JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
24 October 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark FLIS Happy Moreno choco — Earlier national figurative marks MORENO — 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) — Substitution of the list of goods covered by the earlier national figurative marks — Rectification of the decision of the Board of Appeal — Article 102(1) of Regulation 2017/1001 — Legal basis — Previous decision-making practice — Legal certainty — Legitimate expectations)
In Case T‑708/18,
ZPC Flis sp.j., established in Radziejowice (Poland), represented by M. Kondrat, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Kompari and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being:
Aldi Einkauf GmbH & Co. OHG, established in Essen (Germany), represented by N. Lützenrath, U. Rademacher, C. Fürsen and M. Minkner, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 13 September 2018 (Case R 2113/2017-1), relating to opposition proceedings between Aldi Einkauf and ZPC Flis,
THE GENERAL COURT (Eighth Chamber),
composed, at the time of the deliberation, of A.M. Collins, President, R. Barents and J. Passer (Rapporteur), Judges,
Registrar: E Coulon,
having regard to the application lodged at the Court Registry on 28 November 2018,
having regard to the response of EUIPO lodged at the Court Registry on 11 March 2019,
having regard to the response of the intervener lodged at the Court Registry on 4 April 2019,
having regard to the Court’s written question to the parties,
having regard to the parties’ letters lodged at the Court Registry on 2 and 12 August 2019, stating that they would not attend the hearing, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 108(2) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 22 January 2016, the applicant, ZPC Flis sp.j., 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 figurative sign reproduced below:
3 The goods and services in respect of which registration was sought are in Classes 30 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 30: ‘Confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’;
– Class 35: ‘Retailing or wholesaling of confectionery, cookie molds, edible wafers and rolled wafers, wholesaling and retailing of confectionery, cookie molds, edible wafers and rolled wafers via the internet’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 59/2016 of 30 March 2016.
5 On 24 June 2016, the intervener, Aldi Einkauf GmbH & Co. OHG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier German figurative marks originally registered for the goods ‘coffee; coffee substitutes; coffee products; coffee-based beverages; tea, cocoa; cocoa products; cocoa-based beverages; chocolate-based beverages; all aforementioned goods also in instant form’, in Class 30 (‘the initial list of goods’). Following a partial cancellation decision of 29 September 2008 of the Deutsches Patent- und Markenamt (German Patent and Trademark Office, Germany), the registration of the earlier German figurative marks was limited to the goods ‘coffee, coffee-based products and beverages with a proportion of coffee; cocoa-based beverage powder’ in Class 30 (‘the amended list of goods’). Those earlier marks are the following:
– earlier German figurative mark filed on 17 January 2007 and registered on 29 March 2007 under No 30702839, as reproduced below:
– earlier German figurative mark filed on 17 January 2007 and registered on 29 March 2007 under No 30702840, as reproduced below:
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 26 January 2016, the applicant submitted its observations to EUIPO.
9 By decision of 31 August 2017, the Opposition Division rejected the opposition, basing its decision on the amended list of goods covered by the earlier marks, an opposition which it examined only with regard to earlier mark No 30702839, since the applicant had not produced evidence of the renewal of earlier mark No 30702840.
10 On 28 September 2017, the intervener 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.
11 By decision of 13 September 2018 (‘the contested decision’), the First Board of Appeal of EUIPO, taking note of the evidence of the renewal of earlier mark No 30702840 produced by the applicant on appeal, partially annulled the Opposition Division’s decision.
12 In that regard, the Board of Appeal found that the relevant territory was Germany and that the relevant public consisted of members of the general public who are relatively well informed and reasonably observant and circumspect, and whose level of attention is average.
13 As regards the comparison of the goods and services at issue, the Board of Appeal found that the ‘confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’ in Class 30 covered by the mark applied for and the goods on the initial list of goods covered by the earlier marks were identical or similar. The Board of Appeal also found, in essence, that the services covered by the mark applied for were similar to the goods on the initial list covered by the earlier marks, with the exception of the services ‘retailing or wholesaling of cookie molds; wholesaling and retailing of cookie molds via the internet’, which are dissimilar.
14 As regards the comparison of the signs at issue, the Board of Appeal found, in essence, that the distinctive element of the signs was the common term ‘moreno’, and that the signs were visually similar and phonetically very similar, if not identical, whereas the conceptual aspect carried no weight in the comparison of the signs at issue.
15 The Board of Appeal therefore concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in respect of all the goods and services, with the exception of the services in Class 35 corresponding to the following description: ‘retailing or wholesaling of cookie molds, wholesaling and retailing of cookie molds via the internet’.
16 On 15 November 2018, the Board of Appeal adopted a decision entitled ‘Corrigendum’ on the basis of Article 102 of Regulation 2017/1001, notified on 11 December 2018 (‘the corrigendum of 15 November 2018’). It thus replaced the initial list of goods with the amended list of goods covered by the earlier marks.
17 Paragraph 1 of the operative part of the contested decision was not amended by the corrigendum of 15 November 2018.
Forms of order sought
18 The applicant claims that the Court should:
– annul the contested decision and refer the case back to EUIPO for reconsideration; or
– alter the contested decision ‘by declaring that there are no relative grounds for refusal of registration of [the mark applied for] for all the goods in Classes 30 and 35 and that the mark must be registered’;
– ‘award the costs in the applicant’s favour’.
19 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
20 The intervener contends that the Court should:
– declare the action inadmissible;
– dismiss the action;
– order the applicant to pay the costs.
Law
21 In support of its action, the applicant raises a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In that context, the applicant claims that there has been an infringement of the principle of the protection of legitimate expectations and the principle of legal certainty.
Admissibility of the action
22 The intervener contends that the action is inadmissible, without raising any objection of inadmissibility under Article 130 of the Rules of Procedure of the General Court, on the ground that the applicant’s heads of claim are contrary to the principle that claims should be ‘definite and unambiguous’. According to the intervener, it is impossible to know which claim the applicant is pursuing in the present case.
23 In the present case, it must be stated that the action meets the requirements of clarity and precision laid down in Article 177(1)(e) of the Rules of Procedure, since it is clearly intelligible that the applicant seeks annulment of the contested decision and, if appropriate, alteration of that decision.
24 The action must therefore be declared admissible.
Admissibility of Annexes A.4 to A.28 to the application, produced for the first time before the Court
25 EUIPO contends that the evidence provided by the applicant relating to the use of the term ‘moreno’ on the market is inadmissible as it is new evidence, in so far as it was not available to the Board of Appeal when it adopted the contested decision.
26 The intervener expressly raises a plea of inadmissibility, in that the applicant produced the documents contained in Annexes A.4 to A.28 to the application for the first time before the Court.
27 It is settled case-law that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, with the result that it is not the Court’s function to review the facts in the light of documents produced for the first time before it (judgment of 12 March 2014, Tubes Radiatori v OHIM — Antrax It (Radiateur), T‑315/12, not published, EU:T:2014:115, paragraph 27; see also, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
28 In the present case, the applicant provided printouts of extracts from several databases, such as the EUIPO database (Annexes A.4, A.12 and A.22 to A.25), the German Patent and Trademark Office database (Annexes A.5 and A.6), the database of the Lietuvos Respublikos valstybinis patentų biuras (State Patent Office of the Republic of Lithuania, Lithuania) (Annex A.20) and the World Intellectual Property Organisation (WIPO) database (Annexes A.7, A.17 to A.19, A.21 and A.26 to A.28), online dictionary printouts (Annexes A.8 to A.10), a printout of a page from the online encyclopaedia Wikipedia (Annex A.11) and printouts of pages from websites (Annexes A.13 to A.16).
29 It must be noted that it is in no way apparent from the evidence in the case file that the applicant submitted the items referred to above during the proceedings before the adjudicating bodies of EUIPO in order to establish the existence of a likelihood of confusion, with the result that they were produced for the first time before the Court and, consequently, they must be declared inadmissible, with the exception of those in Annexes A.4 to A.7.
30 Although the documents in Annexes A.4 to A.7 constitute new evidence, the applicant cannot be criticised for producing extracts from the databases of EUIPO (Annex A.4), the German Patent and Trade Mark Office (Annexes A.5 and A.6) and WIPO (Annex A.7) in order to argue that the contested decision was vitiated by an error in respect of the comparison of goods and services and the likelihood of confusion with regard to the list of goods for which the earlier marks were registered, an error that could not have been detected before the contested decision was adopted.
31 It follows that Annexes A.4 to A.7 to the application must be declared admissible.
Substitution of the list of goods in the contested decision and the corrigendum of 15 November 2018
32 The applicant submits, in essence, that the Board of Appeal refers to the initial list of goods covered by the earlier marks, whereas the amended list of goods appears in the extracts from the databases of WIPO and the German Patent and Trade Mark Office, which therefore constitutes, in its view, an infringement of the provisions of Regulation No 207/2009.
33 EUIPO acknowledges that it took into account the initial list of goods and not the list of goods for which the earlier marks were registered, following a limitation. However, EUIPO contends that that material error, rectified by the corrigendum of 15 November 2018 adopted on the basis of Article 102 of Regulation 2017/1001, has no bearing whatsoever on the reasoning followed by the Board of Appeal or its conclusions, since ‘coffee products’ are included identically in the initial list of goods covered by the earlier marks and in the amended list of goods.
34 The intervener admits that the initial list of goods and the amended list are different, but submits that the corrigendum of 15 November 2018 took that fact into account and that it does not alter the finding that the goods and services are identical or similar.
35 Article 102(1) of Regulation 2017/1001 provides that EUIPO is to correct any linguistic errors or errors of transcription and manifest oversights in its decisions, or technical errors attributable to it in registering an EU trade mark or in publishing the registration, of its own motion or at the request of a party.
36 In the present case, it should be noted that the reasoning relating to the delimitation of the territory, the definition of the relevant public and the comparison of the signs have not been modified in any way by the corrigendum of 15 November 2018.
37 Indeed, only the reference to the restriction of the list of goods covered by the earlier marks was inserted in paragraph 3 of the contested decision by the corrigendum of 15 November 2018 and only the reference to the goods actually corresponding to the amended list of goods was replaced, by that corrigendum, in respect of the comparison of the goods and services, in paragraphs 29, 30, 36 and 54 of the contested decision and, in respect of the likelihood of confusion, in paragraph 40 of that decision.
38 It must be noted that, first, the substitution of the list of goods in Class 30 covered by the earlier marks cannot be classified as either a linguistic error or an error of transcription since the Board of Appeal examined whether the goods at issue were identical or similar with regard to the initial list of goods covered by the earlier marks. Moreover, the corrigendum of 15 November 2018 did not remove all references relating to the initial list of goods from the contested decision. That is evidenced by the reference to goods such as tea in paragraph 32 of the contested decision, where the Board of Appeal states that infused tea may be used in the preparation of the goods covered by the mark applied for, and the reference to Annexes 7 and 8 in respect of chocolate and relating to the evidence provided by the applicant in order to demonstrate that the goods and services at issue are identical or similar.
39 Secondly, the error that led to the substitution of the list of goods covered by the earlier marks does not correspond to a manifest oversight either, since the Board of Appeal examined whether the goods at issue were identical or similar with regard to all the goods covered by the wording of the initial list of goods, such as tea (see paragraph 38 above).
40 Thirdly, classification as a technical error that would justify recourse to Article 102 of Regulation 2017/1001 must also be rejected, in so far as, in the present case, the error does not concern the registration or publication of an EU trade mark, but an incorrect consideration of the list of goods for which the earlier marks were actually registered in the assessment of the likelihood of confusion.
41 It follows that the corrigendum of 15 November 2018 was outside the scope of the cases provided for in Article 102(1) of Regulation 2017/1001 in which the Boards of Appeal may correct their decisions. It therefore had no legal basis (see, to that effect, judgment of 22 November 2011, mPAY24 v OHIM — Ultra (MPAY24), T‑275/10, not published, EU:T:2011:683, paragraph 25).
42 That lack of legal basis is an irregularity affecting the essential conditions of the corrigendum of 15 November 2018. In that regard, it must be recalled that, according to case-law, measures tainted by an irregularity the gravity of which is so obvious that it cannot be tolerated by the EU legal order must — ex officio, if need be — be treated as having no legal effect (see judgments of 9 September 2011, dm-drogerie markt v OHIM — Distribuciones Mylar (dm), T‑36/09, EU:T:2011:449, paragraph 83 and the case-law cited, and of 22 November 2011, MPAY24, T‑275/10, not published, EU:T:2011:683, paragraph 26 and the case-law cited; see also, by analogy, judgment of 8 May 2019, Lucchini v Commission, T‑185/18, not published, EU:T:2019:298, paragraph 44).
43 Consequently, the lawfulness of the contested decision must be examined without taking into account the amendments made to it by the corrigendum of 15 November 2018.
44 In that regard, it must be noted that coffee and coffee-based beverages are common to both lists of goods in identical terms and coffee products are common to those lists in similar terms, with the result that the reasoning followed, the assessment made and the conclusion reached in respect of those goods in the contested decision are also identical. As regards specifically ‘cocoa-based beverage powder’ appearing in the amended list of goods, it should be acknowledged that it includes some of the goods relating to ‘cocoa-based beverages’ and cocoa in instant form (implied for beverages).
45 It follows that the amended list of goods is narrower and is fully included in the initial list of goods appearing in the contested decision.
46 Since the Board of Appeal based its assessment on all the goods included in the original list, it ruled ultra petita by taking into consideration in its analysis of the likelihood of confusion goods other than those for which the earlier marks were registered, namely ‘coffee substitutes; tea; cocoa; cocoa products; chocolate-based beverages, all aforementioned goods also in instant form’, with the exception of cocoa as regards the latter.
47 It follows that the contested decision must be annulled in so far as it finds that there is a likelihood of confusion in respect of goods other than those for which the earlier marks were registered.
48 Furthermore, the plea raised by the applicant, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be examined only in respect of the goods for which the earlier marks were actually registered.
The plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009
49 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
50 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
51 It should be noted that the applicant does not call into question the Board of Appeal’s assessments referred to in paragraph 12 above, relating to the delimitation of the territory to be taken into consideration and the definition of the relevant public.
Comparison of the goods and services at issue
52 The applicant claims that the Board of Appeal failed to take into account all the relevant factors when examining the comparison of the goods and that, consequently, it incorrectly found the goods in Class 30 to be identical or similar. It submits that the goods are different in that, first, those covered by the mark applied for are for eating, while those covered by the earlier marks are for drinking, and, secondly, wafers, pastries and confectionery may consist of many ingredients, and cocoa or coffee is not their main ingredient. According to the applicant, the Board of Appeal did not take into account the reasons set out in the Opposition Division’s decision relating, in particular, to differences in the nature and intended purpose of the goods. Furthermore, it claims that the goods at issue are different because the fact that it is possible to add cocoa or a cocoa or coffee-based flavouring to finished goods such as wafers, confectionery or pastries does not automatically mean that those goods would be marketed under the mark applied for. Such an assumption goes beyond the scope of Article 8(1)(b) of Regulation No 207/2009. Lastly, it adds that the goods at issue are completely different foodstuffs which are not found in close proximity to one another in, inter alia, supermarkets, and that both the goods and the services may either share the same distribution channels or use different distribution channels.
53 EUIPO and the intervener dispute those arguments.
54 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
55 Furthermore, it has been held that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
56 The case-law also makes it clear that the fact that the goods at issue were often sold in the same specialist sales outlets was likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking was responsible for the production of those goods (see, to that effect, judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 50).
– Comparison of the goods in Class 30
57 As regards the similarity between the goods in Class 30 covered by the signs at issue, the Board of Appeal concluded in paragraph 34 of the contested decision that they were in part identical and in part similar.
58 In the first place, the Board of Appeal found in paragraph 30 of the contested decision, first of all, that the specification relating to coffee products and cocoa products in the application for registration extended to finished food products whose main ingredient is coffee or chocolate, secondly, that ‘confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’, whose main ingredient is coffee or cocoa, could be regarded as coffee or cocoa products and, lastly, that the specification of coffee products and cocoa products included the goods covered by the mark applied for whose main ingredient is coffee or cocoa, and that, to that extent, those goods could be considered identical.
59 While, admittedly, ‘coffee products’ are basic components of ‘confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’ (see, to that effect, judgment of 19 September 2018, Eddy’s Snack Company v EUIPO — Chocoladefabriken Lindt & Sprüngli (Eddy’s Snackcompany), T‑652/17, not published, EU:T:2018:564, paragraphs 34 and 35), in so far as they may be introduced in the preparation of those goods in order to give them a certain flavour, even if they were not the main ingredient, it must nevertheless be noted that ‘coffee products’ include ‘confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’ only where the main ingredient is coffee, in that the former constitute a general indication or a broader category than the latter.
60 It follows that the Board of Appeal was correct in finding that those goods covered by the signs at issue were identical, in that the goods covered by the earlier marks included the goods covered by the mark applied for.
61 In the second place, the Board of Appeal found, in paragraph 31 of the contested decision, that the other goods covered by the earlier marks, corresponding to beverages or products used to make beverages or as an ingredient for adding an aroma or flavour to food, were similar to the goods covered by the mark applied for on the ground that they were complementary, since they are often consumed, sold or served together and the relevant public would very often contemplate purchasing them together.
62 In that regard, it should be noted that complementary goods or services are those which have a close connection, in the sense that one is indispensable to, or important for, the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods intended for different publics cannot be complementary (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
63 The Board of Appeal was certainly correct in finding in paragraph 31 of the contested decision that the goods covered by the mark applied for were different from those covered by the earlier marks, having regard to their nature and purpose. While ‘confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’ are solid food products consumed to satiate hunger or to address a desire to eat sugary products, coffee, coffee-based beverages or cocoa-based beverage powder are liquid food products or used to make liquid food products consumed to quench thirst or to satisfy either a need for caffeine or a desire for cocoa, as included in cocoa-based beverages (see, to that effect, judgment of 28 October 2015, Monster Energy v OHIM — Home Focus (MoMo Monsters), T‑736/14, not published, EU:T:2015:809, paragraphs 23 and 25).
64 As regards the complementarity of those goods, it must be noted that, although confectionery, candy, wafer biscuits, wafer rolls and pastries may be accompanied by beverages, their use is neither indispensable nor important for the consumption of coffee, coffee-based beverages or cocoa-based beverage powder or vice versa, even if the relevant public would be likely to consume them together (judgment of 28 October 2015, MoMo Monsters, T‑736/14, not published, EU:T:2015:809, paragraphs 28 and 29).
65 However, as regards distribution channels, it must be noted, as was observed by EUIPO, that the applicant accepts that the goods at issue are likely to share the same distribution channels and does not dispute that they are intended for the same consumers. In addition, the goods covered by the marks at issue are generally displayed, particularly in supermarkets, in the same or nearby sections, so that the relevant public is likely to believe that they may come from the same producers (see, to that effect, judgment of 26 April 2016, Franmax v EUIPO — Ehrmann (Dino), T‑21/15, not published, EU:T:2016:241, paragraph 27).
66 It follows that the Board of Appeal’s assessment that the goods ‘confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’ and ‘coffee, coffee-based beverages or cocoa-based beverage powder’ are similar must be upheld.
– Comparison of the goods in Class 30 and the services in Class 35
67 As regards the similarity between the services in Class 35 covered by the mark applied for and the goods in Class 30 covered by the earlier marks, the Board of Appeal found, in paragraph 37 of the contested decision, that there was a low degree of similarity between the services ‘retailing or wholesaling of confectionery, edible wafers and rolled wafers; wholesaling and retailing of confectionery, edible wafers and rolled wafers via the internet’ and ‘coffee products; cocoa products’, in so far as the latter included the goods covered by the mark applied for whose main ingredient or flavour is coffee or cocoa.
68 It should be recalled that, in accordance with the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure, the application must contain the pleas and arguments on which the application is based as well as a summary of those pleas. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (see, to that effect, judgment of 22 June 2017, Biogena Naturprodukte v EUIPO (ZUM wohl), T‑236/16, EU:T:2017:416, paragraph 11 and the case-law cited).
69 It should be noted that, as EUIPO pointed out, the applicant makes a general claim that there is no similarity between the goods and services at issue, without however putting forward any supporting arguments that would call into question the Board of Appeal’s assessment in respect of the comparison of the services covered by the mark applied for and the goods covered by the earlier marks, in particular.
70 It follows that that claim does not meet the requirements of the Rules of Procedure and that, consequently, the complaint must be declared inadmissible within the meaning of the case-law cited in paragraph 68 above.
Comparison of the signs at issue
71 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
72 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 of 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 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
73 The assessment of the similarity of the signs at issue must be carried out in the light of those considerations.
74 In the present case, the mark applied for consists of the slightly stylised word elements ‘flis’, in gold, ‘happy’, in yellow, and ‘moreno’ and ‘choco’, in white. The sign also consists of figurative elements, such as a brown gradient background, with a lighter shade in the upper part and a darker shade in the lower part, and a golden crown placed above the word element ‘flis’ and to the left of the word ‘happy’. A figurative element representing chocolate rolls in the shape of a bouquet, accompanied by two squares of chocolate with the expression ‘rolls in chocolate with chocolate’, are placed to the right of the elements described above. All of the above elements are placed within a red parallelepiped.
75 The earlier marks contain a single word element, ‘moreno’. Earlier mark No 30702839 comprises that word element in grey on a black background framed by a grey border. As for earlier mark No 30702840, it comprises the same word element with the first and last letters ‘m’ and ‘o’ larger than the others and two figurative elements representing two vertical lines placed at each end.
– Identification of the distinctive and dominant elements of the mark applied for
76 The applicant submits, in essence, that the dominant element is not the word element ‘moreno’, but the gold-coloured crown that is placed at the centre of the sign applied for, that crown also being protected by two EU figurative marks registered in the applicant’s name, one in the same colour and the other in black. The applicant claims that the crown is not a negligible element, but is, on the contrary, a distinctive element of the sign referring to its proprietor, the applicant, and that the crown, in addition to being a dominant element, is distinguished by its golden colour on a dark black and brown background. According to the applicant, the attention of the reader or consumer is caught by the golden crown and by the word ‘happy’, not by the word ‘moreno’, in spite of the capital letter ‘m’, on account of the fact that the public reads from left to right. The applicant adds that, even though the figurative element representing the chocolate rolls or sticks is less likely to indicate the commercial origin of the goods, it cannot be considered negligible, on the ground that it occupies half of the sign and may cause the consumer to recall the sign applied for.
77 EUIPO and the intervener dispute those arguments.
78 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 or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgment of 8 November 2016, For Tune v EUIPO — Gastwerk Hotel Hamburg (fortune), T‑579/15, not published, EU:T:2016:644, paragraph 34).
79 Furthermore, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting the word elements than by describing the figurative element of that mark (see, to that effect, judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 38 and the case-law cited).
80 As regards the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
81 In the first place, it should be noted, as the Board of Appeal and EUIPO pointed out, that the word ‘moreno’ is the distinctive element of the sign applied for, on the ground that that word has no meaning in German. The applicant’s argument that the word element ‘moreno’ has a meaning in Spanish, a meaning which the German-speaking general public is supposed to perceive in that word element, cannot call that conclusion into question, since, as the applicant admits, Spanish is hardly known to the German-speaking general public and that argument is not substantiated in any way. In that regard, it should be recalled that, as stated in paragraph 29 above, the evidence put forward by the applicant in support of its argument was declared inadmissible.
82 Furthermore, the Board of Appeal’s assessment in paragraph 48 of the contested decision, which is not disputed by the applicant, that the relevant public would understand the very basic English words ‘happy’ and ‘choco’ (by reference to the German word ‘Schokolade’) as the pleasure to be derived from consuming the goods covered by the mark applied for and as the key ingredient or flavour of the goods at issue, respectively, must be upheld. Consequently, it must be stated, first, that the word element ‘choco’ is allusive in that it clearly refers to chocolate or to an abbreviation thereof (see, to that effect, judgment of 25 January 2017, Sun System Kereskedelmi és Szolgáltató v EUIPO — Hollandimpex Kereskedelmi és Szolgáltató (Choco Love), T‑325/15, not published, EU:T:2017:29, paragraph 57) and, secondly, that the element ‘happy’ has weak distinctive character. Moreover, it must be noted that the expression ‘rolls in chocolate with chocolate’, also formed of basic English words, describes not only the shape of the goods, but also the main ingredient or flavour of the goods. Lastly, the word ‘flis’, although a part of the applicant’s trade name, is not, for its part, particularly distinctive on account of the fact that it is hardly noticeable and will go unnoticed by the relevant public.
83 As regards the figurative elements, it must be noted that the background, both by virtue of its geometric shape and the brown colour gradient, even though the latter may refer to the colour of coffee or chocolate, is banal and cannot attract the attention of the relevant public. The same can be said of the parallelepiped, in spite of its red colour. Furthermore, the representation of chocolate rolls in the shape of a bouquet and the two squares of chocolate cannot have distinctive character, in so far as they are merely the representation of the expression ‘rolls in chocolate with chocolate’ and of chocolate, respectively.
84 Moreover, the applicant’s argument seeking, in essence, to demonstrate that the crown is distinctive on the ground that it was the subject of two earlier applications for registration of EU figurative marks No 008328346 and No 015001266 cannot succeed.
85 It should be noted that figurative marks No 008328346 and No 015001266 consist of the word element ‘flis’, that is to say, a part of the applicant’s trade name, and a figurative element, such as, respectively, a black-coloured crown and a gold-coloured crown.
86 In that regard, it should be noted that the sign of which those figurative marks consist is entirely included in the mark applied for. However, while the word ‘flis’, placed below the crown, is not clearly discernible, with the result that the relevant public will not pay any particular attention to it, it should be noted that the distinctive character of the gold crown must be assessed in the light of the overall impression of the sign in respect of which registration is sought in the present case. As observed by EUIPO, that crown will be perceived by the relevant public as laudatory instead of indicating a commercial origin of the goods and services as originating from a particular undertaking.
87 Therefore, the Board of Appeal’s assessment in paragraphs 46 to 48 of the contested decision that, in essence, first, the word element ‘moreno’ is the distinctive element, the word ‘choco’ is allusive, the word element ‘happy’ has weak distinctive character and the expression ‘rolls in chocolate with chocolate’ is devoid of distinctive character and, secondly, the figurative elements are devoid of distinctive character, with the exception of the element representing the golden crown, which is however laudatory and, consequently, is not particularly distinctive, must be upheld. Furthermore, it should be noted that the word ‘flis’ will go unnoticed in the overall impression of the sign applied for.
88 In the second place, the Board of Appeal’s assessment in paragraph 48 of the contested decision that the word ‘moreno’ is the dominant element of the sign applied for owing to its central position in the sign and the significantly larger size of its letters than that of the remaining word elements, must be upheld. Furthermore, the figurative elements are not capable of calling that conclusion into question, since, in the overall impression of the sign, the brown gradient background and the red parallelepiped are negligible, on the one hand, and the crown positioned in the upper left part of the sign and the two squares of chocolate appear secondary, on the other. Furthermore, it must be noted that the graphic representation of chocolate rolls or sticks, in spite of its size and position, is not dominant in the overall impression of the sign.
89 Accordingly, the contested decision is free of error in that respect.
– The visual similarity
90 The applicant submits that, even though the signs at issue share the word element ‘moreno’, they are dissimilar in that they do not share the same features, structure, stylisation or colour combination. In that regard, it claims that the sign applied for is dissimilar to the earlier signs on account of the presence of the words ‘happy’ and ‘choco’, the gold-coloured crown, the use of the colours brown, black, white, gold and yellow, and the stylisation of the letter ‘m’ in the word element ‘moreno’. It adds that the Board of Appeal erroneously considered the chocolate rolls or sticks and the squares of chocolate to be negligible in the overall impression of the sign, and claims, in that regard, that those figurative elements, which occupy almost half of the sign applied for, catch the attention of the consumer, which makes it possible to conclude that the signs at issue are visually different.
91 EUIPO and the intervener dispute those arguments.
92 In the present case, the earlier marks consist of the single word ‘moreno’, whereas the mark applied for comprises nine word elements, namely ‘flis’, ‘happy’, ‘moreno’, ‘choco’, ‘rolls’, ‘in’, ‘chocolate’, ‘with’ and ‘chocolate’, including the word element shared with the earlier signs.
93 Thus, the signs at issue share the same sequence of letters in the same order, namely ‘m’, ‘o’, ‘r’, ‘e’, ‘n’ and ‘o’, and the fact that those signs are partially identical may create a certain impression of visual similarity on the part of the relevant public (see, to that effect, judgment of 6 December 2018, Tomasz KawałkoTrofeum v EUIPO — Ferrero (KINDERPRAMS), T‑115/18, not published, EU:T:2018:882, paragraph 48 and the case-law cited).
94 In that regard, although the presence in each of the signs at issue of several letters in the same order may be of some importance in the assessment of the visual similarity between the two signs at issue (judgment of 20 October 2016, Clover Canyon v EUIPO — Kaipa Sportswear (CLOVER CANYON), T‑693/15, not published, EU:T:2016:620, paragraph 29), the fact that the earlier sign is entirely included in the sign applied for reinforces the visual similarity of those signs (judgment of 15 June 2011, Graf-Syteco v OHIM — Teco Electric & Machinery (SYTECO), T‑229/10, not published, EU:T:2011:273, paragraph 34).
95 The fact that, first, the mark applied for consists of a different number of words and, secondly, the word ‘moreno’ is at the centre of the expression ‘flis happy moreno choco’ is insufficient to counteract all of the visual similarity, on the basis that the six letters of the word ‘moreno’ are the same and the sole word element of the earlier marks is included in the mark applied for. Moreover, as the Board of Appeal pointed out in paragraph 48 of the contested decision, the word element ‘flis’, placed below the golden crown, is hardly noticeable and will go unnoticed. The same finding must be made as regards the expression ‘rolls in chocolate with chocolate’.
96 In the light of the overall impression of each of the signs at issue, the figurative elements cannot call that assessment into question. First, the brown gradient background present in the mark applied for and the black background that is only present in earlier mark No 30702839 referred to in the first indent of paragraph 6 above are negligible and have no influence on the relevant public, since they are ordinary shapes and colours that have no originality. The same can be said of the red parallelepiped. Secondly, the gold-coloured crown appears secondary, contrary to what is claimed by the applicant, on the basis of its relatively small size compared to the other word and figurative elements and its position in the upper left part of the mark applied for, the relevant public paying, furthermore, greater attention to the word elements. Thirdly, as regards the word elements, it must be noted that the grey and white colours and the font are not particularly notable. As for the chocolate rolls or sticks and the two squares of chocolate, even though they are large in size, they are not dominant in the overall impression of the sign applied for either.
97 It follows that the Board of Appeal’s assessment in paragraphs 50 and 52 of the contested decision that the signs at issue are visually similar must be upheld on the ground, first, that the fact that the word element ‘moreno’ is the same cannot be offset by the decorative differences between the signs and, secondly, that the dominant element of the mark applied for reproduces the sole word element of the earlier marks.
98 Therefore, the Board of Appeal was fully entitled to conclude that the signs at issue were visually similar.
– The phonetic similarity
99 The applicant submits that the signs at issue are not phonetically similar in that the sign applied for consists of 3 words, 7 syllables and 16 letters, whereas the earlier signs consist of a single word, 3 syllables and 6 letters. According to the applicant, that difference affects the rhythm and intonation of the name in the signs.
100 EUIPO and the intervener dispute those arguments.
101 It must be recalled that the phonetic reproduction of a composite sign corresponds to that of all its word elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level. Therefore, the figurative elements of the earlier sign should not be taken into account for the purpose of a phonetic comparison of the signs at issue (see judgment of 15 October 2015, Wolverine International v OHIM — BH Stores (cushe), T‑642/13, not published, EU:T:2015:781, paragraph 62 and the case-law cited).
102 Although the signs at issue are of a different length and consist of a different number of words, the overall impression produced by them leads to the finding that they are phonetically similar, owing to their common component (see, to that effect, judgment of 20 October 2011, COR Sitzmöbel Helmut Lübke v OHIM — El Corte Inglés (COR), T‑214/09, not published, EU:T:2011:612, paragraph 63).
103 The fact that the number of syllables of the signs at issue is different is not sufficient to rule out any similarity between the marks, which must be assessed on the basis of the overall impression produced by their full pronunciation (judgment of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 50; see also, to that effect, judgment of 28 October 2010, Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, not published, EU:T:2010:458, paragraph 39 and the case-law cited).
104 As a preliminary remark, it must be noted that, contrary to what is claimed by the applicant, the mark applied for consists of 9 words, 17 syllables and 49 letters combined in the expressions ‘flis happy moreno choco’ and ‘rolls in chocolate with chocolate’, not of 3 words, 7 syllables and 16 letters. Furthermore, the word elements ‘flis’ and ‘rolls in chocolate with chocolate’ will not be pronounced by the relevant public on the basis that they are hardly discernible.
105 Irrespective of the considerations set out in paragraph 104 above, the sign applied for comprises a total of 17 syllables grouped into 9 words, namely ‘flis’, ‘hap’, ‘py’, ‘mo’, ‘re’, ‘no’, ‘cho’, ‘co’, ‘rolls’, ‘in’, ‘cho’, ‘co’, ‘late’, ‘with’, ‘cho’, ‘co’ and ‘late’, whereas the earlier marks consist of the same single word element composed of 3 syllables, namely ‘mo’, ‘re’ and ‘no’.
106 It should be noted that, even though the signs at issue have a distinct syllabic structure on the basis that they contain a different number of words, they are similar, since the single word element ‘moreno’ making up the earlier marks is included in the mark applied for and will be pronounced in the same way and with the same intonation, so that the word elements ‘flis’, ‘happy’, ‘choco’, ‘rolls’, ‘in’, ‘chocolate’, ‘with’ and ‘chocolate’ in the mark applied for are not capable of counteracting that phonetic similarity (see, to that effect, judgments of 8 November 2016, fortune, T‑579/15, not published, EU:T:2016:644, paragraph 49 and the case-law cited, and of 17 October 2018, Szabados v EUIPO — Sociedad Española de Neumología y Cirugía Torácica (Separ) (MicroSepar), T‑788/17, not published, EU:T:2018:691, paragraphs 31 and 32).
107 Consequently, the Board of Appeal was fully entitled to find in paragraphs 51 and 52 of the contested decision that the signs at issue were phonetically very similar.
– The conceptual similarity
108 The applicant submits that, although the term ‘moreno’ has no particular meaning in German, the average German consumer would understand perfectly that the word ‘moreno’ means ‘brown’ in Spanish and thus refers to the brown colour of the cocoa or coffee-based products covered by the earlier marks. In that regard, the applicant claims in support of those arguments that, first, Spanish is one of the most widely spoken languages in the world and, secondly, the average German consumer does have some knowledge of Spanish gained, for example, from professional experience, a hobby, general knowledge or interests.
109 EUIPO and the intervener dispute those arguments.
110 In the present case, it is undisputed that the term ‘moreno’ has no meaning in German, that the word elements ‘happy’ and ‘choco’ are weakly distinctive and allusive, respectively, and that the expression ‘rolls in chocolate with chocolate’ is descriptive of the goods at issue, with the result that the Board of Appeal’s assessment made, in essence, in paragraphs 51 and 52 of the contested decision is free of error in that respect.
111 Furthermore, the applicant’s argument that the relevant public would be able to understand that the word ‘moreno’ means ‘brown’ in Spanish and thus the link to the goods covered by the earlier marks cannot succeed.
112 First, it should be recalled that Annexes A.10 and A.11 to the application, respectively printouts of a Spanish-English online dictionary and a one-page printout from the online encyclopaedia Wikipedia, were declared inadmissible for the reasons set out in paragraph 29 above. Since that evidence must be disregarded, irrespective of its probative value, it must be noted that the applicant does not sufficiently demonstrate that the relevant public, consisting of the average German consumer, would have a sufficient knowledge of Spanish to identify the word ‘moreno’ as meaning ‘brown’.
113 Secondly, it is not established that the relevant public would perceive the word element ‘moreno’ as having a clear meaning in the signs at issue and thus revealing a link between that word and, on the one hand, the goods and services covered by the mark applied for and, on the other hand, the goods covered by the earlier marks.
114 Accordingly, no conceptual comparison can be made in the present case.
115 It follows from all the foregoing that the signs at issue are similar.
The likelihood of confusion
116 The applicant submits that the visual, phonetic and conceptual differences between the signs at issue exclude any likelihood of confusion on the part of the consumer and states that the comparison should also be based on the distinctive and dominant components and the visual aspect, which, on account of the fact that the goods are available to consumers through self-service, is of crucial importance. In that regard, it claims that the earlier marks lack distinctive character, which the Board of Appeal clearly overlooked in its assessment of the likelihood of confusion, since, citing examples in support of its arguments, the applicant claims that the word element is commonly used by other manufacturers to describe a type of confectionery or goods in Classes 30 and 35. The applicant adds that, should the Court uphold the contested decision, the intervener would be justified in taking legal action against other companies using the term ‘moreno’ to describe a food product. Moreover, it claims that the Board of Appeal did not take into account the evidence that it provided and that it did not give sufficient reasons for upholding the opposition.
117 EUIPO and the intervener dispute those arguments.
118 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).
119 In the present case, a finding that the earlier marks have a weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although, admittedly, the distinctive character of the earlier marks must be taken into account when assessing the likelihood of confusion (see, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 24), it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
120 In particular, as regards the distinctive character of the earlier marks, it should be recalled that, in opposition proceedings, and in order to avoid infringing Article 8(1)(b) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EU trade mark is based (judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47). In this respect, the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 41).
121 Therefore, the Board of Appeal’s assessment in paragraph 50 of the contested decision that the word ‘moreno’ is the distinctive element of the earlier marks, which has no meaning in German, whereas the figurative elements appear to be negligible or secondary, must be upheld, and that assessment cannot be called into question by the applicant’s argument seeking to establish that the earlier marks are devoid of distinctive character.
122 Consequently, with regard to the list of goods for which the earlier marks were actually registered, the Board of Appeal was fully entitled, bearing in mind the principle of interdependence referred to in paragraph 118 above, to conclude that there was a likelihood of confusion between the signs at issue, with the exception of the services in Class 35 covered by the mark applied for, corresponding to the following description: ‘retailing or wholesaling of cookie molds, wholesaling and retailing of cookie molds via the internet’. The relevant public is likely to believe that the goods and services at issue originate from the same undertaking or at least from economically linked undertakings in that, first, the goods and services at issue are in part identical and in part similar and, secondly, the signs at issue, as a whole, have visual and phonetic similarities.
123 The applicant’s argument that the Board of Appeal did not take into account the evidence it produced in its application cannot succeed, since that evidence was produced for the first time before the Court and was declared inadmissible, as follows from paragraph 29 above. Moreover, contrary to what is claimed by the applicant, it should be noted that the Board of Appeal has set out in sufficient detail the reasons which led it to conclude that there is a likelihood of confusion between the marks at issue.
The claim alleging infringement of the principle of the protection of legitimate expectations and the principle of legal certainty
124 The applicant submits, in essence, that EUIPO’s previous decision-making practice is crucial because it makes it possible to foresee EUIPO’s actions and to evaluate the chances of success of an application for registration. It claims that, in the present case, the effect of the contested decision is that no other trade mark containing the word element ‘moreno’ may be registered in future because there is a likelihood of confusion with the earlier marks. In that regard, the applicant provides two examples of opposition proceedings (No B 2 706 78 and No B 2 734 861) in which EUIPO had decided to reject an opposition in its entirety due to the lack of distinctiveness of an earlier mark in order to demonstrate that EUIPO’s previous decision-making practice supports registration of the mark applied for having regard to the principle of the protection of legitimate expectations and the principle of legal certainty.
125 EUIPO and the intervener dispute those arguments.
126 According to settled case-law, decisions concerning registration of a sign as an EU trade mark, which the Boards of Appeal are called on to take under Regulation No 207/2009, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous practice of the Boards of Appeal (see judgment of 14 November 2017, Claranet Europe v EUIPO — Claro (claranet), T‑129/16, not published, EU:T:2017:800, paragraph 96 and the case-law cited).
127 Furthermore, although EUIPO must take into account decisions already taken and consider with especial care whether it should decide in the same way or not, compliance with the principle of legality requires that the examination of any trade mark application be stringent and full and be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (judgment of 16 January 2019, Poland v Stock Polska sp. z o.o. and EUIPO, C‑162/17 P, not published, EU:C:2019:27, paragraph 60).
128 In the present case, in so far as the Board of Appeal conducted a full and specific assessment of the existence of a likelihood of confusion between the signs at issue before partially refusing to register the mark applied for, the applicant cannot successfully cite previous decisions of EUIPO for the purpose of casting doubt on the finding that registration of the mark applied for is incompatible with Regulation No 207/2009 (see, to that effect, judgment of 14 November 2017, claranet, T‑129/16, not published, EU:T:2017:800, paragraph 97 and the case-law cited).
129 It follows from all the foregoing that the action must be dismissed in respect of the amended list of goods covered by the earlier marks.
The second head of claim, seeking alteration of the contested decision
130 It must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see judgment of 16 May 2017, Airhole Facemasks v EUIPO — sindustrysurf (AIR HOLE FACE MASKS YOU IDIOT), T‑107/16, EU:T:2017:335, paragraph 45 and the case-law cited).
131 In the present case, it must be noted that in the contested decision the Board of Appeal adopted a position on whether there was a likelihood of confusion between the signs at issue with regard to the initial list of goods covered by the earlier marks, with the result that the Court has the power to alter that decision in that regard.
132 It follows from the considerations set out in paragraphs 13 to 15 and 49 to 129 above that the Board of Appeal was required to find that, contrary to what the Opposition Division found, there was a likelihood of confusion between the signs at issue on the part of the relevant public, in respect of all the goods and services for which registration was sought, with the exception of the services in Class 35 covered by the mark applied for, corresponding to the following description: ‘Retailing or wholesaling of cookie molds; wholesaling and retailing of cookie molds via the internet’.
133 In the light of all the foregoing, it must be concluded that the conditions for the exercise of the Court’s power to alter decisions are satisfied and that the opposition must be upheld in respect of all the goods and services for which registration was sought, with the exception of the services referred to in paragraph 132 above.
Costs
134 Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs. However, if it appears justified in the circumstances of the case, the General Court may order that one party, in addition to bearing its own costs, pay a proportion of the costs of the other party.
135 In the present case, the applicant, EUIPO and the intervener have, respectively, partially failed in so far as the contested decision has been annulled in part. Consequently, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 September 2018 (Case R 2113/2017-1) in so far as it refuses registration of the mark applied for in respect of the following goods: ‘coffee substitutes; tea; cocoa; cocoa products; chocolate-based beverages, all aforementioned goods also as instant form’, with the exception of cocoa as regards the latter;
2. Upholds the opposition in respect of all the goods and services referred to in the application for registration, with the exception of the services in Class 35 corresponding to the following description: ‘Retailing or wholesaling of cookie molds; wholesaling and retailing of cookie molds via the internet’;
3. Dismisses the action as to the remainder;
4. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 24 October 2019.