JUDGMENT OF THE GENERAL COURT (First Chamber)
29 May 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark CHIQUITA QUEEN – Earlier EU figurative mark Red Queen – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑79/23,
Chiquita Brands LLC, established in Fort Lauderdale, Florida (United States), represented by R. Dissmann and L. Jones, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Jara 2000, SL, established in Murcia (Spain), represented by M. Salas Martín, lawyer,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, M. Brkan and T. Tóth (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 15 January 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Chiquita Brands LLC, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2022 (Case R 1811/2021-2) (‘the contested decision’).
Background to the dispute
2 On 4 June 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign CHIQUITA QUEEN.
3 The mark applied for covered goods in Class 31 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Fresh fruits’.
4 On 10 September 2019, the intervener, Jara 2000, SL, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the EU figurative mark reproduced below, which was filed on 27 March 2008 and registered on 9 December 2008 under No 6783955:
6 The goods and services covered by the earlier EU figurative mark (‘the earlier mark’) are in Classes 31, 35 and 39, and correspond, for each of those classes, to the following description:
– Class 31: ‘Fresh fruits’;
– Class 35: ‘Retailing and wholesaling in shops and via global computer networks of fresh fruits’;
– Class 39: ‘Transport; packaging, storage and distribution of fresh fruits’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).
8 Following a request made by the applicant, EUIPO invited the intervener to furnish proof of genuine use of the earlier mark. The latter complied with that request within the prescribed period.
9 On 26 August 2021, the Opposition Division upheld the opposition based on Article 8(1)(b) of Regulation 2017/1001 on the ground that there was no likelihood of confusion between the marks at issue.
10 On 25 October 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
11 By the contested decision, the Board of Appeal dismissed the appeal in its entirety. First, it noted that the relevant public was made up of the general public, whose level of attention is deemed to be, at most average. Secondly, it considered that the goods covered by the mark applied for were identical to those covered by the earlier mark. Thirdly, it found that the signs at issue had an average degree of visual, phonetic and conceptual similarity. Fourthly, after clarifying that the earlier mark had an inherent distinctive character in respect of the goods covered by it, it concluded that there was a likelihood of confusion, including a likelihood of association, for the Spanish-speaking part of the relevant public of the European Union, displaying, at most, an average level of attention.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs, including those incurred in the proceedings before EUIPO.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in case an oral hearing is convened.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those incurred in the proceedings before EUIPO.
Law
Admissibility of the new evidence submitted before the Court
15 EUIPO submits that Annex 8 to the application includes new documents inasmuch as they were not produced before it. Therefore, those documents are inadmissible.
16 That annex consists of extracts from various newspaper articles, which use the word ‘queen’ and which do not appear in the administrative file submitted by the applicant to EUIPO.
17 Therefore, those documents, produced for the first time before the Court, cannot be taken into consideration. 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 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be rejected as inadmissible, there being no need to assess their probative value (see judgment of 8 May 2019, VI.TO. v EUIPO – Bottega (Shape of a golden bottle), T‑324/18, not published, EU:T:2019:297, paragraph 21 and the case-law cited).
18 In its single plea, the applicant disputes the Board of Appeal’s finding that there is, pursuant to Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion on the part of the relevant public. In particular, it calls into question the Board of Appeal’s assessments as regards the distinctive and dominant elements of the signs at issue, the similarities between those two signs and the assessment of the likelihood of confusion.
19 EUIPO and the intervener dispute the applicant’s arguments.
20 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trademark (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).
21 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, GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
22 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see 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).
23 Where the protection of the earlier trade mark extends to the whole European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). Likewise, it is apparent from case-law that the finding of a likelihood of confusion for a not insignificant part of the relevant public is sufficient to uphold an opposition filed against an application for registration of a mark (see, to that effect, judgments of 10 November 2011, Esprit International v OHIM – Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraphs 119 to 121, and of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 58 and the case-law cited).
The relevant public
24 In paragraphs 20 and 21 of the contested decision, the Board of Appeal found that the relevant public was made up of the general public, whose level of attention was, at most, average and that the territory in which the earlier mark was protected was that of the European Union. In particular, it stated that it had examined the opposition, like the Opposition Division, by focusing on the Spanish-speaking part of that public.
25 Those assessments which, indeed, are not disputed by the applicant, must be upheld.
The comparison of the goods at issue
26 The Board of Appeal considered, in paragraph 22 of the contested decision, that the goods in Class 31 covered by the mark applied for were identical to those in the same class and covered by the earlier mark, namely fresh fruits.
27 That assessment, which, moreover, is not contested by the parties, cannot be called into question.
The comparison of the signs at issue
28 According to settled case-law, 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 those 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
29 Furthermore, the assessment of the similarity between two marks means more than taking just one component of a composite mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). 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).
30 In the present case, before comparing the signs at issue visually, phonetically and conceptually, it is necessary to examine the assessment of the distinctive and dominant elements of the marks at issue made by Board of Appeal.
The distinctive and dominant elements of the marks at issue
31 In the contested decision, the Board of Appeal found that the word element ‘queen’ appeared in both of the signs at issue. It considered that that element had a distinctive character from the perspective of the relevant public. With regard to the word elements ‘chiquita’ and ‘red’, which respectively appear in each of the signs at issue, the Board of Appeal considered that those terms, understood by the relevant public as meaning ‘small’ and ‘red’, respectively, related to the fresh fruits designated by each of the marks at issue and were therefore descriptive in nature, and consequently much less distinctive than the element ‘queen’. As regards the word ‘queen’, which is present in the two marks at issue, it considered that, in view of the elements in the file, that term had a certain distinctive character from the perspective of the relevant public, which is definitively greater than that of the words ‘chiquita’ and ‘red’.
32 The applicant complains that the Board of Appeal, first, in concluding that the element ‘queen’ in the earlier mark had distinctive and dominant character, completely disregarded the composite nature of that mark and treated it as a word mark. Secondly, with regard to the mark applied for, it complains that the Board of Appeal found that the term ‘chiquita’ was descriptive, whereas, while that term refers to anything that is small, the fact remains that its use does not deprive it, by itself, even in connection with fresh fruits, of its distinctive character, in so far as there is no sufficiently direct and specific link capable of allowing the targeted public to immediately perceive, and without further reflection, a description of the goods at issue. This is moreover confirmed by EUIPO’s previous practice. Thirdly, according to the applicant, the mark CHIQUITA enjoys, in respect of fresh fruits, a reputation in the European Union which confers on that term a distinctive character within the mark applied for. Fourthly, it maintains, by relying on a previous decision of EUIPO, that the Board of Appeal incorrectly considered that the term ‘queen’ had a distinctive character, although, just like the use of the words ‘king’ or ‘royal’, that term is laudatory and therefore descriptive of the goods covered.
33 EUIPO disputes the applicant’s arguments. As regards the assessment of the figurative elements of the earlier sign, it states that the Board of Appeal referred to those elements on several occasions in the contested decision, in particular by comparing the two signs at issue. It further states that the Board of Appeal attributed a lower degree of distinctive character to the terms ‘red’ and ‘chiquita’ on the grounds that those terms allude to the characteristics of the goods at issue, namely their colour and size, and are therefore descriptive in nature. Unlike those two terms, the term ‘queen’ is meaningless in relation to the goods concerned and therefore has no direct and specific link with any of the characteristics of those goods. For that reason, according to EUIPO, the relevant public will pay more attention to the common word element ‘queen’ than to the word elements ‘red’ and ‘chiquita’. It is for that reason that the Board of Appeal attributed a higher degree of distinctive character to the term ‘queen’ than to the terms ‘red’ and ‘chiquita’. As regards the reputation of the term ‘chiquita’, EUIPO argues that, first, the reputation of a mark applied for is irrelevant for the purposes of assessing whether the relative ground for refusal referred to in Article 8(1)(b) of Regulation 2017/1001 applies to it and, secondly, the perception of that term may be different when it is used in conjunction with other word elements. As for the previous decisions concerning the distinctive character of the term ‘chiquita’ relied on by the applicant, EUIPO argues that the legality of its decisions must only be assessed on the basis of Regulation 2017/1001 and not on its previous practice.
34 The intervener puts forward, in essence, arguments similar to those of EUIPO.
35 According to the case-law, for the purpose of assessing the distinctive character of an element making up 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, account should be taken, in particular of 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 (see judgment of 13 July 2022, Tigercat International v EUIPO – Caterpillar (Tigercat), T‑251/21, not published, EU:T:2022:437, paragraph 37 and the case-law cited).
36 With regard to 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 (see judgment of 13 July 2022, Tigercat, T‑251/21, not published, EU:T:2022:437, paragraph 38 and the case-law cited).
37 Furthermore, it has to be borne in mind that, for a sign to be classified as descriptive, it must be shown that there is a sufficiently direct and specific link to the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics (see, by analogy, judgment of 30 November 2011, Hartmann v OHIM (Complete), T‑123/10, not published, EU:T:2011:706, paragraph 21 and the case-law cited).
38 It is in the light of those considerations that the possible existence of distinctive and dominant elements in the marks at issue must be assessed.
39 In the first place, the applicant maintains that the Board of Appeal failed to analyse the earlier mark as a whole, taking into account only the word elements ‘red’ and ‘queen’.
40 In that regard, it should in fact be noted that the earlier figurative mark contains word elements other than the elements ‘red’ and ‘queen’, namely the elements ‘fincas’, ‘jara 2000’ and ‘tabirana’, grouped together in a red circle, which are, however, given their dimensions, barely legible. Therefore, those elements must be regarded as secondary, or even negligible. Accordingly, by stating in paragraph 34 of the contested decision, that the word elements ‘red’ and ‘queen’ were, on account of their size and central position within the earlier mark, the dominant elements of that mark, and that the term ‘queen’ was particularly visible due to its golden colour on a black background, unlike the term ‘red’, which was reddish in colour on a red background, the Board of Appeal implicitly, but necessarily ruled on the distinctive and dominant characters of the elements ‘fincas’, ‘jara 2000’ and ‘tabirana’ by considering that they were not the dominant or most distinctive elements among those making up the earlier sign, thus implicitly confirming the assessment made by the Opposition Division, recalled in point 7 of the contested decision, which did not take them into consideration on the grounds that they were ‘barely perceptible’ and that ‘it [was] very likely that they [would] be disregarded by the relevant public’.
41 It thus follows from the factors referred to in paragraph 40 above that, contrary to what the applicant maintains, the Board of Appeal analysed all of the figurative elements making up the earlier mark, in order to draw the conclusion that, within that sign, it was the word element ‘red queen’, and more particularly the term ‘queen’, which was dominant.
42 The applicant’s argument that the Board of Appeal disregarded the composite nature of that mark and treated it as a word mark must therefore be rejected, without prejudice to the question of whether those elements were correctly assessed in the context of the comparison of the marks at issue.
43 In the second place, the applicant maintains that, in paragraph 27 of the contested decision, the Board of Appeal incorrectly considered the term ‘chiquita’ to have weak distinctive character. The applicant alleges, in essence, that the Board of Appeal did not take into account, for the purposes of determining the distinctive character of the elements making up the sign applied for, the considerable reputation enjoyed by the mark CHIQUITA in respect of fresh fruits in the European Union. In particular, the applicant maintains that, even if the term ‘chiquita’ is used in a sign in combination with other word elements, the relevant public will associate that sign with the fresh fruits marketed by its undertaking.
44 It should be noted that it is not disputed that the mark CHIQUITA enjoys a reputation in the European Union in connection with bananas, namely a product in the category of fresh fruits. Therefore, contrary to what is apparent from paragraph 27 of the contested decision, the use of the term ‘chiquita’, in the sign applied for CHIQUITA QUEEN, will be perceived by the relevant public as referring to goods marketed by the applicant.
45 Admittedly, as is apparent from paragraph 27 of the contested decision, in Spanish, the term ‘chiquita’ can be used to refer to something tiny or small, so that for some fresh fruits, that term is likely to allude to one of the characteristics of the product at issue. However, taking into account the reputation of the mark CHIQUITA, in particular among the Spanish part of the relevant public, the fact that the term ‘chiquita’ may allude to one of the characteristics of certain fresh fruits, cannot, however, confer a descriptive character upon that term.
46 In that regard, EUIPO’s argument that the reputation of the mark applied for, or of its distinct elements, is irrelevant for the purposes of assessing the relative ground for refusal, referred to in Article 8(1)(b) of Regulation 2017/1001, must be rejected.
47 It is necessary to distinguish between, on the one hand, the factor based on the distinctive character of the earlier mark, which is linked to the protection granted to such a mark and which is to be taken into consideration in the context of the overall assessment of the likelihood of confusion and, on the other, the distinctive character which an element of a composite mark may have, which is linked to its ability to dominate the overall impression produced by that mark and which must be examined from the stage of assessing the similarity of the signs (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 25 March 2010, Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 65).
48 Thus, in the present case, since it is not disputed that the mark CHIQUITA enjoys a reputation in the European Union for some fresh fruits, it is possible to take into account, at the stage of the assessment of the similarity of the signs at issue, that reputation as a relevant factor for assessing the distinctive character of the element ‘chiquita’ appearing in the sign CHIQUITA QUEEN.
49 Furthermore, since the examination of the distinctive character of the elements of a sign cannot be confused with the examination of the distinctive character of the earlier mark carried out as part of the overall assessment of the likelihood of confusion, the case-law referred to in paragraph 28 of the contested decision, as well as that relied on in EUIPO’s response, which refers to the reputation of the earlier mark under the protection granted to the latter in the context of the assessment of the overall risk confusion, is irrelevant.
50 It follows that the Board of Appeal made an error of assessment in concluding that the term ‘chiquita’, appearing in the sign of the mark applied for, had weak distinctive character.
51 In the third place, the applicant maintains, in essence, that the Board of Appeal was wrong, in points 30 to 33 of the contested decision, to refuse to conclude that the term ‘queen’ had a weak distinctive character, even though it has a laudatory character.
52 In paragraphs 31 and 32 of the contested decision, the Board of Appeal stated that it shared the Opposition Division’s view that the use of the word ‘queen’ was not as widespread as that of the word ‘king’ for designating the characteristics of goods, while noting that the evidence produced by the applicant was insufficient to establish that, from the point of view of the relevant Spanish-speaking public, the term ‘queen’ had a laudatory character. Lastly, the Board of Appeal noted that it was unlikely that the relevant consumer would perceive a laudatory message in the combination of the word ‘queen’ and the word ‘red’.
53 In that regard, it should be borne in mind, first of all, that, according to the case-law, the term ‘king’ is used in the laudatory sense of ‘the best’, so that it can be understood as praising the quality of the goods in question and therefore has a weak distinctive character (judgments of 8 December 2015, Compagnie Générale des établissements Michelin v OHIM – Continental Reifen Deutschland (XKING), T‑525/14, not published, EU:T:2015:944, paragraphs 32 and 34, and of 28 April 2021, West End Drinks v EUIPO – Pernod Ricard (The King of SOHO), T‑31/20, not published, EU:T:2021:217, paragraph 85).
54 Next, as the applicant correctly points out, the term ‘queen’, like the terms ‘king’ and ‘royal’, are basic English-language terms which will be understood by the relevant public as relating to the monarchy perceived as an aristocracy and corresponding to a high social status. Therefore, it must be stated that the term ‘queen’, in the same way as the term ‘king’, will be understood by the relevant public as having a laudatory character, as was, moreover, recognised by EUIPO at the hearing.
55 It follows that the difference established in paragraphs 31 and 32 of the contested decision between the word ‘queen’ and the word ‘king’ is irrelevant when the latter term is used to promote goods which fall within the masculine gender, whereas the former promotes goods (fruit) which fall within the feminine gender in Spanish (‘las frutas’).
56 Therefore, by considering, in paragraph 33 of the contested decision, that the word ‘queen’ had a greater distinctive value than that of the term ‘chiquita’ on the ground that the first of those terms did not have a laudatory character, the Board of Appeal also made an error of assessment.
57 It follows from the foregoing considerations that the term ‘queen’ must be considered to have a lower distinctive value than the term ‘chiquita’, and the latter must be considered to be the most distinctive element of the mark applied for.
The visual similarity
58 The Board of Appeal stressed that the signs at issue shared the same word element ‘queen’ that was more distinctive than the terms ‘chiquita’ and ‘red’, by which the marks at issue differ and which have a weak distinctive character. It considered that the figurative elements of the earlier mark reinforce the perception of the word element ‘queen’ and that, although the word ‘chiquita’ is longer than the word ‘queen’ in the sign applied for, the word ‘queen’ remains clearly visible. Therefore, it considered that the signs at issue had an average degree of visual similarity.
59 The applicant maintains, in essence, that the visual impression produced by the signs at issue is completely different, taking into account, in particular the stylisation and the figurative elements of the earlier sign, which are well perceived by the relevant public.
60 EUIPO, supported by the intervener, disputes the applicant’s arguments.
61 According to EUIPO, the figurative elements of the earlier sign, which play only a secondary role, are not sufficient to exclude or substantially reduce the existence of a visual similarity between the two signs at issue.
62 It must be stated that, as regards the mark applied for, the term ‘chiquita’ is longer than the term ‘queen’, with the result that the average consumer’s attention will focus primarily on the first of the two terms making up that mark, especially since, as mentioned in paragraph 57 above, the term ‘queen’ has a lower distinctive value than that conferred on the term ‘chiquita’.
63 Furthermore, the visual comparison of the signs in the contested decision is based, as is apparent from paragraphs 42 to 57 above, on the wrong premiss that, in the mark applied for, the term ‘chiquita’ is less distinctive than the term ‘queen’.
64 Furthermore, it must be stated that, visually, the mark applied for is longer than the earlier mark. The former is made up of 13 letters while the latter is made up of only 8 letters. Likewise, while it is true that each of the marks at issue shares the successive five letters ‘q’, ‘u’, ‘e’, ‘e’, ‘n’, placed at the end of the signs at issue, the other letters of each of those signs, namely the successive letters ‘r’, ‘e’ and ‘d’ for the earlier mark and the successive letters ‘c’, ‘h’, ‘i’, ‘q’, ‘u’, ‘i’, ‘t’ and ‘a’ for the mark applied for, differ.
65 Furthermore, visually, the figurative elements of the earlier mark reinforce the difference between the marks at issue. With regard to the earlier mark, as noted in paragraph 34 of the contested decision, the Board of Appeal correctly considered that, on account of the negligible nature, for the reasons stated in paragraph 40 above, of the elements ‘fincas’, ‘jara 2000’ and ‘tabirana’, the term ‘queen’ was particularly visible owing to its golden colour on a black background, whereas the term ‘red’ was less visible, owing to ‘its reddish colour on a red background’.
66 Thus, visually, the figurative element constitutes an appreciable difference between the marks at issue. In particular, the mark applied for differs significantly from the earlier mark in that, with regard to the former, the term ‘chiquita’ attracts the attention of the relevant public more than the term ‘queen’, in particular because of its length, whereas, as regards the second mark, the term ‘queen’ stands out the most.
67 It follows that the Board of Appeal incorrectly considered that the visual similarity between the two signs at issue may be described as average, even though, in view of the elements mentioned in paragraph 66 above, it can, at most, merely be described as weak.
The phonetic similarity
68 The Board of Appeal concluded that the signs at issue contained a common word element ‘queen’, pronounced identically at the end of the two signs, and differed in the pronunciation of the terms ‘chiquita’ and ‘red’. It pointed out that, although the mark applied for was pronounced with four syllables and the earlier mark consisted of only two syllables, the term ‘queen’ remained clearly audible and constituted the most distinctive element in both signs. It further stated that the figurative elements, appearing in the earlier mark, were not capable of being pronounced. It therefore concluded that the signs at issue were visually similar to an average degree.
69 The applicant considers, in essence, that the phonetic impressions produced by the signs at issue are completely different.
70 EUIPO, supported by the intervener, disputes the applicant’s arguments. In its view, the difference in the number of syllables is not sufficient to exclude a phonetic similarity between the signs at issue, given that they coincide in the pronunciation of their most distinctive word element ‘queen’. As regards the verbal elements ‘fincas’, ‘jara 2000’ and ‘tabirana’, appearing in the earlier mark, it considers that it is very unlikely that, in a purchasing situation, the relevant public will refer to the earlier mark by also pronouncing those verbal elements.
71 In the present case, it should be noted that, in order to conclude that there was a phonetic similarity, the Board of Appeal relied, in paragraph 36 of the contested decision, on the fact that ‘the term “queen” remain[ed] clearly audible and [was] the most distinctive element in both signs’.
72 It should be borne in mind that, as is apparent from paragraph 57 above, the word ‘queen’ does not have a greater distinctive character than the word ‘chiquita’. Furthermore, it should be noted that, phonetically, the mark applied for CHIQUITA QUEEN differs significantly from the earlier mark Red Queen. Without even having to take into account the three terms ‘fincas’, ‘jara 2000’ and ‘tabirana’, which play a negligible role in the earlier mark, it should be pointed out that that mark is pronounced as two syllables, whereas the mark applied for is pronounced as four syllables. It must be stated that, while it is true that the two signs at issue end with the same syllable, the fact remains that the mark applied for begins with three syllables which, phonetically, have nothing in common with the earlier mark, in particular for the relevant Spanish public.
73 It follows that the phonetic similarity must be described as low and that, by finding that there was an average similarity between the two marks at issue, the Board of Appeal made an error of assessment.
The conceptual similarity
74 The Board of Appeal found that the signs at issue had an average degree of conceptual similarity in so far as, in particular – although they differed, respectively, in the use of the words ‘chiquita’ and ‘red’, which are descriptive of the goods at issue – they coincided in ‘the concept evoked by the common word element “queen”’.
75 The applicant considers, in essence, that for the relevant public, the earlier mark Red Queen will evoke the concept of a red-coloured queen, which is clearly different from the concept conveyed by the sign at issue, due to the presence of the word ‘chiquita’ in that sign, which refers to a little girl.
76 EUIPO, supported by the intervener, disputes the applicant’s arguments. In its view, despite the difference in meaning of the words ‘red’ and ‘chiquita’, the two signs at issue still refer to a queen. Furthermore, given that those first words are adjectives describing the word ‘queen’, the relevant public is more likely to remember that latter word when confronted with the signs at issue.
77 It should be borne in mind that, for the reasons set out in paragraphs 51 to 55 above, the term ‘queen’, common to the marks at issue, has a distinctive character which can, at most, be described as weak.
78 Accordingly, the Board of Appeal incorrectly considered, in paragraph 37 of the contested decision, that the terms ‘red’ and ‘chiquita’ were not particularly relevant in the conceptual comparison and that it considered that the conceptual similarity between the two marks at issue may be described as average, in view of the higher distinctiveness of the term ‘queen’, appearing in each of those two marks. It follows that the Board of Appeal incorrectly considered that the conceptual similarity between the two marks at issue may be described as average, whereas it can, at most, only be described as low.
The likelihood of confusion
79 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. Thus, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and Others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
80 In the present case, the Board of Appeal considered that the earlier mark was inherently distinctive in respect of the goods for which it was registered. It recalled that, taking into account, in particular, the identity of the goods at issue as well as the average visual, phonetic and conceptual similarity of the two signs at issue, there was a likelihood of confusion, including a risk of association, for the Spanish-speaking part of the relevant public of the European Union, displaying, at most, an average level of attention. It concluded that the relevant public might think that the identical goods designated by the marks at issue have the same commercial origin or a related commercial origin.
81 The applicant maintains, in essence, that the visual, phonetic and conceptual differences between the two signs at issue, as well as in terms of their overall appearance, produce a different overall impression which does not allow to establish a likelihood of confusion, even for identical goods.
82 EUIPO, supported by the intervener, disputes the applicant’s arguments. In its view, the differences between the two signs at issue are not sufficient to distinguish them with certainty, in particular because they play only a secondary role in the overall impression which they produce.
83 In the present case, despite the fact that the two marks at issue were registered as designating the same category of goods, the fact remains that, as follows from paragraphs 58 to 78 above, the visual, phonetic and conceptual degree of similarity between the two marks at issue can, at most, be described as low
84 Consequently, in the light of all of those considerations, the degree of similarity between the marks at issue is not sufficiently great for it to be considered that the relevant public might believe that the goods at issue come from the same undertaking or, as the case may be, from economically linked undertakings.
85 Accordingly, it must be considered, contrary to the Board of Appeal, that, despite the average level of attention of the relevant public and the identity of the goods at issue, in view of the overall impression produced by the marks at issue and taking into account, in particular, their distinctive elements, the similarities between the marks at issue are not such as to give rise to a likelihood of confusion.
86 It follows that the Board of Appeal erred in concluding that there was a likelihood of confusion between the two marks at issue, with the result that the action must be upheld in its entirety and the contested decision must therefore be annulled.
Costs
87 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.
88 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
89 In addition, the applicant has applied for EUIPO to be ordered to pay the costs which it incurred before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. The same does not apply, however, to costs incurred for the purposes of the proceedings before the Opposition Division. Consequently, EUIPO must also be ordered to pay the costs necessarily incurred by the applicant only for the purposes of the proceedings before the Board of Appeal.
90 Since the intervener has been unsuccessful, it must, pursuant to Article 138(3) of the Rules of Procedure, be ordered to bear its own costs, including those incurred before the Board of Appeal of EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2022 (Case R 1811/2021-2);
2. Orders EUIPO to bear its own costs and to pay those incurred by Chiquita Brands LLC, including the costs necessarily incurred by the latter for the purposes of the proceedings before the Board of Appeal of EUIPO;
3. Orders Jara 2000, SL to bear its own costs, including those incurred before the Board of Appeal of EUIPO.
Delivered in open court in Luxembourg on 29 May 2024.
V. Di Bucci | | M. van der Woude |