thus submits that protein powders are also offered ready for consumption by other undertakings in association with milk and yogurt, such as the good PROTIDRINK. The existence of that last good shows that the applicant’s legitimate economic interests should not be unduly restrained by the limitation on recognition of the legitimate use of the earlier mark PROTI.
44      EUIPO disputes the applicant’s argument.
45      In that regard, it should be noted that it is apparent from recital 10 in the preamble to Regulation No 207/2009 that the legislature considered that there is no justification for protecting an earlier trade mark, except where it is actually used. In the light of that consideration, Article 42(2) and (3) of Regulation No 207/2009 (now Article 42(2) and (3) of Regulation 2017/1001) provides that an applicant for an EU trade mark may request proof that the earlier trade mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of publication of the trade mark application against which an opposition has been filed.
46      Under Rule 22(3) of Regulation No 2868/95, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, and of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 37; see also judgment of 27 February 2015, LS Fashion v OHIM — Gestión de Activos Isorana (L’Wren Scott), T‑41/12, not published, EU:T:2015:125, paragraph 19 and the case-law cited).
47      In accordance with settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of Regulation No 207/2009, and from Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is sound commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedl & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).
48      Therefore, the objective pursued by the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is not so much to determine precisely the extent of the protection afforded to the earlier trade mark by reference to the actual goods or services using the mark at a given time as to ensure more generally that the earlier mark was actually used for the goods or services in respect of which it was registered (judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 43).
49      With that in mind, it is necessary to interpret the last sentence of Article 42(2) of Regulation No 207/2009 and Article 42(3), which applies Article 42(2) to earlier national marks, as seeking to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services. Thus, when those provisions are applied, it is necessary to take account of the breadth of the categories of goods or services for which the earlier mark was registered, in particular the extent to which the categories concerned are described in general terms for registration purposes, and to do this in the light of the goods or services in respect of which genuine use has, of necessity, actually been established (judgment of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 44).
50      There is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services, but genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
51      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
52      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
53      In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and volume of sales under the earlier mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the market concerned. As a result, the Court has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (see judgment of 17 December 2015, Bice International v OHIM — Bice (bice), T‑624/14, not published, EU:T:2015:998, paragraph 39 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 39).
54      The General Court has held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47; see also judgment of 27 February 2015, L’Wren Scott, T‑41/12, not published, EU:T:2015:125, paragraph 26 and the case-law cited).
55      Lastly, it cannot be excluded that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgments of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 36, and of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 34).
56      The question whether the Board of Appeal rightly found that the earlier mark had been put to genuine use during the relevant period must be examined in the light of those considerations.
57      As a preliminary point, it must be noted that the Board of Appeal held that the relevant period for the purpose of establishing the genuine use of the earlier mark ran from 17 November 2003 au 16 November 2008, and the parties do not dispute this.
58      For the purpose of examining the genuine use of the earlier mark during the relevant period, it is apparent from the contested decision that the Board of Appeal based its reasoning on the following evidence adduced by the intervener, as listed in that decision:
–        an affidavit signed by the applicant dated 1 July 2008 containing information about the turnover between 2000 and 2007 (‘the affidavit of 1 July 2008’);
–        the brochure for 2008;
–        a price list for 2008;
–        labels;
–        a number of invoices showing sales of different goods under the PROTI mark in Germany, dated from 2006 to 2008.
59      Firstly, the applicant’s argument to the effect that the Board of Appeal found, incorrectly, that he had not established a link between the evidence adduced and the use of the earlier marks for goods in Classes 29 and 32 must be rejected.
60      It should be remembered that, in paragraph 22 of the contested decision, the Board of Appeal observed that the applicant had not established a link between the various pieces of evidence adduced to prove use of the earlier marks and use of those same marks for the goods for which they were registered. The Board of Appeal referred in that regard to all of the documents described in paragraph 58 above.
61      However, the applicant does not dispute the Board of Appeal’s finding with regard to the affidavit of 1 July 2008, the brochure for 2008 and price list for 2008. The applicant in fact merely states that, in its observations lodged before the Opposition Division, he established a link between the labels and the invoices produced and certain goods for which the earlier mark PROTI was registered. Thus, in his observations of 8 June 2010, he established an obvious link between the invoices referred to in paragraph 58 above and ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’. Similarly, in his observations of 27 October 2010, the applicant established a link between the labels referred to in paragraph 58 above and ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely food-preparations with high protein content for enrichment of foodstuffs’, and also ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’.
62      That line of argument cannot succeed.
63      Thus, in the first place, as regards the applicant’s observations of 8 June 2010 submitted to the Opposition Division, it should be noted that the applicant claims to have stated in those observations that the German term ‘eiweiss(aufbau-)-konzentrat’ had to be translated in English as ‘protein build up concentrate’, by reference to the invoices produced before the Opposition Division. It must be remembered, however, that although the passage from the observations of 8 June 2010, referred to by the applicant, does in fact contain the English translation of the German term ‘eiweiss(aufbau-)-konzentrat’, the reference in that passage to the invoices produced before the Opposition Division is intended only to clarify the fact that those invoices include a handwritten mention of the translation of certain German terms into English. However, there is nothing in that passage from the applicant’s observations of 8 June 2010 to indicate that the invoices in question contain the German term ‘eiweiss(aufbau-)-konzentrat’. Nor is it apparent from a reading of the invoices themselves that they contain the German term ‘eiweiss(aufbau-)-konzentrat’. It is therefore clear that, contrary to the applicant’s contentions, in his observations of 8 June 2010 he did not establish an obvious link between the invoices produced before the Opposition Division, on the one hand, and ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’, for which the earlier mark PROTI was registered, on the other.
64      In the second place, it must be borne in mind that, as observed by the Court in paragraph 26 of the judgment of 24 September 2015, PROTICURD (T‑382/14, not published, EU:T:2015:686), the question of the genuine use of the earlier marks on which was founded the opposition for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely food-preparations with high protein content for enrichment of foodstuffs’, was not part of the subject matter of the proceedings before the Board of Appeal. The applicant’s argument must accordingly be rejected as inoperative inasmuch as it is aimed at demonstrating that, in his observations of 27 October 2010, he established a link between the labels produced before the Board of Appeal and the use of the earlier mark PROTI for those goods.
65      It is also apparent from the applicant’s observations of 27 October 2010 that he stated that the protein concentrates marketed under the earlier mark PROTI contained sweeteners and that they were therefore ‘dietetic foodstuffs not for medical purposes’, referring to the term ‘diätetisches Lebensmittel’ (dietetic foodstuffs) found on the fourth label produced before the Board of Appeal. It should be noted, as is apparent from the case file from the proceedings before EUIPO, the label in question, which includes the reference ‘diätetisches Lebensmittel’, does not concern the earlier mark PROTI, but the applicant’s earlier mark Proti Power. Accordingly, contrary to the applicant’s contentions, it is not apparent from his observations of 27 September 2010 that he had established a link between the evidence produced before the Board of Appeal and the use of the mark PROTI for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’.
66      Accordingly, the conclusion is that, contrary to the applicant’s contentions, the Board of Appeal did not err in finding that he had not established a link between the evidence adduced and the use of the earlier marks for goods in Classes 29 and 32.
67      Secondly, the applicant’s argument to the effect that the evidence he adduced before the Board of Appeal proved genuine use of the earlier mark PROTI for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’ is clearly unfounded. The applicant is in effect arguing that the goods marketed under the mark PROTI during the relevant period could be consumed, not only in the form of a beverage after having been mixed with water or milk, but also through their incorporation in other foods such as yogurts or pastries in order to increase the protein content of the latter. It should be noted that, if the evidence adduced by the applicant were to prove that the goods marketed under the earlier mark PROTI could be incorporated into other foods in order to be consumed, that would support the claim of genuine use of that earlier mark for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely food-preparations with high protein content for enrichment of foodstuffs’, which did not form part of the subject matter of the proceedings before the Board of Appeal (judgment of 24 September 2015, PROTICURD, T‑382/14, not published, EU:T:2015:686, paragraph 26). Such evidence would therefore be irrelevant to prove genuine use of the earlier mark PROTI for ‘dietetic foodstuffs not for medical purposes, as included in Class 29, namely protein, also supplemented with vitamins and or mineral salts, as well as carbohydrates, always in particular in powder form’. In any event, it is apparent from the case file from the proceedings before EUIPO, particularly labels produced by the applicant, that the goods marketed under the earlier mark PROTI had to be mixed with water or milk in order to be consumed. The labels produced by the applicant also refer to a daily dosage to be complied with for the different goods, specifying the quantity of good to mix with a certain volume of water or milk, in combination with periods of physical exercise.
68      It follows that the Board of Appeal was correct in finding in the contested decision that the applicant had made out proof of genuine use of the earlier mark PROTI solely for ‘preparations, particularly proteins, also supplemented with vitamins and or mineral salts, as well as carbohydrates, each particularly in powder form, for beverage preparation’ in Class 32.
69      Moreover, regarding the applicant’s argument to the effect that the scope of the protection granted to the earlier mark PROTI cannot be limited to ‘preparations, particularly proteins, also supplemented with vitamins and or mineral salts, as well as carbohydrates, each particularly in powder form, for beverage preparation’, in Class 32, but should extend to identical goods, such as goods mixing proteins in powdered form with milk or yogurts, it should be borne in mind that, in accordance with the case-law cited in paragraph 48 above, although the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is aimed at ensuring generally that the earlier mark was actually used for the goods or services in respect of which it was registered, it is not necessarily aimed at delimiting precisely the scope of the protection of the earlier mark in the light of the specific goods or services using that mark at a given time.
70      It should be borne in mind that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes (see, to that effect, judgment of 25 October 2012, riha v OHIM — Lidl Stiftung (VITAL&FIT), T‑552/10, not published, EU:T:2012:576, paragraph 39). The scope of protection under trade mark law is therefore not determined by a term’s inclusion in a taxonomic information structure but by the usual meaning of that term. The purpose of the Nice Classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category, as is apparent, in particular, from Rule 2(4) of Regulation No 2868/95 (judgments of 21 October 2014, Szajner v OHIM — Forge de Laguiole (LAGUIOLE), T‑453/11, EU:T:2014:901, paragraph 88, and of 30 September 2015, Gat Microencapsulation v OHIM — BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 44).
71      It should be noted however that when, in opposition proceedings brought on the basis of Article 8 of Regulation No 207/2009, an applicant for an EU trade mark requires, in reliance on Article 42(2) of that same regulation, that the proprietor of the earlier mark on which the opposition is based provides proof that that earlier mark was put to genuine use for the services and goods for which it is registered, the assessment of the likelihood of confusion between the earlier mark and the contested mark will necessarily focus on the goods or services for which proof of genuine use of the earlier mark has been established.
72      In the light of the foregoing considerations, the first plea of law must be rejected.
C.      Third plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009
73      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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.
74      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 should be borne in mind that, in order 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 No 207/2009 exists in part of the European Union (see judgment of 5 May 2015, Skype v OHIM — Sky and Sky IP International (SKYPE), T‑183/13, not published, EU:T:2015:259, paragraph 18 and the case-law cited).
75      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to 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 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 17 and the case-law cited).
76      Further, that global assessment of a 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 low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
77      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, inter alia, 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 judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited, and of 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 28 and the case-law cited).
1.      The relevant public
78      In paragraph 33 of the contested decision, the Board of Appeal found that the goods in question principally targeted the public at large, but also, for some of them, such as ‘pharmaceutical preparations’, the professional public. Since the earlier national mark on which the opposition is based is a German mark, the Board of Appeal considered that the relevant public consisted of consumers in Germany presumed to be reasonably well informed and reasonably observant and circumspect. There are no grounds to call those findings into question, and nor are they disputed by the applicant.
2.      Comparison of the signs
(a)    The goods in Class 5 and Class 32
79      The applicant criticises the Board of Appeal for having found that the goods in Class 5 covered by the contested mark were different from ‘protein preparations in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates’ in Class 32 for which the earlier mark PROTI is registered.
80      The applicant submits, in particular, that those goods have the same end users. Thus, ‘protein concentrates as foods supplements for beverage preparation’ for which the earlier mark PROTI is registered is intended for nutritional use including a dietetic use. Consequently, those goods are of course intended to be used in the field of sport and fitness, but can also be used for medical purposes. In the applicant’s submission, it is apparent from the evidence adduced before the Board of Appeal that the goods marketed under the earlier mark PROTI are high in protein content but low in carbohydrates and low in lipids, and that they are enriched with supplements such as vitamins, folic acid, calcium and magnesium. Those goods could therefore be used, as dietetic foodstuffs, for a wide variety of purposes, as an earlier decision of the Board of Appeal recognised, for example as part of a balanced diet or for specific medical purposes. The applicant thus submits that the goods in question could be used, for example as part of supplementary diet treatment of patients presenting high energy and protein needs, to remedy immunodeficiency resulting from chemotherapy or in order to prevent deficiencies associated with pathologies.
81      The applicant further argues that the goods in Class 5 covered by the contested mark and the goods marketed under the earlier mark PROTI may be manufactured by the same undertakings inasmuch as their ingredients are identical. The applicant further argues that those goods are complementary and are offered side by side, for example in pharmacies.
82      It is, moreover, apparent from the evidence that the goods in question are intended solely for use by consumers. Therefore, in the applicant’s submission, given that the goods in question address similar needs, the consumer will perceive them as having the same commercial origin. As the goods in Class 5 covered by the contested mark are available without a prescription, they may be consumed by anyone, like the goods in Class 32 marketed under the earlier mark PROTI. The applicant further observes that the protein concentrates all have a high protein content, which is a decisive factor for finding them to be similar.
83      EUIPO disputes the applicant’s arguments.
84      As a preliminary point, it must be borne in mind that, according to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example the distribution channels of the goods (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
85      Contrary to the applicant’s contentions, the Board of Appeal was correct in finding that the categories of goods ‘pharmaceutical preparations, dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’ in Class 5 had to be distinguished from the categories ‘protein preparations in powder form for beverages supplemented with vitamins or minerals as well as with carbohydrates’ in Class 32, given the main purpose of the goods in question.
86      As the Court has held previously, it is apparent from a combined reading of the content of Classes 5 and 32, their relevant categories, and the explanatory notes relating thereto that the relevant distinguishing criterion is not the liquid and edible nature of the goods, but their main purpose (judgment of 23 January 2014, Sunrider v OHIM — Nannerl (SUN FRESH), T‑221/12, not published, EU:T:2014:25, paragraph 31).
87      In that context, it should be noted, first, that Class 5 of the ninth edition of the Nice Classification, which is applicable in the present case, is entitled ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’. According to the first sentence of the explanatory note for that class, the latter includes ‘mainly pharmaceuticals and other preparations for medical purposes’. During the revision of the ninth edition of the Nice Classification, that first sentence was slightly amended and the reference to ‘preparations for medical purposes’ replaced by a reference to ‘preparations for medical or veterinary purposes’. Secondly, it should be noted that Class 32 of the edition of the Nice Classification applicable in the present case is entitled ‘[b]eers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’. The explanatory note for that class states that it includes ‘mainly non-alcoholic beverages, as well as beer’ and expressly excludes ‘beverages for medical purposes’ from its scope. It follows that the criterion for delimiting the goods in Class 5 from those in Class 32 is the use of the goods in question, that is to say, their main purpose (judgment of 23 January 2014, SUN FRESH, T‑221/12, not published, EU:T:2014:25, paragraph 32).
88      Furthermore, the Court has also held that liquid goods whose main purpose is to quench thirst and which are part of standard human nutrition fall within Class 32, while liquids which are consumed mainly for the purpose of balancing nutritional deficiencies or used for medical purposes in the broad sense fall within Class 5 (see, to that effect, judgment of 23 January 2014, SUN FRESH, T‑221/12, not published, EU:T:2014:25, paragraph 38).
89      In the present case, the applicant submits, in essence, that the goods in Class 32 marketed under the earlier mark PROTI may be used as dietetic foodstuffs, as part of a supplementary nutritional plan for patients presenting high energy and protein needs, and also to prevent the appearance of deficiencies linked to pathologies or old age.
90      It is clear that that assertion is unsupported by the evidence adduced before the Board of Appeal.
91      Firstly, it is apparent from both the affidavit of 1 July 2008 and the brochure of 2008 and the labels bearing the earlier mark PROTI that the powdered protein concentrates marketed under the earlier mark PROTI are unequivocally intended to be used as dietary supplements in the field of sport and fitness.
92      Secondly, as regards the decision of the Second Board of Appeal of EUIPO of 1 April 2010, relied on by the applicant in support of his assertion that the powdered protein concentrates marketed under the earlier mark PROTI may be used for medical purposes, it is settled case-law that decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of any previous decision-making practice of those boards (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR et FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).
93      In so far as the applicant’s argument may be construed as alleging infringement of the principle of equal treatment and the principle of sound administration, it should be borne in mind that although those principles require EUIPO to take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks being improperly registered. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and of 6 November 2014, Popp and Zech v OHIM — Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 91).
94      It should be noted that, in the decision of the Second Board of Appeal of EUIPO referred to by the applicant, the analysis of the similarity between the goods for which the earlier mark PROTI was registered and those covered by the contested mark was based on premises that differ from those of the present case.
95      It is apparent from the decision at issue here that the proprietor of the earlier mark PROTI had made out proof of genuine use of it for all the goods in Class 29 and Class 32 for which it was registered. However, it was held in paragraph 68 above that, in the present case, the applicant had made out proof of the genuine use of the earlier mark PROTI only for the goods in Class 32 for which it had been registered. It is also apparent from the decision of the Second Board of Appeal of EUIPO referred to by the applicant that the goods in Class 5 covered by the contested mark were ‘[d]ietetic substances and food for slimming, adapted for medical use’, whereas in the present case the goods in Class 5 covered by the contested mark are ‘[p]harmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’.
96      It follows that the assessment of the similarity of the goods at issue in the contested decision should not have necessarily led the Board of Appeal to reach the same conclusion as in the decision of the Second Board of Appeal referred to by the applicant.
97      Thirdly, the detail of the composition of the goods in Class 32 marketed by the applicant under the earlier mark PROTI, which is on the labels produced by the applicant before the Board of Appeal, indeed shows that those goods are high in protein content but low in carbohydrates and low in lipids, and that they are enriched with supplements such as vitamins, folic acid, calcium and magnesium. However, it cannot be inferred therefrom that those goods are directed at the same target groups as the goods in Class 5 covered by the contested mark. The very wording of the trade mark application shows that ‘dietetic substances’, ‘dietetic preparations’ and ‘dietary supplements’, for which registration of the mark PROTICURD is sought, are goods for medical use. Although it is not specified that those goods are available for consumers only by medical prescription, it is clear that they are intended to be used as part of a therapeutic dietary plan, that is to say, a personalised dietary plan to treat or relieve medical pathologies. The use of such goods therefore presupposes intervention by a health care professional and adaptation of the composition of those goods in order to produce the desired therapeutic effects. Yet there is nothing indicating that the goods in Class 32 marketed under the earlier mark PROTI may be so used. Nor is there anything indicating that the dietetic preparations for medical use in Class 5 covered by the contested mark have been adapted in order to enhance athletic performances and physical conditioning.
98      Therefore, the Board of Appeal did not err in finding that the goods in Class 32 marketed under the earlier mark PROTI had a main purpose different from that of the goods in Class 5 covered by the contested mark.
99      This finding is not called into question by the (unsubstantiated) fact that the goods in question could be manufactured in the same plants or by the fact that, in certain cases, those goods may share the same marketing channels, including pharmacies.
100    Moreover, as regards the applicant’s argument alleging complementarity between the goods at issue, it must be stated that, in accordance with the case-law, complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different segments of the public may not be complementary (judgment of 12 December 2014, Ludwig Schokolade v OHIM — Immergut (TrinkFix), T‑105/13, not published, EU:T:2014:1070, paragraph 66). As the goods at issue here have a different main purpose, they cannot be considered complementary.
101    The conclusion is, therefore, that the Board of Appeal did not err in the present case in finding that the goods in Class 32 marketed under the earlier mark PROTI were different from the goods in Class 5 covered by the contested mark.
(b)    The goods in Class 29 and Class 32
102    In paragraph 37 of the contested decision, the Board of Appeal found that, despite their different nature, there was a remote similarity between certain goods in Class 29 covered by the contested mark, namely ‘milk powders, milk beverages, with milk predominating’, and the goods covered by the earlier mark PROTI. The Board of Appeal stated that the milk products at issue are naturally rich in proteins and that, consequently, consumers of the applicant’s goods, such as sportspersons or body builders, could substitute or complement ‘protein preparations in powder form for supplementing beverages’ with milk or milk beverages.
103    The applicant submits that the Board of Appeal erred in finding only that there was a remote similarity between those goods. In the applicant’s submission, those goods are similar since, given their high milk content, ‘[p]reparations, particularly proteins, also supplemented with vitamins and or mineral salts, as well as carbohydrates, each particularly in powder form, for beverage preparation’ in Class 32 are nothing other than ‘milk beverages, with milk predominating’.
104    The applicant further complains that, in applying Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal failed to take account of ‘dietetic foodstuffs not for medical purposes, namely proteins’ in Class 29, for which the mark PROTI is registered, whereas, first, he had made out proof that the mark had been put to genuine use for those goods and, second, those goods were identical or, at the very least, very similar to ‘milk powders, milk beverages, with milk predominating’ in Class 29 covered by the contested mark and also very similar to the other goods covered by that mark.
105    In that regard, it should be noted at the outset that, contrary to the applicant’s contentions and as held in paragraph 68 above, he did not make out proof of genuine use of the earlier mark PROTI during the relevant period for ‘dietetic foodstuffs not for medical purposes, namely proteins’ in Class 29, for which the mark is registered. The Board of Appeal was therefore not required, in its assessment of the relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009, to ascertain the similarity between those goods and the goods in Class 29.
106    It is also appropriate to reject the applicant’s argument to the effect that the Board of Appeal ought to have found that there was a similarity between the goods ‘[m]ilk powders, milk beverages, with milk predominating’ in Class 29 covered by the contested mark and the goods in Class 32 marketed under the earlier mark PROTI, on the ground that, given their high milk content, the latter must be considered to be milk beverages, with milk predominating. As rightly pointed out by EUIPO, ‘[p]reparations, particularly proteins, also supplemented with vitamins and or mineral salts, as well as carbohydrates, each particularly in powder form, for beverage preparation’ are specific nutritional supplements which share the common ingredient of proteins with milk but differ from milk in terms of their nature, manufacturers, distribution channels and their end consumers. It follows that the Board of Appeal did not err in finding that there was only a remote similarity between the goods in the category ‘milk powders, milk beverages, with milk predominating’, as included in Class 29, covered by the contested mark and the ‘[p]reparations, particularly proteins, also supplemented with vitamins and or mineral salts, as well as carbohydrates, each particularly in powder form, for beverage preparation’ in Class 32 covered by the earlier mark PROTI.
3.      Comparison of the signs
107    In paragraph 43 of the contested decision, the Board of Appeal found that, visually and aurally, the conflicting signs were similar to a medium degree, as the earlier sign is fully contained at the beginning of the contested sign.
108    The applicant submits that the German public has a good knowledge of English, which is the language of world trade. The English term ‘curd’, which is translated as ‘quark’ in German, provides only an indication of the composition and the origin of the proteins contained in the goods marketed under the mark PROTI. Accordingly, in the applicant’s submission, a large segment of the professional public will tend to consider the term ‘curd’ as descriptive. Therefore, the similarity of the conflicting signs is even above average.
109    In that regard, it should be noted that the English term ‘curd’ or ‘curds’ (curdled milk) is a name generally designating a white substance that forms when milk coagulates, used as a basis for the production of cheese. As rightly pointed out by EUIPO, it is not part of the usual English vocabulary of the German-speaking general public or professional public segment. It is also noteworthy that there is no similarity between the English term ‘curd’ and its counterpart in German, ‘quark’. Accordingly, contrary to the position advocated by the applicant, the German public will not tend to consider the term ‘curd’ as descriptive.
110    It follows that, since the word sign PROTI is found entirely at the beginning of the word sign PROTICURD and it is settled case-law that consumers normally attach more importance to the beginnings of words (see judgment of 15 June 2017, Fakro v EUIPO — Saint Gobain Cristalería (climaVera), T‑457/15, not published, EU:T:2017:391, paragraph 57 and the case-law cited), the Board of Appeal did not err in finding that, visually and aurally, the conflicting signs were similar to a medium degree.
4.      Overall assessment of the likelihood of confusion
111    In paragraph 47 of the contested decision, the Board of Appeal found that there was no likelihood of confusion for the goods in Class 5 inasmuch as they were different from the goods in Class 32 covered by the earlier mark. With regards to the other goods, the Board of Appeal found that the level of attention of the general public varies from average to above average. As regards protein concentrates, the Board of Appeal found that consumers were quite attentive when purchasing them, as protein concentrates entail health risks if not used properly. For other milk products, the public’s attention is not above average. The Board of Appeal further stated that the evidence did not show that the earlier mark had acquired distinctive character through use which, incidentally, the applicant had not claimed. The Board of Appeal found, however, that, contrary to the contentions of the Compagnie laitière européenne, the earlier mark PROTI was not entirely lacking in distinctive character. The Board of Appeal found that the distinctive character of the earlier mark was normal, even though the term PROTI could allude to the German term ‘protein’ and that, aurally, the sign were similar to a medium degree. The Board of Appeal accordingly found that, given those factors, there was a likelihood of confusion for ‘whey proteins; proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’, for which registration of the mark PROTICURD was sought.
112    The applicant submits that, due to the high degree of similarity between the goods in Class 5 covered by the contested mark and the goods in Class 32 covered by the earlier mark, the Board of Appeal was incorrect in finding that there was no likelihood of confusion between the conflicting signs for those goods.
113    The applicant further criticises the Board of Appeal for having found that consumers were ‘quite attentive’ when purchasing protein concentrates, which entailed ‘health risks’. In the applicant’s submission, the relevant public’s level of attention will be particularly high when professionals are involved, as they will understand the term ‘curd’ as descriptive. Moreover, the goods in Class 5 covered by the contested mark do not entail any particular health risks, as demonstrated by the fact that the list of the goods at issue does not indicate that they must be obtained by medical prescription.
114    The applicant also criticises the Board of Appeal for having found that there was no likelihood of confusion between the conflicting signs for certain goods in Class 29 covered by the contested mark, namely ‘milk powders, milk beverages, with milk predominating’. The applicant submits that there is a high degree of similarity between those goods and those in Class 32 and Class 29 covered by the earlier mark PROTI, which ought to have led the Board of Appeal to find that there was a likelihood of confusion between the conflicting signs for those goods.
115    The applicant further criticises the Board of Appeal for having found that he had not proven that he was the proprietor of a family of trade marks, when he did in fact show that he had made genuine use of the earlier marks PROTIPLUS and Proti Power which, by definition, make up a family of trade marks, and that he is the only one in Germany to use the descriptive component ‘proti’ together with various descriptive components such as ‘4-k’, ‘xxl’, ‘pudding’ or ‘85’ as a trade mark. In the applicant’s submission, as the term ‘curd’ is descriptive, the word mark PROTICURD will be perceived easily by the relevant public as belonging to that family of trade marks.
116    In that regard, firstly, as regards the assessment of the likelihood of confusion between the conflicting signs for the goods in Class 5 covered by the contested mark and the goods in Class 32 covered by the earlier mark, it should be borne in mind that, in accordance with settled case-law, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, the likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered, and that those conditions are cumulative (see judgment of 23 January 2014, OHIM v rihaWeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 41 and the case-law cited).
117    Thus, where there is no similarity between the earlier mark and the mark applied for, the distinctive character of the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue (judgment of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 42).
118    Similarity of the marks in question is thus a necessary condition for it to be found that there is a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009. Accordingly, the lack of similarity between the marks at issue renders Article 8 of Regulation No 207/2009 inapplicable (judgment of 23 January 2014, OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 44).
119    Since the Board of Appeal found, correctly, that there was no similarity between the goods in Class 5 covered by the contested mark and the goods in Class 32 covered by the earlier mark, it was also correct to hold that one of the conditions necessary for finding that there was a likelihood of confusion for those goods was not met in the present case.
120    That finding is not called into question by the applicant’s argument to the effect that the Board of Appeal erred in finding that the goods in Class 5 covered by the contested mark entailed health risks. It is in fact clear that that argument is based on an incorrect reading of the contested decision. Thus, as is apparent from paragraph 48 of the contested decision, the Board of Appeal’s statement about the health risks posed by protein concentrates does not concern the goods in Class 5 covered by the contested mark, but rather the goods marketed by the applicant under the earlier mark PROTI in Class 32, and also ‘whey proteins, proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes’, as included in Class 29 and covered by the contested mark.
121    Nor is it possible to uphold the applicant’s argument to the effect that the relevant public will understand the term ‘curd’ as descriptive inasmuch as it is composed in part of professionals, who must be deemed to be particularly attentive. It must be remembered that, as observed in paragraph 109 above, the term ‘curd’ is not part of the usual English vocabulary of the German-speaking general public or professional public segment.
122    Secondly, the applicant’s argument, to the effect that the Board of Appeal ought to have taken account, at the stage of the overall assessment of the likelihood of confusion between conflicting signs, of the high degree of similarity existing between the goods ‘milk powders, milk beverages, with milk predominating’ in Class 29 covered by the contested mark and the goods in Class 32 and in Class 29 covered by the earlier mark, is based on incorrect premises. It should be borne in mind that, as held in paragraph 105 above and contrary to the applicant’s contentions, he had not made out proof that genuine use had been made of the earlier mark for the goods in Class 29 for which that mark was registered. It should also be borne in mind, as held in paragraph 106 above, that the Board of Appeal was correct in finding that there was only a remote similarity between the goods ‘milk powders, milk beverages, with milk predominating’ in Class 29 covered by the contested mark and the goods in Class 32 covered by the earlier mark.
123    Thirdly, the applicant’s argument alleging that the word mark PROTICURD will be perceived by the relevant public as belonging to a family of trade marks comprising the distinctive word component ‘proti’, combined with different descriptive suffixes, again, it should be noted that, contrary to the applicant’s contentions, the term ‘curd’ is not part of the usual English vocabulary of the relevant public and accordingly will not be construed by it as descriptive, with the result that there is no reason why the word mark PROTICURD should be perceived by the relevant public as belonging to such a family of trade marks.
124    It follows from the Court’s findings in its assessment of the third plea in law that, aurally and visually, the conflicting signs are similar to a medium degree, the relevant public’s level of attention varies from average to above average, the distinctive character of the earlier mark is normal, the goods in Class 5 covered by the contested mark are different from the goods in Class 32 for which the earlier mark is registered and there is a remote similarity between the ‘milk powders, milk beverages, with milk predominating’, as included in Class 29 and covered by the contested mark and the goods in Class 32 for which the earlier mark is registered.
125    Accordingly, the Board of Appeal was correct to find that there was no likelihood of confusion between the conflicting signs for the ‘[p]harmaceutical preparations; dietetic substances for medical purposes, dietetic preparations, dietary supplements, parapharmaceutical products, all for medical purposes’ in Class 5 and for the goods ‘milk powders, milk beverages, with milk predominating’ in Class 29.
126    In the light of the foregoing considerations, the third plea in law must be rejected and the action in its entirety must therefore be dismissed.
Costs
127    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.
128    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mr Bernhard Rintisch to pay the costs.
Collins
Kancheva
De Baere
Delivered in open court in Luxembourg on 19 April 2018.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.