JUDGMENT OF THE GENERAL COURT (First Chamber)
12 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for registration of the EU figurative mark cotecnica MAXIMA — Earlier national figurative mark MAXIM Alimento Superpremium — 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‑136/17,
Cotécnica, SCCL, established in Bellpuig (Spain), initially represented by J. C. Erdozain López, J. Galán López and J.-B. Devaureix, lawyers, and subsequently by J. C. Erdozain López, J. Galán López and L. Montoya Terán, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Mignini & Petrini SpA, established in Petrignano di Assisi (Italy), represented by F. Celluprica, F. Fischetti and F. De Bono, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 17 November 2016 (Case R 853/2016-2), relating to opposition proceedings between Mignini & Petrini and Cotécnica,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, P. Nihoul and J. Svenningsen (Rapporteur), Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 2 March 2017,
having regard to the response of EUIPO lodged at the Registry of the General Court on 7 June 2017,
having regard to the response of the intervener lodged at the Registry of the General Court on 6 June 2017,
further to the hearing on 10 April 2018,
gives the following
Judgment
Background to the dispute
1 On 23 September 2014, the applicant, Cotécnica, SCCL, 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) (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 mark:
3 The goods in respect of which registration was sought are in Class 31 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: ‘Foodstuffs and fodder for animals’.
4 The trade mark application was published in Community Trade Marks Bulletin No 201/2014 of 27 October 2014.
5 On 23 January 2015, the intervener, Mignini & Petrini SpA, 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 Italian figurative mark, reproduced below, designating goods in Class 31 corresponding to the following description: ‘Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt’.
7 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).
8 On 8 March 2016, the Opposition Division upheld the opposition.
9 On 9 May 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
10 By decision of 17 November 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
11 According to the contested decision, (i) the public to be taken into consideration is the Italian public and the goods concerned are directed at the general public, whose level of attention is deemed to be average, and at business customers whose level of attention is deemed to be high; (ii) the goods covered by the two marks at issue are identical; and (iii) the word elements ‘maxim’ or ‘maxima’ dominate the overall impression given by those marks, despite their weak distinctive character, whereas the other word elements, ‘alimento superpremium’ and ‘cotecnica’, respectively, are not very visible, given their size and position, and the figurative elements do not draw attention away from the dominant elements of those marks. On the basis of that analysis of the signs in question, the Board of Appeal found that they were similar overall. More specifically, it found that they were visually and phonetically similar and highly similar conceptually for the majority of the relevant public, that is to say, the members of the Italian public who associate the terms ‘maxim’ or ‘maxima’ with the size or high quality of a product, whereas no conceptual assessment is possible as regards the part of the Italian public who would not associate those terms with any particular concept. Lastly, the Board of Appeal found that the earlier mark had normal distinctive character, in the light of the combination of its word and figurative elements, although that distinctive character was weaker than average for the part of the relevant public who associates the element ‘maxim’ with a particular concept.
12 In view of all of the above, the Board of Appeal concluded that there was a likelihood of confusion, or, at the very least, a likelihood of association, including for the part of the relevant public with a high level of attention, stating that there would be such a likelihood of confusion even if the earlier mark had only weak distinctive character for the relevant public as a whole.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
14 EUIPO and the intervener contend that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
15 As a preliminary point, as regards, first, the applicant’s request that the General Court admit as evidence, in the present action, the file relating to the proceedings before the Board of Appeal, it should be stated that that file was submitted to the General Court by EUIPO after the application initiating proceedings was served on the latter, in accordance with Article 178(5) of the Rules of Procedure of the General Court.
16 Furthermore, the General Court may base its decision on information in the file relating to the proceedings before the Board of Appeal if the parties have referred to it with sufficient precision (see, to that effect, judgment of 26 September 2014, Koscher + Würtz v OHIM — Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraph 35). It is therefore to that extent that the General Court will refer, if required, to information in that file.
17 As regards, second, the statement in EUIPO’s response that the decisions of Spanish courts in Annexes A. 9 and A. 10 to the application have been produced for the first time before the General Court, it should be noted that that party stated at the hearing that it takes the view that that evidence is not inadmissible.
18 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. That plea is comprised, in essence, of three complaints, which relate to the contested decision in so far as that decision concerns the comparison of the signs at issue and the overall assessment of the likelihood of confusion. Those complaints refer to various errors that the Board of Appeal has allegedly made, namely:
– first, by making a comparison of the signs at issue principally, or even exclusively, with regard to the elements ‘maxim’ and ‘maxima’, on the ground that those elements are the dominant elements in the respective signs, whereas, according to the applicant, the value of those elements is minimal, or even non-existent, for the purpose of that comparison, given their weak or even non-existent distinctive character, at the side of their laudatory and descriptive character, and to the widespread use on the Italian market of identical or similar terms in the marketing of the goods in question; in that regard, it is claimed, the Board of Appeal failed to take into consideration previous decisions of the Opposition Division concerning the registration of comparable marks;
– secondly, by failing to recognise the importance, for the comparison of the signs at issue, of the element ‘cotecnica’ of the mark applied for, as a result of its disregard of (i) the case-law to the effect that the elements at the beginning of a sign prevail over the other elements that make up the sign; and (ii) the average distinctive character of the element ‘cotecnica’;
– thirdly, by failing to take account of the peaceful coexistence on the market of earlier marks containing the root ‘maxim’.
19 It should be noted, with regard to the first complaint, that, at the hearing, in response to a question from the General Court, the applicant stated, in essence, that it takes the view that the word elements ‘maxim’ and ‘maxima’ have distinctive character that is extremely weak, rather than non-existent.
20 It should be recalled that, under the terms of 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 when, because of its identity with or similarity to the earlier mark and because of the identity or similarity of the goods or services covered by the two 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.
21 Likelihood of confusion on the part of the public, which is defined as the risk that the public may believe that the goods or services at issue come from the same undertaking or, as the case may be, economically-linked undertakings, must be assessed globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (see, to that effect, judgment of 16 October 2014, Novartis v OHIM — Tenimenti Angelini (LINEX), T‑444/12, not published, EU:T:2014:886, paragraph 19 and the case-law cited).
22 In addition, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 41).
23 It is in the light of those considerations in particular that the applicant’s three complaints must be assessed.
The relevant public and the comparison of the goods
24 In the contested decision, the Board of Appeal found, in that regard, that (i) the relevant public is the Italian public; (ii) the goods at issue are intended for the general public, whose level of attention is deemed to be average, and at business customers whose level of attention is deemed to be high; and (iii) the goods at issue are identical.
25 It must be noted that those findings of the Board of Appeal are not disputed in the present action, and there are no clear grounds for challenging them. It is consequently in light of those findings that the merits of the various complaints made in the applicant’s plea must be assessed, although as noted by the Board of Appeal, where consumers consist of both the general public and business customers, the lower level of attention of those two groups must be taken into account (see, to that effect, judgment of 27 March 2014, Oracle America v OHIM — Aava Mobile (AAVA MOBILE), T‑554/12, not published, EU:T:2014:158, paragraph 26 and the case-law cited), namely, in the present case, the average level of attention of the consumer who is part of the general public.
The comparison of the signs
26 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. 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).
27 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).
28 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 43). 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).
The distinctive and dominant elements
29 The marks at issue are composite marks made up of both word and figurative elements.
30 The earlier mark comprises a rectangle with a pattern in red, dark red, dark grey and black, within which the word elements ‘maxim’ and ‘alimento superpremium’ are both represented in white letters and each placed on a red band. The characters used are only somewhat stylised, although the horizontal bar of the letter ‘A’ of the element ‘maxim’ is distinguished by being broken. The element ‘maxim’ is represented in upper-case letters and in bold characters, with the elements ‘alimento superpremium’ in lower-case letters with the exception of the first letter of each word. The size of the characters used to represent the elements ‘alimento superpremium’ is considerably smaller than that used to represent the element ‘maxim’, the surface area occupied by the latter being approximately thirteen times greater than that occupied by the other word element, although the latter contains more letters. The length of the element ‘maxim’ is approximately the same as that of the rectangle making up the background of that mark. That element is centred horizontally, while the elements ‘alimento superpremium’ are set to the right. The length of the latter element is approximately half that of the element ‘maxim’.
31 The mark in respect of which registration is sought comprises a black square, in the lower part of which the word elements ‘cotecnica’ and ‘maxima’ are represented in light grey and on two levels, the former in lower-case letters and the latter in upper-case letters and in bold characters. The characters used are only somewhat stylised. Their size, so far as concerns the element ‘cotecnica’, is considerably smaller than that of the characters used to represent the element ‘maxima’, the surface area occupied by the latter being approximately six times greater than that occupied by the other word element, although the latter contains more letters. The length of the element ‘maxima’ corresponds approximately to the size of one side of the square making up the background of that mark. That element is centred horizontally, while the element ‘cotecnica’ is set to the left. The length of the latter element corresponds approximately to two-fifths of the length of the element ‘maxima’.
32 According to the contested decision, as regards the earlier mark, the visual impression created by the mark is dominated by the element ‘maxim’. It is argued that, first, the elements ‘alimento superpremium’ are barely legible, bearing in mind their size and position, and will therefore most likely be overlooked by the relevant public. Secondly, the figurative elements, namely the stylisation of the words, the colour and the rectangular background are not particularly striking or, consequently, such as to divert the attention of the relevant public.
33 As regards the mark in respect of which registration is sought, it is argued that the visual impression is dominated by the element ‘maxima’, bearing in mind its position and size as well as the use of bold characters. The element ‘cotecnica’ is described as barely legible, bearing in mind its size and position, above the first part of the element ‘maxima’, so that it is most likely to be ignored by the relevant public. The stylisation of the word elements and black square background are not such as to detract from the dominant character of the element ‘maxima’.
34 At the same time, in the contested decision, the Board of Appeal found that the distinctive character of the elements ‘maxim’ and ‘maxima’ is weak, or even very weak. Those words are derived from the Latin word ‘maximum’, derivatives of which exist in several languages of the European Union, including the Italian word ‘massimo’. Accordingly, the elements ‘maxim’ and ‘maxima’ will be perceived as laudatory expressions in relation to the goods at issue by the relevant public, the Board of Appeal nevertheless considering that there is a possibility that a small proportion of the Italian public will not attach any particular meaning to those elements.
35 According to the Board of Appeal, the weak distinctive character of the elements ‘maxim’ and ‘maxima’ does not, however, mean that they are not the dominant elements since they are likely to make an impression on consumers and be remembered by them on account, in particular, of their position in the sign or their size.
36 By the first two complaints in the sole plea, which it is appropriate to examine together, the applicant contests the latter assessment. It maintains, first, that the extremely weak distinctive character of the elements ‘maxim’ and ‘maxima’ precludes them being regarded as being of decisive importance in the comparison of the signs at issue. That lack of distinctive character derives, it is claimed, from the laudatory and descriptive scope of those elements, and the frequent use of identical or similar terms in the marketing of Class 31 goods on the Italian market. The applicant also criticises the Board of Appeal for failing to take into account earlier decisions of the Opposition Division which are relevant in that regard.
37 Secondly, according to the applicant, bearing in mind the fact that, in marks comprising figurative and word elements, greater importance must in principle be given to the word elements, particular importance should have been given to the element ‘cotecnica’ of its mark in the comparison of the signs at issue. In accordance with the case-law, that element, which has normal distinctive character, is more liable to attract the relevant public’s attention, as it is located at the beginning of the sign. That element, it is argued, should be taken into account in the comparison of the signs, in view of the laudatory or descriptive character of the other word element of the applicant’s mark, ‘maxima’, and the laudatory and descriptive character of the word elements of the earlier mark taken together. However, according to the applicant, the Board of Appeal paid too little attention to the element ‘cotecnica’, which it failed to assess separately.
38 The applicant asserts that if, when the signs were compared, greater weight had been given, not to the elements ‘maxim’ and ‘maxima’, but to the element ‘cotecnica’ of its mark, that would have led to the conclusion that the signs at issue display visual, phonetic and conceptual differences that outweigh the similarities established so far as concerns the elements ‘maxim’ and ‘maxima’.
39 EUIPO and the intervener dispute the merits of those two complaints.
40 It should be noted, first of all, that the Board of Appeal held that, for the majority of the relevant public, the distinctive character of the elements ‘maxim’ and ‘maxima’ is weak, or even very weak, but not non-existent. That assessment is based on the laudatory character of those words as perceived by that part of the relevant public, in view of their association with the Italian word ‘massimo’, derived from the Latin word ‘maximum’. It is apparent from the contested decision, however, that a minority but not an inconsiderable part of the relevant public might fail to make that association.
41 As EUIPO has pointed out, with regard to the language of the relevant public, namely Italian, and the absence, in that language, of a word identical to the elements ‘maxim’ and ‘maxima’, it is only indirectly, as a result of an association between those elements and the word ‘massimo’, that the relevant public will be able to perceive a laudatory connotation in those elements. The fact that that association is relatively straightforward for the greater part of the relevant public, which EUIPO accepts, means that that part of the public will recognise that the relevant elements of the signs at issue are laudatory and, consequently, that it must be concluded that those elements have weak intrinsic distinctive character. However, the necessity of making an association — even a relatively simple one — in order to identify that laudatory connotation is sufficient for it to be concluded that those elements are not devoid of distinctiveness. Accordingly, those elements have a certain distinctiveness, even for the majority of Italian consumers, in whose language the elements have no immediate meaning, but who will make that association nonetheless. By contrast, as is apparent from the contested decision, such a connotation will not exist for that part of the relevant public who does not associate the elements ‘maxim’ and ‘maxima’ with the Italian word ‘massimo’.
42 The applicant maintains that three other specific characteristics of the elements ‘maxim’ and ‘maxima’ affect their distinctive character. First, those elements are descriptive of the packaging of the goods in question or, at the very least, of the size of the animals for which those goods are intended, by reference to the Latin word ‘maxima’, meaning ‘the largest’. Secondly, those elements are terms commonly used in the marketing of goods in Class 31 for the purpose of describing the characteristics of the goods in question or the size of the animals for which those goods are intended. Thirdly, those elements are often present in marks covering such goods.
43 As to the first of those arguments, it should be noted that the claim that the elements ‘maxim’ and ‘maxima’ are descriptive of the packaging of the goods at issue or the size of the animals for which those goods are intended is contradicted by the meaning that the applicant itself gives to the two marks at issue, alleging that its own mark will be perceived as referring to the highest-quality product under the mark ‘cotecnica’ and that the earlier mark will be perceived as designating higher quality foodstuffs. Furthermore, even if it were accepted that the elements ‘maxim’ and ‘maxima’ may be perceived as descriptive, the fact remains that such descriptive character is the result of minimum thought, necessary to make an association comparable to that which leads to the recognition of the laudatory character of those elements, as indicated in paragraph 41 above, so that they retain a certain distinctive character even for the greater part of the relevant public, who will make that association. It should be noted that even a word possessing a clear meaning is deemed descriptive only if there is a sufficiently direct and specific relationship between the word and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgment of 24 February 2016, Tayto Group v OHIM — MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 63 and the case-law cited). Moreover, in the situation under consideration, the distinctive character of the elements concerned would not be affected for the small part of the relevant public who do not make that association.
44 As to the other two arguments, they are based on assertions that have not been proved to the requisite legal standard.
45 As regards, first, the evidence that several marks have been registered containing the terms ‘maxim’ or ‘maxima’, it is sufficient to note that the relevant factor for the purposes of contesting the distinctive character of an element is whether it is actually present on the market, and not in registers or databases (judgment of 8 March 2013, Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77). The applicant has failed to demonstrate the actual presence on the market of the foodstuffs for animals designated by those marks. Furthermore, it should be noted that nor has it been demonstrated that all of the marks to which the applicant refers designate foodstuffs for animals, as Class 31 encompasses other goods, namely land and sea products not having been subjected to any form of preparation for consumption, live animals and live plants.
46 As regards, secondly, the thirteen pages drawn from websites, produced in the administrative procedure, it must be noted that seven of them, which were produced before the Opposition Division, are irrelevant for the purposes of the present case because, as the Division observed, they are written in English and concern the use of the words ‘maxim’ or ‘maxima’ on markets other than the Italian market.
47 As to the six pages drawn from websites produced before the Board of Appeal, which are written in Italian, it is apparent that three of them demonstrate that the word ‘maxi’ is used on the packaging of dog food and refers to the large size of the breeds concerned or to the packaging; a fourth shows the word ‘max-i-mum’ on packaging together with the trade mark of the product, apparently unrelated to the packaging or the intended use of that product; and the last two show packaging on which the signs MAXIME and NEW MAXIM appear, respectively.
48 In that regard, irrespective of the fact that only the last of those documents does indeed concern one of the elements examined in the present case, namely the element ‘maxim’, it cannot be concluded on the basis of those documents that the elements ‘maxim’ and ‘maxima’ lack distinctive character owing to the widespread exposure of the relevant public to those words. Aside from the lack of any indication as to the reputation of the marks under which the goods presented on the websites concerned are sold, it cannot be inferred from the presence of identical or relatively close words on some or all of the products under six trade marks that those elements are widespread in Italy, that number being quite low in relation to the size of the Italian market (see, to that effect, judgment of 8 March 2013, David Mayer, T‑498/10, not published, EU:T:2013:117, paragraph 77).
49 Lastly, as regards the criticism concerning the Board of Appeal’s alleged failure to take earlier decisions into consideration, it should be noted that the lawfulness of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 as interpreted by the Courts of the European Union, and not on the basis of the previous decision-making practice of those Boards. While, in the light of the principles of equal treatment and sound administration, EUIPO must, in examining an application for registration of an EU trade mark, take into consideration the decisions made previously on similar applications, those principles must, nonetheless, be consistent with respect for legality and, consequently, it is necessary in particular, for reasons of legal certainty and, more specifically, sound administration, that the examination of any application for registration be stringent and full, and be conducted in each individual case (see order of 24 June 2015, Wm.Wrigley Jr. v OHIM (Representation of a sphere), T‑625/14, not published, EU:T:2015:444, paragraph 25 and the case-law cited).
50 In the present case, in the absence of any precise detail in the application concerning the decisions of the Opposition Division to which the applicant claims it drew the attention of the Board of Appeal in vain, reference must be made to the penultimate indent of paragraph 6 of the contested decision, which states that the applicant claimed before the Opposition Division that the latter’s decision concerning the marks PURAC and PURAGEN was relevant in the present case. In its decision, the Opposition Division duly stated, in the light of the case-law cited in the above paragraph, that (i) EUIPO is not bound by its earlier decisions; and (ii) the decision relied upon was not relevant since that case did not concern the element with weak distinctive character ‘pura-’. The Board of Appeal confirmed those assessments by reference to equally proper considerations, from which it is apparent, in essence, that each case must be assessed separately, on its own particular circumstances, and that, in the present case the particular circumstances on which it was required to adjudicate differed from those in the case in which it had adopted the decision to which the applicant referred.
51 Consequently, the Board of Appeal’s assessment that the elements ‘maxim’ and ‘maxima’ have weak intrinsic distinctive character for the majority of the relevant public — their distinctive character being, however, normal for a small part of that public — should be upheld.
52 Even without taking into consideration the latter part of the relevant public, it is clear from settled case-law that the weak distinctive character of an element of a composite mark does not necessarily mean that that element cannot constitute a dominant element since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see judgment of 4 February 2016, Meica v OHIM — Salumificio Fratelli Beretta (STICK MiniMINI Beretta), T‑247/14, EU:T:2016:64, paragraph 51 and the case-law cited).
53 That case-law must be applied in the present case.
54 In the contested decision, with regard to the earlier mark, the Board of Appeal noted, first, that the element ‘maxim’ is written in upper-case letters and in bold characters, while the other word elements, ‘alimento superpremium’, are written in small characters and are barely legible; secondly, that the element ‘maxim’ occupies a dominant position compared to that of the elements ‘alimento superpremium’, which are written beneath the element ‘maxim’, in the lower right-hand corner of the rectangle that forms the background of the sign; and, thirdly, that the figurative elements are not particularly striking, so that the visual impression produced by the earlier mark is dominated by the element ‘maxim’.
55 As regards the mark in respect of which registration is sought, the Board of Appeal noted, first, that the element ‘maxima’ is written in large letters and in bold upper-case characters, while the other word element, ‘cotecnica’, is written in small characters and is barely legible; secondly, by implication, that the element ‘maxima’ occupies a dominant position compared to that of the element ‘cotecnica’, which is written above the first part of the element ‘maxima’, set to one side of the square that forms the background of the sign; and, thirdly, that the figurative elements are secondary in relation to the element ‘maxima’, so that the perception of the mark in respect of which registration is sought is dominated by the latter element.
56 The characteristics thus taken into consideration by the Board of Appeal are relevant, since, when assessing the dominant character of one or more elements, it is necessary to take into account, in particular, the intrinsic qualities of each of those components by comparing them to those of the other components; account may also be taken, at a subordinate level, of the relative positions of the different components within the overall arrangement of the composite mark (see, to that effect, judgment of 13 April 2005, Gillette v OHIM — Wilkinson Sword (RIGHT GUARD XTREME sport), T‑286/03, not published, EU:T:2005:126, paragraph 54 and the case-law cited).
57 In addition, the Court notes that the Board of Appeal’s findings in that regard chime with the specific characteristics of the marks at issue. As regards the earlier mark, the element ‘maxim’, the visual appearance of which is slightly strengthened by the stylised letter ‘A’, is represented in letters the size of which, in terms of height and width, is approximately ten times that of the letters representing the elements ‘alimento superpremium’, the overall length of the latter being approximately half of that of the element ‘maxim’, which appears at the centre of the earlier mark, unlike the elements ‘alimento superpremium’, set to the right, which, on account of the extremely small size of the letters comprising that element, appear as hardly more than a line of a certain thickness beneath the last part of the element ‘maxim’. As regards the mark in respect of which registration is sought, which comprises two word elements, the element ‘maxima’ is represented in upper-case letters, the height and width of which are four to five times greater than those of the letters making up the element ‘cotecnica’, the length of which being less than half of that of the element ‘maxima, which is centred horizontally on the darker square that forms the background of that mark, unlike the element ‘cotecnica’. Lastly, in each of the marks, the figurative elements are common and will therefore be perceived as being essentially decorative.
58 Consequently, by its findings, the Board of Appeal duly stated reasons for its assessment that the elements ‘maxim’ and ‘maxima’ are, each so far as concerns the mark of which each element forms part, such as to make an impression of the consumer’s perception and be remembered by him.
59 The fact that, in the mark in respect of which registration is sought, the element ‘cotecnica’ is located above the element ‘maxima’ and is therefore, seen from that perspective, the first of the two word elements of that mark, does not alter that assessment.
60 The fact that consumers will generally remember the beginning of a mark rather than the end, cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a trade mark as a whole and does not analyse the different aspects of it (see judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 38 and the case-law cited).
61 It is specifically on account of the importance of the word element ‘maxima’ in the overall impression produced by the mark in respect of which registration is sought, by comparison with the much lesser importance of the other elements — particularly of the other word element ‘cotecnica’, together with its considerably smaller size and its non-central position — that the Board of Appeal was correct to find the latter element to be secondary.
62 The case-law to which the applicant refers in the second complaint concerns signs that do not have any such specific characteristics. Accordingly, the Board of Appeal’s assessment, criticised in the second complaint, is not contrary to that case-law.
63 As to the remainder, it should be noted that, while the word element ‘cotecnica’ has definite intrinsic distinctive character, since it is a fanciful term, it is nevertheless apparent from the assessments made by the Board of Appeal concerning the size and position of that element compared to the size and position of the element ‘maxima’, which dominates the overall impression produced by the mark in respect of which registration is sought, that the element ‘cotecnica’ is barely legible and likely to be ignored by the relevant public. That assessment is in line with the case-law cited in paragraph 26 above, to the effect that consumers usually perceive a mark as a whole, and do not analyse its details when making a purchase.
64 Lastly, it should be noted that, contrary to the applicant’s submission, the Board of Appeal examined and assessed separately the importance of the element ‘cotecnica’ in the mark in respect of which registration is sought, as is apparent from paragraphs 41, 46, 47 and 49 of the contested decision. Accordingly, it did not find that the element ‘maxima’ of that mark dominates the overall impression produced by that mark to such an extent as to render its other elements negligible.
65 In the light of all the foregoing considerations, the first two complaints must be rejected.
The visual, phonetic and conceptual comparison of the signs
66 It is apparent from the contested decision, first of all, that, from a visual point of view, the signs at issue are similar inasmuch as the dominant element of the mark in respect of which registration is sought, ‘maxima’, reproduces the dominant element of the earlier mark, ‘maxim’. In addition, the difference in the shape of the last letter ‘A’ of the element ‘maxima’ could pass unnoticed bearing in mind the relative length of those elements and to the fact that consumers would usually attach greater importance to the beginning of a word. Consequently, according to the Board of Appeal, neither that difference nor the differences that exist so far as concerns the other elements of the signs at issue, which are all secondary in the overall visual impression produced by those signs, namely the word elements ‘alimento superpremium’ and ‘cotecnica’ — which are barely legible — and the figurative elements which, it is argued, are decorative, are not such as to preclude any similarity from a visual point of view.
67 Next, from a phonetic point of view, the Board of Appeal also found that the signs are similar on account of the strong similarity between their dominant elements ‘maxim’ and ‘maxima’, to which the average consumer will tend to reduce the signs, as they comprise several words and that, in the ordinary course of trade, the words ‘cotecnica’ and ‘alimento superpremium’ will probably not be pronounced, bearing in mind, in particular, their position and size.
68 Lastly, from a conceptual point of view, it is apparent from the contested decision that, for the majority of the relevant public, who will see in the dominant elements ‘maxim’ and ‘maxima’ a reference to the size or high quality of a product, the signs are highly similar since they share one basic concept; that similarity cannot be cancelled out by the other word elements of those signs, since they are barely legible and will probably be ignored by the relevant public. By contrast, no conceptual comparison may be made so far as concerns the other part of the relevant public.
69 Consequently, the Board of Appeal found, in paragraph 51 of the contested decision, that the signs at issue were broadly similar.
70 The applicant does not make any specific complaint in that regard, but contests the validity of the conclusion reached by the Board of Appeal, arguing that it is based on the assessments as to the distinctive and dominant character of the various word elements of the marks at issue, the validity of which is called into question in the first two complaints. As those two complaints have been rejected, that criticism cannot be accepted.
71 As to the remainder, the Court notes that the Board of Appeal’s finding that the signs at issue are broadly similar is based on factual findings that chime with the characteristics of those signs as they may be perceived by the relevant public, taking into account the average level of attention that will be displayed by the general public, and that it is in line with the case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 24 May 2012, Grupo Osborne v OHIM — Industria Licorera Quetzaltec (TORO XL), T‑169/10, not published, EU:T:2012:261, paragraph 22 and the case-law cited).
72 In that regard, it should also be noted that it cannot be precluded that two signs are similar when they both have elements that have weak distinctive character (see judgment of 15 February 2017, Morgese and Others v EUIPO — All Star (2 STAR), T‑568/15, not published, EU:T:2017:78, paragraph 58 and the case-law cited).
73 The Board of Appeal’s assessment that the signs at issue are broadly similar must therefore be confirmed.
The likelihood of confusion
74 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 line of case-law, 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 (see judgment of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 68 and the case-law cited).
75 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 (judgment 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).
76 Moreover, a finding that the earlier mark has weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 12 November 2008, Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, EU:T:2008:481, paragraph 56 and the case-law cited).
77 It is apparent from the contested decision that, taking into account the fact that the goods at issue are identical, the similarities between the marks in question, viewed as a whole, are sufficient for it to be concluded that there is a likelihood of confusion, even on the assumption that the earlier mark has a weak distinctive character for the relevant public as a whole, because the dominant element of the mark in respect of which registration is sought, ‘maxima’, is likely to make an impression on consumers and be remembered by them.
78 In that regard, it should be recalled that, in the overall assessment of the likelihood of confusion, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 23 October 2002, Matratzen Concord v OHMI — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 26 and the case-law cited).
79 In the present case, as stated in paragraph 25 above, account should be taken of the level of attention of the public at large, which is considered average, so that the absence of any direct comparison between the marks at issue and, therefore, the need to assess the likelihood of confusion taking into account an imperfect image remembered by consumers, is of particular importance (see, to that effect, judgment of 22 March 2011, Ford Motor v OHIM — Alkar Automotive (CA), T‑486/07, not published, EU:T:2011:104, paragraph 95).
The failure to take into consideration the lack similarity between the signs at issue
80 First of all, in light of the first two complaints, the applicant goes on to contest the Board of Appeal’s finding as regards the likelihood of confusion on account of the impact of the errors, as alleged in those two complaints, that the Board committed in its comparison of the signs at issue.
81 It is sufficient, in that regard, to note that that line of argument cannot succeed in the light of the rejection of those complaints.
The peaceful coexistence of marks comprising the word ‘maxim’
82 By its third complaint, the applicant criticises the contested decision so far as concerns the existence of a likelihood of confusion, on the ground that it is established that, on the relevant market, numerous trade marks containing the root ‘maxim’ coexist peacefully. It is claimed that although that would reduce, or even rule out, a likelihood of confusion, the Board of Appeal failed to examine that question.
83 EUIPO and the intervener dispute the merits of this ground of challenge.
84 Admittedly, it is true that the coexistence of two marks on the relevant market is one of the relevant factors to take into consideration in the overall assessment of the likelihood of confusion, since it can, together with other factors, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (see, to that effect, judgment of 30 June 2015, VIÑA ALBERDI, T‑489/13, EU:T:2015:446, paragraph 70 and the case-law cited).
85 However, the possibility that the coexistence of earlier marks on the market might reduce the likelihood of confusion found to exist may be taken into account only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark demonstrated to the requisite legal standard that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see, to that effect, judgment of 10 April 2013, Höganäs v OHIM — Haynes (ASTALOY), T‑505/10, not published, EU:T:2013:160, paragraph 48 and the case-law cited).
86 Furthermore, in order for two marks to coexist, it is essential that they be present together on the market at issue over a sufficiently long period before the date of filing of the application for registration that is challenged in the opposition proceedings (see, to that effect, judgment of 10 April 2013, ASTALOY, T‑505/10, not published, EU:T:2013:160, paragraph 51).
87 The applicant has failed to demonstrate that those conditions have been met.
88 Moreover, although the applicant criticises the Board of Appeal for failing to examine the issue of the peaceful coexistence of various marks on the relevant market, the Court finds that that complaint has no factual basis, the Board of Appeal having found, in paragraph 66 of the contested decision, that the applicant had failed to demonstrate that marks coexisted on the market within the meaning of the case-law cited in paragraphs 84 to 86 above.
89 The Board of Appeal therefore did not err in law in finding that there was a likelihood of confusion between the marks at issue without concluding that such a likelihood was reduced or non-existent on account of the peaceful coexistence of other marks on the market at issue.
90 Consequently, the third complaint must also be rejected and, accordingly, the action dismissed in its entirety.
Costs
91 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.
92 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and the intervener, in accordance with the forms of order sought by the latter.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the appeal;
2. Orders Cotécnica, SCCL to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Mignini & Petrini SpA.
Pelikánová | Nihoul | Svenningsen |
Delivered in open court in Luxembourg on 12 June 2018.