JUDGMENT OF THE GENERAL COURT (Second Chamber)
14 July 2017 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark CERTIFIED AUSTRALIAN ANGUS BEEF — Earlier well-known figurative and word marks SINCE 1978 CERTIFIED ANGUS BEEF BRAND and CERTIFIED ANGUS BEEF BRAND — Relative ground for refusal — No similarity between the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑55/15,
Certified Angus Beef LLC, established in Wooster, Ohio (United States), represented by C. Aikens, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer and A. Söder, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Certified Australian Angus Beef Pty Ltd, established in Surrey Hills (Australia),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 30 October 2014 (Case R 662/2014-4), relating to opposition proceedings between Certified Angus Beef and Certified Australian Angus Beef,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, E. Buttigieg and B. Berke (Rapporteur), Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 3 February 2015,
having regard to the response lodged at the Court Registry on 22 June 2015,
further to the hearing on 7 December 2016,
gives the following
Judgment
Background to the dispute
1        On 28 June 2011, Certified Australian Angus Beef Pty Ltd obtained an international registration designating the European Union pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 29, 30 and 43 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 29: ‘Meat, meat extracts, preserved meat, processed meat products, sausages, pre-cooked meat products in this class, frozen meat products and all other meat products and products containing meat in this class; all of the aforementioned goods being derived from Angus Beef’;
–        Class 30: ‘Pies, pastry products, pasties, dumplings, hot dog sandwiches, pastries, sausage rolls, savoury biscuits, sandwiches, burgers, rolls, all of the foregoing including those containing meat; preparations made from bread or pastry; sauces (condiments); spices; gravy’;
–        Class 43: ‘Provision of food and drink; restaurant services; cafe services; catering services; provision of food and drink as part of hospitality services’.
4        On 10 August 2012, the applicant, Certified Angus Beef LLC, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5        The opposition was based, inter alia, on the following earlier rights:
–        the figurative mark reproduced below, which is claimed to be well known, within the meaning of Article 8(2)(c) of Regulation No 207/2009, in all the Member States of the European Union, for, inter alia, the goods and services in Classes 29, 30 and 43 covered by the mark applied for and for ‘certification services, licensing services and quality control services in the field of meat and beef products’:
–        the word mark CERTIFIED ANGUS BEEF BRAND, which is claimed to be well known, within the meaning of Article 8(2)(c) of Regulation No 207/2009, in all the Member States of the European Union, for, inter alia, the goods and services in Classes 29, 30 and 43 covered by the mark applied for and for ‘certification services, licensing services and quality control services in the field of meat and beef products’.
6        The grounds relied on in support of the opposition were those set out in:
–        Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(a) of that regulation;
–        Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(c) of that regulation;
–        Article 8(4) of Regulation No 207/2009;
–        Article 8(5) of Regulation No 207/2009.
7        On 10 February 2014, the Opposition Division rejected the opposition.
8        On 5 March 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
9        By decision of 30 October 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the Opposition Division’s decision.
10      It found, in essence, that the signs at issue could not be regarded as similar, thus excluding the application of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        uphold the opposition;
–        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 action the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14      The applicant submits that the Board of Appeal should, at the stage of the comparison of the signs, have examined the distinctive character which its marks referred to in paragraph 5 above had acquired as a result of the reputation which they enjoy because they are well known. Furthermore, it maintains that the Board of Appeal was not entitled to conclude that the marks at issue coincided visually and phonetically only in non-distinctive elements, since it should have considered the possibility that the word element ‘certified angus beef’ had acquired distinctive characteras a result of the reputation which the earlier marks enjoy with the public because they are well known in the United Kingdom in relation to goods in Class 29, namely ‘meat derived from Angus beef’. According to the applicant, since the Opposition Division had acknowledged that the earlier figurative mark was well known in the United Kingdom, the Board of Appeal should also have acknowledged that the earlier figurative mark and the earlier word mark were well known in that State and, in addition, that both marks were well known in other Member States.
15      EUIPO disputes the applicant’s arguments.
16      Article 156(1) of Regulation No 207/2009 provides that international registrations designating the European Union are to be subject to opposition in the same way as published EU trade mark applications.
17      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(c) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks which, on the date of application for registration are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.
18      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
19      Since the applicant’s arguments are based exclusively on the non-registered earlier figurative and word marks referred to in paragraph 5 above, which it submits are well known in the United Kingdom and in other Member States, it must be held that only the parts of the contested decision regarding the distinctive character of those marks and the elements of which they consist are disputed.
20      In the first place, the applicant submits that the Board of Appeal should have taken account, at the stage of the comparison of the signs, of the fact that the word element ‘certified angus beef’ in those earlier marks had acquired distinctive character because the marks are well known. According to the applicant, by failing to consider that possibility, the Board of Appeal erroneously found that the marks at issue were dissimilar on the ground that they coincided only in elements which were entirely non-distinctive.
21      In that regard, the Board of Appeal found that, if the earlier mark had any distinctive character at all, it lay in the overall impression created by that mark and not in any of the individual elements as such. Furthermore, it found that the earlier word mark coincided with the mark applied for only in elements which were descriptive or non-distinctive.
22      It is necessary to differentiate between the distinctive character of an earlier mark and the distinctive character of its elements. Where a mark has distinctive character, that distinctive character must be ascribed to the mark as a whole and not automatically to all the elements of which it is composed (see, to that effect, judgment of 3 December 2014, Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, not published, EU:T:2014:1020, paragraph 61). Consequently, the applicant’s argument that the word element ‘certified angus beef’ has acquired distinctive character because the earlier marks are, in its view, well known cannot succeed.
23      In the second place, the applicant submits that the earlier marks have acquired distinctive character because they are well known and that, consequently, the overall impression created by the marks at issue is highly similar.
24      However, since the Board of Appeal found that the marks at issue are dissimilar overall, any likelihood of confusion must be ruled out and the possible distinctiveness of the earlier marks, acquired through use, cannot offset the lack of similarity between the marks at issue.
25      Although for the purposes of assessing whether there is sufficient similarity between the signs or between the goods and services to give rise to a likelihood of confusion account must be taken of the fact that a mark is well known or has a reputation, that fact has no bearing on the assessment of the likelihood of confusion where the signs at issue are different overall (see judgment of 16 January 2008, Inter-Ikea v OHIM — Waibel (idea), T‑112/06, not published, EU:T:2008:10, paragraph 84 and the case-law cited).
26      Consequently, the Board of Appeal cannot be criticised for not having examined the distinctive character which the earlier marks had allegedly acquired through use before or at the same time as it assessed the similarity between the signs at issue.
27      Since the Board of Appeal did not find that the elements common to the marks at issue, including the word element ‘certified angus beef’, were even weakly distinctive and the applicant does not validly call that conclusion into question, the applicant’s arguments that the Board of Appeal should have examined whether the other elements of which the marks at issue consist were of a lower degree of distinctiveness and whether the overall impression created by those marks was highly similar are irrelevant.
28      Accordingly, the applicant’s arguments that (i) the Board of Appeal should have deduced from the Opposition Division’s decision finding that the earlier figurative mark was well known in the United Kingdom that it had acquired, because it was well known, distinctive character in that State, as well as in other Member States, and that (ii) the Board of Appeal should have assessed the evidence which the applicant had provided to show that the earlier word mark was also well known_are irrelevant.
29      The Board of Appeal cannot therefore be criticised for not having taken into account the Opposition Division’s findings relating to the well-known character of the earlier figurative mark.
30      Since the applicant does not dispute the Board of Appeal’s findings relating to the dissimilarity of the marks at issue other than by claiming that the earlier marks, as well as the element ‘certified angus beef’, have acquired distinctive character because those marks are well known, its arguments relating to the comparison of the signs, to the possibly identical nature of the goods and to the existence of a likelihood of confusion are also irrelevant.
31      Consequently, since there is no similarity between the marks at issue, it is not necessary to analyse whether the goods are similar and whether there is a likelihood of confusion.
32      The plea in law which the applicant has put forward in support of its claims for annulment and alteration is therefore unfounded and the action must be dismissed.
Costs
33      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.
34      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 (Second Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Certified Angus Beef LLC to pay the costs.
Prek
Buttigieg
Berke
Delivered in open court in Luxembourg on 14 July 2017.
E. Coulon
M. Prek
Registrar
President
*      Language of the case: English.