JUDGMENT OF THE GENERAL COURT (Third Chamber)
8 March 2023 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark A 2 – Earlier international registration – Figurative mark THE a2 MILK COMPANY THE a2 MILK COMPANY – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑759/21,
Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz and J. Thomsen, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez and M. Eberl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
The a2 Milk Company Ltd, established in Auckland (New Zealand), represented by M. Hawkins, T. Dolde and C. Zimmer, lawyers,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl (Rapporteur) and D. Kukovec, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 12 December 2022,
gives the following
Judgment
Background to the dispute
1 By its action under Article 263 TFEU, the applicant, Société des produits Nestlé SA, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 October 2021 (Case R 2447/2020-4) (‘the contested decision’).
2 On 2 October 2018, the applicant obtained international registration No 1 438 650 designating the European Union in respect of the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 5 and 29 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:
– Class 5: ‘Dietetic foodstuffs, beverages and substances for medical and clinical use; food and food substances for babies; food preparations for infants; lacteal flour for babies; powdered milk for babies; foodstuffs and food substances for medical use for children and patients; foodstuffs and food substances for medical use for nursing mothers; nutritional supplements for medical use for pregnant women and breastfeeding mothers; nutritional supplements; dietetic supplements for medical use; nutritional and dietetic supplements for medical use; vitamin preparations, mineral-based preparations; dietary fibers; vitamins; vitamin preparations and substances; nutritional and food supplements’;
– Class 29: ‘Milk and dairy products; powdered milk; milk-based beverages and preparations; milk substitutes; milk beverages, milk predominating; milk-based beverages containing cereals and/or chocolate; yogurts; soy milk’.
4 On 16 April 2019, the intervener, The a2 Milk Company Ltd, filed a notice of opposition to the international registration at issue in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the earlier international registration of the figurative mark reproduced below:
6 The earlier international registration covered goods in, inter alia, Classes 5, 29 and 30 corresponding, for each of those classes, to the following description:
– Class 5: ‘Food for infants; milk and powdered milk for infants; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements; protein dietary supplements’;
– Class 29: ‘Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating’;
– Class 30: ‘Ice cream, frozen yoghurt; ices; frozen desserts’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
8 On 17 November 2020, the Opposition Division upheld the opposition.
9 On 21 December 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. It took the view, in essence, that the goods at issue mainly targeted the public at large, but also a more specialist public with specific professional knowledge or expertise (such as medical professionals or pharmacists), and that the level of attention of that public could vary from average to high. It took the view that the relevant territory was that of the European Union, since the earlier right relied on was an international registration designating the European Union, and carried out its examination by taking into account the Bulgarian-, Hungarian- or Latvian-speaking public at large.
11 As regards the comparison of the signs, the Board of Appeal concluded, inter alia, that the signs at issue were visually similar to a low degree and phonetically similar to a high degree, if not identical. In the Board of Appeal’s view, the conceptual comparison of those signs remained neutral given that the elements ‘a 2’ and ‘a2’ were meaningless and the concept of the weaker component ‘the a2 milk company’, to the extent that it would be understood, would have only a limited impact on that comparison.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– annul the decision of the Opposition Division of EUIPO of 17 November 2020 and reject the opposition in its entirety; and
– order EUIPO to pay the costs and order the intervener to pay the costs of the proceedings before EUIPO.
13 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal erred in finding that there was a likelihood of confusion. At the hearing, the applicant withdrew the second part of its second head of claim, by which it requested that the Court allow the international registration designating the European Union in respect of the mark applied for.
15 In the context of the single plea, the applicant, first, alleges that the Board of Appeal did not correctly examine the perception of the mark applied for by the relevant public. Secondly, it submits that the Board of Appeal incorrectly assessed the distinctive and dominant elements of the signs at issue. Thirdly, it alleges that the Board of Appeal made errors in the visual comparison of those signs. Fourthly, it alleges errors of assessment by the Board of Appeal as regards the degree of phonetic similarity of the signs at issue. Fifthly, it submits that the Board of Appeal applied the wrong case-law and considerations in the context of the global assessment of the existence of a likelihood of confusion.
16 EUIPO, supported by the intervener, disputes the applicant’s arguments.
17 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(iv) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
18 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).
19 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
20 It is appropriate, first of all, to uphold the Board of Appeal’s findings that, first, the relevant public consisted both of the public at large and of a specialist public with specific professional knowledge or expertise, whose level of attention could vary from average to high and, secondly, that the relevant territory was that of the European Union. Those findings are not, moreover, disputed by the applicant.
21 It is appropriate, next, to uphold the Board of Appeal’s assessment, which is not, moreover, called into question by the parties, that the goods at issue are identical or have a high degree of similarity.
The perception of the international registration at issue
22 The applicant submits that, in view of its high degree of stylisation, the relevant public will perceive only the international registration at issue as a purely figurative sign. In the applicant’s view, the Board of Appeal’s finding as regards the perception of that international registration was clearly influenced by the parties’ extensive discussions on the meaning of the element ‘a2’.
23 The applicant submits, in essence, that the relevant public will not ‘spontaneously’ perceive the capital letter ‘A’ and the numeral 2 in the international registration at issue. In the applicant’s view, what the Board of Appeal considers to be that capital letter does not reproduce the characteristic elements of such a capital letter (in particular the pointed top, the triangular middle and the elongated, straight and pointed appearance). Similarly, the white figurative element in the centre would leave room for very different interpretations (in particular the capital letter ‘Z’, the abstract image of a snake, a wave or a joystick, or a stylised white curved line) without any particular meaning.
24 EUIPO, supported by the intervener, disputes the applicant’s arguments.
25 In paragraph 33 of the contested decision, the Board of Appeal stated, in the context of the comparison of the signs, that the international registration at issue was based on a figurative mark composed of a stylised element in black and white. Examining the lines of the element in black and white, it established that they corresponded to the lines of the capital letter ‘A’ and the numeral 2. Consequently, in its view, that capital letter and that numeral were likely to be perceived as an alphanumeric element by a substantial part of the relevant public.
26 As regards the earlier international registration, the Board of Appeal observed that it was based on a figurative mark consisting of the alphanumeric element ‘a2’ written in thick white lettering on a circular black background surrounded by the expression ‘the a2 milk company’, written twice and divided by two dots.
27 Those findings do not contain any error of assessment.
28 First, there is nothing in the file to establish that, when comparing the signs, the Board of Appeal was influenced by the parties’ extensive discussions on the meaning of the element ‘a2’. The findings made are based on an observation of the signs at issue and their constituent elements, which inter alia enabled the Board of Appeal to conclude that a substantial part of the relevant public will perceive an alphanumeric element in the international registration at issue. Accordingly, the applicant’s argument that that board was not neutral, but influenced by the parties’ extensive discussions referred to above, should be rejected.
29 Secondly, as regards the part of the stylised element in black in the international registration at issue, it should be noted that the applicant does not dispute that it is indeed the capital letter ‘A’. However, that capital letter is, in the applicant’s view, unrecognisable for the relevant public on account of the fact that the ‘black element’ does not have ‘all the characteristic elements’ of that capital letter and that the ‘white element’, which appears in the centre, could leave room for various interpretations.
30 Those arguments cannot succeed. It should be noted, as observed by EUIPO, that it is a well-known fact that there are many different ways of representing the capital letter ‘A’, in particular many type fonts in which that capital letter does not include the elements that the applicant presents as being characteristic of that capital letter. Thus, the fact that the part of the stylised element in white in the international registration at issue is not in the shape of a triangle does not prevent the relevant public from perceiving the black figurative element as consisting of the capital letter in question. Accordingly, the Board of Appeal did not err in concluding that a substantial part of that public will recognise such a capital letter in the sign at issue. Such an interpretation is more likely than those proposed by the applicant, namely a rocket, a tower, a tent, a bridge, a mountain, a ladder or a simple triangular shape. It is true that those interpretations are possible, but they require more mental steps than the interpretation adopted by the Board of Appeal.
31 It is also appropriate to reject the applicant’s argument that the capital letter ‘A’ will not be recognised in the international registration at issue because the ‘black element’ is in the background. It must be pointed out that there is nothing in the sign at issue that indicates that it would be perceived as containing superimposed elements. The part of the stylised element in black occupies, moreover, more space than the part of it in white in the sign at issue. That black part is in fact the basis of that sign and not a simple geometric shape appearing in the background. In any event, its position does not prevent a substantial part of the relevant public from identifying it as the capital letter ‘A’.
32 In addition, it is appropriate to reject the applicant’s argument that the ‘white element’ will not necessarily be perceived by the relevant public as the numeral 2. The part of the stylised element in white in the international registration at issue clearly represents that numeral. It must be stated, in that regard, that the applicant’s suggestions that that part could also be perceived as the letter ‘z’, a snake, a wave or a joystick are far from obvious and are in no way substantiated.
33 As regards the applicant’s argument that it is not possible to determine in what sequence the parts of the stylised element in black and white in the international registration at issue would be read, it is appropriate to take the view, as observed by EUIPO, that that element is at least as likely to be perceived as ‘a 2’ as it is ‘2 a’. Accordingly, that argument must be rejected as unfounded, since it cannot be ruled out that at least a substantial part of the relevant public might perceive the element ‘a 2’ in the sign at issue.
34 In the light of the foregoing, it should be concluded that the Board of Appeal correctly took the view that a substantial part of the relevant public will recognise the element ‘a 2’ in the international registration at issue.
35 Accordingly, the applicant’s argument alleging an incorrect assessment of the overall perception of the international registration at issue must be rejected as unfounded.
The distinctive and dominant elements of the signs at issue
36 For the purposes of the comparison of the signs, which must be made in order to assess the likelihood of confusion, account must be taken of their distinctive and dominant components (see, to that effect, judgment of 28 October 2009, CureVac v OHIM – Qiagen (RNAiFect), T‑80/08, EU:T:2009:416, paragraph 26). First, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgment of 24 September 2015, Primagaz v OHIM – Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 41). Secondly, as regards the dominant elements, although it is settled case-law that, as a general rule, the relevant public will not consider a descriptive element forming part of a composite mark as the distinctive and dominant element of the overall impression conveyed by that mark, the weak distinctive character of an element of such a mark does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position in the sign, its size or the secondary nature of the other elements in that sign, it may make an impression on consumers and be remembered by them (see judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 32 and the case-law cited, and of 11 February 2015, Fetim v OHIM – Solid Floor (Solidfloor The professional’s choice), T‑395/12, not published, EU:T:2015:92, paragraph 32 and the case-law cited).
37 The applicant submits, in essence, that, contrary to what the Board of Appeal found, the international registration at issue is so stylised that the element ‘a 2’ could not be perceived at all or only after some reflection. Therefore, it is that stylisation which dominates the overall impression and not the alphanumeric element. As regards the earlier international registration, the applicant submits that the Board of Appeal should not have ignored the fact that it was based on a figurative mark configured in an entirely different way which also contained the expression ‘the a2 milk company’.
38 EUIPO, supported by the intervener, disputes the applicant’s arguments.
39 In paragraph 39 of the contested decision, the Board of Appeal explained, as regards the graphic stylisations of the signs at issue, that, even though they were not fully distinctive, they affected the overall perception of the alphanumeric element and would certainly be noted.
40 As regards the earlier international registration, the Board of Appeal stated that the expression ‘the a2 milk company’ could or could not be understood by the relevant public, depending on its knowledge of English, but that, in any case, it had less impact as it would be perceived as a reference to the manufacturer of the goods at issue or would be ignored on account of its position and negligible size. In its view, the two dots and circular background of the earlier mark were purely decorative.
41 Thus, the Board of Appeal concluded that, in so far as the average consumer more readily referred to the goods or services by quoting the alphanumeric element rather than by describing the figurative elements of the signs at issue, the alphanumeric element common to those signs would be perceived as a distinctive combination and a dominant element in those signs.
42 As regards the international registration at issue, it is appropriate to take the view, in the light of what has been found in paragraphs 28 to 34 above, that a substantial part of the relevant public will perceive an alphanumeric element in the sign at issue. Since that stylised element is the only recognisable element within that sign, it must be considered to occupy a central position. As regards that stylisation, the view should be taken that it will certainly affect the overall impression conveyed. However, that stylisation occupies only a secondary position in that it will be perceived as an innovative and imaginative way of presenting the different parts of the stylised element in question, namely the capital letter ‘A’ and the numeral 2. It should therefore be found, as did the Board of Appeal, that the alphanumeric element occupies a dominant position in the sign at issue. That element dominates the overall impression conveyed by that sign in that it occupies a central position in its overall impression and thus attracts more attention from the relevant public, which, as the Board of Appeal stated, will more readily use it to refer to the goods at issue than the description of its stylisation.
43 As regards the distinctive character of the element ‘a 2’ of the international registration at issue, the Board of Appeal concluded, as regards the signs at issue, that it had an average degree of inherent distinctiveness. In that regard, it should be borne in mind, as the Board of Appeal stated (see paragraphs 34 and 35 of the contested decision), that that element is understood by only part of the relevant public, mostly the specialist public, as referring to ‘A 2 protein beta-casein’ and that it is apparent from EUIPO’s file that a substantial part of the Bulgarian-, Hungarian- or Latvian-speaking public at large does not know that meaning. Therefore, since that element is not descriptive of the goods at issue, at least for a substantial part of the relevant public, it should be concluded that the Board of Appeal was entitled to take the view that the element in question had an average degree of inherent distinctiveness. In its request for a hearing, the applicant raised new arguments. It submits, in essence, that it is not required to prove that the element concerned is descriptive throughout the territory of the European Union and that EUIPO itself refused to register other signs containing that element on the ground that they were descriptive. It should, however, be held that those arguments cannot call into question the Board of Appeal’s finding, without it being necessary to examine their admissibility. It is sufficient to reiterate in that regard that it is apparent from the case-law cited in paragraph 19 above that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union.
44 As regards the stylisation of the international registration at issue, the Board of Appeal found, with regard to the signs at issue, that the stylisation was not ‘fully distinctive’, which implies that it considered it to be at most weak. That finding must be endorsed, since the stylised element does not in itself enable the commercial origin of the goods at issue to be identified.
45 As regards the earlier international registration, the Board of Appeal took the view, in paragraph 46 of the contested decision, that that registration had, as a whole, a ‘normal’ degree of inherent distinctiveness in relation to the goods that it covers. It should be concluded that, by the term ‘normal’, the Board of Appeal accepts that there is an average degree of inherent distinctiveness.
46 As regards the distinctive and dominant character of the elements which make up the earlier international registration, it should be noted that the Board of Appeal did not consider the expression ‘the a2 milk company’ to be negligible, but only that it had ‘less impact’ as it would be perceived as a reference to the manufacturer or would be ignored on account of its position and negligible size.
47 It should be noted, in that regard, that the expression ‘the a2 milk company’ appears twice in the earlier international registration in a circle surrounding the element ‘a2’. It is written in small letters that are not easily readable because of their position in the circle. Accordingly, such verbal elements occupy a secondary position in the overall impression conveyed in relation to the central element, which the relevant public will immediately and essentially perceive when confronted with the sign at issue. The specific arrangement of those verbal elements in the form of a circle surrounding the element ‘a2’ merely emphasises that central element, with the result that the latter’s dominance is strengthened. Consequently, the Board of Appeal’s finding that those verbal elements have less impact and that the central element must be regarded as dominant does not contain any error of assessment.
48 As regards the distinctive character of the elements which make up the earlier international registration, it should be found that the element ‘a2’ has an average degree of inherent distinctiveness and that its stylisation has weak distinctive character, as held in paragraphs 43 and 44 above.
49 The Board of Appeal did not expressly assess the distinctive character of the expression ‘the a2 milk company’ that appears twice in the earlier international registration, but took the view, in paragraph 39 of the contested decision, that that expression will have less impact as it will be perceived ‘as a reference to the manufacturer of the goods at hand or is to be ignored on account of its position and negligible size’. In the light of that statement, it should be concluded that the Board of Appeal implicitly took the view that the verbal elements in question had an average degree of inherent distinctiveness, since they refer to the manufacturer, but that they would play a secondary role in the perception of the sign at issue on account of their positioning and their small size. That assessment is correct. The expression in question is merely additional information on the manufacturer which, because of its positioning in the form of a circle and its small size, will rather highlight the central element of the sign at issue, namely the element ‘a2’ (see, to that effect, judgment of 30 November 2006, Camper v OHIM – JC (BROTHERS by CAMPER), T‑43/05, not published, EU:T:2006:370, paragraph 65).
50 In the light of the foregoing, it is appropriate to uphold the Board of Appeal’s finding that, in so far as the average consumer more readily refers to the goods or services by quoting the alphanumeric element rather than by describing the figurative elements of the signs at issue, the alphanumeric element common to those signs will be perceived as a distinctive combination and a dominant element in those signs. It should also be found that the Board of Appeal correctly took the view that the earlier international registration had, as a whole, an average degree of distinctiveness.
The comparison of the signs
51 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not 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).
52 As regards the visual comparison, the applicant submits that the Board of Appeal unduly limited the comparison to the verbal elements ‘a 2’ and ‘a2’ and that the signs at issue should have been considered visually dissimilar on account of their entirely different graphic stylisation.
53 The applicant maintains that the Board of Appeal made an error of assessment in the phonetic comparison. It argues, in essence, that the signs at issue should have been found to be phonetically dissimilar since the international registration at issue is based on a purely figurative mark and will not be pronounced. It also submits that the Board of Appeal failed to follow the case-law on short signs, according to which single letters are generally not pronounced. It submits that, even if the capital letter ‘A’ and the numeral 2 were to be perceived, the sequence in which they would be pronounced remains uncertain. The phonetic comparison cannot therefore, in its view, be decisive. In any event, the Board of Appeal failed, without justification, to take the verbal elements of the earlier international registration into account in the comparison.
54 EUIPO, supported by the intervener, disputes the applicant’s arguments.
55 The Board of Appeal found, in paragraph 40 of the contested decision, that the signs at issue were visually similar to a low degree. In that regard, it took account, in particular, of the fact that the element common to those signs was their dominant element. However, in its view, that similarity was attenuated by a stylisation which had an impact on the overall perception of the signs, as well as by the additional verbal and figurative elements of the earlier international registration, which were less relevant.
56 That finding, which, contrary to what is submitted by the applicant, takes into account the stylisation of the signs at issue and the verbal and figurative elements of the earlier international registration, should be confirmed. It was by taking into account those differences that the Board of Appeal found, having regard to the overall impression conveyed by those signs, that there was a low degree of visual similarity. It must also be stated that, since a substantial part of the relevant public will perceive the alphanumeric element in the signs at issue, they have certain visual similarities. Consequently, the Board of Appeal did not err in concluding that those signs had a low degree of visual similarity.
57 From a phonetic standpoint, the Board of Appeal stated, in paragraph 41 of the contested decision, that the element common to the signs at issue would be pronounced identically. It took the view that it was unlikely that the additional verbal elements of the earlier international registration, which had less impact, would be pronounced, whereas the figurative aspects of the signs at issue had no bearing on the phonetic comparison. Consequently, in its view, those signs were phonetically similar to a high degree, if not identical.
58 It should be found that the Board of Appeal did not err in concluding that the signs at issue were phonetically similar to a high degree, if not identical. Since a significant part of the relevant public is capable of identifying the alphanumeric elements of those signs, it will pronounce them identically rather than describe their figurative elements, as concluded in paragraph 50 above. It is true that, within the earlier international registration, there is also the expression ‘the a2 milk company’, which appears twice, but, as concluded in paragraphs 47 and 49 above, the verbal elements in question occupy only a secondary position in the overall impression conveyed in relation to the central element, which that public will immediately and essentially perceive when confronted with the sign at issue, that overall impression being accentuated further by the circle surrounding that central element. It should therefore be concluded, as the Board of Appeal did, that those verbal elements will have a limited impact for that public and, even assuming that part of the public in question would understand them, it is unlikely that a significant part of that public will pronounce them given that they are long, have a decorative aspect in the form of a circle and will be perceived as mere additional information on the manufacturer of the goods at issue. Consequently, the finding that the signs at issue are phonetically similar to a high degree, if not identical, should be upheld.
59 From a conceptual standpoint, the Board of Appeal stated, in essence, in paragraphs 34 to 38 and 42 of the contested decision, that the element common to the signs at issue was meaningless for a substantial part of the Bulgarian-, Hungarian- or Latvian-speaking relevant public. As regards the meaning of the expression ‘the a2 milk company’ of the earlier international registration, it took the view that, for the part of the public that would understand it, it had a limited impact on the conceptual comparison. Therefore, according to the Board of Appeal, that comparison remained neutral.
60 That finding should be upheld. Where none of the signs at issue has meaning taken as a whole, it must be found that a conceptual comparison is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96). It should be noted in that regard that, contrary to what the applicant submits, the expression ‘the a2 milk company’ occupies a secondary position in the earlier international registration and that, in so far as that expression can be read and understood, will be regarded as a reference to the manufacturer, thus merely strengthening the dominance of its central element, which, as stated in paragraph 43 above, will not be understood by a substantial part of the Bulgarian-, Hungarian- or Latvian-speaking relevant public. That expression cannot therefore contribute to distinguishing the signs at issue conceptually.
The global assessment of the likelihood of confusion
61 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
62 The applicant alleges, in essence, two errors made by the Board of Appeal in the global assessment. It maintains, first, that the Board of Appeal should have applied the case-law on short signs and followed EUIPO’s practice in that regard. Accordingly, a likelihood of confusion should have been excluded as the visual comparison is, in principle, decisive. In the applicant’s view, those principles were not mentioned at all, even though it had raised that matter in the proceedings before EUIPO. Secondly, the Board of Appeal did not take account of the fact that the visual aspect of the signs at issue plays a particularly important role with regard to the goods at issue. Those goods are sold in self-service stores, where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product.
63 EUIPO, supported by the intervener, disputes the applicant’s arguments.
64 It should be recalled that the Board of Appeal found, in paragraph 47 of the contested decision, that the earlier international registration had an average degree of inherent distinctiveness. In addition, having concluded that the conceptual comparison of the signs at issue was neutral, it took into account, in the context of the examination of the likelihood of confusion, the identity or high degree of similarity of the goods at issue, the low degree of visual similarity and the high degree of phonetic similarity between those signs in order to reach the conclusion that there was a likelihood of confusion, in the present case, for the Bulgarian-, Hungarian- or Latvian-speaking public at large with a level of attention which could vary from average to high.
65 The Board of Appeal added, in paragraph 48 of the contested decision, that even though the visual aspect was likely to play a role in the selection of the goods concerned, it was highly conceivable that, confronted with the international registration at issue, consumers would perceive it as a variation of the earlier international registration, configured in a different way according to the type of goods covered. That would in fact lead them to believe that the identical or highly similar goods originate from the intervener or, as the case may be, from an undertaking economically linked to the intervener.
66 First, it must be found that the applicant is wrong to maintain that the Board of Appeal failed sufficiently to take into account the visual differences between the signs at issue. As stated in paragraph 55 above, the Board of Appeal did indeed note, in the context of its global analysis of the likelihood of confusion, that there was a low degree of visual similarity between those signs. That does not mean, however, that it disregarded the case-law on short signs. Although it is true that, in short signs, small differences may frequently lead to a different overall impression, that is not the case here, since a significant part of the relevant public readily recognises the element common to the signs at issue, which is their dominant element.
67 In the light of those considerations, it is necessary, secondly, to take into account the fact that the signs at issue are phonetically similar to a high degree, if not identical, which is also the case for the goods at issue. Those findings cannot be ignored in the global analysis of the likelihood of confusion, contrary to what the applicant appears to maintain, but also play an important role in accordance with the principle of interdependence as referred to in paragraph 61 above. It should be noted, in that regard, that, even though the goods at issue are sold on a self-service basis and the visual aspect is of some importance, that does not prevent the phonetic similarity between the signs from becoming apparent when the goods are sold orally or mentioned in radio advertisements, or in oral conversations which are likely to give rise to an imperfect recollection of the sign.
68 Similarly, having regard to the identity conferred by the element common to the signs at issue, it is conceivable, as the Board of Appeal stated, that consumers, confronted with the international registration at issue, will perceive it as a variation of the earlier international registration, configured in a different way according to the type of goods covered, which will lead them to believe that the identical or highly similar goods originate from the intervener or, as the case may be, from an undertaking economically linked to the intervener.
69 It is appropriate in that regard to reject the applicant’s argument that, in order to arrive at that finding, the Board of Appeal was wrong to refer to paragraph 49 of the judgment of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties) (T‑104/01, EU:T:2002:262), given that it applied to customs in the clothing sector and did not concern short signs the stylisation of which would be capable of indicating the commercial origin of a product, but signs consisting of the words ‘fifties’ and ‘miss fifties’, the addition of ‘miss’ being capable of being understood as a clothing line for women.
70 It should be noted, in that regard, that the Board of Appeal merely stated that there was a likelihood of confusion irrespective of the particular importance of the visual aspect, given that, visually, the Bulgarian-, Hungarian- or Latvian-speaking public at large will always perceive the same alphanumeric combination in the signs at issue, albeit stylised differently. Furthermore, contrary to what the applicant appears to state, it is conceivable that consumers in sectors other than the clothing sector, including the food and dietetic supplements sector, may believe that identical or highly similar goods originate from the same undertaking or from economically linked undertakings when faced with signs containing identical verbal or numerical elements, even if those signs are short.
71 Accordingly, it should be concluded that, in the light of the fact that the signs at issue are visually similar to a low degree and phonetically highly similar or even identical, that a conceptual comparison is not possible, that the goods at issue are identical or highly similar and that the level of attention of the Bulgarian-, Hungarian- or Latvian-speaking public at large may vary from average to high, the Board of Appeal was correct to find that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
72 In the light of the foregoing, the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
73 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
74 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 (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Société des produits Nestlé SA to pay the costs.
Schalin | Škvařilová-Pelzl | Kukovec |
Delivered in open court in Luxembourg on 8 March 2023.
E. Coulon | | M. van der Woude |