JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
17 October 2019 (*)
(EU trade mark — Opposition proceedings — Application for European Union figurative mark fripan VIENNOISERIE CAPRICE Pur Beurre — Earlier EU figurative mark Caprice — 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‑628/18,
Viomichania mpiskoton kai eidon diatrofis E.I. Papadopoulos SA, established in Moschato-Tavros (Greece), represented by C. Chrysanthis, P.V. Chardalia and A. Vasilogamvrou, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, S. Palmero Cabezas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being:
Europastry, SA, established in Sant Cugat del Vallès (Spain), represented by L. Estropá Navarro, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 August 2018 (Case R 493/2018-5), relating to opposition proceedings between Viomichania mpiskoton kai eidon diatrofis E.I. Papadopoulos and Europastry,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, R. Barents and J. Passer (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 22 October 2018,
having regard to the response of EUIPO lodged at the Court Registry on 14 January 2019,
having regard to the response of the intervener lodged at the Court Registry on 4 January 2019,
further to the hearing on 10 July 2019,
gives the following
Judgment
Background to the dispute
1 On 30 July 2014, the intervener, Europastry, SA, 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 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, and correspond to the following description: ‘Flour and preparations made from cereals; Bread, pastry and confectionery (- all frozen)’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 171/2014 of 12 September 2014.
5 On 10 December 2014, the applicant, Viomichania mpiskoton kai eidon diatrofis E.I. Papadopoulos SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier EU figurative mark filed on 13 October 2006 and registered on 16 October 2008 under No 5 386289, reproduced below:
7 The goods in respect of which the earlier mark is registered are in Class 30 and correspond to the following description: ‘Stuffed wafers in the form of cigarillos’.
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 By decision of 13 May 2016, the Opposition Division rejected the opposition.
10 By decision of 5 May 2017 in Case R 1246/2016-5, the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division of 13 May 2016 in its entirety, remitted the case to the Opposition Division and considered that a new decision was to be taken on the ground that the decision of 13 May 2016 contained substantial errors as well as procedural errors which may have affected its outcome, inter alia, in the context of the assessment of proof of genuine use of the earlier mark and of the question of whether the evidence adduced proved the enhanced distinctiveness of that mark.
11 By decision of 24 January 2018, the Opposition Division rejected the opposition taking the view that, while the evidence showed genuine use of the earlier mark, it did not enable that mark to be recognised as having enhanced distinctiveness. Next, it considered that (i) the goods were identical and similar, with the exception of ‘flour’ covered by the mark applied for, (ii) the signs at issue were phonetically dissimilar but displayed limited visual and conceptual similarities and (iii) taking into account all the relevant factors, there was no likelihood of confusion.
12 On 16 March 2018, the applicant filed an appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division of 24 January 2018.
13 By decision of 8 August 2018 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal.
14 It found, in paragraphs 37 and 39 of the contested decision, that the relevant territory was that of the European Union and that the relevant public consisted of the average consumer with an average level of attention.
15 As regards the comparison of the goods in question, in paragraph 43 of the contested decision, the Board of Appeal endorsed the Opposition Division’s assessment that the goods were identical or similar, with the exception of ‘flour’ covered by the mark applied for, and noted that the parties had not called into question that finding.
16 As regards the comparison of the signs at issue, it found in paragraph 54 of the contested decision that, at best, they displayed very limited similarities. It pointed out in paragraph 51 of the contested decision that, visually, the only similarity lay in the common word element ‘caprice’, which however differed in its specific placement in those signs, the typefaces and colours used and their relative size and importance. Regarding the phonetic comparison, the Board of Appeal found in paragraph 52 of the contested decision that the signs at issue were similar in that the sole word element, ‘caprice’, is pronounced in the earlier mark whereas, in the mark applied for, that term is pronounced in the middle of a long line of word elements, namely within the expression ‘fripan viennoiserie pur beurre’. That said, it considered that it was far more likely that consumers would only pronounce the visually dominant elements, namely ‘caprice’ for the earlier mark and ‘fripan’ for the mark applied for. Regarding the conceptual comparison, the Board of Appeal considered in paragraph 53 of the contested decision, just as the Opposition Division did, that the term ‘caprice’ would be understood by the French- or English-speaking part of the relevant public as a reference to a ‘sudden or unpredictable change of attitude, behaviour’ or by the French-speaking public only as ‘a sudden feeling of desire towards someone or something’. It added that, for the French-speaking part of the relevant public, the term ‘viennoiserie’ designated a kind of pastry, the expression ‘pur beurre’ would be understood as ‘pure butter’ and, irrespective of any linguistic background, the world ‘fripan’ had no clear semantic content.
17 As regards the assessment of the likelihood of confusion, the Board of Appeal found, as a preliminary point, in paragraphs 58 to 60 of the contested decision, that while the evidence submitted by the applicant, including the affidavit sworn before a notary public by its sales department director, were clearly sufficient to show genuine use of the earlier mark, it did not prove any degree of enhanced distinctiveness and the assessment of the likelihood of confusion should therefore be based on the inherent distinctiveness of that mark which must be considered to be normal. Next, it noted, in paragraphs 62 and 63 of the contested decision, that there were overwhelming differences between the signs at issue and it considered that the applicant had not presented any convincing argument to show that the presence of the common word element ‘caprice’ in those signs was sufficient to give rise to a likelihood of confusion and that the relevant public would completely ignore the figurative elements of the earlier mark, dissect the mark applied for so as to only pay attention to a minor element, ignore all the other larger and dominant word elements of that mark and confuse the signs at issue on the basis of that complex mental exercise. In that regard, it found in paragraph 64 of the contested decision that the word element ‘fripan’ was the distinctive and dominant element of the mark applied for, including when it was examined in the light of all the other additional elements comprising that mark, and therefore the applicant’s argument that the element ‘caprice’ retained a distinctive and independent character was entirely unconvincing. Furthermore, the Board of Appeal took the view in paragraph 65 of the contested decision that the differences between the signs at issue — in particular, the additional word elements in the mark applied for, the figurative elements and the negligible position of the only common element ‘caprice’ — were sufficient to offset any similarity between those marks. It therefore considered that consumers were unlikely to confuse the marks at issue or believe that the goods originated from the same undertaking or from economically linked undertakings.
Forms of order sought
18 The applicant asks the General Court to:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
19 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs incurred by EUIPO.
20 The intervener contends, in essence, that the Court should:
– uphold the contested decision in its entirety so that the European Union trade mark application is maintained;
– order the applicant to pay the intervener’s costs.
Law
21 In support of its action, the applicant relies on a plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
22 In accordance with 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 it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, there is 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.
23 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the 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).
24 In the present case, as the Board of Appeal rightly found in paragraphs 37 to 39 of the contested decision, the relevant territory is the European Union and the relevant public is the average consumer with an average level of attention. In addition, it is necessary to establish the identity or similarity of the goods in question, with the exception of ‘flour’ covered by the mark applied for, which is not contested by the applicant.
Comparison of the signs at issue
25 The applicant maintains that the Board of Appeal failed to take into consideration the independent distinctive role of the word element ‘caprice’ in the mark applied for and the fact that consumers are likely to pay greater attention to that word element.
26 In that respect, the applicant claims that the aforementioned term is not entirely negligible having regard to its size and its position in the mark applied for and cannot be regarded as an ornamental element. In addition, the word element ‘caprice’ is not descriptive or purely laudatory but in fact has a non-common meaning, and it presents a certain originality when used in connection to foodstuffs. Thus, the term at issue has sufficient inherent distinctiveness and therefore retains an independent distinctive role within the mark applied for.
27 Furthermore, the applicant claims that, in order to refer to the mark applied for, the relevant public is likely to use the term ‘caprice’, instead of the term ‘fripan’, because that latter term is used as a company name or a ‘house mark’ for many goods marketed by the intervener.
28 EUIPO and the intervener dispute those arguments.
29 According to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by 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 that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
30 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 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).
31 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and incidentally, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 8 November 2016, For Tune v EUIPO — Gastwerk Hotel Hamburg (fortune), T‑579/15, not published, EU:T:2016:644, paragraph 36).
32 Furthermore, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their word elements than by describing the figurative elements of that mark (see, to that effect, judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 38 and the case-law cited).
33 In addition, the Court of Justice has held, as regards marks with a common component, where that component is identical to one of the marks at issue, that, even if that component cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those marks in so far as it constitutes, in itself, the earlier mark and retains an independent distinctive role in the mark composed of, inter alia, that component and in respect of which registration is sought. Where a common element still has an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services in question derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (see, to that effect, judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraphs 30 and 36, and order of 22 January 2010, ecoblue v OHIM and Banco Bilbao Vizcaya Argentaria, C‑23/09 P, not published, EU:C:2010:35, paragraph 45).
34 That said, the Court of Justice has stated that that particular case-law cannot affect the obligation to carry out a global assessment of all the components of the marks at issue. It is settled case-law that the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see order of 29 June 2011, adp Gauselmann v OHIM, C‑532/10 P, not published, EU:C:2011:433, paragraph 43 and the case-law cited).
35 Thus, even in the circumstances set out in paragraph 33 above, it is necessary to determine, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion (judgment of 16 November 2017, Galletas Gullón v EUIPO — Hug (GULLON DARVIDA), T‑456/16, not published, EU:T:2017:811, paragraph 82 and the case-law cited).
36 In the present case, the fact remains that the overall impression created by the mark applied for is different to that created by the earlier mark.
37 The Board of Appeal was right to consider, in paragraphs 50 to 53 of the contested decision, that, first, the word element ‘fripan’ occupies a dominant position in the mark applied for, second, visually, the common element ‘caprice’ is distinguished by its placement and the typefaces and colours used, by the difference in the relative size and importance of that component, as well as by the fact that the signs at issue differ in all of their other components and characteristics, third, phonetically, the earlier mark would be pronounced ‘caprice’ whereas the mark applied for would be pronounced ‘fripan viennoiserie caprice pur beurre’, or rather ‘fripan’, and, fourth, conceptually, the element ‘caprice’ may be understood by the French- or English-speaking part of the relevant public as a reference to a ‘sudden or unpredictable change of attitude, behaviour’, or by the French-speaking public as ‘a sudden feeling of desire towards someone or something’, the element ‘viennoiserie’ designates a category of pastry, the element ‘pur beurre’ would be understood as ‘pure butter’, whereas the word element ‘fripan’ has no clear semantic content.
38 Therefore, the Board of Appeal rightly found, in paragraph 54 of the contested decision, that in the overall impression they produced the signs at issue displayed, at best, only very limited similarities.
39 In those circumstances, in accordance with the case-law cited in paragraphs 34 and 35 above, that assessment cannot be called into question by the applicant’s arguments based on the existence of an independent distinctive role of the word element ‘caprice’.
40 It must be added, first, that the application of the notion of independent distinctive role deriving from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594, paragraph 37), presupposes that the earlier mark is contained in the mark applied for (see judgment of 28 September 2016, Kozmetika Afrodita v EUIPO — Núñez Martín and Machado Montesinos (KOZMeTIKA AFRODITA), T‑574/15, not published, EU:T:2016:574, paragraph 45 and the case-law cited). In the present case, the earlier mark contains, in addition to that word element, a figurative element that is not contained in the mark applied for.
41 Second, as EUIPO rightly points out, the applicant has failed to prove the claim that the word element ‘fripan’ is used by the intervener as its company name or as a ‘house mark’. In any event, the fact remains that that element does not form an integral part, in full or in part, of the intervener’s trade name, which is Europastry, SA.
42 Thus, by contrast with the circumstances obtaining in the case that gave rise to the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), the mark applied for is composed not of the juxtaposition of, on the one hand, the name of the intervener’s company and, on the other, the earlier mark but of figurative elements and a set of word elements, of which the word element ‘caprice’, also contained in the earlier mark, is only one element.
43 Moreover, it should be noted that, contrary to the applicant’s submissions at the hearing, the Board of Appeal did not err when it considered in paragraph 51 of the contested decision that the common word element ‘caprice’ was distinguished not only by its specific placement but also by the typefaces and colours used. Whereas it is true that the signs at issue have been registered only in black and white, that element is however of a different colour in those signs: white in the earlier mark and black in the mark applied for.
44 In the light of the foregoing, the assessment of the Board of Appeal with regard to the comparison of the signs at issue, namely that they presented very limited similarities, must be confirmed.
The likelihood of confusion
45 According to the applicant, the Board of Appeal wrongly held that the likelihood of confusion had not been established.
46 First, the applicant claims that the relevant public is likely to pay greater attention to the word element ‘caprice’ since it is much more inherently distinctive, rather than to, on the one hand, the term ‘viennoiserie’, the expression ‘pur beurre’ or the figurative element, which lack distinctiveness or, on the other hand, the term ‘fripan’, which is used for many other goods as a company name or as a ‘house mark’. Furthermore, unlike the term ‘fripan’, the term ‘caprice’ has a certain conceptual meaning. In that regard, the applicant claims that consumers are likely to remember elements that have a conceptual meaning (which, it is claimed, is not true of those with no conceptual meaning) and conceptual similarity is more important than visual or phonetic similarity and can outweigh visual or phonetic differences, or even surpass them.
47 Second, it claims that the Board of Appeal failed to take into consideration, in its assessment, the intervener’s intent seeking to create a likelihood of confusion. According to the applicant, the fact that, following the failure to register mark No 11 238 243 for the majority of the goods in Class 30 and on the ground that there was a likelihood of confusion with the earlier mark, the intervener repeated that application by adding the word element ‘fripan’, which shows its intent and insistence on using the mark Caprice. That intent is also evidenced by Annexes 5, 6A and 6B, filed by the applicant before EUIPO, which show that the intervener continues to use the mark at issue on its website although its application for registration of that mark has been rejected.
48 Third, the applicant claims that the Board of Appeal failed to take into consideration the affidavit sworn before a notary public by its sales department director, containing information regarding volumes of sales, market shares and advertising expenditure in connection with the earlier mark in Greece and other EU countries. That evidence establishes that the earlier mark enjoys at least enhanced distinctiveness, if not enhanced reputation, at least in Greece. That affidavit was also corroborated and supported by other evidence originating from independent sources, emanating from companies operating in the media sector and advertising agencies. Moreover, the accuracy of the information contained in the affidavit was not challenged by the intervener, there are no documents in the file such as to give rise to a doubt concerning its truthfulness and, in addition, this is not just a mere written statement but a sworn affidavit before a notary public which, if it were to be proven inaccurate, would entail legal consequences for its author. The Board of Appeal therefore erred in its assessment by considering that that affidavit did not constitute objective evidence and by finding, on that basis, that the earlier mark did not have enhanced distinctiveness.
49 EUIPO and the intervener dispute those arguments.
50 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).
51 It should also be noted that, according to the case-law, the average consumer of the category of goods concerned only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
52 In the present case, in the light of the interdependence principle referred to in paragraph 50 above, the Board of Appeal’s assessment, in paragraph 65 of the contested decision, that there is no likelihood of confusion between the signs at issue must be confirmed. Although the goods in question are in part identical and in part similar, except for ‘flour’ covered by the mark applied for, overall the signs at issue display overwhelming visual and phonetic differences; accordingly, the relevant public is not likely to believe that the goods in question come from the same undertaking or, at least, from economically linked undertakings.
53 That assessment cannot be called into question by the arguments put forward by the applicant in that regard.
54 First, since the applicant claims that conceptual similarity is more important than visual or phonetic similarity, it must be recalled, as EUIPO did, that, according to the case-law, it is likely that visual contact with the marks predominates in respect of everyday consumer goods (judgment of 15 April 2010, Cabel Hall Citrus v OHIM — Casur (EGLÉFRUIT), T‑488/07, not published, EU:T:2010:145, paragraph 54) and, in any event, the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 26).
55 In the present case, having regard, in particular, to the dominant position of the word element ‘fripan’ in the earlier mark and the numerous differences between the signs at issue, including those which relate to the position and graphic representation of the common word element ‘caprice’, the mere semantic concordance between those signs, resulting from the common word element ‘caprice’, is not sufficient to call into question the conclusion referred to in paragraph 38 above.
56 Second, the applicant’s argument based on the ‘intent’ of the intervener seeking to create a likelihood of confusion between the marks at issue, which, it is claimed, is demonstrated by the attempt to register the mark reproduced below for the goods covered by the mark applied for in the present case (mark No 11 238 243), which is still used by the applicant on its website, , must be rejected as ineffective:
57 First, it is apparent from the case-law that an argument based on the particular use of a mark applied for is not relevant since the examination must concern the trade mark as registered (see judgment of 29 January 2013, FON Wireless v OHIM — nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 46 and the case-law cited). In the context of the assessment of the likelihood of confusion for the purpose of Article 8(1)(b) of Regulation No 207/2009, the use of another mark, such as the one referred to in paragraph 56 above, is even less relevant.
58 Second, as the Board of Appeal already rightly stated in the decision of 5 May 2017 (see paragraph 10 above), the intervener’s alleged bad faith does not fall within the scope of opposition proceedings.
59 Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001) sets out the absolute grounds for invalidity of an EU trade mark, including when the applicant acts in bad faith when filing its application for registration (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraphs 34 and 35), and therefore bad faith may be relied on in the context of an application for a declaration of invalidity against a registered mark. However, the bad faith of the applicant for an EU trade mark is not listed in Article 41 of Regulation No 207/2009 as a ground of opposition to the registration of an EU trade mark (judgment of 12 October 2017, Moravia Consulting v EUIPO — Citizen Systems Europe (SDC‑554S), T‑316/16, EU:T:2017:717, paragraph 32). Therefore, it is not a factor that must be taken into account in opposition proceedings brought under Article 8 of Regulation No 207/2009 (see judgment of 6 October 2017, NRJ Group v EUIPO — Sky International (SKY ENERGY), T‑184/16, not published, EU:T:2017:703, paragraph 97 and the case-law cited).
60 Therefore, the applicant’s argument based on the alleged bad faith of the intervener — put forward in its appeal against the decision of the Opposition Division of 24 January 2018 (see paragraph 12 above) and in the originating application, like the argument based on the intervener’s ‘intent’, which in fact constitutes an allegation of bad faith, as the line of argument put forward by the applicant at the hearing indeed confirms — cannot succeed.
61 As for the argument put forward by the applicant at the hearing alleging that, according to the case-law, it is necessary, for reasons of legal certainty and good administration, to ensure that trade marks whose use could successfully be challenged before the courts are not registered, it is sufficient to note that the case-law cited by the applicant, namely the judgments of 29 September 1998, Canon (C‑39/97, EU:C:1998:442, paragraph 21), of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244, paragraph 59), of 13 March 2007, OHIM v Kaul (C‑29/05 P, EU:C:2007:162, paragraph 48), and of 1 February 2018, Philip Morris Brands v EUIPO — Explosal (Superior Quality Cigarettes FILTER CIGARETTES Raquel) (T‑105/16, EU:T:2018:51, paragraph 63), relate to factual circumstances which are different to those in the present case. That case-law has not in any way called into question the principle set out in paragraph 59 above.
62 Third, as regards the applicant’s argument concerning the recognition of the earlier mark’s inherent enhanced distinctiveness, it must first be recalled that, as follows from recital 8 of Regulation No 207/2009 (see also recital 11 of Regulation 2017/1001), the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the mark on the market in question. The more distinctive the trade mark, the greater the likelihood of confusion will be, 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 judgment of 28 January 2016, Sto v OHIM — Fixit Trockenmörtel Holding (CRETEO), T‑640/13, not published, EU:T:2016:38, paragraph 95 and the case-law cited).
63 The existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001). It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular (i) the market share held by the mark, (ii) how intensive, geographically widespread and long-standing use of the mark has been, (iii) the amount invested by the undertaking in promoting the mark, (iv) the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking and, (v) statements from chambers of commerce and industry or other trade and professional associations (see judgment of 28 January 2016, CRETEO, T‑640/13, not published, EU:T:2016:38, paragraph 96 and the case-law cited).
64 It should also be recalled that, in the context of the assessment of the evidence intended to show enhanced distinctiveness based on the use of a mark, it is not sufficient to examine those elements separately, but they must be assessed as a whole (see judgment of 28 January 2016, CRETEO, T‑640/13, not published, EU:T:2016:38, paragraph 102 and the case-law cited).
65 In the present case, it is apparent from the decision of the Opposition Division of 24 January 2018 (see paragraph 11 above) that, in order to demonstrate the enhanced distinctiveness of the earlier mark, the applicant submitted evidence, corresponding inter alia to invoices, emails from distributors, studies, information relating to advertising expenditure and volumes of sales, excerpts from national databases, excerpts from an EUIPO database, certificates referring to awards, promotional photographs and national judgments.
66 Furthermore, it is apparent from the fifth indent of paragraph 11 and paragraph 33 of the contested decision that the Board of Appeal held that three additional items of evidence, which the applicant submitted for the first time at the stage of the appeal against the decision of the Opposition Division, were admissible, namely:
– Annex 7, comprising an affidavit sworn by the applicant’s sales department director;
– Annex 8, comprising a letter from an advertising agency regarding advertising expenditure in connection with the earlier mark in Cyprus from 2009 to 2017;
– Annex 9, comprising a letter from an advertising agency regarding advertising expenditure in connection with the earlier mark in Bulgaria from 2011 to 2016.
67 The Board of Appeal rightly found, in paragraph 59 of the contested decision, that, as a whole, that evidence appeared to be sporadic, selected at random and in a disorganised manner and, accordingly, while it was clearly sufficient to show genuine use of the earlier mark, it did not make it possible to prove any degree of enhanced distinctiveness; it added that information regarding market share or independent statements from chambers of commerce or industry had not been submitted.
68 That finding cannot be called into question by the affidavit submitted as Annex 7.
69 It follows from the case-law that a declaration drawn up in the interests of its author, such as that at issue in the present case, must, in order to have evidential value, be supported by other evidence (see, to that effect, judgments of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 57, and of 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 68).
70 Since the affidavit at issue was drawn up by the applicant’s sales department director, the Board of Appeal rightly considered that it had to be supported by other evidence. The fact that that affidavit was sworn before a notary public and, therefore, if it were to be proven inaccurate, it would entail legal consequences for its author, does not alter that finding in any way.
71 As EUIPO rightly contends, while that affidavit provides information regarding (i) advertising expenditure in Greece, Bulgaria and Cyprus, (ii) volumes of sales for Greece, Bulgaria, Cyprus, France, Italy and Sweden and (iii) the market share figures for the Greek biscuit market for the period of five years (in volume and in value of sales), only some of those statements are supported by objective evidence, namely those relating to advertising expenditure in Bulgaria, supported by evidence produced by an advertising agency and submitted as Annex 9, and in Cyprus, supported by evidence produced by an advertising agency and submitted as Annex 8, as well as those relating to sales figures for France, Italy and Sweden, partially supported by invoices and other evidence filed before the Opposition Division.
72 EUIPO also rightly contends that, first, evidence regarding the volume of sales and advertising expenditure cannot be considered to be direct evidence proving that the mark enjoys a high level of distinctiveness as a result of the public’s recognition and, second, the evidence adduced does not give any information concerning the applicant’s market share. As for information regarding the market share in Greece, contained in the affidavit submitted as Annex 7, the fact remains that it is not supported by any objective evidence.
73 That finding is not called into question by the other arguments put forward by the applicant at the hearing.
74 In the first place, as regards the arguments alleging infringement of Article 95 and Article 97(1)(f) of Regulation 2017/1001, in that the Board of Appeal did not take into account the substance of that affidavit in its analysis, it follows from the foregoing (see, inter alia, paragraphs 17 and 68 to 72 above) that the Board of Appeal took that affidavit into account and did so in an appropriate manner in the context of the examination of the distinctiveness of the earlier mark.
75 In the second place, the argument alleging infringement of the right to a fair trial cannot succeed, even if it were to be admissible given that (i) it was invoked for the first time at the hearing, (ii) it does not amplify a plea in law raised in the application, and (iii) it is not based on matters of law or of fact which came to light in the course of the procedure. The fact remains that the applicant was able, first, to submit the affidavit before the Board of Appeal, which conceded the admissibility of that additional evidence, as is apparent from paragraph 33 of the contested decision and which the applicant does not contest, second, to put forward arguments as to the evidential value of that affidavit in order to call into question the assessment of the Opposition Division regarding the enhanced distinctiveness of the earlier mark and, third, to challenge the Board of Appeal’s analysis on that point. Accordingly, infringement of that right has not been established.
76 Consequently, the plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and the action must be dismissed in its entirety.
Costs
77 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 forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Viomichania mpiskoton kai eidon diatrofis E.I. Papadopoulos SA to pay the costs.
Delivered in open court in Luxembourg on 17 October 2019.