JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
22 November 2018 (*)
(EU trade mark — Opposition proceedings — Application for registration of the EU word mark FERMIN — Earlier international and Benelux word marks FERMIPAN — Relative ground for refusal — Article 8(1)(b) of Regulation 2017/1001)
In Case T‑78/18,
AB Mauri Italy SpA, established in Casteggio (Italy), represented by B. Brandreth, Barrister, and G. Hussey, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Lesaffre et Cie, established in Paris (France),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 December 2017 (Joined Cases R 2027/2016-4 and R 2254/2016-4), relating to opposition proceedings between AB Mauri Italy and Lesaffre et Cie,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk and C. Mac Eochaidh (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 9 February 2018,
having regard to the response lodged at the Registry of the General Court on 24 April 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 28 June 2012, Lesaffre et Cie filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign FERMIN.
3        The goods in respect of which registration was sought fall within Class 1 and Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 1: ‘Bakery improvers for industrial and craft use; Bread additives; Enzymes for bread-making and fermentation; Flavour enhancers for food’.
–        Class 30: ‘Flour and preparations made from cereals, bread, pastry and confectionery, ices; Honey, treacles; Yeast, Yeast extracts, Bread improvers; Baking powder; Salt; Sour dough, Ferments for pastes, Aromas and aromatic preparations for food; Mixes for bakery products; Bakery mixtures (ready-to-use bread mixes); Yeast-based preparations for bread, pastries and pizza dough’.
4        On 19 November 2012, the applicant, AB Mauri Italy SpA, gave notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all of the goods.
5        The opposition was based on the following earlier word marks:
–        the international mark No 738 462A, FERMIPAN, registered on 20 June 2000 and duly renewed until 2020, designating, inter alia, Denmark, Germany, Greece, Spain, France, Italy, Portugal, Finland and Sweden, for the goods in Class 1 and Class 30 and corresponding, for each of those classes, to the following description:
–        Class 1: ‘Chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products; chemical and biochemical products for preserving foodstuffs’;
–        Class 30: ‘Coffee, tea, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice’.
–        the Benelux trade mark No 665 030, FERMIPAN, registered on 1 October 2000 and duly renewed until 2020, for goods falling within Classes 1 and 30 and corresponding, for each of those classes, to the following description:
–        Class 1: ‘Chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products; chemical and biochemical products for preserving foodstuffs’;
–        Class 30: ‘Coffee, tea, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice’.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
7        By decision of 4 October 2016 the Opposition Division held, first, that the evidence provided by the applicant showed genuine use of the earlier marks for ‘yeast’ in Class 30. Secondly, it held that the word element ‘fermipan’ of the two earlier marks presented a high degree of similarity visually and phonetically with the word element ‘fermin’ of the mark applied for and that it was impossible to undertake a conceptual comparison since the two word signs have no meaning. Thirdly, it found that the following goods were similar to ‘yeast’: ‘Flour; yeast, yeast extracts, bread improvers; baking powder; sour dough, ferments for pastes, mixes for bakery products; bakery mixtures (ready-to-use bread mixes); yeast-based preparations for bread, pastries and pizza dough.’ It therefore partially upheld the opposition in respect of those goods.
8        However, since it found them not to be similar to ‘yeast’, the Opposition Division rejected the opposition in respect of the remaining goods, namely:
–        ‘Bakery improvers for industrial and craft use; Bread additives; Enzymes for bread-making and fermentation; Flavour enhancers for food’ in Class 1;
–        ‘Preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; salt; aromas and aromatic preparations for food’ in Class 30.
9        Both the applicant and Lesaffre et Cie filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. These appeals were assigned to the Fourth Board of Appeal, which joined them.
10      By decision of 4 December 2017 (‘the contested decision’) the Fourth Board of Appeal of EUIPO held that genuine use of the two earlier marks was shown for ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’ in Class 1 and for ‘yeast’ in Class 30. Thus, first, it annulled the decision of the Opposition Division, on the basis of Article 8(1)(b) of Regulation 2017/1001, in so far as it had accepted the opposition and rejected the application for registration of the mark applied for in respect of the following goods in Class 30: ‘mixes for bakery products; bakery mixtures (ready-to-use bread mixes); yeast-based preparations for pastries and pizza dough’. In addition, the Board of Appeal rejected the opposition for those goods. Secondly, it annulled the decision of the Opposition Division in so far as it rejected the opposition for the following goods in Class 1: ‘Bakery improvers for industrial and craft use; Bread additives; Enzymes for bread-making and fermentation; Flavour enhancers for food’. In addition, the Board of Appeal upheld the opposition and rejected the application for registration of the mark applied for in respect of those goods. Finally, it dismissed the remainder of the appeal.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision only in so far as it rejects the opposition to registration of the mark applied for in relation to certain goods in Class 30, namely ‘mixes for bakery products; bakery mixtures (ready-to-use bread mixes); yeast-based preparations for pastries and pizza dough’;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its claim for annulment of the contested decision, the applicant puts forward a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In essence, this single plea is comprised of two complaints.
14      By its first complaint, the applicant submits that the Board of Appeal made an error of assessment in finding that the ‘mixes for bakery products; bakery mixtures (ready-to-use bread mixes); yeast-based preparations for pastries and pizza dough’ in Class 30 and covered by the mark applied for (‘the contested goods’), were not similar to ‘yeast’, included in the same class.
15      By its second complaint, the applicant submits that the Board of Appeal made an error of assessment in finding that the contested goods were not similar to ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’ in Class 1.
16      According to the applicant, that twofold conclusion as to the absence of similarity between the contested goods and the goods for which use of the earlier marks was established was reached following several errors of assessment on the part of the Board of Appeal:
–        the Board of Appeal erred in holding that there was no common purpose to the product ‘yeast’ and the contested goods;
–        the Board of Appeal erred in not considering or in giving inadequate weight to the common purpose of the contested goods and the combination of the goods in Class 1 and Class 30 for which use of the earlier marks was shown;
–        the Board of Appeal erred in not considering or in giving inadequate weight to the evidence of a common consumer, common distribution channels, a common manufacturer and a common end purpose for the contested goods and the goods for which use of the earlier marks was shown;
–        the contested decision is inconsistent in so far as it found that ‘yeast-based preparations for bread’ are similar to ‘yeast’, whereas ‘yeast-based preparations for pastry and pizza dough’, whose purpose is identical to ‘yeast-based preparations for bread’, are not considered similar to ‘yeast’. The two categories of goods ought to have been treated in the same way;
–        the contested decision is also inconsistent in so far as it found, on the one hand, that ‘mixes for bakery products; bakery mixtures (ready-to-use bread mixes)’ are not similar to ‘yeast’ and, on the other hand, that ‘yeast-based preparations for bread’ are similar to ‘yeast’, when such preparations are a sub-set of those mixtures and mixes. This inconsistency is also reinforced by the fact that the Board of Appeal held that ‘yeast’ was similar to ‘flour’, while ‘mixes for bakery products; bakery mixtures (ready-to-use bread mixes)’, which are normally mixes of yeast and flour, were not considered similar to ‘yeast’.
17      In the applicant’s view, the Board of Appeal ought to have held that because of the similarity between the contested goods and the goods for which use of the earlier marks was established, there was a likelihood of confusion.
18      First, EUIPO claims that ‘yeast’ and the contested goods in Class 30 do not have a common purpose. According to EUIPO, the contested goods are intended for the creation of a pastry product or a pizza of a predefined taste and texture whereas the purpose of ‘yeast’ is to define the texture of pastry and bakery products.
19      Similarly, EUIPO considers that the contested goods and ‘yeast’ differ in terms of their nature; ‘yeast’ is a fungus, whereas the contested goods are premixed bakery products which allow finished products to be made simply by adding water.
20      EUIPO concludes from this that the Board of Appeal correctly held that the contested goods in Class 30 and the goods for which use of the earlier marks was established were not similar. That conclusion is not called into question by the fact that the public at which the goods are targeted, as well as the distribution channels of the latter, might coincide, as these two criteria are less significant where the general public is concerned.
21      Secondly, EUIPO submits there is no contradiction in the contested decision where it considers, on the one hand, that ‘yeast-based preparations for pastries and pizza dough’ are not similar to ‘yeast’ and, on the other hand, that ‘yeast-based preparations for bread’ are similar to ‘yeast’. The other party to the proceedings, Lesaffre et Cie, did not dispute the Opposition Division’s decision in respect of ‘yeast-based preparations for bread’, with the result that this category of goods fell outside the scope of the appeal before the Board of Appeal. Therefore, the Board of Appeal was correct in ruling only on ‘yeast-based preparations for pastries and pizza dough’.
22      Thirdly, the applicant has not challenged, according to EUIPO, the Board of Appeal’s finding that the contested goods in Class 30 are not similar to ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’ found in Class 1, for which the use of the earlier marks was established.
23      In view of these elements, the Board of Appeal was, in EUIPO’s submission, correct in holding that, despite the similarity between the signs at issue, any likelihood of confusion for the goods at issue should be ruled out since they were not similar.
24      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of the 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.
25      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. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
26      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, inter alia, their nature, their intended purpose, 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 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).
27      In the present case, firstly, it is apparent from the contested decision that the relevant public is that of Belgium, Denmark, Germany, Greece, Spain, France, Italy, Luxembourg, the Netherlands, Portugal, Finland and Sweden. The relevant public consists of the general public, which has an average level of attention, as well as a specialised public, namely bakeries, whose level of attention is high.
28      Those findings have not been called into question by the parties and so they must be confirmed.
29      Secondly, as regards the similarity of the goods, the Board of Appeal found (i) that the contested goods were not similar to ‘yeast’, since the purpose of these two types of products is different. According to the Board of Appeal ‘yeast’ is intended to define the texture of bakery goods and pastry without influencing the taste of the food while the purpose of the contested goods is the ‘creation of a pastry product or a pizza of a predefined taste and texture in an easy-to-do way which allows the consumer to stay unconcerned about the actual ingredients of the mixture or the preparation’.
30      The Board of Appeal found (ii) that the contested goods were not similar to ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’. It took the view that the latter were all individual substances to be added to other ingredients in order to improve bakery or pastry products, whereas the contested goods were not chemical products to be added, but entire preparations and mixes ready for use in order to make a predefined product such as pastry or pizza dough.
31      As regards the first complaint alleging an error of assessment regarding the similarity of the contested goods and ‘yeast’, it should be pointed out that EUIPO does not dispute the fact that, as the applicant submits, those goods share the same distribution channels and are aimed at the same public.
32      It should also be pointed out that, contrary to what EUIPO claims, ‘yeast’ in Class 30, which mainly includes food of plant origin, and the contested goods have a common purpose inasmuch as they are principally intended to be used for making bakery products.
33      That being so, it must be held that ‘yeast’ and the contested goods are similar.
34      Admittedly, EUIPO argues that those goods are distinguished by their nature: ‘yeast’ is a fungus used in the making of beer and wine or to make bread rise while the contested goods are mixes or preparations which are pre-mixed so as to enable finished products to be made.
35      However, that argument is not sufficient to exclude all similarity between the goods at issue.
36      As is clear from the case-law cited in paragraph 26 above, it is necessary, in assessing the similarity of the goods at issue, to take account of all the relevant factors relating to the goods. Therefore, the fact that the goods at issue differ in their nature is not necessarily sufficient in order to consider them to be dissimilar. In the present case, as has been stated in paragraphs 31 to 33 above, the fact that the goods at issue share the same distribution channels, are aimed at the same public and have a common purpose is likely to create a similarity between them.
37      Moreover, as regards specifically ‘yeast-based preparations for pastry and pizza dough’, it must be observed that the incorrect finding by the Board of Appeal is inconsistent with the ground stated in paragraph 40 of the contested decision, according to which ‘yeast-based preparations for bread’ are ‘at least similar’ to ‘yeast’. Concurring with the applicant, the Court considers that there is, indeed, no reason to treat ‘yeast-based preparations for bread’ and ‘yeast-based preparations for pastry and pizza dough’ differently, when these two categories of products have, as indicated in their headings, ‘yeast’ as a key ingredient. Finally, the Court cannot accept EUIPO’s argument that ‘yeast-based preparations for bread’ did not fall within the scope of the appeal before the Board of Appeal, since it follows from the continuity in terms of their functions between the various adjudicating bodies of EUIPO that, in the review which the Boards of Appeal must undertake of the decisions taken by the EUIPO units which heard the application at first instance, the Boards are required to base their decisions on all the matters of fact and of law which the parties put forward, either in the proceedings before the unit which heard the application at first instance or in the appeal (see judgment of 11 July 2006, Caviar Anzali v OHIM — Novomarket (Asetra), T‑252/04, EU:T:2006:199, paragraph 31 and the case-law cited; judgment of 6 June 2018, Uponor Innovation v EUIPO — Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 80; see also, to that effect, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 57).
38      The Board of Appeal was therefore wrong to conclude that there is no similarity between the contested goods and ‘yeast’.
39      It follows from the foregoing considerations that the Board of Appeal could not, on the sole ground that the contested goods and ‘yeast’ were dissimilar, conclude that there was no likelihood of confusion. The first complaint must therefore be upheld.
40      As regards the second complaint, alleging an error of assessment regarding the similarity of the contested goods and ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’, it must be noted that the applicant asserts, first, that the Board of Appeal erred in failing to take into account or giving inadequate weight to the common purpose of the contested goods and the combination of goods in Class 1 and in Class 30 for which use of the earlier marks had been established and, secondly, that the Board of Appeal erred in failing to take into account or giving inadequate weight to the evidence establishing the existence of the common consumer, common distribution channels, common manufacturer and common purpose for the contested goods and the goods for which use of the earlier marks was established.
41      In that regard, the Board of Appeal held, in paragraphs 44 and 45 of the contested decision, that the contested goods and ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’ in Class 1 and for which genuine use of the earlier marks had been established, were not similar. It considered that the goods in Class 1 were individual substances to be added to other ingredients to improve bakery products or pastry products, whereas the contested goods were, for their part, not chemical products to be added, but entire preparations and mixes ready for use in order to make a predefined product such as pastry or pizza dough.
42      It must be noted that the applicant essentially bases its argument on the similarity between the contested goods and ‘yeast’.
43      In addition, it cannot be concluded, in the absence of any evidence adduced by the applicant in that regard, that ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’ –– taking account of the very description of those goods, which are intended for professionals, and also taking account of the fact that these goods are in Class 1, which mainly includes chemicals used in industry, science and agriculture –– share the same distribution channels as the contested goods.
44      Furthermore, the applicant does not state what the evidence was which it claims to have submitted before EUIPO and which was not taken into account by the Board of Appeal. Nor does the applicant establish that the ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’ and the contested goods are produced by the same manufacturers.
45      Thus, notwithstanding the common purpose claimed by the applicant for ‘chemicals and biochemical products for artisanal use for preparing and improving bakery and pastry products’ and the contested goods, the applicant has not, in the light of the foregoing considerations, shown that the Board of Appeal made an error of assessment in concluding that there was no similarity between those goods. Accordingly, the second complaint must be rejected as unfounded.
46      It follows from all of the foregoing that (i) the first complaint of the single plea must be upheld and, consequently, the contested decision must be annulled in so far as it rejected, for lack of similarity with ‘yeast’ in Class 30, the opposition to registration of the mark applied for in respect of some of the goods in the same class, namely ‘mixes for bakery products; bakery mixtures (ready-to-use bread mixes); yeast-based preparations for pastries and pizza dough’ and (ii) the remainder of the action must be dismissed.
Costs
47      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has essentially been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of EUIPO of 4 December 2017 (Joined Cases R 2027/2016-4 and R 2254/2016–4) in so far as it rejected, for lack of similarity with ‘yeast’ in Class 30, the opposition to registration of the word mark FERMIN in respect of some of the goods in the same class, namely ‘mixes for bakery products; bakery mixtures (ready-to-use bread mixes); yeast- based preparations for pastries and pizza dough’;
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO to pay, in addition to its own costs, those incurred by AB Mauri Italy SpA.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 22 November 2018.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.