JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
29 April 2020 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark TasteSense By Kerry — Earlier EU word mark MultiSense — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑108/19,
Kerry Luxembourg Sàrl, established in Luxembourg (Luxembourg), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Döhler GmbH, established in Darmstadt (Germany),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 November 2018 (Case R 1179/2018‑2), relating to opposition proceedings between Döhler and Kerry Luxembourg,
THE GENERAL COURT (Eighth Chamber),
composed of J. Svenningsen, President, R. Barents (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: S. Bukšek Tomac, Administrator,
having regard to the application lodged at the Court Registry on 20 February 2019,
having regard to the response lodged at the Court Registry on 29 April 2019,
further to the hearing on 10 December 2019,
gives the following
Judgment
Background to the dispute
1        On 9 September 2016, the applicant, Kerry Luxembourg Sàrl, 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 54, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Classes 1, 29 and 30 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: ‘Flavour improvers for foods, beverages and oral care products; chemical based food, drink and oral care additives’;
–        Class 29: ‘Fruit, vegetables and natural based extracts used as additives in the manufacture of foods and beverages’;
–        Class 30: ‘Flavourings and additives other than essential oils for food, beverage and oral care products’.
4        The EU trade mark application was published in European Union Trade Marks Bulletin
No 2016/207 of 2 November 2016.
5        On 13 December 2016, the other party to the proceedings, Döhler GmbH, filed a notice of opposition pursuant to 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 the goods referred to in paragraph 3 above.
6        The opposition was based, first, on the earlier EU word mark MultiSense, which was filed on 17 November 2015 and registered on 28 March 2016 under the number 14803712 in respect of goods in Classes 1, 3 and 30 corresponding, for each of those classes, to the following description:
–        Class 1: ‘Artificial sweeteners; emulsifiers for use in the food and beverage industry’;
–        Class 3: ‘Essential oils, food and beverage flavorings prepared from essential oils’;
–        Class 30: ‘Flavorings and extracts used as flavoring for food and beverages, other than essential oils; natural sweeteners; fruit based sweeteners; sweeteners based on stevia; plant extracts used as flavoring; processed cereals and malt extracts’.
7        The opposition was based, secondly, on the earlier EU word mark Tastecraft, which was filed on 27 April 2016 and registered on 15 September 2016 under the number 15394703 in respect of goods and services in Classes 1 to 3, 5, 7, 29, 30, 32, 33, 35 and 42 corresponding, for each of those classes to the following description:
–        Class 1: ‘Artificial sweeteners; chemical substances for preserving foodstuffs’;
–        Class 2: ‘Food colorants’;
–        Class 3: ‘Essential oils’;
–        Class 5: ‘Infant formula; mixtures and preparations and dietetic substances adapted for medical use’;
–        Class 7: ‘Machines for manufacture, filling and packaging for the food, beverage and chemical industries’;
–        Class 29: ‘Jams, jellies; eggs, milk and milk products and mixtures and preparations for making the aforesaid products; fruit preparations, included in class 29; mixtures and preparations and dietetic substances not adapted for medical use with a base of meat, fish, poultry, game, fruit, eggs, milk; meat, fish, poultry and game extracts’;
–        Class 30: ‘Coffee, tea, cocoa; coffee, tea, cocoa or chocolate-based beverages and preparations for making the aforesaid beverages; sugar, fruit sugar, natural sweeteners, flour and preparations made from cereals; malt extracts, bread, pastry and confectionery; ices and mixtures and preparations for making the aforesaid products; honey, treacle; yeast, baking powder, puddings in powder form and blancmanges; flavorings for food; meat, fish, poultry and game flavourings and other spicy flavourings, other than essential oils’;
–        Class 32: ‘Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; preparations, syrups and other preparations for making beverages; beers and mixed drinks containing beer’;
–        Class 33: ‘Alcoholic bases, syrups and preparations for making beverages, included in class 33; alcoholic beverages (except beers)’;
–        Class 35: ‘Advertising; business management; business administration; office functions; marketing studies; business efficiency expert services; providing of economic expertise; commercial information agencies’;
–        Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services’.
8        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).
9        By decision of 25 April 2018, the Opposition Division examined the opposition with regard only to the earlier mark MultiSense and upheld the opposition. The Opposition Division found that the goods were, in part, identical and, in part, similar to a high degree and that, in the countries in which English was not understood, such as Spain or Poland, the signs at issue were meaningless. Furthermore, in the light of the existence of an average degree of visual and phonetic similarity, the Opposition Division concluded that there was a likelihood of confusion.
10      On 22 June 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
11      By decision of 27 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
12      The Board of Appeal, first of all, stated, in paragraph 17 of the contested decision, that, in order to carry out the assessment of the likelihood of confusion, the relevant territory and the relevant public had to be established. As regards, the relevant territory, the Board of Appeal found, in paragraph 19 of the contested decision, that the Opposition Division could, in the light of the unitary character of the EU trade mark, limit its assessment to the non-English-speaking part of the public concerned, namely to the Spanish- and Polish-speaking parts of the public. As regards that public, the Board of Appeal concurred, in paragraph 22 of the contested decision, with the Opposition Division’s findings that the goods in question were specialised goods directed at the general public (for example additives and flavourings in Classes 29 and 30) and a specialist public with regard to all the goods in question, especially given that the specialised goods could be used in the manufacturing process. The Board of Appeal therefore found that the level of attention, which had not been disputed by the parties, would vary from average to high.
13      As regards, the comparison of the goods at issue, the Board of Appeal, in paragraph 23 of the contested decision, in conjunction with paragraph 68 thereof, upheld the Opposition Division’s finding, which had not been disputed by the applicant, that all of the applicant’s contested goods were identical or similar to a high degree to the goods of the other party to the proceedings.
14      As regards the comparison of the signs at issue, the Board of Appeal, after examining the distinctive and dominant elements of those signs, found, in paragraph 29 of the contested decision, that the element ‘multi’ in the first earlier mark would, since it was a common term, be understood by the relevant public and it assumed that that public would perceive that earlier mark as having two different components. As regards the mark applied for, the Board of Appeal found, in paragraph 30 of the contested decision, that that mark consisted of the word elements ‘TasteSense’ and ‘By Kerry’ and, in paragraph 32 of that decision, that the element ‘By Kerry’ would be perceived as an indication that the TasteSense branded products came from an undertaking named ‘Kerry’. It took the view that, even though the element ‘By Kerry’ was placed at the end of the mark applied for and was smaller, it should not be underestimated.
15      As regards the analysis of the inherent distinctiveness of the word elements, the Board of Appeal, having first referred to the judgment of 16 January 2014, Aloe Vera of America v OHIM — Detimos (FOREVER) (T‑528/11, EU:T:2014:10), found, in paragraph 36 of the contested decision, that it could not be assumed that English was understood by all the average consumers in the European Union and, particularly with respect to Spanish or Polish consumers, that it could not be presumed that, in general, English words had a meaning for them, unless equivalent words existed in Spanish and Polish.
16      However, in paragraph 38 of the contested decision, the Board of Appeal observed that the term ‘multi’ would be understood both by Spanish and by Polish consumers, with the result that that element lacked distinctiveness (paragraph 41 of that decision).
17      Furthermore, the Board of Appeal found, in paragraph 42 of the contested decision, that there was no similar or equivalent word in Spanish or Polish for the word ‘sense’, with the result that it would have no meaning for the Spanish or Polish public, which would probably pay more attention to that word than to the word ‘multi’ (paragraph 43 of that decision).
18      The Board of Appeal found, in paragraph 44 of the contested decision, that the same could be said for the words ‘taste’ and ‘sense’ in the mark applied for, with the result it concluded that that mark possessed a normal level of distinctiveness. The Board of Appeal added, in paragraph 46 of the contested decision, that, even though the element ‘By Kerry’ represented an important portion of that mark, there could, however, be no doubt that the element ‘TasteSense’ played an independent distinctive role in that mark. According to the Board of Appeal, that was due also to the fact that the expression ‘By Kerry’ was written in small letters, which gave it a secondary role within the mark in question.
19      As far as the comparison of the signs at issue was concerned, the Board of Appeal, as regards the examination as to whether there was any visual similarity, found, in paragraph 47 of the contested decision, that those signs both contained, as their second word element, the term ‘sense’, which was the dominant element in the first earlier mark and played an independent distinctive role in the mark applied for. Furthermore, it observed that, even though those signs began with a different element, it was necessary, in the context of the overall impression, to take into consideration the non-distinctiveness or descriptiveness of the element ‘multi’ in the overall impression, even though consumers paid more attention to the beginning of a mark than to its end (paragraph 49 of the contested decision). The Board of Appeal added, in paragraph 51 of the contested decision, that the additional word elements ‘By Kerry’ were written in very small letters, which were barely legible if the mark was small, with the result that those differences were not enough to counteract the overall visual impression of similarity created by the elements in common. The Board of Appeal therefore found, in paragraph 54 of the contested decision, that there was an average degree of visual similarity.
20      As regards the examination as to whether there was any phonetic similarity, the Board of Appeal found, in paragraphs 55 to 57 of the contested decision, that the signs at issue both had four syllables and that, in spite of the difference resulting from the first elements of those signs, there was an average degree of similarity because those signs were pronounced with a similar rhythm, particularly because the second syllables were pronounced in a similar way and the third and fourth syllables were pronounced in the same way. Furthermore, the Board of Appeal pointed out, in paragraphs 58 and 59 of the contested decision, that the phonetic similarity that existed between the signs at issue predominated over the phonetic differences deriving from the presence, in the mark applied for, of the word element ‘By Kerry’, which the relevant public would understand as indicating the producer of the goods designated, and the differing beginnings of those signs.
21      As regards the examination as to whether there was any conceptual similarity between the signs at issue, the Board of Appeal found, in paragraph 62 of the contested decision, that, although the relevant public perceived the meaning of the element ‘multi’ in the first earlier mark, the other sign had no meaning for that public. Furthermore, it took the view that the expression ‘By Kerry’ was understood by the majority of that public as an indication that the goods in question came from a particular undertaking called ‘Kerry’. It found that the signs at issue were not, to that extent, conceptually similar.
22      As far as the global assessment of the likelihood of confusion between the signs at issue was concerned, the Board of Appeal found, in paragraph 67 of the contested decision, that the first earlier mark had a normal degree of distinctiveness, despite the presence of the weak or descriptive element ‘multi’.
23      However, the Board of Appeal stated, in paragraph 68 of the contested decision, that, when the goods were identical or highly similar, the degree of difference between the signs at issue had to be high to exclude a likelihood of confusion.
24      The Board of Appeal found that, on account of, first, the fact that the figurative elements and colour effects of the mark applied for were negligible (paragraph 69 of the contested decision), secondly, the identity of the element ‘sense’, which was the dominant element in the first earlier mark and played an independent role in the mark applied for (paragraph 72 of the contested decision) and, lastly, the imperfect recollection of the signs that consumers would retain (paragraph 71 of the contested decision), it could not be ruled out that even the most attentive part of the public could be led to believe that the goods at issue came from the same undertaking or related undertakings (paragraph 73 of the contested decision).
25      The Board of Appeal therefore deduced from those findings, in paragraph 74 of the contested decision, that the existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, especially in the minds of Spanish- and Polish-speaking consumers, could not safely be ruled out.
26      In those circumstances, the Board of Appeal did not examine the appeal in the light of the opposition based on the second earlier mark, Tastecraft.
Forms of order sought
27      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the opposition against the registration of the mark applied for;
–        order EUIPO to pay the costs.
28      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Admissibility of the new evidence annexed to the application
29      The applicant maintains, on the basis of Annexes A.6 and A.7 to the application, which were not submitted in the course of the administrative proceedings, that both the Spanish and Polish publics have, contrary to the Board of Appeal’s findings, sufficient knowledge of English to understand the meaning of the elements contained in the signs at issue.
30      The applicant claims that it can rely on publicly available, well-known publications in order to counter unsubstantiated factual assertions made in the contested decision.
31      EUIPO submits, primarily, that the admissibility of those annexes is questionable, since it depends on whether or not the command or lack of command of English by the Spanish and Polish public is a well-known fact. According to EUIPO, those annexes should have been submitted in the course of the administrative proceedings, since the knowledge of a foreign language in a Member State is not, in principle, a well-known fact, but must, save for rare exceptions, be substantiated by the parties.
32      In that regard, it should be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, as provided for in Article 65 of Regulation No 207/2009. Consequently, it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 136 and 138, and of 17 October 2017, Murka v EUIPO (SCATTER SLOTS), T‑704/16, not published, EU:T:2017:728, paragraph 15).
33      It must be stated that the Opposition Division had already found, in its decision, that the words ‘taste’ and ‘sense’ were meaningless in countries in which English was not understood, such as Spain and Poland. It follows that the applicant, which had also before the Board of Appeal disputed the Opposition Division’s lack of justification as to why the relevant public would understand and recognise only the element ‘multi’ and not the other elements in the signs at issue, should have annexed, in the course of the appeal before the Board of Appeal, all the relevant evidence, including that which it has annexed to the application, which, according to the applicant, proves that the Spanish and Polish public has a knowledge of English.
34      Furthermore, the applicant cannot claim that the contested decision contained new arguments to which it was required to respond by submitting new information at the stage of the proceedings before the Court, because the finding that the relevant public lacked any knowledge of English had already been made by the Opposition Division, which had already found that a knowledge of English could not be presumed.
35      It must therefore be held that that situation differs from that relied on by the applicant on the basis of the judgment of 10 November 2011, LG Electronics v OHIM (C‑88/11 P, not published, EU:C:2011:727), in which it was only at the stage of the proceedings before the Board of Appeal that that Board of Appeal had found that a fact was well-known, with the result that the Court of Justice held that the General Court had not erred in law by taking into consideration the document which the applicant had put forward for the purposes of disputing that fact (paragraphs 31 and 32 of that judgment).
36      Accordingly, it was for the applicant to provide, if necessary, all of the evidence regarding the Spanish and Polish public’s level of knowledge of English, in particular, the understanding of the words ‘taste’ and ‘sense’, in support of its application in the course of the proceedings before the Board of Appeal (see, to that effect, judgments of 23 April 2013, Apollo Tyres v OHIM — Endurance Technologies (ENDURACE), T‑109/11, not published, EU:T:2013:211, paragraph 21, and of 26 April 2018, Convivo v EUIPO — Porcesadora Nacional de Alimentos (M’Cooky), T‑288/16, not published, EU:T:2018:231, paragraph 21).
37      In those circumstances, Annexes A.6 and A.7 to the application must be declared inadmissible, since they were not submitted in the course of the administrative proceedings. It must therefore be stated that the review of the legality of the contested decision will be carried out in the light solely of the evidence which was produced during the administrative proceedings and appears in EUIPO’s case file (see, to that effect, judgments of 15 July 2014, Łaszkiewicz v OHIM — Cables y Eslingas (PROTEKT), T‑18/13, not published, EU:T:2014:666, paragraph 20, and of 13 September 2016, Globo Comunicação e Participações v EUIPO (Sound mark), T‑408/15, EU:T:2016:468, paragraph 20).
Substance
38      The applicant relies, in the application, on a single plea in law in support of the action, alleging, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009. At the hearing, the applicant put forward a new plea in law, alleging infringement of the obligation to state reasons referred to in the first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94 of Regulation 2017/1001).
39      In that regard, it must be stated, as a preliminary point, that even though the Board of Appeal seems to be applying the provisions of Regulation 2017/1001, the references should be understood, as far as concerns the substantive rules, as referring in fact to the identical provisions of Regulation No 207/2009 (see judgment of 28 June 2019, Gibson Brands v EUIPO — Wilfer (Shape of a guitar body), T‑340/18, not published, EU:T:2019:455, paragraph 13).
The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
The relevant public and its level of attention
40      The applicant complains that the Board of Appeal, first, took into consideration the general public as well as a public consisting of specialists, although the goods covered by the mark applied for are, according to the applicant, aimed exclusively at a public of professionals. It states, however, that some of the goods in Class 30, namely ‘flavourings and additives other than essential oils for food, beverage and products’ may be perceived as also being aimed at the general public, although that interpretation of the list appears far-fetched when the list is regarded as a whole. At the hearing, it repeated the claim that the goods covered by the mark applied for are exclusively aimed at a public of professionals.
41      It is apparent from paragraph 22 of the contested decision that the Board of Appeal found that, as the goods in question were specialised goods, they were aimed at the general public (for example additives and flavourings in Classes 29 and 30) and a specialist public with regard to all the goods in question, especially given that those goods could be used in the manufacturing process. The Board of Appeal added that that finding was not disputed by the parties.
42      It should be noted at the outset that, even though the Board of Appeal pointed out that that finding was not disputed by any of the parties, the fact remains that the applicant cannot be precluded from disputing that finding at the stage of the action before the Court nor can the Court be precluded from dealing with that matter, which is one of the factors that must necessarily be taken into consideration when examining and checking whether there is any likelihood of confusion between the signs at issue (see, to that effect, judgments of 1 February 2005, SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraphs 24 and 25, and of 7 November 2007, NV Marly v OHIM — Erdal (Top iX), T‑57/06, not published, EU:T:2007:333, paragraph 56; see, also, to that effect, Opinion of Advocate General Bobek in Primart v EUIPO, C‑702/18 P, EU:C:2019:1030, point 71).
43      According to settled case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited; judgment of 4 March 2015, Three-N-Products v OHIM — Munindra (PRANAYUR), T‑543/13, not published, EU:T:2015:134, paragraph 24).
44      Furthermore, it must be borne in mind that, according to the case-law, the relevant public consists of consumers likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 30 September 2010, PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28 and the case-law cited; judgment of 26 June 2014, Basic v OHIM — Repsol YPF (basic), T‑372/11, EU:T:2014:585, paragraph 27). Moreover, as a general rule, if the goods or services protected by one of those marks are included in the broader designation of the other mark, the relevant public is defined by reference to the more specific wording (judgment of 30 September 2010, medidata, T‑270/09, not published, EU:T:2010:419, paragraph 28).
45      In that regard, it must, in particular, be stated that the ‘flavour improvers for foods’ in Class 1 and the ‘fruit used as additives in the manufacture of foods’ in Class 29 may equally be used by professionals or by individuals who are able to purchase them via distribution channels, such as supermarkets.
46      In addition, as EUIPO rightly points out, the ‘flavourings for food and beverages’ in Class 30 may indeed be used by the general public, in particular vanilla flavourings for culinary purposes and all the flavourings, whether natural or chemical, used for cooking.
47      Furthermore, contrary to the claims which the applicant made again at the hearing, it is in no way apparent from the wording and the specifications of the list of goods covered by the mark applied for that those goods are exclusively processed or used by professionals.
48      Lastly, at the hearing, the applicant did not dispute that the way in which the list of goods in Class 30 was drawn up made it possible to deduce from that list, as EUIPO had submitted, that those goods were also aimed at the general public.
49      Consequently, the Board of Appeal did not err in taking into consideration, for the purposes of defining the relevant public, the general public and the public consisting of professionals.
50      It follows that the Board of Appeal was entitled to take into account the perception of the general public and not only the perception of the specialist public.
51      Furthermore, contrary to what the applicant claims, it is in no way apparent from the case-law that the Board of Appeal should have made a distinction between the goods that are exclusively aimed at professionals and those that are also aimed at the general public.
52      It must be pointed out that, according to the case-law, where the application for registration concerns goods or services which are intended for all consumers, that is to say both consumers who are professionals and end consumers, the relevant public must be deemed to be composed of average consumers, who are reasonably well informed and reasonably observant and circumspect (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 62, and of 24 May 2011, Space Beach Club v OHIM — Flores Gómez (SpS space of sound), T‑144/10, not published, EU:T:2011:243, paragraph 34).
53      Secondly, as regards the relevant public’s level of attention, the applicant submits that the level of attention of the public made up of professionals should have been found to be ‘very high’ and not ‘high’.
54      In that regard, it must be pointed out that the Board of Appeal found, in paragraph 22 of the contested decision, that the level of attention of the relevant public would vary from average to high.
55      It has been held that dietetic preparations for special diets cannot be considered to be products with certain potential hazards, requiring, by that fact alone, a higher level of attention from consumers during purchase, in the manner of, for example, pharmaceutical products. Unlike those products, they are in no way perceived as medicines nor are they obtained on medical prescription, even though certain goods may be sold in pharmacies (see, to that effect, judgment of 25 June 2013, Aldi v OHIM — Dialcos (dialdi), T‑505/11, not published, EU:T:2013:332, paragraph 37).
56      Furthermore, it has been held that the public’s level of attention with regard to certain goods in Classes 1, 29 and 30, such as food additives or flavour enhancers, was not automatically higher than average (see, to that effect, judgments of 4 March 2015, PRANAYUR, T‑543/13, not published, EU:T:2015:134, paragraph 25; of 25 September 2018, EM Research Organization v EUIPO — Christoph Fischer and Others (EM), T‑180/17, not published, EU:T:2018:591, paragraphs 40 to 45; and of 22 November 2018, AB Mauri Italy v EUIPO — Lesaffre (FERMIN), T‑78/18, not published, EU:T:2018:829, paragraph 27).
57      Although some of the goods at issue, such as ‘chemical based oral care additives’, are aimed at a specialist public, the fact remains that the great majority of them, such as ‘flavour improvers for foods’, ‘flavourings and additives for food, beverage’ or ‘fruit, vegetables and natural based extracts used as additives in the manufacture of foods and beverages’ are, however, aimed at the general public and not solely at a specialist public.
58      Consequently, by taking into consideration a level of attention categorised as ‘high’ as regards the part of the relevant public consisting of professionals, the Board of Appeal took into account the level of attention required by the Court as regards medicines obtained on prescription. However, since the goods at issue may be sold freely in trade, the level of attention of that part of the relevant public cannot be greater than that required with regard to medicines sold on prescription. It follows that the applicant errs in taking the view that the level of attention of the part of the relevant public consisting of professionals should have been categorised as ‘very high’.
59      It follows that the Board of Appeal did not make any error in finding, in paragraph 22 of the contested decision, that the level of attention would vary from average to high.
The relevant public’s knowledge of English
60      The applicant submits that the Board of Appeal made an error that is capable of leading to the annulment of the contested decision by basing that decision on the erroneous finding that the relevant public was non-English-speaking.
61      According to the applicant, both the Spanish and Polish publics, including the general public, have a substantial knowledge of English as a second language, with the result that they are able to understand the meaning of the terms ‘sense’ and ‘taste’.
62      In that regard, it must be pointed out, first, that, according to settled case-law, an understanding of a foreign language may not, in general, be presumed (see judgments of 25 June 2008, Zipcar v OHIM — Canary Islands Car (ZIPCAR), T‑36/07, not published, EU:T:2008:223, paragraph 45; of 24 May 2011, SpS space of sound, T‑144/10, not published, EU:T:2011:243, paragraph 63; and of 21 May 2015, Nutrexpa v OHIM — Kraft Foods Italia Intellectual Property (Cuétara MARĺA ORO), T‑271/13, not published, EU:T:2015:308, paragraph 35).
63      Since a knowledge of English on the part of the Spanish and Polish public is not a well-known fact (in contrast to the knowledge of English on the part of, inter alia, the Swedish public) and since the sector in question is not one of those in which English is frequently or normally used (in contrast to the technology or computing sectors), it was for the applicant to provide, in the course of the administrative proceedings, evidence to highlight the relevant public’s knowledge of a language other than its mother tongue.
64      Secondly, although it is true that many consumers in the European Union know basic English vocabulary (see, to that effect, judgments of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 53; of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 52; and of 15 October 2018, Apple and Pear Australia and Star Fruits Diffusion v EUIPO — Pink Lady America (WILD PINK), T‑164/17, not published, EU:T:2018:678, paragraph 58), it has, by contrast, been held that other English terms or one of their meanings could not be considered to form part of such basic vocabulary (see, to that effect, judgments of 16 October 2014, Junited Autoglas Deutschland v OHIM — Belron Hungary (United Autoglas), T‑297/13, not published, EU:T:2014:893, paragraphs 32 and 42, and of 16 February 2017, Jaguar Land Rover v EUIPO — Nissan Jidosha (Land Glider), T‑71/15, not published, EU:T:2017:82, paragraph 45).
65      Consequently, with the exception of certain terms forming part of basic English vocabulary, it cannot be assumed that English terms are widely known in the European Union.
66      In the present case, the English terms ‘taste’ and ‘sense’ cannot be considered to form part of that language’s basic vocabulary which may be assumed to be widely known to non-English-speaking consumers (see, to that effect, of 16 February 2017, Land Glider, T‑71/15, not published, EU:T:2017:82, paragraph 58).
67      Since the English terms ‘taste’ and ‘sense’ refer to abstract concepts and not to a straightforward and basic term, it cannot be assumed that a non-English-speaking public, which also includes the general public, would grasp those terms and clearly and immediately understand their meaning.
68      However, if the English terms have an equivalent in the language of the non-English-speaking public and a link may be established by that public between those terms and their translation into the language concerned, then that public must be held to understand their meaning.
69      In the present case, the fact remains that, as the applicant stated at the hearing, a statement which was not disputed by EUIPO, part of the relevant public would without any difficulty be able to establish a link between the English term ‘sense’ and the Polish word ‘sens’, which is one of the equivalent terms for that English term.
70      Consequently, it must be held that the Board of Appeal erred in finding that the Polish public would not understand the meaning of the English term ‘sense’. It follows that the Board of Appeal’s findings regarding the Polish public’s lack of understanding of the earlier mark MultiSense cannot be upheld.
71      However, with regard to the Spanish public, it must be pointed out that that public will not establish a link between the English term ‘sense’ and the Spanish word ‘sentido’, which is one of the equivalent terms for that English term. It cannot be held that the Spanish public, including the general public, would establish a semantic link between the terms ‘sense’ and ‘sentido’.
72      It follows that the Board of Appeal’s findings regarding the Spanish public’s perception of the English terms ‘taste’ and ‘sense’ must be upheld, with the result that the subsequent analysis will be carried out solely with regard to the Spanish public.
The comparison of the signs at issue and the global assessment of the likelihood of confusion
73      As far as the Board of Appeal’s analysis regarding the visual, phonetic and conceptual similarity of the signs at issue is concerned, the following observations must be made.
74      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’.
75      According to the case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings constitutes a likelihood of confusion (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 29; of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 17; of 23 October 2002, Oberhauser v OHIM — Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 25; and of 10 October 2006, Armacell v OHIM — nmc (ARMAFOAM), T‑172/05, EU:T:2006:300, paragraph 28).
76      According to the same case-law, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 22; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 16; of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 18; and of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 29).
77      That global assessment must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 30).
78      That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17; of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19; and of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 31).
79      Furthermore, 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 the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23; of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25; and of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 32). For the purposes of that global assessment, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. In addition, account must be taken of the fact that the average consumer only rarely has a chance to compare the various marks directly and must therefore rely on his or her imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26, and of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 32).
80      In that regard, it must be pointed out that it is true that the first component of marks may be more likely to catch the consumer’s attention than the following components. However, that consideration cannot apply in all cases. It cannot, in any event, undermine the principle expressed in the case-law cited in paragraphs 76 to 79 above that the examination as to whether the marks are similar must take account of the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 65 and the case-law cited).
81      In the present case, it must be held, as the Board of Appeal found and as has been pointed out by EUIPO, that, for the non-English-speaking public, the difference between the prefixes ‘multi’ and ‘taste’ in the signs at issue is unlikely, despite their position at the beginning of the marks, to remove the impression of visual and phonetic similarity given by those marks, which arises both from the fact that the sign MultiSense, which constitutes the first earlier mark, and the word element ‘TasteSense’ in the mark applied for are identical in length (each having 10 letters and 4 syllables) and from the fact that, setting aside the abovementioned difference, that sign and that word element are absolutely identical both visually (5 letters in the same order: ‘s’, ‘e’, ‘n’, ‘s’, ‘e’) and phonetically (‘sen’, ‘se’) (see, to that effect, judgment of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 66). Furthermore, the second syllables in the signs at issue, namely ‘te’ in the mark applied for and ‘ti’ in that earlier mark, are quite similar visually and phonetically because those syllables could be pronounced by part of the relevant public in a very similar way, which would be liable to reinforce the similarity that exists between the signs at issue.
82      Furthermore, as EUIPO rightly points out in its observations, the presence, in the mark applied for, of the element ‘By Kerry’ does not make it possible to conclude that that element is predominant as regards the examination of the similarities since its size and position mean that it plays only a secondary role in the overall impression. Moreover, although that element serves as an indication of the origin of the goods, the relevant public will regard the element ‘TasteSense’ in that mark as relating to the product line concerned and the element ‘By Kerry’ in that mark as a reference to the manufacturer of those goods. There are therefore no grounds for assuming that the relevant non-English-speaking public will not presume that the goods marketed under the marks ‘MultiSense’ and ‘TasteSense’ share a common origin.
83      It follows that, visually and phonetically, the signs at issue are similar, at the very least as far as the Spanish public is concerned. Accordingly, and taking account of the fact that, for that public, a conceptual comparison of those marks is irrelevant, it must be held that, for that public, the marks are similar (see, to that effect, judgment of 10 October 2006, ARMAFOAM, T‑172/05, EU:T:2006:300, paragraph 67).
84      The Board of Appeal was therefore right in finding that the signs at issue were similar for the purposes of Article 8(1)(b) of Regulation No 207/2009 and that, on account of the fact that the goods at issue were identical or highly similar, there was a likelihood of confusion between those signs.
85      In that regard, it is sufficient to point out that it has already been held that Article 8(1)(b) of Regulation No 207/2009 requires a likelihood of confusion to exist but not that the confusion be established (judgment of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 52). It follows that the Board of Appeal did not have to establish that there was actual confusion between the signs at issue, but only, as it did, that there was a likelihood of confusion between them.
86      It follows from the foregoing that the first plea must be rejected.
The second plea, alleging infringement of the obligation to state reasons referred to in the first sentence of Article 75 of Regulation No 207/2009
87      The applicant submitted, at the hearing, that the contested decision did not contain any findings regarding the degree of knowledge of a language other than Spanish in Spain or Polish in Poland, with the result that there is, contrary to Article 75 of Regulation No 207/2009, no statement of reasons.
88      EUIPO contended that that plea was inadmissible on the ground that it was put forward at the stage of the oral procedure, whereas it could have been put forward in the context of the written procedure.
89      It should be noted at the outset that a plea alleging a failure to state reasons is a plea involving a matter of public policy which may be put forward at any stage of the procedure (see, to that effect, judgments of 20 March 1959, Nold v High Authority, 18/57, EU:C:1959:6, p. 51, and of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 67).
90      That plea must therefore be examined.
91      In that regard, it must be borne in mind that the first sentence of Article 75 of Regulation No 207/2009 provides that decisions of EUIPO must state the reasons on which they are based.
92      That obligation has the same scope as that laid down in the second paragraph of Article 296 TFEU and its purpose is, first, to allow those concerned to know the reasons for the measure adopted so as to enable them to defend their rights and, secondly, to enable the EU judicature to exercise its power to review the legality of the decision (judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86, and of 15 July 2014, Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 76).
93      However, contrary to what the applicant claims, it is clear that the Board of Appeal specifically stated the reasons why the relevant public could be considered not to have a knowledge of English, because it pointed out, in paragraphs 35 and 36 of the contested decision, that knowledge of a foreign language, unless it was a well-known fact, could not be presumed.
94      Accordingly, the Board of Appeal simply referred to the relevant case-law and it was for the applicant to put forward before the Board of Appeal evidence proving that the relevant public had a knowledge of English, since the finding that that public did not understand English had already been made by the Opposition Division in its decision.
95      It follows from the foregoing that the second plea must be rejected and that the action must be dismissed in its entirety, without it being necessary to examine the applicant’s second head of claim.
Costs
96      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. 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 Kerry Luxembourg Sàrl to pay the costs.
Svenningsen
Barents
Mac Eochaidh
Delivered in open court in Luxembourg on 29 April 2020.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.