JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
17 May 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark panidor – Earlier national word mark ANIDOR – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑480/22,
Panicongelados-Massas Congeladas, SA, established in Leiria (Portugal), represented by I. Monteiro Alves, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Seder Establishment Limited, established in Mriehel Birkirkara (Malta),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and I. Dimitrakopoulos (Rapporteur), Judges,
Registrar: T. Henze, Acting Registrar
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
1        By its action under Article 263 TFEU, the applicant, Panicongelados-Massas Congeladas, SA, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 May 2022 (Case R 1946/2021-2) (‘the contested decision’).
Background to the dispute
2        On 25 March 2020, the applicant, Panicongelados-Massas Congeladas, filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for designated goods in Class 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Bread; Pastries, cakes, tarts and biscuits (cookies); Confectionery items coated with chocolate; Croissants; Pains au chocolat; Jam buns.’
4        On 2 July 2020, the other party to the proceedings before the Board of Appeal of EUIPO, Seder Establishment Limited, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based, inter alia, on the following earlier marks:
–        the EU figurative mark, reproduced below, covering goods in Class 30:
–        the Romanian word mark ANIDOR, covering goods in class 30 corresponding to the following description: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, chocolate; Flour and cereal products, bread, pastry and confectionery products, ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces [condiments]; Herbs, ices.’
6        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) 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).
7        On 4 October 2021, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001, taking into account the earlier EU figurative mark ANIDOR Toute la Tendresse du Chocolat.
8        On 22 November 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal. More specifically, after deciding, for reasons of procedural economy, to examine the opposition on the basis of the earlier Romanian word mark ANIDOR, it found that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, was established on account, inter alia, of the identity of the goods at issue, the visual and phonetic similarity of the marks at issue and the average degree of distinctiveness of the earlier mark.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        remit the EU trade mark application to EUIPO for registration to proceed;
–        order EUIPO to pay the costs, including the costs of proceedings before the Board of Appeal.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in case an oral hearing is convened.
Law
The jurisdiction of the General Court
12      It should be noted that the second head of claim seeks, in essence, that the Court refer the EU trade mark application to EUIPO and order EUIPO to proceed with its registration. In that regard, it is sufficient to recall that the General Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited). It follows that the applicant’s second head of claim must be rejected on the ground of lack of jurisdiction.
Substance
13      In support of its action, the applicant relies upon a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
14      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
15      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the marks 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).
16      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).
Preliminary observations
17      It should be noted that the applicant does not dispute the Board of Appeal’s findings relating, first, to the relevant public, consisting of the general public in the territory of Romania, the level of attention of which is, in essence, average, second, to the identity of the goods covered by the marks at issue and, third, to the average degree of distinctiveness of the earlier mark, in view of the lack of meaning of that mark in relation to the goods at issue.
Comparison of the marks at issue
18      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarities of the marks at issue, be based on the overall impression given by the marks, 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 proceed to analyse 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).
19      The assessment of the similarity between two marks involves more than taking just one component of a composite trade mark and comparing it with another mark. Rather, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
20      In the contested decision, after finding that the word element ‘panidor’ of the mark applied for was the most distinctive and dominant element of that mark, the Board of Appeal decided that the marks at issue were, in essence, visually similar to an average degree and phonetically similar to a high degree. It found that a conceptual comparison was not possible due to the fact that the marks as a whole did not have meaning for the relevant public.
21      The applicant claims, in essence, that although the marks at issue may be phonetically similar, they are visually and conceptually different, in particular on account of various elements of the mark applied for. In that regard, while not disputing the distinctive and dominant character of the word element ‘panidor’ of the mark applied for, the applicant submits that the Board of Appeal incorrectly assessed the distinctive character of the figurative elements of that mark.
22      EUIPO disputes the applicant’s arguments.
23      As a preliminary point, it should be noted that at issue in the present case are, on the one hand, the earlier mark, consisting of the word sign ANIDOR and, on the other hand, the mark applied for, consisting of the figurative sign containing a word element ‘panidor’, written in bold lower-case letters, and a figurative element in the form of a curved line, situated below that word element, both in the colour orange.
24      That having been clarified, it is necessary to examine, first of all, the Board of Appeal’s assessment of the distinctive character of the figurative elements of the mark applied for and, next, the Board of Appeal’s assessment of the visual, phonetic and conceptual comparison of the marks at issue.
–       The distinctive character of the figurative elements of the mark applied for
25      According to the case-law, for the purposes of determining the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that 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, in particular, of the inherent characteristics 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 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 35 and the case-law cited).
26      In the contested decision, the Board of Appeal found, in essence, that the figurative elements of the mark applied for, in particular a curved line underneath the word element, were decorative in nature and, therefore, had a weak distinctive character.
27      The applicant disputes that finding of the Board of Appeal, claiming that the figurative elements of the mark applied for, namely the font, the colour, the horizontal arrangement and the curved line underneath the word element, are distinctive. More specifically, it is of the view that the slightly undulated line below the word element ‘panidor’ makes the mark pleasant to look at and produces a stronger memory in the mind of the consumer than any other complex but not remarkable figurative element would do. It is also of the view that that line represents a field of wheat.
28      EUIPO disputes the applicant’s arguments.
29      In the first place, as regards the distinctive character of the figurative element of the mark applied for in the form of a curved line, it should be noted that that line consists of a basic geometric shape. Thus, that figurative element is not particularly original or elaborate in character. A figurative element with such characteristics will be perceived by the relevant public as purely decorative and, therefore, as having a weak distinctive character (see, to that effect, judgment of 12 July 2019, Audimas v EUIPO – Audi (AUDIMAS), T‑467/18, not published, EU:T:2019:513, paragraph 43).
30      The arguments put forward by the applicant regarding appearance, namely those concerning the ‘fluidity’ or ‘visual pleasure’ conferred on the mark applied for by the figurative element in the form of a curved line, are not capable of invalidating the finding that that element is devoid of any particular feature that would enable the relevant public to remember it as an element capable of indicating the commercial origin of the goods in question within the meaning of the case-law cited in paragraph 25 above.
31      Thus, in view of its characteristics, referred to in paragraph 29 above, the figurative element of the mark applied for in the form of a curved line will not, contrary to what the applicant claims, be associated with a field of wheat by the relevant public. In that regard, it is sufficient to note that such an association would require an analysis going far beyond what may reasonably be expected of a consumer in a purchasing situation.
32      In the second place, as regards the distinctive character of the font, colour and horizontal arrangement of the word element, it should be noted that those characteristics merely have to do with the layout of the word element of that mark. Thus, they are not distinguished by any particular or original stylisation, with the result that they will be perceived by consumers as decorative elements and not likely to be memorised, and are therefore weakly distinctive (see, to that effect, judgment of 6 December 2016, The Art Company B & S v EUIPO – Manifatture Daddato and Laurora (SHOP ART), T‑735/15, not published, EU:T:2016:704, paragraphs 35 and 36).
33      That conclusion cannot be called into question by the applicant’s arguments that are based on examples found in EUIPO’s Guidelines for Examination, since the distinctive character of the elements making up the mark applied for cannot be assessed in the light of elements of which other marks consist and, in particular, those cited by way of example in those guidelines, when, after all, those elements have characteristics different from those of the figurative elements of the mark at issue.
34      Consequently, the Board of Appeal found, correctly, that the figurative elements of the mark applied for were decorative and, therefore, had a weak distinctive character.
–       The visual comparison
35      In paragraph 44 of the contested decision, the Board of Appeal found that the marks at issue shared the same group of letters ‘anidor’. It noted that the marks differed in their first letters, namely ‘p’ in the case of the mark applied for and ‘a’ in the case of the earlier mark, and in the figurative elements of the mark applied for. However, in view of the decorative nature of those figurative elements, it found that those decorative elements were not sufficient to differentiate the marks at issue. The Board of Appeal concluded, in essence, that there was an average degree of visual similarity between those marks.
36      The applicant submits that the marks at issue are visually different, given that the earlier mark is a word mark, whereas the mark applied for is composed of a word element and of distinctive and suggestive figurative elements. It submits that the figurative elements of the mark applied for have a significant impact on the consumer’s visual perception.
37      EUIPO disputes the applicant’s arguments.
38      As a preliminary point, it should be recalled that it follows from the case-law that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
39      Furthermore, it must also be borne in mind that, according to settled case-law, where a figurative mark containing word elements is compared visually to a word mark, the marks are held to be visually similar if they have in common a significant number of letters in the same position and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different fonts, in italics or in bold, in lower case or upper case, or in colour (see, to that effect, judgment of 9 September 2019, SLL Service v EUIPO – Elfa International (LUMIN8), T‑680/18, not published, EU:T:2019:565, paragraph 32 and the case-law cited).
40      That having been clarified, it should be noted that the word element ‘anidor’ is the sole element of the earlier mark and corresponds to six of the seven letters of the word element ‘panidor’ of the mark applied for, only the initial letter ‘p’ of the latter word element being additional as compared to the sole word element of the earlier mark. Thus, the marks at issue share a significant number of letters, placed in the same order, which gives each of those marks a similar visual impression within the meaning of the case-law cited in paragraph 39 above.
41      That similar visual impression cannot, contrary to what the applicant claims, be called into question by the presence, in the mark applied for, of the figurative elements. Given their decorative nature, as is apparent from paragraphs 29 to 34 above, those elements are of secondary importance in the visual perception of the marks (see, to that effect and by analogy, judgment of 15 December 2016, Aldi v EUIPO – Miquel Alimentació Grup (Gourmet), T‑212/15, not published, EU:T:2016:746, paragraph 57 and the case-law cited).
42      Consequently, the Board of Appeal found, correctly, in essence, that there was an average degree of visual similarity between the marks at issue.
–       The phonetic comparison
43      In paragraph 45 of the contested decision, the Board of Appeal found that the marks at issue, each composed of three syllables, coincided in the pronunciation of the group of letters ‘anidor’. It also found that those marks were pronounced with an almost identical rhythm and intonation. It noted that those marks differed only in the pronunciation of the initial letter ‘p’ of the mark applied for. It concluded, in essence, that there was a high degree of phonetic similarity between the marks at issue.
44      While acknowledging that the marks at issue may be phonetically similar, the applicant submits that those marks differ in the pronunciation of their first syllables, namely ‘a’ in the case of the earlier mark and ‘pa’ in the case of the mark applied for. It submits that the consumer’s perception is very different depending on whether the first letter of the mark is a consonant or a vowel.
45      EUIPO disputes the applicant’s arguments.
46      It should be noted that, in its line of argument relating to the difference in pronunciation of the first syllables of the marks at issue, the applicant does not dispute, specifically and precisely, the Board of Appeal’s findings relating to the existence of a high degree of phonetic similarity between the marks at issue.
47      In any event, even if the marks at issue differ as regards the sound of their first syllable on account of the presence or absence of the occlusive consonant ‘p’, it must be held that the marks at issue coincide in the pronunciation of the group of letters ‘anidor’, which constitutes the sole word element of the earlier mark. The fact that the earlier mark is wholly included in the mark applied for is, alone, liable to create a strong similarity, inter alia, phonetically, between the marks at issue (see, to that effect, judgment of 14 June 2018, Lion’s Head Global Partners v EUIPO – Lion Capital (LION’S HEAD global partners), T‑310/17, not published, EU:T:2018:344, paragraph 31).
48      Consequently, in the present case, the Board of Appeal did not err in finding, in essence, that the marks at issue were phonetically similar to a high degree.
49      It follows from all of the foregoing that the Board of Appeal’s assessment relating to the visual and phonetic similarity between the marks at issue is not vitiated by any error.
50      That conclusion cannot be called into question by the applicant’s claim that, in essence, the Board of Appeal did not take into account the fact that the consumer generally pays greater attention to the beginning of the marks at issue. In that regard, it is sufficient to note that the Board of Appeal correctly took into account the visual and phonetic differences of the first letter of the marks at issue, however, that difference was not capable of offsetting the visual and phonetic similarities found between those marks (see paragraphs 38 to 42 and 46 to 48 above).
–       The conceptual comparison
51      In paragraph 46 of the contested decision, after finding that neither of the marks at issue had any meaning for the relevant public, the Board of Appeal found that it was not possible to compare them from a conceptual standpoint.
52      The applicant submits that, in view of the fact that the earlier mark has no meaning whereas the mark applied for is a suggestive mark which evokes in the mind of the relevant public the concept of ‘bread related products and pastry in general’, the marks at issue are conceptually different. It is of the view, in essence, that the mark applied for will be associated with that concept by the relevant public because of that public’s understanding of the groups of letters ‘pan’ and ‘pani’ of the word element of the mark applied for due, first, to the proximity of the word ‘pâine’, which means ‘bread’ in Romanian, and, second, to that public’s knowledge of the existence of ‘paninis’, namely ‘sandwich[es] made with Italian bread’.
53      EUIPO disputes the applicant’s arguments.
54      In that regard, the Court considers that it is not necessary to decide between, on the one hand, the view of the Board of Appeal and of EUIPO that a conceptual comparison of the marks at issue is not possible and, on the other hand, the applicant’s view that such a comparison is possible and that the result of such a comparison in the present case is that there is a lack of conceptual similarity. Therefore, the Court will carry out a global assessment of the likelihood of confusion, taking each of those two views into account.
The likelihood of confusion
55      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 the similarity of the goods or services covered. Accordingly, a lesser 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).
56      In the contested decision, the Board of Appeal found, in essence, that the likelihood of confusion from the point of view of the relevant public was established, having regard, in particular, to the identity of the goods covered by the marks at issue, the visual and phonetic similarity of those marks and the average degree of distinctiveness of the earlier mark.
57      The applicant submits, in essence, that, in view of the visual and conceptual differences between the marks at issue, there is no likelihood of confusion.
58      EUIPO disputes the applicant’s arguments.
59      It should be noted that the applicant’s arguments seek, in essence, to challenge the Board of Appeal’s findings relating to the comparison of the marks at issue. In that regard, it is sufficient to recall that those arguments are unfounded, at least as regards the visual and phonetic comparisons (see paragraphs 35 to 50 above).
60      In the present case, in view of the identity of the goods at issue, the average degree of visual similarity and the high degree of phonetic similarity between the marks at issue, and the average degree of distinctiveness of the earlier mark, the Board of Appeal did not err in finding that there was a likelihood that the relevant public, which displayed an average level of attention, might attribute the same commercial origin to the goods sold under the marks at issue.
61      Furthermore, even if, as the applicant submits, a conceptual comparison of the marks at issue were possible and those marks were not conceptually similar, that would not be sufficient to rule out any likelihood of confusion on the part of the relevant public, in view of the other factors referred to in paragraph 60 above.
62      Therefore, it must be held that the Board of Appeal found, correctly, in the present case, that there was a likelihood of confusion on the part of the relevant public.
63      The applicant’s single plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to examine EUIPO’s plea of inadmissibility alleging that the arguments and evidence relating to the conceptual comparison are inadmissible, on the ground that the applicant raised those arguments and produced that evidence for the first time before the Court.
Costs
64      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
65      In the present case, although the applicant has been unsuccessful, EUIPO has applied for costs only in the event that a hearing is held. In those circumstances, since the Court decided to rule without an oral part of the procedure, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Kowalik-Bańczyk
Buttigieg
Dimitrakopoulos
Delivered in open court in Luxembourg on 17 May 2023.
T. Henze
M. van der Woude
Acting Registrar
President
*      Language of the case: English.