JUDGMENT OF THE GENERAL COURT (Second Chamber)
4 October 2016 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark Castello — Earlier national and EU figurative marks Castelló — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑549/14,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by M. Wolter, M. Kefferpütz and A. Marx, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by P. Geroulakos and D. Botis, subsequently by D. Botis and lastly by D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
Horno del Espinar, SL, established in El Espinar (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 April 2014 (Joined Cases R 1233/2013-2 and R 1258/2013-2) relating to opposition proceedings between Horno del Espinar and Lidl Stiftung & Co.,
THE GENERAL COURT (Second Chamber),
composed, at the time of deliberation, of S. Gervasoni (Rapporteur), acting as President, and L. Madise and Z. Csehi, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 July 2014,
having regard to the response lodged at the Court Registry on 10 November 2014,
having regard to the designation of another Judge to complete the Chamber as one of its Members was prevented from acting, following the hearing of 28 June 2016,
further to the hearing on 28 June 2016,
gives the following
Judgment
Background to the dispute
1        On 9 April 2008, the applicant, Lidl Stiftung & Co. KG, filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).
2        Registration as a mark was sought for the word sign Castello.
3        The goods in respect of which registration was sought are in Classes 29, 30 and 31 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: ‘Baking ingredients of all kinds, included in Class 29, candied fruits, glacier cherries, raisins, sultanas, candied orange peel and candied lemon peel; prepared almonds and nuts of all kinds; coconut flakes; prepared fillings for baking, mainly consisting of poppy seeds, nuts, almonds, coconut flakes and/or fruit; gelatine for food; ground poppy seeds; foodstuffs for flavouring, included in Class 29, peel and/or flesh of citrus fruits, including in dried or dehydrated form; preserved, frozen and cooked fruits and vegetables.’
–        Class 30: ‘Flour and preparations made from cereals; sugar; salt; cocoa; starch for food, potato starch, corn starch; binding agents for sauces, sauce powder; baking ingredients of all kinds, included in class 30, namely cake glazes, coatings, glaze, preparations for stiffening whipped cream, flavourings for baking and cooking oils, sugar topping, marzipan, marzipan compounds, nut-nougat, baking wafers, vanilla and vanillin sugar, vanilla beans; honey, treacle; chocolate and chocolate goods, chocolate toppings, sheets, granules and flakes; decorative chocolate and confectionery; yeast; raising agents for baking, in particular baking powder, sodium bicarbonate; spices and spice mixes; foodstuffs for flavouring, included in Class 30, citrus fruit extracts, including in dried or dehydrated form; bakery mixes, bread mixes, cake paste; pasta; Bread and pastry products; bread and bread products, breading and breadcrumbs; cakes, gâteaux; confectionery products; puddings, custard powder, preparations for making desserts.’
–        Class 31: ‘Poppy seeds, nuts and almonds of all kinds; fresh fruits’.
4        On 27 October 2008, Horno del Espinar SL (‘the opponent’) filed a notice of opposition against registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.
5        The opposition was based on several earlier rights, including EU trade mark No 4199907 and Spanish trade mark No 2204987 (together, ‘the earlier marks’).
6        EU trade mark No 4199907 is the following figurative sign:
7        The goods in respect of which trade mark No 4199907 is registered are in Classes 30, 35 and 39 and correspond, for each of those classes, to the following description:
–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.’
–        Class 35: ‘Advertising; business management services; business administration; clerical services; franchise-issuing services in relation to commercial management assistance.’
–        Class 39: ‘Services of distribution, storage, transport and packaging of food items, in particular sugar confectionery, pastry, bakery products, cakes, biscuits, industrial pastry, confectionary products.’
8        Spanish trade mark No 2204987 is the following figurative sign:
9        The goods in respect of which trade mark No 2204987 is registered are in Class 30 and correspond to the following description: ‘Industrial patisserie and
confectionery’.
10      The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
11      Since the applicant requested evidence of use of Spanish trade mark No 2204987 to be adduced, EUIPO requested the opponent to provide that evidence.
12      On 6 May 2013, the Opposition Division upheld the opposition in part with respect to certain goods in Classes 29 and 30 designated by the trade mark applied for and rejected it with respect to the other goods in those classes and the goods in Class 31.
13      On 1 July 2013, the opponent filed a notice of appeal against the decision of the Opposition Division.
14      On 5 July 2013, the applicant also filed a notice of appeal against the decision of the Opposition Division in so far as it upheld the opposition.
15      By decision of 22 April 2014 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal brought by the applicant and partially upheld the action brought by the opponent on the basis, inter alia, of the grounds set out, in essence, below.
16      In the first place, the Board of Appeal considered that the evidence relating to genuine use of Spanish trade mark No 2204987 was sufficient in order to establish such use (paragraph 50 of the contested decision).
17      In the second place, the Board of Appeal held that the marks at issue designated relatively low-cost mass-consumption food products bought daily and that, therefore, the level of attention of the public would be lower than average (paragraph 56 of the contested decision). It added that the relevant territory was both Spain and the European Union and that the comparison of the signs should ‘focus’ on the Italian and Spanish-speaking part of the relevant public (paragraph 57 of the contested decision).
18      In the third place, the Board of Appeal held that the trade mark applied for and the earlier marks were very similar (paragraph 70 of the contested decision).
19      In the fourth place, the Board of Appeal held that all the goods designated by the trade mark applied for in Class 29 were similar to the goods designated by the earlier marks in Class 30 (paragraphs 79 to 87 of the contested decision). It also held that all the goods designated by the trade mark applied for in Class 30 were identical or similar to the goods designated by the earlier marks (paragraphs 88 to 103 of the contested decision). Finally, it held that none of the goods designated by the trade mark applied for in Class 31 could be considered to be identical or similar to the goods and services designated by the earlier marks (paragraphs 104 to 107 of the contested decision).
20      The Board of Appeal held that there was a likelihood of confusion between the marks at issue with respect to all the goods designated by the trade mark applied for in Classes 29 and 30 (paragraph 111 of the contested decision). By contrast, it upheld the decision of the Opposition Division in so far as it had excluded such a likelihood with respect to the goods designated by the trade mark applied for in Class 31 (paragraph 112 of the contested decision).
Forms of order sought and procedure
21      The applicant claims that the Court should:
–        annul the contested decision in so far as it dismissed its action and partially upheld the opponent’s action, that is to say, in essence, in so far as it upheld the opposition;
–        order EUIPO to pay the costs.
22      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
23      On a proposal from the Judge-Rapporteur, the Second Chamber of the General Court decided to open the oral procedure.
24      The date of the hearing was set at 12 June 2015.
25      By letter of 12 May 2015, the applicant, which indicated that it was unable to attend the hearing, requested the postponement of that hearing, which was therefore postponed until 19 June 2015.
26      By letter of 16 June 2015, the applicant indicated that it was in discussion with the opponent with the aim of reaching an amicable settlement of the dispute and that it therefore requested that the hearing be postponed.
27      The proceedings were therefore stayed until 26 September 2015.
28      By letter of 25 September 2015, the applicant — which indicated that the negotiations with the opponent were progressing and adduced evidence to that effect — requested that the proceedings be stayed again.
29      The proceedings were stayed until 1 January 2016.
30      By letter of 23 December 2015, the applicant requested that the proceedings be stayed yet again.
31      Following that request, the proceedings were stayed until 13 April 2016 and then resumed, despite a further request made by the applicant that the proceedings be stayed, which, for the first time in the present case, EUIPO opposed. The date of the hearing was set at 28 June 2016.
32      On a proposal from the Judge-Rapporteur, the Second Chamber, in the context of the measures of organisation of procedure provided for in Article 89 of the Rules of Procedure of the General Court, put written questions to the parties concerning the comparison of the goods, asking them to present their replies to those questions at the hearing.
Law
33      As a preliminary matter, it must be observed that since the application for registration of the trade mark at issue was filed on 9 April 2008 and that date is determinative for the purposes of identifying the applicable substantive law, the present dispute is governed, on the one hand, by the procedural provisions of Regulation No 207/2009 and, on the other, by the substantive provisions of Regulation No 40/94 (judgment of 8 May 2014 in Bimbo v OHIM, C‑591/12 P, ECR, EU:C:2014:305, paragraph 12).
34      In support of its arguments seeking the annulment of the contested decision, the applicant raises two pleas in law, the first alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995, L 303, p. 1), and the second alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
1.     The first plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) and (4) of Regulation No 2868/95
35      As a preliminary point, it must be noted that the provisions of Article 42(2) and (3) of Regulation No 207/2009 repeat, in identical terms, those of Article 43(2) and (3) of Regulation No 40/94.
36      According to settled case-law, it is apparent from Article 43(2) and (3) of Regulation No 40/94, read in the light of the ninth recital in the preamble to that regulation, and from Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, unless there is a good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of the mark on the market. However, the purpose of those provisions is not to assess the commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM — Wedl & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).
37      There is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services, but genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (judgment of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39; see also, to that effect and by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
38      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
39      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
40      In order to examine 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 implies a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
41      The turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42). Even minimal use can therefore be sufficient to be classified as genuine, provided that it is justified, in the economic sector concerned, to maintain or create market share for the goods or services protected by the trade mark. Consequently, it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine. A de minimis rule, which would not allow EUIPO or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).
42      Genuine use of a trade mark cannot be based on probabilities or assumptions; it must be demonstrated by solid and objective evidence of effective and sufficient use on the market concerned (judgments of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM — Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47, and of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 28).
43      In addition, it must be noted that, under the combined provisions of Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94, proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition against an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see judgments of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited, and of 15 December 2010, Epcos v OHIM — Epco Sistemas (EPCOS), T‑132/09, not published, EU:T:2010:518, paragraph 33 and the case-law cited).
44      It is necessary to examine, in the light of those considerations, whether, as the applicant submits, the Board of Appeal erred in finding, in paragraph 50 of the contested decision, that the evidence of use of Spanish trade mark No 2204987 submitted by the opponent was sufficient to demonstrate genuine use of that trade mark within the meaning of Article 43(2) of Regulation No 40/94.
45      Since the application to register the mark applied for was published on 11 August 2008, the period referred to in Article 43(2) of Regulation No 40/94 extended, as the Board of Appeal rightly noted in paragraph 32 of the contested decision, from 11 August 2003 to 10 August 2008. In addition, that genuine use must, in accordance with the third paragraph of that article, be assessed in the Member State where the earlier national mark is protected, that is to say — as the Board of Appeal rightly noted in paragraph 32 of the contested decision — in Spain.
46      It is undisputed that, in the context of the administrative procedure, the opponent produced the following evidence concerning the use of trade mark No 2204987:
–        31 printouts from the opponent’s invoicing system issued in 2005;
–        28 printouts from the opponent’s invoicing system and a copy of an invoice, all issued in 2006;
–        12 invoices issued in 2007;
–        8 invoices issued in 2008, 7 of which were issued prior to 10 August 2008;
–        a copy of the packaging of mini-croissants and muffins.
47      As a preliminary point, it must be pointed out that a non-exhaustive list of supporting documents and items capable of establishing genuine use of the earlier mark is set out in Rule 22(4) of Regulation No 2868/95. That list expressly includes packages and invoices, which are two of the three types of evidence adduced by the opponent.
48      Moreover, it must be recalled that Rule 22(3) of Regulation No 2868/95 provides that the indications and evidence for the furnishing of proof of use of an earlier trade mark are to consist of indications concerning the place, time, extent and nature of use of that trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
49      As regards the nature of use of Spanish trade mark No 2204987, on the invoices referred to in paragraph 46 above, the word element ‘castello’ — sometimes written ‘castelló’ — which accompanies the description of products sold attests to the use of that element as a trade mark.
50      It must be pointed out that, as the Board of Appeal rightly noted in the contested decision (paragraph 46), the figurative elements of Spanish trade mark No 2204987 do not play any significant role in the overall impression produced by the sign. Thus the only differences between the word element ‘castello’, sometimes written ‘castelló’, and the mark in question in the form in which it was registered are elements which do not alter its distinctive character. It is therefore possible, in accordance with the requirements of Article 15(2)(a) of Regulation No 40/94, to establish the use of that mark (see the case-law cited in paragraph 43 above).
51      As regards the place of use of Spanish trade mark No 2204987, it must be noted that the invoices referred to in paragraph 46 above are addressed to companies established in Spain. They are therefore relevant in establishing the use of that mark in that Member State.
52      As regards the time and extent of use of Spanish trade mark No 2204987, it must be observed that, of the invoices referred to in paragraph 46 above, those which were issued prior to 10 August 2008 were addressed to 15 different customers. In addition, the invoices referred to in paragraph 46 above correspond to sales amounts of approximately EUR 7 000 for 2006, EUR 28 000 for 2007 and EUR 17 000 for 2008 (the invoice issued after 10 August of that year corresponded to sales amounting to approximately EUR 1 670 which, when subtracted from the total sales for 2008, does not substantially modify that total). It must be added that the sum of those sales amounts corresponds — given the relatively low prices of units of the goods in question — to the sale of more than 5 000 of those units, with the understanding that, as industrial goods, each unit consists of several patisserie or confectionery products.
53      Lastly, it is undisputed that the invoices referred to in paragraph 46 above concern goods which correspond to those covered by Spanish trade mark No 2204987. Likewise, it is not alleged that those invoices concern only a sub-category of goods among those covered by that mark. In any event, it can be seen from the documents in the file that the goods to which the invoices in question relate form a sufficiently large range of goods to cover all the goods designated by Spanish trade mark No 2204987.
54      In view of the foregoing, the Board of Appeal was entitled to conclude that a genuine use of Spanish trade mark No 2204987 on the market of the goods covered by that mark could be regarded as established.
55      Furthermore, in addition to the invoices referred to in paragraph 46 above, there are the printouts from the opponent’s invoicing system issued in 2005 and 2006 for annual amounts — undisputed by the applicant — of approximately EUR 60 000, on which the word element ‘castelló’ appears. Even though, unlike the invoices examined above, those printouts demonstrate only the use of that word element within the undertaking concerned, they nevertheless constitute indirect evidence of the genuine use of Spanish trade mark No 2204987.
56      Lastly, the sign corresponding to EU trade mark No 4199907 appears on the copies of the packaging of mini-croissants and muffins. In that regard, it must be pointed out that the specific word element and figurative elements contained in that sign, which do not appear in the sign corresponding to trade mark No 2204987, are not sufficiently original or unusual to alter the distinctive character of the latter. Thus, even though the copies in question are not capable, by themselves, of establishing genuine use of trade mark No 2204987 during the relevant period referred to in paragraph 45 above, they nevertheless constitute an additional indication of the genuine use of that trade mark.
57      It follows from all of the foregoing considerations that the first plea in law must be rejected.
2.     The second plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009
58      As a preliminary point, it must be noted that the provisions of Article 8(1)(b) of Regulation No 207/2009 repeat, in identical terms, those of Article 8(1)(b) of Regulation No 40/94.
59      The applicant submits that there is no similarity between the goods designated by the trade mark applied for and those designated by the earlier marks. It adds that the degree of similarity between the signs at issue is not sufficient for a finding of a likelihood of confusion.
60      EUIPO contests the applicant’s arguments.
61      Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, that 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.
62      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 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 case-law cited).
63      The Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined in the light of those principles.
The relevant public
64      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and case-law cited).
65      In the present case, the Board of Appeal held — correctly, and without being challenged on those points by the applicant — that the marks at issue designated relatively low-cost mass-consumption food products bought daily and that, therefore, the level of attention of the public would be lower than average (paragraph 56 of the contested decision). It added — also correctly — that the relevant territory was both Spain and the European Union and that the comparison of the signs should focus on the Italian and Spanish-speaking part of the relevant public (paragraph 57 of the contested decision).
66      It must be noted that, when, as in the present case, the opponent relies on several earlier marks which produce their respective effects on different territories, the relevant public may differ depending on the goods designated by the mark applied for which are examined for the purpose of assessing whether there is a likelihood of confusion. Where one of the goods designated by the mark applied for is similar only to one or several goods covered by one of the earlier marks, the likelihood of confusion must be examined, for that good, having regard only to the relevant public for that earlier mark, that is to say, in the present case, the average Spanish consumer or the average EU consumer, as appropriate.
The comparison of the goods
67      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 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and case-law cited).
68      Goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 57 and the case-law cited).
69      First, the Court will examine whether there is a similarity between each of the goods covered by the mark applied for in Class 29 and at least one of the goods designated by one of the earlier marks. Secondly, the Court will carry out the same examination as regards the goods covered by the mark applied for in Class 30.
The goods covered by the mark applied for in Class 29:
–       Baking ingredients of all kinds, included in Class 29, candied fruits, glacier cherries, raisins, sultanas, candied orange peel and candied lemon peel
70      It must be noted that the Board of Appeal compared the goods in question with those covered by the earlier marks on the basis of the following wording: ‘Baking ingredients of all kinds, included in Class 29, namely candied fruits, glacier cherries, raisins, sultanas, candied orange peel and candied lemon peel’.
71      It is undisputed that the exact wording of the description of the goods covered by the mark applied for does not include, in that part, the term ‘namely’, which restricts the scope of the registration solely to the goods specifically listed after that expression.
72      However, and contrary to the applicant’s assertions at the hearing, it must be noted that there is, in view of their complementary nature, a similarity between, on the one hand, the baking ingredients of all kinds, included in Class 29, candied fruits, glacier cherries, raisins, sultanas, candied orange peel and candied lemon peel and, on the other hand, the industrial confectionery goods covered by Spanish trade mark No 2204987. The former are ingredients of the latter. Although that indication does not suffice, in the absence of any other relevant factor, to conclude that there is a similarity (judgments of 14 October 2009, Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT), T‑140/08, EU:T:2009:400, paragraph 62, and of 26 October 2011, Intermark v OHIM — Natex International (NATY’S), T‑72/10, EU:T:2011:635, paragraph 35), it is also necessary to take into account the fact that the goods covered by the mark applied for in question here are commonly, or even principally, used by the average consumer himself in order to make confectionery goods or, at the very least, patisserie or baking goods which are very similar to those confectionery goods. Thus, the average consumer will associate those ingredients with the goods covered by Spanish trade mark No 2204987, even though the latter are industrial goods. He may then believe that the same undertaking is responsible for the manufacture of all of those goods.
73      Furthermore, contrary to the goods covered by the mark applied for in Class 31 (see paragraph 3 above), the goods in question are, in principle, like the goods covered by Spanish trade mark No 2204987, processed food products. However, while it is possible that that is not the case as regards all the ‘baking ingredients of all kinds, included in Class 29’, it was not for the Board of Appeal to identify, for the applicant, which had chosen to refer to a rather large category of goods, certain goods in that category which were not processed and which were therefore less similar to the goods covered by the earlier mark.
74      Lastly, given that, as mentioned above (see paragraph 72 above), the goods covered by the mark applied for in question here are used by the average consumer himself in order to make confectionery goods, they are interchangeable with the goods covered by Spanish trade mark No 2204987 and are in competition with them (see, to that effect, judgment of 4 February 2013, Hartmann v OHIM — Protecsom (DIGNITUDE), T‑504/11, not published, EU:T:2013:57, paragraph 42).
75      In addition, contrary to the applicant’s assertions at the hearing, the considerations set out in paragraphs 72 to 74 above apply, a fortiori, in the context of an examination of the similarity between the goods covered by the mark applied for in question here and the industrial patisserie goods covered by Spanish trade mark No 2204987.
–       Prepared almonds and nuts of all kinds; coconut flakes; prepared fillings for baking, mainly consisting of poppy seeds, nuts, almonds, coconut flakes and/or fruit; gelatine for food; ground poppy seeds; foodstuffs for flavouring, included in Class 29, peel and/or flesh of citrus fruits, including in dried or dehydrated form
76      The Board of Appeal was entitled to find that the goods in question were similar to the spices covered by EU trade mark No 4199907 (paragraph 81 of the contested decision), although the degree of similarity is low. As the Board of Appeal indicated, those goods share common features with spices. They are vegetable in nature. Furthermore — even though the applicant is correct in submitting that this is not always the case, in particular as regards the prepared almonds and nuts of all kinds which may be consumed directly — the goods in question may be used to add flavour to foodstuffs. Because of that use, which is sometimes similar to that of spices, they can be in competition with the latter. Lastly, the goods in question may also be sold at the same outlets and purchased by the same consumers as spices.
77      In addition, contrary to the applicant’s submissions at the hearing, there is also a similarity between the goods in question and the industrial patisserie and confectionery goods covered by Spanish trade mark No 2204987. That similarity may be based on the same grounds as set out in paragraphs 72 to 74 above.
–       Preserved, frozen and cooked fruits and vegetables
78      As regards preserved and cooked fruits, as the Board of Appeal correctly indicated in paragraph 84 of the contested decision, those goods and the industrial confectionery goods covered by Spanish trade mark No 2204987 have the same nature, the same purpose and are, to some extent, interchangeable and in competition with each other.
79      Moreover, it is worth noting that that similarity may also be based on the same grounds as set out in paragraphs 72 to 74 above.
80      As regards preserved and cooked vegetables, there is — as the Board of Appeal correctly indicated (paragraph 83 of the contested decision), a low degree of similarity between the goods in question and the sauces (condiments) covered by EU trade mark No 4199907. The former may be used in making sauces, or even themselves constitute sauces, even though that is not always the case, as the applicant correctly submits. In addition, in some cases, preserved and cooked vegetables are themselves condiments. In such cases, the goods are therefore very similar, or even identical. Although that is not the case as regards all those vegetables, it was nevertheless not for the Board of Appeal to identify, for the applicant, which had chosen to refer to a rather large category of goods, certain goods in that category which were not condiments and which were therefore less similar to the goods covered by the earlier EU trade mark.
81      There is also a low degree of similarity between, on the one hand, preserved and cooked vegetables and, on the other hand, spices covered by EU trade mark No 4199907. As the Board of Appeal correctly indicated in paragraph 82 of the contested decision, those goods are, like all spices, vegetable in nature. In addition, since they may be added to foodstuffs to provide flavour, the goods in question have, in that respect, the same use as spices and are therefore in competition with them. Lastly, the goods in question may be found at the same outlets by the same consumers.
82      However, as regards frozen fruits and vegetables, the applicant correctly submits that there is no similarity between those goods and the sauces (condiments) covered by EU trade mark No 4199907. Those goods are sold in specific departments, or even in specific shops. In addition, they are generally not processed or, if they are processed, that processing is limited. From that perspective, they are closer to fresh goods, sold in raw form, than to cooked goods. It must be noted that the Board of Appeal relied solely on the existence of a similarity between those frozen fruits and vegetables and the sauces (condiments) and that, moreover, it does not appear that there is any other similarity with the goods and services covered by the earlier marks.
–       Gelatine for food
83      As the Board of Appeal correctly indicated in paragraph 86 of the contested decision, the good in question and the sauces (condiments) covered by EU trade mark No 4199907 have the same purpose, since they are used in preparing other foods. Moreover, they may have the same final users and the same distribution channels. Lastly, they are not, as a rule, consumed alone, but are used as supplements to other dishes.
84      Thus, despite the differences as regards their taste or the processes used to manufacture them, it must be found that there is a similarity between those goods.
85      Indeed, it may be noted that that similarity can also be based on the same grounds as set out in paragraphs 72 to 74 above.
86      Furthermore, there is — also for reasons analogous to those set out in paragraphs 72 to 74 above — a similarity between the good in question and the industrial patisserie and confectionery goods covered by Spanish trade mark No 2204987.
The goods covered by the mark applied for in class 30
87      Contrary to the applicant’s submission, the Board of Appeal was correct to indicate in paragraphs 92 and 93 of the contested decision that there was at least a similarity between the sugar topping covered by the mark applied for and the sugar covered by EU trade mark No 4199907. Sugar topping is one form of sugar amongst others, which is characterised by the fact that the grains are ground more finely. Thus, sugar topping is part of a larger category comprising the various forms of sugar. That similarity exists despite the specific decorative use of sugar topping and the potential differences as regards the manufacturing processes or the distribution channels between sugar topping and sugar, arguments on which the applicant relies.
88      The chocolate toppings, custard powder and puddings covered by the mark applied for, contrary to the applicant’s assertions, are somewhat similar to the sauces (condiments) designated by Spanish trade mark No 2204987. Although that degree of similarity is low as regards the chocolate toppings, it nevertheless exists because they, like sauces, are used to add taste to foodstuffs. There is also a low degree of similarity as regards custard powder and puddings, which may be sold, like sauces, in powdered form and may also, like sauces, be added to other complex dishes to improve their taste and appearance.
89      Furthermore, as regards puddings, there is an obvious similarity between those goods and the industrial patisserie goods in Class 30 covered by Spanish trade mark No 2204987.
90      As regards bread mixes, pasta, bread and bread products, and breading and breadcrumbs, there is a similarity, as the Board of Appeal correctly indicated in paragraph 97 of the contested decision, or, at the very least, a low degree of similarity, between those goods and the preparations made from cereals covered by EU trade mark No 4199907. The goods in question are prepared from cereals and the applicant does not dispute that their final users and their distribution channels coincide with those of the preparations made from cereals.
91      Furthermore, contrary to the applicant’s submissions at the hearing, there is also some similarity between those goods, with the exception of breading and breadcrumbs, and the flour covered by EU trade mark No 4199907. The latter may be used by the average consumer himself in order to manufacture the former. In addition, both — in contrast to, for example, the goods covered by the mark applied for in Class 31 (see paragraph 3 above) — are processed foodstuffs. Lastly, since those goods are interchangeable, they are in competition.
92      As regards cake glazes, coatings and glaze, they are similar, as the Board of Appeal correctly indicated in paragraph 102 of the contested decision, to the industrial patisserie goods designated by Spanish trade mark No 2204987. The latter may be improved by glazes and coating which could also be used by the average consumer himself to make patisserie goods (see paragraph 72 above). In addition, the goods covered by those two trade marks are usually sugared.
93      The Board of Appeal was therefore correct to find in paragraph 102 of the contested decision that there was a similarity between the goods covered by those two marks, despite the differences related to the fact that patisserie goods, by contrast to the goods covered by the mark applied for, are intended to be consumed directly and that their manufacturing process and their distribution channels may be different from those of the mark applied for.
94      It must be added, as regards cake glazes, coatings and glaze, but also sugar topping, chocolate toppings, custard powder, bread mixes and breading and breadcrumbs, that there is, for reasons analogous to those set out in paragraphs 72 to 74 above, a similarity between the goods in question and the industrial patisserie and confectionery goods in Class 30 covered by Spanish trade mark No 2204987.
95      As regards the other goods covered by the mark applied for, it does not appear that those goods are devoid of any similarity to goods covered by one of the earlier marks. Indeed, the existence of that similarity is not disputed by the applicant or, at least, it has not put forward any argument in that respect.
96      It follows from the foregoing that, with the exception of frozen fruit and vegetables, the goods designated by the mark applied for in Classes 29 and 30 and the goods designated by the earlier marks in Class 30 are similar, as the Board of Appeal correctly indicated in paragraphs 87 and 103 of the contested decision. It is true, however, that in certain cases the degree of similarity is low.
Comparison of the signs
97      According to settled case-law, the global assessment of the likelihood of confusion 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. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and 17 October 2013, Isdin v OHIM and Bial-Portela, C‑597/12 P, EU:C:2013:672, paragraph 19).
98      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components of the mark are negligible in the overall impression which it creates (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06, not published, EU:C:2007:539, paragraph 43).
99      In that respect, it must be observed first of all, as the Board of Appeal noted in paragraph 63 of the contested decision, that the earlier EU trade mark No 4199907 is composed of a red oval background partially overlapping a yellow oval containing the word element ‘castelló’ in white, beneath which appears the additional verbal expression ‘castelló y juan s.a.’, which is less visible because of its small size. The Spanish trade mark No 2204987 contains the word element ‘castelló’, which is slightly stylised in white letters, with an initial capital letter, placed within a black rectangle.
100    It must be noted, as the Board of Appeal correctly pointed out (paragraph 67 of the contested decision), that the word ‘castelló’ is the dominant element of the earlier marks. That dominance applies, first, with regard to the non-verbal components in the two marks, which have an essentially decorative function, and, secondly, the additional verbal expression ‘castelló y juan s.a.’, which is only present in the earlier EU trade mark No 4199907 and is represented in characters that are smaller and therefore less visible.
Visual similarity
101    It must be noted that the word ‘castelló’ in the earlier marks, and the word ‘castello’ in the mark applied for, are identical except for the presence of an accent on the letter ‘o’ in the earlier marks, which is a negligible difference.
102    While the earlier marks differ from the mark applied for in the form and the colour of the designs that constitute the visual background on which the dominant components are written and in the presence, in the earlier EU trade mark No 4199907, of the words ‘castelló y juan s.a.’, those are — as can be seen from paragraph 100 above — only minor differences that cannot lead to the conclusion that the signs at issue are not similar.
103    In view of the foregoing, it must be concluded that there is a strong visual similarity between the signs at issue.
Phonetic similarity
104    The pronunciation of the words ‘castelló’ and ‘castello’, which constitute the dominant elements of the signs at issue, are identical except for the presence of an accent on the letter ‘o’, which has the effect, as regards the earlier marks, that in the Spanish language the stress is placed on that letter and not on the letter ‘e’, as is the case for the mark applied for.
105    Despite that difference, as well as the possible — though very improbable, given their size — pronunciation of the words ‘castelló y juan s.a. ‘, it must be concluded that there is, including as regards Spanish consumers, a strong similarity between the signs at issue.
Conceptual similarity
106    The Board of Appeal correctly considered that, although the word ‘castello’ means castle in Italian, whereas the word ‘castelló’ is a Spanish surname, that difference was too subtle to be perceived by the relevant public.
107    In any event, as regards EU trade mark No 4199907 — in respect of which the relevant public is the general public of the European Union in its entirety — the section of that public which is neither Spanish-speaking nor Italian-speaking will in no way perceive the conceptual difference mentioned in the preceding paragraph.
108    As regards Spanish trade mark No 2204987, in respect of which the relevant public is the Spanish public, the section of that public which does not speak Italian will think that the words ‘castello’ and ‘castelló’ each refer to a surname, or even to the same surname. For that section of the relevant public, the marks at issue may therefore be regarded as being conceptually similar (see, to that effect, judgment of 23 February 2010 in Özdemir v OHIM — Aktieselskabet af 21. november 2001 (James Jones), T‑11/09, not published, EU:T:2010:47, paragraph 34).
109    It must be added that the presence, in the earlier EU trade mark No 4199907, of the words ‘castelló y juan s.a.’, is not liable to create a conceptual difference from the mark applied for since — given the size of those words — they are not very visible. Even if those words were taken into account by the relevant public, they would in any event be perceived as being merely a reference to the name of a company.
Global assessment of the likelihood of confusion
110    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 (judgments of 29 September 1998, Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
111    In the present case, as regards frozen fruits and vegetables, it has already been found (see paragraph 82 above) that none of the earlier goods or services was similar to those goods. It must therefore be concluded — despite the other elements of assessment to be taken into account, that is to say, in particular, the significant visual and phonetic similarity between the signs at issue — that there is no likelihood of confusion.
112    As regards the other goods covered by the mark applied for, taking into account, first, the fact that the goods at issue show, at the very least, a low degree of similarity, secondly, that the marks at issue are very similar visually and phonetically, that there is no significant conceptual difference for the relevant public and that, for a section of that public, there is even some conceptual similarity, and, thirdly, that the level of attention of the public is below average, it must be held that the Board of Appeal did not err in concluding that there is a likelihood of confusion.
113    Even if there were only a very low degree of similarity between the goods covered by the mark applied for and those designated by the earlier trade marks, the Board of Appeal would not — in view of the other factors mentioned in the preceding paragraph — have erred in concluding that there was a likelihood of confusion.
114    It follows from the foregoing that the plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94 should be upheld only as regards the frozen fruit and vegetables covered by the mark applied for in Class 29.
115    In view of all the foregoing, the contested decision must be annulled insofar as the Board of Appeal held that there was likelihood of confusion as regards the frozen fruit and vegetables in Class 29.
116    The action must be dismissed as to the remainder.
Costs
117    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Pursuant to the third paragraph of that provision, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. However, if it appears justified in the circumstances of the case, the Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party.
118    As the action has mostly been unsuccessful, the Court considers it fair, having regard to the circumstances of the case, that the applicant bear, in addition to its own costs, three quarters of the costs incurred by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber),
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 April 2014 (Joined Cases R 1233/2013-2 and R 1258/2013-2) relating to opposition proceedings between Horno del Espinar and Lidl Stiftung & Co. insofar as the Board of Appeal held that there was a likelihood of confusion as regards the frozen fruit and vegetables in Class 29 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended;
2.      Dismisses the action as to the remainder;
3.      Orders Lidl Stiftung & Co. to bear, in addition to its own costs, three quarters of the costs incurred by EUIPO;
4.      Orders EUIPO to bear one quarter of its own costs.
Gervasoni
Madise
Csehi
Delivered in open court in Luxembourg on 4 October 2016.
[Signatures]
* Language of the case: English.