JUDGMENT OF THE GENERAL COURT (First Chamber)
3 October 2017 (*)
(Community design — Invalidity proceedings — Registered Community design representing a container for sweets — Earlier international three-dimensional mark — Shape of a standard container which can be filled with sweets — Likelihood of confusion — Application of national law — Article 25(1)(e) of Regulation (EC) No 6/2002 — Article 62 and Article 63(1) of Regulation No 6/2002)
In Case T‑695/15,
BMB sp. z o.o., established in Grójec (Poland), represented by K. Czubkowski, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ferrero SpA, established in Alba (Italy), represented by M. Kefferpütz, lawyer,
ACTION brought against the decision of the Third Board of Appeal of EUIPO of 8 September 2015 (Case R 1150/2012-3), relating to invalidity proceedings between Ferrero and BMB,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius and U. Öberg (Rapporteur), Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 24 November 2015,
having regard to the response of EUIPO lodged at the Court Registry on 2 May 2016,
having regard to the response of the intervener lodged at the Court Registry on 29 April 2016,
further to the hearing on 28 March 2017,
gives the following
Judgment
Background to the dispute
1        The applicant, BMB sp. z o. o., is the right holder of the Community design filed on 15 November 2007 and registered on the same day under No 826 680-0001 with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
2        The contested design in respect of which registration was sought is for comfit boxes and containers in Class 09.03 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, and was published in Community Design Bulletin No 2007/191 of 14 December 2007. It is represented as follows:
View 1
View 2
View 3
3        On 11 July 2011, the intervener, Ferrero SpA, filed an application for a declaration of invalidity of the contested design before EUIPO pursuant to Article 25(1)(c) to (g) of Regulation No 6/2002.
4        In support of its application, the intervener invoked three earlier rights, including International Registration No 405 177 of a three-dimensional trade mark, registered on 12 March 1974, with effect in, in particular, France. The registration is protected for goods in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, including for ‘sweets’, and is reproduced below:
5        By decision of 25 April 2012, the Cancellation Division granted the application for a declaration of invalidity under Article 25(1)(e) of Regulation No 6/2002 on the basis of the international registration referred to above. It considered, in essence, that, on account of the similarity of the signs and the identity of the goods, there was a likelihood of confusion on the part of the relevant public.
6        On 21 June 2012, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the Cancellation Division’s decision.
7        On 26 August 2012, the applicant submitted a written statement setting out the grounds of that appeal.
8        By decision of 8 September 2015 (‘the contested decision’), the Third Board of Appeal of EUIPO dismissed the appeal and upheld the invalidity of the contested design pursuant to Article 25(1)(e) of Regulation No 6/2002.
9        The Board of Appeal held that the distinctive character per se of the earlier international registration was ‘below average’, since it ‘shows a standard container which can be filled with different products, such as sweets’. However, it held, in essence, that, on account of the high visual similarity of the signs at issue, which are not offset by phonetic and conceptual differences, and of the fact that the goods in question have at least a high degree of similarity, there was a likelihood of confusion on the part of the relevant public.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
12      In support of its action, the applicant raises, in essence, three pleas in law.
13      By its first plea, alleging infringement of Article 62 of Regulation No 6/2002, the applicant argues that the Board of Appeal founded its decision on an incorrect legal basis.
14      The second plea alleges infringement of Article 25(1)(e) of Regulation No 6/2002, by which the applicant claims that the Board of Appeal erred when it found that there was a likelihood of confusion.
15      By its third plea, alleging infringement of Article 63(1) of Regulation No 6/2002, the applicant argues that the Board of Appeal failed to have regard for evidence it should have taken into account for the purpose of ruling on the appeal, which led it to commit errors in its assessment of the likelihood of confusion.
16      The arguments raised in the second and third pleas overlap substantially and the Court considers that they should be examined together.
17      During the hearing of 28 March 2017, the Court questioned the parties on the content and the application of Article L713-3 of the French code de la propriété intellectuelle (Intellectual Property Code) and on the possible relevance of judgment No 2008/10106 of 6 November 2009 of the Third Chamber of the tribunal de grande instance de Paris (Paris Regional Court) (France). The parties expressed their views in that regard during the hearing and, at EUIPO’s request, in written observations following the hearing and admitted by the Court.
The first plea in law, alleging an incorrect legal basis
18      In its first plea in law, the applicant argues that the Board of Appeal founded its decision on an incorrect legal basis, inasmuch as it was based on Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), and not on Article L713-3 of the French Intellectual Property Code, which is the applicable provision in this case. It claims that the application of that regulation infringes the duty to state reasons under Article 62 of Regulation No 6/2002.
19      EUIPO contends that the Board of Appeal assessed the facts of the case in the light of Article L713-3 of the French Intellectual Property Code. It concedes that the sole reference to Article 8(1)(b) of Regulation No 207/2009 in the contested decision is a formal error, but disputes that it is a justification for the annulment of that decision. According to EUIPO, the applicant has not, in any event, claimed that the incorrect reference had a decisive effect on the resolution of the dispute, which renders its plea ineffective and insufficient to justify the annulment of the contested decision.
20      In the present case, it is clear that the first plea must be interpreted by the Court as alleging an incorrect legal basis and not an infringement of the duty to state reasons.
21      The grounds for declaring a Community design invalid are set out exhaustively in Article 25 of Regulation No 6/2002. Article 25(1)(e) of that regulation provides that a design may be declared invalid if it is used in a subsequent design and EU law or the law of the Member State concerned governing that sign confers on the right holder the right to prohibit such use.
22      It follows that the correct legal basis for the purpose of giving judgment on the application for a declaration of invalidity filed by the intervener on the basis of the earlier international registration was Article L713-3 of the French Intellectual Property Code, which confers on that intervener, as the right holder of an international registration designating France, the right to prohibit the use of the contested design.
23      In the present case, the Board of Appeal did in fact apply Article L713-3 of the French Intellectual Property Code and referred to it in paragraphs 11, 16 and 17 of the contested decision. Indeed, in paragraphs 16 and 17 of the contested decision, the Board of Appeal began its assessment by citing that provision, which confers upon the right holder of an international registration the right to prohibit the use of the contested design in France pursuant to Article 25(1)(e) of Regulation No 6/2002. The Board of Appeal observed that Article L713-3 of the French Intellectual Property Code provides that the imitation of a mark and the use of an imitated mark, in respect of identical or similar goods or services to those designated in the registration, are prohibited, unless the right holder authorises such use, if the use of that mark could lead to a likelihood of confusion on the part of the public.
24      In that regard, Article L713-3 of the French Intellectual Property Code transposes the provisions of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which, at the time the contested decision was adopted, had been replaced by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25). As rightly noted by EUIPO, it therefore suffices to interpret the likelihood of confusion in accordance with the case-law of the Court of Justice of the European Union.
25      Moreover, in its assessment of the likelihood of confusion, the Board of Appeal cited case-law of the Court of Justice interpreting the provisions of those directives to approximate the laws of the Member States relating to trade marks.
26      It is thus apparent from the contested decision that the Board of Appeal based its reasoning on Article L713-3 of the French Intellectual Property Code and that, therefore, the sole reference made by the Board of Appeal to Article 8(1)(b) of Regulation No 207/2009, in paragraph 33 of that decision, is a mere formal error that did not have a decisive effect on the resolution of the dispute.
27      It follows that the first plea in law must be rejected.
The second and third pleas in law alleging, respectively, infringement of Articles 25(1)(e) and 63(1) of Regulation No 6/2002
28      By its second and third pleas, the applicant alleges, on the one hand, that the Board of Appeal infringed Article 25(1)(e) of Regulation No 6/2002 inasmuch as it wrongly held that there was a likelihood of confusion and, on the other hand, that the Board of Appeal infringed Article 63(1) of that regulation inasmuch as it failed to have regard to evidence that it should have taken into consideration for the purpose of ruling on the appeal and that led it to err in its assessment of the likelihood of confusion.
29      As stated in paragraph 23 above, Article L713-3 of the French Intellectual Property Code confers upon the right holder of the international registration the right to prohibit the use of the contested design, if it could lead to a likelihood of confusion. Article L713-3 of the French Intellectual Property Code transposes the provisions of First Directive 89/104, which, at the time the contested decision was adopted, had been replaced by Directive 2008/95, and it suffices to interpret the likelihood of confusion under that provision in accordance with the case-law of the Court of Justice. It is not therefore necessary to take into consideration national case-law on the earlier international registration in the assessment of the likelihood of confusion.
30      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the 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, that of the goods or services covered and of the distinctive and dominant elements thereof (see, to that effect, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraphs 22 to 23; of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraphs 23 to 29; and of 12 May 2010, Beifa Group v OHIM — Schwan-Stabilo Schwanhäußer (Instrument for writing), T‑148/08, EU:T:2010:190, paragraphs 97 to 99).
31      In general terms, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. As is apparent from the case-law of the Court of Justice, the visual, phonetic and conceptual aspects are relevant (see, by analogy, judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).
32      Moreover, the average consumer only rarely has a chance to compare the various marks directly, so he must rely on his 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 (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
33      Finally, the criteria for the assessment of the distinctive character of three-dimensional marks consisting of the shape of the product itself are no different to those applicable to other categories of marks (see, by analogy, judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 26 and the case-law cited).
34      The question whether the Board of Appeal was right in finding that there was a likelihood of confusion on the part of the relevant public must be examined in the light of those considerations.
The relevant public
35      The applicant does not dispute the Board of Appeal’s assessment that the relevant public consists of the French general public.
36      The applicant does however dispute the Board of Appeal’s finding that the relevant public has a lower than average level of attention with regard to sweets.
37      According to settled case-law, given that the goods in question are confectionery, the level of attention of the relevant public is rather low (see, by analogy, judgments of 10 October 2012, Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, not published, EU:T:2012:535, paragraph 99, and of 26 February 2016, Mederer v OHIM — Cadbury Netherlands International Holdings (Gummi Bear-Rings), T‑210/14, not published, EU:T:2016:105, paragraph 28).
38      The Board of Appeal was therefore right to consider that the level of attention of the relevant public, on account of the low price and frequent purchase of such confectionery, was rather low.
The distinctive and dominant elements
39      The applicant claims that the Board of Appeal erred when it asserted that the overall impression conveyed by the earlier international registration contained no dominant elements, given that the clearly defined and bevelled edges of the container are a significant feature of it. Furthermore, the applicant claims that the Board of Appeal failed to have regard to the label, the logo MIK MAKI and the very clear curvature of the edges of the contested design.
40      First, with regard to the earlier international registration, the Board of Appeal considered that it represented a standard container that can be filled with various products, such as sweets, and that its distinctive character per se was below average. That finding is not disputed by the applicant, who alleges that the Board of Appeal should have taken more into account the shape elements which depart from the standard, namely the edges of the container.
41      The weak distinctive character of a container does not necessarily imply that it contains no dominant element, since it may, because, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see, by analogy, judgment of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 32 and the case-law cited).
42      In paragraph 32 of the contested decision, the Board of Appeal did in fact find that the earlier international registration contained no element which was more dominant or distinctive than the other elements and that it would be perceived as a whole.
43      In those circumstances, it should be noted that the lines along the length of the container define its form, display only two edges and do not serve to emphasise the importance of any specific part. They are not likely to make an impression on consumers and be remembered by them.
44      Consequently, the applicant’s argument concerning the impact of the edges on the overall impression conveyed by the international registration must be rejected since it has failed to establish that the Board of Appeal erred when it found that those edges were not a dominant element of that international registration.
45      Secondly, concerning the contested design, the Board of Appeal correctly took into account all the relevant elements in its assessment of the distinctive and dominant elements.
46      It considered, in paragraph 32 of the contested decision, that the label is not a negligible detail, but remains nonetheless a mere detail, in so far as that label will be perceived as a mere label affixed to a container that contains sweets. Consequently, it held that neither the label of the contested design nor the MIK MAKI logo would dominate the overall impression conveyed by the contested design, overshadowing the impact of the three-dimensional box.
47      With regard to the fact that the contested design does not represent a parallelepiped box, the Board of Appeal stated that that specific feature would not be immediately apparent and would not be likely to affect the perception of the average consumer.
48      Therefore, the applicant’s arguments are not liable to call into question the Board of Appeal’s finding that the label of the contested design and the words on that label will be considered by the relevant public as not overshadowing the impact of the three-dimensional box and not affecting the perception that the average consumer will have of it.
Visual comparison of the registrations at issue
49      The applicant claims that the Board of Appeal erred in its assessment of the similarity between the earlier international registration and the contested design. It argues that it was essential to consider the fundamental differences between them, in particular with regard to the lid and the shape of the containers, the label and additional word and graphic elements of the contested design, which clearly rule out similarity and, therefore, a likelihood of confusion. According to the applicant, the Board of Appeal failed to have regard to the word elements and the very clearly rounded shape of the edges, visible at first sight in one of the views of the contested design, the difference between the lids of the containers and the additional signs placed there, in particular the logo MIK MAKI.
50      In the present case, as is apparent from paragraphs 20 and 23 of the contested decision, the earlier international registration and the contested design both consist of transparent boxes for sweets. The graphical representation of the earlier international registration, namely a thin rectangular box with an opaque lid and a label ‘straddling’ the box from front to back, is included in the contested design. The appearance of the white lid of each box is also similar.
51      The applicant argues that there is an error and an inconsistency in the Board of Appeal’s reasoning regarding the visual comparison of the registrations and the dominant elements of the contested design. According to the applicant, that error and that inconsistency consist in the fact that the contested design is represented filled with sweets, which are however not taken into account as regards the visual comparison of the registrations, although they enable a clear distinction to be made between the registrations and were taken into account in the analysis of the dominant elements of the contested design.
52      In that regard, contrary to the applicant’s claim, and as the Board of Appeal rightly held in paragraph 27 of the contested decision, the fact that the contested design is represented filled with sweets cannot constitute a relevant point of visual comparison, since the contested design is registered merely for the box or container of those sweets and that it is clear that the earlier international registration was also registered for a filling with sweets.
53      Furthermore, so far as concerns the elements that dominate the overall impression conveyed by the contested design, the sweets are not a specific component of that registration which may be taken into account. The Board of Appeal did not refer to the sweets inside the box as a component, but as one factor among others that contradicted the fact that the word element is the only dominant element. Accordingly, there is no inconsistency or error in that assessment.
54      Admittedly, it must be accepted that the contested design differs in certain respects from the earlier international registration, principally regarding the curved edges, which are indeed slightly visible on the registered side views, and the label of the contested design, compared to the rectangular shape of the international registration.
55      Contrary to the applicant’s claim, the Board of Appeal assessed all the views of the contested design in paragraphs 24 to 26 of the contested decision. It held in paragraphs 24 and 25 of the contested decision, as regards the fact that the contested design is not visually rectangular, that it is not immediately apparent and does not make it possible to distinguish between the registrations. In paragraph 26 of the contested decision, it held that the difference between the labels, in so far as the label of the contested design protrudes further down the side of the box than in the earlier international registration, will be noticed by the relevant public only upon a side-by-side comparison, which will seldom take place in the market.
56      However, in view of their secondary importance, those differences cannot override the similarities noted between the contested design and the earlier international registration. Indeed, taking into account the case-law recalled above, according to which the public retains only an imperfect recollection of the sign, consumers will not perceive the differences referred to if the shapes are presented to them at different times (judgment of 25 April 2013, Chen v OHIM — AM Denmark (Cleaning device), T‑55/12, not published, EU:T:2013:219, paragraph 33). The Board of Appeal therefore rightly held that the two signs were visually highly similar.
57      Contrary to the applicant’s claim, the Board of Appeal did not fail to have regard to the word elements of the contested design and, on the contrary, included them in its assessment. However, given the absence of word elements in the international registration, it rightly held in paragraph 29 of the contested decision that no phonetic comparison of the signs could be carried out (see, to that effect, judgment of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraphs 53 to 65).
58      The applicant argues that the Board of Appeal limited itself to establishing that the conceptual similarity sufficed for it to be found that there is a likelihood of confusion. As the Board of Appeal however held in paragraph 30 of the contested decision, a conceptual comparison is also impossible given that the registrations at issue are devoid of all meaning.
59      Consequently, the Board of Appeal was right to consider, in paragraph 33 of the contested decision, that the signs at issue had significant visual similarities and that no phonetic or conceptual comparison was possible.
60      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 signs 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 signs, and vice versa (see, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
61      As stated in paragraph 30 above, the likelihood of confusion must be assessed globally, an assessment which depends on several factors relevant to the circumstances of the case, and not only the shape of the packaging. Furthermore, contrary to the applicant’s claim, the perception of the signs by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25).
62      It is clear from all the foregoing that, in so far as the goods in question are at least highly similar and the signs at issue are similar, the Board of Appeal committed no error when it held that there is a likelihood of confusion, even though the earlier international registration has a weak distinctive character.
63      It follows that the second and third pleas must be rejected and, therefore, the action in its entirety.
Costs
64      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 forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders BMB sp. z o.o. to pay the costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 3 October 2017.
E. Coulon
I. Pelikánová
Registrar
President
*      Language of the case: English.