JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
19 September 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark VeGa one — International registration designating the European Union in respect of the earlier word mark Vegas — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑176/17,
WhiteWave Services, Inc., established in Broomfield, Colorado (United States), represented by H. Lindström, lawyer, authorised to replace Sequel Naturals ULC,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Carlos Fernandes, residing in Groß-Umstadt (Germany), represented by T. Stein, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 9 January 2017 (Case R 2466/2015-1), relating to opposition proceedings between Mr Carlos Fernandes and Sequel Naturals,
THE GENERAL COURT (Fourth Chamber)
composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 13 March 2017,
having regard to the response of EUIPO lodged at the Court Registry on 13 June 2017,
having regard to the response of the intervener lodged at the Court Registry on 26 June 2017,
having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 15 and 22 May 2018,
having regard to the application for replacement of a party, under Article 174 of the Rules of Procedure of the General Court, lodged by the applicant at the Court Registry on 13 March 2019 and the observations of EUIPO and of Sequel Naturals lodged at the Court Registry on 20 March and 1 April 2019, respectively,
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,
gives the following
Judgment
Background to the dispute
1 On 28 February 2014, Sequel Naturals ULC, previously Sequel Naturals Ltd., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 5, 29, 30 and 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 5: ‘Nutritional, dietary and food supplements for general health and well-being and to enhance physical and mental performance; nutritional supplements for general health and well-being and to enhance physical and mental performance namely, protein powders for human consumption for use as a food additive, hemp protein dietary supplements, mineral supplements. vitamin supplements, vitamins and meal replacements namely drink mixes, meal replacement bars, powders, ready to drink meal replacement beverages, shake mixes and smoothies; nutritional supplements for general health and well-being and to enhance physical and mental performance in gel form; sacha inchi protein/fibre powders’;
– Class 29: ‘Energy bars derived from nuts and seeds, oil blends derived from seeds, sacha inchi seed butters, sacha inchi seed milks, nut and seed milk beverages, sacha inchi seeds and sacha inchi seed oils’;
– Class 30: ‘Granola, ready to eat cereals, snack bars derived from nuts and seeds, nutritional beverage and food flavourings and fortifications derived from nuts, seeds and herbs’;
– Class 32: ‘Energy drinks, smoothie mixes and sport drinks’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2014/129 of 15 July 2014.
5 On 15 October 2014, the intervener, Mr Carlos Fernandes, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on a number of earlier German and international registrations including the international registration designating the European Union in respect of the word mark Vegas, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) on 19 April 2012 under No 1 116 513. The opposition was directed against all the goods referred to in paragraph 3 above.
7 The earlier mark designates in particular goods and services in Classes 5, 29, 30, 32, 35 and 44, which correspond, for each of those classes, to the following description:
– Class 5: ‘Foods supplements with a base of vitamins, plant extracts, amino acids, minerals and trace elements, either separate or in combination, in particular in the form of instant products, tablets, dragées (coated tablets), capsules and drinks; dietetic products; healthcare/sanitary preparations; pharmaceutical healthcare products; vitamin preparations; herbal teas’;
– Class 29: ‘Food supplements with a base of proteins, fats, with added fatty acids, vitamins, minerals, trace elements, either separate or in combination, in particular in the form of instant products, tablets, dragées (coated tablets), capsules and drinks; dietetic products’;
– Class 30: ‘Food supplements with a base of carbohydrates, dietary fibers, with added vitamins, minerals, trace elements, either separate or in combination, in particular in the form of instant products, tablets, dragées (coated tablets), capsules and drinks; herbal teas, tea; dietetic products’;
– Class 32: ‘Non-alcoholic drinks; non-alcoholic fruit extracts; fruit drinks and fruit juices; preparations and essences for the preparation of beverages; syrups; aloe vera juices; vegetable juices; tablets and powders for effervescent beverages’;
– Class 35: ‘Wholesale and retail services for the aforesaid goods of the classes 5, 29, 30 and 32, also via the Internet, mail order trading and stationary trading as well as via a teleshopping channel’;
– Class 44: ‘Medical services; health and beauty care’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9 On 14 October 2015, the Opposition Division upheld the opposition in respect of all the goods covered by the mark applied for, with the exception of ‘food flavourings derived from nuts, seeds and herbs’ in Class 30.
10 On 11 December 2015, Sequel Naturals ULC filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision, inasmuch as it upheld the opposition.
11 By decision of 9 January 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In its decision, having noted that the parties had not contested the Opposition Division’s findings that the goods at issue were identical to those of the earlier mark, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 as regards the commercial origin of those goods. However, it observed that the opponent had not appealed the contested decision in so far as the Opposition Division rejected the opposition with respect to ‘food flavourings derived from nuts, seeds and herbs’ in Class 30 and, therefore, according to the Board of Appeal, the Opposition Division’s decision had become final in that regard.
12 In particular, the Board of Appeal made the following findings:
– the relevant public consisted of the general public and specialists, whose level of attention varied from average to high; in addition, the relevant territory was the whole European Union;
– there was visual similarity between the marks at issue since the first element of the mark applied for, the ‘vega’ element, which was the most eye-catching of the mark’s elements, reproduced the first four letters of the earlier mark, and the second element ‘one’, understood throughout the European Union as meaning ‘first’, as well as the figurative elements of the mark applied for, were of lesser importance in the overall impression conveyed by the mark applied for;
– there was a strong phonetic similarity between the marks since the first four letters of the earlier mark and the mark applied for were practically identical;
– the conceptual comparison of the marks is neutral as neither the word ‘vega’ nor the word ‘vegas’ had a clear meaning for the EU public. Although it could not be excluded that some consumers could perceive the earlier mark as a reference to the city of Las Vegas (Nevada, United States), there was no strong evidence that they would generally leave out the first word ‘las’ and refer to the city only by its last word ‘vegas’. In any case, the conceptual comparison of the signs at issue is neutral because the word elements of the contested sign VEGA ONE have no clear meaning;
– given that the goods, which had been found to be identical, are often purchased orally, the slight phonetic difference between the signs at issue was likely to go unnoticed, leading to a likelihood of confusion as to the commercial origin of the goods. Similarly, when the goods are bought directly in supermarkets or in specialist shops, there is a likelihood of confusion due to the fact that the most eye-catching element of the mark applied for, namely the word ‘vega’, was almost identical to the earlier mark. Such a risk existed even for consumers having a higher degree of attention.
Forms of order sought
13 Sequel Naturals claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
14 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order Sequel Naturals to pay the costs.
15 The intervener contends that the Court should dismiss the action.
Law
Application for replacement of a party
16 By letter of 13 March 2019, the representative of Sequel Naturals, providing evidence of a mandate given by WhiteWave Services, Inc., stated that that company was now the proprietor of the application for registration at issue and wished to replace Sequel Naturals. In particular, the representative enclosed with his letter a notification, dated 20 November 2018, of the registration with EUIPO of the transfer of the application for registration in question to WhiteWave Services, Inc.
17 Pursuant to Article 176(1) to (3) of the Rules of Procedure of the General Court, once the parties have been notified of the application for replacement and had the opportunity to submit their observations, the decision on the application for replacement is to take the form of a reasoned order of the President or to be included in the decision closing the proceedings.
18 In accordance with Article 174 of the Rules of Procedure, where an intellectual property right affected by the proceedings has been transferred to a third party by a party to the proceedings before the Board of Appeal of EUIPO, the successor to that right may apply to replace the original party in the proceedings before the General Court. Article 176(5) of the Rules of Procedure specifies that, if the application for replacement is granted, the successor to the party who is replaced must accept the case as he finds it at the time of that replacement. He is bound by the procedural documents lodged by the party whom he replaces.
19 Furthermore, it is clear from Articles 17 and 24 of Regulation No 207/2009 (now Articles 20 and 28 of Regulation 2017/1001) that, after entry of the transfer of an application for an EU trade mark in the EUIPO Register, the successor may rely on the rights deriving from that application.
20 In the present case, the representative of Sequel Naturals, the former proprietor of the application for registration at issue, informed the Court of the transfer of that application to WhiteWave Services and requested, as a representative of the latter, that WhiteWave Services be authorised to replace Sequel Naturals in the present proceedings. As stated in paragraph 16 above, that representative also produced before the Court a notification of registration with EUIPO of the transfer of the application for registration in question to that company.
21 Consequently, since the intervener did not submit any observations on the application for replacement within the time limit set and since EUIPO and Sequel Naturals stated that they had no objections to that application, WhiteWave Services, Inc. is granted leave to replace Sequel Naturals as the applicant in the present proceedings.
The claim for annulment
22 In support of its action, the applicant, WhiteWave Services, puts forward a single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It claims that there is no likelihood of confusion between the earlier mark and the mark applied for.
Preliminary observations
23 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trademarks, 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.
24 It is established case-law, that the risk the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and take account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (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 and judgment of 24 October 2017, Keturi kambariai v EUIPO — Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 71).
25 Additionally, where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the 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 No 207/2009 exists in part of the European Union (see judgment of 5 May 2015, Skype v OHIM — Sky et Sky IP International (SKYPE), T‑183/13, not published, EU:T:2015:259, paragraph 18 and the case-law cited).
The relevant public and the relevant territory
26 In the present case, since the earlier mark is an international registration designating the European Union, the Board of Appeal rightly decided, in paragraph 16 of the contested decision, that the relevant territory for the purposes of assessing the likelihood of confusion was the entire European Union.
27 In addition, having regard to the nature of the goods covered, which are mainly aimed at improving consumers’ state of health, it must be held, in accordance with the finding of the Board of Appeal, that the relevant public consists of both the general public and specialists. Moreover, that conclusion is not disputed by the applicant.
The level of attention of the relevant public in the relevant territory
28 In the present case, the Board of Appeal found in paragraph 15 of the contested decision that the goods at issue were foodstuffs, food supplements and drinks that were mainly aimed at improving the consumers’ state of health in relation to nutrition and dietetics, and that, accordingly, the relevant public’s level of attention varied from average to high, as noted by the Opposition Division.
29 The applicant disputes that finding. It claims that, in view of the nature of the goods, particularly those in Class 5, the level of attention of the relevant public should have been classified as high. In that regard, the applicant submits that, as regards vitamins, food supplements, medical and pharmaceutical preparations, it may be assumed that consumers of those goods take particular care of their health and that, accordingly, in view of the judgment of 13 May 2016, Market Watch v EUIPO — Glaxo Group (MITOCHRON) (T‑312/15, not published, EU:T:2016:303), the level of attention of the relevant public, composed of average end consumers and specialists, must be regarded as high. The applicant also claims that the goods in question are acquired only after careful consideration and often after receiving recommendations from a personal trainer, dietician or similar. In addition, it specifies in its replies to the questions put by the Court that, even though it is possible to purchase those goods without a medical prescription, the mere fact that they may be prescribed by a doctor in connection with medical treatment demonstrates that they are goods to which consumers pay a high level of attention.
30 EUIPO and the intervener dispute the applicant’s arguments.
31 It follows from the case-law that, 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 27 June 2017, Deutsche Post v EUIPO — Media Logistik (PostModern), T‑13/15, not published, EU:T:2017:434, paragraph 26 and the case-law cited).
32 In the present case, as regards, first, the goods in Class 5, those goods include various kinds of food supplements, dietary products, sanitary preparations and pharmaceutical healthcare products.
33 In that regard, it is apparent from case-law that the relevant public’s degree of attentiveness with regard to vitamins, food supplements, herbal, medical and pharmaceutical preparations is higher than average because consumers who are interested in that type of product take particular care of their health so that they are less likely to confuse different versions of such products (see, to that effect, judgments of 5 April 2006, Madaus v OHIM — Optima Healthcare (ECHINAID), T‑202/04, EU:T:2006:106, paragraph 33, and of 8 July 2009, Laboratorios Del Dr. Esteve v OHIM — Ester C (ESTER-E), T‑230/07, not published, EU:T:2009:252, paragraph 36).
34 In addition, it has been held that pharmaceutical preparations and substances in Class 5 share the core trait of being marketed on the recommendation of or through a health professional, prescribing doctor, pharmacist or veterinarian (see, to that effect, judgments of 11 June 2014, Golam v OHIM — meta Fackler Arzneimittel (METABIOMAX), T‑281/13, not published, EU:T:2014:440, paragraph 31, and of 13 May 2016, MITOCHRON, T‑312/15, not published, EU:T:2016:303, paragraph 21). In view of their direct effect on the health of the user and the fact that they are intended to treat specific diseases, consumers must be regarded as generally well informed and particularly attentive and circumspect; thus the level of attention of the relevant public will be high, both for the public at large and for the professional public (see, to that effect, judgment of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM — Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 32, and of 13 December 2017, Laboratorios Ern v EUIPO — Ascendo Medienagentur (SLIMDYNAMICS), T‑700/16, not published, EU:T:2017:896, paragrph 24).
35 Consequently, in the light of the case-law cited in paragraphs 33 and 34 above, it must be concluded that the relevant public for the goods in Class 5, which are intended to improve the consumer’s health and may, as regards pharmaceutical preparations and substances, be marketed on the recommendation of or through a professional, will have a level of attention that is higher than average, or even high.
36 As regards, secondly, the goods in Classes 29 and 30, which also include various kinds of food supplements and dietary and herbal preparations, as is clear from the case-law cited in paragraph 33 above, the level of attention of the relevant public must be considered to be higher than average, given that consumers of the goods in question take particular care of their health.
37 As regards, thirdly, the goods in Class 32, namely ‘non-alcoholic drinks; non-alcoholic fruit extracts; fruit drinks and fruit juices; syrups; aloe vera juices; vegetable juices; tablets and powders for effervescent beverages’, it is clear that these goods do not, as a general rule, constitute vitamins, food supplements or herbal, medical and pharmaceutical preparations within the meaning of the case-law cited in paragraphs 33 and 34 above. Since they are everyday consumer goods, they are, as a general rule, aimed at the average consumer, who is reasonably well informed and reasonably observant and circumspect and whose level of attention is not above average (see, to that effect, judgment of 25 November 2015, Masafi v OHIM — Hd1 (JUICE masafi), T‑248/14, not published, EU:T:2015:880, paragraph 19), but medium.
38 It follows from all the above that consumers of the goods in question will, depending on the type of goods, have a level of attention that is average, higher than average or high. Therefore, the Opposition Division and subsequently the Board of Appeal were correct in finding that, depending on the goods concerned, the level of attention of the relevant public varies from average to high.
39 That conclusion is not called into question by the applicant’s argument that all the goods covered by the mark applied for may be marketed on the recommendation of or through a health professional, prescribing doctor, pharmacist or veterinarian, or are nutritional supplements for medicinal use and that, therefore, the level of attention will always be high. The applicant has not adduced any evidence showing that all of the goods covered by the mark applied for, and not just the pharmaceutical products referred to in the case-law cited in paragraph 34 above, are generally marketed in that way.
Comparison of the goods
40 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño Original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
41 In addition, it should be borne in mind that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of T‑346/04 Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
42 In the present case, the Board of Appeal found that the goods covered by the earlier mark and those covered by the mark applied for which are at issue in the present case were identical.
43 With regard to the comparison of goods, there are no grounds to call into question the findings of the Board of Appeal, which, moreover, are not disputed by the parties.
The comparison of the signs
44 As can be seen from consistent case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the signs in question, must be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
45 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 in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite 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 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).
46 That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components of the mark are negligible in the overall impression created by that mark. Moreover, the fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible (Judgment of 20 September 2007, Nestlé v OHIM, C 193/06 P, not published, EU:C:2007:539, paragraph 43).
47 In the present case, in paragraph 26 of the contested decision, the Board of Appeal found that the marks at issue were similar overall.
– The distinctiveness of the components of the mark applied for
48 In its assessment of the similarity of the signs, the Board of Appeal concluded, first, that the word element ‘vega’ of the mark applied for was the most eye-catching element, that it had no meaning in relation to the goods at issue and that it retained an independent distinctive role in the overall impression conveyed. Next, it found that the word element ‘one’ was less distinctive, due to its grey tone, its position under the first word and the fact that it was an English word understood throughout the European Union. Lastly, it noted that the figurative elements consisted primarily of a representation of leaves and would thus be perceived as an allusion to the natural ingredients or composition of the food products covered by the mark applied for.
49 The applicant disputes the Board of Appeal’s assessment on the ground that none of the elements can be regarded as more dominant than any other. In particular, it disputes the assertion that the word element ‘one’ is less distinctive than the word element ‘vega’ solely because it is written in a light grey colour. In addition, it claims that the Board of Appeal erred in finding that the word element ‘one’ and the figurative elements must be regarded as negligible. It adds that the Board of Appeal failed to take into account the stylised shape of the letter ‘v’ in ‘vega’.
50 EUIPO and the intervener dispute the applicant’s arguments.
51 According to case-law, in assessing the dominant character of one or more given components of a composite mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition, and as an ancillary point, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
52 In the present case, it should be noted, as observed by the Board of Appeal, that the trade mark applied for is a composite mark in the shape of a rectangle including the words ‘vega’ and ‘one’, the former above the latter, a graphic design of leaves and rectangular shapes in different grey tones.
53 In that regard, in the first place, the Board of Appeal rightly noted that when a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more readily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see Judgment of 31 January 2012, Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 38 and the case-law cited).
54 As regards, more specifically, the word element ‘vega’, it must be pointed out, first, that consumers in general pay more attention to the first part of a mark than to the ending (see, to that effect, Judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello et Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 19 May 2011, PJ Hungary v OHIM — Pepekillo (PEPEQUILLO), T‑580/08, EU:T:2011:227, paragraph 77 and the case-law cited). Secondly, as is apparent from paragraph 21 of the contested decision, the element ‘vega’ clearly plays an independent visual role in the mark as it is separate from the word element ‘one’ and from the stylised leaves on the right-hand side of the mark.
55 Further, as regards the word element ‘one’, the Board of Appeal rightly noted in paragraph 21 of the contested decision that it is situated below the word element ‘vega’ and is therefore less distinctive than the latter element given that, as stated in paragraph 54 above, the public usually pays more attention to the first part of a mark.
56 However, contrary to the claims of the applicant, the Board of Appeal did not base that finding of lesser distinctiveness only on the position of the word element ‘one’ in the mark applied for. It also noted that that element was written in a light grey font, which was clearly intended to make it less noticeable. Furthermore, in paragraph 21 of the contested decision, the Board of Appeal rightly pointed out that the word element ‘one’ is a very common English word meaning ‘first’ or the cardinal number ‘one’. Thus, members of the relevant public, even those with no knowledge of English, would understand that word to mean ‘first’ or the cardinal number ‘one’ and might think that that term designates a range of goods.
57 In the second place, the figurative elements of the mark applied for are less distinctive. First, as found by the Board of Appeal, the stylised leaves next to the word elements ‘vega’ and ‘one’ may be perceived as a simple allusion to the natural ingredients or composition of the food products covered by the mark applied for, which, moreover, is not disputed by the parties. Secondly, the stylised shape of the letter ‘v’ in the word element ‘vega’, which includes a very small leaf on the upper left of the letter ‘v’, will be noticed by the relevant public only after a detailed examination of the mark applied for. Therefore, even if, as argued by the applicant, the Board of Appeal failed to take account of the shape of the letter ‘v’, it had no effect on the assessment of the visual similarity of the marks.
58 In the third place, it is clear from paragraph 23 of the contested decision that, contrary to the applicant’s claims, the Board of Appeal did not deem the figurative elements of the mark applied for and the word element ‘one’ to be negligible. It considered that those elements would ‘not be overlooked by consumers’ but nevertheless found that they were of ‘lesser importance’ in the overall impression conveyed by the sign since they were less distinctive.
59 It follows from the foregoing that the Board of Appeal did not make an error of assessment in finding, in essence, in paragraph 21 of the contested decision, that the word element ‘vega’ was the most distinctive element in the overall impression conveyed by the mark applied for.
– Visual similarity
60 The Board of Appeal found that the marks were visually similar on account of the fact that the element ‘vega’ in the mark applied for also appeared in its entirety in the earlier mark.
61 The applicant disputes that assessment on the ground that the Board of Appeal placed too much importance on the similarity between the word elements ‘vega’ in the mark applied for and ‘vegas’ in the earlier mark. In the applicant’s view, the other word and figurative elements of the mark, which act as a counterbalance, should have been taken into account and would have supported the finding that the mark applied for creates an overall visual impression that is distinct from that of the earlier sign.
62 EUIPO and the intervener dispute the applicant’s arguments.
63 In the present case, the marks at issue are visually similar since the first four letters of the earlier mark also form the first word element of the mark applied for. The earlier word mark is composed of five letters, namely ‘v’, ‘e’, ‘g’, ‘a’ and ‘s’ which form the word ‘vegas’. The first four letters also form the word element ‘vega’.
64 Admittedly, the marks also contain differences in so far as the mark applied for contains the word ‘one’ in addition to different figurative elements, namely the stylised letter ‘v’ in the term ‘vega’, the graphic design of leaves and a number of rectangles in grey tones. Nevertheless, as found by the Board of Appeal in paragraph 23 of the contested decision, those elements are less distinctive than the word element ‘vega’, which will be noticed first by consumers (see paragraph 59 above).
65 Furthermore, the addition of an ‘s’ at the end of the word ‘vega’ in the earlier mark has a limited impact and is not capable, in itself, of reducing the degree of similarity between the marks, given that the first four letters of the earlier mark are identical to the first word element of the mark applied for. The applicant has not put forward any evidence enabling the Court to consider that the case-law relating to the significance of the first component of a word mark cited in paragraph 53 above is not applicable in the present case.
66 It follows that, contrary to the claims of the applicant, the differences between the marks are not sufficient to rule out any visual similarity between them, given that the most eye-catching visual element of the mark applied for, namely the element ‘vega’, is present in its entirety in the earlier mark.
67 Accordingly, the Board of Appeal did not make an error of assessment in holding that the marks are visually similar.
– Phonetic similarity
68 The Board of Appeal found that there was a strong phonetic similarity between the marks, since the element ‘vega’, which is placed at the beginning of the mark applied for and to which consumers will normally attach more importance, is the same as the first four letters ‘v’ ‘e’ ‘g’ ‘a’ of the earlier mark.
69 The applicant disputes that assessment of the Board of Appeal on the ground that the mark applied for contains two words and that the word ‘one’ will be clearly pronounced by the relevant public. It argues that the marks in question are short and that, accordingly, even small differences are capable of creating a distinct overall impression. It adds that the pronunciation of the mark applied for, which consists of three syllables, is very different to that of the earlier mark, which ends in the letter ‘s’ and is pronounced in the same way as the city of Las Vegas.
70 EUIPO and the intervener dispute the applicant’s arguments.
71 In the first place, it is clear that the applicant’s argument that the Board of Appeal did not take into account the word element ‘one’ in the phonetic comparison of the signs has no factual basis. It is apparent from paragraph 24 of the contested decision that the Board of Appeal considered that that element would be pronounced by the relevant public. Nevertheless, as stated in paragraph 58 above, the word element ‘one’ is less distinctive. Therefore, in the light of the case-law cited in paragraphs 44 and 45 above, the Board of Appeal was correct in considering, in paragraph 24 of the contested decision, that the element ‘one’ was not a decisive factor in the phonetic comparison of the signs at issue.
72 In the second place, it should be noted that the element ‘vega’ in the mark applied for is composed of two syllables, namely ‘ve’ and ‘ga’. The element ‘vegas’ in the earlier mark is itself composed of two syllables, ‘ve’ and ‘gas’, which are very similar to the two syllables described above. Thus, the Board of Appeal did not make an error of assessment in considering that, phonetically, the element ‘vega’ in the contested sign was practically identical to the element ‘vegas’ in the earlier mark.
73 In addition, as stated in paragraph 54 above, the public generally pays more attention to the first part of a mark than to the end. Therefore, even if the element ‘one’, which is less distinctive on account of its position under the word element ‘vega’, is pronounced by the relevant public, the Board of Appeal was fully entitled to find, in paragraph 24 of the contested decision, that there is a strong phonetic similarity between the signs at issue.
74 That conclusion cannot be invalidated by the applicant’s argument that, in the case of short trade marks, where each letter is important, any differences, even small differences, are capable of creating a distinct overall impression. First, the mark applied for, which consists of three syllables, cannot be considered to be particularly short. Secondly, in view of the presence of the most distinctive element, ‘vega’ in the mark applied for, the similarities between the earlier mark and the element ‘vega’ in the mark applied for outweigh the dissimilarities between those marks and, accordingly, in the overall phonetic assessment, those signs are highly similar.
– Conceptual similarity
75 The Board of Appeal found that neither the word ‘vega’ nor the word ‘vegas’ have any clear meaning for the EU public. Although it could not be ruled out that some consumers may perceive the earlier mark as a reference to the city of Las Vegas, there is no reason to assume that consumers would generally connect the single word ‘vegas’ to that city. In any event, since the word elements of the contested sign ‘vega one’ have no clear meaning, the conceptual comparison of the signs is neutral.
76 The applicant submits that the term ‘vegas’ has a strong semantic value connected to the city of Las Vegas and that a particular geographical location may have a strong semantic value which should be taken into account in the conceptual comparison of marks. Furthermore, the applicant claims that the word ‘vega’ is the name of a star in the Lyra constellation and is likely to be associated with ‘vegan’ or ‘vegetarianism’ by consumers. It thus maintains that the marks are conceptually different.
77 EUIPO and the intervener dispute the applicant’s arguments.
78 In the present case, in paragraph 25 of the contested decision, the Board of Appeal considered two possibilities, both leading to the same conclusion that the conceptual comparison of the signs is neutral. As a first possibility, the Board of Appeal considered, in essence, that, although it could not be excluded that some EU consumers would perceive the earlier sign ‘vegas’ as a reference to the city of Las Vegas, the terms ‘vega’ and ‘vegas’ have no clear meaning for the public and, therefore, the conceptual comparison of the signs is neutral. As a second possibility, the Board considered, in essence, that, even if the earlier mark VEGAS had a clear meaning for the EU public, the conceptual comparison would still be neutral.
79 As regards the first possibility, it should be noted that, even though the Board of Appeal acknowledged that part of the relevant public might perceive the term ‘vegas’ as a reference to the city of Las Vegas, it did not specify which part of the relevant public.
80 In that regard, it must be borne in mind that it is sufficient, in order for an application for registration to be refused under Article 8(1)(b) of Regulation No 207/2009, that the likelihood of confusion can be established for a significant part of the relevant public (see, to that effect, judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 38). It follows that, in order to conclude that the term ‘vegas’ has no meaning for the EU public in general, despite the fact that certain consumers may understand that term, the Board of Appeal was required to assess whether that term had no meaning for a significant part of that public.
81 The Board of Appeal did not in any way specify whether the part of the relevant public that might perceive the earlier sign ‘vegas’ as a reference to the city of Las Vegas represented a significant part of the relevant public or not, despite the fact that the applicant submitted evidence to establish the meaning of that term in at least some EU countries. As a consequence, the Board of Appeal did not sufficiently substantiate its conclusion that the relevant public will not understand the meaning of the term ‘vegas’, as put forward by the applicant.
82 As regards the second possibility considered by the Board of Appeal, under which the term ‘vegas’ has a meaning for the relevant public, it must be pointed out that, in such a case, a conceptual comparison of the signs is possible (see, to that effect, judgment of 9 March 2012, EyeSense v OHIM — Osypka Medical (ISENSE), T‑207/11, not published, EU:T:2012:121, paragraph 34). In such a situation, the comparison is made between a sign which has a meaning, such as ‘vegas’ in the present case, and a sign which has no meaning, such as ‘vega one’ in the present case. Such signs are conceptually different; therefore, their conceptual comparison cannot be neutral. The Board of Appeal therefore erred in considering, in paragraph 25 of the contested decision, that the conceptual comparison between the signs at issue would still be neutral under that second possibility.
83 It follows from the foregoing that the Board of Appeal did not make an error of assessment in concluding that there is some visual similarity and strong phonetic similarity between the signs at issue. However, the Board of Appeal did not sufficiently substantiate its finding that the term ‘vegas’ had no meaning for the relevant EU public and was wrong to consider that, even if the earlier mark had a meaning, the conceptual comparison of the signs would still be neutral since the mark applied for had no meaning.
84 In those circumstances, it is necessary to examine whether the errors made by the Board of Appeal when comparing the signs at issue conceptually may have impacted its conclusion on the global assessment of the likelihood of confusion.
The likelihood of confusion
85 In paragraph 29 of the contested decision, the Board of Appeal, after recalling that the goods concerned had been found to be identical to the goods covered by the earlier mark, stated that those goods are often purchased orally and that the slight phonetic difference between the first element of the mark applied for and that of the earlier mark was likely to go unnoticed; thus creating a likelihood of confusion as to the commercial origin of the goods in question. Furthermore, the Board of Appeal considered that when the goods are purchased ‘on sight’, since consumers were unlikely to have the opportunity to compare the signs directly, the similarity between the most eye-catching element of the mark applied for, ‘vega’, and the earlier mark created a likelihood of confusion between those marks. It found that the additional element ‘one’ in the contested sign did not diminish that likelihood as it would lead consumers to believe that it was the ‘first of a series’ of VEGA products or, in the case of confusion, VEGAS products. Thus, in paragraph 30 of the contested decision, the Board of Appeal concluded that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 could not be excluded with regard to the goods at issue, which had been found to be identical, even for consumers having a high degree of attention.
86 The applicant disputes the Board of Appeal’s assessment on the ground that, first, it failed to take into account the fact that the degree of attention of the relevant public varies depending on the goods in question Secondly, the applicant disputes the Board of Appeal’s finding that the goods in question are purchased orally. According to the applicant, the consumers of the goods in question buy those goods primarily in shops or via the internet. Thus, it claims that, above all, account must be taken of the visual similarity between the marks and of the fact that, in the present case, there is no such similarity. Thirdly, in the applicant’s view, a consumer who wishes to purchase the goods of the opponent will remember that experience because of the undisputable reference to the famous city of Las Vegas and there is thus no risk that the consumer will accidentally purchase a product under the mark applied for since that mark lacks the association through which the consumer remembers the goods of the opponent.
87 EUIPO and the intervener dispute the applicant’s arguments.
88 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).
89 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).
90 In the first place, with regard to the similarity of the goods, as stated in paragraph 43 above, the goods covered by the earlier mark are identical to the goods covered by the mark applied for.
91 In the second place, as regards the similarity between the signs, it is clear from paragraphs 67 and 73 above that the Board of Appeal was correct in finding that the signs were visually similar and had a strong phonetic similarity.
92 Conceptually, it is clear from paragraphs 81 and 82 above that the Board of Appeal failed to substantiate its conclusion regarding the term ‘vegas’ having no meaning and indeed erred in law by concluding that the conceptual comparison of the signs was neutral. Nevertheless, even if it had to be concluded, as argued by the applicant, that the signs are conceptually different, such a difference would not invalidate the finding in the contested decision that there is a likelihood of confusion in the present case.
93 Admittedly, as the applicant submits, it is apparent from the case-law that conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned (judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20; of 23 March 2006, Mülhens v OHIM, C‑206/04 P, EU:C:2006:194, paragraph 35; and of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98).
94 However, in the present case, it is clear from paragraph 29 of the contested decision that the goods covered by the mark applied for and those covered by the earlier mark are often purchased orally. In that regard, the applicant’s argument that the goods in question are purchased primarily in shops or via the internet and that, therefore, greater importance should be given to the visual appearance of the marks at issue, is not based on any evidence and thus must be rejected. In those circumstances, in view of the strong phonetic similarity between the signs and their visual similarity, any conceptual differences that might be found between the signs are not capable of counteracting their similarities in the present case.
95 Therefore, the applicant cannot rely on its alleged perception of the term ‘vegas’ by the relevant public to support its claim that the signs at issue are not similar overall and that there is no likelihood of confusion.
96 It is also appropriate to reject the applicant’s argument that the Board of Appeal failed to take account of the level of attention of consumers. It is sufficient to note, first, that the Board of Appeal, as pointed out in paragraph 38 above, did not make an error of assessment in considering that the level of attention of consumers varied from average to high, depending on the goods, and, secondly, that the Board found that there was a likelihood of confusion even for consumers with a high level of attention.
97 Accordingly, the Board of Appeal was fully entitled to find, in paragraph 30 of the contested decision, that there was a likelihood of confusion between the mark applied for and the earlier mark.
98 In the light of all the foregoing, the action must be dismissed in its entirety.
Costs
99 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. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by the latter.
100 Since the intervener has not applied for costs, he must be ordered to bear his own costs, in accordance with Article 138(3) of the Rules of Procedure.
On those grounds,
THE GENERAL COURT (Fourth Chamber),
hereby:
1. Grants WhiteWave Services, Inc. leave to replace Sequel Naturals ULC as applicant;
2. Dismisses the action;
3. Orders WhiteWave Services to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO);
4. Orders Mr Carlos Fernandes to bear his own costs.
Kanninen | Calvo-Sotelo Ibáñez-Martín | Reine |
Delivered in open court in Luxembourg on 19 September 2019.