JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
14 February 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark TORRO Grande MEAT IN STYLE — Earlier EU word marks TORO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Obligation to state reasons — First sentence of Article 94(1) of Regulation 2017/1001 — Duty of care — Article 95(1) of Regulation 2017/1001)
In Case T‑63/18,
Torro Entertainment Ltd, established in Plovdiv (Bulgaria), represented by A. Kostov, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Grupo Osborne, SA established in El Puerto de Santa María (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 20 December 2017 (Case R 1776/2017-2) relating to opposition proceedings between Grupo Osborne and Torro Entertainment,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, E. Bieliūnas and A. Marcoulli (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 6 February 2018,
having regard to the response of EUIPO lodged at the Court Registry on 19 April 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 On 30 October 2015, the applicant, Torro Entertainment Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The services in respect of which registration was sought, in particular following the restriction made in the course of the proceedings before EUIPO, fall within Classes 35 and 43 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, in respect of each of those classes, to the following description:
– Class 35: ‘Business analysis, research and information services; Advertising, marketing and promotional services; Commercial trading and consumer information services; Business assistance, management and administrative services; Collection and systematization of business data; Commercial information agencies [provides business information, e.g., marketing or demographic data]; Analysis of business information; Business management analysis; Cost benefit analysis; Business consultancy and advisory services; Office functions services; Business consultation and management regarding marketing activities; Business consultation and management regarding launching of new products; Negotiation of commercial transactions for performing artists; Negotiation of commercial transactions for third parties; Business succession planning; Provision of business assistance; Provision of assistance [business] in the establishment of franchises; Help in the management of business affairs or commercial functions of an industrial or commercial enterprise; Commercial assistance in business management; Business administration; Business organisation; Restaurant management for others; Management of a retail enterprise for others; Operation of commercial businesses [for others]; Hotel management for others; Administration relating to sales methods; Management advice relating to the recruitment of staff; Supply chain management services; Outsourcing services [business assistance]; Business expertise services; Business networking services; Hotel management service [for others]; Business advisory and information services; Product demonstrations and product display services; Distribution of advertising, marketing and promotional material; Trade show and exhibition services; Advertising, marketing and promotional consultancy, advisory and assistance services; Updating of advertising material; Business assistance relating to corporate identity; Reproduction of advertising material; Direct marketing; Response advertising; Information services relating to advertising; Product marketing; Computerised business promotion; On-line advertising on a computer network; Online advertisements; Arranging of product launches; Arranging and conducting marketing promotional events for others; Rental of sales stands; Market campaigns; Business promotion; Product sampling; Promotion [advertising] of business; Promoting the sale of the services [on behalf of others] by arranging advertisements; Sales promotion; Sales promotions at point of purchase or sale, for others; Advertising services relating to hotels; Collection of information relating to advertising; Advice in the field of business management and marketing; Assistance in product commercialization, within the framework of a franchise contract; Trade marketing [other than selling]; Business marketing services; Business assistance relating to business image; Advertising and marketing; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Product launch services; Promotion services; Retail services relating to food; Retail services in relation to food cooking equipment; Retail services in relation to foodstuffs; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to non-alcoholic beverages; Retail services in relation to disposable paper products; Retail services in relation to meats; Retail services in relation to preparations for making alcoholic beverages; Retail services in relation to tobacco; Retail services in relation to preparations for making beverages; Retail services in relation to articles for use with tobacco; Wholesale services in relation to printed matter; Wholesale services in relation to preparations for making beverages; Wholesale services in relation to preparations for making alcoholic beverages; Wholesale services in relation to alcoholic beverages (except beer)’;
– Class 43: ‘Providing temporary accommodation; Services for providing food and drink; Rental of furniture, linens and table settings; Animal boarding; Hotels, hostels and boarding houses, holiday and tourist accommodation; Event facilities and temporary office and meeting facilities; Temporary room hire; Charitable services, namely providing temporary accommodation; Accommodation bureaux [hotels, boarding houses]; Electronic information services relating to hotels; Booking of hotel accommodation; Information relating to hotels; Resort hotel services; Guesthouses; Tourist inns; Motels; Providing accommodation in hotels and motels; Providing campground facilities; Rental of temporary accommodation in holiday homes and flats; Arranging of accommodation for holiday makers; Boarding houses; Providing temporary accommodation as part of hospitality packages; Providing temporary accommodation in holiday flats; Providing temporary lodging for guests; Hotel reservation services provided via the Internet; Providing travel lodging information services and travel lodging booking agency services for travelers; Provision of hotel accommodation; Resort lodging services; Hotels; Travel agency services for reserving hotel accommodation; Hotel accommodation services; Hotels and motels; Hotel services for preferred customers; Making hotel reservations for others; Catering; Arranging of meals in hotels; Banqueting services; Juice bars; Salad bars; Cafés; Bistro services; Charitable services, namely providing food and drink catering; Cocktail lounge buffets; Wine bar services; Grill restaurants; Delicatessens [restaurants]; Snack-bars; Making reservations and bookings for restaurants and meals; Food sculpting; Catering in fast-food cafeterias; Food and drink catering for banquets; Food and drink catering for cocktail parties; Club services for the provision of food and drink; Consultancy services relating to food; Consultancy services relating to food preparation; Consulting services in the field of culinary arts; Pubs; Tea rooms; Mobile catering services; Mobile restaurant services; Bar services; Ice cream parlour services; Arranging of wedding receptions [food and drink]; Corporate hospitality (provision of food and drink); Provision of information relating to restaurants; Providing accommodation for functions; Pizza parlors; Provision of information relating to bars; Provision of information relating to the preparation of food and drink; Providing food and drink catering services for exhibition facilities; Providing reviews of restaurants; Providing of food and drink via a mobile truck; Providing food and drink in Internet cafes; Providing food and drink in restaurants and bars; Providing food and drink for guests; Providing food and drink for guests in restaurants; Contract food services; Booking of restaurant seats; Restaurant services provided by hotels; Self-service restaurants; Restaurants; Serving of alcoholic beverages; Serving food and drinks; Serving food and drink in Internet cafes; Serving food and drink in restaurants and bars; Serving food and drink for guests; Serving food and drink for guests in restaurants; Wine tasting services (provision of beverages); Cocktail lounge services; Hotel restaurant services; Restaurant reservation services; Hospitality services [food and drink]; Food preparation services; Night club services [provision of food]; Agency services for reservation of restaurants; Teahouse services; Accommodation reservation services [time share]; Reservation services for booking meals; Services for the preparation of food and drink; Providing drink services’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 2015/214 of 11 November 2015.
5 On 10 February 2016, the other party to the proceedings before the Board of Appeal, Grupo Osborne, SA, filed a notice of opposition to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).
6 The opposition was based in particular on the following EU trade marks:
– word mark TORO No 10654507, lodged on 17 February 2012 and registered on 23 March 2013, covering services for providing food and drink and temporary accommodation services, falling within Class 43;
– word mark TORO No 1722362, lodged on 23 June 2000 and registered on 3 January 2007, covering advertising services, management of business affairs, commercial administration, office work, retailing of food and drink, none of which services and/or goods originates from or is related to bulls, falling within Class 35.
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 5 July 2017, the Opposition Division upheld the opposition in respect of all the services in question, on the ground that there was a likelihood of confusion.
9 On 9 August 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 20 December 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO partially annulled the Opposition Division’s decision. It held that the application was well founded as regards ‘retail services in relation to disposable paper products; retail services in relation to tobacco; retail services in relation to articles for use with tobacco; wholesale services in relation to printed matter’ in Class 35, on the grounds that those services were different from the services covered by the earlier trade marks and that there was therefore no likelihood of confusion. On the other hand, it took the view that, for the other services covered by the mark applied for, identical or similar to the services covered by the earlier trade marks, and given the similarities between the signs at issue, there was a likelihood of confusion, including a risk of association, at least for the English-speaking public in the European Union.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision in so far as it dismisses the appeal against the Opposition Division’s decision;
– reject the opposition in its entirety;
– order EUIPO and Grupo Osborne to pay the costs of the proceedings before the General Court, the Board of Appeal and the Opposition Division.
12 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relied on two pleas in law alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 94(1) and Article 95(1) of that regulation.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
14 The applicant submits, in essence, that the Board of Appeal incorrectly held that there was a likelihood of confusion, in that, on the one hand, the services covered by the signs at issue have a low degree of similarity and that, on the other, the signs at issue display significant visual, phonetic and conceptual differences.
15 EUIPO disputes the applicant’s arguments.
16 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17 According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
18 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the signs 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).
The relevant public
19 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).
20 In the present case, in the first place, the Board of Appeal took the view, in paragraph 38 of the contested decision, that the average consumer’s level of attention varied from medium to high in so far as the services in question were addressed not only to the general public but also to professional customers.
21 There is no reason to call into question those findings by the Board of Appeal, which, moreover, are not contested by the applicant.
22 In the second place, at paragraph 32 of the contested decision, the Board of Appeal took the view that, since the opposition was based on EU trade marks, the relevant territory was that of the European Union as a whole. However, noting that the phrase ‘meat in style’ had some meaning in English, the Board of Appeal, like the Opposition Division, whose decision was not disputed in that respect by the parties, restricted its assessment to the English-speaking public.
23 The applicant submits that that conclusion is incorrect on the grounds that the phrase ‘meat in style’ is a secondary element of the mark requested whereas the dominant elements of the signs at issue, namely ‘toro’ and ‘torro grande’, have some meaning in Spanish. It concludes therefrom that the relevant public is the Spanish speaking public.
24 In that regard, it is sufficient to recall that, where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the signs at issue by the consumer of the goods and services in question in that territory. However, 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 judgment of 4 May 2018, El Corte Inglés v EUIPO — WE Brand (EW), T‑241/16, not published, EU:T:2018:255, paragraph 27 and the case-law cited).
25 It follows that the Board of Appeal did not err in deciding to assess the likelihood of confusion having regard to the English-speaking public. Moreover, in so far as the earlier marks are EU marks, the applicant is not entitled to argue that the relevant public should be limited to the Spanish-speaking public only, since the absence of a likelihood of confusion for that public cannot exclude the existence of such a risk in another part of the European Union (see, to that effect, judgment of 10 March 2016, LG Developpement v OHIM — Bayerische Motoren Werke (MINICARGO), T‑160/15, not published, EU:T:2016:137, paragraph 19).
Comparison of the services in question
26 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services 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).
27 In addition, services may be regarded as identical where the services referred to by the earlier trade mark are included in a more general category covered by the trade mark application or where the services covered by the trade mark applied for are included in the services covered by the earlier trade mark (see judgment of 21 September 2017, The Logistical Approach v EUIPO Idea Groupe (Idealogistic), T‑620/16, not published, EU:T:2017:635, paragraph 50 and the case-law cited).
28 It is apparent from the contested decision that the Board of Appeal took the view that, with the exclusion of the services mentioned in paragraph 9 above, the services covered by the requested trade mark were either identical or similar, to various degrees, to the services covered by the earlier trade marks. In particular, in accordance with the case-law referred to in paragraph 27 above, the Board of Appeal concluded that some of the services covered by the signs at issue were identical, after finding, as the case may be, that the names of those services exactly coincided or that the services covered by the mark applied for were included in the services covered by the earlier marks or were partially covered by those services. It also concluded that there was a strong, at least average, average, or at least weak degree of similarity between some of the services covered by the signs at issue on the basis of the criteria mentioned in paragraph 26 above, depending, as the case may be, on the identity of their nature, use, consumers or providers.
29 Without expressly challenging the findings of the Board of Appeal concerning the comparison of the services covered by the signs at issue, the applicant submits that the existence of a likelihood of confusion must be assessed in the light of the low degree of similarity of those services. It also states that those services would not be offered in the same points of sale.
30 EUIPO argues that even if the applicant had intended to challenge the Board of Appeal’s findings concerning the comparison of the services covered by the signs at issue, such a complaint is inadmissible as insufficiently substantiated.
31 In that regard, it should be noted that while the applicant maintains that the services in question are only slightly similar, it confines itself to that general statement without making any distinction according to the services in question.
32 As to the claim, in paragraphs 19 and 20 of the application, that the services covered by the signs at issue are not likely to be offered at the same points of sale, it must be held that it is based on the arrangements for the marketing of the services actually offered under those signs. Thus, according to the applicant, the services covered by the trade mark applied for and falling in classes 35 and 43 are offered only in restaurants, which do not offer any of the services offered under the earlier trade marks.
33 Under Article 8(1)(b) of Regulation 2017/1001, the comparison of the services must relate to the wording of the services covered by the trade mark applied for and the earlier trade marks and not to the services for which those trade marks are actually used, unless, following a request within the meaning of Article 47(2) and (3) of Regulation 2017/1001, proof of use of earlier trade marks is provided only for part of the services for which they are registered (see judgment of 19 January 2017, Morgan & Morgan v EUIPO — Grupo Morgan & Morgan (Morgan & Morgan), T‑399/15, not published, EU:T:2017:17, paragraph 37 and the case-law cited). In the present case, the Board of Appeal correctly held, in paragraph 16 of the contested decision, that the request for proof of use of the earlier marks, which was submitted for the first time before the Board of Appeal rather than the Opposition Division, was not admissible. Therefore, it was correct to take account of the wording of the services covered by the signs at issue.
34 Accordingly, the argument alleging differences between the arrangements for the marketing of the services actually offered under the signs at issue must be rejected, without it being necessary to adjudicate on the plea of inadmissibility lodged by EUIPO.
35 It follows that there is no need to call into question the conclusions of the Board of Appeal on the comparison of the services covered by the signs at issue.
Comparison of the signs at issue
36 The global assessment of the likelihood of confusion as regards the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
37 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42).
38 In the present case, the Board of Appeal took the view that, for the English-speaking part of the relevant public, the mark applied for had at least a low degree of visual similarity and a high degree of phonetic similarity with the earlier marks since the ‘most distinctive and dominant element’ of the mark applied for reproduced all the letters of those earlier marks. On the other hand, it took the view that the signs at issue did not show any conceptual similarity, or that the conceptual comparison was neutral.
39 The applicant challenges each of those assessments.
– The distinctive and dominant elements of the signs at issue
40 The Board of Appeal noted that, although it had no meaning for the English-speaking public, the ‘toro’ element, the only element of the earlier marks, was distinctive. As to the mark applied for, the Board of Appeal took the view that the ‘torro’ element had no meaning for the English-speaking public and was thus distinctive and that, given its size and position in the sign, it was the element that most attracted the public’s attention. On the other hand, it held that, without being negligible, the other word elements, namely ‘grande’ and ‘meat in style’, were secondary, given their low distinctiveness, their position in the sign and, as regards the ‘grande’ element, its size. It further held that the figurative elements of the mark applied for, in particular the stylisation of the word elements and the black square containing those elements, were, in view of their simplicity and basic character, secondary and of weak distinctiveness.
41 The applicant submits that, by taking the view that the ‘torro’ element was the dominant element of the trade mark applied for, the Board of Appeal disregarded the principles established by the case-law, in particular the obligation to compare the signs at issue in their entirety. In essence, it argues, principally, that the trade mark applied for does not have a dominant element since the five word elements thereof would be perceived as a whole by the relevant public, in the alternative, that the dominant element would be the figurative element ‘torro grande’ and, in any event, that, taken in isolation, the word ‘torro’ is not distinctive. It further argues that the figurative element ‘torro grande’ is distinctive and that it will be more easily remembered by the consumer of the services than a word element.
42 As regards the figurative elements of the mark applied for, it should be recalled that when a mark consists of word elements and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the services in question by citing the name of the mark than by describing the figurative element thereof (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 39, and of 25 May 2016, Ice Mountain Ibiza v EUIPO — Marbella Atlantic Ocean Club (ocean ibiza), T‑6/15, not published, EU:T:2016:310, paragraph 45 and the case-law cited). Moreover, in the present case, contrary to what the applicant claims, the figurative elements are not so striking graphically as to draw the attention of the consumer, including for catering services. As noted by the Board of Appeal, the black square, which includes a white frame, is a simple and basic shape which is, moreover, liable to highlight more clearly the word elements it contains by framing them. In addition, the fact that the letter ‘a’ in ‘meat’ is turned towards the letter ‘e’ which precedes it is not sufficient to divert the consumer’s attention away from the word ‘torro’, especially given that the phrase ‘meat in style’ is located outside the black square. It follows that the Board of Appeal correctly held that the figurative elements were secondary and of weak distinctiveness.
43 As regards the word elements of the trade mark applied for, the Board of Appeal did not err in its assessment that the term ‘torro’ was sufficiently important to be regarded as the dominant element of that trade mark. The term appears above the other word elements, namely ‘grande’ and ‘meat in style’, in a different and significantly larger font. As noted by EUIPO, the long ‘arm’ of letter T reinforces the dominant character of the term ‘torro’. Moreover, the fact that the ‘torro’ and ‘grande’ elements are separated by a horizontal line and written in a different size and font contradict the applicant’s line of argument that the phrase ‘grande’ is likely to dominate, in the memory of the relevant public, the overall impression produced by the mark applied for. On the contrary, as a result of that graphical configuration, the attention of that public will tend to focus more on the term ‘torro’. Furthermore, it is not disputed that that term has no meaning for the English-speaking public. In those circumstances, the Board of Appeal did not err in finding that it did have a distinctive character, in contrast to the other word elements. As stated by the Board of Appeal, without being challenged by the applicant on the matter, the word ‘grande’ can be perceived by the English-language public as a positive term since it is close to the word ‘grand’, meaning ‘grandiose’. Similarly, the phrase ‘meat in style’ is weakly distinctive from some of the services in question, namely services relating to catering. In those circumstances, given the distinctiveness of the term ‘torro’, its position in the sign and the font used, the applicant is not justified in claiming that the word elements ‘torro’, ‘grande’ and ‘meat in style’ would be perceived as an indivisible whole by the relevant public.
44 It follows that the Board of Appeal was entitled to take the view, without infringing the case-law referred to in paragraphs 36 and 37 above, or taking account of the prior nature of the opposing marks in its assessment, as the applicant seems to argue in paragraph 10 of the application, that the ‘torro’ element dominated the mark applied for.
– The visual similarity of the signs at issue
45 From a visual point of view, the Board of Appeal noted that the signs at issue shared the sequence of letters ‘t’, ‘o’, ‘r’ and ‘o’, namely all of the letters of the sole element of the earlier marks and four of the five letters comprising the dominant word element of the trade mark applied for. It took the view that the differences between those signs did not offset that common element and concluded that they were at least weakly similar.
46 The applicant disputes the Board of Appeal’s assessment, alleging the absence of a common element between the signs at issue. It claims that the Board of Appeal erred in its assessment of the distinctive and dominant elements.
47 As a preliminary point, it must be stated, first, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 26 September 2014, Koscher + Würtz v OHIM — Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraph 51 and the case-law cited).
48 In the present case, it must be recalled that the Board of Appeal correctly held that the ‘torro’ element was the dominant element of the trade mark applied for. That dominant element reproduces, in the same order, the four letters making up the single word element of the earlier marks, the only difference being the doubling of the letter ‘r’ in the mark applied for. Although, admittedly, the mark applied for includes other word elements as well as some figurative elements, whereas the earlier marks are purely word marks, those differences are not sufficient to neutralise the similarity resulting from the complete reproduction of the earlier mark in the mark applied for.
49 In those circumstances, the applicant is not justified in claiming that the Board of Appeal erred in its assessment that there was at least a low degree of similarity between the signs at issue.
– The phonetic similarity
50 The Board of Appeal noted in paragraph 125 of the contested decision that, for the English-speaking public, the pronunciation of the terms ‘toro’ and ‘torro’ was identical and that the ‘grande’ and ‘meat in style’ elements contained in the mark applied for would probably not be pronounced in view of their secondary and weakly distinctive nature. It concluded that there was a high degree of phonetic similarity between the signs at issue.
51 The applicant argues, in essence, that there is at most a low degree of phonetic similarity between the signs at issue, since — the phonetic reproduction of a sign corresponding to that of all its word elements — the mark applied for is made up of five terms, of which at least two, namely ‘torro’ and ‘grande’, will be pronounced. It adds that the Board of Appeal did not even take into account the different pronunciation of the terms ‘toro’ and ‘torro’.
52 In that regard, it should be noted that only the word elements of a sign are likely to be pronounced. In addition, the average consumer will tend, on the one hand, orally to abbreviate a mark which includes several terms in order to make it easier to pronounce and, on the other hand, generally to remember more the beginning of a sign than its ending (see judgment of 24 February 2016, Tayto Group v OHIM — MIP Metro (REAL HAND cooked), T‑816/14, not published, EU:T:2016:93, paragraph 76 and the case-law cited).
53 In the present case, the elements that could be pronounced are, in the trade mark applied for, ‘torro grande meat in style’ and, in the earlier marks, ‘toro’. However, it should be recalled that the relevant public will pay attention to the ‘torro’ element, the terms ‘grande’ and ‘meat in style’ being secondary. Consequently, in the light of the case-law referred to in paragraph 52 above, and as noted by the Board of Appeal, they might not be spoken. In addition, while the Spanish-speaking public will pronounce the terms ‘toro’ and ‘torro’ differently, it is not disputed that the pronunciation of those two terms by the English-speaking public will be the same.
54 It follows that, for the English-speaking public, the signs at issue have a high degree of phonetic similarity, or are even identical if that public only pronounces the abbreviated form of the mark applied for, omitting the words ‘grande’ and ‘meat in style’.
– The conceptual similarity of the signs at issue
55 Relying on the lack of meaning of the words ‘toro’ and ‘torro’ of the signs at issue, the Board of Appeal took the view that they were not conceptually similar or that the conceptual comparison was neutral.
56 The applicant claims that, for the Spanish-speaking public, the term ‘torro’ means ‘I toast’ and the expression ‘torro grande’ means ‘big toasting’, the name of the mark applied for thus being based on a play on words. On the other hand, the word ‘toro’ means ‘bull’ in Spanish. It infers from this that, for the relevant public, the signs at issue are conceptually completely different.
57 As a preliminary point, it should be recalled that it is settled case-law that a conceptual similarity arises from the fact that two marks use images with analogous semantic content (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 21 April 2010, Peek & Cloppenburg and van Graaf v OHIM — Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, EU:T:2010:152, paragraph 63).
58 In the present case, the applicant does not dispute that the terms ‘toro’ and ‘torro’ have no meaning for the English-speaking public, for which, as noted in paragraph 25 above, the Board of Appeal correctly assessed the existence of a likelihood of confusion. Therefore, the argument based on the meaning of those terms in Spanish must be rejected as ineffective.
59 It follows that the Board of Appeal did not err in its assessment that the conceptual comparison of the signs at issue was neutral with regard to the English-speaking public.
The likelihood of confusion
60 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 the similarity of the goods or services concerned. 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. Moreover, the greater the distinctive character of the earlier mark, the greater the likelihood of confusion (see, to that effect, 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).
61 The average consumer only rarely has a chance to compare the various marks directly, so he must rely on his imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26). In that regard, consumers tend to remember similarities rather than dissimilarities between signs.
62 In the present case, the Board of Appeal took the view that the overall impression given by the signs at issue was that they were visually and phonetically similar and that the earlier marks had a normal distinctive character. The Board of Appeal concluded that, given the level of attention of the relevant public, even the low degree of similarity of part of the services covered by the signs at issue was not sufficient to offset the overall impression that the signs were similar. It concluded that there was a likelihood of confusion, including a risk of association, at least for the English-speaking public.
63 The applicant claims, in essence, that given the differences between the signs at issue, the limited similarity of the services in question and the conditions under which those services are marketed, the Board of Appeal was wrong to conclude that there was a likelihood of confusion. In particular, it argues that there is no risk that the services in question would be offered at the same point of sale.
64 In that regard, it should be recalled that the Board of Appeal did not err in its assessment that the services covered by the signs at issue were identical or, as the case may be, strongly, moderately or, at the very least, weakly similar, that the signs at issue were visually and phonetically weakly similar and that, since they had no meaning, their conceptual comparison was not relevant.
65 Furthermore, it should be recalled that, according to settled case-law, with regard to the assessment of the likelihood of confusion, consideration must be given to the public having the lowest level of attention (see judgment of 22 September 2016, Grupo de originación y análisis v EUIPO — Bankinter (BK PARTNERS), T‑228/15, not published, EU:T:2016:530, paragraph 28 and the case-law cited). Therefore, it is not necessary to examine the likelihood of confusion on the part of the relevant public displaying a high level of attention.
66 Accordingly, in view of the average level of attention of the relevant public and the normal distinctive character of the earlier trade marks, the Board of Appeal did not err in its assessment that the visual and phonetic similarities between the signs at issue were sufficient to permit the conclusion that there was a likelihood of confusion. This is also the case inasmuch as the signs at issue refer to services which are at least slightly similar. Given the significance of the phonetic similarity between those signs and the imperfect recollection of the signs at issue that the relevant public will have, the relevant public could believe, at the very least, that the services concerned come from economically linked undertakings.
67 In the light of all of the foregoing, the first plea must be rejected.
The second plea in law, alleging infringement of Article 94(1) and Article 95(1) of Regulation 2017/1001
68 The applicant submits that the contested decision is vitiated by a failure to state reasons and that the Board of Appeal failed to exercise its duty of care.
69 EUIPO claims that the plea is not sufficiently substantiated and is therefore inadmissible. In any event, it is not founded.
70 As a preliminary point, it must be recalled that, in accordance with the first sentence of Article 94 of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. According to the case-law, that obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU, and its objective is to allow those concerned to know the reasons for the measure adopted in order to be able to defend their rights and to enable the courts to review the legality of the decision (judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86, and of 15 July 2014, Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 76).
71 Furthermore, it should be observed that, in accordance with settled case-law, the duty to state reasons is an essential procedural requirement which is distinct from the question whether the grounds given are correct. The fact that the grounds given may be incorrect does not mean that no grounds were given (see judgment of 30 September 2016, Alpex Pharma v EUIPO — Astex Pharmaceuticals (ASTEX), T‑355/15, not published, EU:T:2016:591, paragraph 45 and the case-law cited).
72 Furthermore, according to Article 95(1) of Regulation 2017/1001, in proceedings before it, EUIPO is to examine the facts of its own motion. However, in proceedings relating to relative grounds for refusal of registration, that examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. It is clear from the case-law that that provision sets out the duty of care pursuant to which the competent institution is required to examine, with care and impartiality, all the relevant factual and legal elements of the case in point (see judgment of 21 February 2013, Laboratoire Bioderma v OHIM — Cabinet Continental (BIODERMA), T‑427/11, not published, EU:T:2013:92, paragraph 24 and the case-law cited).
73 In the present case, apart from the reminders of certain general principles, the applicant merely argues, without further clarification, that, on the one hand, the Board of Appeal did not examine the arguments and facts which it had submitted during the proceedings before EUIPO, and that, on the other, the explanation in the contested decision relating to the phonetic and conceptual similarities are brief and the examination relates only to part of the elements of the mark applied for.
74 In that regard, first, it must be stated that the applicant does not identify the evidence it adduced before the Board of Appeal which the latter is alleged not to have examined. Moreover, it should be recalled that the Boards of Appeal cannot be required to provide a statement exhaustively setting out one by one all the arguments put forward by the parties before them (see judgment of 21 September 2017, Novartis v EUIPO — Meda (Zimara), T‑238/15, not published, EU:T:2017:636, paragraph 122 and the case-law cited).
75 Secondly, the complaint that the contested decision does not include an assessment of all the elements of the sign whose registration is sought is factually insufficiently substantiated. It must be recalled that the Board of Appeal held that the sign was dominated by the ‘torro’ element, which did not, however, make any of its other elements negligible; those elements were taken into account by the Board of Appeal in its assessment of the similarity of the signs at issue. As stated in paragraph 44 above, that assessment was carried out in compliance with the case-law referred to in paragraphs 36 and 37 above.
76 Thirdly, while the Board of Appeal’s analysis of the phonetic and conceptual similarities of the signs at issue is, admittedly, more succinct than the explanations relating to other parts of its reasoning, it is sufficient in so far as it enables the applicant to understand the grounds which led the Board of Appeal to find that those signs were strongly similar phonetically and that the conceptual comparison was neutral or that the signs were not conceptually similar, and in so far as it enables the EU judicature to review those grounds.
77 Fourthly, more generally, the Board of Appeal clearly and unequivocally set out the reasoning which led it to acknowledge the existence of a likelihood of confusion.
78 It follows, on the one hand, that the applicant has not established — although the burden of proof rests on it to do so — the Board of Appeal’s disregard for its duty of care and, on the other, that the statement of reasons for the contested decision is adequate.
79 In the light of the foregoing, the second plea in law must be rejected and, accordingly, the action dismissed in its entirety, without it being necessary to assess the admissibility of the applicant’s second head of claim.
Costs
80 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.
81 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 (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Torro Entertainment Ltd to pay the costs.
Tomljenović | Bieliūnas | Marcoulli |
Delivered in open court in Luxembourg on 14 February 2019.