JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
29 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark CHERRY Passion – Earlier EU figurative mark MIESZKO PRALINES CHERRISSIMO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑29/23,
Vobro sp. z o.o., established in Brodnica (Poland), represented by M. Kondrat, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Mieszko S.A., established in Warsaw (Poland),
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, P. Zilgalvis and E. Tichy-Fisslberger (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Vobro sp. z o.o., seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 November 2022 (Case R 2073/2021-5) (‘the contested decision’).
I. Background to the dispute
2 On 4 March 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods in Class 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Confectionery; Non-medicated chocolate confectionery; Chocolate confectionery containing pralines; Chocolate candies; Non-medicated candy; Chocolate based products; Chocolate; Pastries; Candy; Non-medicated lozenges; Chocolate wafers; Wafers; Chocolate bars; Halvah; Pralines made of chocolate; Chocolate-based beverages; Prepared cocoa and cocoa-based beverages; Cocoa-based beverages; Coffee-based beverages; Fruit jellies [confectionery]; Ice cream’.
4 On 12 May 2020, Mieszko S.A. 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, inter alia, on the earlier EU figurative mark, reproduced below, covering goods in Class 30 corresponding to the following description: ‘Sweetmeats [candy]; confectionery’:
6 The grounds relied on in support of the opposition, in so far as it was based on the earlier mark, included 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).
7 On 14 October 2021, the Opposition Division rejected the opposition, finding, inter alia, that there was no likelihood of confusion between the marks at issue.
8 On 7 December 2021, Mieszko filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal upheld the appeal, annulled the Opposition Division’s decision and rejected the application for registration in its entirety, since it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. In support of that conclusion, first, the Board of Appeal found, as regards the relevant public, that it was sufficient that there was a likelihood of confusion on the part of the Polish public, on which it was necessary to focus in the present case (paragraphs 28 to 30 and 36 of the contested decision). As regards everyday consumer goods aimed at the general public and which were potentially low-priced, the level of attention of that public was low (paragraphs 32 to 36 of the contested decision). Secondly, according to the Board of Appeal, the goods covered by the marks at issue were either identical or similar to varying degrees (paragraphs 39 to 46 of the contested decision). Thirdly, according to the Board of Appeal, it was not possible to regard certain elements of the marks at issue as dominant or to classify some of them as negligible, with the exception, however, of the descriptive word element ‘pralines’ of the earlier mark. Furthermore, the inherent distinctiveness of the word elements ‘cherrissimo’ of the earlier mark, on the one hand, and ‘cherry’ and ‘passion’ of the mark applied for, on the other, was reduced (paragraphs 61, 62, 65, 66, 68, 69 and 75 of the contested decision). Fourthly, the Board of Appeal found that the marks at issue had an average degree of visual similarity (paragraph 86 of the contested decision) and a low degree of phonetic similarity (paragraph 89 of the contested decision) and conceptual similarity (paragraph 93 of the contested decision). Fifthly, the Board of Appeal confirmed the Opposition Division’s assessment that the evidence submitted by Mieszko indicated that the earlier mark had acquired enhanced distinctiveness through use in relation to chocolate pralines with a cherry flavour and boxes of chocolate with a cherry flavour which were covered by the broad categories of ‘sweetmeats [candy]; confectionery’ in Class 30, for which the earlier mark was registered (paragraphs 99 and 103 of the contested decision). Sixthly, the Board of Appeal found that, overall, there was a likelihood of confusion between the marks at issue on the part of the Polish part of the relevant public, with the result that the application for registration had to be rejected (paragraphs 115 to 119 of the contested decision).
II. Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision and refer the case back to EUIPO for reconsideration;
– in the alternative, alter the contested decision by declaring that there are no relative grounds for refusal of registration of the mark applied for and that the mark applied for must be registered;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event of a hearing being convened.
III. Law
A. The Court’s jurisdiction to hear and determine certain heads of claim
12 As regards the second part of the applicant’s first head of claim, it should be noted that it requests that the Court refer the case back to EUIPO for reconsideration. In that regard, first, it is sufficient to recall that, in the context of the review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited). Secondly, under Article 72(6) of Regulation 2017/1001, it is for EUIPO to take the necessary measures to comply with a judgment of the Court. It follows that the second part of the applicant’s first head of claim must be rejected on the ground of lack of competence, as EUIPO, in essence, submits.
13 As regards the applicant’s second head of claim, it should be noted that it requests the Court to alter the contested decision by declaring that there are no relative grounds for refusal of registration of the mark applied for and that that mark must be registered, and therefore that that head of claim asks the Court to alter the contested decision within the meaning of Article 72(3) of Regulation 2017/1001 by adopting the decision which the Board of Appeal should have taken, in accordance with the provisions of that regulation.
14 Although the Board of Appeal is, in principle, competent to take a decision on the outcome of an opposition brought against registration of a trade mark, the fact remains that the competent EUIPO bodies do not adopt formal decisions recording the registration of an EU trade mark which could be the subject of an appeal. Consequently, the Board of Appeal does not, by contrast, have power to take cognisance of an application that it should register an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited). It follows that the second head of claim must be rejected on the ground of lack of jurisdiction, in so far as it seeks a declaration from the Court that the mark applied for must be registered, as EUIPO, in essence, claims.
15 As EUIPO acknowledges, in essence, the applicant’s second head of claim is, however, admissible, in so far as it seeks, in essence, that the Court reject the opposition in its entirety.
B. Substance
16 The applicant relies on three pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001, second, infringement of the principles of the protection of legitimate expectations and legal certainty and, third, infringement of the first sentence of Article 94(1) and of Article 95(1) of Regulation 2017/1001.
1. The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
17 In support of its first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, the applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue on the part of the Polish part of the relevant public.
18 EUIPO disputes the applicant’s arguments.
19 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
20 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. 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).
21 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).
22 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
(a) The relevant public
23 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
24 The Board of Appeal found, in essence, in paragraphs 32 to 36 of the contested decision, that the goods in question were everyday consumer goods aimed at the general public and which could be low in price. It concluded that the level of attention of the relevant public was low.
25 As EUIPO correctly observes, the applicant acknowledges, in essence, that the relevant public was correctly identified in the contested decision. Since that definition of the relevant public by the Board of Appeal is correct, it must be confirmed.
26 In the light of the case-law cited in paragraph 22 above, the Board of Appeal cannot, moreover, be criticised for having found, in paragraphs 28 to 30 and 36 of the contested decision, that, even if the relevant territory were the whole of the European Union, it was necessary to focus on the Polish part of the relevant public, since, first, most of the evidence submitted by Mieszko concerning the enhanced distinctiveness of the earlier mark related to Poland and, secondly, a likelihood of confusion on the part of that part of the relevant public was sufficient to reject the application for registration. The parties do not dispute that approach followed by the Board of Appeal.
(b) The comparison of the goods
27 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 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
28 In paragraphs 39 and 40 of the contested decision, the Board of Appeal confirmed the decision of the Opposition Division which had found that all the goods covered by the mark applied for, with the exception of ‘coffee-based beverages’, were either identical or similar to varying degrees to the goods for which the earlier mark was registered. Contrary to what the Opposition Division had found, the Board of Appeal found, in paragraphs 41 to 45 of the contested decision, that ‘coffee-based beverages’ were similar, at least to a low degree, to ‘sweetmeats [candy]; confectionery’ covered by the earlier mark.
29 The applicant disputes the Board of Appeal’s assessment in respect of ‘Chocolate-based beverages; Prepared cocoa and cocoa-based beverages; Cocoa-based beverages; Fruit jellies [confectionery]; Ice cream’. According to the applicant, the Board of Appeal erred in finding that those goods and those covered by the earlier mark were complementary, since they were often consumed, sold or served together and the relevant public very regularly contemplated purchasing them together. The goods covered by the earlier mark are chocolate pralines, sold in chocolate boxes in large and small-scale shops. That type of product is not usually sold with coffee-based drinks or other beverages and is not offered in cafeterias or coffee shops, restaurants or food stands. In shops, those goods are displayed in a different section. There is therefore no complementarity between those goods.
30 EUIPO disputes the applicant’s arguments.
31 In the first place, as EUIPO correctly observes, the applicant disputes the Board of Appeal’s assessment of the similarity of the goods specifically only as regards ‘Chocolate-based beverages; Prepared cocoa and cocoa-based beverages; Cocoa-based beverages; Fruit jellies [confectionery]; Ice cream’ covered by the mark applied for.
32 In the second place, as regards those goods specifically, EUIPO is also right to submit that the Board of Appeal expressly referred to the reasoning set out in the Opposition Division’s decision, which did not rely on complementarity of the goods, in respect of which the earlier mark is registered.
33 The Opposition Division found, first, that ‘fruit jellies [confectionery]’ were identical to ‘sweetmeats [candy]; secondly, ‘ice cream’ was similar to a high degree to ‘confectionery’, since they had the same purpose, were in competition with each other, were directed at the same public seeking to purchase them through the same distribution channels and could be produced by the same producers, and, thirdly, ‘chocolate-based beverages; prepared cocoa and cocoa-based beverages; cocoa-based beverages’ were similar to ‘confectionery’, given that the former were all cocoa-based products and were of the same nature as the latter, and that those two groups of goods were produced by the same companies, sold through the same distribution channels and intended for the same public.
34 Consequently, the applicant is wrong to criticise the Board of Appeal for having relied, in order to assess their similarity, on a complementarity between those goods and the goods covered by the earlier mark. Since the applicant has not put forward any other arguments against the Opposition Division’s assessments concerning those goods, which were confirmed by the Board of Appeal, and since those assessments are correct, they must be upheld.
35 In the third place, even though the applicant does not expressly refer to ‘coffee-based beverages’ among the goods in respect of which it disputes the Board of Appeal’s assessment of similarity, it nevertheless follows unequivocally from its line of argument that it criticises the Board of Appeal’s finding as regards those goods. Contrary to what EUIPO contends, the Board of Appeal did indeed find, in paragraphs 41 to 45 of the contested decision, that the ‘coffee-based beverages’ covered by the mark applied for were complementary to ‘sweetmeats [candy]; confectionery’ of the earlier mark. As the Board of Appeal correctly pointed out in the contested decision, it has previously been held that those goods are complementary and that they must therefore be regarded as similar (judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraphs 63 to 65). It follows that the Board of Appeal cannot be criticised for having found that those goods were similar, at least to a low degree, and that the applicant’s arguments to that effect must be rejected.
36 It follows from the foregoing that the applicant’s arguments do not call into question the Board of Appeal’s assessment in the contested decision of the similarity of the goods in question, according to which the goods concerned were either identical or similar to varying degrees.
(c) The comparison of the signs
37 The applicant complains that the Board of Appeal erred in its assessment of the visual, phonetic and conceptual similarities of the signs at issue.
38 EUIPO disputes the applicant’s arguments.
39 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 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).
40 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C- 334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (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).
(1) The distinctive and dominant elements of the signs at issue
41 In the present case, before assessing the similarity of the signs at issue, the Board of Appeal examined the distinctive and dominant elements of those signs. In paragraphs 60 to 75 of the contested decision, it found, in essence, that it was necessary to compare the marks at issue as a whole and that it was not possible to regard certain elements as dominant or to classify some of them as negligible, with the exception, however, of the word element ‘pralines’ of the earlier mark which, first, was barely perceptible and therefore negligible and, secondly, was non-distinctive for the goods concerned, as it described their type (paragraphs 61 and 75 of the contested decision).
42 More specifically, as regards, first, the other word elements of the marks at issue, the Board of Appeal found, first, that the word element ‘mieszko’ was distinctive because it had no meaning in respect of the goods in question (paragraph 60 of the contested decision), secondly, that the distinctive character of the word elements ‘cherrissimo’ and ‘cherry’ was reduced, since the representation of a cherry in the figurative element was likely to evoke the association of those word elements with the word ‘cherry’ on the part of a part of the relevant public and, therefore, with the taste of the goods in question (paragraphs 62 and 68 of the contested decision), and, thirdly, the inherent distinctiveness of the element ‘passion’ was also somewhat reduced in the light of the fact that that word could evoke the intense pleasure that could be felt when the goods in question were tasted (paragraphs 69 and 70 of the contested decision).
43 As regards, secondly, the figurative elements of the marks at issue, the Board of Appeal noted that, even though, where a mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, the figurative elements of a sign, which included its colour palette, could have the same importance, or even more importance, than the word elements. According to the Board of Appeal, the reproduction and specific arrangement of the elements of the earlier sign as well as the colours used – more specifically the elegant combination of purple nuances in the background, which becomes lighter towards the centre in order to give greater prominence to the depiction of a cherry dipped in chocolate, which in turn combines various shades of orange, brown, pink and purple – had, taken together, a substantial impact on the appearance of the sign as a whole and could not be disregarded in the overall comparison (paragraphs 63 to 65 of the contested decision). According to the Board of Appeal, the same considerations apply by analogy to the contested mark, which shares with the earlier sign the general structure and colour scheme of golden elements standing out against a rectangular background of purple shades, fading from darker to lighter in the central part, to give greater prominence to the realistic depiction of a cherry dipped in chocolate which, to the right of the cherry, turns into a liquid of various shades. The specific reproduction and arrangement of the figurative elements and the colour palette used also had considerable weight in the overall impression of the mark applied for (paragraph 66 of the contested decision).
44 Thus, the Board of Appeal found a lack of distinctiveness only in respect of the word element ‘pralines’ of the earlier mark, which it considered, moreover, to be negligible. Furthermore, it found that some of the word elements of the signs at issue, namely ‘cherrissimo’, ‘cherry’ and ‘passion’, had reduced distinctive character.
45 In essence, the applicant does not dispute those findings of the Board of Appeal as regards the distinctive and dominant elements of the signs at issue. It submits that the similarities relate to elements devoid of distinctiveness, without, however, identifying the elements which it considers to be devoid of distinctiveness or the reasons why it considers that to be the case. The only express considerations which it sets out with regard to the distinctive or dominant character of the elements of the signs at issue concern the word element ‘mieszko’ of the earlier sign, which, according to the applicant, is ‘co-dominant’ with the ‘cherry representation’ in that sign. That is, in essence, what the Board of Appeal itself found in paragraphs 59, 60 and 65 of the contested decision.
46 Furthermore, the applicant submits, without further explanation, that the element ‘passion’ of the sign applied for is ‘without a doubt’ the dominant element, with the ‘cherry representation’. However, the Board of Appeal was right to find, in paragraphs 69 and 70 of the contested decision, that part of the relevant Polish-speaking public would understand the meaning of the word ‘passion’, since it was a relatively basic English word and, in any event, it was very similar to its Polish equivalent ‘pasja’ and would therefore be readily understood. That word could, as the Board of Appeal correctly found, evoke the intense pleasure that may be felt during the tasting of the goods concerned, with the result that the inherent distinctiveness of the element ‘passion’ is actually reduced. According to the Board of Appeal, none of the elements which make up the mark applied for were particularly distinctive.
47 Even if it were accepted that its specific graphic representation in the sign applied for attracts some attention to that element, having regard to the size and the particular font, the fact remains that the applicant does not put forward any argument to refute the Board of Appeal’s correct finding that, in essence, that word element, as such, has only reduced, or even weak, inherent distinctiveness. Accordingly, merely to assert, as does the applicant, that the element ‘passion’ is dominant in its stylisation, is not sufficient to refute the Board of Appeal’s assessment that none of the elements of the sign applied for, including the element ‘passion’, were particularly distinctive. In the absence of any particular distinctiveness, it cannot be maintained, as does the applicant without further explanation, that that element is dominant.
48 Consequently, the Board of Appeal’s findings as regards the distinctive and dominant elements of the signs at issue must be upheld.
(2) The visual comparison
49 As regards the visual comparison of the signs at issue, the Board of Appeal found, in paragraphs 80 to 86 of the contested decision, that the specific combination, colour scheme and arrangement of the figurative elements of the signs at issue were also important, as they had a significant visual impact in both signs. It is therefore the impression conveyed by the signs as a whole that must be taken into consideration (paragraph 80 of the contested decision).
50 According to the Board of Appeal, the overall composition and structure of the signs at issue were extremely similar. Both signs feature a realistic depiction of a cherry dipped in chocolate which, to the right of the cherry, turns into a liquid of various shades. On the whole, the cherry images in the marks are highly similar. In relation to the other elements of the mark, the size of the cherry in the two signs is roughly the same. Furthermore, the general colour scheme of the two signs coincides in that the golden colour of the word elements ‘mieszko’, ‘cherrissimo’ and ‘passion’ and their lines stand out against a rectangular background of purple shades, fading from darker to lighter in the central part. The signs at issue also share the similar word elements ‘cherry’ and ‘cherrissimo’ (paragraph 82 of the contested decision).
51 The differences between the signs resulting from certain characteristics of the respective cherries and the nuances of the liquid surrounding them were minor. The additional word element ‘pralines’, in the mark applied for, was barely perceptible and negligible. The main differences lay in the position of the word elements of the two marks and in the disparity between two of those word elements, namely ‘passion’ and ‘mieszko’, the latter also being reproduced vertically (paragraphs 83 and 84 of the contested decision).
52 Thus, the elements common to the marks at issue, considered as a whole, conveyed a visual impression of significant similarity, since the mark applied for reproduced the global visual impression given by the earlier mark. That overall impression of visual similarity was diminished by the differences described above and by the fact that the common elements, taken individually, were descriptive or weakly distinctive for the goods concerned. Overall, the global visual similarity was at least average (paragraphs 85 and 86 of the contested decision).
53 The applicant criticises the Board of Appeal’s assessment and submits, after presenting a table in which it lists and compares the details of the signs at issue in minute detail, in essence, that there are no specific details in which the signs at issue resemble each other.
54 According to the applicant, a careful analysis shows that the background and the cherry reproduced in the mark applied for differ from those in the earlier mark: the background is not gradually lighter towards the centre in the mark applied for, rather it is of a somewhat uniform colour in the earlier mark, and the lighter part in the mark applied for is not placed in the centre or exposing the cherry as in the earlier mark, which is of a different size and colour. It points out that the word elements must also be taken into account when assessing the overall impression created by the marks. The Board of Appeal did not take into account the position and orientation of the element ‘mieszko’, the position of the element ‘cherrissimo’ and the cherry whose arrangement differs in the mark applied for. The overall structure of the mark applied for is, therefore, different from that of the earlier mark, which excludes any similarity. In the absence of a common element in the structure of the marks, it is not possible to find a visual similarity.
55 EUIPO disputes the applicant’s arguments.
56 First of all, it must be recalled, as did the Board of Appeal in paragraph 47 of the contested decision, that it is apparent from settled case-law (see paragraph 39 above) that the global assessment of the likelihood of confusion must, so far as concerns, inter alia, the visual similarity of the signs at issue, be based on the overall impression given by the signs and that the relevant public normally perceives a mark as a whole and does not engage in an analysis of its various details. Accordingly, EUIPO is right to argue, in essence, that a listing and comparison of the minute details of the signs at issue, as compiled by the applicant, are not, in themselves, relevant for the purposes of the assessment of the visual similarity of the signs at issue, which must be carried out on the basis of the overall impression produced by those signs. Similarly, contrary to what is argued, in essence, by the applicant, it is also not necessary for the signs at issue to resemble each other in precise detail.
57 In the present case, as has been pointed out in paragraphs 49 to 52 above, the Board of Appeal relied specifically on an overall impression of the elements common to the marks at issue and found that the mark applied for reproduced the overall impression created by the earlier mark to such an extent that those common elements produced an extremely similar visual impression.
58 The Board of Appeal was right to find that the overall composition and structure of the signs at issue were extremely similar. The Board of Appeal was fully entitled to consider that, first, the two signs at issue contained a realistic representation of a cherry dipped in chocolate, which, to the right of the cherry, transforms into a liquid with varied shades, secondly, the images of cherries in the marks at issue were very similar, thirdly, the size of the cherries in the two signs at issue was almost identical in relation to the other elements of each sign and, fourthly, the general colour palettes of the two signs at issue coincided in that certain word elements represented in gold and their lines stood out against a rectangular background with purple shades, a gradation ranging from darker to lighter in the middle part.
59 The Board of Appeal was also right to find that the signs at issue contained the similar word elements ‘cherry’ and ‘cherrissimo’.
60 Contrary to what the applicant claims, the Board of Appeal did indeed identify a number of details in which the signs at issue differed. First, it noted differences arising from certain characteristics of the respective cherries and the shades of the liquid surrounding them, but correctly classified them as minor. Secondly, it did indeed take into account the additional word element ‘pralines’ in the earlier mark, but correctly classified it as negligible in the light of its descriptive character and small size (see paragraphs 41 and 44 above). Thirdly, the Board of Appeal also noted the different positions of the word elements in the signs at issue, their partly different orientation and the disparity between two of those word elements, namely ‘passion’ and ‘mieszko’.
61 In the light of those points of similarity, in particular that relating to the composition and overall structure of the signs at issue, and to their different aspects, which it correctly identified and weighted in view of the importance of the distinctive character of their different elements, the Board of Appeal was fully entitled to find that, overall, the global visual similarity of the signs at issue was, at the very least, average.
62 Consequently, the applicant’s arguments must be rejected as unfounded.
(3) The phonetic comparison
63 As regards the phonetic comparison of the signs at issue, the Board of Appeal found, in paragraphs 87 to 89 of the contested decision, that their pronunciation coincided only in so far as the word ‘cherry’ in the mark applied for was entirely included in the first part of the word ‘cherrissimo’ of the earlier mark, but differed in the rest of that word. The word ‘pralines’ is not pronounced, since it was practically imperceptible. The signs at issue differed in the pronunciation of the word ‘mieszko’ in the earlier mark and the word ‘passion’ in the mark applied for. Overall, the signs at issue had a low degree of phonetic similarity.
64 The applicant criticises the Board of Appeal’s assessment and submits that the overall phonetic impression produced by a sign is particularly influenced by the number and sequence of its syllables. There is no phonetic similarity between the word elements ‘mieszko pralines cherrissimo’, on the one hand, and ‘cherry passion’, on the other. The only concordance in the word elements ‘cherry’ and ‘cherrissimo’ concerns descriptive elements and cannot therefore form the basis of a phonetic similarity between the signs at issue as a whole, even to a low degree.
65 EUIPO disputes the applicant’s arguments.
66 First, in the present case, it is common ground that the marks at issue coincide in the elements ‘cherrissimo’, on the one hand, and ‘cherry’, on the other, which will be pronounced in a similar manner by the Polish part of the relevant public. It is also common ground that those word elements, in so far as they refer to a cherry, have only limited distinctiveness with regard to the goods in question (see paragraphs 42, 44 and 61 above). However, EUIPO correctly submits that the Board of Appeal was right to find that the only other word element of the mark applied for, ‘passion’, also had only limited distinctiveness (see paragraphs 42, 44 and 46 above). It follows that none of the word elements of the sign applied for is more distinctive than the other, with the result that the Board of Appeal cannot be criticised for having taken into account the phonetic similarity of the word elements ‘cherrissimo’ and ‘cherry’.
67 Next, in the light of its descriptive character and its small size, the Board of Appeal was right to find that the word element ‘pralines’ in the earlier mark was negligible and that it would not be pronounced (see paragraphs 41, 44 and 60 above). It follows that that word element has no bearing on the phonetic comparison of the signs at issue.
68 Lastly, the Board of Appeal did indeed point out that those signs differed in the element ‘mieszko’ in the earlier sign, which it described as distinctive (see paragraph 42 above), and by the element ‘passion’ of the sign applied for, which had only a limited distinctive character (see paragraphs 42, 44, 46 and 66 above).
69 It follows that the Board of Appeal correctly identified both the points of phonetic similarity of the signs at issue and the phonetic differences between them, while taking into account the importance of the distinctiveness of the respective elements.
70 Having regard to the distinctiveness of the word element ‘mieszko’ of the earlier mark, which has no counterpart in the mark applied for, and to the word element ‘passion’ of the latter mark, which, however, has only limited distinctiveness, the Board of Appeal was entitled to find that there was indeed a phonetic similarity between the marks at issue resulting from the phonetically similar word elements ‘cherrissimo’ and ‘cherry’, those word elements also having only reduced distinctiveness, and that that similarity had to be regarded as low.
71 Consequently, the applicant’s arguments must be rejected as unfounded.
(4) The conceptual comparison
72 As regards the conceptual comparison of the signs at issue, the Board of Appeal found, in paragraphs 90 to 93 of the contested decision, that a certain conceptual similarity stemmed from the fact that the two signs used images which coincided in their semantic content, namely a cherry dipped in chocolate, which was reinforced by the presence of the word elements ‘cherrissimo’ and ‘cherry’. However, in the light of the weak distinctiveness of that concept with regard to the goods concerned, the impact of that point of conceptual similarity in the global assessment of the likelihood of confusion is limited. The signs at issue also differed in the word elements ‘mieszko’ and ‘passion’, which would either be perceived as meaningless words or as evoking different concepts, such as a male first name and the intense pleasure that could be felt on tasting the goods covered by the marks at issue. Overall, the signs at issue were therefore conceptually similar only to a low degree.
73 The applicant submits that the Polish part of the relevant public perceives the word element ‘mieszko’ of the earlier mark as referring to the name of the undertaking manufacturing the goods marketed under the earlier mark. That public is therefore capable of distinguishing those goods from those of the applicant. The word element ‘mieszko’ has no meaning and does not evoke only a male first name in Poland. Since the rest of the elements of the earlier mark consist of elements that are either descriptive or that have a weak distinctive character, the presence of the word element ‘mieszko’ in the earlier mark should undoubtedly lead to the finding that the compared ‘designations’ are different.
74 EUIPO disputes the applicant’s arguments.
75 First of all, it should be borne in mind, as the Board of Appeal did, that it is apparent from the case-law that conceptual similarity may arise from the fact that the marks at issue use images with analogous semantic content (see judgment of 21 April 2010, Peek & Cloppenburg and van Graaf v OHIM – Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, EU:T:2010:152, paragraph 63 and the case-law cited). In the present case, the Board of Appeal was therefore right to find that a certain conceptual similarity between the signs at issue arose from the fact that they used images which have analogous semantic content – a cherry dipped in chocolate – which was in fact reinforced by the word elements ‘cherrissimo’ in the earlier mark and ‘cherry’ in the mark applied for. The Board of Appeal was also entitled to find that that cherry concept had only weak distinctiveness with regard to the goods in question (see paragraphs 42, 44, 46 and 66 above).
76 Next, as regards the word element ‘mieszko’, EUIPO is right to argue that any enhanced distinctiveness of that element as the applicant’s company name is irrelevant to the assessment of conceptual similarity. However, it is common ground that that word element corresponds not only to the applicant’s name but also to a male first name, which is why the Board of Appeal correctly found that it was distinctive with regard to the goods in question (see paragraphs 42 and 68 above). It follows that the Board of Appeal was fully entitled to conclude that that word element constituted a conceptual difference between it and the earlier mark.
77 Lastly, the Board of Appeal was also fully entitled to find that the word element ‘passion’ of the sign applied for, although having only reduced distinctiveness (see paragraphs 42, 44, 46, 66 and 68 above) also had no conceptual counterpart in the earlier sign.
78 Overall, having regard to the conceptual similarity of the signs at issue resulting from the reference to the concept of a cherry, and taking due account of the importance of the respective distinctiveness of the various elements of the signs, the Board of Appeal cannot be criticised for having concluded that, overall, the differences resulting from the word elements ‘mieszko’ and ‘passion’ reduced that conceptual similarity to such an extent that it should be classified as low, without, however, completely neutralising it, as the applicant submits.
79 Consequently, the applicant’s arguments must be rejected as unfounded.
(d) The likelihood of confusion
80 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).
81 The Board of Appeal found that the earlier mark had a highly distinctive character in Poland for cherry-flavoured chocolate pralines and boxes of chocolates with a cherry flavour which were covered by the general categories of ‘sweetmeats [candy]; confectionery’ in Class 30, for which the earlier mark was registered (paragraphs 95 to 103 of the contested decision). In the Board of Appeal’s view, that enhanced distinctiveness offset, at least to a certain extent, the fact that the earlier mark had elements with a weak or non-existent inherent distinctive character (paragraph 105 of the contested decision). Even though the global assessment of the likelihood of confusion often does not lead to a finding that there is such a likelihood if the marks at issue coincide in an element that is weakly distinctive with regard to the goods concerned, the existence of such a likelihood cannot, however, be ruled out in advance (paragraphs 108 to 110 of the contested decision). In the present case, the principle of imperfect recollection was of particular importance, given the low level of attention of the relevant public (paragraph 111 of the contested decision). As regards foodstuffs which are most often purchased in supermarkets, the figurative aspect of the marks at issue was of greater importance, which increased the likelihood of confusion between the marks at issue, since they are visually similar to an average degree (paragraphs 111 to 114 of the contested decision). The mark applied for reproduced the visual essence of the earlier mark, which enjoyed enhanced distinctiveness, giving rise to a likelihood of confusion on the part of the relevant Polish public with a low level of attention in relation to goods that are identical or similar to varying degrees. Consequently, overall, there is a likelihood of confusion between the marks at issue (paragraphs 115 to 117 of the contested decision).
82 The applicant disputes the Board of Appeal’s assessment. First, it submits that the Board of Appeal did not correctly assess the enhanced distinctiveness of the earlier mark. According to the applicant, the Board of Appeal did not examine whether it was the whole of the earlier mark or only the word element ‘mieszko’ that enjoyed enhanced distinctiveness. Nor did the Board of Appeal explain how evidence relating to a period prior to the registration of the earlier mark could justify the conclusion that such enhanced distinctiveness existed at the time when the trade mark application was filed or at the time when the contested decision was adopted. That evidence could have related to goods other than those marketed under the earlier mark, which the Board of Appeal did not examine.
83 Secondly, the applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion in the present case. It takes the view that the enhanced distinctiveness of the earlier mark, even if it were established, would have to influence the rest of the elements. According to the applicant, the name of the manufacturer ‘mieszko’ and the trade name of the product, ‘cherrissimo’, are clearly visible and distinctive in the earlier sign, which would enable the relevant public to associate those goods with Mieszko. The element ‘cherry passion’ in the mark applied for is a mark registered and used for many years before the date on which the trade mark application was filed and enjoys high recognition. Even if the relevant public were to be satisfied with the imperfect picture that it keeps in mind, it would still focus on the most dominant and recognisable elements, in the present case the word element ‘mieszko’. The representation of a cherry in chocolate is a widely used element to designate goods such as pralines, confectionery and sweets. If the signs at issue coincided in non-distinctive elements, there would be no likelihood of confusion unless the overall impression given by the marks at issue was highly similar or identical. In respect of elements of low distinctiveness, there may be a likelihood of confusion if the other elements were of low distinctiveness or if the other elements had an insignificant visual impact and the overall impression of the marks was similar. That is not the case with regard to the word element ‘mieszko’.
84 EUIPO disputes the applicant’s arguments.
85 In the first place, as is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
86 Consequently, any enhanced distinctiveness of the earlier mark on account of the public’s recognition of it, as the Board of Appeal found in the present case, is, in principle, assuming it is established, a factor conferring on that mark more extensive protection and is capable of supporting the finding of a likelihood of confusion with another mark.
87 In the second place, the parties agree, in essence, that the Board of Appeal was fully entitled to find, in paragraph 108 of the contested decision, that the global assessment of the likelihood of confusion did not often lead to a finding that there was a likelihood of confusion where the marks at issue coincide in an element that is weakly distinctive with regard to the goods, which in fact is consistent with the case-law (see judgment of 12 October 2022, Shopify v EUIPO – Rossi and Others (Shoppi), T‑222/21, EU:T:2022:633, paragraph 120 and the case-law cited).
88 However, it is also apparent from the case-law, as the Board of Appeal pointed out in paragraph 109 of the contested decision, that the global assessment of the likelihood of confusion must take into account all factors relevant to the circumstances of the case, including the distinctive character of the earlier mark. The finding that there is no such likelihood of confusion cannot, because of the interdependence of the relevant factors in that regard, be ruled out in advance and in any event (see judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 55 and the case-law cited).
89 Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of 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 (judgment of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61).
90 In the present case, as observed by EUIPO, it must be borne in mind that, even though the Board of Appeal found that the word elements and the parts of the figurative elements which refer to a cherry (which constitute elements of similarity of the signs at issue) were similar and had only limited distinctiveness, it is unequivocally clear from the contested decision that that is not the only aspect of similarity of the signs at issue noted by the Board of Appeal, as the applicant nevertheless appears to submit. As EUIPO correctly submits, the Board of Appeal found, in essence, and was correct to do so, that the specific reproduction and arrangement of the figurative elements and the colour palette used in the marks at issue, which are visually similar in that regard, did indeed have a certain distinctive character (see paragraphs 43, 44, 57 and 58 above). It follows that the similarities which the Board of Appeal took into account in concluding, in the context of a global assessment, that there was a likelihood of confusion, concern elements of those marks which have at least some distinctiveness and not just elements which have only reduced, if any, distinctive character.
91 In the third place, the Board of Appeal was right to find that, for the goods concerned, the visual aspect was particularly important. It is apparent from the case-law that goods which are generally sold side by side in supermarkets, department stores and other similar retail outlets are marketed in such a way that the relevant public usually perceives visually the mark designating those goods (see judgment of 18 November 2013, Preparados Alimenticios v OHIM – Rila Feinkost-Importe (Jambo Afrika), T‑377/10, not published, EU:T:2013:600, paragraph 61 and the case-law cited). That is the case with respect to the goods concerned here.
92 In the fourth place, the Board of Appeal was right to point out, in essence, in paragraph 111 of the contested decision, that the relevant public only rarely had the chance to make a direct comparison between the different marks but must place its trust in the imperfect picture of them that it has kept in its mind. That fact gives more weight to the elements which are particularly visible and easy to apprehend in the marks concerned such as, in this case, the figurative elements of the marks at issue (see judgment of 12 September 2007, Koipe v OHIM – Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 106 and the case-law cited).
93 In the fifth place, it is true that, in such circumstances, where the marks at issue are examined at the distance and speed at which the consumer, in a supermarket, selects the goods he or she is looking for, the differences between the signs at issue are more difficult to distinguish and the similarities are more apparent, since the average consumer perceives the mark as a whole and does not proceed to analyse its various details (judgment of 12 September 2007, La Española, T‑363/04, EU:T:2007:264, paragraph 110).
94 In the sixth place, even if the word element ‘mieszko’ has at least an average degree of distinctiveness (see paragraphs 42, 68 and 70 above) and even if it were accepted that that distinctiveness is enhanced, as the applicant claims, the difference between the signs at issue resulting from the absence of a counterpart for that element in the mark applied for would not therefore carry much greater weight than the similarities in the global assessment of the likelihood of confusion, as the applicant submits.
95 Furthermore, in so far as the applicant claims that the element ‘cherry passion’ is widely recognised, it is sufficient to note that it does not put forward any specific argument, or even any evidence, to substantiate that assertion, which must therefore be rejected. On the contrary, it follows from the foregoing (see paragraphs 42, 44, 46 and 66 above) that those word elements in the mark applied for have only weak inherent distinctiveness.
96 The word elements ‘mieszko’ and ‘cherry passion’ are not therefore sufficient to distinguish clearly the marks at issue, as the applicant claims.
97 In the seventh place, in so far as the applicant submits that the representation of a cherry in chocolate is a widely used element to designate goods such as pralines, confectionery and sweets, it must be borne in mind that the Board of Appeal specifically found that the representation of cherries in the signs at issue had only weak distinctiveness (see paragraphs 42, 44, 61 and 66 above). Moreover, the fact that the packaging of other goods may contain representations of a cherry dipped in chocolate which are similar to those in the marks at issue does not in any way detract from the finding that those marks resemble each other in that regard.
98 In the eighth place, it follows from the foregoing that the relevant Polish public displays a low level of attention (see paragraphs 24 and 25 above), that the goods in question are either identical or similar to varying degrees (see paragraph 36 above) and that the signs at issue are visually similar to an average degree (see paragraph 61), phonetically similar to a low degree (see paragraph 70 above) and conceptually similar to a low degree (see paragraph 78 above). It has also been found that the visual aspect was particularly important in respect of the goods in question (see paragraphs 91 to 93 above) and that the points of similarity of the signs at issue concerned not only elements of those signs with only reduced, or low, distinctiveness, but also elements with average distinctiveness (see paragraph 90 above).
99 As the Board of Appeal correctly found, the mark applied for reproduces the visual essence of the earlier mark, namely the overall composition and structure and the colour palette.
100 In such circumstances, the relevant Polish public, displaying a low level of attention and devoting it above all to the visual aspects of the similarity, might indeed believe that the goods concerned marketed under the marks at issue come from the same undertaking or from linked undertakings. It follows that, overall, there is a likelihood of confusion between the marks at issue on the part of the relevant Polish public, without it being decisive, in that regard, whether the earlier mark has enhanced distinctiveness.
101 Consequently, the Board of Appeal was justified in finding that there was such a likelihood of confusion on the part of the relevant Polish public, even if the earlier mark did not have enhanced distinctiveness. There is therefore no need to examine the arguments of the parties in that regard.
102 Since a likelihood of confusion on the part of the relevant Polish public is sufficient to reject the application for registration (see paragraph 26 above), the applicant’s first plea must be rejected as unfounded.
2. The second plea, alleging infringement of the principles of the protection of legitimate expectations and legal certainty
103 In support of its second plea, alleging infringement of the principles of the protection of legitimate expectations and legal certainty, the applicant submits, in essence, that the contested decision is not consistent with EUIPO’s decision-making practice. According to that practice, there would be no likelihood of confusion if the only consistent elements of the marks at issue had only weak distinctiveness or were devoid of distinctiveness.
104 EUIPO disputes the applicant’s arguments.
105 The decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are required to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, as EUIPO correctly submits, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
106 The Court of Justice has held that, in the light of the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. However, it added that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).
107 In the present case, it is apparent from the foregoing considerations, concerning the first plea, that the Board of Appeal was justified in finding that there was a likelihood of confusion between the marks at issue on the part of the relevant Polish public and therefore in rejecting the application for registration on that basis.
108 Accordingly, the applicant’s arguments alleging a previous decision-making practice contrary to the approach taken by the Board of Appeal in the contested decision are ineffective in so far as the applicant submits that there has been an infringement of the principle of legal certainty.
109 Furthermore, in accordance with settled case-law, the right to rely on the principle of the protection of legitimate expectations extends to any person with regard to whom an EU institution has given rise to justified hopes. A person may not plead infringement of that principle unless he has been given precise, unconditional and consistent assurances by a competent authority of the European Union (see judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 79 and the case-law cited).
110 An alleged decision-making practice of an EU institution cannot be regarded, in any event, as giving precise, unconditional and consistent assurances to a particular person to whom the decisions that allegedly established that decision-making practice were not addressed.
111 The applicant’s arguments alleging infringement of the principle of the protection of legitimate expectations must therefore be rejected as unfounded.
112 It follows that the second plea must also be rejected.
3. The third plea, alleging infringement of the first sentence of Article 94(1) and Article 95(1) of Regulation 2017/1001
113 In support of its third plea, the applicant submits that the Board of Appeal failed to take into account all the arguments relevant to the case as regards whether the earlier mark as a whole had enhanced distinctiveness.
114 EUIPO disputes the applicant’s arguments.
115 In that regard, it is sufficient to note that the Board of Appeal could have found that there was a likelihood of confusion even in the absence of enhanced distinctiveness of the earlier mark (see paragraphs 100 and 101 above).
116 It follows that the third plea, alleging procedural errors relating to the Board of Appeal’s assessment of the enhanced distinctiveness of the earlier mark, cannot vitiate the contested decision and must therefore be rejected as ineffective.
117 In the light of all the foregoing considerations, since none of the pleas in law relied on by the applicant in support of its claims both for annulment and for alteration are to be upheld, the action must be dismissed in its entirety.
IV. Costs
118 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
119 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was convened, it is appropriate to decide that each party must bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Costeira | Zilgalvis | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 29 November 2023.
V. Di Bucci | | S. Papasavvas |