JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
24 October 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark Xocolat — Earlier EU word mark LUXOCOLAT — Relative ground for refusal — Likelihood of confusion — Similarity of signs — Article 8(1)(b) of Regulation (EU) 2017/1001 — Reasoned statement in the notice of opposition — Rule 15(3)(b) of Regulation (EC) No 2868/95 (now Article 2(4) of Delegated Regulation (EU) 2018/625))
In Case T–58/18,
Ramona Mahr, residing in Vienna (Austria), represented by T. Rohracher, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Especialidades Vira, SL, established in Martorell (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 November 2017 (Case R 541/2017-2), relating to opposition proceedings between Especialidades Vira and Ms Mahr,
THE GENERAL COURT (Fourth Chamber),
composed, at the time of deliberation, of H. Kanninen, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 2 February 2018,
having regard to the response lodged at the Court Registry on 18 May 2018,
having regard to the written questions put by the Court to the parties and their answers to those questions, which were lodged at the Court Registry on 19 March 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 6 July 2015, the applicant, Ms Ramona Mahr, 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 word sign Xocolat.
3 The goods in respect of which registration was sought are 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, and correspond to the following description: ‘Chocolate, chocolate goods, including filled, chocolate paste and coatings; cocoa products, including cocoa powder and cocoa-based mixtures in powder form; chocolates and confectionery’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 141/2015 of 30 July 2015.
5 On 31 August 2015, Especialidades Vira, 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 the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier EU word mark LUXOCOLAT, applied for on 11 June 2013 and registered on 4 November 2013 under No 11888948, covering goods and services in Classes 30, 35 and 39 and corresponding, for each of those classes, to the following description:
– Class 30: ‘Pastry and confectionery goods; chocolates, nougat, marzipan, cocoa’;
– Class 35: ‘Wholesaling and retailing or sale via global computer networks of pastry and confectionery, chocolates, nougat, marzipan, advertising, business management; Business administration; office functions’;
– Class 39: ‘Transport, storage and distribution of pastry and confectionery, chocolates, nougat, marzipan’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 On 19 January 2017, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009 and rejected the EU trade mark application in its entirety.
9 On 17 March 2017, the applicant 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.
10 By decision of 6 November 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. First of all, it considered that the mark applied for is close to the English word ‘chocolate’ or the French word ‘chocolat’. Although in some other languages the equivalent words for ‘chocolate’ are not as close to the mark applied for, that mark had to be regarded as weakly distinctive for English or French consumers, since the goods designated by the marks at issue were chocolate or products related to chocolate. Next, according to the Board of Appeal, given that the word element constituting the mark applied for is entirely contained in the earlier mark, the signs are visually, phonetically and conceptually similar, at least to a moderate degree. Lastly, by reason of that similarity and the identity of the goods, even though the earlier mark is of weak distinctive character and the mark applied for does not constitute a complete reproduction of that earlier mark, the Board of Appeal concluded that there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between those marks.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant relies, in essence, on two pleas in law, alleging, first, infringement of the principle of equal treatment of the parties and ‘fail[ure] to consider that the opponent did not substantiate the opposition’ and, secondly, infringement of Article 8(1)(b) of Regulation 2017/1001.
The first plea, alleging infringement of the principle of equal treatment and ‘fail[ure] to consider that the opponent did not substantiate the opposition’
14 The applicant submits that, in the absence of any detailed arguments in the opponent’s notice of opposition, all the arguments favourable to the opponent were put forward by the Opposition Division and then upheld by the Board of Appeal, as though it were irrelevant that the opponent had not contributed at all to those arguments.
15 EUIPO submits that the first plea is inadmissible as being ambiguous and unsupported by any argument.
16 In that regard, it should be recalled that Article 177(1)(d) of the Rules of Procedure of the General Court provides that the application must contain ‘the subject matter of the proceedings, the pleas in law and arguments relied on and a summary of those pleas in law’. That summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if appropriate, without other supporting information (see, to that effect, judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT), T‑449/13, not published, EU:T:2015:839, paragraph 16).
17 In the present case, even though the grounds presented in support of the first plea in law in the application are very brief, it is sufficiently clear from the applicant’s argument that she criticises the Board of Appeal for having validated the Opposition Division’s approach of raising arguments of its own motion against the applicant even though the opponent had not itself substantiated the opposition. Moreover, it is apparent from EUIPO’s response that EUIPO understood the application in that way and replied to it on the substance. It was only in its reply to a measure of organisation of procedure that EUIPO raised the plea of inadmissibility, noting that it had preferred, in the response, to argue that the plea was unfounded.
18 That plea must consequently be declared admissible.
19 Moreover, it should be recalled that it follows from Rule 15(2)(c) 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) (now Article 2(2)(c) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), that the notice of opposition must contain, inter alia, ‘the grounds on which the opposition is based by means of a statement to the effect that the requirements under Article 8(1), (3), (4) and (5) of Regulation [No 207/2009] are fulfilled’. Rule 15(3)(b) of Regulation No 2868/95 (now Article 2(4) of Delegated Regulation 2018/625) provides that the notice of opposition may contain a reasoned statement of the grounds on which the opposition is based and supporting evidence.
20 It follows from the provisions referred to in paragraph 19 above that, in opposition proceedings, the presentation of a ‘reasoned statement of the grounds on which the opposition is based and supporting evidence’ in the notice of opposition, which goes beyond a declaration that the conditions laid down in Article 8(1) of Regulation 2017/1001 are fulfilled, is not a requirement but a matter of discretion (see, to that effect, judgment of 25 October 2012, Automobili Lamborghini v OHIM — Miura Martínez (Miura), T‑191/11, not published, EU:T:2012:577, paragraph 26, and order of 20 June 2018, Unigroup v EUIPO — Pronova Laboratories (nailicin), T‑587/17, not published, EU:T:2018:378, paragraphs 21 and 23). The same applies to the submission, at a later stage, by the opposing party of facts, evidence and observations in support of its opposition, in accordance with the procedure laid down in Rule 19(1) of Regulation No 2868/95 (now Article 7(1) of Delegated Regulation 2018/625).
21 In the present case, the opponent complied with the requirements referred to in paragraph 19 above by stating, in the notice of opposition, that the ground for opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). It did not take the opportunity available to it under Rule 19(1) of Regulation No 2868/95 to submit, at a later stage, facts, evidence and observations in support of its opposition. It was then, as EUIPO rightly submits, for the Opposition Division and, subsequently, the Board of Appeal to carry out a full examination of the merits of the application for registration. It is apparent from the first sentence of Article 95(1) of Regulation 2017/1001 that that examination was limited to the pleas in law relied on and the applications made by the parties. It is sufficient to note that the applicant did not in any way invoke or specify to what extent the Opposition Division, and subsequently the Board of Appeal, exceeded the scope of that power of examination.
22 Accordingly, the first plea in law must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
23 The applicant alleges, in essence, that the Board of Appeal, first, erred in its assessment of the distinctiveness of the mark applied for, secondly, made an incorrect assessment of the distinctiveness of the earlier mark, thirdly, erred in its assessment as to the visual, phonetic and conceptual similarities of the marks at issue and, fourthly, incorrectly assessed the likelihood of confusion in the context of the overall comparison.
24 EUIPO disputes the applicant’s arguments.
25 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.
26 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).
27 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, to that effect, 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).
28 Where the protection of the earlier mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal, for the purposes of Article 8(1)(b) of Regulation 2017/1001, exists in part of the European Union (see, to that effect, 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 76 and the case-law cited).
29 It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was right to take the view that there was a likelihood of confusion between the trade marks at issue in the present case.
The relevant public
30 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).
31 In that regard, the Board of Appeal found, in paragraphs 20 to 22 of the contested decision, that, since the earlier trade mark was an EU mark, the relevant territory in respect of which the likelihood of confusion had to be assessed was that of the European Union. As for the level of attention, it considered that the goods in question, namely those in Class 30, were intended for the general public, whose level of attention is considered to be that of a reasonably well informed and reasonably observant and circumspect consumer.
32 Since there is no reason to take the view that the Board of Appeal’s findings concerning the relevant public, which, moreover, are not disputed by the applicant, are vitiated by error, they should be confirmed.
The comparison of the goods
33 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. These 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).
34 In the present case, in paragraph 23 of the contested decision, the Board of Appeal endorsed the Opposition Division’s finding that the goods covered by the marks at issue are identical. The applicant considers that the goods in question are identical or similar.
35 In that regard, it is necessary to validate, as did the Second Board of Appeal of EUIPO in its decision, the finding that all the goods in question are identical, on the ground, first, that the goods covered by the mark applied for are chocolates and confectionery, diverse chocolate goods and cocoa goods and, secondly, that the goods covered by the earlier mark include chocolates, cocoa and confectionery goods.
The comparison of the signs
36 It must be recalled that it has been held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited; judgments of 26 January 2006, Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 46, and of 13 September 2018, ACTC v EUIPO — Taiga (tigha), T‑94/17, not published, under appeal, EU:T:2018:539, paragraph 49).
37 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 (see judgment of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 47 and the case-law cited).
38 The Board of Appeal found, in paragraphs 24 to 31 of the contested decision, a visual and phonetic similarity and some conceptual similarity between the marks at issue and concluded from this that the marks are similar, at least to a moderate degree, in all relevant respects. It also found that the mark applied for should be considered to be weakly distinctive for English or French consumers.
39 The applicant disputes each of those assessments, which EUIPO, for its part, contends are well founded.
– The distinctive character of the word element of the mark applied for
40 In the present case, the Board of Appeal found, inter alia, in paragraph 26 of the contested decision, that the mark applied for is close to the English word ‘chocolate’ or the French word ‘chocolat’. Although in some other languages the equivalent words for ‘chocolate’ are not as close to the term ‘xocolat’, and although the mark applied for is not totally devoid of distinctiveness, that mark must be deemed weakly distinctive for English or French consumers, inasmuch as the goods designated by the marks at issue are chocolate or chocolate-related goods.
41 The applicant submits that the mark applied for is, in relation to chocolate goods, a fanciful word, with no connection to ‘chocolat’ or ‘chocolate’, since the beginning of those two words, characterised by the group of letters ‘ch’, is missing.
42 EUIPO disputes the applicant’s arguments.
43 In that regard, it should be noted that, although the word element of the mark applied for, ‘xocolat’, (which forms an integral part of the earlier trade mark) is, as the applicant rightly submits, a fanciful word, it nevertheless refers to chocolate goods and is similar to the actual word ‘chocolate’, particularly since, as the Board of Appeal rightly noted, that fanciful word is used for chocolate goods or chocolate-related goods. The contrary opinion expressed by the applicant is contradictory, in so far as she accepts, in the assessment of the distinctive character and conceptual content of the earlier mark, that it is possible to recognise the word ‘chocolate’ in that mark, although, like the mark applied for, it does not contain the initial group of letters ‘ch’.
44 The Board of Appeal’s conclusions, in paragraph 26 of the contested decision, that the mark applied for has to be regarded as being weakly distinctive for English or French consumers must therefore be confirmed.
– The visual similarity
45 In paragraph 27 of the contested decision, the Board of Appeal took the view, in essence, that the signs are visually similar, in so far as the mark applied for is entirely contained in the earlier mark.
46 The applicant submits that the Board of Appeal did not provide any logical explanation as to why the public should isolate the element ‘xocolat’ within the earlier mark. The assessment of visual similarity must, she submits, be based on the overall impression produced by the signs, taking into account in particular their distinctive and dominant elements, and the earlier mark does not contain any dominant element other than its beginning, characterised by the group of letters ‘lux’. Every consumer, according to the applicant, will recognise that the term ‘luxocolat’, which constitutes the earlier mark, results from the combination of the words ‘luxury’ and ‘chocolate’ and will associate certain meanings with the element ‘lux’ and with the element ‘ocolat’, but the element ‘lux’ will dominate the overall impression produced by the term thus created. In addition, with regard to the word element constituting the mark applied for, the applicant submits that that element is, in the case of chocolate goods, a fanciful word, unrelated to the French word ‘chocolat’ or the English word ‘chocolate’ in so far as the beginning, characterised by the group of letters ‘ch’, is missing.
47 EUIPO disputes the applicant’s arguments.
48 According to the case-law, marks which contain or reproduce an element from each other should be considered, at least to that extent, to be similar (judgments of 8 September 2010, Kido v OHIM — Amberes (SCORPIONEXO), T‑152/08, not published, EU:T:2010:357, paragraph 66; of 10 November 2011, Three-N-Products Private v OHIM — Shah (AYUURI NATURAL), T‑313/10, not published, EU:T:2011:653, and of 15 November 2011, Hrbek v OHIM — Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT), T‑434/10, not published, EU:T:2011:663, paragraph 55). In the present case, the word element constituting the mark applied for is entirely contained in the earlier mark and comprises more than two thirds of that mark, as the element ‘xocolat’ constitutes seven of the nine letters contained in the term ‘luxocolat’. That element, which is identically present in both of the marks at issue, is thus likely to create an overall impression of visual similarity, as the Board of Appeal correctly held (see, to that effect, judgments of 4 May 2005, Reemark v OHIM — Bluenet (Westlife), T‑22/04, EU:T:2005:160, paragraph 40; of 8 September 2010, SCORPIONEXO, T‑152/08, not published, EU:T:2010:357, paragraph 66, and of 10 November 2011, AYUURI NATURAL, T‑313/10, not published, EU:T:2011:653, paragraph 38). It should be noted that whether the letters are written in upper or lower case is irrelevant in the comparison of the signs at issue, since the protection granted to a word mark relates to the word, and not to the particular graphic or stylistic aspects which that mark might possess (see, to that effect, judgment of 17 January 2017, QuaMa Quality Management v EUIPO — Microchip Technology (medialbo), T‑225/15, not published, EU:T:2017:10, paragraph 61 and the case-law cited).
49 The overall impression of visual similarity found in paragraph 48 cannot be neutralised by the addition of the group of letters ‘lu’ to the beginning of the earlier mark. It should be recalled that, while the consumer normally attaches more importance to the first part of words, that consideration cannot apply in every case (judgments of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 32, and of 14 June 2017, Aydin v EUIPO — Kaporal Groupe (ROYAL & CAPORAL), T‑95/16, not published, EU:T:2017:388, paragraph 41).
50 In that regard, it should be borne in mind that, as has already been stated in paragraph 48 above, the word element constituting the mark applied for is entirely contained in the earlier mark and comprises more than two thirds of that mark, since the element ‘xocolat’ constitutes seven of the nine letters contained in the term ‘luxocolat’. The fact that the signs differ in the first two letters of the earlier mark, namely the group of letters ‘lu’, is not sufficient to neutralise the visual similarity produced by the common element ‘xocolat’ (see, to that effect, judgment of 12 May 2016, Red Lemon v EUIPO — Lidl Stiftung (ABTRONIC), T‑643/14, not published, EU:T:2016:294, paragraph 37).
51 The overall impression of visual similarity found in paragraph 48 cannot be called into question by the applicant’s argument that the Board of Appeal did not provide any logical explanation as to why the public should isolate the element ‘xocolat’ within the earlier mark. In that regard, it should be noted that such a finding is not apparent from the contested decision. On the contrary, the Board of Appeal rightly pointed out, in paragraph 29 of the contested decision, that consumers are not generally prone to dissect a word mark into its various elements, unless each element projects a familiar word or concept or other figurative effects produce a visual discontinuity, which is not the case here. The word element ‘xocolat’ is, as the applicant herself submits in respect of the mark applied for, a fanciful word. Even though that fanciful word has evocative force in that it strongly suggests, as the Board of Appeal correctly found in paragraph 29 of the contested decision, the idea of ‘chocolate’ (see, to that effect, judgment of 13 February 2007, Ontex v OHIM — Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 90), its evocative character is not sufficient to support the assumption that the average consumer will engage in an assessment of the various elements of the earlier mark. On the contrary, consumers will be aware of the evocative effect of the earlier mark without undertaking a conceptual analysis of it (see, to that effect, judgment of 13 February 2007, CURON, T‑353/04, not published, EU:T:2007:47, paragraph 90). The same applies if, in accordance with the applicant’s argument, consumers isolate the word elements ‘lux’ and ‘ocolat’, since the word element ‘ocolat’ has no immediately intelligible meaning and its evocative force with regard to the concept of chocolate is, contrary to what the applicant submits, not more significant than with regard to the word element ‘xocolat’.
52 In the light of the foregoing, it must be held that the Board of Appeal was correct to conclude that there is visual similarity between the signs at issue, since the word element constituting the mark applied for is entirely contained in the earlier mark.
– The phonetic similarity
53 The Board of Appeal found, in paragraph 28 of the contested decision, that the signs are phonetically similar in so far as there is a high degree of similarity between the mark applied as a whole and three of the four syllables of the earlier mark, which is not attenuated by the difference constituted by the first syllable of the earlier mark, namely the syllable ‘lu’, since the sound produced is short and not particularly strong.
54 The applicant considers that there is no phonetic similarity between the signs at issue. In that regard, she notes that the difference in length and syllables leads to a significant difference between the signs in pronunciation and rhythm. First, at the beginning of the earlier mark there is an additional consonant and vowel, constituting the syllable ‘lu’, which have no equivalent in the mark applied for and, secondly, the sequence of vowels ‘u’, ‘o’, ‘o’, ‘a’ in the earlier mark differs from the sequence of vowels ‘o’, ‘o’, ‘a’ in the mark applied for.
55 EUIPO disputes the applicant’s arguments.
56 It should be noted that the Board of Appeal correctly concluded that there is phonetic similarity between the marks at issue. There is a high degree of similarity between the pronunciation of the mark applied for as a whole and three of the four syllables of the earlier mark, even though the syllable ‘xo’, common to both marks, may be subject to slight differences in pronunciation, as it may, depending on the language in question, be pronounced ‘sho’, ‘ko’ or ‘kso’, in the case of the earlier mark, and ‘sho’ or ‘cho’, with a more or less accentuated sibilant sound, in the case of the mark applied for. The difference introduced by the first syllable of the earlier mark cannot weaken the similarities introduced by the other three syllables. Contrary to what the applicant claims, this result cannot be called into question by limiting the phonetic comparison to the vowels. First, that comparison cannot be limited to a comparison of the pronunciation of the vowels, but encompasses all of the sounds, including the consonants (see, to that effect judgment of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑548/12, EU:T:2015:478, paragraph 86). Secondly, even an approach limited to the vowels should recognise the predominant similarity of the sequence of three out of four vowels, namely the vowels ‘o’, ‘o’ and ‘a’.
57 In the light of the foregoing, it must be held, as the Board of Appeal correctly found, that there is a phonetic similarity between the signs at issue.
– The conceptual similarity
58 The Board of Appeal noted, in paragraphs 29 and 30 of the contested decision, that in most, if not all, of the relevant territory, the trade mark applied for strongly suggests chocolate, especially since the goods in question are chocolate, contain chocolate or are combined with chocolate. With regard to the earlier mark, it found that it will not be broken down by French-speaking consumers into different elements and, consequently, will not evoke the concept of ‘luxury’ chocolate. The Board of Appeal concluded that the marks at issue present ‘a degree of conceptual similarity based on “chocolate”, whether “luxury” or not’.
59 The applicant submits that it is possible to recognise, in the earlier mark, the words ‘luxe’ [‘luxury’ in English] or ‘lux’ (meaning ‘light’ in Latin) and ‘chocolat’ [‘chocolate’ in English]. However, in so far as no association with luxury or light is apparent from the mark applied for, there is no conceptual similarity between the signs.
60 EUIPO disputes the applicant’s arguments.
61 It should be noted that it is true that the Board of Appeal found that the earlier mark does not suggest ‘luxury’ chocolate, since consumers are not generally inclined to break down a word mark into its various elements. However, it stated that its conclusion that the signs at issue present some conceptual similarity because of their association with chocolate was valid regardless of whether or not the earlier mark is also associated with the concept of luxury.
62 That observation must be confirmed since, as EUIPO rightly argues, even if the word element ‘lux’ were understood in the sense of ‘luxury’, the semantic concept resulting from the association with chocolate would not be significantly modified, since that meaning relates to that concept and qualifies it by adding information on the quality of the chocolate. As for the applicant’s argument that the word element ‘lux’ could also be understood in the sense of the Latin word ‘lux’, meaning ‘light’, it should be noted that it cannot be assumed that the relevant public, that is to say, the average consumer, whose level of attention is considered to be that of a reasonably well informed and reasonably observant and circumspect consumer, would in fact understand that that element refers to a Latin word, which is not necessarily familiar to the general public and which has no connection with the product concerned, namely chocolate.
63 Therefore, as the Board of Appeal rightly held in paragraph 30 of the contested decision, it must be concluded that the marks at issue do indeed present ‘a degree of conceptual similarity based on “chocolate”, whether “luxury’’ or not’. In those circumstances, the applicant’s submission that the Board of Appeal erred in finding that the earlier mark does not suggest ‘luxury’ chocolate must be rejected as ineffective.
64 In the light of the foregoing, it must be held that the Board of Appeal acted correctly in holding that the signs at issue are visually, phonetically and conceptually similar, at least to a moderate degree.
The likelihood of confusion
65 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 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
66 As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
67 In the present case, in paragraphs 32 to 35 of the contested decision, the Board of Appeal concluded that, in view of the inclusion of the term ‘xocolat’ in the term ‘luxocolat’, the marks are visually, phonetically and conceptually similar, at least to a moderate degree, and that, even in the presence of an earlier mark with a weak distinctive character and a mark applied for which does not constitute a complete reproduction, there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between those marks. It specified that that risk will arise in particular in so far as the relevant public might consider that the applicant’s chocolates and confectionery goods come from the same trade source as the identical goods of the opponent. That is particularly true in so far as it is common knowledge that the same company will sometimes use sub-brands, that is to say, signs derived from a principal mark and which share with that mark a common dominant element, in the present case the ‘xocolat’ element, in order to distinguish its various product lines.
68 The applicant submits that there is no likelihood of confusion between the marks at issue, in so far as they are sufficiently distinct from each other. First, she indicates that there is a fundamental principle that the parts of a trade mark are not covered by trade mark protection. The Board of Appeal failed to observe that principle by taking the view that the element ‘xocolat’, included in the earlier mark, was similar to that mark. Secondly, the applicant argues that the Board of Appeal erred in its assessment of the distinctive character of the earlier trade mark. She observes that every consumer recognises that the term ‘luxocolat’, constituting the earlier mark, results from the combination of the words ‘luxury’ and ‘chocolate’ and associates certain meanings with the element ‘lux’ and with the element ‘ocolat’.
69 EUIPO takes issue with the applicant’s arguments.
70 In the first place, with regard to the applicant’s argument that the Board of Appeal granted protection to a part of the earlier mark, it should be borne in mind that the Board of Appeal concluded that the word element constituting the mark applied for is entirely contained in the earlier mark and that it follows that the signs are visually, phonetically and conceptually similar, at least to a moderate degree. In order to reach that conclusion, the Board of Appeal merely conducted an appraisal, which, moreover, is correct, of the similarities and differences between the signs on the basis of an assessment of the overall impression produced by the marks at issue. In so doing, it did not grant protection to parts of marks and, consequently, did not commit an error of assessment. The applicant’s submission must therefore be rejected.
71 In the second place, with regard to the alleged incorrect assessment of the distinctive character of the earlier mark by the Board of Appeal, first, it must be noted that the Board of Appeal rightly pointed out, in paragraph 29 of the contested decision, that consumers are not generally prone to dissect a word mark into its various parts, unless each element refers to a familiar word or concept or other figurative effects produce a visual discontinuity, which is not the case here, as already stated in paragraph 51 above.
72 Secondly, it should be noted that the Board of Appeal also took into account the potentially weak distinctive character of the earlier mark by pointing out that, even in the presence of an earlier mark with a weak distinctive character and a mark applied for which does not constitute a complete reproduction of that mark, there is a likelihood of confusion.
73 That conclusion must be confirmed in so far as a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in order to assess the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
74 That applies particularly in the present case, as the Board of Appeal correctly observed that, since the word element constituting the mark applied for is entirely contained in the earlier mark and the goods are identical, there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 between those marks (see, to that effect, judgments of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61, and of 7 March 2017, Lauritzen Holding v EUIPO — DK Company (IWEAR), T‑622/14, not published, EU:T:2017:143, paragraph 36), particularly in so far as the relevant public might think that the applicant’s chocolates and confectionery goods come from the same trade source as the identical goods of the opponent.
75 It follows from all of the foregoing considerations that the Board of Appeal was correct to hold that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
76 Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.
Costs
77 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
78 Since the applicant has been unsuccessful, she must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Ms Ramona Mahr to pay the costs.
Kanninen | Schwarcz | Iliopoulos |
Delivered in open court in Luxembourg on 24 October 2019.