JUDGMENT OF THE GENERAL COURT (Third Chamber)
26 April 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark pinar KURUYEMIȘ – Earlier German word mark PINAR – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Right to be heard – Article 94(1) of Regulation 2017/1001 – Suspension of proceedings – Article 71(1) of Delegated Regulation (EU) 2018/625)
In Case T‑147/22,
Pinar Kuruyemiş Gida Ve Ihtiyaç Maddeleri Sanayi Ticaret AŞ, established in Karatay, Konya (Türkiye), represented by M.E. López Camba and A.M. Lyubomirova Geleva, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee, M. Eberl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Yadex International GmbH, established in Frankfurt am Main (Germany), represented by P. Kohl, lawyer,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, I. Nõmm and D. Kukovec (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 24 January 2023,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Pinar Kuruyemiş Gida Ve Ihtiyaç Maddeleri Sanayi Ticaret AŞ, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 January 2022 (Case R 1148/2021-1) (‘the contested decision’).
Background to the dispute
2 On 4 December 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for designated the goods in Class 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 corresponding to the following description: ‘Dried, preserved, canned, frozen fruits and vegetables; processed fruits and vegetables; tomato puree, tomato paste; Dried nuts; Spiced nuts; Dried fruit-based snacks; Dried fruit; Peanuts, prepared; Processed nuts; Ground nuts; Nuts, prepared; Edible nuts; Salted nuts; Coconut, desiccated; Blanched nuts; Coated peanuts; Prepared coconut; Preserved nuts; Processed fruits; Shelled nuts; Salted cashews; Hazelnuts, prepared; Processed almonds; Snack foods based on nuts; Cashew nuts (Prepared -); Flavoured nuts; Snack mixes consisting of processed fruits and processed nuts; Roasted nuts; Prepared walnuts; Roasted peanuts; Seasoned nuts; Coconut-based snacks; Edible sunflower seeds; Sunflower seeds, prepared; Processed pumpkin seeds; Processed watermelon seeds; Prepared pine nuts; Processed chickpeas; Prepared pistachio; Almonds, ground; Canned peanuts; Mixtures of fruit and nuts’.
4 On 28 January 2020, the intervener, Yadex International GmbH, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on a number of earlier rights, including, in particular, the earlier German word mark PINAR designating, inter alia, goods in Class 29 and corresponding to the following description: ‘Dried nuts; Spiced nuts; Dried fruit-based snacks; Dried fruit; Honeyed peanuts; Peanuts, prepared; Processed nuts; Ground nuts; Nuts, prepared; Edible nuts; Pecans, prepared; Salted nuts; Coconut, desiccated; Blanched nuts; Coated peanuts; Prepared coconut; Preserved nuts; Processed fruits, fungi and vegetables (including nuts and pulses); Shelled nuts; Salted cashews; Hazelnuts, prepared; Prepared macadamia nuts; Processed almonds; Snack foods based on nuts; Cashew nuts (Prepared -); Butter made of nuts; Flavoured nuts; Snack mixes consisting of processed fruits and processed nuts; Snack mixes consisting of dehydrated fruit and processed nuts; Roasted nuts; Prepared torreya nuts; Candied nuts; Prepared walnuts; Processed betel nuts; Nuts being cooked; Roasted peanuts; Seasoned nuts; Coconut-based snacks; Walnut kernels; Edible sunflower seeds; Sunflower seeds, prepared; Processed pumpkin seeds; Processed watermelon seeds; Prepared pine nuts; Processed chickpeas; Hummus [chickpea paste]; Prepared pistachio; Cashew nut butter; Olives stuffed with red peppers and almonds; Almonds, ground; Hazelnut spread; Spreads consisting of hazelnut paste; Nut-based spreads; Powdered nut butters; Canned peanuts; Peanut oil [for food]; Peanut paste; Coconut milk [beverage]; Nut-based food bars; Peanut milk-based beverages; Fruit- and nut-based snack bars; Organic nut and seed-based snack bars; Nut and seed-based snack bars; Peanut butter; Mixtures of fruit and nuts; Nut-based meal replacement bars; Peanut milk; Peanut milk for culinary purposes; Groundnut oil; Nut toppings; Nut oils; Nut-based snack foods; Pastes made from nuts; Bean dip; Dried soya beans; Dried beans’.
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 30 April 2021, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
8 On 30 June 2021, the applicant filed an appeal with EUIPO against the decision of the Opposition Division.
9 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. Like the Opposition Division, the Board of Appeal reached its decision based on the earlier German mark referred to in paragraph 5 above, without making any assessment of the likelihood of confusion with the other earlier marks relied upon.
10 In particular, first, as regards the relevant public and its level of attention, the Board of Appeal considered, in essence, that the goods in question were directed at the general public whose level of attention varied from low to average. Secondly, the Board of Appeal found that the goods in question in Class 29 were identical. Thirdly, the Board of Appeal found that the signs at issue had an average degree of visual similarity and a high degree of phonetic similarity, whereas a conceptual comparison was not possible. Fourthly, the Board of Appeal considered that the earlier mark had normal distinctiveness. Fifthly, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant German public.
Forms of order sought
11 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– uphold the contested decision;
– order the applicant to pay the costs, including those incurred before EUIPO.
Law
14 As a preliminary point, it should be noted that, by its first head of claim, the intervener contends that the Court should uphold the contested decision. Given that upholding the contested decision is tantamount to dismissing the action, the intervener’s first head of claim should be understood, in essence, as a claim that the action be dismissed (see, to that effect, judgments of 23 February 2010, Özdemir v OHIM – Aktieselskabet af 21. november 2001 (James Jones), T‑11/09, not published, EU:T:2010:47, paragraph 14, and of 5 February 2016, Kicktipp v OHIM – Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 19 (not published) and the case-law cited).
15 Furthermore, in view of the date of submission of the application for registration at issue, namely 4 December 2019, 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 2017/1001 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
16 Accordingly, in the present case, with regard to the substantive rules, the references made by the Board of Appeal, in the contested decision, to the provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) must be understood as referring to the provisions of Regulation 2017/1001, which are substantively identical.
17 In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 94(1) of Regulation 2017/1001, secondly, infringement of Article 71(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), and thirdly, infringement of Article 8(1)(b) of Regulation 2017/1001.
First plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001
18 Under the first plea, the applicant alleges that the Opposition Division infringed Article 94(1) of Regulation 2017/1001 by failing to observe its right to be heard. In particular, the applicant argues that it did not have the opportunity to make comments in response to the final observations filed by the other party before the Opposition Division in the opposition proceedings.
19 EUIPO disputes the admissibility of that plea, on the ground that it is not directed against the contested decision, but against the decision of the Opposition Division.
20 The intervener disputes the applicant’s arguments.
21 It should be noted, as observed by EUIPO, that, by its arguments, the applicant in fact does not challenge the contested decision, but rather the decision of the Opposition Division. Nor does it state that that alleged infringement allegedly vitiating the decision of the Opposition Division renders the contested decision unlawful.
22 The legality of the Board of Appeal’s decision must be assessed solely on the basis of the factual and legal findings provided in the contested decision. Under Article 72(1) of Regulation 2017/1001, actions may be brought before the General Court only against decisions of the Boards of Appeal, with the result that, in such actions, only pleas directed against those decisions are admissible (see judgment of 22 April 2015, Rezon v OHIM – mobile.international (mobile.de proMotor), T‑337/14, not published, EU:T:2015:220, paragraph 23 and the case-law cited).
23 It follows that, as maintained by EUIPO, this plea in law must be rejected as inadmissible.
Second plea in law, alleging infringement of Article 71(1) of Delegated Regulation 2018/625
24 Under the second plea, the applicant alleges that the Board of Appeal infringed Article 71(1) of Delegated Regulation 2018/625, which provides for the possibility of suspending proceedings before the adjudicating bodies of EUIPO. According to the applicant, since the earlier German registrations relied on by the other party to the proceedings before EUIPO in support of the opposition were the subject of invalidity proceedings before national bodies, the Board of Appeal should have suspended the proceedings or, at least, consulted the parties in order to clarify the status of those prior registrations.
25 EUIPO and the intervener dispute the applicant’s arguments.
26 In that regard, it should be borne in mind that, under Article 71(1) of Delegated Regulation 2018/625, the Board of Appeal may suspend proceedings of its own motion, where a suspension is appropriate under the circumstances of the case (point (a) of that paragraph) or, at the reasoned request of one of the parties in inter partes proceedings, where a suspension is appropriate under the circumstances of the case and taking into account the interests of the parties and the stage of the proceedings (point (b) of that same paragraph).
27 First of all, it must be observed that none of the parties submitted a request to suspend the proceedings either before the Opposition Division or before the Board of Appeal. Thus, the Board of Appeal was not required to examine the issue of the suspension at the parties’ request for the purposes of Article 71(1)(b) of Delegated Regulation 2018/625.
28 Next, as regards the applicant’s argument that the Board of Appeal should have suspended the opposition proceedings of its own motion or should have consulted the parties in that regard, it should be noted that, under Article 71(1)(a) of Delegated Regulation 2018/625 and according to the case-law, suspension remains an option for the Board of Appeal, which only issues it where the Board considers it to be justified (see judgment of 1 December 2021, Team Beverage v EUIPO – Zurich Deutscher Herold Lebensversicherung (Team Beverage), T‑359/20, not published, EU:T:2021:841, paragraphs 53 and 55 and the case-law cited). Thus, Article 71(1)(a) of Delegated Regulation 2018/625 provides the Board of Appeal only with an option to suspend proceedings of its own motion, and not an obligation.
29 Nor is it disputed that, at the time of the adoption of the contested decision, the earlier German mark on which that decision is based was valid. As submitted by EUIPO, there is no legal provision prohibiting a ruling on an opposition based on a valid earlier mark which is the subject of invalidity proceedings. On the contrary, it is apparent from the case-law that the existence of parallel proceedings, the outcome of which is liable to have an impact on that of the appeal proceedings, does not result in the appeal proceedings being automatically suspended and, accordingly, is not a sufficient basis, in itself, for categorising the fact that the Board of Appeal refrained from suspending the proceedings as a manifest error (see judgment of 28 May 2020, Cinkciarz.pl v EUIPO – MasterCard International (We IntelliGence the World and Others), T‑84/19 and T‑88/19 to T‑98/19, EU:T:2020:231, paragraph 48 and the case-law cited).
30 Therefore, the applicant cannot validly call into question the legality of the contested decision by alleging that the Board of Appeal did not suspend the proceedings of its own motion or consult the parties in that regard.
31 Accordingly, the second plea in law must be rejected as unfounded.
Third plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
32 Under the third plea, the applicant alleges that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 by finding, incorrectly, that there was a likelihood of confusion on the part of the relevant public.
33 EUIPO and the intervener dispute the applicant’s arguments and maintain that the Board of Appeal was correct in finding, in the contested decision, that there was a likelihood of confusion in the present case.
34 It should be borne in mind, that, under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to 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.
35 The risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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).
36 In the light of those considerations, it must be examined whether, as maintained by the applicant, the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 by finding that there was a likelihood of confusion in the present case.
The relevant public and its level of attention
37 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It is also necessary to take into consideration that the average consumer’s level of attention is likely to vary according to the category of goods in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
38 The Board of Appeal found that the goods in question were directed at the general public whose level of attention varied from low to average.
39 The applicant does not dispute the Board of Appeal’s assessment, but states that, since the marks at issue cover foodstuffs for everyday consumption, the relevant public will show a generally average level of attention.
40 In that regard, it must be borne in mind that, according to the case-law, the level of attention of the relevant public, as regards everyday foodstuffs, of low value and high frequency of purchase, is relatively low and average at most (see judgment of 17 January 2019, ETI Gıda Sanayi ve Ticaret v EUIPO – Grupo Bimbo (ETI Bumbo), T‑368/18, not published, EU:T:2019:15, paragraph 31 and the case-law cited).
41 Thus, the Board of Appeal was entitled to find that the level of attention of the relevant public varied from low to average because, first, the goods in question included inexpensive goods intended for everyday consumption and, secondly, some consumers could still pay more attention to certain characteristics of those goods and therefore be more attentive as to their choice.
42 Furthermore, as regards the relevant territory for the purposes of examining the likelihood of confusion, the Board of Appeal found that, since the earlier mark was a German mark, it was necessary to take into account the German public. The applicant does not dispute the Board of Appeal’s assessment.
The comparison of the signs
43 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
44 In the present case, the mark applied for is a composite mark composed of word elements and figurative elements. It is made up of the word element ‘pinar’ represented in slightly stylised white bold lower-case letters and the smaller word element ‘kuruyemiş’ represented in white upper-case letters. That mark also contains a figurative element composed of a white line delineating an open oval shape. All of those elements are arranged vertically, on three levels, against a black square background.
45 The earlier mark is a word mark consisting of a single word, ‘pinar’.
46 In accordance with the case-law referred to in paragraph 43 above, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the assessment of their distinctive and dominant elements carried out by the Board of Appeal.
– The distinctive and dominant elements
47 The Board of Appeal found that both the word element ‘pinar’, common to both signs, and the word element ‘kuruyemiş’ in the mark applied for were distinctive because, for the relevant public, the two words were meaningless in relation to the goods in question. It nevertheless found that, due to the size and position of those elements, the word ‘pinar’ was the dominant element of the mark applied for, whereas the word ‘kuruyemiş’ was of secondary importance in that mark. The figurative elements of the mark applied for are, according to the Board of Appeal, of a purely decorative nature.
48 The applicant does not dispute the Board of Appeal’s assessments as to the distinctive character of the word elements ‘pinar’ and ‘kuruyemiş’.
49 The applicant does, however, criticise the Board of Appeal for having found the word element ‘pinar’ to be the dominant element of the mark applied for. In the applicant’s submission, first, the word element ‘kuruyemiş’ of the mark applied for is just as dominant as the word ‘pinar’. Secondly, the applicant submits that the figurative elements and the graphic representation of the mark applied for also play a role in the overall impression created by that mark and must therefore be taken into account in the comparison of the signs at issue.
50 EUIPO and the intervener dispute the applicant’s arguments.
51 In that regard, it should be borne in mind that, according to the case-law, 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 accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
52 In the present case, first, as regards the word element ‘kuruyemiş’ of the mark applied for, it is true, as submitted by the applicant, that that element is not negligible and forms part of the word element of the mark applied for, which must be taken into account in the comparison of the signs at issue.
53 However, the Court finds, as did the Board of Appeal, that, in relation to the word element ‘pinar’, the word ‘kuruyemiş’ is in a secondary position. First, the word ‘kuruyemiş’ is smaller than the word element ‘pinar’ and, unlike the latter, is not represented in stylised bold letters. Secondly, it must be pointed out that the word ‘pinar’ has a central position in the sign applied for, whereas the word ‘kuruyemiş’ is placed in a side position. All of those elements create the impression that the word ‘pinar’ is more striking than the word ‘kuruyemiş’. Therefore, the applicant cannot claim that the two word elements of the mark applied for are equally dominant.
54 Secondly, as regards the graphic representation of the mark applied for, it is true that, as the applicant maintains, in the case of a composite mark, the figurative element may rank equally with the word element (judgment of 23 November 2010, Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 37).
55 In the present case, however, the graphic representation of the mark applied for, displayed in two conventional colours, contains simple and ordinary shapes, which cannot be regarded as particularly striking. Compared with the dominant word element ‘pinar’, the figurative elements of the mark applied for are less visible and serve only as an aesthetic background, which is not likely to attract the attention of a consumer. Thus, the Board of Appeal did not err in finding that the graphic representation of the mark applied for played only a decorative role in the overall impression of that mark.
56 In the light of the foregoing, it must therefore be held that the Board of Appeal was correct in finding that the word element ‘pinar’ was the dominant element of the mark applied for, whereas the word ‘kuruyemiş’ was in a secondary position and the graphic presentation was used for decorative purposes.
– Visual comparison
57 In paragraph 25 of the contested decision, the Board of Appeal found that the marks at issue were visually similar to an average degree.
58 The applicant challenges the Board of Appeal’s assessment. It submits that the signs at issue are visually different because the marks at issue create a different overall impression due to the distinctive word element ‘kuruyemiș’, which only appears in the mark applied for, and to its graphic representation.
59 EUIPO and the intervener dispute the applicant’s arguments.
60 In this respect, as regards the similarities between the signs at issue, it should be noted that the word element ‘pinar’, which is the only component of the earlier mark, is fully included in the mark applied for. That fact alone is liable to create a strong visual similarity between the marks at issue (see judgment of 12 December 2017, For Tune v EUIPO – Simplicity trade (opus AETERNATUM), T‑815/16, not published, EU:T:2017:888, paragraph 53 and the case-law cited).
61 As regards the differences between the marks at issue, the signs at issue are differentiated by the word element ‘kuruyemiş’ of the mark applied for and by the graphic representation of that mark.
62 Admittedly, as argued by the applicant, the word element ‘kuruyemiş’ has distinctiveness and is not negligible, with the result that it must be considered in the visual comparison of the signs (see, to that effect, judgment of 8 June 2022, Polo Club Düsseldorf v EUIPO – Company Bridge and Life (POLO CLUB DÜSSELDORF EST. 1976), T‑355/21, not published, EU:T:2022:348, paragraph 28 and the case-law cited).
63 However, as stated in paragraph 56 above, that element was, in the mark applied for, in a secondary position in relation to the dominant element ‘pinar’ and is thus less significant in the overall impression of the mark applied for than the latter element.
64 Likewise, the fact that the word element ‘kuruyemiş’ is an unusual word for the relevant public and therefore has distinctive character is not sufficient to call into question the fact that, on account of its significantly smaller size than the word element ‘pinar’ and its positioning below the latter, the word element ‘kuruyemiş’ will not constitute a particularly significant element of visual differentiation, contrary to what the applicant maintains.
65 Furthermore, as stated in paragraph 55 above, the graphic representation of the mark applied for is of a purely decorative nature. Thus, consumers will not associate that graphic representation with the commercial origin of the goods and will not attribute to it a decisive role in the overall impression of the mark applied for.
66 Thus, the differences between the signs at issue relating to the word element ‘kuruyemiş’ and the graphic representation of the mark applied for cannot offset the similarity due to the identical element ‘pinar’, which is distinctive and dominant.
67 In the light of the foregoing considerations, the Board of Appeal was correct in finding that the visual similarity of the signs at issue was average.
– Phonetic comparison
68 The Board of Appeal noted, in paragraph 26 of the contested decision, that the marks at issue had a high degree of phonetic similarity.
69 The applicant disputes the Board of Appeal’s assessment and submits that the marks at issue are phonetically different because those marks differ in length, rhythm and composition on account of the word element ‘kuruyemiş’ in the mark applied for.
70 EUIPO and the intervener dispute the applicant’s arguments.
71 In that regard, it should be borne in mind that, according to the case-law, a trade mark which includes several words will generally be abbreviated orally to something easier to pronounce (see judgment of 20 October 2021, Roller v EUIPO – Flex Equipos de Descanso (Dormillo), T‑597/20, not published, EU:T:2021:722, paragraph 109 and the case-law cited).
72 In the present case, first, it is important to note that, as stated in paragraph 56 above, the word element ‘kuruyemiş’ was, in the mark applied for, in a secondary position in relation to the dominant word element ‘pinar’. Secondly, it must be pointed out that the word element ‘kuruyemiş’, which does not correspond to a word known to the German public, is difficult to pronounce for that public on account of both its length and the letter ‘ş’ which does not exist in the German alphabet.
73 Thus, it is likely that the consumer will focus more on the word element ‘pinar’ for the purposes of referring to the mark applied for, whereas the word element ‘kuruyemiş’ will not be pronounced. Since the earlier mark consists of a single word element ‘pinar’, the signs at issue could therefore be pronounced in the same way.
74 Furthermore, even assuming that the word ‘kuruyemiş’ of the mark applied for is pronounced by the relevant public, it must be stated, first, that the pronunciation of the earlier mark would in any event be entirely repeated in the pronunciation of the mark applied for, which implies, according to case-law, a phonetic similarity (see, to that effect, judgment of 6 July 2022, ALO jewelry CZ v EUIPO – Cartier International (ALOve), T‑288/21, not published, EU:T:2022:420, paragraph 59 and the case-law cited) and, secondly, the single element of the earlier mark ‘pinar’ constitutes the beginning of the mark applied for and will be pronounced first, which will make it even more memorable and thus increase the phonetic similarity of the signs at issue.
75 In the light of the foregoing, it must be concluded, contrary to the applicant’s assertions, that the Board of Appeal did not err in finding that the marks at issue were phonetically similar to a high degree.
– Conceptual comparison
76 In paragraph 27 of the contested decision, the Board of Appeal found that a conceptual comparison was not possible, given that neither of the signs had a meaning for the relevant public.
77 Since the applicant does not dispute that assessment, there is no need to call it into question.
The comparison of the goods
78 The Board of Appeal found that the goods covered by the mark applied for in Class 29 were identical to the goods in the same class covered by the earlier mark.
79 The applicant does not dispute the Board of Appeal’s assessment. It merely submits that, in view of the fact that the signs at issue are not similar, it is not necessary to compare the goods.
80 The applicant’s argument is based on a false premiss because, as stated in paragraphs 67 and 75 above, its assertions as to the lack of visual and phonetic similarity of the signs at issue are unfounded. It should also be borne in mind that a conceptual comparison of the signs is not possible in the present case (see paragraph 76 above).
81 Accordingly, the Board of Appeal was correct to proceed with a comparison of the goods. There is no reason to call into question its finding, which is not disputed by the applicant, that the goods in question are identical.
The distinctive character of the earlier mark
82 The Board of Appeal concluded that the distinctive character of the earlier mark was normal, which must be understood, according to the case-law, as corresponding to an average degree of distinctiveness (see, to that effect, judgment of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY), T‑328/19, not published, EU:T:2020:311, paragraph 84).
83 The Board of Appeal’s assessment is not disputed by the applicant.
The global assessment of the likelihood of confusion
84 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 greater 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).
85 Furthermore, the more distinctive the trade mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
86 The Board of Appeal considered, in essence, in paragraph 32 of the contested decision, that, in view of the identity of the goods, the average visual similarity of the signs at issue, their high phonetic similarity and the fact that it was not possible to compare the signs conceptually, and the normal inherent distinctiveness of the earlier mark, there was a likelihood of confusion on the part of the relevant public, whose level of attention was low or average.
87 The applicant disputes the Board of Appeal’s finding. It submits, in essence, that, because of the lack of similarity between the marks at issue, the Board of Appeal should have concluded that there was no likelihood of confusion.
88 EUIPO and the intervener dispute the applicant’s arguments.
89 In this case, it should be pointed out that, in the global assessment of the likelihood of confusion, the applicant merely reiterates its arguments concerning the visual and phonetic comparison of the signs, by referring, in that regard, to the differences between the signs at issue relating to the word element ‘kuruyemiş’ and to the graphic representation of the mark applied for. The applicant does not therefore put forward any new argument capable of calling into question the Board of Appeal’s finding as to the existence of a likelihood of confusion.
90 As stated in paragraphs 67 and 75 above, the Board of Appeal did not err in finding that the signs at issue were visually similar to an average degree and phonetically similar to a high degree. In the light of those similarities and the fact that it is not possible to compare the signs conceptually, the identity of the goods in question and the average distinctiveness of the earlier mark, there is a likelihood that the relevant public, whose level of attention varies from low to average, might be led to believe, when purchasing the goods concerned, that those goods come from the same undertaking or from economically linked undertakings.
91 Thus, in those circumstances and in accordance with the case-law referred to in paragraph 35 above, the Board of Appeal was correct in finding that there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
92 Furthermore, the Court finds that, since the Board of Appeal concluded that there was a likelihood of confusion on the basis of the earlier German mark referred to in paragraph 5 above, the other earlier marks on which the opposition was based were not examined by the Board of Appeal. Consequently, the applicant’s arguments based on the differences between the mark applied for and those other earlier marks must be rejected as ineffective.
93 Accordingly, the third plea in law must be rejected and the action must accordingly be dismissed in its entirety.
Costs
94 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred before the Court, in accordance with the forms of order sought by EUIPO and the intervener.
95 In addition, the intervener has also claimed that the applicant should be ordered to repay the costs incurred before the adjudicating bodies of EUIPO.
96 In that regard, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are regarded as recoverable costs. Therefore, the intervener’s form of order concerning the costs relating to the opposition proceedings, which are not recoverable costs, is inadmissible.
97 As regards the costs relating to the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment is dismissing the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 19 May 2021, Yongkang Kugooo Technology v EUIPO – Ford Motor Company (kugoo), T‑324/20, not published, EU:T:2021:280, paragraph 89).
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Pinar Kuruyemiş Gida Ve Ihtiyaç Maddeleri Sanayi Ticaret AŞ to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Yadex International GmbH for the purposes of the proceedings before the Court.
Delivered in open court in Luxembourg on 26 April 2023.
E. Coulon | | M. van der Woude |