JUDGMENT OF THE GENERAL COURT (Third Chamber)
8 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark POLLEN + GRACE – Earlier EU figurative mark Grace – 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‑41/23,
Pollen + Grace Ltd, established in London (United Kingdom), represented by P. Johnson, Barrister-at-Law, and L. Buckley, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Zajfert, M. Eberl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Grace Foods Ltd, established in Castries (Saint Lucia),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, I. Nõmm and G. Steinfatt (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 12 September 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Pollen + Grace Ltd, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2022 (Case R 1815/2021-4) (‘the contested decision’).
Background to the dispute
2 On 14 August 2017, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 Following the restriction made during the proceedings before EUIPO, the mark applied for covered goods and services in Classes 29, 30, 39 and 43 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
– Class 29: ‘Ready meals consisting wholly or substantially wholly of poultry, meat, vegetables, grains; cooked and prepared meals consisting wholly or substantially wholly of poultry, meat, vegetables, grains; soup; broth; dips; fruit based snack food; fruit desserts; fruit and vegetable preparations’;
– Class 30: ‘Breakfast cereals; porridge; granola; muesli; sauces; condiments; marinades; bread products; banana bread; snack bars containing a mixture of grains, nuts and dried fruit (confectionery); confectionery’;
– Class 39: ‘Food delivery services’;
– Class 43: ‘Catering services; restaurant services; take-away fast food services; provision of food and drink’.
4 On 2 January 2018, Grace Foods Ltd filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based on, inter alia, the earlier EU figurative mark which is registered under the number 1077015 and is reproduced below:
6 The goods covered by the earlier mark are in Classes 29, 30 and 32 and correspond, for each of those classes, to the following description:
– Class 29: ‘Vegetables, fruit, meat, poultry, fish and seafood, all these products in the form of extracts, soups, jellies, pastes, preserves, ready-made dishes and frozen or dehydrated preserves, as well as fresh or canned; coconut milk; coconut cream; dried prepared soup mixes, dried peas and beans; jams; eggs; milk, cheese and other food preparations having a base of milk, milk substitutes, edible oils and fats; protein preparations for food’;
– Class 30: ‘Coffee and coffee extracts; coffee substitutes and extracts of coffee substitutes; tea and tea extracts; cocoa and preparations having a base of cocoa; chocolate, confectionery, sweets; sugar; bakery products, pastry; desserts, puddings; ice cream, products for the preparations of ice cream; honey and honey substitutes; rice and cereals, foodstuffs having a base of rice or other cereals; flour; cornmeal; aromatizing or seasoning products for food; mayonnaise; condiments, namely prepared sauces, brown sauces, pepper sauces, hot sauces, fruit sauces, chutney and ketchup’;
– Class 32: ‘Non-alcoholic drinks, carbonated beverages, non-carbonated malt beverages, syrups, extracts and essences for making non-alcoholic beverages; fruit juices’.
7 The ground relied on in support of the opposition was, inter alia, that set out in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
8 Following a request made by the applicant, EUIPO invited Grace Foods to furnish proof of genuine use of, inter alia, the earlier mark. Grace Foods complied with that request within the time limit set.
9 On 26 August 2021, the Opposition Division partially upheld the opposition as regards the goods and services in Classes 29, 30 and 43 covered by the mark applied for corresponding to the following description:
– Class 29: ‘Dips’;
– Class 30: ‘Sauces; condiments; marinades’;
– Class 43: ‘Catering services; restaurant services; take-away fast food services; provision of food and drink’.
10 On 26 October 2021, Grace Foods filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as it had rejected the opposition.
11 On 7 March 2022, the applicant filed a cross appeal with EUIPO against the Opposition Division’s decision, seeking the annulment of that decision in so far as it had upheld the opposition.
12 By the contested decision, the Board of Appeal partially annulled the Opposition Division’s decision and rejected the mark applied for also in respect of the other goods in Classes 29 and 30. It dismissed the appeal as to the remainder and dismissed the cross appeal.
Forms of order sought
13 The applicant 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;
– order the applicant to pay the costs if a hearing is convened.
Law
15 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea consists, in essence, of three parts, alleging, first, an incorrect assessment of the figurative element of the mark applied for, secondly, an incorrect assessment of the word element ‘pollen’ in that mark and of the word element ‘grace’, which is common to the two marks at issue, and, thirdly, infringement of the rule that the relevant public pays more attention to the beginning of marks than to the end.
16 It must be pointed out at the outset that, given the date on which the application for registration at issue was filed, namely 14 August 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21) (see, to that effect, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
17 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision, by the applicant in the arguments put forward and by EUIPO to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
18 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
19 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).
20 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).
The relevant public
21 In paragraph 131 of the contested decision, the Board of Appeal found that the goods in Classes 29, 30 and 32 were essentially food and non-alcoholic beverages which were aimed at the general public displaying an average level of attention. As regards the services in Class 43, the Board of Appeal stated, in paragraph 133 of the contested decision, that they concerned various food and drink services, which were offered at relatively low prices and were aimed at the general public, the level of attention of which was, at most, average.
22 In paragraphs 134 and 135 of the contested decision, the Board of Appeal found that it was appropriate to focus the comparison of the marks at issue on the English-speaking part of the relevant public, for which the word elements of those marks have a meaning.
23 There is no need to call those assessments, which are not disputed by the applicant, into question.
The comparison of the goods and services
24 There is also no need to call into question the undisputed findings of the Board of Appeal in paragraphs 174 and 176 of the contested decision that, first, all the goods in Classes 29 and 30 covered by the mark applied for are either identical or similar to various degrees to the goods in Classes 29 and 30 covered by the earlier mark, in respect of which genuine use has been proved (see paragraph 126 of the contested decision), and, secondly, all the services in Class 43 covered by the mark applied for are similar to a low degree to the milk in Class 29 covered by the earlier mark.
The comparison of the signs
25 Two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. As is apparent from the case-law, the visual, phonetic and conceptual aspects are relevant (see, by analogy, judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).
26 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 signs at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. 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 (see, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41).
The first part, alleging an incorrect assessment of the figurative element of the mark applied for
27 The applicant claims that, in comparing the signs at issue, the Board of Appeal failed to consider the figurative element of the mark applied for, which would be read, spoken, and conceived of by the relevant public as ‘plus’, that is to say, ‘in addition to’, or as an abbreviation of the word ‘and’. It submits that this is clear not only from the representation of the mark applied for, but also from its description in the register, according to which it includes ‘a stylised “+” sign’. It contends that the Board of Appeal should thus have regarded that element of the mark applied for as a ‘+’ symbol in the visual comparison. It argues that, in the context of the assessment of phonetic similarity, it should have considered the fact that that element would be pronounced as ‘and’. Lastly, from a conceptual standpoint, it submits that that element should have been given a meaning, namely ‘in addition to’ or ‘and’.
28 EUIPO disputes the applicant’s arguments.
29 In the first place, in so far as EUIPO submits that the first part of the plea is inadmissible, because it was not put forward before the adjudicating bodies of EUIPO, it is true that, although the applicant submitted before the Opposition Division that the figurative element of the mark applied for was a ‘+’, it did not do so before the Board of Appeal.
30 The purpose of actions before the Court is to review of the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001 and Article 188 of the Rules of Procedure of the General Court provides that the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. Likewise, the applicant does not have the power to alter before the Court the terms of the dispute as delimited in the respective claims and allegations submitted by itself and by the intervener (see judgment of 19 October 2022, H&H v EUIPO – Giuliani (Swisse), T‑486/20, not published, EU:T:2022:642, paragraphs 44 and 45 and the case-law cited).
31 However, it has been held that an opposition to the registration of an EU trade mark, where it is based on Article 8(1)(b) of Regulation No 207/2009, requires EUIPO to adjudicate on whether the marks at issue are identical or similar and whether the goods and services covered by those marks are identical or similar. Consequently, the fact that the applicant did not, before the Board of Appeal, dispute the similarity of the marks at issue cannot in any way divest EUIPO of the power to adjudicate on whether those marks are identical or similar. Likewise, therefore, that fact cannot deprive a party of the right to challenge before the Court, within the limits of the factual and legal context of the dispute before the Board of Appeal, the findings of that adjudicating body on this point (judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraphs 21 to 23).
32 It follows that the present part of the plea, which concerns the assessment of the similarity of the signs at issue and which the applicant put forward before the Opposition Division, is admissible before the Court.
33 In the second place, when the Board of Appeal determines the relevant public’s perception of a mark applied for, it is by no means bound by the explanations given by the parties (see, to that effect, judgment of 15 March 2012, Mustang v OHIM – Decathlon (Wavy line), T‑379/08, not published, EU:T:2012:125, paragraph 35). In particular, the option for an applicant for an EU trade mark to add a description of the sign applied for to the application provides information regarding the perception of the sign by the applicant for that sign, but does not in any way provide information regarding its perception by the relevant public (judgment of 21 December 2022, International Masis Tabak v EUIPO – Philip Morris Brands (Representation of a pack of cigarettes), T‑44/22, not published, EU:T:2022:843, paragraph 46). Consequently, such a description is not relevant for the purposes of the examination of the relevant public’s perception of the sign at issue, with the result that the adjudicating bodies of EUIPO are not obliged to address it expressly.
34 In any event, the Board of Appeal referred, in paragraph 1 of the contested decision, to the applicant’s description of the mark applied for and stated in paragraph 190 of that decision that ‘the figurative device of the contested sign d[id] not convey any clear meaning, however, it [wa]s merely a decorative and banal element and, therefore, it [wa]s weakly distinctive’. It therefore took into account and rejected the description of the figurative element of the mark applied for which the applicant had provided.
35 It follows that the applicant’s argument alleging failure to take into account the description of the mark applied for which appears on the application for registration form cannot succeed.
36 In the third place, as pointed out by the Board of Appeal and EUIPO, the figurative element of the mark applied for will not be perceived by the relevant public as ‘+’, but rather as a purely decorative element. The symbol ‘+’ is well known to the whole of the relevant public and consists of two perpendicular lines of the same length which intersect in the middle. Although it is possible for it to be inserted into a circle, in order to indicate, for example, the polarity of batteries, it is not in any way usual for its horizontal line to be longer than its vertical line. However, in the present case, the horizontal line of that figurative element is much longer than the vertical line. It touches the circle on both sides but does not go beyond it, with the result that it cuts it in the middle. The addition of the shorter vertical line to the bisected circle has the effect of creating a sign which does not at first sight resemble a ‘+’.
37 Moreover, the symbol ‘+’ has the function of indicating an addition, with the result that it is normally represented clearly. However, it is apparent from the description of the mark and from its representation on the application for registration form that the applicant claims not only the colour yellow with regard to the figurative element, but also the colour white with regard to the background of the mark. In the present case, the figurative element in yellow is not, however, easily perceptible on the white background.
38 As the Board of Appeal correctly pointed out in paragraph 191 of the contested decision, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The average consumer only rarely has the chance to compare the various marks directly, so he or she must rely on his or her imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26). Consequently, the consumer will not dwell on the possibility that the figurative element might constitute the symbol ‘+’, but will perceive it at the very most as a decorative element.
39 The first part of the plea must therefore be rejected as unfounded.
The second part, alleging an incorrect assessment of the word element ‘pollen’ in the mark applied for and of the word element ‘grace’, which is common to the signs at issue
40 The applicant complains that the Board of Appeal regarded the word element ‘pollen’ in the mark applied for as referring only to a foodstuff, whereas that element can also be regarded as a common surname which the English-speaking public will perceive as such. It submits that, likewise, the word element ‘grace’ can refer not only to a female first name, but also to a common surname. It contends that the mark applied for can thus be perceived by the relevant public as consisting of two surnames, namely Pollen and Grace. It argues that, consequently, the Board of Appeal should not have considered the meaning of the element ‘pollen’ to be allusive, but to be descriptive of a person. The error which the Board of Appeal allegedly made led it to consider the signs at issue to be more similar conceptually than they would in fact be.
41 EUIPO disputes the applicant’s arguments.
42 In the first place, it must be stated that, although the word element ‘pollen’ may possibly have meanings other than that which the Board of Appeal found it to have, their existence is not relevant in the present case. As EUIPO has correctly pointed out, in order to determine the distinctive character of a sign, it is necessary to rely on the perception of the reasonably well informed and reasonably observant and circumspect relevant public, having regard to the goods and services at issue (judgment of 6 October 2011, medi v OHIM – Deutsche Medien Center (deutschemedi.de), T‑247/10, not published, EU:T:2011:579, paragraph 42). In the present case, since the goods and services at issue in Classes 29, 30 and 43 belong to the food sector, the relevant public will perceive the word element ‘pollen’ as evocative of foodstuffs.
43 In that regard, it must be pointed out that it is not necessary for that public to consume or have consumed foodstuffs which contain pollen, but it is sufficient for it to know that pollen is used as a food additive. As the Board of Appeal correctly stated in paragraph 188 of the contested decision, pollen is considered to be a superfood, that is to say, a food which offers maximum nutritional benefits and is gaining popularity as an ingredient in recipes with the aim of improving their nutritional and health benefits.
44 In the second place, the applicant claimed at the hearing that certain famous persons had or had had the surname Pollen. However, it did not establish or even explain that the relevant public was aware of those persons. It also did not establish that it is a common surname which would, as a result, be known to the relevant public.
45 In the third place, the applicant merely claimed that Grace was a common surname without, however, substantiating that claim. It did not put forward any other argument which is capable of proving its claim that the relevant public will associate the word element ‘grace’ with a surname.
46 It follows that the second part of the plea must be rejected as unfounded.
The third part, alleging infringement of the rule that the relevant public pays more attention to the beginning of marks than to their end
47 The applicant submits that, in finding in paragraph 192 of the contested decision that the element ‘grace’ was the central word element in the marks at issue, the Board of Appeal did not take into account the settled case-law that the relevant public gives greater weight to the beginning of a mark than to the end.
48 EUIPO disputes the applicant’s arguments.
49 It has repeatedly been held, as the applicant submits, that consumers generally pay greater attention to the beginning of a mark than to the end and that the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign. However, as EUIPO correctly points out, that rule cannot apply irrespective of the facts of the specific case and, in particular, the specific characteristics of the signs at issue (see judgment of 18 November 2020, Topcart v EUIPO – Carl International (TC CARL), T‑378/19, not published, EU:T:2020:544, paragraph 47 and the case-law cited).
50 It has, however, been held in paragraphs 42 and 43 above that the relevant public will perceive the word element ‘pollen’ in the mark applied for as being evocative of the field of foodstuffs. The Board of Appeal was thus fully entitled to find, in paragraph 188 of the contested decision, in essence, that the word ‘pollen’ was weakly distinctive with regard to the goods and services at issue.
51 Accordingly, and having regard to the weak distinctive character of both the figurative element and the stylisation of the mark applied for (paragraphs 187, 190 and 192 of the contested decision), the Board of Appeal was right in finding, in paragraph 192 of the contested decision, that it was the word element ‘grace’ which would be the focus of attention on the part of the relevant public.
52 Consequently, the third part of the plea must be rejected as unfounded.
53 It follows that the applicant errs in claiming that the errors allegedly made by the Board of Appeal led the Board of Appeal to conclude incorrectly that there was an average degree of visual and phonetic similarity and a high degree of conceptual similarity between the signs at issue.
The global assessment of the likelihood of confusion
54 In paragraph 212 of the contested decision, the Board of Appeal found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 with regard to all the goods and services in Classes 29, 30 and 43 covered by the mark applied for.
55 The applicant submits that the signs at issue are visually and phonetically similar to a lower than average degree and that the conceptual similarity is even lower. It argues that it follows that there is no likelihood of confusion.
56 According to settled case-law, the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (see judgment of 12 October 2022, MCO (IP) v EUIPO – C8 (C2), T‑461/21, not published, EU:T:2022:624, paragraph 45 and the case-law cited).
57 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).
58 As has been stated in paragraph 53 above, the Board of Appeal’s assessment of the similarity of the signs at issue is free from error. In the light of the average degree of distinctiveness of the earlier mark, the similarity to various degrees or the identity of the goods and services at issue and the average degree of visual and phonetic similarity and high degree of conceptual similarity between the signs at issue, the Board of Appeal was right in finding that there was a likelihood of confusion on the part of the relevant public. That finding also applies with regard to the services in Class 43 covered by the mark applied for, which are similar to a low degree to the product ‘milk’ in Class 29 covered by the earlier mark. The low degree of similarity between those services and those goods is offset in particular by the high degree of conceptual similarity between the signs at issue.
59 The action must therefore be dismissed.
Costs
60 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 pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Pollen + Grace Ltd to pay the costs.
Delivered in open court in Luxembourg on 8 November 2023.
V. Di Bucci | | S. Papasavvas |