Case T‑623/11

Pico Food GmbH

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs)

‛Community trade mark — Opposition proceedings — Application for the Community trade mark MILANÓWEK CREAM FUDGE — Earlier national figurative marks representing a cow, Original Sahne Muh-Muhs HANDGESCHNITTEN HANDGEWICKELT and SAHNE TOFFEE LUXURY CREAM FUDGE — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) and Article 76(1) of Regulation (EC) No 207/2009’

Summary — Judgment of the General Court (Second Chamber), 9 April 2014

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark representing a cow and containing the word elements MILANÓWEK CREAM FUDGE — Figurative marks representing a cow and containing the word elements Original Sahne Muh-Muhs HANDGESCHNITTEN HANDGEWICKELT and SAHNE TOFFEE LUXURY CREAM FUDGE

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Comparison between the signs concerned — Earlier mark not registered in a specific colour

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment — Composite mark

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment

Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Opposition proceedings — Examination restricted to the submissions of the parties — Well-known facts taken into account — Examination of a question of law of the Court’s own motion — Condition

Pursuant to Article 76(1) of Regulation No 207/2009 on the Community trade mark, when hearing an appeal against a decision terminating opposition proceedings, the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may base its decision only on the relative grounds for refusal on which the party concerned has relied and the facts and evidence presented by the parties. That does not, however, preclude the Board of Appeal from, inter alia, taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well or from examining a matter of law even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of the relevant legislative provisions. (see para. 19)

See the text of the decision. (see paras 28-31)

See the text of the decision. (see para. 36)

In assessing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, the comparison must be made between the signs as they were registered or as they appear in the application for registration. In that regard, where a Community trade mark is not registered in a specific colour, the proprietor of the mark may use it in a colour or a combination of colours and obtain for it, as the case may be, protection under the relevant applicable provisions, in particular if that colour or combination of colours has become, in the mind of a significant portion of the public, that associated with that earlier mark through the use which its proprietor has made of it. That does not, however, mean that the registration of a mark which does not designate any specific colour covers all colour combinations which are enclosed within the graphic representation. (see paras 38, 39)

For average German consumers, there is no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, between the figurative sign representing a cow and containing the word elements MILANÓWEK CREAM FUDGE, registration of which as a Community trade mark is sought in respect of ‘Chocolate-covered and glazed fruit, chocolate-covered raisins, chocolate-covered and glazed hazelnuts, chocolate-covered and glazed peanuts, fruit jellies, candy for food, pastry and confectionery, in particular candy for food, caramels (candy), pralines, chocolate, chocolates, chocolate-glazed confectionery, chocolate bars, wafers, pastry, chocolate-glazed pastry’, falling within Class 30 of the Nice Agreement, and figurative marks representing a cow and containing the word elements Original Sahne Muh-Muhs HANDGESCHNITTEN HANDGEWICKELT and SAHNE TOFFEE LUXURY CREAM FUDGE, and other marks close to one of the latter, previously registered in Germany for ‘chocolate bars, chocolate products; sweets, drops, toffees, in particular made by using milk, cream and/or butter’ falling within the same Class, since the signs at issue contain significant differences, even if they share a certain similarity having regard in particular to the presence of a figurative element representing a cow. The representation of a cow has an allusive character in relation to the goods at issue, and that element therefore has a weak distinctive character. Moreover, even if the earlier marks have acquired an enhanced degree of distinctiveness through use in the relevant territory, that possibility does not lead to the conclusion that there is a likelihood of confusion in the present case, despite the identity of the products concerned. In that regard, there is a difference between finding, in the course of the comparison of the signs, that one of the elements of which a composite mark consists has a weak distinctive character and finding, in the course of the overall assessment of the likelihood of confusion, that an earlier mark possesses or does not possess an enhanced degree of distinctiveness through use. (see paras 44, 46, 50-52)