JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
7 May 2019 (*)
(EU trade mark — Opposition proceedings — Applications for the EU figurative marks SOLGAR Since 1947 MultiPlus WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA — Earlier national word mark MULTIPLUS — Relative ground for refusal — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Cases T‑152/18 to T‑155/18,
Sona Nutrition Ltd, established in Dublin (Ireland), represented by A. von Mühlendahl and H. Hartwig, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Solgar Holdings, Inc., established in Ronkonkoma, New York (United States), represented by K. Neefs and S. Cubitt, lawyers,
ACTIONS brought against the decisions of the Fourth Board of Appeal of EUIPO of 20 December 2017 (Cases R 1319/2017-4, R 1321/2017-4, R 1322/2017-4 and R 1323/2017-4), relating to opposition proceedings between Sona Nutrition and Solgar Holdings,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, I. Labucka (Rapporteur) and A. Dittrich, Judges,
Registrar: E. Hendrix, Administrator,
having regard to the applications lodged at the Court Registry on 5 March 2018,
having regard to the responses of EUIPO lodged at the Court Registry on 16 May 2018,
having regard to the responses of the intervener lodged at the Court Registry on 15 May 2018,
having regard to the reassignment of the cases to a new Judge-Rapporteur,
having regard to the decisions of 13 November 2018 joining Cases T‑152/18 to T‑155/18 for the purposes of the oral part of the procedure,
having regard to the Court’s written question to the parties,
further to the hearing on 17 January 2019,
gives the following
Judgment
Background to the dispute
1        On 27 February 2015, the intervener, Solgar Holdings, Inc., filed four applications for registration of EU trade marks with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU)
2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017, L 154, p. 1)).
2        Registration as marks was sought for the following figurative signs:
–        In Case T‑152/18:
–        In Case T‑153/18:
–        In Case T‑154/18:
–        In Case T‑155/18:
3        The goods in respect of which registration was sought are in Class 5 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 to the following description: ‘Vitamins; dietetic substances; food for babies; pharmaceutical preparations; herbal preparations; all for human use’.
4        The EU trade mark applications were published in European Union Trade Marks Bulletin No 53/2015 of 18 March 2015 (in Case T‑152/18), No 55/2015 of 23 March 2015 (in Case T‑153/18), No 50/2015 of 13 March 2015 (in Case T‑154/18) and No 49/2015 of 12 March 2015 (in Case T‑155/18).
5        On 8 June 2015 (in Cases T‑154/18 and T‑155/18), 17 June 2015 (in Case T‑152/18) and 22 June 2015 (in Case T‑153/18), the applicant, Sona Nutrition Ltd, filed notices of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade marks applied for in respect of the goods referred to in paragraph 3 above.
6        The oppositions were based on the earlier Irish word mark MULTIPLUS, which was registered on 27 November 1995 under the number 161365 and covers goods in Class 5 corresponding to the following description: ‘Vitamins, minerals, nutritional supplements, dietetic products and tonics’.
7        The ground relied on in support of the oppositions was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        At the intervener’s request, the applicant furnished, in all four proceedings, proof of use of the earlier mark.
9        On 10 May 2017 (in Case T‑152/18) and 17 May 2017 (in Cases T‑153/18 to T‑155/18), the Opposition Division rejected the oppositions in their entirety, on the ground that, since the signs at issue were dissimilar, one of the necessary conditions set out in Article 8(1)(b) of Regulation No 207/2009 was not satisfied.
10      On 20 June 2017, the applicant filed notices of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decisions of the Opposition Division.
11      By four decisions of 20 December 2017 (‘the contested decisions’) the Fourth Board of Appeal of EUIPO dismissed the appeals. Like the Opposition Division, it took the view that the signs at issue, considered as a whole, were not similar in the impressions that they conveyed to the relevant public and that therefore one of the necessary conditions for the application of Article 8(1)(b) of Regulation 2017/1001 was not satisfied. In particular, the Board of Appeal, first of all, found that the element ‘multiplus’, which is common to the marks at issue, was not distinctive in the marks applied for with regard to the goods at issue, but, as regards the earlier trade mark, that it had a very low degree of distinctiveness inasmuch as it had to be acknowledged that a registered national trade mark has at least a certain degree of distinctiveness. As regards, next, the similarity of the signs, it was found that there was a certain visual similarity and a low degree of phonetic similarity between the signs, but that they were not similar conceptually. Lastly, the Board of Appeal took the view that the element ‘multiplus’ did not have an independent distinctive role in the marks applied for, in particular, because it was not distinctive in relation to the goods covered by those marks, and that that element could not play a decisive role and lead to the conclusion that the signs at issue were similar overall.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decisions;
–        order EUIPO and the intervener to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the actions;
–        order the applicant to pay the costs incurred by EUIPO.
14      The intervener contends that the Court should:
–        dismiss the actions;
–        order the applicant to pay the costs incurred by the intervener;
–        in the event that it finds that the actions are admissible and well founded, remit the cases to the Board of Appeal.
Law
15      After hearing the parties’ views in that regard at the hearing, the Court decided that it was appropriate to join the present cases for the purposes of the judgment, in accordance with Article 68 of the Rules of Procedure of the General Court.
16      In support of its actions, the applicant relies, in essence, on two pleas in law, the first of which alleges infringement of the obligation to state reasons under Article 94(1) of Regulation 2017/1001 and the second of which alleges infringement of Article 8(1)(b) of that regulation.
17      It is appropriate to begin the examination of the present case by analysing the second plea.
18      In the context of that plea, the applicant complains that the Board of Appeal erred in finding that the signs were different and submits that the Board of Appeal should have carried out the assessment of the likelihood of confusion.
19      EUIPO and the intervener dispute the applicant’s claims.
20      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii)of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
21      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
22      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
23      It is in the light of the abovementioned principles that the present plea must be examined.
The relevant public
24      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 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).
25      In the present case, the Board of Appeal found, in paragraph 10 of the contested decisions, that the relevant public consisted of the general public and health professionals or nutritionists in Ireland and that its level of attention was higher than average in view of the fact that the goods concerned might affect the health of consumers.
26      Those findings, which are correct and have not, moreover, been disputed by the applicant, must be upheld.
The comparison of the signs
27      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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 this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
28      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 of 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 on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
29      In the present case, it is necessary to compare, on the one hand, the word sign MULTIPLUS and, on the other hand, the figurative marks as reproduced in paragraph 2 of the present judgment. Those figurative marks were described by the Board of Appeal in paragraph 14 of the contested decisions as follows: ‘[T]he contested sign[s] [are] figurative mark[s] in the form of a label formed by the element “Multi[P]lus” in rather standard typeface in white, placed on a purple[/red/green/light green] banner, above it and on a light-brown background appears the word “[solgar]” in a circular logo ... preceded by the word “[s]ince” and followed by the numbers “1947”, in italics and in smaller dark-brown typeface; beneath it appear the words “[wholefood concentrate multivitamin formula]” in dark-brown standard capital letters and smaller typeface, on the same light-brown background.’
30      That description is accurate and must therefore be accepted.
The distinctive character of the element ‘multiplus’
31      In the present case, the Board of Appeal upheld the Opposition Division’s findings that the element ‘multiplus’ was not distinctive in relation to the goods at issue since it designates multivitamin and multi-mineral supplements. It added, relying on the case-law of the General Court and the previous practice of the Boards of Appeal, that that element consisted of two non-distinctive elements, ‘multi’ and ‘plus’, and that the combination of those elements was merely the sum of non-distinctive elements.
32      Consequently, as regards the marks applied for, it found that that element was not distinctive in those marks and that, as a result, it was not, in spite of its size, the dominant element. It took the view that consumers would pay more attention to the figurative element ‘solgar’.
33      By contrast, as regards the earlier mark, the Board of Appeal stated, referring to paragraph 47 of the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314), that it had to be acknowledged that a registered national mark
has at least a certain degree of distinctiveness and that therefore, considered as a whole, the earlier mark had a very low degree of distinctiveness.
34      The applicant submits that the Board of Appeal did not show that the element ‘multiplus’ was merely a combination of elements that are devoid of distinctive character and was, in the marks applied for, itself devoid of distinctive character. It maintains that the element ‘multiplus’ is a fanciful term which has no direct relation to the goods at issue. Likewise, it submits that, contrary to the Board of Appeal’s findings, the element ‘multiplus’ maintains an independent distinctive role in the marks applied for. Furthermore, in the context of its first plea, the applicant maintains that the Board of Appeal’s findings that the earlier mark, which consists of a single term, has some distinctiveness in the relevant territory, whereas the same term in the marks applied for
has no distinctiveness, are irreconcilable.
35      EUIPO, in the context of its response to the applicant’s first plea, to which it expressly refers, submits, inter alia, that, while the assessment of the distinctiveness of the earlier trade mark cannot result in denying any distinctiveness to it, nothing prevented the Board of Appeal from including in its considerations that the word ‘multiplus’ in the marks applied for is descriptive of the goods in question, given that EUIPO is obliged to verify the way in which the relevant public perceives the sign which is identical to the national trade mark in the marks applied for and evaluate, if necessary, the degree of distinctiveness of that sign.
36      The intervener maintains that the Board of Appeal enjoyed full discretion to assess the distinctive character of the element ‘multiplus’ in the marks applied for. It also submits that the Board of Appeal correctly found that the element ‘multiplus’ was merely the sum of non-distinctive elements with regard to the goods at issue and that the earlier mark had only a very low degree of distinctiveness.
37      In the first place, it is necessary to confirm the Board of Appeal’s findings that the element ‘multiplus’, which is common to the signs at issue, consists of two non-distinctive elements, namely ‘multi’ and ‘plus’ and that the combination of those elements is merely the sum of those elements. Likewise, the Board of Appeal was fully entitled to find that that element designated the goods at issue, namely multivitamin and multi-mineral supplements. That element cannot therefore be described as fanciful, contrary to what the applicant submits.
38      In the second place, as regards the precise degree of distinctiveness which has to be attributed to the element ‘multiplus’, it must be stated that the Board of Appeal was fully entitled to find, in essence, that, in spite of the potentially descriptive nature of the element ‘multiplus’, the earlier mark, which consists exclusively of that word element, has a very low degree of distinctiveness.
39      In order to avoid infringing Article 8(1)(b) of Regulation 2017/1001, it is necessary to acknowledge that a national mark on which an opposition to the registration of an EU trade mark is based has a certain degree of distinctiveness (judgments of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47, and of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraph 67).
40      However, although it must be acknowledged, in the light of the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraph 47), that a term which constitutes the only element of a national mark has some independent distinctive character because it has been registered, that cannot, however, mean that that term must be acknowledged as having such a high degree of distinctiveness that it gives rise to an unconditional right to oppose the registration of every later trade mark in which it appears (see, to that effect, judgment of 13 May 2015, Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, not published, EU:T:2015:279, paragraph 43).
41      By contrast, the Board of Appeal’s finding relating to the distinctive character of the same element in the marks applied for, a finding which is referred to in paragraph 32 above, namely that the element ‘multiplus’ is devoid of distinctive character in those marks, cannot be accepted.
42      In that regard, EUIPO and the intervener submit that the Board of Appeal was required to assess the way in which the public perceives the element which is identical to the earlier mark and is included in the marks applied for.
43      However, it must be borne in mind that the Court of Justice has held that the obligation on the part of EUIPO and the General Court to verify the way in which the relevant public perceives a sign which is identical to a national trade mark in a mark which has been applied for and to evaluate, if necessary, the degree of distinctiveness of that sign, cannot culminate in a finding that that sign has no distinctive character, since such a finding would not be compatible with the coexistence of EU trade marks and national trade marks or with Article 8(1)(b) of Regulation 2017/1001, read in conjunction with Article 8(2)(a)(ii) thereof (judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 42 and 44).
44      The Court of Justice has clearly stated that such a finding would be detrimental to national trade marks that are identical to a sign that is regarded as being devoid of distinctive character, as the registration of such an EU trade mark would bring about a situation that is likely to eliminate the national protection of those marks. Accordingly, such a finding would not respect the system established by Regulation
2017/1001, which is based on the coexistence of EU trade marks and national trade marks as stated in the seventh recital of that regulation, given that the validity of an international or national trade mark may be called into question for lack of distinctive character only in cancellation proceedings brought in the Member State concerned (judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 45).
45      Consequently, contrary to what the intervener submits, the degree of freedom which the Board of Appeal has in assessing the distinctive character of the element ‘multiplus’ when it is included in the marks applied for, is limited, as is apparent from the case-law cited in paragraph 43 above, and cannot culminate in the finding that an element that is identical to an earlier mark which has been registered in a Member State is devoid of distinctive character when it is included in a later composite mark.
46      It follows that, in describing the element ‘multiplus’ as being devoid of distinctive character when it was included in the marks applied for, the Board of Appeal erred in law. In order to comply with the findings in the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314), which have been referred to in paragraphs 43 and 44 of the present judgment, it should have accorded it at least a very low degree of distinctiveness.
47      That finding is not inconsistent with the recent case-law of the General Court which is relied on by the parties.
48      The Court did not in any of
the cases on which EUIPO relied at the hearing, which relate to the distinctive character of the element ‘halloumi’ and gave rise to the judgments of 13 July 2018, Cyprus v EUIPO — POA (COWBOYS HALLOUMI) (T‑847/16, not published, under appeal, EU:T:2018:481), of 13 July 2018, Cyprus v EUIPO — Papouis Dairies (Pallas Halloumi) (T‑825/16, under appeal, EU:T:2018:482), of 23 November 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO — Papouis Dairies (Papouis Halloumi) (T‑702/17, not published, EU:T:2018:832), of 23 November 2018, Cyprus v EUIPO — Papouis Dairies (fino Cyprus Halloumi Cheese) (T‑417/17, not published, EU:T:2018:833), of 23 November 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO — Papouis Dairies (fino Cyprus Halloumi Cheese) (T‑416/17, not published, EU:T:2018:834), and of 23 November 2018, Cyprus v EUIPO — Papouis Dairies (Papouis Halloumi) (T‑703/17, not published, EU:T:2018:835), hold that the element that was identical to an earlier national mark was devoid of distinctive character when it was included in a later mark.
49      Likewise, even though the Court held, in paragraph 45 of the judgment of 13 May 2015, TPG POST (T‑102/14, not published, EU:T:2015:279), that a term which was part of a composite mark could be perceived differently when it is used on its own or in a different context, it did not, however, state that that term, which was identical to the earlier national mark, was devoid of any distinctive character.
50      Furthermore, even though the perception of an element may vary according to whether it is used on its own or as part of a composite mark, as the Court held in the case which gave rise to the judgment of 13 May 2015, TPG POST (T‑102/14, not published, EU:T:2015:279, paragraph 45), a finding that an element which is identical to a national mark does not have any distinctive character is incompatible with Regulation 2017/1001, as is apparent from the case-law cited in paragraph 43 above.
51      It must be pointed out that the error which the Board of Appeal made and which has been established in paragraph 46 above, marred all of its reasoning, with the result that the second plea must be upheld and the contested decisions must be annulled without it being necessary to examine the applicant’s other arguments.
52      As regards, the intervener’s third head of claim seeking that the case be remitted to the Board of Appeal, it is sufficient to observe that, in an action before the EU judicature against the decision of a Board of Appeal of EUIPO, the latter is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with the judgment of the EU judicature. It is therefore for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see, to that effect, judgment of 15 February 2017, M. I. Industries v EUIPO — Natural Instinct (Natural Instinct Dog and Cat food as nature intended), T‑30/16, not published, EU:T:2017:77, paragraph 92).
Costs
53      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.
54      Since EUIPO and the intervener have been unsuccessful in the present case, they must, in accordance with the form of order sought by the applicant, be ordered to bear their own costs and to pay the costs incurred by the applicant.
On those grounds,
THE GENERAL COURT (Fifth Chamber),
hereby:
1.      Joins Cases T‑152/18 to T‑155/18 for the purposes of the judgment;
2.      Annuls the decisions of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 December 2017 (Cases R 1319/2017-4, R 1321/2017-4, R 1322/2017-4 and R 1323/2017-4);
3.      Orders EUIPO and Solgar Holdings, Inc. to bear their own costs and each to pay half of the costs incurred by Sona Nutrition Ltd.
Gratsias
Labucka
Dittrich
Delivered in open court in Luxembourg on 7 May 2019.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.