Provisional text

JUDGMENT OF THE GENERAL COURT (Second Chamber)

25 January 2017 ( )

(EU trade mark — Opposition proceedings — Application for the EU figurative mark Choco Love — Earlier EU and national word and figurative marks CHOCOLATE, CSOKICSŐ and Chocolate Brown — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑325/15,

Sun System Kereskedelmi és Szolgáltató Kft., established in Budapest (Hungary), represented by Á. László, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by I. Moisescu and A. Schifko, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Hollandimpex Kereskedelmi és Szolgáltató Kft., established in Budapest (Hungary),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 26 March 2015 (Case R 1369/2014-1), relating to opposition proceedings between Sun System Kereskedelmi és Szolgáltató and Hollandimpex Kereskedelmi és Szolgáltató,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin (Rapporteur) and M.J. Costeira, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 June 2015,

having regard to the response of EUIPO lodged at the Court Registry on 13 October 2015,

having regard to the reply lodged at the Court Registry on 11 January 2016,

having regard to the fact that no request for a hearing was submitted by the main 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

Background to the dispute

1 On 17 January 2013, Hollandimpex Kereskedelmi és Szolgáltató Kft. 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).

2 Registration as a mark was sought for the following figurative sign:

3 The goods and services in respect of which registration was sought are in Classes 10, 11 and 44 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 10: ‘Solariums for medical purposes’;

– Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; solarium equipment (quartz lamps); tanning beds; tanning apparatus (sun beds); solaria, other than for medical purposes; solarium equipment (quartz lamps); tanning beds; tanning apparatus (sun beds); solaria, other than for medical purposes’;

– Class 44: ‘Solarium services; sun tanning salon services; solarium services; providing solarium (sun-tanning) facilities; providing of solarium services’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 56/2013 of 21 March 2013.

5 On 12 June 2013, the applicant, Sun System Kereskedelmi és Szolgáltató Kft., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based on the following earlier marks:

– Hungarian national word mark No 199307 CSOKICSŐ, with a filing date of 20 May 2009 and a registration date of 16 March 2010;

– EU figurative mark No 9955451, which was filed on 10 May 2011 and registered on 21 October 2011 and is reproduced below:

– EU word mark No 11239613 CHOCOLATE, which was filed on 4 October 2012 and registered on 9 March 2013 (‘the earlier word mark’).

7 All the abovementioned earlier marks cover the following goods:

– Class 10: ‘Tanning apparatus, UV lamps and tanning lamps for medical purposes, and parts of tanning apparatus, including filters and reflectors’;

– Class 11: ‘Tanning apparatus, UV lamps and tanning lamps, not for medical purposes, and parts of tanning apparatus, including filters and reflectors’.

8 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 and Article 8(5) of that regulation.

9 On 28 March 2014, the Opposition Division rejected the EU trade mark application in respect of some of the contested goods and services, namely:

– Class 10: ‘Solariums for medical purposes’;

– Class 11: ‘Solarium equipment (quartz lamps); tanning beds; tanning apparatus (sun beds); solaria, other than for medical purposes’;

– Class 44: ‘Solarium services; sun tanning salon services; solarium services; providing solarium (sun-tanning) facilities; providing of solarium services’.

10 The application was allowed to proceed in respect of the remaining goods in Class 11, namely ‘apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’.

11 On 27 May 2014, Hollandimpex Kereskedelmi és Szolgáltató filed a notice of appeal with the Board of Appeal of EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision in its entirety.

12 By decision of 26 March 2015 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal and annulled the Opposition Division’s decision. In particular, it began by comparing the earlier word mark and the mark applied for, given that that earlier word mark was that which was most similar to the mark applied for.

13 As regards the level of attention of the relevant public, the Board of Appeal found that tanning appliances, especially those for medical purposes in Class 10, but also the apparatus in Class 11, were specialist goods which could be relatively expensive and were usually bought only by professionals or, on a less frequent basis, by highly attentive end consumers. It took the view that the level of attention was therefore, on average, high. It found that, as regards the services in Class 44, which, in its view, were mainly aimed at non-professionals, the level of attention was normal, as consumers focused on the quality, safety, comfort and price of the services.

14 As regards the goods and services at issue, the Board of Appeal found that the goods in Classes 10 and 11 covered by the marks at issue were identical. It took the view that there was a remote degree of similarity between the goods in Class 11 covered by the earlier word mark and the services in Class 44 covered by the mark applied for. In that regard, the Board of Appeal noted that the services at issue, inter alia the tanning services, did not share the same distribution channels as the goods in Class 11. Nevertheless, it found that the goods in Class 11 were indispensable for providing the services in Class 44.

15 As regards the comparison of the signs at issue, the Board of Appeal found that there was a low degree of visual and phonetic similarity between them and that they were conceptually similar. Taken as a whole and having regard to those coincidences, the Board of Appeal found that the signs at issue were similar to a low degree. The Board of Appeal also found that the applicant had not proved that the earlier word mark had acquired enhanced distinctiveness through its use, but rather that it was weakly distinctive because it alluded to the goods and services that it covers.

16 As regards the likelihood of confusion, the Board of Appeal found that there was no likelihood of confusion since the similarities between the marks at issue were not sufficient to offset the differences between them. The Board of Appeal concluded that there was no dominant element in the mark applied for. It also observed that the earlier word mark had a weak distinctive character and that the mark applied for, taken as a whole, had to be regarded as having an average degree of distinctiveness.

17 As regards the other earlier marks (see paragraph 6 above), the Board of Appeal found that there was even less of a likelihood of confusion between those marks and the mark applied for, because there was less similarity between them and the mark applied for than there was between the mark applied for and the earlier word mark.

18 Lastly, the Board of Appeal dismissed the ground of challenge alleging infringement of Article 8(5) of Regulation No 207/2009 on the grounds that the applicant had not proved that the earlier word mark concerned had a reputation. In that regard, it noted that the evidence which the applicant had adduced for this purpose had not been translated into the language of the proceedings and rejected it on the basis of Rule 19(4) 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) (‘the Implementing Regulation’).

Procedure and forms of order sought

19 The applicant claims that the Court should:

– alter the contested decision and order EUIPO to uphold the opposition by rejecting the application for registration of the mark applied for in respect of the following goods and services:

– Class 10: ‘Solariums for medical purposes’;

– Class 11: ‘Solarium equipment (quartz lamps); tanning beds; tanning apparatus (sun beds); solaria, other than for medical purposes’;

– Class 44: ‘Solarium services; sun tanning salon services; solarium services; providing solarium (sun-tanning) facilities; providing of solarium services’;

– in the alternative, annul the contested decision;

– order EUIPO to pay the costs.

20 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

21 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

The single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009

22 Article 8(1)(b) of Regulation No 207/2009 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, 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.

23 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).

24 The applicant claims that the Board of Appeal made errors in applying Article 8(1)(b) of Regulation No 207/2009. It complains, inter alia, that the Board of Appeal erred as regards the definition of the relevant public and its level of attention. It also submits that the Board of Appeal erred in its assessment when it concluded that there was no likelihood of confusion between the marks at issue.

25 EUIPO disputes the applicant’s arguments.

26 For reasons of procedural economy, the Court considers it appropriate to begin with a comparison of the earlier word mark and the mark applied for before comparing the mark applied for with the other earlier marks relied on by the applicant (see paragraph 6 above).

The relevant public and its level of attention

27 According to the 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).

28 The applicant claims, in essence, that the Board of Appeal erred in identifying the relevant public, with regard to the goods and services in Classes 11 and 44, as consisting of professionals, whose level of attention was to be regarded as high. In that regard the applicant states that the goods and services in question are aimed both at professionals and at end consumers and that in particular the lamps are rather inexpensive. It takes the view that the level of attention of the relevant public should therefore have been considered to be average.

29 EUIPO disputes the applicant’s arguments and maintains that the arguments relating to the inexpensiveness of the lamps are inadmissible since they were not put forward before EUIPO.

30 It must be stated at the outset that, since the earlier word mark is an EU trade mark, the relevant public consists of the public in the European Union, a point which has not, moreover, been disputed by the parties.

31 It is also necessary to uphold the Board of Appeal’s finding that the goods in Class 10, namely tanning appliances, especially those for medical purposes in Class 10, are specialist goods which are usually bought only by professionals or by end consumers with a high level of attention, a finding which is not, moreover, disputed by the parties.

32 As regards the applicant’s arguments, it must be stated that the Board of Appeal did not take the view that the relevant public at which the services in Class 44 were aimed consisted solely of professionals. It is apparent from paragraph 14 of the contested decision, that, ‘[f]or the services in Class 44, which are mainly directed at non-professionals, the level of attention is normal, focusing on the quality, safety, comfort and price of the services’ and, next, from paragraph 18, that ‘… solarium services are acquired by the final consumer’ and that consequently their level of attention must be considered to be average. It follows that that argument must be rejected as unfounded.

33 As regards the contested goods in Class 11, namely ‘solarium equipment (quartz lamps); tanning beds; tanning apparatus (sun beds); solaria, other than for medical purposes’, those goods are mainly intended for professionals and, more exceptionally, for end consumers. They are also specialist goods which are relatively expensive and in respect of which the level of attention is high. The relevant public buys those goods only periodically or exceptionally and at that time takes into account their specific features and their price. It is also correctly stated in paragraph 47 of the contested decision that the relevant public will pay attention when buying those goods on account of their relevance with regard to health. The Board of Appeal was therefore right in finding, in paragraph 14 of the contested decision, that the level of attention of the relevant public was high, whether professionals or end consumers were concerned.

34 That finding cannot be called into question by the fact that the goods in question are not goods for medical purposes or that some of them, in particular lamps used in solariums, are sold at a low price, as the applicant submits. The classification of the goods cannot in itself be decisive in assessing the level of attention of the relevant public. Likewise, price is only one factor among others which must be taken into consideration in determining the level of attention of the relevant public. For the sake of completeness, it must be added that the prices put forward by the applicant (from EUR 4 to 12) in order to show that the lamps are so inexpensive that the relevant public pays them only an average degree of attention is irrelevant since it is not stated with what frequency and in what quantity those lamps have to be purchased.

35 It follows that the applicant’s arguments must be rejected as unfounded without there, in any event, being any need to rule on their admissibility.

The comparison of the goods and services at issue

36 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (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).

37 The applicant disputes the Board of Appeal’s finding that the contested services in Class 44 are only remotely similar to the goods covered by the earlier word mark. It submits that the Board of Appeal did not take into consideration the fact that the persons for whom the goods and services are intended are not only professionals, but also end consumers. It maintains that the Board of Appeal should have found that the distribution channels overlapped and that the goods and services were in competition with each other and complementary in so far as those goods and services had the same overall purpose.

38 EUIPO disputes the applicant’s arguments.

39 It is necessary, at the outset, to uphold the finding that the goods in Classes 10 and 11 covered by the marks at issue are identical, a finding which the parties do not dispute.

40 As regards the goods and services at issue which fall within Classes 11 and 44, the finding that, normally, the goods in Class 11 are purchased by professionals and the services in Class 44 are purchased by end consumers must also be upheld. Since there are two different publics, it must be held that the goods and services at issue are only remotely similar. The fact that they might be complementary in the eyes of professionals is irrelevant in that regard. The complementarity is confined to the fact that the goods in Class 11 are indispensable for the provision of the services in Class 44, but that does not in any way detract from the finding that those goods concern two different publics.

41 That finding is not called into question by the applicant’s arguments that end consumers may also purchase goods in Class 11 and that there is therefore a very high degree of similarity with the services in Class 44.

42 It must be borne in mind that, according to settled case-law, complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 10 June 2015, AgriCapital v OHIM — agri.capital (AGRI.CAPITAL), T‑514/13, EU:T:2015:372, paragraph 58 and the case-law cited).

43 In the present case, it must be held that the goods and services at issue are not complementary for the end consumers since there is no close connection between the services in Class 44 and the goods in Class 11. It is not indispensable for an end consumer to purchase a product in Class 11 in order to obtain the services in Class 44 and vice versa.

44 The applicant’s argument that the goods and services at issue have to be regarded as similar because they might share the same distribution channels must also be rejected. The fact that the goods and services at issue might exceptionally share the same distribution channels is not sufficient to make that a factor which has to be taken into consideration in order to assess whether the goods and services at issue are similar.

45 Lastly, it must be held that the goods and services at issue are prima facie in competition with each other inasmuch as they have the same overall purpose, namely that of tanning human skin. However, it must be pointed out that that relationship of competition is not obvious since the goods and services at issue are not directly interchangeable. The services in Class 44 are also provided with other services (such as reception, information, and so forth) which are not provided when the goods in Class 11 are purchased and used.

46 In view of the foregoing, it must be held that the goods and services in Classes 11 and 44 are only remotely similar, even in the eyes of end consumers, since they are not complementary, do not normally share the same distribution channels and there is, prima facie, only a weak relationship of competition between them.

47 Consequently, the applicant’s arguments must be rejected as unfounded.

The comparison of the signs

48 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).

49 The applicant submits, in essence, that the dominant element of the mark applied for is the word ‘choco’ and that the signs at issue are very similar visually, similar to very similar phonetically, and identical, or at least very similar, conceptually.

50 EUIPO disputes the applicant’s arguments.

51 It must be stated that the mark applied for consists of two words, ‘choco’ and ‘love’, which are written in a stylised font. That mark also includes a graphic element representing two hearts.

52 The earlier word mark consists solely of the word ‘chocolate’, which cannot be broken down.

53 In view of the applicant’s arguments, it is appropriate, in the first place, to examine whether it is possible to detect any dominant elements in the sign applied for.

– Whether there are any dominant elements in the sign applied for

54 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, 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. 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 (see, to that effect, judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43 and the case-law cited).

55 In that regard, it must be stated that the graphic element in the form of hearts constitutes the element at the beginning of the mark applied for. The two word elements of which the mark applied for consists are the same size and are written in the same font. In view of those considerations, it must be pointed out that there is nothing that makes it possible to conclude that one of those elements would be negligible from a visual standpoint.

56 From a phonetic standpoint, the graphic element is negligible but there is nothing to indicate that the relevant public would pay more attention to the word element ‘choco’ than the word element ‘love’. In any event, in view of its size and position, the word element ‘love’ is not negligible.

57 As regards, the conceptual standpoint, it must be stated, as the Board of Appeal pointed out, that in some European languages the word ‘choco’ has no meaning other than that of being a clear allusion to, or an abbreviation for, the word ‘chocolate’ (see paragraph 65 below). The second word of which the mark applied for consists, ‘love’, is a basic English word which is understood everywhere in the European Union. According to a reputable English dictionary it has the following meanings: ‘a strong feeling of affection’; ‘a strong feeling of affection and sexual attraction for someone’; ‘affectionate greetings conveyed to someone on one’s behalf’; ‘a formula for ending an affectionate letter’ and ‘a great interest and pleasure in something’. As has already been stated, there is nothing to support the inference that the relevant public would disregard that word. That also applies from a conceptual point of view. Consequently, the mark applied for conveys, as a whole, the association of two terms with a positive connotation: ‘love’ and ‘chocolate’, terms which are emphasised by the figurative elements, namely the two raised hearts at the beginning of the sign.

58 Taken together with the goods and services at issue, the mark applied for conveys the idea of loving to get a tan and the sensation of well-being which stems from that. The concept ‘choco love’ may also play on the idea that a brown suntan will give the user an attractive appearance and, consequently, bring him love, as the Board of Appeal found in paragraph 29 of the contested decision.

59 It follows from the foregoing that the graphic element in the form of hearts and the word element ‘love’ are not negligible elements for the purposes of the case-law cited in paragraph 54 above. The arguments which the applicant has put forward in that regard must thus be rejected as unfounded.

– The visual, phonetic and conceptual comparison

60 Visually, the marks at issue coincide in the sequence of letters ‘c’, ‘h’, ‘o’, ‘c’, ‘o’ and ‘l’ at the beginning of the signs and in the ‘e’ at the end of the signs.

61 The mark applied for contains a graphic element in the form of two hearts and the word element ‘love’ which do not appear in the earlier word mark. Furthermore, the word ‘choco’ in the mark applied for is shorter than the single word element in the earlier word mark, ‘chocolate’. In addition, the mark applied for is a stylised figurative mark, in contrast to the earlier word mark.

62 Consequently, the similarities between the signs at issue are not sufficient to offset the differences between them. It follows that the Board of Appeal was right in finding that there was a low degree of visual similarity between the signs at issue.

63 From a phonetic standpoint, there is a similarity between the signs at issue in view of the first two syllables ‘cho’ and ‘co’, which are common to both of them. However, there are also significant phonetic differences between the signs due to their very different endings, as is apparent from the paragraphs above. As has already been stated, there is nothing to indicate that the relevant public would not pronounce the word element ‘love’, which is well known and short enough for the relevant public to pronounce and remember it. Consequently, in view of the different pronunciation of the words ‘choco’ and ‘chocolate’ and the fact that the relevant public will pronounce the word ‘love’ in the mark applied for, it must be held that there is only a low degree of phonetic similarity between the signs at issue.

64 As regards the conceptual comparison, it is appropriate to bear in mind that in English the word ‘chocolate’ means ‘a food in the form of a paste or solid block made from roasted and ground cacao seeds, typically sweetened and eaten as confectionery’; ‘a sweet made of or covered with chocolate’; ‘hot chocolate’ and ‘a deep brown colour’. The Board of Appeal was right to find, in paragraph 21 of the contested decision, that the word ‘chocolate’ will be understood throughout the European Union as a word that has become familiar to consumers on account of its use on chocolate packaging and that it exists in an identical or similar form in many European languages.

65 It follows that the first word element of which the sign applied for consists and the earlier word sign are conceptually identical, given that, in most of the languages of the European Union, the word ‘choco’ is capable of being interpreted as an allusion to the word ‘chocolate’ or as an abbreviation of that word.

66 In the sign applied for, the representation of images of hearts will convey the concept of a heart and also the idea of love for the majority of the relevant public. That image reinforces ‘love’, the second word element in the mark applied for. Taken as a whole, all the elements in the sign applied for refer to the concept of love for chocolate and the food or other goods in which chocolate is an important ingredient. Likewise, given the goods and services at issue, the mark applied for will convey the idea of loving the effects of those goods and services as has already been stated in paragraph 58 above. It may also lead the relevant public to think, as the Board of Appeal considers, in paragraph 37 of the contested decision, that those goods and services will give them an attractive skin colour which will make it possible to gain someone’s affection.

67 It must be borne in mind in that regard that, contrary to what the applicant submits, there is nothing that makes it possible to conclude that the relevant public will not perceive the mark applied for as a whole. The hearts in the mark applied for will tend to attract the relevant public’s attention to the word ‘love’, even though that word is placed after the word ‘choco’.

68 In view of the foregoing, it must be held that the second element in the sign applied for alters the meaning of that sign, with the result that the signs at issue are not identical, but similar, from a conceptual standpoint, as the Board of Appeal maintains in paragraph 35 of the contested decision.

– The distinctive character of the earlier word mark

69 The applicant submits, in essence, that the earlier marks have a high degree of inherent distinctiveness. It also submits that those marks have enhanced distinctiveness as a result of their use. In that respect, it claims that the Board of Appeal erred in disregarding all the evidence which it had put forward to that effect. It maintains that the Board of Appeal should, in any event, have taken into consideration the parts of that evidence which were in English.

70 EUIPO disputes the applicant’s arguments. In particular, as regards the enhanced distinctiveness, EUIPO submits that the Board of Appeal was right to disregard the applicant’s evidence on the ground that it had not been translated into the language of the proceedings.

71 It must be borne in mind that Rule 19(4) of the Implementing Regulation provides that:

‘The Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.’

72 It is necessary to examine whether the Board of Appeal erred by relying on that rule in the present case.

73 On 12 June 2013, the applicant, in its statement of opposition, provided sales and marketing figures in respect of its goods and ‘copy-pasted’ a screenshot of its Hungarian Facebook page in order to show that it had 18 000 followers. The applicant attached to its statement of opposition printouts from its undertaking’s official website and a judgment of the Municipal Court, Budapest, of 14 February 2013, all of which were in Hungarian. It must be stated that none of its documents was translated into the language of the proceedings, namely English.

74 On 15 March 2014, together with its observations in reply to the other party, the applicant lodged a further series of documents, some of which were in Hungarian. Those documents were also not translated into English. What is at issue here concerns, inter alia, tables and figures with texts in Hungarian.

75 As regards the items of evidence which had not been translated, it must be held that the Board of Appeal was right to disregard them inasmuch as they had not been translated into the language of the proceedings. Even though some of those documents contain figures and images, it is not possible to understand them and thus to verify the applicant’s claims. Consequently, it would be contrary to Rule 19(4) of the Implementing Regulation and to the principle that the parties should be heard and the principle of equality of arms between the parties to accept those items of evidence (see, to that effect, judgment of 10 May 2012, Rubinstein and L'Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 102).

76 The applicant’s claim that the Board of Appeal did not take into consideration the parts of the items of evidence which were in English must be rejected as unfounded. It is apparent from paragraphs 40 and 62 of the contested decision that the Board of Appeal took into consideration the applicant’s references in English, but took the view that that was insufficient to prove that the earlier marks had a reputation or enhanced distinctiveness. The Board of Appeal also refers to the Opposition Division’s decision, in which part of the evidence is examined, and to the figures put forward by the applicant.

77 In view of the foregoing, it must be held that the Board of Appeal was right to find that the applicant had not proved that the earlier marks (see paragraph 6 above) had enhanced distinctiveness as a result of their use.

78 As regards the inherent distinctiveness of the earlier word mark, the Board of Appeal found, in paragraph 42 of the contested decision, that that mark had a weak distinctive character.

79 That finding must be upheld given that the earlier word mark alludes to the goods which it covers. The word ‘chocolate’ will be associated with the colour brown as a reference to tanning and achieving the desired colour of tanned skin by using the goods at issue.

80 In view of the foregoing, the applicant’s arguments as regards the distinctive character of the earlier word mark must be rejected as unfounded.

The likelihood of confusion

81 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 (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and judgment 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).

82 First, the applicant submits that its earlier marks constitute a family of trade marks which have the concept of ‘chocolate’ in common and that that is particularly important as regards the assessment of whether there is a likelihood of confusion and of association between the marks at issue. It complains that the Board of Appeal did not take that into consideration in assessing whether there was a likelihood of confusion.

83 Secondly, the applicant claims that the Board of Appeal should have found that there was a likelihood of confusion between the mark applied for and the earlier marks (see paragraph 6 above). In that regard, it submits that the partial identity and strong similarities which, in its view, exist between the signs under comparison and between the goods and services at issue are, in themselves, sufficient to give rise to a likelihood of confusion. Moreover, it submits that the enhanced distinctiveness and the significant market share of the earlier marks, which make up a family of trade marks, strengthen the existence of a likelihood of confusion on the part of the relevant public.

84 EUIPO disputes the applicant’s arguments. Furthermore, EUIPO submits that the arguments regarding a series or a family of trade marks are inadmissible. EUIPO maintains that those arguments are out of time since they were not put forward in the course of the administrative proceedings.

85 As regards, first of all, the arguments relating to a series or family of trade marks, it must be observed that a likelihood of confusion which arises out of such a series or family of trade marks is subject to specific conditions. In that respect, it must be borne in mind that, in order for there to be a likelihood of the public’s being mistaken as to whether the trade mark applied for belongs to a series, the earlier marks forming part of that series must necessarily be present on the market. Taking into account the serial nature of the earlier marks entails widening the scope of protection of the trade marks which form part of the series, considered individually. Consequently, any assessment in the abstract of the likelihood of confusion, based solely on the existence of several registrations covering marks reproducing the same distinctive element, in the absence of any actual use of the marks, must be regarded as excluded (see judgment of 25 November 2014, UniCredit v OHIM, T‑303/06 RENV and T‑337/06 RENV, EU:T:2014:988, paragraph 60 and the case-law cited).

86 Indeed, where there is a family or series of trade marks and the likelihood of confusion therefore results from the possibility that the consumer might be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for, considering, erroneously, that that trade mark is part of that family or series, proof of the use of a sufficient number of trade marks capable of constituting a family or series is particularly important, since no consumer can be expected, in the absence of such use, to detect an element which is common to such a family or series or to associate with that family or series another trade mark containing the same common element (see judgment of 25 November 2014, UniCredit v OHIM, T‑303/06 RENV and T‑337/06 RENV, EU:T:2014:988, paragraph 60 and the case-law cited).

87 Consequently, failing proof of the use of a sufficient number of trade marks capable of constituting a family or series, any likelihood of confusion which might be entailed by the appearance on the market of the trade mark applied for will have to be assessed by comparing each of the earlier marks, taken individually, with the trade mark applied for (see judgment of 25 November 2014, UniCredit v OHIM, T‑303/06 RENV and T‑337/06 RENV, EU:T:2014:988, paragraph 60 and the case-law cited).

88 In the present case, it must be stated that the applicant has not provided either information or evidence showing that the conditions resulting from the case-law cited in paragraphs 85 to 87 above are satisfied. It follows that the arguments relating to a series or family of trade marks must be rejected as unfounded without it being necessary to rule on their admissibility.

89 As regards the likelihood of confusion, it is apparent from paragraphs 39 to 46 above that the goods and services at issue are, in part, identical and, in part, remotely similar.

90 The signs at issue are visually and phonetically similar to a low degree and are conceptually similar. In that regard, it must be held, as the Board of Appeal found in paragraph 38 of the contested decision, that they are similar to a low degree from an overall standpoint. The similarities between the marks at issue are not sufficient to offset the differences between them. In that regard, it must be pointed out that the words ‘choco’ and ‘chocolate’ are only weakly distinctive in relation to the goods and services at issue whereas the figurative element in the form of hearts and the word element ‘love’ in the mark applied for have no connection with the goods and services at issue and are thus distinctive to an average degree. Those elements will be remembered by the relevant public. Consequently, the mark applied for, as a whole, has an average degree of inherent distinctiveness, unlike the earlier word mark, which has only a weak distinctive character, as the Board of Appeal found in paragraph 54 of the contested decision.

91 The relevant public for the goods in Classes 10 and 11 consists of both professionals and end consumers, the level of attention of both of which is high with regard to those goods. The relevant public in respect of the services in Class 44 consists of end consumers with an average level of attention.

92 In the context of a global assessment of the likelihood of confusion, it must be held that, in view of the differences between the marks at issue and the average and high levels of attention of the relevant public, it is not possible, in accordance with the principle of the interdependence between the factors to be taken into account, to hold that there is a likelihood of confusion, even though the goods and services at issue are, in part, identical, and, in part, remotely similar.

93 Consequently, the Board of Appeal was right to find that there was no likelihood of confusion between the mark applied for and the earlier word mark. The applicant’s claim that the Board of Appeal should have found that there was a likelihood of confusion between the mark applied for and the earlier word mark must be rejected as unfounded.

94 As regards the earlier national word mark CSOKICSŐ and the earlier EU figurative mark Chocolate Brown relied on by the applicant (see paragraph 6 above), it must be pointed out, as the Board of Appeal stated in paragraphs 58 and 59 of the contested decision, that there are even fewer similarities between those marks and the mark applied for than there are between the earlier word mark examined in paragraphs 26 to 92 above and the mark applied for.

95 Consequently, in accordance with the above reasoning, it must be held, as the Board of Appeal found, that there is no likelihood of confusion between the other earlier marks relied on and the mark applied for. The applicant’s claim, referred to in paragraph 24 of the present judgment, that the Board of Appeal made errors in applying Article 8(1)(b) of Regulation No 207/2009, must therefore also be rejected as unfounded as regards the earlier national word mark CSOKICSŐ and the earlier EU figurative mark Chocolate Brown.

96 It follows from the foregoing that the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety without it being necessary to rule on the admissibility of the first head of claim.

Costs

97 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.

98 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1. Dismisses the action;

2. Orders Sun System Kereskedelmi és Szolgáltató Kft. to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).





Prek Schalin Costeira

Delivered in open court in Luxembourg on 25 January 2017.





E. Coulon M. Prek