JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
14 November 2019 (*)
(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing the shape of a human figure on an escutcheon — EU figurative mark representing the shape of a human figure — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Power to alter decisions)
In Case T‑149/19,
Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger‑Lenz, A. Lambrecht and C. Elkemann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Jumbo Africa, SL, established in L’Hospitalet de Llobregat (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 30 November 2018 (Case R 876/2018‑2) relating to opposition proceedings between Jumbo Africa and Société des produits Nestlé,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of deliberation, of S. Gervasoni, President, K. Kowalik‑Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 8 March 2019,
having regard to the response lodged at the Court Registry on 19 June 2019,
having regard to the fact that no request for a hearing was submitted by the parties within 3 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 23 March 2016, the applicant, Société des produits Nestlé SA, 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 (replaced 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 Classes 29 and 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, for each of those classes, to the following description:
–        Class 29: ‘Soups, soup concentrates, preparations for making soups, stock also in the form of cubes, of tablets or granulated, bouillons, bouillons concentrates, preparations for making bouillons, broth’;
–        Class 30: ‘Flours and preparations made from cereals, bread, yeast, pastry; rice, pasta, noodles; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes; pizzas; sandwiches; mixtures of alimentary paste and oven-ready prepared dough; cake powders; sauces, preparations for making sauces; soya sauce; ketchup; flavourings and seasonings for food, edible spices, condiments, salad dressings, mayonnaise; mustard; vinegar’.
4        The trade mark application was published in Community Trade Marks Bulletin No 73/2016 of 20 April 2016.
5        On 20 July 2016, Pasa Africa, SL, which subsequently became Jumbo Africa, SL, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier EU figurative mark:
7        That mark designates, inter alia, goods in Classes 29 and 30 corresponding to the following description:
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;
–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’.
8        The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation No 207/2009 (now Article 8(1)(a) and (b) of Regulation 2017/1001).
9        At the request of the applicant, lodged on 7 February 2017, on the basis of Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), EUIPO requested Jumbo Africa to furnish proof of use of the earlier mark for the goods on which the opposition was based.
10      On 3 July 2017, Jumbo Africa produced evidence of use of the earlier mark.
11      On 12 March 2018, the Opposition Division rejected the opposition, without ruling on the use of the earlier mark and assuming that the goods in question were identical.
12      On 14 May 2018, Jumbo Africa 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.
13      By decision of 30 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal. In particular, it considered, in view of, inter alia, the low distinctiveness of the earlier trade mark and the average degree of visual and conceptual similarity of the trade marks at issue, that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 would be established if, as the Opposition Division had assumed, the goods in question were regarded as being identical. It therefore referred the case back to the Opposition Division for a decision on the genuine use of the earlier mark and the comparison of those goods.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision;
–        dismiss the appeal brought against the Opposition Division’s decision;
–        order EUIPO to pay the costs of the proceedings before the Court and order Jumbo Africa to pay the costs of the proceedings before EUIPO.
15      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
16      In support of the action, the applicant relies on three pleas in law, the first and second alleging infringement of the first and second sentences of Article 94(1) of Regulation 2017/1001 and the third alleging infringement of Articles 8(1)(b) and 46(1)(a) of that regulation. First of all, it is appropriate to examine the third plea.
17      The applicant maintains, inter alia, first, that the trade marks at issue are not visually and conceptually similar and, second, that the earlier trade mark has only a weak distinctive character. It thus submits that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 is excluded, even if the goods in question were regarded as being identical. It therefore criticises the Board of Appeal for having considered it necessary to rule on the proof of genuine use of the earlier mark and to carry out a comparison of the goods in question.
18      EUIPO submits that the Board of Appeal correctly took the view that the marks at issue are visually and conceptually similar to an average degree and that the earlier mark has an average distinctive character. Furthermore, EUIPO claims that the Board of Appeal did not rule on the existence of a likelihood of confusion, since it remitted the case to the Opposition Division for that purpose. Consequently, any error in the assessment of the degree of similarity of the marks at issue would not be liable to lead to the annulment of the contested decision.
19      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, 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.
20      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 that 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).
The relevant public
21      According to 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 (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
22      In the present case, the Board of Appeal did not call into question the Opposition Division’s assessment that the relevant public is composed of the general public, whose level of attention is average. That assessment is not disputed by the applicant.
The comparison of the goods in question
23      According to settled case-law, in the assessment of the similarity between the goods or the services in question, all the relevant factors relating to them should be taken into account (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited). However, in the present case, both the Opposition Division and the Board of Appeal relied on the assumption that the goods in question are identical.
The comparison of the marks at issue
24      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must 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 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).
25      In the present case, the Board of Appeal found that the Opposition Division had made two errors. It found that the Opposition Division had incorrectly held, first, that the marks at issue displayed only a low degree of visual and conceptual similarity, although that similarity is average, and, second, that the earlier mark had only a weak distinctive character, although that distinctive character is average. The Board of Appeal, by contrast, found that the Opposition Division had correctly observed that a phonetic comparison of those marks was impossible.
26      The applicant maintains that the marks at issue are not visually and conceptually similar. In this respect, it submits that, in so far as human figures do not have an inherent distinctive character, the Board of Appeal should not have taken into account the presence, as such, of figures in those marks. Thus, with regard, first, to visual similarity, the Board of Appeal should, according to the applicant, have focused on the distinctive elements of those marks which were capable of differentiating them, namely the stylised character and direction of those figures as well as the colours and contour of those marks. Second, in respect of conceptual similarity, the Board of Appeal should have found that both the human figure and the figurative element of the earlier mark constituting a ‘check icon’ indicated to the relevant public that the goods marketed under that mark were beneficial to or recommended for health, whereas the mark applied for conveyed the notion of strength.
27      EUIPO argues, with regard to visual similarity, that, given the dominant character of the human figures in each of the marks at issue and the weak distinctive character of the other elements of those marks, the Board of Appeal acted correctly in finding that those marks were similar to an average degree despite the presence, in each of those marks, of different colours and figurative elements.
28      In respect of conceptual similarity, EUIPO takes the view that the marks at issue contain human figures with similar characteristics, with the result that those marks are similar to an average degree. Alternatively, EUIPO submits that the notions identified by the applicant, namely that of goods which are beneficial to health as regards the earlier mark and that of strength as regards the mark applied for, are also similar.
The distinctive and dominant elements of the marks at issue
29      First, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that the human figures constitute the dominant element of each of the marks at issue. However, it correctly notes that those figures are likely to represent strong or healthy people. In those circumstances, since the goods in question are foodstuffs, those figures are likely to indicate to the relevant public that those goods contribute to making people who consume them strong or healthy. To the extent that many foodstuffs may be regarded as having such attributes, those figures are not necessarily perceived, as such, as indicating the commercial origin of those goods. Consequently, it should be noted that the distinctive character of those figures is weak, with the result that the Board of Appeal erred in finding that it was average.
30      Second, it should be noted that the applicant, in addition, does not dispute the Board of Appeal’s assessment, supported by EUIPO, that the other figurative elements of the marks at issue also have a weak distinctive character.
The visual similarity of the marks at issue
31      As regards visual similarity, first, it should be recalled that the fact that a mark is registered in colour or, on the contrary, does not designate any specific colour cannot be regarded as a wholly negligible element in the eyes of consumers (judgments of 9 April 2014, Pico Food v OHIM — Sobieraj (MILANÓWEK CREAM FUDGE), T‑623/11, EU:T:2014:199, paragraph 38, and of 18 March 2015, Intermark v OHIM — Coca-Cola (RIENERGY Cola), T‑384/13, not published, EU:T:2015:158, paragraph 44). Thus, it must be stated, as the applicant and EUIPO have claimed, that the figurative elements of the earlier mark are black whereas the human figure and the other figurative element of the mark applied for depicting an escutcheon are red and blue respectively.
32      Moreover, it should be noted that there are differences between the dominant elements of the marks at issue. The human figure in the earlier mark represents, in full, a man standing on one foot, whereas the lower limbs of the human figure in the mark applied for are not depicted. In addition, the shapes of the other figurative elements are not similar.
33      In those circumstances, and in view of the weak distinctive character of the human figures contained in each of the marks at issue, it must be held, as the applicant submits, that those marks are not visually similar. Consequently, it must be noted that the Board of Appeal erred in finding that the marks are visually similar to an average degree.
The conceptual similarity of the marks at issue
34      As regards conceptual similarity, it should be noted that, according to the applicant, first, the earlier mark is likely to evoke the notion of goods which are beneficial to or recommended for health and, second, the mark applied for is likely to evoke the notion of strength.
35      In that regard, as EUIPO correctly states, it must be found that, in so far as an individual’s strength may be linked to that person’s health, the Board of Appeal was right to take the view that the marks at issue are conceptually similar to an average degree.
The distinctive character of the earlier mark
36      It must be borne in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, since protection of a trade mark depends, in accordance with Article 8(1)(b) of Regulation 2017/1001, on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation which 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).
37      In the present case, the Board of Appeal found that the Opposition Division had erred in taking the view that the distinctive character of the earlier mark is weak whereas, according to the Board of Appeal, it is average.
38      The applicant claims that the earlier mark has a weak distinctive character on the ground that it indicates to the relevant public that the goods marketed under that trade mark are ‘right’ or ‘approved’ for health. The applicant thus argues that, in respect of the goods in question, human figures are, in principle, not distinctive, unless they are highly stylised, which is the case in respect of the human figure in the mark applied for.
39      EUIPO contends that, if the human figure in the earlier mark were to be regarded as having a weak distinctive character, it should be held that both the earlier mark and the mark applied for have a weak distinctive character. However, in so far as the human figures in each of the marks at issue differ from the ‘standard’ depiction of a human figure, it must be held that both the earlier mark and the mark applied for have an average distinctive character.
40      In that regard, first, it is appropriate to note that, according to the case-law, the highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark (judgments of 28 June 2012, I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, EU:T:2012:327, paragraph 18; of 17 September 2015, Bankia v OHIM — Banco ActivoBank (Portugal) (Bankia), T‑323/14, not published, EU:T:2015:642, paragraph 49; and of 29 March 2017, J & Joy v EUIPO — Joy-Sportswear (J&JOY), T‑389/15, not published, EU:T:2017:231, paragraph 95). Consequently, the fact that the applicant’s argument implies that the mark applied for is weakly distinctive is not such as to affect the assessment of the distinctive character of the earlier mark.
41      Second, it should be observed that, as is evident from paragraphs 29 and 30 above, both the human figure and the other figurative elements of the earlier mark have a weak distinctive character. Where there are no specific indicia, such as the way in which the elements are combined, to indicate that the earlier mark, taken as a whole, is greater than the sum of its parts, it must be held that the earlier mark has a weak distinctive character. It should therefore be noted that the Board of Appeal erred in finding that that mark has an average distinctive character.
The likelihood of confusion
42      A global assessment of the likelihood of confusion implies some interdependence of the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater 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).
43      The Board of Appeal found that the likelihood of confusion would be established if the goods in question were to be regarded as being identical.
44      The applicant claims that the Board of Appeal should necessarily have found that the likelihood of confusion was excluded in view of the lack of similarity between the marks at issue, or, as the case may be, the low degree of similarity between those marks.
45      Against this, EUIPO submits that the Board of Appeal did not rule on whether there was a likelihood of confusion. On the contrary, it argues, the Board of Appeal merely found that such a likelihood could not be excluded, in view of the similarity of the marks at issue, without, however, carrying out an analysis of all the factors relevant to the circumstances of the case, in particular the similarity of the goods in question. EUIPO thus submits that, even if the Board of Appeal had erred in its assessment of the similarity of the marks at issue, the application should be dismissed.
46      First, it should be noted that it is true that the Board of Appeal, as EUIPO submits, did not conclusively rule on whether there was a likelihood of confusion in this case. However, it found that such a likelihood would be established if the goods in question were to be regarded as being identical.
47      Second, it should be noted that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision (see, by analogy, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 26). Therefore, in view of the weak distinctive character of the earlier mark and the lack of visual similarity, it must be held, contrary to what the Board of Appeal found, that the likelihood of confusion would not be established, despite the average level of attention of the relevant public and the average degree of conceptual similarity, even if the goods in question were to be regarded as being identical.
48      It follows that the third plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 and of Article 46(1)(a) of that regulation, must be upheld.
49      In so far as the applicant claims, in addition to seeking annulment of the contested decision, that that decision should be altered, it should be recalled that the exercise of the power of the Court to alter decisions may apply to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). In the present case, first, as noted in paragraph 46 above, the Board of Appeal assessed the likelihood of confusion on the assumption that the goods in question were to be regarded as being identical. Second, as is apparent from paragraph 47 above, the likelihood of confusion could not be established in the present case, even in those circumstances, with the result that the Board of Appeal was required to dismiss the appeal brought before EUIPO by Jumbo Africa and referred to in paragraph 12 above. Consequently, without it being necessary to examine the other pleas put forward by the applicant, it is appropriate, in accordance with the applicant’s first and second heads of claim, to annul the contested decision and to dismiss the appeal by altering that decision.
Costs
50      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
51      Moreover, the applicant has applied for Jumbo Africa to be ordered to pay the costs of the proceedings before EUIPO. Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Consequently, in so far as the applicant’s claims relate to the costs of the proceedings before the Opposition Division, they cannot be accepted under that provision.
52      In addition, assuming that the applicant’s claims can be interpreted as seeking the annulment or alteration of the Opposition Division’s decision in respect of the costs incurred before it, it should be noted that Jumbo Africa has already been ordered by the Opposition Division to pay the amount referred to in Rule 94(7)(d)(ii) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). In those circumstances, and since the applicant does not claim that the amount of that order was insufficient, there is no need to adjudicate on such submissions.
53      Consequently, Jumbo Africa should be ordered to pay only the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 November 2018 (Case R 876/2018‑2);
2.      Dismisses the appeal brought before EUIPO by Jumbo Africa, SL;
3.      Orders EUIPO to bear its own costs and to pay those incurred by Société des produits Nestlé SA for the purposes of the proceedings before the General Court;
4.      Orders Jumbo Africa to pay the cost necessarily incurred by Société des produits Nestlé for the purposes of the proceedings before the Board of Appeal of EUIPO;
5.      Dismisses the action as to the remainder.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 14 November 2019.
E. Coulon
V. Tomljenović
Registrar
President
*      Language of the case: English.