ORDER OF THE GENERAL COURT (Tenth Chamber)
11 February 2022 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark Sunwhite – Earlier national figurative mark Sunwhite – Relative ground for refusal – Article 8(1)(b) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law)
In Case T‑459/21,
Calrose Rice, established in Sofia (Bulgaria), represented by H. Raychev, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Hamel and J. Crespo Carrillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ricegrowers Ltd, established in Leeton, New South Wales (Australia), represented by C. Menebröcker and C. Böhmer, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 June 2021 (Case
R 2465/2020‑4), relating to opposition proceedings between Ricegrowers and Calrose Rice,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg (Rapporteur) and G. Hesse, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 August 2021,
having regard to the response of EUIPO lodged at the Court Registry on 26 October 2021,
having regard to the response of the intervener lodged at the Court Registry on 26 October 2021,
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,
makes the following
Order
Background to the dispute
1        On 27 August 2019, the applicant, Calrose Rice, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 fall within 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, and correspond to the following description: ‘Rice; flavoured rices; natural rice [processed] for food for human consumption; natural rice flakes; glutinous rice; puffed rice; enriched rice; enriched rice [uncooked]; husked rice; rice mixes; milled rice for human consumption’.
4        On 11 December 2019, the intervener, Ricegrowers Ltd, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the earlier German figurative mark,
filed on 29 June 2017 and registered on 19 July 2017 under number 302017015919, reproduced below:
6        The products covered by the earlier mark fall within Class 30 and correspond to the following description: ‘Rice; rice snacks’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(a) and (b) of Regulation 2017/1001.
8        On 3 November 2020, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion.
9        On 23 December 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 4 June 2021 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and found that there was a likelihood of confusion in respect of all the goods covered by the mark applied for.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision and remit the EU trade mark application to EUIPO in order to allow it to proceed to registration;
–        order EUIPO and the intervener, in addition to bearing their own costs, to pay those incurred by the applicant in respect of the proceedings before the Court and before the Board of Appeal.
12      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
13      The intervener contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs, including those incurred by the intervener before the Board of Appeal.
Law
14      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
15      In the present case, the Court considers that it has sufficient information from the documents before it and has decided, pursuant to Article 126 of the Rules of Procedure, to give a decision on the action without taking further steps in the proceedings.
16      As a preliminary point, it must be noted that some of the pleas put forward by the applicant overlap. It thus appears that, in support of its action, the applicant is in fact raising two pleas in law, alleging, first, infringement of the first sentence of Article 94(1) of Regulation 2017/1001 and infringement of Article 95(1) of that regulation and, second, infringement of Article 8(1)(b) of that regulation.
The first plea, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001 and infringement of Article 95(1) of that regulation
17      The first plea comprises, in essence, two parts. The first part alleges that the Board of Appeal failed to carry out a comparison of the goods at issue and to provide a statement of reasons in that regard, in breach of the first sentence of Article 94(1) and Article 95(1) of Regulation 2017/1001. The second part alleges that the Board of Appeal failed to give sufficient reasons for its conclusion that the signs at issue are visually highly similar, in breach of the first sentence of Article 94(1) of that regulation.
The first part, alleging a failure to compare the goods at issue and to state reasons in that regard
18      The applicant submits that, contrary to what is stated in paragraph 13 of the contested decision, it did not accept in any way in its statement of grounds of appeal that the goods at issue were identical. Moreover, it claims that it challenged the Opposition Division’s decision in its entirety, with the result that the Board of Appeal was required to carry out a comparison of the goods at issue, which it did not do. By making that erroneous assumption and thus failing to make such a comparison, the Board of Appeal infringed Article 95(1) of Regulation 2017/1001. Lastly, by failing to give reasons as regards the comparison of those goods, the Board of Appeal also infringed the first sentence of Article 94(1) of that regulation.
19      EUIPO and the intervener dispute the applicant’s arguments.
20      It must be borne in mind that, according to Article 95(1) of Regulation 2017/1001, in proceedings before it EUIPO is to examine the facts of its own motion. However, in proceedings relating to relative grounds for refusal of registration, that examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. It is apparent from the case-law that that article is a statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant factual and legal aspects of the case in question (see judgment of 21 February 2013, Laboratoire Bioderma v OHIM – Cabinet Continental (BIODERMA), T‑427/11, not published, EU:T:2013:92, paragraph 24 and the case-law cited).
21      In the present case, it must first be noted that, in paragraph 13 of the contested decision, the Board of Appeal observed that the parties did not question the Opposition Division’s finding that all the goods were identical and that the applicant had expressly admitted so in the statement setting out the grounds of appeal.
22      In that regard, while it is true that the applicant did not ‘expressly’ accept that the goods at issue were identical in the statement of grounds of appeal, the fact remains that that statement does not contain any argument concerning the comparison of those goods, as EUIPO and the intervener rightly observed. Thus, in the absence of concrete and specific arguments on that point, the Board of Appeal cannot be criticised for inferring therefrom that the applicant did not dispute the Opposition Division’s finding that all the goods at issue were identical and for noting that in paragraph 13 of the contested decision. Therefore, contrary to what the applicant claims, it was not sufficient for it merely to state that it was challenging the Opposition Division’s decision in its entirety, without even putting forward specific arguments concerning the Opposition Division’s comparison of the goods at issue.
23      Next, it must be noted that in paragraph 13 of the contested decision the Board of Appeal confirmed in full, by endorsing them, the Opposition Division’s findings as to the identity of the goods.
24      It must be borne in mind in that regard that a Board of Appeal may lawfully endorse the grounds of a decision taken by the Opposition Division, which thus form an integral part of the statement of reasons for its decision (see, to that effect, judgments of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli
(Mozart), T‑304/06, EU:T:2008:268, paragraph 50, and of 24 September 2008, HUP Uslugi Polska v OHIM – Manpower (I.T.@MANPOWER), T‑248/05, not published, EU:T:2008:396, paragraph 48).
25      Thus when, as in the present case, the Board of Appeal confirms a lower-level decision of EUIPO in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (see judgment of 9 July 2008, Mozart, T‑304/06, EU:T:2008:268, paragraph 47 and the case-law cited).
26      Therefore, it manifestly cannot be held that the Board of Appeal failed to examine the issue of the comparison of the goods or to give reasons for its decision on that issue.
27      In those circumstances, the first part of the first plea in law, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001 and infringement of Article 95(1) of that regulation, must be rejected as manifestly unfounded.
The second part, alleging that the Board of Appeal failed to state sufficient reasons as regards the visual comparison of the signs at issue
28      The applicant alleges that the Board of Appeal infringed the first sentence of Article 94(1) of Regulation 2017/1001 by making general findings that the signs at issue were ‘visually highly similar’, without assessing in detail the visual differences between them and without providing sufficient and concrete reasoning in that regard. Furthermore, the Board of Appeal failed to take into consideration the settled case-law according to which everyday consumer goods are chosen by consumers after a visual examination of their packaging, which means that it is precisely the visual differences between the signs at issue which must be thoroughly assessed and taken into account.
29      EUIPO and the intervener dispute the applicant’s arguments.
30      At the outset, it should be borne in mind that, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. According to the case-law, that duty has the same scope as that laid down by the second paragraph of Article 296 TFEU and its purpose is, first, to allow interested parties to know the justification for the measure so as to enable them to protect their rights and, second, to enable the EU judicature to review the legality of the decision
(judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86, and of 15 July 2014, Łaszkiewicz v OHIM – Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 76).
31      In the present case, it should be noted that, contrary to what the applicant claims, the Board of Appeal did not in any way confine itself to finding that the signs at issue were ‘visually highly similar’, without assessing the visual differences and presenting a sufficient and concrete statement of reasons in that regard.
32      In paragraphs 17 to 19 of the contested decision, the Board of Appeal found, first, that the signs at issue had in common, on the one hand, the word element ‘sunwhite’, which is written in the same typeface and, on the other hand, the figurative element, which resembles the representation of a sun patterned with lines and which is placed in nearly the same position in both signs.
33      Contrary to what the applicant claims, the Board of Appeal subsequently did indeed take into account the visual differences between the signs at issue, given that it found that those differences resided in the fact that the mark applied for was represented in colour whereas the earlier mark was in black and white and in the presence of the trade mark symbol ‘TM’, represented in small characters in the mark applied for.
34      Similarly, it took into account the particular nature of the goods at issue in paragraph 32 of the contested decision by stating that ‘[they] [were] [a] basic foodstuff purchased on a daily basis’ and did indeed examine, in paragraph 33 of that decision, the importance of the visual comparison of the signs at issue for those goods, noting that ‘the visual perception of the marks in question [would] generally take place prior to purchase’, but concluded that, in the present case, ‘[that] factor [could not] change the outcome as the signs [were] visually highly similar’.
35      It follows that the applicant was clearly in a position to understand the reasons why the Board of Appeal reached the conclusion that the signs at issue were visually highly similar and the Court is in a position to review that issue. Accordingly, the second part of the first plea in law, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001, must be rejected as manifestly unfounded.
The second plea in law, alleging, in essence, infringement of Article 8(1)(b) of Regulation 2017/1001
36      The applicant submits, in essence, that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
37      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 is not to be registered if because of its identity with or similarity to an 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.
38      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 line of 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).
39      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).
40      In the first place, as regards the relevant public, the Board of Appeal found in paragraph 11 of the contested decision that, since the opposition was based on a German trade mark, the relevant territory for the purposes of assessing the likelihood of confusion was Germany. It also found, in paragraph 32 of that decision, that the goods at issue were a basic foodstuff purchased on a daily basis and that they were therefore aimed at the general public, whose level of attention is average. Those findings are not challenged by the applicant.
41      In the second place, as regards the comparison of the goods at issue, it is apparent from paragraph 13 of the contested decision that the Board of Appeal agreed with the Opposition Division’s finding that all the goods covered by the mark applied for were identical to the goods designated by the earlier mark. In that regard, it must be held that the applicant has not put forward any argument capable of challenging the substance of that conclusion.
42      In the third place, as regards the comparison of the signs at issue, it must be borne in mind that according to 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 aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43).
43      In the present case, the Board of Appeal found, first, in paragraphs 17 to 19 of the contested decision, that the signs at issue were visually highly similar, then in paragraphs 28 and 29 of that decision, that they were phonetically identical and conceptually either neutral or identical.
44      The applicant submits, in essence, that the Board of Appeal erred in its visual comparison of the signs at issue.
45      EUIPO and the intervener dispute the applicant’s arguments.
46      As a preliminary point, it must be noted that the applicant has not put forward any argument to challenge the Board of Appeal’s finding that the signs at issue are phonetically identical and conceptually either neutral or identical.
47      As regards the visual comparison, it should be noted, as the Board of Appeal found, that the signs at issue coincide in their single word element ‘sunwhite’, which is written in the same typeface, as well as in the figurative element resembling a sun patterned with lines, placed in nearly the same position in both signs. Furthermore, they are distinguished only by the fact that the mark applied for is represented in colour, whereas the earlier mark is in black and white, and by the presence of the symbol for a trade mark ‘TM’, which will not be perceived as a distinctive element because of its informative indication that the sign applied for is a trade mark and its very small size and position within the sign. The Board of Appeal was therefore right to find, in paragraph 25 of the contested decision, that the signs at issue were visually highly similar.
48      It must be stated that the applicant has not adduced any evidence capable of calling that conclusion into question.
49      First, it must be pointed out, as observed by EUIPO, that the applicant’s argument that the Board of Appeal found that all the elements of the signs at issue were identical is based on a partial and erroneous reading of the contested decision. Although the Board of Appeal did admittedly infelicitously state, in paragraph 17 of the contested decision, that, visually, the signs at issue ‘[shared] all their elements’, it nevertheless specified in that same sentence what those elements were, ‘namely the [word] element “[s]unwhite” … as well as the identical figurative element, resembling a representation of a sun patterned with lines’. Furthermore, in paragraphs 17 to 19 of that decision, the Board of Appeal noted that those signs differed in their colours and by the presence of the ‘TM’ trade mark symbol. Accordingly, the appellant’s argument is manifestly unfounded.
50      Secondly, as regards the applicant’s argument that the Board of Appeal based its visual comparison of the signs at issue almost exclusively on their word elements and did not take into account the colours of the mark applied for, it is apparent from paragraphs 17 to 19 of the contested decision that the Board of Appeal did indeed take into account all the elements, both word and figurative, which make up the signs at issue, including the colours of the mark applied for. That argument is therefore manifestly unfounded.
51      Thirdly, as regards the applicant’s argument alleging that the Board of Appeal automatically assumed that the word element of the signs at issue was of much greater importance in the perception of consumers than the background and specific colours of the mark applied for, whereas, according to settled case-law, where a mark consists of both figurative and word elements, it does not automatically follow that it is the word elements which must always be considered to be dominant, it must be stated that the Board of Appeal did not in any way find that the word element ‘sunwhite’ was dominant.
52      It merely correctly pointed out, in paragraphs 19 and 20 of the contested decision, that according to settled case-law, where a mark is composed of word and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name than by describing the figurative element of the mark (see judgment of 2 February 2011, Oyster Cosmetics v OHIM – Kadabell (Oyster cosmetics), T‑437/09, not published, EU:T:2011:23, paragraph 36 and the case-law cited). In that regard, the applicant has not put forward any argument such as to show that, contrary to what was held by the Board of Appeal, the background and specific colours of the mark applied for are equivalent or are more distinctive than the common word element ‘sunwhite’.
53      Lastly, in the fourth place, it should be borne in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, 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).
54      In the present case, it must be borne in mind that, first, the applicant has not put forward any arguments to challenge the Board of Appeal’s finding that (i) the goods at issue are identical, (ii) the signs at issue are phonetically identical and conceptually neutral or identical and (iii) the earlier mark has an average degree of inherent distinctiveness. Second, it has not succeeded in calling into question the finding that those signs are visually highly similar. Accordingly, the Board of Appeal did not err in finding that there was a likelihood of confusion between the signs at issue in respect of the goods at issue, in accordance with the case-law referred to in paragraph 53 above.
55      It follows that the second plea in law must be rejected as manifestly unfounded and, consequently, the action must be dismissed in its entirety as manifestly lacking any foundation in law, without it being necessary to rule on the admissibility of the second part of the first head of claim, seeking, in essence, to obtain registration of the mark applied for (see, to that effect, judgment of 13 December 2016, Apax Partners v EUIPO – Apax Partners Midmarket (APAX), T‑58/16, not published, EU:T:2016:724, paragraph 62 and the case-law cited).
Costs
56      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.
57      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.
58      As regards the intervener’s head of claim relating to the costs before the Board of Appeal, it is sufficient to note that those costs continue to be governed by the contested decision (see judgment of 6 October 2021, Dermavita Company v EUIPO – Allergan Holdings France (JUVEDERM), T‑372/20, not published, EU:T:2021:652, paragraph 72 and the case-law cited), in which the Board of Appeal ordered the applicant to pay the costs incurred for the purposes of the opposition and appeal proceedings.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Calrose Rice shall pay the costs of the present proceedings.
Luxembourg, 11 February 2022.
E. Coulon
A. Kornezov
Registrar
President
*      Language of the case: English.