JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
14 December 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark Pet Cuisine — Earlier EU figurative mark The Pet CUISINE alimento para mascotas felices Genial — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑46/17,
TDH Group, established in Brussels (Belgium), represented by D. Chen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Comercial de Servicios Agrigán, SA, established in Huesca (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 10 November 2016 (Case R 685/2016‑2), relating to opposition proceedings between Comercial de Servicios Agrigán and TDH Group,
THE GENERAL COURT (Fourth Chamber),
composed 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 26 January 2017,
having regard to the response lodged at the Court Registry on 12 April 2017,
having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 2 and 8 May 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 The applicant, TDH Group, submitted to the Office Benelux de la propriété intellectuelle (Benelux Office for Intellectual Property; ‘BOIP’) an application for international registration of the figurative sign Pet Cuisine, pursuant to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted in Madrid (Spain) on 27 June 1989 (OJ 2003 L 296, p. 22). That application for an international registration was based on registration No 946758, effected on 1 January 2014 in Benelux. It designated, inter alia, the European Union as the territory in which protection was sought. Registration in the register of the International Bureau of the World Intellectual Property Organisation (WIPO) was carried out on 7 May 2014, under number 1203373 and is dated 7 April 2014 (‘the international registration’).
2 On 22 May 2014, the international registration was notified to 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)).
3 The sign covered by the international registration is reproduced below:
4 The goods in respect of which registration of the mark was sought fall within Class 31 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: ‘Seeds and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt’.
5 The international registration was published in the Community Trade Marks Bulletin No 90/2014 of 16 May 2014.
6 On 17 November 2014, Comercial de servicios Agrigán, SA, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the international registration, in so far as it designated the territory of the European Union, in respect of all the goods in Class 31, referred to in paragraph 4 above.
7 The opposition was based on the following earlier rights:
– the EU figurative mark registered on 14 November 2013 under number 11911955 for ‘foodstuffs for animals’ in Class 31, for ‘wholesaling, retailing in shops and via global computer networks of foodstuffs for animals’ in Class 35 and for ‘warehousing, transport and distribution of food for animals’ in Class 39, reproduced below:
– the EU figurative mark registered on 14 November 2013 under number 11912052 for ‘foodstuffs for animals’ in Class 31, for ‘wholesaling, retailing in shops and via global computer networks of foodstuffs for animals’ in Class 35 and for ‘warehousing, transport and distribution of food for animals’ in Class 39 reproduced below:
8 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).
9 By decision of 19 February 2016, the Opposition Division upheld in part the opposition based on the earlier mark The Pet CUISINE alimento para mascotas felices Genial and refused protection in the European Union of the sign covered by the international registration for the goods in Class 31, corresponding to the following description: ‘seeds and agricultural products, not included in other classes; seeds, natural plants; foodstuffs for animals, malt’. Furthermore, the Board of Appeal considered, in essence, that the partial rejection of the opposition for the other goods in Class 31, covered by the international registration and referred to in paragraph 4 above, was not affected by the other earlier mark on which the opposition was based, namely the EU figurative mark The Pet CUISINE alimento para mascotas felices Sibarity, since that mark covered the same goods as the earlier mark The Pet CUISINE alimento para mascotas felices Genial.
10 On 12 April 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
11 By decision of 10 November 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
12 In the first place, in paragraph 16 of the contested decision, the Board of Appeal noted that the relevant territory for the assessment of the likelihood of confusion was that of the European Union.
13 In the second place, in paragraphs 17 and 18 of the contested decision, it held, in essence, that the relevant public consisted of pet owners who are part of the general public of the European Union having an average level of attention.
14 In the third place, in paragraphs 19 to 23 of the contested decision, it considered, in essence, that the goods in Class 31, covered by the international mark, for which the Opposition Division had found that there was a likelihood of confusion, were similar or identical to the goods in the same class, covered by the earlier mark The Pet CUISINE alimento para mascotas felices Genial.
15 In the fourth place, in paragraphs 26 to 30 of the contested decision, it stated that the expression ‘pet cuisine’, represented in the sign covered by the international registration and in the earlier mark The Pet CUISINE alimento para mascotas felices Genial (‘the marks at issue’), was the dominant and most distinctive element of the marks at issue, even if that expression is understood by a part of the relevant public.
16 In the fifth place, in paragraphs 31 to 34 of the contested decision, it considered that, in essence, the marks at issue were visually, phonetically and conceptually similar for the part of the relevant public which understands the English expression ‘pet cuisine’ and that those marks were visually and phonetically similar for the part of the relevant public which does not understand the meaning of their word elements.
17 In the sixth place, in paragraph 34 of the contested decision, the Board of Appeal found that, in essence, there was a likelihood of confusion between the marks at issue, given the identity or similarity of the goods at issue, the distinctive and dominant character of the term ‘pet cuisine’, which is present in each of the marks at issue, as well as the visual, phonetic or even conceptual similarity of those marks.
18 In the seventh place, in paragraphs 36 and 37 of the contested decision, since the Board of Appeal upheld the opposition on the basis of the earlier mark The Pet CUISINE alimento para mascotas felices Genial and confirmed the decision of the Opposition Division, it took the view that it was not necessary to examine the merits of the opposition based on EU figurative mark The Pet CUISINE alimento para mascotas felices Sibarity.
Forms of order sought
19 The applicant claims that the Court should:
– principally, alter the contested decision and, accordingly, hold that the appeal before the Board of Appeal is well founded and reject the opposition in its entirety;
– in the alternative, annul the contested decision and the decision of the Opposition Division of 19 February 2016;
– order EUIPO to pay the costs of the proceedings.
20 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of the claims and evidence submitted for the first time before the Court
21 EUIPO considers, in essence, that the claims and evidence referred to in paragraphs 8 and 9 of the application, seeking to demonstrate that the purchase of pet food is related to health and potentially hazardous, were submitted for the first time before the Court and are, for that reason, inadmissible.
22 The applicant claims that the plea of inadmissibility raised by EUIPO should be rejected.
23 As a preliminary point, it must be noted that, before the Board of Appeal, the applicant contested the Opposition Division’s assessment that the level of attention of the public was average.
24 In particular, in paragraph 21 of its appeal against the Opposition Division’s decision, the applicant claimed, in essence, that it was apparent from the judgment of 23 January 2014, Sunrider v OHIM — Nannerl (SUN FRESH) (T‑221/12, not published, EU:T:2014:25), that the public had a high level of attention when purchasing veterinary preparations since those goods are health-related.
25 Therefore, the argument, relied on by the applicant in paragraph 8 of the application, according to which the purchase of pet food is related to health and potentially hazardous, is not new.
26 Next, it must be noted that, before the Board of Appeal, the applicant did not produce any evidence to show the alleged impact that foodstuffs for animals have on the health of pets. Studies which are deemed to demonstrate that impact were relied on for the first time in paragraphs 8 and 9 and in footnotes 2, 4 and 6 of the application.
27 According to the case-law, the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001). It follows from that provision that facts not relied on by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action brought before the General Court and that the latter cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see judgment of 20 March 2013, El Corte Inglés v OHIM — Chez Gerard (CLUB GOURMET), T‑571/11, EU:T:2013:145, paragraph 25 and the case-law cited).
28 Therefore, the studies seeking to demonstrate the alleged impact that foodstuffs for animals have on the health of pets, relied on for the first time in paragraphs 8 and 9 and in footnotes 2, 4 and 6 of the application, must be declared inadmissible.
29 Finally, in paragraph 9 of the application, the applicant claimed, for the first time, that the relevant public does not switch pet food brands easily, even when the proprietors of competing brands offer lower prices, and referred, in that regard, to a study mentioned in footnote 5 of the application.
30 In its response to a written question put by the Court, EUIPO raised the inadmissibility of the claim and the study referred to in paragraph 29 above.
31 The applicant claims that the plea of inadmissibility raised by EUIPO must be rejected.
32 In that regard, it is sufficient to note that the applicant’s claim that pet owners do not switch pet food brands easily and the study mentioned in footnote 5 of the application, which is meant to support that claim, were not submitted during the administrative procedure before the adjudicating bodies of EUIPO and must, consequently, be declared inadmissible in accordance with the case-law referred to in paragraph 27 above.
33 The preceding finding cannot be invalidated by the applicant’s claim that the fact that the relevant public does not switch pet food brands easily only confirms its argument that the relationship between animals and their owners is similar to the parent-child relationship and, in any event, supports its argument that the Opposition Division and the Board of Appeal did not examine the level of attention of the relevant public. Even if it were accepted that the claim and study referred to in paragraph 29 above support the argument relied on by the applicant before the adjudicating bodies of EUIPO, the fact remains that that claim and study were submitted for the first time before the Court in breach of Article 65 of Regulation No 207/2009 and, accordingly, are inadmissible (see paragraph 27 above).
Substance
34 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
35 EUIPO contends that the applicant’s plea should be rejected.
36 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 is not to be registered if, because of its identity with, or similarity to, that 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.
37 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 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).
38 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
39 It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was right to find that there was, in the present case, a likelihood of confusion between the marks at issue for the contested goods in Class 31, corresponding to the following description: ‘seeds and agricultural products, not included in other classes; seeds, natural plants; foodstuffs for animals, malt’.
40 First of all, it is necessary to confirm the Board of Appeal’s finding, set out in paragraph 16 of the contested decision, which was not disputed by the applicant, that the relevant territory in the light of which the existence of a likelihood of confusion between the marks at issue should be assessed is that of the European Union. The earlier mark The Pet CUISINE alimento para mascotas felices Genial enjoys protection throughout the territory of the European Union.
The relevant public
41 In paragraph 17 of the contested decision, the Board of Appeal found, in essence, that the relevant public is composed of pet owners, who form part of the general public.
42 The definition of the relevant public adopted by the Board of Appeal, which is not disputed by the applicant and is correct, should be considered to be agreed.
43 Next, first, the applicant claims that the Board of Appeal erred in finding, in paragraph 18 of the contested decision, that the relevant public’s level of attention is merely average. Second, it complains that the Opposition Division and the Board of Appeal did not set out why they reached such a conclusion.
44 EUIPO disputes the merits of the applicant’s arguments. Nevertheless, in its response, it does not take a view on the applicant’s complaint, alleging, in essence, that the contested decision fails to state reasons as regards the grounds justifying the average degree of attention of the relevant public.
45 First, according to the case-law, the Boards of Appeal, when stating the reasons for the decisions which they are called upon to make, are not obliged to rule on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see, to that effect, judgment of 3 March 2016, Ugly v OHIM — Group Lottuss (COYOTE UGLY), T‑778/14, not published, EU:T:2016:122, paragraph 67 and the case-law cited).
46 In the present case, the Board of Appeal confirmed the Opposition Division’s assessment that, having regard to the goods at issue, the level of attention of the relevant public was average. In doing so, the Board of Appeal gave a sufficient statement of reasons for the contested decision.
47 Second, the applicant has not put forward any argument that overturns the finding of the Board of Appeal on the level of attention of the relevant public.
48 This also applies to the case-law relied on by the applicant with a view to demonstrating that the relevant public displays a high level of attention owing to the impact of animal foodstuffs on the health of pets. As EUIPO rightly contends, the case-law of the Court, relied on by the applicant, concerns pharmaceutical and veterinary products or medical preparations in Class 5 and is not relevant to the contested goods, which come under Class 31.
49 In that regard, it must also be noted, as EUIPO has done, that the applicant has not provided any arguments or evidence in order to demonstrate that the contested goods in Class 31 and medical and veterinary products — in relation to which the high level of attention displayed by consumers can be explained by the potential health hazard which they pose — are similar, complementary or in competition.
50 Finally, the applicant’s argument that, in essence, the owners of pets display a high level of attention owing to the special relationship that exists between the former and the latter, which is similar to a parent-child relationship, must be rejected.
51 In order to find that the relationship between animals and their owners is similar to the parent-child relationship, the applicant relies on an article relating to a study on the behaviour of pets towards their owners, conducted by the University of Veterinary Medicine, Vienna (Austria), and published in the online publication Science daily, which makes no reference whatsoever to the behaviour of owners towards their animals, in particular as regards the choice of food for pets, and is confined, in essence, to observing that adult dogs display an attitude towards their masters which is similar to that displayed by children towards their parents.
52 In addition, it must be noted that the dispute relating to the level of attention of the relevant public cannot bring into question the lawfulness of the contested decision because, in the present case, the Board of Appeal found, in essence, in paragraph 34 of the contested decision, that the likelihood of confusion between the marks at issue exists even in situations in which consumers pay ‘considerable attention’ to the goods at issue.
53 In the light of the foregoing, the applicant’s complaint must be rejected.
Comparison of the goods
54 It follows from settled case-law that, in order to assess the similarity of the goods at issue, all the relevant factors relating to the relationship between those goods should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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).
55 Where the goods in respect of which an earlier mark is protected include the goods covered by an application for registration, those goods are considered to be identical (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited). Similarly, goods may be regarded as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark being applied for (judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29).
56 The Board of Appeal found that the goods ‘foodstuffs for animals’ in Class 31 were designated identically in both the international registration and the earlier mark The Pet CUISINE alimento para mascotas felices Genial. It considered, moreover, that, in essence, ‘seeds’, ‘agricultural products’ and ‘natural plants’, covered by the international registration, were included in ‘foodstuffs for animals’ and, accordingly, were identical to the latter. Furthermore, it found that ‘malt’ in Class 31 and covered by the international registration was similar to ‘foodstuffs for animals’ on the ground that that product was frequently added to those foodstuffs in order to increase their protein content and that it could be distributed through the same distribution channels and sold in the same outlets (see paragraphs 19 to 23 of the contested decision). In conclusion, the Board of Appeal confirmed the analysis of the identity or similarity of the goods at issue set out in the decision of the Opposition Division, by referring back to the relevant part of that decision (see paragraph 23 of the contested decision).
57 The applicant complains that the Board of Appeal, in essence, compared ‘foodstuffs for animals’, covered by the earlier mark The Pet CUISINE alimento para mascotas felices Genial with the contested goods, covered by the international registration. According to the applicant, the fact that one type of food can be fed to a species of animal does not necessarily mean that it comes under ‘foodstuffs for animals’. Furthermore, it considers that, if ‘foodstuffs for animals’ were to include everything that animals may eat, the Nice Classification would lose all its meaning and sense.
58 EUIPO contends that the applicant’s arguments should be rejected.
59 In the first place, the applicant does not contest the finding of the Board of Appeal that ‘foodstuffs for animals’ are identically designated by the international registration and the earlier mark The Pet CUISINE alimento para mascotas felices Genial. That finding, which is correct, must be confirmed.
60 In the second place, first, it should be noted, as the Board of Appeal has done, that ‘seeds’ covered by the international registration include, inter alia, ‘bird seed’, namely a food for budgerigars, canaries and other birds kept as pets. Accordingly, ‘seeds’ are included in the broader category ‘foodstuffs for animals’ covered by the earlier mark The Pet CUISINE alimento para mascotas felices Genial. Thus, in accordance with the case-law cited in paragraph 55 above, ‘seeds’ are identical to ‘foodstuffs for animals’.
61 Second, in paragraph 20 of the contested decision, the Board of Appeal took the view, that, in essence, seeds and fresh vegetables, on which small pets, such as hamsters, mice, guinea pigs and rabbits, feed, were included in the categories of goods ‘seeds and agricultural products, not included in other classes’ and ‘seeds, natural plants’ covered by the international registration and, therefore, are part of ‘foodstuffs for animals’. That finding, which has not been challenged by the applicant, is correct and must be confirmed.
62 Thus, pursuant to the case-law cited in paragraph 55 above, it must be found that the Board of Appeal did not err in confirming the assessment of the Opposition Division that ‘agricultural products, not included in other classes’, ‘seeds’ and ‘natural plants’, covered by the international registration, were identical to ‘foodstuffs for animals’ covered by the earlier mark The Pet CUISINE alimento para mascotas felices Genial.
63 In the third place, in paragraph 23 of the contested decision, the Board of Appeal confirmed the Opposition Division’s assessment that ‘malt’ is similar to ‘foodstuffs for animals’. In that regard, in paragraph 20 of the contested decision, it recalled that ‘malt’ is frequently added topet foods in order to increase its protein content. Furthermore, it noted that ‘malt’ and ‘foodstuffs for animals’ could be distributed through the same distribution channels and sold in the same outlets. Those elements, which are not challenged by the applicant, make it possible to establish that there is a similarity between ‘malt’ and ‘foodstuffs for animals’ (see, to that effect and by analogy, judgments of 28 June 2011, Oetker Nahrungsmittel v OHIM– Bonfait (Buonfatti), T‑471/09, not published, EU:T:2011:307, paragraph 59, and of 11 December 2015, Hikari Miso v OHIM — Nishimoto Trading (Hikari), T‑751/14, not published, EU:T:2015:956, paragraph 46). Therefore, the contested decision must be upheld in that regard.
64 The arguments relied on by the applicant cannot invalidate the conclusion that the goods at issue are identical or similar.
65 First, while it is true, as the applicant maintains, that all goods which can be consumed by an animal species are not necessarily included in the category ‘foodstuffs for animals’ covered by Class 31, the fact remains that, in the present case, the Board of Appeal has demonstrated that the contested goods, in Class 31, are part of the diet of certain animals.
66 Second, the applicant’s argument that, in essence, a broad assessment of the category ‘foodstuffs for animals’, upheld by the Board of Appeal, would have the effect of depriving the Nice Classification of meaning, is not sufficiently substantiated. Moreover, it must be noted, as observed by the Board of Appeal, that the category ‘foodstuffs for animals’ is very broadin that it can include both highly processed products sold, inter alia, in tins and food sold in raw form. In order to prevent the possibility of including ‘seeds’, ‘agricultural products’ and ‘natural plants’ in the category ‘foodstuffs for animals’, the applicant could have expressly excluded ‘seeds’, ‘agricultural products’ and ‘natural plants’ intended for animal feed from the list of goods covered by the international registration, something, however, that it did not do.
67 The applicant’s arguments must therefore be rejected.
68 Having regard to the foregoing, the contested decision must be upheld in so far as it finds that, in essence, on the one hand, ‘foodstuffs for animals’ and, on the other hand, ‘seeds’, ‘agricultural products, not included in other classes’ and ‘natural plants’ are identical, and that ‘foodstuffs for animals’ and ‘malt’ are similar.
Comparison of the signs
69 As a preliminary point, it must be recalled that the signs to be compared are, first, the figurative mark applied for Pet Cuisine and, second, the earlier EU figurative mark The Pet CUISINE alimento para mascotas felices Genial, since the Board of Appeal took the view that it is unnecessary in the present case to examine the opposition based on the EU figurative mark The Pet CUISINE alimento para mascotas felices Sibarity (see paragraph 18 above).
70 The figurative sign which is the subject of the international registration is composed of the word elements ‘pet’ and ‘cuisine’ written in a sophisticated brown font, except for the first three letters of the verbal element ‘cuisine’, which are written in a green font. The first letters of each of the aforementioned word elements, namely the letters ‘p’ and ‘c’ are written in upper case. Furthermore, the aforementioned verbal elements are located in the centre and in the upper part of the sign. A brown dog and cat are represented in a stylish fashion below those verbal elements and a beige domed meal cover appears in between them. All of the verbal and figurative elements of the sign covered by the international registration are surrounded by a green oval, itself surrounded by a brown oval.
71 The earlier mark The Pet CUISINE alimento para mascotas felices Genial is composed of the word elements ‘the’, ‘pet’, ‘cuisine’, ‘alimento’, ‘para’, ‘mascotas’, ‘felices’ and ‘genial’, as well as a stylised element, namely a yellow chef’s cap. The expression ‘the pet cuisine’ is located in the upper part of the sign and is written in dark blue bold font. The first letters of the word elements ‘the’ and ‘pet’, as well as the word element ‘cuisine’, are written is capital letters. The expression ‘alimento para mascotas felices’ is located below the expression ‘the pet cuisine’ in a light grey cursive font, in very small lower-case characters. The word element ‘genial’ is located below the expression ‘alimento para mascotas felices’ and is written in a very dark blue font. The letter ‘g’ of the word element ‘genial’ is written as a capital letter and in a stylised font, while the remaining letters of that word element are written in a rather common font in lower-case characters. Finally, the figurative element representing a stylised yellow chef’s cap is located above the sign to its right.
– The distinctive and dominant elements of the marks at issue
72 The global assessment of the likelihood of confusion must, as 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. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:C:2010:347, paragraph 46 and the case-law cited).
73 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).
74 The assessment of similarity between two marks means more that taking just one component of a composite trade mark and comparing it with another mark. The comparison must be made by examining each of the marks in question as a whole, but that 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. That may be the case, in particular, where that component is likely by itself to dominate the image of that mark recollected by the relevant public, with the result that the other components of the mark are negligible in the overall impression created by the mark. The Court of Justice has made clear that the fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 48 and the case-law cited).
75 Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see paragraph 74 above).
76 In paragraphs 26 to 28 of the contested decision, the Board of Appeal found, in essence, that, in the sign covered by the international registration, the term‘pet cuisine’ was dominant and distinctive, even if part of the relevant public were to understand its meaning. It pointed out that, where a mark is composed of word and figurative elements, as is the case here, the former are more distinctive than the latter.
77 Furthermore, in paragraphs 29 and 30 of the contested decision, the Board of Appeal found that the word elements ‘pet’ and ‘cuisine’, in the earlier mark The Pet CUISINE alimento para mascotas felices Genial, were more distinctive than the other elements of that mark. In that regard, it made clear that, for the Spanish public, the word element ‘genial’ is laudatory and the expression ‘alimento para mascotas felices’ has a weak distinctiveness. Moreover, it took the view that, for the part of the relevant public that does not speak Spanish, the aforementioned element and expression are perceived as fanciful. Finally, the Board of Appeal stated, in essence, that, even in a situation where the term ‘pet cuisine’ is not highly distinctive, it is nevertheless not negligible in the overall impression made by the marks at issue, taking into account, inter alia, its size and its position within those marks.
78 The applicant considers that the Board of Appeal erred in not accepting that the term ‘pet cuisine’ is descriptive. In that regard, it claims, in essence, that the word elements ‘pet’ and ‘cuisine’ are commonly used in English and, therefore, understood by the Lithuanian part of the relevant public. Furthermore, contrary to the Board’s view, it is of the opinion, in essence, that the combination of the word elements ‘pet’ and ‘cuisine’ is not rare and unlikely. Moreover, the applicant complains that the Board of Appeal did not state its reasons for holding that, in the earlier mark The Pet CUISINE alimento para mascotas felices Genial, only the term ‘pet cuisine’ was dominant and distinctive as opposed to the other six word elements which also make up that mark. In particular, it claims that the Board of Appeal erred in ignoring the word element ‘genial’ which, according to the applicant, is distinctive and dominant. Finally, it claims that, for the part of the relevant public that does not speak Spanish, the word element ‘genial’ and the expression ‘alimento para mascotas felices’ are more distinctive than, or at least as distinctive as, the term ‘pet cuisine’.
79 EUIPO takes issue with the applicant’s arguments.
(a) The distinctiveness of the term ‘pet cuisine’
80 It is necessary to examine whether the Board of Appeal erred in finding that the term ‘pet cuisine’ was, first, not descriptive of the goods at issue and, second, the most distinctive element of the marks at issue.
81 In the first place, it follows from the definition of the term ‘cuisine’, in the Collins dictionary, pointed out by the Board of Appeal in paragraph 27 of the contested decision, that that term does not refer only to ‘dishes which have been elaborated in a careful and stylish way’ but also designates a ‘style or manner of cooking’ or ‘the food prepared by a restaurant [or] household’.
82 Thus, for the part of the relevant public that understands, first, the term ‘cuisine’ and, second, the term ‘pet’ which, in English, designates tame animals kept for companionship (paragraph 26 of the contested decision), the combination of those terms alludes, at the very least, to the nature and intendedpurpose of the goods at issue.
83 Consequently, contrary to what the Board of Appeal found in essence in paragraph 27 of the contested decision, the term ‘pet cuisine’ has a weak distinctiveness in relation to the goods covered by the marks at issue (see, to that effect, judgment of 12 March 2008, Sebirán v OHIM — El Coto De Rioja (Coto D’Arcis), T‑332/04, not published, EU:T:2008:69, paragraph 38).
84 In the second place, the Board of Appeal correctly took the view, in paragraph 28 of the contested decision, that the term ‘pet cuisine’ was more distinctive than the other figurative elements of the sign covered by the international registration.
85 First, according to the case-law, the word elements of a mark are, in principal, more distinctive than its figurative elements, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative elements of the trade mark (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
86 Second, as EUIPO correctly points out, the figurative elements of the sign covered by the international mark are directly descriptive of the goods at issue. Therefore, the aforementioned figurative elements have a weaker distinctiveness than the term ‘pet cuisine’, since the latter alludes to the nature and intended purpose of the goods at issue for the part of the relevant public that understands English (see paragraph 82 above), and fanciful for the non-anglophone part of the relevant public.
87 Third, the Board of Appeal also acted correctly in finding, in paragraphs 29 and 30 of the contested decision, that the term ‘pet cuisine’ was the most distinctive element of the earlier mark The Pet CUISINE alimento para mascotas felices Genial.
88 In that regard, first of all, the Board of Appeal noted that, in Spanish, the word element ‘genial’ means ‘brilliant’ or ‘great’ and, accordingly, is a laudatory term. Therefore, that term lacks distinctiveness for the Spanish-speaking part of the relevant public (see, to that effect, judgments of 13 July 2005, Sunrider v OHIM (TOP), T‑242/02, EU:T:2005:284, paragraph 95; of 20 January 2009, Pioneer Hi-Bred International v OHIM (OPTIMUM), T‑424/07, not published, EU:T:2009:9, paragraph 26; and of 17 January 2013, Solar-Fabrik v OHIM (Premium XL and Premium L), T‑582/11 and T‑583/11, not published, EU:T:2013:24, paragraphs 26 and 27).
89 Next, the Board of Appeal was correct in finding that, for the Spanish-speaking part of the relevant public, given that the expression ‘alimento para mascotas felices’ means ‘food for happy pets’, it has a weak distinctiveness. For that part of the relevant public, that expression is directly descriptive of the nature and intended purpose of the goods at issue.
90 Finally, it must be recalled that figurative elements are, in principal, less distinctive than word elements (see paragraph 85 above). Accordingly, the distinctiveness of the figurative element of the earlier mark The Pet CUISINE alimento para mascotas felices Genial is not as high as that of the term ‘pet cuisine’.
91 The Board of Appeal accordingly did not err in finding that, for the Spanish-speaking part of the relevant public, the term ‘pet cuisine’ was the most distinctive element of the earlier mark The Pet CUISINE alimento para mascotas felices Genial, even if the meaning of that term were tobe understood.
92 The other arguments put forward by the applicant cannot call that conclusion into question.
93 The applicant complains that the Board of Appeal, in essence, failed to accept the distinctiveness of the word element ‘genial’ and the expression ‘alimentos para mascotas felices’, even though it found that they were fanciful for the part of the relevant public that does not speak Spanish. According to the applicant, the aforementioned elements are more distinctive than the term ‘pet cuisine’, or at least equally distinctive, for consumers who do not speak Spanish, namely for all the population of the European Union with the exception of the Spanish public. In support of its argument, it relies on the judgments of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp) (T‑135/14, EU:T:2016:69, paragraph 128 (not published)), and of 20 September 2016, Excalibur City v EUIPO — Ferrero (MERLIN’S KINDERWELT) (T‑566/15, not published, EU:T:2016:517, paragraph 35).
94 First, it must be noted that, in taking the view that the word element ‘genial’ and the expression ‘alimento para mascotas felices’ were fanciful for the part of the relevant public that does not speak Spanish, the Board of Appeal implicitly, but necessarily, found that those elements had, at the very least, an average distinctiveness for that part of the relevant public.
95 Therefore, the Board of Appeal’s finding, set out in paragraph 29 of the contested decision, that the word element ‘genial’ and the expression ‘alimento para mascotas felices’ are fanciful for the part of the relevant public that does not speak Spanish does not run counter to the judgments of 5 February 2016, Kicktipp (T‑135/14, EU:T:2016:69, paragraph 128 (not published)), and of 20 September 2016, MERLIN’S KINDERWELT (T‑566/15, not published, EU:T:2016:517, paragraph 35) relied on by the applicant and in which the Court held, in essence, that, where the word element of a mark has no meaning for the relevant public, it has an average degree of distinctiveness.
96 Second, the fact that the word element ‘genial’ and the expression ‘alimento para mascotas felices’ have no meaning for the part of the relevant public that does not speak Spanish does not call into question the Board of Appeal’s finding that, for the Spanish-speaking public, their distinctiveness is weak, or even non-existent as regards the term ‘genial’ and, in any event, not as high as that inherent in the term ‘pet cuisine’.
97 The applicant’s argument must therefore be rejected.
98 In the light of the foregoing, the Board of Appeal’s assessment that, at least for the Spanish-speaking part of the relevant public, the term ‘pet cuisine’ is the most distinctive element of the marks at issue must be confirmed.
(b) The dominant character of the term ‘pet cuisine’
99 It is necessary to examine whether the Board of Appeal gave sufficient reasons for its finding that the term ‘pet cuisine’ dominates the earlier mark The Pet CUISINE alimento para mascotas felices Genial and, if so, whether that finding is well founded.
100 Contrary to what is claimed by the applicant, the reasons why the Board of Appeal considered that the term ‘pet cuisine’ dominated the earlier mark The Pet CUISINE alimento para mascotas felices Genial are made sufficiently clear by the contested decision.
101 In paragraph 31 of the contested decision, it is stated that the term ‘pet cuisine’ dominates the marks at issue because of its inherent distinctiveness, its position in the centre of those signs and the smaller size of their other elements.
102 Furthermore, the aforementioned findings of the Board of Appeal relating, first, to the central position of the term ‘pet cuisine’ and, second, to the size of that term in relation to that of the other elements of the marks at issue are correct and, therefore, must be confirmed.
103 Therefore, the Board of Appeal acted correctly in finding that the term ‘pet cuisine’ was the visually dominant element of the marks at issue.
– The visual similarity
104 In paragraph 31 of the contested decision, the Board of Appeal found, in essence, that there was a visual similarity between the marks at issue owing to the presence of the term ‘pet cuisine’ in each of those marks. According to the Board of Appeal, that similarity is not called into question by either the figurative elements of the marks at issue or the additional word elements in the earlier mark The Pet CUISINE alimento para mascotas felices Genial.
105 The applicant claims, in essence, that the marks at issue are visually different. In its view, the Board of Appeal reached the opposite conclusion because it failed to take due account of the importance of the elements other than ‘pet’ and ‘cuisine’.
106 EUIPO disputes the applicant’s arguments.
107 As a preliminary point, it must be stated that the Board of Appeal examined the visual similarity of the marks at issue by carrying out a global assessment of those marks. In paragraph 31 of the contested decision, the Board of Appeal did not confine itself to finding that the marks at issue were visually similar owing to the presence, in each of those marks, of the term ‘pet cuisine’, but it also took care to point out that the marks at issue differed in their other word and figurative elements.
108 Furthermore, although the marks at issue differ visually in the word elements ‘the’, ‘alimento para mascotas felices’ and ‘genial’, in their figurative elements and in their colour, they are nevertheless visually similar owing to the presence of the term ‘pet cuisine’, which dominates those marks visually and is their most distinctive element, at least for the part of the relevant public that speaks Spanish, including the part that understands the meaning of that term (see paragraphs 84 to 91 above).
109 Even if the visual similarity between the marks at issue does not appear to be particularly high in terms of the overall visual impression which they create, it is sufficiently marked to be perceived by the whole of the relevant public (see, to that effect, judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 84).
110 Finally, the applicant claims, in essence, that the visual difference between the marks at issue is exacerbated by the fact that the proprietor of the earlier mark The Pet CUISINE alimento para mascotas felices Genial never used the expression ‘the pet cuisine’ as a mark. The applicant adds that neither the Opposition Division nor the Board of Appeal responded to that argument.
111 It must be held that the aforementioned argument is likely to affect the assessment of the visual similarity of the marks at issue only in the event that the protection granted to the earlier mark The Pet CUISINE alimento para mascotas felices Genial is called into question due to the non-use of that mark.
112 In that regard, it must be borne in mind that Article 15(1) of Regulation No 207/2009 (now Article 18(1) of Regulation 2017/1001) provides that if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark is to be subject to the sanctions provided for in Regulation No 207/2009, unless there are proper reasons for non-use.
113 As EUIPO correctly maintains, the obligation to make use of the earlier mark is therefore not applicable immediately after its registration, since the proprietor of a registered mark has a so-called ‘grace period’ of five years to put the relevant goods and services under this mark on the market.
114 In the present case, it must be noted that the earlier mark The Pet CUISINE alimento para mascotas felices Genial was registered on 14 November 2013. Thus, pursuant to Article 15(1) of Regulation No 207/2009, when the applicant submitted its observations in reply to the opposition, namely on 2 October 2015, the earlier mark The Pet CUISINE alimento para mascotas felices Genial enjoyed protection notwithstanding the non-use of the expression ‘the pet cuisine’ alleged by the applicant.
115 Having regard to the foregoing, first, the applicant cannot rely on the possible non-use of the earlier mark The Pet CUISINE alimento para mascotas felices Genial in support of its argument that the visual difference between the marks at issue is exacerbated by the fact that the proprietor of the aforementioned earlier mark never used the expression ‘the pet cuisine’ as atrade mark. Second, for the reasons set out in paragraphs 112 to 114 above, and in accordance with the case-law referred to in paragraph 45 above, the Opposition Division and the Board of Appeal were not obliged to rule on the applicant’s argument alleging, in essence, non-use of the earlier mark The Pet CUISINE alimento para mascotas felices Genial since it is, in the present case, irrelevant for the purpose of the examination of the opposition.
116 The applicant’s complaint must therefore be rejected.
– The phonetic similarity
117 The Board of Appeal considered, in paragraph 32 of the contested decision, that the marks at issue were phonetically similar since they are pronounced identically, namely as ‘pet cuisine’, by most of the relevant public. As regards the earlier mark The Pet CUISINE alimento para mascotas felices Genial, it stated that it is highly unlikely that the expression ‘alimento para mascotas felices’ would be pronounced, because its font is significantly smaller and it is set apart beneath the term ‘pet cuisine’. Furthermore, it held, in essence, that, even if it were possible to pronounce the term ‘genial’ given ‘its role as a secondary trade mark’, there was still a striking phonetic similarity between the marks at issue, owing to the identity of their first syllables.
118 The applicant complains that the Board of Appeal, in essence, assessed the phonetic similarity of the marks at issue by taking into account only the term ‘pet cuisine’ and, therefore, without having carried out a global assessment of those marks. In any event, the applicant considers that, in the earlier mark The Pet CUISINE alimento para mascotas felices Genial, it is the word element ‘genial’ that will be pronounced by the relevant public, and not the expression ‘the pet cuisine’.
119 EUIPO contends that the applicant’s arguments must be rejected.
120 In the first place, contrary to what the applicant claims, the Board of Appeal did not assess the phonetic similarity of the marks at issue on the sole basis of the term ‘pet cuisine’, but it also took account of the other word elements of the earlier mark The Pet CUISINE alimento para mascotas felices Genial, namely the expression ‘alimento para mascotas felices’ and the word element ‘genial’, which the Board of Appeal accepted could be pronounced by the relevant public (see paragraph 117 above).
121 In the second place, it must be noted that the applicant does not dispute the findings of the Board of Appeal according to which, first, the sign covered by the international registration will be pronounced ‘pet cuisine’ and, second, the expression ‘alimento para mascotas felices’ in the earlier mark The Pet CUISINE alimento para mascotas felices Genial will not be pronounced. Those findings, which are free of error, must be confirmed.
122 In the third place, contrary to what the applicant claims, it is very unlikely that the earlier mark The Pet CUISINE alimento para mascotas felices Genial would be pronounced only as ‘genial’.
123 First, it is apparent from paragraphs 88, 101 and 102 above that the term‘genial’ lacks distinctiveness for the Spanish-speaking part of the relevant public and is not the dominant visual element of the earlier mark The Pet CUISINE alimento para mascotas felices Genial.
124 Second, since the consumer generally pays greater attention to the beginning of a mark than to its end (judgment of 7 September 2006, PAM-PIM’S BABY-PROP, T‑133/05, EU:T:2006:247, paragraph 51), the term ‘pet cuisine’, which appears in the first part of the earlier mark The Pet CUISINE alimento para mascotas felices Genial and is its visually dominant element (see paragraphs 102 and 103 above), will necessarily be pronounced by the relevant public (see, to that effect, judgment of 3 July 2013, Warsteiner Brauerei Haus Cramer v OHIM — Stuffer (ALOHA 100% NATURAL),T‑243/12, not published, EU:T:2013:344, paragraph 34).
125 Therefore, the applicant’s claim that, in essence, the relevant public tends to use as few words as possible in its daily language and will, therefore, pronounce the earlier mark The Pet CUISINE alimento para mascotas felices Genial by using the word element ‘genial’ instead of the term ‘pet cuisine’ must be rejected.
126 In the light of the foregoing, it must be held that the marks at issue have an average degree of phonetic similarity for the part of the relevant public that will pronounce the earlier mark The Pet CUISINE alimento para mascotas felices Genial by using the expression ‘pet cuisine genial’ and, second, a high degree of phonetic similarity for the part of the relevant public that will pronounce that mark by using the term ‘pet cuisine’.
– The conceptual similarity
127 In paragraph 33 of the contested decision, the Board of Appeal found that, in essence, for the part of the relevant public that understands the term ‘pet cuisine’, the marks at issue conveyed the same conceptual message of sophisticated chef-made dishes for animals. Furthermore, it held that, for the Spanish-speaking partof the relevant public, the expression ‘alimento para mascotas felices’ and the word element ‘genial’ would be understood as meaning ‘food for happy pets’ and ‘great’ or ‘brilliant’. Moreover, it considered that, in essence, for the part of the relevant public that understands all the terms of the earlier mark The Pet CUISINE alimento para mascotas felices Genial, the marks at issue convey the idea of sophisticated cooked meals. The Board of Appeal therefore found that, for a significant part of the relevant public, the marks at issue were conceptually similar. Finally, it pointed out that the decision of the Opposition Division was incomplete on that point because it took into consideration only the Lithuanian consumer, who was deemed to understand neither the meaning of the expressions ‘the pet cuisine’ and ‘alimento para mascotas felices’, which feature in the earlier mark, nor that of the term ‘pet cuisine’, which features in the mark applied for.
128 The applicant disputes the Board of Appeal’s assessment which it considers to be based on inconsistent and illogical reasoning. In that regard, it claims, in paragraph 26 of the contested decision, that the Board Appeal found that the words ‘pet’ and ‘cuisine’ had no meaning for the relevant public, although it reached the opposite conclusion in paragraph 33 of the contested decision. Furthermore, it notes that, for the purpose of assessing the conceptual similarity between the marks at issue, the Board of Appeal all of a sudden considered that the relevant public understood both English and Spanish. Finally, the applicant submits that, since the most significant part of the relevant public does not speak Spanish, the Board of Appeal should have annulled the Opposition Division’s finding that ‘in spite of their different concepts, they will have very little influence on the overall conceptual perception of the signs’.
129 EUIPO disputes the applicant’s arguments.
130 In the first place, as regards the inconsistency allegedly vitiating the contested decision, it must be recalled, first of all, that, unlike the Opposition Division, the Board of Appeal examined whether there was a likelihood of confusion between the marks at issue with regard to the Spanish-speaking part of the relevant public, that understands the meaning of the word element ‘genial’ and the expression ‘alimento para mascotas felices’.
131 Next, in paragraph 26 of the contested decision, the Board of Appeal confirmed the Opposition Division’s finding that the relevant public, and, in particular, the Lithuanian public, did not understand the term ‘pet cuisine’. In paragraphs 28 and 29 of the contested decision, the Board of Appeal nevertheless considered the possibility, put forward by the applicant, that the term ‘pet cuisine’ is understood by the relevant public, by finding that that fact nonetheless did not call into question the distinctive and dominant character of that term on the ground that, first, the word elements of a mark were regarded as more distinctive than the figurative elements and, second, for the Spanish-speaking part of the relevant public, the word element ‘genial’ and the expression ‘alimento para mascotas felices’ were less distinctive than the term ‘pet cuisine’.
132 Finally, during the assessment of the conceptual similarity of the marks at issue, the Board of Appeal considered, inter alia, the possibility raised by the applicant that the Spanish-speaking part of the relevant public would understand the English term ‘pet cuisine’.
133 Thus, contrary to the applicant’s assertions, the fact of also having taken into account, for the purpose of the examination of the conceptual similarity between the marks at issue, the perception of the Spanish-speaking part of the relevant public that understands the English term ‘pet cuisine’ is not inconsistent with the analysis of the distinctive and dominant character of that expression, set out in paragraphs 26 to 30 of the contested decision.
134 The applicant’s argument must therefore be rejected.
135 In the second place, the applicant’s argument alleging, in essence, that the Board of Appeal erred in so far as it did not annul the Opposition Division’s finding that ‘in spite of their different concepts, they will have very little influence on the overall conceptual perception of the signs’ is not sufficiently clear and substantiated. The applicant does not explain why the aforementioned finding of the Opposition Division is wrong.
136 In any event, the applicant’s argument is unfounded.
137 In that regard, it must be recalled that, having regard to the continuity in terms of functions between the Opposition Division and the Board of Appeal, the decision of the Opposition Division, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to exercise fully its judicial review (see, to that effect and by analogy, judgment of 22 September 2016, Sun Cali v EUIPO– Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 46).
138 The Opposition Division’s assessment of the conceptual similarity of the marks at issue, which the Board of Appeal took care to supplement, must therefore also be taken into account.
139 In that regard, it must be recalled that the Opposition Division, which had based its examination of the likelihood of confusion exclusively in regard to the Lithuanian public, had found that the earlier mark The Pet CUISINE alimento para mascotas felices Genial and the term ‘pet cuisine’ in the sign covered by the international registration had no meaning and therefore, implicitly, that those elements were fanciful. Furthermore, it had considered that the other differentiating elements of the marks at issue had a meaning, despite their weak distinctiveness due to the fact that they are perceived as references to the quality or the intended users of the goods at issue. It thus stated, first, that the word element ‘genial’ and the chef’s cap in the earlier mark are associated with a brilliant chef or product. Second, it considered that the figurative elements of the sign covered by the international registration are associated with the idea of a high-quality dish intended for cats and dogs. It therefore found, in essence, that the elements of the marks at issue, which differ conceptually, had only very little influence on the overall conceptual perception of the marks at issue.
140 The above finding, which was not invalidated by the Board of Appeal, isfree from error.The conceptual difference which follows from the word and figurative elements of the marks at issue, taken individually, is not particularly big given that those elements have a link with the characteristics of the goods covered by those marks and, therefore, have a weak distinctiveness.
141 In the light of the foregoing, the Board of Appeal did not err in finding, in paragraph 34 of the contested decision, first, that, for the part of the relevant public that understandsthe term ‘pet cuisine’, the marks at issue are conceptually similar and, second, that, for the part of the relevant public which does not understand the word elements of the marks at issue, those marks are conceptually different. Therefore, that assessment must be confirmed.
The likelihood of confusion
142 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 (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).
143 In paragraph 35 of the contested decision, the Board of Appeal found that there was a likelihood of confusion between the marks at issue for all of thecontested goods. In that regard, in paragraph 34 of the contested decision, in the first place, it recalled that, in essence, the marks at issue were, first, visually, phonetically and conceptually similar for the Spanish-speaking part of the relevant public that also understands English and, second, visually and phonetically similar for the part of the relevant public that does not understand the word elements. In the second place, it noted that the goods at issue were either identical or very similar. In the third place, it pointed out that, despite the fact that the marks differed in their figurative elements and the presence of additional verbal elements in the earlier mark The Pet CUISINE alimento para mascotas felices Genial, the relevant public, on seeing the term ‘pet cuisine’ on identical or similar goods, will believe that the marks at issue derive from the same trade source. It considered that, in essence, even if the goods at issue were selected by the relevant public from a shop shelf, where the visual aspect takes precedence, that cannot lessen the degree of confusion caused by the strong similarity stemming from the presence of the dominant and distinctive term ‘pet cuisine’ in both marks at issue. Finally, it stated that that finding remains true even if the relevant public pays considerable attention to the goods at issue.
144 The applicant claims, first, that, since the marks at issue are visually different, despite their weak phonetic and conceptual similarity, there is no likelihood of confusion, even in the situation where the relevant public’s level of attention is average. Second, on the basis of the judgments of 12 April 2011, DHL Express France (C‑235/09, EU:C:2011:238), and of 22 September 2016, combit Software (C‑223/15, EU:C:2016:719), it claims, in essence, that the Opposition Division and the Board of Appeal should have examined the territorial scope of the actual or potential adverse effect on the functions of the earlier mark The Pet CUISINE alimento para mascotas felices Genial for the purpose, where relevant, of limiting the scope of the prohibition on registration of the sign covered by the international registration to the part of the territory of the European Union where such adverse effects occur.
145 EUIPO contests the applicant’s arguments.
146 First of all, it must be recalled that the applicant’s argument that the marks at issue are visually different has already been rejected in paragraphs 108 to 115 above, to which reference must be made.
147 Next, notwithstanding the conceptual difference between the marks at issue for the part of the relevant public that does not understand the word elements of those marks, the average degree of visual and phonetic similarity, first, and the identity or similarity of the goods at issue, second, are sufficient to establish that the Board of Appeal’s finding relating to the existence of a likelihood of confusion between those marks is well founded.
148 Finally, having regard, first, to the presence in the marks at issue of the term ‘pet cuisine’, which is the dominant and most distinctive element of those marks, and, second, to the fact that the goods at issue, in Class 31, are sold inter alia in self-service stores, where the visual aspect takes precedence, the likelihood of confusion seems all the more probable.
149 As the Board of Appeal noted in paragraph 34 of the contested decision, without being challenged by the applicant, consumers are accustomed to seeing in the marketplace several versions of the same mark, owned by one proprietor.
150 Thus, even if consumers were to remember the visual differences between the marks at issue, it is conceivable that, because of the presence of the term ‘pet cuisine’ in those marks, they will consider that they come from the same undertaking or from economically linked undertakings (see, to that effect, judgment of 30 November 2006, Camper v OHIM — JC (BROTHERS by CAMPER), T‑43/05, not published, EU:T:2006:370, paragraph 89 and the case-law cited).
151 The judgments of 12 April 2011, DHL Express France (C‑235/09, EU:C:2011:238), and of 22 September 2016, combit Software (C‑223/15, EU:C:2016:719), relied on by the applicant, cannot call into question the existence of a likelihood of confusion in the present case.
152 The judgments of 12 April 2011, DHL Express France (C‑235/09, EU:C:2011:238), and of 22 September 2016, combit Software (C‑223/15, EU:C:2016:719), do not relate to opposition proceedings based on Article 8(1)(b) of Regulation No 207/2009 but were handed down following two references for a preliminary ruling concerning the interpretation of Article 102 of Regulation No 207/2009 (now Article 130 of Regulation 2017/1001) and, more specifically, on the issue of the territorial scope of the prohibition of use of a trade mark in cases of infringement. Therefore, the interpretation upheld by the Court of Justice in those judgments is not relevant in the present case.
153 In the light of the foregoing, the Court finds that the Board of Appeal did not err in concluding that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the marks at issue for all of the contested goods.
154 Since the single plea in law relied on by the applicant, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is unfounded, the action must be dismissed in its entirety.
Costs
155 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.
156 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 (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders TDH Group to pay the costs.
Kanninen | Schwarcz | Iliopoulos |
Delivered in open court in Luxembourg on 14 December 2018.
Registrar President
Table of contents
Background to the dispute
Forms of order sought
Law
Admissibility of the claims and evidence submitted for the first time before the Court
Substance
The relevant public
Comparison of the goods
Comparison of the signs
– The distinctive and dominant elements of the marks at issue
(a) The distinctiveness of the term ‘pet cuisine’
(b) The dominant character of the term ‘pet cuisine’
– The visual similarity
– The phonetic similarity
– The conceptual similarity
The likelihood of confusion
Costs