JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
28 April 2021 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark PRIMART Marek Łukasiewicz – Earlier national word marks PRIMA – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – Referral)
In Case T‑584/17 RENV,
Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz, established in Wołomin (Poland), represented by J. Skołuda, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Bolton Cile España, SA, established in Madrid (Spain), represented by F. Celluprica, F. Fischetti and F. De Bono, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 June 2017 (Case R 1933/2016-4), relating to opposition proceedings between Bolton Cile España and Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 24 August 2017,
having regard to the response of EUIPO lodged at the Court Registry on 17 November 2017,
having regard to the response of the intervener lodged at the Court Registry on 12 November 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
having regard to the judgment of the General Court of 12 September 2018,
having regard to the judgment of the Court of Justice of 18 June 2020,
having regard to the observations of EUIPO and of the intervener lodged at the Court Registry on 19 and 13 August 2020, respectively,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 27 January 2015, the applicant, Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), repealed and replaced, with effect from 1 October 2017, 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 a mark was sought for the following figurative sign:
3        The goods in respect
of which registration was sought are 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 (‘the Nice Agreement’), and correspond to the following description: ‘Sugars, natural sweeteners, sweet coatings and fillings, bee products; Coffee, teas and cocoa and substitutes therefor; Ice, ice creams, frozen yogurts and sorbets; Salts, seasonings, flavourings and condiments; Baked goods, confectionery, chocolate and desserts; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Crackers.’
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2015/022 of 3 February 2015.
5        On 29 April 2015, the intervener, Bolton Cile España, SA, filed a notice of opposition, under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation No 2017/1001), to the registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The ground relied on in support of that opposition was the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) between, on the one hand, the mark applied for, and,
on the other, the Spanish mark relating to goods in Class 30 of the Nice Agreement and corresponding to the following description: ‘Sauces and condiments; coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparations made from cereals; bread; biscuits; cakes; pastry and confectionary; edible ices; honey; treacle; yeast; baking-powder; salt; mustard; pepper; vinegar; ice’ registered on 22 September 1973 under No 2578815 and renewed on 9 April 2013 at the Oficina Española de Patentes y Marcas (Spanish patents and trade marks office), under the name of:
‘PRIMA’
7        By decision of 2 September 2016, the Opposition Division of EUIPO rejected the opposition in its entirety on the ground that there was no likelihood of confusion on the Spanish market between the mark applied for and the earlier Spanish mark PRIMA.
8        On 24 October 2016, the intervener filed a notice 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 decision of the Opposition Division.
9        By decision of 22 June 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division, upheld the opposition, refused the trade mark application and ordered the applicant to bear the costs of the opposition and appeal proceedings. In the contested decision, the Board of Appeal essentially concluded that there was a likelihood of confusion between the marks at issue on the part of the relevant public (paragraph 28 of the contested decision).
Procedure before the General Court and the Court of Justice
10      By application lodged at the Registry of the General Court on 24 August 2017, the applicant brought an action for annulment of the contested decision.
11      In support of its action, it relied on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
12      By judgment of 12 September 2018, Primart v EUIPO – Bolton Cile España (PRIMART Marek Łukasiewicz) (T‑584/17, not published, EU:T:2018:530; ‘the original judgment’), the General Court dismissed the action in its entirety and upheld the Board of Appeal’s findings as regards the existence of a likelihood of confusion. In particular, it held, in paragraphs 87 to 90 of the original judgment, that the applicant’s argument concerning the weak distinctive character of the earlier mark was inadmissible on account of Article 76(1) of Regulation No 207/2009, since that argument had been put forward before it for the first time.
13      By application lodged at the Registry of the Court of Justice on 9 November 2018, the applicant lodged an appeal against the original judgment and asked the Court to set it aside. In support of its action, it raised a single ground of appeal, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14      By judgment of 18 June 2020, Primart v EUIPO (C‑702/18 P, ‘the judgment on appeal’, EU:C:2020:489), the Court of Justice set aside the original judgment.
15      In the judgment on appeal, the Court of Justice held, inter alia, as follows:
‘41            In that regard, it is true that, under Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, so that the Board of Appeal may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence presented by the parties. The fact remains that, as the Advocate General observed, in essence, in points 49 to 51 and 58 of his Opinion, the Board of Appeal is required to decide on all issues which, in the light of the facts, evidence and arguments provided by the parties and the relief sought, are necessary to ensure a correct application of that regulation and in respect of which it has all the information required in order to be able to take a decision, even if no element of law related to those issues has been relied on by the parties before it.
42            In the light of that obligation incumbent on the Board of Appeal, Article 76 of Regulation No 207/2009 and Article 188 of the Rules of Procedure of the General Court cannot be interpreted as meaning that the arguments seeking to call into question the considerations of the Board of Appeal relating to the issues on which it is required to take a decision will not form part of the subject matter of the proceedings before the General Court if they have not been put forward during the proceedings before the Board of Appeal.
43            In the context of opposition proceedings based on Article 8(1) of Regulation No 207/2009, the assessment of the inherent distinctive character of the earlier mark constitutes an issue of law which is necessary to ensure the correct application of that regulation, so that the instances of EUIPO are required to examine that issue, if necessary of their own motion. As that assessment does not presuppose any matter of fact which is for the parties to establish and does not require the parties to provide facts, arguments or evidence tending to establish that character, EUIPO alone is able to detect and assess the existence thereof having regard to the earlier mark on which the opposition is based. Consequently, that issue forms part of the subject matter of the proceedings before the Board of Appeal within the meaning of Article 188 of the Rules of Procedure of the General Court.
44            Accordingly, the reasoning of the Court set out in paragraphs 87 to 90 of the judgment under appeal misconstrued the scope of Article 76(1) of Regulation No 207/2009.’
16      On the basis of that assessment, the Court of Justice set aside the original judgment, referred the present case back to the General Court and reserved the costs.
Procedure and forms of order sought by the parties after referral
17      By documents lodged at the Court Registry on 19 and 13 August 2020, respectively, EUIPO and the intervener submitted their observations on the conclusions to be drawn from the decision of the Court of Justice for the outcome of the proceedings, in accordance with Article 217(1) of the Rules of Procedure.
18      In their observations, EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
19      The applicant did not submit any observations within the prescribed time limit.
Law
20      It should be noted at the outset that Regulation No 207/2009 was amended by Regulation 2015/2424, which entered into force on 23 March 2016. Regulation No 207/2009, as amended by Regulation 2015/2424, was repealed and replaced, with effect from 1 October 2017, by Regulation 2017/1001. Nevertheless, given the date on which the application for registration at issue was filed, namely 27 January 2015, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, in its original version (see, to that effect, judgment of 4 July 2019, FTI Touristik v EUIPO, C‑99/18 P, EU:C:2019:565, paragraph 2).
21      The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
22      It should be noted from the outset that, in the case of opposition based on an earlier individual trade mark, the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, is to be understood as being the risk that the public might believe that the goods or services covered by that mark and those covered by the mark applied for come from the same undertaking or, as the case may be, from economically linked undertakings (see judgment of 11 June 2020, China Construction Bank v EUIPO, C‑115/19 P, EU:C:2020:469, paragraph 54 and the case-law cited).
23      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 (judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42).
Comparison of the goods in question
24      As regards the comparison of the goods, the Board of Appeal found, in paragraph 16 of the contested decision, that the goods at issue, in Class 30 of the Nice Agreement, were all identical, highly similar or similar to an average degree to the earlier goods. The parties do not dispute that finding.
The relevant public and its level of attention
25      It must be stated at the outset that the Board of Appeal found, in paragraph 12 of the contested decision, that the relevant public consisted of the general public in Spain. The parties do not dispute that finding.
26      Next, the Board of Appeal held, in paragraph 26 of the contested decision, that the relevant public’s
level of attention with regard to the goods in question was average or even, taking into account the nature of those goods, lower than average.
27      According to the applicant, the Board of Appeal erred in finding that the level of attention of the relevant public was lower than average. It claims, that, even if the level of attention was lower than average for certain goods, in particular for the foodstuffs purchased on a daily basis, the Board of Appeal should have made a distinction between the goods in question and indicate in respect of which goods the average consumer was deemed to have a lower level of attention.
28      EUIPO and the intervener dispute those arguments.
29      It should be borne in mind that, in accordance with 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 (judgment of 11 November 2020, Deutsche Post v EUIPO – Pošta Slovenije (Representation of a stylised horn), T‑25/20, not published, EU:T:2020:537, paragraph 19 and the case-law cited).
30      It must be pointed out, first of all, that the applicant’s claim to the effect that the Board of Appeal considered that the level of attention of the relevant public was lower than average is based on an incorrect reading, in part, of the contested decision, paragraph 26 of which states that ‘the level of attention of the relevant public for the goods … concerned is average or, taking into account the nature of the goods, even lower than average’.
31      Next, as regards the category of goods in question, it should be noted that they are all common or everyday low-cost foodstuffs purchased frequently.
32      It follows from settled case-law that the level of attention of the relevant public, as regards goods in that category, can be categorised as relatively low and at best as average (see, to that effect, judgments of 18 July 2017, Freddo v EUIPO – Freddo Freddo (Freggo), T‑243/16, not published, EU:T:2017:522, paragraphs 26 and 28, and of 13 May 2020, Rot Front v EUIPO – Kondyterska korporatsiia ‘Roshen’ (РОШЕН), T‑63/19, not published, EU:T:2020:195, paragraph 22).
33      Furthermore, that case-law assesses the attention of the relevant public by considering the goods in Class 30 without establishing any distinction between them. In the present case, the goods in question are all common or everyday low-value foodstuffs purchased frequently. The applicant in no way justifies its claim that a different line of reasoning,
depending on the goods in question, ought to have been followed in the present case.
34      It follows that the applicant’s line of argument cannot succeed and it must therefore be held that the Board of Appeal was justified in finding that the level of attention of the relevant public for the goods at issue was average, or even lower than average, taking into account the nature of the goods.
Comparison of the marks at issue
35      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. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 58 and the case-law cited).
36      In particular, the Court of Justice has held that, in the context of examination of the likelihood of confusion, 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. 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 a dominant element (see judgment of 28 February 2019, Groupe Léa Nature v EUIPO,
C‑505/17 P, not published, EU:C:2019:157, paragraphs 37 and 38 and the case-law cited).
The distinctive and dominant elements of the mark applied for
37      In paragraph 19 of the contested decision, the Board of Appeal considered that the word ‘primart’ was the most distinctive and dominant element of the mark applied for. It noted, in that regard, that the mark applied for contained the word ‘primart’, written in bold, white capital letters with a blue border. The word appears against a background of a red square surrounded by a blue border. Underneath is a red band in which, in very small white handwritten script, the names Marek Łukasiewicz appear. On account of their size and presentation, those words are hardly legible, according to the Board of Appeal, and are therefore of minor importance in the overall impression created by the mark at issue. They may even be overlooked entirely. Lastly, the Board of Appeal noted that, given that the consumer was used to focusing on the textual elements of a mark and that the figurative elements of the mark at issue were purely decorative, they also played a secondary role.
38      The applicant disputes that assessment. According to the applicant, the Board of Appeal’s finding that the word ‘primart’ was dominant is incorrect. The applicant claims in that regard that (i) the marks must be perceived as a whole and no element may be omitted by the Board; (ii) the average consumer is assumed to be reasonably observant and will therefore perceive all the elements of the mark at issue; (iii) the words ‘marek łukasiewicz’ correspond to the name of the applicant and indicate clearly the origin of the goods; and, lastly, (iv) those words are only 50% smaller in size than the word ‘primart’, they are written in white characters on a red background and will therefore be clearly visible on all packaging.
39      According to the applicant, therefore, the Board of Appeal was wrong not to take into account the words ‘marek łukasiewicz’ in the visual, phonetic and conceptual assessment of the similarity between the marks at issue, and the contested decision is consequently vitiated by error.
40      EUIPO and the intervener dispute those arguments.
41      As regards, first of all, the distinctive and dominant character of the word ‘primart’ in the mark applied for, it should be noted that that mark consists, on the one hand, of the word ‘primart’ written in large white letters surrounded by a blue border and, on the other, of the words ‘marek łukasiewicz’ written in fine white italic characters on a red background, those words being placed beneath the word ‘primart’ and written in a font significantly smaller than that used for the word ‘primart’. The letters ‘i’, ‘m’ and ‘a’ of the word ‘primart’ are positioned against a background consisting in a red diamond surrounded by a blue border.
42      In those circumstances, the Board of Appeal was right to find that the figurative elements of the mark applied for were purely decorative and therefore played only a secondary role. Furthermore, the Board of Appeal did not err in finding that the words ‘marek łukasiewicz’ were, on account of their size and presentation, hardly legible and therefore of minor importance in the overall impression produced by the mark applied for, or that they could even be overlooked altogether.
43      The Board of Appeal’s conclusion that, on account of the size and lettering of its characters and its predominant position in the mark applied, for the word ‘primart’ was the most distinctive and dominant element of that mark, is therefore justified.
44      Contrary to the applicant’s claims, the fact that the Board of Appeal found that the figurative elements of the mark applied for and the words ‘marek łukasiewicz’ were not likely to divert the relevant public’s attention away from the word element ‘primart’ in no way means that those elements were disregarded in the overall visual comparison of the marks at issue. Rather, as is clear from paragraph 37 above, the Board of Appeal took into consideration both the figurative elements of the mark applied for and its word elements ‘primart’ and ‘marek łukasiewicz’. Consequently, the applicant’s argument that the Board of Appeal did not examine the mark applied for as a whole has no basis in fact.
45      The other arguments put forward by the applicant cannot invalidate the foregoing. The argument that the words ‘marek łukasiewicz’ correspond to the name of the applicant, appear in the name of the applicant’s company and indicate clearly the origin of the goods has no bearing on whether the word ‘primart’ has a more distinctive and dominant character in the mark applied for than the other words and figurative elements which feature therein. Consequently, that argument must also be rejected.
Visual comparison
46      Visually, the Board of Appeal found, in paragraph 20 of the contested decision, that the marks were similar to an average degree, inasmuch as the earlier mark PRIMA was highly similar to the distinctive and dominant element ‘primart’ of the mark applied for, the first five letters of which are identical and reproduced in the same order, while the word ‘primart’ in the mark applied for differs from the word ‘prima’ only by the two letters ‘r’ and ‘t’.
47      The applicant disputes those assessments and claims, in essence, that, in so far as the Board of Appeal erred in finding that the word ‘primart’ was dominant in the mark applied for and failed to take into consideration the other elements therein, the assessment of the visual similarity between the marks at issue was vitiated by error.
48      EUIPO and the intervener contend that the Board of Appeal did not err in finding that the marks at issue were visually similar to an average degree.
49      For the reasons already set out in paragraphs 41 to 45 above, it is necessary to reject the applicant’s argument relating to the dominant character of the word ‘primart’ and the Board of Appeal’s failure to take into consideration the other word and figurative elements of the mark applied for. That assessment is, moreover, confirmed by the wording of paragraph 20 of the contested decision, in which the Board of Appeal states that ‘the contested mark also differs in its figurative elements and the additional script underneath the word “PRIMART”, which have no counterpart in the earlier mark, but these elements only play a secondary role’.
50      In addition, as the Board of Appeal correctly pointed out, the earlier mark PRIMA is entirely reproduced in the dominant word element of the mark applied for, ‘primart’, the first five letters of the two signs are identical and reproduced in the same order, the marks at issue differ only in the last two letters of the element ‘primart’, and the figurative elements and the word elements ‘marek łukasiewicz’ play only a secondary role.
51      Accordingly, the Board of Appeal’s assessment that the marks at issue are visually similar to an average degree must be upheld.
Phonetic comparison
52      As regards the phonetic comparison of the marks at issue, the Board of Appeal found, in paragraph 21 of the contested decision, that the marks were similar to an above-average degree inasmuch as the unclear and very small script which appears beneath the word ‘primart’, namely ‘marek łukasiewicz’, would not be pronounced. The mark applied for would therefore be pronounced as ‘pri-mart’ and the earlier mark as ‘pri-ma’.
53      The applicant disputes that assessment. It reiterated its argument that the Board of Appeal erred in finding that the word ‘primart’ had dominant character and that it was not necessary to take the other word element ‘marek łukasiewicz’ into consideration. Taking those words into account would result in a finding that there was a lower degree of similarity between the marks at issue, since the words ‘marek łukasiewicz’ influence the length, rhythm and intonations of the marks at issue, making them dissimilar, given that the earlier mark consists of two syllables and the mark applied for has eight syllables. Lastly, even disregarding the words ‘marek łukasiewicz’, the words ‘prima’ and ‘primart’ alone cannot be regarded as having a high degree of phonetic similarity. In fact, according to the applicant, for the Spanish-speaking consumer, the stress would be placed on the first syllable of the word ‘prima’ as it ends in a vowel, and on the second syllable of the word ‘primart’ as it ends in the letter ‘t’. The consumer would therefore remember the stressed syllable, thus distinguishing between the marks at issue.
54      EUIPO and the intervener dispute those arguments.
55      The applicant’s line of argument, according to which the Board of Appeal found that the word ‘primart’ had a dominant character and that it was not necessary to take the other word element ‘marek łukasiewicz’ into account, must be rejected on the grounds set out in paragraphs 41 to 45 above.
56      It must be pointed out that, on the contrary, the Board of Appeal found, in paragraph 21 of the contested decision, that ‘aurally, the unclear and very small script underneath the word “primart” will not be pronounced’, which means that it did indeed take that script into consideration.
57      In addition, it should be noted that the applicant has not put forward any other argument calling into question the Board of Appeal’s assessment that the words ‘marek łukasiewicz’, on account of their position in small, white italics under the word ‘primart’, which appears in much larger and more legible characters, would not be pronounced.
58      As is apparent from paragraphs 41 to 45 above, the Board of Appeal was right to find that the word ‘primart’ was the most distinctive and dominant element of the mark applied for. The Board of Appeal did not err in finding that the words ‘marek łukasiewicz’, on account of their position in small, white italics under the distinctive element ‘primart’, would not be pronounced by Spanish consumers.
59      As regards the phonetic comparison of the words ‘prima’ and ‘primart’, it must be borne in mind that, in accordance with settled case-law, the consumer normally attaches more importance to the first part of words (judgment of 17 March 2004, El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraphs 81 and 83; also see judgment of 23 September 2020, UE v Commission, T‑338/19, EU:T:2020:430, paragraph 53 and the case-law cited).
60      In the present case, it should be noted that the first syllable of the earlier mark and of the dominant element of the contested mark, namely ‘pri’, is identical, while their second syllable, ‘ma’ and ‘mart’ respectively, is very similar, since their beginning and the vowel ‘a’ are the same. In the light of the case-law cited in paragraph 59 above, the consumer will therefore attach greater importance to the similarity between the marks at issue created by the initial ‘prima’ sound. That similarity is not weakened by the letters ‘r’ and ‘t’ which constitute the ending of the mark applied for even if those consonants are pronounced. Similarly, the applicant’s argument relating to the fact that in Spanish the stress is placed on the first syllable of the word ‘prima’ but on the second syllable of the word ‘primart’ is not capable of calling into question the above-average phonetic similarity between the marks at issue.
61      The Board of Appeal’s assessment in that regard must therefore be upheld.
Conceptual comparison
62      It should be borne in mind that, in paragraph 22 of the contested decision, the Board of Appeal found, as regards the conceptual comparison, that the marks were not similar from that point of view. That conclusion has not been expressly disputed by the applicant.
63      In so far as the applicant reiterates its argument that the Board of Appeal erred in finding that the word ‘primart’ had a dominant character and that it was not necessary to take the other word element ‘marek łukasiewicz’ into consideration, it must be stated that that line of argument must be rejected for the reasons set out in paragraphs 41 to 45 above.
64      Accordingly, the objections raised by the applicant concerning the visual, phonetic and conceptual comparison of the marks must be rejected as unfounded.
The distinctive character of the earlier mark
65      The Board of Appeal takes the view that the inherent distinctive character of the earlier mark in relation to the goods in question is average. In that regard, it follows from a combined reading of paragraphs 22 and 27 of the contested decision that, according to the Board of Appeal, the word ‘prima’ means ‘female cousin’ or ‘bonus payment’ to the relevant Spanish consumer, and that consumer will not understand that word as a word denoting the excellence of a product, as is the case in some other languages of the European Union.
66      The applicant disputes the Board of Appeal’s assessment and claims before the General Court, in essence, that the earlier mark had only a low distinctive character.
67      EUIPO maintains from the outset that the applicant puts forward the argument of the low distinctive character of the word ‘prima’ for the first time before the General Court. It points out, moreover, that none of the references to websites produced as supporting documents annexed to the application (Annexes A.5 to A.9) was submitted to it and that the applicant merely asserted before the Opposition Division that ‘the term “prima” in Spanish mean[t] “bonus” or “cousin” (female)’ (see the second paragraph
of page 1819 of the Board of Appeal’s file), which corresponds to the meanings recognised by the Board of Appeal in paragraph 22 of the contested decision.
68      In addition, in its observations on the continuation of the proceedings, EUIPO submits that the applicant’s arguments relating to the inherent distinctive character of the earlier mark are inadmissible, in so far as they can be understood as asking the Court also to assess, in the event that it finds the applicant’s argument referred to in paragraph 66 above to be well founded, the distinctive character of the earlier mark acquired through use, claimed by the intervener before the Board of Appeal. EUIPO points out that the Board of Appeal found, in that regard, in paragraph 30 of the contested decision, that there was no need to assess the evidence submitted by the intervener to demonstrate that the earlier mark had enhanced distinctive character on account of its reputation on the market.
69      It should be noted, first, that, for the reasons given in paragraph 15 above, the arguments in question and the evidence produced in support thereof cannot be regarded as inadmissible on the ground that they had not previously been submitted before the Board of Appeal. The Court of Justice ruled in the judgment on appeal that it was for the General Court to take account of those arguments under Article 76 of Regulation No 207/2009 and Article 188 of the Rules of Procedure, on the ground that the assessment of the inherent distinctive character of the earlier mark formed part of the subject matter of the proceedings before the Board of Appeal, irrespective of whether the parties presented facts and evidence relating to them before that board.
70      Next, it is true that the intervener’s arguments relating to the alleged enhanced distinctive character of the earlier mark, raised before the Board of Appeal, were not taken into consideration by that Board of Appeal as it had already established a likelihood of confusion. In the event that the
General Court should take the view that the Board of Appeal made an error in considering that the intrinsic distinctive character of the earlier mark was average, those arguments relating to the enhanced distinctive character acquired through use ought to be taken into account. However, in the present case, the Court is required, as part of the examination of the lawfulness of the contested decision, to establish whether the Board of Appeal, in its assessment of the inherent distinctive character of the earlier mark, erred in accepting only two meanings of the word ‘prima’, namely ‘female cousin’ and ‘bonus payment’. The argument put forward by EUIPO therefore cannot succeed and the applicant’s line of argument is admissible.
71      According to the applicant, the Board of Appeal overlooked the fact that the relevant Spanish consumer would perceive the word ‘prima’ as a reference to the quality of the goods in question or to characteristics constituting an advantage, with the result that that word has a low degree of distinctiveness. It recalls, in that regard, the Latin origin of the word ‘prima’, meaning ‘first, foremost/best, chief, principal’, and is of the view that it is a word well known to persons who speak a Romance language, including Spanish.
72      Referring to certain websites, the applicant claims that that word is used in Spanish, inter alia, in the form of idiomatic expressions such as ‘venta con prima’, ‘de prima calidad’ and ‘materia prima’, and infers from this that Spanish consumers will perceive the word ‘prima’ as being a reference to a higher quality or as indicating that the products bearing that sign constitute a bonus or free gift connected with the sale of another product.
73      It concludes that line of argument by referring to EUIPO’s examination guidelines, which state that a coincidence in a weak distinctive element will generally not result in a likelihood of confusion.
74      EUIPO and the intervener dispute that line of argument.
75      It must be borne in mind from the outset that, in accordance with the case-law, for the purposes of assessing the distinctive character of a mark or of a constituent element of a mark, an assessment must be made of the greater or lesser capacity of that mark or element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, of the inherent characteristics of the mark or of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).
76      Thus, the more distinctive the earlier mark, the greater the likelihood of confusion. As a result, since protection of a trade mark depends, in accordance with Article 8(1)(b) of Regulation No 207/2009, on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18).
77      It must be stated, first of all, that it is not disputed between the parties that the word ‘prima’ means ‘female cousin’ or ‘bonus payment’ in Spanish, as is also apparent from paragraph 22 of the contested decision.
78      However, according to the applicant, for the average Spanish consumer, the word ‘prima’ is also laudatory by nature in respect of the goods in question. In addition, that word is capable of conveying the idea of a bonus, having regard in particular to the Spanish expression ‘venta con prima’.
79      As regards, first, the latter use of the word ‘prima’ (premium or bonus), EUIPO rightly claims that that use corresponds to one of the meanings (bonus) which the Board of Appeal already found to have no link whatsoever with the goods in question, and the applicant has not provided convincing reasons for reaching a different conclusion. Thus, the applicant claims that consumers will consider that word to be an indication that the goods bearing that sign constitute a bonus, a free gift, linked to the sale of another product, which contradicts the fact that those goods are supposed to be sold on the market, as EUIPO correctly noted.
80      As regards, second, the alleged laudatory connotation of the word ‘prima’ in Spanish, it must be noted that, admittedly, as the Board of Appeal found, the word ‘prima’ is understood as denoting excellence in certain languages of the European Union.
81      That is, for example, the case in German and Dutch, where the expression ‘prima’, which is invariable, is clearly laudatory in nature (see, to that effect, judgment of 24 September 2015, Primagaz v OHIM – Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 60).
82      In addition, as the applicant has pointed out, the word element ‘prima’ could be associated with the Latin adjective ‘primus’ (first) as well as with words existing in those languages and which find their roots in that Latin adjective, such as the words ‘prima’ in Spanish (see, by analogy, judgment of 24 September 2015, PRIMA KLIMA, T‑195/14, not published, EU:T:2015:681, paragraph 61).
83      Even though it therefore cannot be ruled out that part of the relevant public will understand the word ‘prima’ as ‘first’, it must be borne in mind that the Latin word ‘primus’ (prima in the feminine) is, above all, an ordinal numerical adjective which does not immediately convey an idea of excellence (see, to that effect, judgments of 24 September 2015, PRIMA KLIMA, T‑195/14, not published, EU:T:2015:681, paragraph 62, and of 9 September 2020, Novomatic v EUIPO – Brouwerij Haacht (PRIMUS), T‑669/19, not published, EU:T:2020:408, paragraph 41).
84      It follows that the Board of Appeal did not err in finding that the Spanish general public, when faced with the word ‘prima’, certainly sees the word in its language meaning ‘female cousin’ or ‘bonus payment’, but does not regard that word as an adjective having a simple laudatory connotation.
85      The screenshots of a number of websites, submitted by the applicant as Annexes A.5 to A.9, cannot invalidate that finding. The webpage of ‘Latin dictionary’ (Annex A.5) is not relevant, since it concerns the translation of the Latin word ‘primus’ into English and not Spanish. The screenshots of the websites relating to the expression ‘venta con prima’ (Annex A.6) are also not capable of calling into question the Board of Appeal’s assessment, for the reasons already set out in paragraph 79 above. Next, the copies of websites in Annex A.7 concern the Spanish expression ‘materias primas’ (raw materials) and those produced as Annex A.9 contain the Latin expression ‘prima facie’. The word ‘prima’ is used in these instances as an element of an indivisible expression having a meaning as a whole, and that meaning does not have any connection with the nature of the goods in question. Furthermore, the adjective ‘prima’, used as part of those idiomatic expressions, does not have a laudatory connotation. As regards, lastly, the expression ‘de prima calidad’, which appears on five screen shots (Annex A.8), the Board of Appeal rightly pointed out that it was grammatically incorrect in Spanish, the correct expression being ‘de primera calidad’.
86      It follows that the Board of Appeal did not err in finding, in paragraph 27 of the contested decision, that, since the earlier mark had no meaning as regards the goods in question, the inherent distinctive character of that mark was average.
The absence of an independent distinctive role of the common element ‘prima’ in the mark applied for
87      The applicant is of the view that it follows from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), that the assessment of the likelihood of confusion, where the earlier mark is reproduced in its entirety in the mark applied for, should take account of the fact that that earlier mark has an independent distinctive role in the mark applied for. Conversely, in the present case, the Board of Appeal did not take into account the fact that the common element of the marks at issue, namely the element ‘prima’, did not have an independent distinctive role in the mark applied for.
88      In that regard, the applicant claims that it is unlikely that the average consumer will break down the word ‘primart’ into the element ‘prima’ and the letters ‘r’ and ‘t’. On the contrary, it will understand the word ‘primart’ as an indivisible whole or break it down into the elements ‘pri’ and ‘mart’ or even the elements ‘prim’ and ‘art’.
89      Thus, according to the applicant, a mere coincidence in a sequence of letters is insufficient to establish similarity and EUIPO’s decisions ought not to be based on the mere fact that one sign is contained in the other, which is confirmed, moreover, by certain of EUIPO’s decisions.
90      EUIPO and the intervener dispute those arguments.
91      Admittedly, it is apparent from the case-law relied upon by the applicant that it is possible that an earlier mark used by a third party in a composite sign which includes the name of the company of the third party may retain an independent distinctive role in the composite sign. Accordingly, in order to establish the likelihood of confusion, it suffices that, on account of the earlier mark still having an independent distinctive role, the public attributes the origin of the goods or services covered by the composite sign to the owner of that mark (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 24 and the case-law cited).
92      The applicant takes, in essence, the a contrario view that, in the present case, the earlier mark does not retain an independent distinctive role in the mark applied for and that, consequently, a mere coincidence in the sequence of letters ‘p’, ‘r’, ‘i’, ‘m’ and ‘a’ in the mark applied for does not suffice to establish a likelihood of confusion.
93      In accordance with settled case-law, it is crucial to ascertain, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion (see judgment of 26 July 2017, Meica v EUIPO, C‑182/16 P, not published, EU:C:2017:600, paragraph 58 and the case-law cited; judgment of 16 November 2017, Galletas Gullón v EUIPO – Hug (GULLON DARVIDA), T‑456/16, not published, EU:T:2017:811, paragraph 82).
94      Accordingly, the individual assessment of each sign, as required by the case-law of the Court of Justice, must be made in the light of the particular circumstances of the case and cannot therefore be regarded as being subject to general presumptions (judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 36, and of 26 July 2017, Meica v EUIPO, C‑182/16 P, not published, EU:C:2017:600, paragraph 59).
95      The argument that, in order for a finding of a likelihood of confusion to be made on the basis of the independent distinctive role of one element of the mark applied for, it is sufficient that certain factors be present must be rejected as unfounded (judgment of 26 July 2017, Meica v EUIPO, C‑182/16 P, not published, EU:C:2017:600, paragraph 60).
96      Accordingly, the argument that it is sufficient, in order to rule out a likelihood of confusion, to rely on the lack of an independent distinctive role of an earlier mark in the mark applied for, cannot be accepted.
97      By contrast, the individual assessment of each mark must be carried out in the light of the particular circumstances of the case.
98      In the present case, the Board of Appeal was fully entitled to find that, although the group of letters ‘prima’, which makes up the earlier mark in its entirety, does not play an independent distinctive role within the dominant element ‘primart’ of the mark applied for, it contributes significantly to the overall impression conveyed by that mark inasmuch as it constitutes five sevenths of that sign and differs from it only in the two consonants placed at the end of that element (see, to that effect, judgment of 23 October 2015, Vimeo v OHIM – PT Comunicações (VIMEO), T‑96/14, not published, EU:T:2015:799, paragraph 68).
99      As to the alleged lack of consistency – which, moreover, is only mentioned and not elucidated – between the contested decision and certain earlier EUIPO decisions relied on by the applicant, in which greater importance ought, according to the applicant, to have been attached to the independent distinctive role of an element of the mark applied for, it should be recalled that the Court of Justice has consistently held that the decisions which the Board of Appeal are called on to take under Regulation No 207/2009, concerning registration of a sign as an EU trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 36 and the case-law cited).
100    Furthermore, although EUIPO must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not, observance of the principle of legality requires the examination of all applications for registration to be stringent and full and to take place in each individual case, since registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (see order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37 and the case-law cited).
101    The applicant’s line of argument must therefore be rejected.
The likelihood of confusion
102    For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 (judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42).
103    In accordance with the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspect, namely the visual, phonetic and conceptual aspects. (see judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 57 and the case-law cited).
104    However, in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed. If the goods covered by the mark in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important. If on the other hand the product covered is primarily sold orally, greater weight will usually be attributed to any aural similarity between the signs (judgment of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293 paragraph 49).
105    It is also settled case-law that the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (see judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraphs 63 and 67 and the case-law cited).
106    One of the relevant factors of the present case is the degree of distinctive character of the earlier mark, which determines the extent of the protection conferred by it. Where the distinctiveness of the earlier mark is significant, such a circumstance is likely to increase the likelihood of confusion. That said, the existence of a likelihood of confusion is not ruled out where the earlier mark has a low degree of distinctiveness (see, to that effect, judgments of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraphs 61 and 62, and of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraphs 42 and 44).
107    In the present case, it has been held that the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 207/2009 in concluding that the goods at issue were similar and identical; that the marks at issue were visually similar to an average degree, and phonetically similar to a higher than average degree; that the level of attention of the relevant public was average at most; and that the intrinsic distinctive character of the earlier mark was average.
108    In particular, it should be pointed out that, in accordance with, inter alia, the case-law cited in paragraph 104, in view of the fact that most of the goods in question are everyday consumer goods which are generally bought in the supermarket, the visual comparison is of particular importance. Moreover, given the no more than average level of attention of the relevant public, it is likely that it will not pay particular attention to the elements which distinguish the marks at issue, in particular the secondary elements of the mark applied for.
109    In the light of those factors and having regard to the case-law cited in paragraphs 102 to 106 above, the Board of Appeal did not err in finding, in paragraph 28 of the contested decision, that there was a likelihood of confusion on the part of the relevant public.
110    Accordingly, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
111    Pursuant to Article 219 of the Rules of Procedure, in decisions of the General Court given after its decision has been set aside and the case referred back to it, it is to decide on the costs relating to the proceedings instituted before it and to the proceedings on the appeal before the Court of Justice.
112    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. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and the intervener, in accordance with the forms of order sought by them.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz to pay the costs.
Kornezov
Buttigieg
Hesse
Delivered in open court in Luxembourg on 28 April 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English