JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
6 September 2023 (*)
(EU trade mark – Invalidity proceedings – EU word mark YIPPIE! – Earlier EU word mark Yuppie – Relative ground for invalidity – Likelihood of confusion – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) – Genuine use of the earlier mark – Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001))
In Case T‑45/22,
Weider Germany GmbH, established in Hamburg (Germany), represented by T. Pfeifer and N. Böhmer, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and E. Markakis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Den i Nosht OOD, established in Gorna Oryahovitsa (Bulgaria), represented by I. Pakidanska, lawyer,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse and B. Ricziová (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 23 March 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Weider Germany GmbH, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 November 2021 (Case R 2227/2020-1) (‘the contested decision’).
Background to the dispute
2        On 21 June 2019, the intervener, Den i Nosht OOD, filed an application for a declaration of invalidity with EUIPO in respect of the EU word mark YIPPIE!, which had been registered on 17 June 2014 under the number 12411567 following an application filed on 11 December 2013.
3        The goods covered by the contested mark were in 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 corresponded to the following description: ‘Cereal bars and energy bars; snack bars containing a mixture of cereals, nuts and dried fruit (confectionery); confectionery bars’.
4        The application for a declaration of invalidity was made in respect of all the goods referred to in paragraph 3 above and was based on, inter alia, the earlier EU word mark Yuppie (‘the earlier mark’), which was registered on 25 July 2012 under the number 10 134 963 and covers goods in Class 30 corresponding to the following description: ‘Pastry and confectionery; dry biscuits; biscuits with chocolate spread; candy; wafers; chocolate wafers; wafers with filling; coated wafers; biscuits’.
5        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 60(1)(a) of 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), read in conjunction with Article 8(1)(b) of that regulation.
6        Following a request before the Cancellation Division made by the applicant, EUIPO requested that the intervener furnish proof of genuine use of the earlier mark. The intervener complied with that request within the time limit set with regard to some of the goods, referred to in paragraph 4 above, in respect of which that mark had been registered.
7        On 25 September 2020, the Cancellation Division upheld the application for a declaration of invalidity in so far as it was based on the earlier mark.
8        On 24 November 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9        By the contested decision, the Board of Appeal dismissed the appeal, on the ground, in essence, first, that the evidence adduced by the intervener proved genuine use of the earlier mark for the purposes of Article 64(2) of Regulation 2017/1001 and, secondly, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of that regulation.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        uphold the appeal against the decision of the Cancellation Division;
–        order EUIPO to pay the costs of the proceedings before the General Court and order the intervener to pay the costs of the invalidity proceedings and the appeal proceedings before EUIPO.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The determination of the regulation which is applicable ratione temporis
12      Given the date on which the application for registration of the contested mark was filed, namely 11 December 2013, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
13      In that regard, it must be pointed out that Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001) must be regarded as constituting a substantive rule, since it defines the period or periods in respect of which the proprietor of the earlier EU trade mark is required to furnish proof of genuine use of its mark (judgment of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO – Battista Nino Caffè (BATTISTINO), T‑221/18, not published, EU:T:2019:382, paragraph 20).
14      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 8(1)(b), Article 60(1)(a) and Article 64(2) of Regulation 2017/1001 must be understood as referring, respectively, to Article 8(1)(b), Article 53(1)(a) and Article 57(2) of Regulation No 207/2009. Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001 and of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
Substance
15      The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 57(2) of Regulation No 207/2009 and, secondly, infringement of Article 8(1)(b) of that regulation.
The first plea, alleging infringement of Article 57(2) of Regulation No 207/2009
16      By its first plea, the applicant complains, in essence, that the Board of Appeal accepted the proof of the use of the earlier mark on the basis of probabilities and assumptions and not concrete and objective evidence. According to the applicant, genuine use of the earlier mark has not been proved.
17      EUIPO and the intervener dispute the applicant’s arguments.
18      It must be pointed out at the outset that, according to Article 57(2) of Regulation No 207/2009, if the proprietor of the EU trade mark so requests, the proprietor of an earlier EU trade mark, being a party to the invalidity proceedings, is to furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his or her application, or that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect the application for a declaration of invalidity is to be rejected. If the earlier trade mark has been used in relation to part only of the goods or services for which it is registered, it is, for the purpose of the examination of the application for a declaration of invalidity, to be deemed to be registered in respect only of that part of the goods or services.
19      There is genuine use of a trade mark where the mark 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 is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 4 April 2019, Hesse and Wedl & Hofmann v EUIPO (TESTA ROSSA), T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 29 and the case-law cited).
20      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 (see judgment of 4 April 2019, TESTA ROSSA, T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 30 and the case-law cited).
21      Under Article 10(3) and (4) of Delegated Regulation 2018/625, the indications and evidence of use must establish the place, time, extent and nature of use of the trade mark for the goods or services in respect of which it is registered and the evidence is to be limited to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) of Regulation 2017/1001.
22      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 (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited). 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 (see judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 66 and the case-law cited).
23      Consequently, it is not necessary for each item of evidence to give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use. Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning (see judgment of 1 June 2022, Worldwide Machinery v EUIPO – Scaip (SUPERIOR MANUFACTURING), T‑316/21, not published, EU:T:2022:310, paragraph 25 and the case-law cited).
24      However, genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (see judgment of 4 April 2019, TESTA ROSSA, T‑910/16 and T‑911/16, EU:T:2019:221, paragraph 31 and the case-law cited).
25      It is in the light of the abovementioned principles that the present plea must be examined.
26      The Board of Appeal found, in paragraph 23 of the contested decision, that, in accordance with Article 57(2) of Regulation No 207/2009, the intervener had to furnish proof of genuine use of the earlier mark in respect of the period from 21 June 2014 to 20 June 2019 (‘the relevant period’). The parties do not dispute that finding.
27      In order to prove genuine use of the earlier mark, the intervener submitted the following evidence:
–        44 invoices issued by DAY AND NIGHT LTD, a company established in Bulgaria, which were sent to customers established in Cyprus, Hungary, Spain and the United Kingdom, are dated 2017, 2018 and 2019 and refer to the sale of, inter alia, Yuppie wafers and/or Yuppie mini-wafers, including 43 invoices which were issued during the relevant period (‘the 43 sales invoices’);
–        invoices dated 2017 and 2018 relating to the participation of Day and Night LTD in the sweets and snacks trade fairs (Internationale Süßwarenmesse) in Cologne (Germany) (‘the Cologne trade fairs’) in 2018 and 2019, images of the exhibition space with Yuppie wafers and a final report for 2019 regarding that trade fair;
–        an undated product catalogue showing Yuppie biscuits and Yuppie wafers (‘the catalogue’).
–       The place of use of the earlier mark
28      The Board of Appeal found that it was apparent from the sales invoices that the place of use of the earlier mark corresponded to Cyprus, Hungary, Spain and the United Kingdom.
29      The applicant complains that the Board of Appeal relied, in order to find that the earlier mark had been used in the European Union, on sales invoices which mention DAY AND NIGHT LTD as the seller and include the stamp of that company with the expression ‘Day & Night LTD’, although it had not been shown that that name and stamp designated the intervener. Furthermore, the applicant claims that, since the Board of Appeal did not examine the other evidence submitted by the intervener, it cannot be proved that the intervener used the earlier mark in the European Union. Moreover, the applicant submits that that other evidence also does not serve to substantiate the use of that mark in the territory of the European Union.
30      EUIPO and the intervener dispute the applicant’s arguments.
31      In the present case, as regards the place of use of the earlier mark, it must be pointed out that it is expressly stated in point 4 of the extract from the Bulgarian commercial register, which was produced by the intervener, that the intervener’s name in Bulgarian, namely ден и нощ, which corresponds in Latin characters to the name Den i Nosht, is translated into English by the expression ‘day and night’. It is thus apparent from that register that the intervener is referred to in turn by the names ден и нощ or DAY AND NIGHT. Moreover, the address of the principal place of business in point 5 of that document is identical to that on the 43 sales invoices and the value added tax (VAT) number mentioned on those invoices corresponds to the number mentioned in point 1 of the extract from the Bulgarian commercial register.
32      It follows that the name of the company on the 43 sales invoices refers to the intervener and that those invoices do indeed refer to the intervener’s activity in the territories of Cyprus, Hungary, Spain and the United Kingdom.
33      For the sake of completeness, as EUIPO correctly notes, it must be stated that Article 15(2) of Regulation No 207/2009 (now Article 18(2) of Regulation 2017/1001) provides that use of the EU trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor. Moreover, the Court has had occasion to point out that, where the proprietor of a trade mark maintains that the use of an earlier trade mark by a third party constitutes genuine use, he or she claims, by implication, that he or she consented to that use (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 24 et seq.).
34      Consequently, even if the names ден и нощ and DAY AND NIGHT were to correspond to two separate companies, which has not been established in the present case, that would not in any way call into question the Board of Appeal’s analysis regarding the place of use.
35      The Board of Appeal did not therefore make any error of assessment in finding that the sales invoices proved that the place of use corresponded to Cyprus, Hungary, Spain and the United Kingdom. Consequently, is not necessary to examine the applicant’s arguments regarding the other evidence adduced by the intervener which the Board of Appeal did not use in order to determine the place of use.
–       The time of use of the earlier mark
36      The Board of Appeal found that most of the evidence submitted by the intervener dated from the relevant period and that, although the catalogue was not dated, images of goods and product packaging could serve to show how the earlier mark had been used in relation to the goods concerned and to provide information regarding the type of goods that the intervener manufactured and marketed. Those images and that packaging could therefore not be ignored in the overall assessment of the evidence.
37      The applicant submits that, for the same reasons as those put forward regarding the place of use, the sales invoices do not prove genuine use of the earlier mark during the relevant period. Furthermore, the applicant states that the documents relating to the Cologne trade fairs do not prove that the intervener took part in those fairs and that the catalogue, in particular, does not contain any indication as regards the period during which, or the time when, the earlier mark was used.
38      EUIPO and the intervener dispute the applicant’s arguments.
39      As regards the time of use of the earlier mark, it is apparent from Article 15(1) of Regulation No 207/2009 (now Article 18(1) of Regulation 2017/1001) that it is sufficient that a trade mark has been put to genuine use during a part of the relevant period (see judgment of 27 April 2022, LG Electronics v EUIPO – Anferlux-Electrodomésticos (SmartThinQ), T‑181/21, not published, EU:T:2022:247, paragraph 63 and the case-law cited).
40      In the present case, as has been stated in paragraph 27 above, the 43 sales invoices are dated 2017, 2018 and 2019 and fall within the relevant period. The fact that those invoices were issued by the intervener has already been established in paragraphs 31 and 32 above. The Board of Appeal did not therefore make any error of assessment in finding that those invoices were relevant with regard to the period referred to.
41      As regards the documents relating to the Cologne trade fairs, to which the Board of Appeal implicitly refers in paragraph 40 of the contested decision, it must be held that it is apparent from the two invoices mentioning the periods during which those trade fairs were held, namely during the months of January 2018 and January 2019, that those trade fairs fall within the relevant period. So far as concerns the applicant’s argument calling into question the fact that those invoices were issued by the intervener, it must be stated that that argument must be rejected for the same reasons as those set out in paragraph 31 above. Although the evidential value of those invoices and of the photographs of the trade fairs is limited, the fact remains that they are additional relevant items of evidence which may be taken into account in the context of the overall assessment as to whether the use of the earlier mark is genuine, since those items of evidence are accompanied by the relevant sales invoices (see, to that effect, judgments of 6 March 2014, Anapurna v OHIM – Annapurna (ANNAPURNA), T‑71/13, not published, EU:T:2014:105, paragraph 45, and of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 51).
42      The same is true of the catalogue which, although undated, may be taken into account in the overall assessment as to whether the use of the earlier mark is genuine. The catalogue contains images of the goods and descriptions of those goods. Those descriptions correspond to those on the invoices. By way of example, the description of the product ‘wafer “Yuppie” with peanuts and cocoa coating 43g’, which is illustrated on page 67 of the catalogue, corresponds to the description of the product on invoice No 0009002246 of 29 October 2018, which falls within the relevant period. The catalogue thus provides information which bears out the type of goods marketed.
43      Consequently, the Board of Appeal did not make any error of assessment in finding that use of the earlier mark during the relevant period had been proved.
–       The extent of use of the earlier mark
44      The Board of Appeal found that the evidence provided by the intervener, as a whole, provided conclusive proof of the actual and continuous use of the earlier mark during the relevant period and showed a sufficient frequency and duration of the intervener’s commercial acts to fulfil adequately the requirement relating to the extent of use provided for in Article 10(3) of Delegated Regulation 2018/625. In particular, the Board of Appeal observed that the documents filed, namely the catalogue, the intervener’s participation in the Cologne trade fairs and the invoices, provided sufficient information concerning the commercial volume, territorial scope, duration and frequency of use of the earlier mark.
45      The applicant claims that, for the same reasons as those put forward in paragraph 29 above, the sales invoices do not prove the extent of use of the earlier mark. As regards the catalogue, the applicant submits, in the first place, that it does not, in the light of the company to which it relates, constitute appropriate evidence. In the second place, it claims, relying on the case-law, that that catalogue is neither appropriate evidence nor an indication which is sufficient to show the extent of use in the context of the overall assessment, in the light in particular of the fact that it does not make it possible to determine when and where it was used. In the third place, the applicant submits that, since, in the present case, the link between the catalogue and the sales invoices has not been established, those invoices cannot be taken into account on a supplementary basis.
46      EUIPO and the intervener dispute the applicant’s arguments.
47      In order to assess 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 (see judgment of 23 March 2022, Vetpharma Animal Health v EUIPO – Deltavit (DELTATIC), T‑146/21, not published, EU:T:2022:159, paragraph 74 and the case-law cited).
48      In the present case, it is important to note that the intervener provided, before the Board of Appeal, 43 invoices covering the years 2017, 2018 and 2019, which fall within the relevant period and refer to the sale of goods covered by the earlier mark. As has been pointed out in paragraphs 31 and 32 above, those invoices were indeed issued by the intervener. Furthermore, it must be stated that the applicant does not directly dispute either the Board of Appeal’s assessment, in paragraph 43 of the contested decision, that those invoices represent a significant amount of sales in view of the low price of the goods concerned or the assessment that those invoices are representative since the reference numbers are not consecutive and that those invoices may therefore form a sample batch consisting of more invoices.
49      As regards the catalogue, it must, first of all, be held that it was submitted by the intervener, since, as is apparent from paragraph 31 above, the name DAY AND NIGHT designates the intervener. Next, it must be stated that the applicant cannot rely on the Court’s factual analysis in paragraphs 39 and 40 of the judgment of 8 July 2010, Engelhorn v OHIM – The Outdoor Group (peerstorm) (T‑30/09, EU:T:2010:298), which was specific to that case, in order to conclude that the catalogue could not be taken into account in the absence of any indication regarding the territorial and temporal scope of the use. In the light of the case-law which has been referred to in paragraph 23 above, it is not necessary for each item of evidence to give information about all four elements to which proof of genuine use must relate.
50      Likewise, it is necessary to reject the applicant’s argument suggesting that the Board of Appeal relaxed the criterion applying to the examination of proof of use. The Board of Appeal, contrary to the Court’s analysis in the judgment of 15 July 2015, TVR Automotive v OHIM – TVR Italia (TVR ITALIA) (T‑398/13, EU:T:2015:503), on which the applicant relies, did not find that, in the present case, it was in particular the catalogue which proved the extent of use and that the provision of invoices was not necessary in that regard. The Board of Appeal merely took that catalogue into account as one item of evidence, among others, in particular sales invoices, in the context of the assessment of the extent of use of the earlier mark. Furthermore, as regards the applicant’s argument alleging that there is no link between the catalogue and the sales invoices, reference should be made to the analysis carried out in paragraph 42 above.
51      Consequently, the Board of Appeal did not make any error of assessment in finding that the documents filed by the intervener provided sufficient information regarding the commercial volume, territorial scope, duration and frequency of use of the earlier mark.
–       The nature of use of the earlier mark
52      The Board of Appeal found that the catalogue and the invoices showed that the earlier mark had been used on the goods themselves to identify their commercial origin.
53      The applicant submits that the invoices do not show that the earlier trade mark was affixed to the goods themselves. It contends that it is thus only on the basis of a presumption of a link between the sales invoices and the catalogue that the Board of Appeal could have concluded that those two items of evidence, considered together, proved that the sales invoices related to goods to which the earlier mark had been affixed in a way that could be seen in the catalogue.
54      EUIPO and the intervener dispute the applicant’s arguments.
55      EUIPO correctly states that, for the purposes of the assessment of genuine use of a mark, it is not necessary to show use involving the physical affixing of the mark to the goods in question or the packaging of those goods (judgment of 12 December 2014, Ludwig Schokolade v OHIM – Immergut (TrinkFix), T‑105/13, not published, EU:T:2014:1070, paragraph 28). Although the existence of a link between the product and the trade mark must indeed be established and although that link generally takes the form of the mark being affixed to the goods, such affixing is not in itself absolutely necessary (see judgment of 17 September 2019, Rose Gesellschaft v EUIPO – Iviton (TON JONES), T‑633/18, not published, EU:T:2019:608, paragraph 58 and the case-law cited).
56      Consequently, it is not apparent either from the relevant legislation or from the case-law that the nature of use of the mark must necessarily be proved by means of goods or their packaging to which that mark has been affixed. However, it must be pointed out that, in the present case, all the sales invoices provided by the intervener show that wafers or mini-wafers covered by the mark Yuppie were delivered. Since those invoices were assessed in relation to the catalogue showing goods bearing the earlier mark, the Board of Appeal could therefore, without making any error of assessment, find that the earlier mark had been used on the goods themselves. As regards the link between the catalogue and the sales invoices, reference should be made to the analysis carried out in paragraph 42 above.
57      It follows from all of the foregoing considerations that the Board of Appeal did not make an error of assessment in finding that genuine use of the earlier mark had been proved. The first plea must therefore be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
58      By its second plea, the applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in finding that there was a likelihood of confusion within the meaning of that provision.
59      Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof, on application by the proprietor of an earlier mark, a registered EU trade mark must be declared invalid 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.
60      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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 judgments 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, and of 21 March 2019, Pan v EUIPO – Entertainment One UK (TOBBIA), T‑777/17, not published, EU:T:2019:180, paragraph 37 and the case-law cited).
61      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that there was in, the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
–       The relevant public
62      The Board of Appeal pointed out, in paragraphs 58 and 59 of the contested decision, that the relevant public corresponded, in the light of the nature of the goods at issue, to the general public in the European Union and that its level of attention was average. The applicant does not dispute those findings.
–       The comparison of the goods
63      The Board of Appeal noted that the goods at issue were similar to at least an average degree and that they were goods which were in competition with each other, which originated from the same producers and the same distribution channels and were aimed at the same public. In particular, it rejected the argument that the goods at issue were not similar inasmuch as the goods covered by the contested mark were intended for health-conscious, active and sportive consumers, whereas the goods covered by the earlier mark were sugary sweets.
64      The applicant claims that there is at most only a low degree of similarity between the goods at issue, since the cereal bars and energy bars covered by the contested mark, which contain a mixture of cereals, nuts and dried fruits, and, in particular, the sugary wafers covered by the earlier mark are not goods which are in competition with each other.
65      EUIPO and the intervener dispute the applicant’s arguments.
66      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, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
67      It must be pointed out that it is apparent from paragraph 54 of the contested decision that the intervener provided proof of genuine use only in respect of goods in Class 30 corresponding to ‘pastry and confectionery, namely wafers; biscuits with chocolate spread, namely wafers with chocolate spread; wafers; chocolate wafers; wafers with filling; coated wafers; biscuits, namely wafers’. Consequently, the examination must be limited to those goods alone.
68      It is important to note that the applicant does not dispute the Board of Appeal’s finding that the goods at issue originate from the same producers and the same distribution channels.
69      Furthermore, the Board of Appeal pointed out that the goods at issue were, with regard to each of the marks at issue, packaged snack foods ready for consumption and could satisfy the needs of fast and easy consumption snack foods between meals. It also stated, regarding the goods covered by the earlier mark, that wafers could also constitute a sugar-free and healthy snack and that it could not be ruled out that consumers of cereal bars would also consume wafers.
70      In that regard, the applicant submits, inter alia, that the goods covered by the earlier mark are not suitable as substitutes for the nutritious bars covered by the contested mark, since the goods covered by the contested mark are aimed at health-conscious and active consumers. However, that line of argument is not, on its own, capable of calling into question the Board of Appeal’s finding that the goods covered by the earlier mark may also constitute a healthy snack and the goods at issue may satisfy the same needs. Furthermore, it cannot be ruled out that health-conscious consumers may also consume wafers.
71      Consequently, the applicant’s claim that the Board of Appeal made an error of assessment in finding that the goods concerned were similar to at least an average degree must be rejected.
–       The distinctive character of the earlier mark
72      The Board of Appeal pointed out, in essence, that the intervener had not claimed that the earlier mark was particularly distinctive on account of intensive use or reputation and that, in the light of the fact that that mark had no meaning with regard to any of the goods in question, its distinctiveness had to be regarded as average in degree.
73      The applicant claims that the earlier mark has only a below-average degree of distinctiveness, because it is conceived of as an advertising message. According to the applicant, the relevant public will inevitably establish a link between the earlier mark and the term ‘yuppies’, which refers to a group of young middle-class people who have a well-paid job and aggressively flaunt their success. It argues that the earlier trade mark will thus be understood as an indication that the goods which bear that mark are intended for an idolised and envied group of people and are particularly suited to the leading of a lifestyle to which everyone aspires. It contends that the earlier mark therefore contains a clear advertising statement about the quality of the goods thus designated and is laudatory in nature.
74      EUIPO and the intervener dispute the applicant’s arguments.
75      As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the recognition of the trade mark on the market. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
76      For a trade mark to possess distinctive character for the purposes of Regulation No 207/2009, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited). That distinctive character must be assessed, first, by reference to those goods or services and, secondly, by reference to the perception of the mark by the relevant public, which consists of average consumers of those goods or services, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 34 and the case-law cited).
77      In the first place, it must be pointed out that the applicant disputes the Board of Appeal’s finding, in paragraph 67 of the contested decision, that the earlier mark may be associated with an exclamation of joy and surprise in France and Bulgaria. However, the applicant does not put forward any specific argument which is capable of calling into question the finding that, in France, the term ‘youppie’ is the phonetic equivalent of the term ‘youpi’, which is frequently used there, and that the Bulgarian transliteration of the word ‘yuppie’, namely ‘ЮПИ’, is also associated with an exclamation of joy. The applicant merely claims that that meaning does not apply to the earlier mark.
78      In the second place, the Board of Appeal found that the other meaning of the word ‘yuppie’, which had been suggested by the applicant, as being the abbreviated form of the expression ‘young urban professional’, had a rather negative connotation and was very far removed from the goods covered by the earlier mark, with the result that the relevant public was less likely to think of it in the context of cereal bars or wafers. In that regard, it must be stated that, in order to dispute that assessment, the applicant claims that the term ‘yuppie’, referring to a young urban professional, is widespread in the European Union, without, however, providing any evidence whatsoever to substantiate that claim. As regards, in particular, its argument that that term appears in French and Bulgarian dictionaries, it is sufficient to point out that the fact that dictionaries show that a term exists does not in itself necessarily prove that it is a fact that the relevant public, and in particular the general public, is aware of that word (see, to that effect, judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 36).
79      In any event, since the term ‘yuppie’ may have a number of meanings for the relevant public, the Board of Appeal was right in ascertaining the meaning with which the earlier mark was associated as regards the goods at issue, namely that of an exclamation of joy and surprise. In the context of that assessment, it correctly took into account the fact that the concept of ‘young urban professional’ was too far removed from the goods covered by the earlier mark. That concept, which refers to a group of young people who have a well-paid job and aggressively flaunt their success, has a rather negative connotation. Furthermore, the applicant does not explain why the meaning which it suggests should prevail in the relevant public’s perception with regard to those goods.
80      Moreover, it must be borne in mind that, although all marks made up of signs or indications that are also used as advertising slogans convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public. Consequently, a trade mark consisting of an advertising slogan must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (see judgment of 13 July 2022, Rimini Street v EUIPO (WE DO SUPPORT), T‑634/21, not published, EU:T:2022:459, paragraphs 22 and 23 and the case-law cited).
81      Accordingly, even if the earlier mark were to be understood as an advertising message on account of its association with a young urban professional, which the applicant has failed to establish in the present case, that does not, in principle, preclude it from having an average degree of distinctiveness.
82      Consequently, the applicant’s claim that the Board of Appeal made an error of assessment in finding that the degree of distinctiveness of the earlier mark had to be regarded as average must be rejected.
–       The comparison of the signs at issue
83      As regards the comparison of the signs, the Board of Appeal found that the two signs at issue were visually and phonetically similar to a high degree and conceptually identical.
84      The applicant submits, first, that the contested decision is not sufficiently clear as regards the precise degree of similarity between the marks at issue on which the Board of Appeal relied in the context of its examination and, secondly, that the Board of Appeal made an error of assessment in finding that those marks were conceptually identical for part of the relevant public. In that regard, the applicant submits that the conceptual content of those two signs is different, since the earlier mark has a clear and specific meaning, because it is understood as referring to the term ‘yuppies’, designating ambitious young professionals, whereas the contested mark is understood as an exclamation of joy.
85      EUIPO and the intervener dispute the applicant’s arguments.
86      In order to assess the degree of similarity between the marks at issue, it is necessary to determine the degree of visual, phonetic and conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, account being taken of the category of goods or services in question and the circumstances in which they are marketed (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 85 and the case-law cited).
87      Accordingly, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more of those relevant aspects (see judgment of 30 January 2018, Arctic Cat v EUIPO – Slazengers (Representation of a member of the cat family jumping to the right), T‑113/16, not published, EU:T:2018:43, paragraph 30 and the case-law cited).
88      As regards the visual and phonetic similarity, the Board of Appeal found, in essence, that the signs at issue were visually and phonetically similar to a high degree. The applicant does not dispute those findings.
89      As regards the conceptual similarity, the Board of Appeal found that the two marks at issue could be associated, at least by part of the relevant public, with an expression of joy and surprise and that the meaning of the earlier mark suggested by the applicant, namely a term referring to an ambitious and well-paid group of young professionals, had a negative and old-fashioned connotation and had, in any event, a meaning which was very far removed from the goods covered by the earlier mark, with the result that the public was less likely to think of it in the context of cereal bars or wafers. Consequently, the marks at issue were, according to the Board of Appeal, conceptually identical.
90      In that regard, it must be stated that both the contested mark and the earlier mark will be associated by at least part of the relevant public with an exclamation of joy. The applicant does not call that finding, in so far as it concerns the contested mark, into question. As regards the applicant’s arguments seeking to call into question the Board of Appeal’s assessments regarding the meaning of the earlier mark, reference should be made to paragraphs 77 to 79 above. The Board of Appeal was therefore right in finding that the marks at issue were conceptually identical.
91      Consequently, the applicant’s argument alleging that the marks at issue are conceptually different must be rejected.
92      Furthermore, in the light of the foregoing, it is clear from the contested decision that the Board of Appeal found that the marks at issue were visually and phonetically similar to a high degree and conceptually identical. Consequently, the applicant’s argument alleging that the contested decision did not state the degree of similarity between the signs at issue with sufficient precision also cannot succeed.
–       The global assessment of the likelihood of confusion
93      The Board of Appeal found, in essence, that there was a likelihood of confusion, since the goods at issue were similar and the marks at issue differed visually and phonetically only in a single letter, namely the vowels ‘i’ and ‘u’, and would both most probably be associated with an exclamation of joy.
94      The applicant claims that the goods at issue are, at best, similar to a below-average degree, that the earlier mark has a limited degree of distinctiveness and that the signs differ significantly conceptually. It submits that, thus, even though the relevant public’s level of attention is to be regarded as average, the differences between the signs at issue are sufficient to rule out any likelihood of confusion on the part of the public.
95      EUIPO and the intervener dispute the applicant’s arguments.
96      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see 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).
97      In the present case, the examination of the applicant’s arguments has not made it possible to call into question the Board of Appeal’s findings that, first, the goods at issue are similar to an average degree, secondly, the marks at issue are visually and phonetically similar to a high degree and are conceptually identical and, thirdly, the earlier mark has an average degree of distinctiveness. In those circumstances, and although it is common ground that the relevant public displays an average level of attention, it must be held that the Board of Appeal did not make any error of assessment in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
98      In view of all of the foregoing considerations, the second plea must be rejected and, as a result, the action must be dismissed in its entirety.
Costs
99      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.
100    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Weider Germany GmbH to pay the costs.
Kowalik-Bańczyk
Hesse
Ricziová
Delivered in open court in Luxembourg on 6 September 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.