ORDER OF THE GENERAL COURT (Seventh Chamber)
20 January 2025 (*)
( EU trade mark – Invalidity proceedings – EU figurative mark Chamain – Earlier national word mark CHAMAIN – Admissibility of evidence submitted for the first time before the Board of Appeal – Relative ground for invalidity – Comparison of the signs – Article 8(1)(b) of Regulation (EU) 2017/ 1001 – Action manifestly lacking any foundation in law )
In Case T‑259/24,
Tarek Kudsi Alattar, residing in Damascus (Syria), represented by J. Gallego Jiménez, E. Sanz Valls, P. Bauzá Martínez and Y. Hernández Viñes, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Medelhavet Gross AB, established in Laholm (Sweden),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg (Rapporteur) and I. Dimitrakopoulos, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
makes the following
Order
1        By his action under Article 263 TFEU, the applicant Mr Tarek Kudsi Alattar, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 February 2024 (joined cases R 1258/2023-2 and R 1588/2023-2) (‘the contested decision’).
Background to the dispute
2        On 2 November 2020, the applicant filed with EUIPO an application for registration of an EU trade mark in respect of the following figurative sign:
3        The trade mark applied for designated, inter alia, goods in Classes 5, 30 and 31 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
–        Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use; food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; Herbicides; Fungicides; Medicinal tisane; Medicinal herbs; Medicinal plants; Medicinal tea’;
–        Class 30: ‘Artificial coffee; Cocoa; Coffee; Tea; Rice; Tapioca; Sago; Flour; Preparations made from cereals; Bread; Pastries; Confectionery; ices; honey, treacle; Yeast; Baking powder; salt; mustard; Vinegar; Sauces [condiments]; spices; ice; preserved tisane; preserved herbs; packed herbs; roasted herbs; teas; tisane; spices and condiments packed in sachet’;
–        Class 31: ‘Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; Seeds; Natural plants and flowers; foodstuffs for animals, malt; packed plants; fresh herbs; fresh plants’.
4        On 30 March 2022, the other party to the proceedings before the Board of Appeal of EUIPO, Medelhavet Gross AB, filed an application for a declaration of invalidity of the mark referred to in paragraph 2 above in respect of all of the goods referred to in paragraph 3 above, pursuant to the combined provisions of Article 60(1)(a) and 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).
5        The application for a declaration of invalidity was based on the earlier Swedish word mark CHAMAIN, designating the goods in Class 30 and corresponding to the following description: ‘Aniseed; Aromatic preparations for ice-creams; Alimentary seasonings; Processed ginseng used as a herb, spice or flavoring; Processed shallots for use as seasoning; Essences for foodstuffs, except etheric essences and essential oils; Cinnamon [spice]; Flavourings of tea; Flavourings of lemons; Honey; Honey; Honey substitutes; Sugar; Cube sugar; Icing sugar; White sugar; Corn syrup; Chocolate topping; Aromatic teas [other than for medicinal use]; Artificial coffee; Mixtures of malt coffee with coffee; Flowers or leaves for use as tea substitutes; Cappuccino; Chai tea; Chocolate; Chocolate-based beverages; Chocolate-based beverages with milk; Chocolate-based beverages; Chocolate-based beverages; Chocolate beverages with milk; Chocolate beverages with milk; Chocolate coffee; Chocolate-based beverages; Chocolate-based beverages; Coffee-based beverages; Tea-based beverages; Coffee-based beverages; Tea-based beverages; Chocolate-based beverages; Earl grey tea; Espresso; Tea extracts (Non-medicated -); Green tea; Ginseng tea [insamcha]; Ginseng tea; Coffee in whole-bean form; Ginger tea; Iced coffee; Jasmine tea; Jasmine tea; Jasmine tea bags, other than for medicinal purposes; Coffee bags; Coffee flavourings; Lime tea; Yerba mate; Mate [tea]; Oolong tea; Oolong tea; Tea pods; Instant coffee; Black tea; Instant tea [other than for medicinal purposes]; Tea; Black tea [English tea]; Tea of parched powder of barley with husk (mugicha); Tea of salty kelp powder (kombu-cha); Citron tea; White lotus tea (Baengnyeoncha); Tea-based beverages; Tea-based beverages; Tea for infusions; Tea (Non-medicated -) sold loose; Tea (Non-medicated -) consisting of cranberry leaves; Tea (Non-medicated -) consisting of cranberry extracts; Tea (Non-medicated -) consisting of cranberry leaves; Tea (Non-medicated -) consisting of cranberry extracts; Fruit flavoured tea [other than medicinal]; Apple flavoured tea [other than for medicinal use]; Red ginseng tea; Acanthopanax tea (Ogapicha); Orange flavoured tea [other than for medicinal use]; Teabased beverages with fruit flavoring; Tea leaves; Tea mixtures; Tea; Teas (Non-medicated -) flavoured with lemon; Teas (Non-medicated -) containing lemon; Tea substitutes; Tea essences; Tea essences; Tea extracts; Tea extracts (Non-medicated -); Theine-free tea; Theine-free tea sweetened with sweeteners; Tea bags; Tea bags (Non-medicated -); Tea bags (Non-medicated -); Hot chocolate; White tea.’
6        On 26 May 2023, the Cancellation Division partially upheld the application for a declaration of invalidity of the contested mark and declared that mark invalid in respect of some of the designated goods in Classes 5 and 30, as it found that there existed a likelihood of confusion, in accordance with Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation. The contested mark was declared valid in respect of the other designated goods in Classes 5, 30 and 31.
7        On 16 June 2023, the applicant filed an appeal with EUIPO against the decision of the Cancellation Division (case R 1258/2023-2), requesting that that decision be partially set aside to the extent that the contested mark had been declared invalid in respect of some of the goods that it designated.
8        On 25 July 2023, the other party to the proceedings before the Board of Appeal also filed an appeal with the EUIPO against the decision of the Cancellation Division (case R 1588/2023-2), to the extent that the contested mark remained valid for some of the goods that it designated.
9        By the contested decision, in which the two abovementioned appeals were joined, the Board of Appeal, first, dismissed the applicant’s appeal (case R 1258/2023-2) in its entirety and, second, partially upheld the appeal brought before it by the other party to the proceedings (case R 1588/2023-2), declaring that the contested mark was invalid for the following goods: ‘dietetic food and substances adapted for medical use; dietary supplements for human beings’ in Class 5 and ‘fresh herbs’ in Class 31.
Forms of order sought
10      The applicant claims that the Court should:
–        in essence, annul the contested decision to the extent that the Board of Appeal, first, confirmed the decision of the Cancellation Division, in so far as it declared the contested mark invalid concerning some of the goods designated in Classes 5 and 30 and, second, declared that mark invalid concerning the goods referred to in paragraph 9 above;
–        order EUIPO to pay the costs.
11      EUIPO claims that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in case an oral hearing is convened.
Law
12      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.
13      In the present case, the Court considers that it has been sufficiently informed by the documents in the file and decides, pursuant to that article, to give judgment without taking further steps in the proceedings.
14      The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 54(1) of Decision 2020-1 of 27 February 2020 of the Presidium of the Boards of Appeal on the rules of procedure before the Boards of Appeal (‘the Rules of Procedure of the Boards of Appeal’) and, second, infringement of Article 8(1)(b) of Regulation 2017/1001.
The first plea in law, alleging infringement of Article 54(1) of the Rules of Procedure of the Boards of Appeal
15      The applicant submits that the Board of Appeal should not have accepted, as regards case R 1588/2023-2, evidence submitted for the first time before it by the other party to the proceedings before the Board of Appeal since it was not relevant for the resolution of the case. The fact that that evidence was taken into account distorted the contested decision.
16      EUIPO disputes the applicant’s arguments.
17      In paragraphs 26 to 28 of the contested decision, the Board of Appeal found that extracts from websites, relating to the manner in which foodstuffs were sold, submitted by the other party to the proceedings before the Board of Appeal for the first time before it, were admissible under Article 27(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) and Article 54(1) of the Rules of Procedure of the Boards of Appeal. In that regard, the Board of Appeal observed that that evidence was submitted to dispute the Cancellation Division’s assessments and that it was relevant to the outcome of the case.
18      In that regard, it should be borne in mind that the Board of Appeal, in accordance with Article 27(4) of Delegated Regulation 2018/625 and Article 54(1) of the Rules of Procedure of the Boards of Appeal, may accept evidence submitted for the first time before it if that evidence satisfies the two following conditions. First, that evidence must ‘[be], on the face of it, likely to be relevant for the outcome of the case’. Second, it ‘[has] not been produced in due time for valid reasons, in particular where [it is] merely supplementing relevant facts and evidence which had already been submitted in due time, or [is] filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal’.
19      Furthermore, it should be noted that it follows from Article 27(4) of Regulation 2018/625, which provides for an exception to Article 7(5) of that regulation, that the Board of Appeal enjoys, in particular when examining an appeal against a decision of a Cancellation Division, the discretion deriving from Article 95(2) of Regulation 2017/1001 for the purposes of deciding whether or not to take into account evidence which has not been submitted within the time limit set by the Cancellation Division (see, to that effect and by analogy, judgment of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, C‑122/12 P, EU:C:2013:628, paragraphs 30 and 33).
20      In the present case, the applicant has not submitted any evidence capable of establishing that the Board of Appeal made an error of assessment in finding that the evidence, described in paragraph 17 above and submitted before it for the first time, was, first, relevant to the outcome of the dispute and, second, intended to challenge the assessments of the Cancellation Division. Consequently, the applicant’s arguments do not call into question the Board of Appeal’s decision to admit that evidence in the context of the examination of the appeal brought before it.
21      In those circumstances, the first plea in law should be dismissed as manifestly unfounded.
Second plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
22      The applicant disputes the Board of Appeal’s assessment of the likelihood of confusion between the marks at issue, claiming that those marks are not similar, with the result that there is no likelihood of confusion between those marks.
23      Under Article 8(1)(b) of Regulation No 2017/1001, 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, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of that regulation, earlier trade marks means, inter alia, trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
24      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
25      For the purposes of applying Article 8(1)(b) of Regulation No 2017/1001, a likelihood of confusion presupposes both that the two marks 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).
26      In the present case, as regards the definition of the relevant public, the Board of Appeal found that the relevant public was the general public and, as regards the goods in Class 5, health professionals, with a level of attention varying from average to relatively high, respectively. The relevant territory is Sweden in view of the fact that the earlier mark is a Swedish mark. The applicant does not challenge those assessments.
27      As regards the comparison of the goods covered by the marks at issue, the Board of Appeal concluded that some of the goods covered by the contested mark, including dietetic food and substances adapted for medical purposes and dietary supplements for human beings in Class 5 and ‘fresh herbs’ in Class 31, were identical or similar to varying degrees to the goods covered by the earlier mark, whereas the other goods covered by the contested mark were dissimilar to the goods covered by that mark. The applicant does not dispute those assessments.
The comparison of the marks at issue
28      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
29      In paragraphs 63 to 71 of the contested decision, the Board of Appeal concluded that there was a high degree of similarity between the marks at issue. In that regard, first, the Board of Appeal found that, on the one hand, the word element ‘chamain’, common to those marks, was not associated with any particular meaning and had distinctive character, whereas the Arabic characters in the contested mark would be perceived by the relevant public, which could not read those characters, as a figurative element with a normal degree of distinctiveness. On the other hand, no element within the marks at issue is dominant. Second, those marks have a high degree of visual similarity and are phonetically identical. Third, from a conceptual point of view, no comparison is possible in so far as those marks have no meaning. Fourth, for the sake of completeness, the Board of Appeal pointed out that the judgments of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI)
(T‑559/13, EU:T:2015:353) and of 18 June 2013, Rocket Dog Brands v OHIM – Julius-K9 (K9 PRODUCTS)
(T‑338/12, not published, EU:T:2013:327), cited by the applicant, were not applicable to the present case.
30      The applicant disputes those assessments, claiming, in essence, that the Board of Appeal did not take due account of the visual differences between the marks at issue, namely the Arabic characters in the contested mark, in particular in the light of the case-law of the General Court.
31      EUIPO disputes the applicant’s arguments.
32      As a preliminary point, according to the case-law, although, where a mark is composed of word elements and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting the name of the mark than by describing the figurative element of that mark, the same case-law nevertheless states that it does not follow that the word elements of a mark must always be regarded as more distinctive than the figurative elements. In the case of a composite mark, the figurative element may, on account, inter alia, of its shape, size, colour or position in the sign, rank equally with the word element (see, to that effect, judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraphs 37 to 39 and the case-law cited).
33      In the present case, it should be noted that, in the visual comparison of the marks at issue, the Board of Appeal did not fail to take account of the Arabic characters in the contested mark. However, while acknowledging, in paragraph 68 of the contested decision, the presence of those characters and their distinctive character, it observed that they would not be pronounced by the relevant public, whereas those marks coincided in the word element ‘chamain’, to which the public might more easily refer. That leads to a similarity between the marks at issue.
34      In that regard, first, since the applicant does not call into question the Board of Appeal’s finding that the Arabic characters constitute ‘a purely figurative element’, his argument that those characters, as a figurative element, have as much strength as the word element ‘chamain’ in the overall visual impression created by the contested mark, on account of its size and position in the sign, does not invalidate that analysis by the Board of Appeal. Although, according to the case-law cited in paragraph 32 above, it cannot be ruled out that, in the case of a composite trade mark, the figurative element may have a place equivalent to that of the word element, it follows from that same case-law that the word element is, in principle, more distinctive than the figurative element, since the average consumer will more easily refer to the goods in question by citing the name of the trade mark than by describing its figurative element. In the present case, the mere fact, as the applicant submits, that the figurative element occupies a space identical to that of the word element is not sufficient to overturn the application, in the present case, of the principle that the relevant public will be able to read and pronounce the word element and may therefore refer to the goods covered by the contested mark by citing its word element.
35      Moreover, even assuming that the figurative element of the contested mark is as visually important as the word element, it should be noted that the applicant makes no argument that the marks at issue are visually different. Thus, it does not rebut the Board of Appeal's finding that the marks are visually similar.
36      Second, although the applicant considers that the Board of Appeal was wrong to hold, in paragraph 70 of the contested decision, that the two judgments of the General Court referred to in paragraph 29 above were not applicable to the present case, it should be observed that the applicant does not put forward any substantiated argument disputing the reasons given by the Board of Appeal that the marks in question in those judgments had elements which distinguished them from the marks at issue.
37      More specifically, as regards the judgment of 3 June 2015, GIOVANNI GALLI (T‑559/13, EU:T:2015:353), the applicant criticises the Board of Appeal’s assessment, whereby it had stated that the mark at issue included additional distinctive word elements and a figurative element of a duck which had had a significant impact on the visual and conceptual differentiation of the marks at issue in that case, without, however, explaining how the fact that the figurative element of the contested mark has distinctive character would also have an effect on the visual and conceptual comparison of the marks at issue.
38      It should also be noted that the applicant does not dispute the Board of Appeal’s finding in the contested decision that the marks at issue have no conceptual meaning.
39      Furthermore, as regards the judgment of 18 June 2013 K9 PRODUCTS, (T‑338/12, not published, EU:T:2013:327), the applicant does not explain why the assessment in that judgment, which, as the Board of Appeal pointed out, involved two figurative signs containing non-coinciding dominant elements, is applicable to the present case.
40      It follows from the foregoing that the applicant’s arguments are not capable of calling into question the conclusions drawn by the Board of Appeal in the context of the visual, phonetic and conceptual comparison of the marks at issue.
41      Lastly, as regards the global assessment of the likelihood of confusion, it should be borne in mind that that assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgment 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).
42      In paragraphs 72 to 77 of the contested decision, the Board of Appeal concluded that there was no likelihood of confusion between the marks at issue in respect of the goods in question which were considered to be different. By contrast, there was such a likelihood of confusion in respect of the goods in question which were considered to be identical or similar. For those goods, having regard to the relevant public and its level of attention, the distinctive character of the marks at issue, the high degree of visual similarity between those marks and their phonetic identity, the differences between those marks would not be sufficient to exclude the likelihood of confusion.
43      In that regard, it must be noted that the applicant has not put forward any specific argument challenging the overall assessment of the likelihood of confusion carried out by the Board of Appeal on the basis of the factors referred to in paragraph 42 above. Furthermore, although the applicant’s arguments on the visual comparison of the marks at issue, examined in the context of the present plea, have not called into question the merits of the Board of Appeal’s assessment, the applicant does not dispute any other factor relied on by the Board of Appeal in the global assessment of the likelihood of confusion.
44      The second plea in law must therefore be dismissed as manifestly unfounded.
45      Consequently, the action must be dismissed as manifestly lacking any foundation in law.
Costs
46      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.
47      Even though the applicant has been unsuccessful, EUIPO contended that it should be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber),
hereby:
1.      Dismisses the action as manifestly lacking any foundation in law.
2.      Orders each party to bear its own costs.
Luxembourg, 20 January 2025.
V. Di Bucci
K. Kowalik-Bańczyk
Registrar
President
*      Language of the case: English.