JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
17 April 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark doyum – Earlier national word mark Doyum – Relative ground for refusal – No similarity between the goods – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑209/23,
Yadex International GmbH, established in Frankfurt am Main (Germany), represented by P. Kohl, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Armada Gida Ticaret Sanayi AŞ, established in Akdeniz (Türkiye),
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, U. Öberg (Rapporteur) and E. Tichy‑Fisslberger, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Yadex International GmbH, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 February 2023 (Case R 1436/2022-1) (‘the contested decision’).
Background to the dispute
2 On 4 June 2020, the other party to the proceedings before the Board of Appeal, Armada Gida Ticaret Sanayi AŞ, filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods in Classes 29 and 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding, for each of those classes, to the following description:
– Class 29: ‘Dried pulses; dried nuts and fruits; prepared nuts and fruits; preserved nuts and fruits; prepared nuts and dried fruits as snacks; dried and preserved nuts and fruits’;
– Class 30: ‘Baking powder; flour, semolina, starch for food; tea, ice tea; cereal-based snack foods; popcorn; crushed oats; corn chips; breakfast cereals; processed wheat for human consumption; crushed barley for human consumption; processed oats; processed oats for food for human consumption; processed rye for human consumption; rice’.
4 On 22 September 2020, the applicant 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 the following earlier marks:
– the international registration of the word mark Doyum, filed and registered on 9 April 2010, under No 1039385, designating goods in Classes 29 and 32 and corresponding, for each of those classes, to the following description:
– Class 29: ‘Milk, milk products’;
– Class 30: ‘Mineral and aerated waters and other non-alcoholic drinks; fruit juices, fruit drinks’;
– the earlier German word mark Doyum, registered on 28 October 2011 under No 302011044414, covering goods in Classes 29, 30 and 32 corresponding, for each of those classes, to the following description:
– Class 29: ‘Meat, fish, poultry and game, sausage, sausage products; meat extracts; preserved fruits, dried and cooked fruits and vegetables; jellies for food; eggs; milk and milk products; edible oils and fat’;
– Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flours and cereal preparations; bread, pastries and confectionery; edible ices; honey, treacle; yeast, baking powder; salt;mustard; vinegar, sauces (condiments), salad dressings, mayonnaise; spices; ice for refreshment’;
– Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic beverages; fruit juice beverages; syrups and other preparations for making beverages’;
– the earlier German word mark Doyum, registered on 12 October 2009 under No 302009059820, covering goods in Classes 29 and 32 corresponding, for each of those classes, to the following description:
– Class 29: ‘Milk and milk products’;
– Class 32: ‘Mineral and aerated waters and other non-alcoholic drinks; fruit juices, fruit drinks’.
6 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 Following a request made by the other party to the proceedings before the Board of Appeal, EUIPO invited the applicant to furnish proof of genuine use of the earlier mark relied on in support of the opposition. The applicant complied with that request within the prescribed period.
8 On 13 July 2022, the Opposition Division rejected the opposition.
9 On 3 August 2022, 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. It focused its assessment of the likelihood of confusion on the earlier German trade mark No 302011044414 and took into consideration the goods in respect of which the applicant had proved genuine use of that mark, namely ‘cheese, sausages, charcuterie’ in Class 29. On the ground that those goods were not similar to the goods covered by the trade mark applied for, the Board of Appeal found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. It also noted that, since the two other earlier marks were identical to the earlier German mark No 302011044414 and covered a narrower range of goods, no infringement of Article 8(1)(b) of Regulation 2017/1001 could be relied on on the basis of those earlier rights.
Forms of order sought
11 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– reject the application for registration of the mark applied for in respect of all the goods concerned;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, in the event that an oral hearing is scheduled.
Law
13 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
14 The applicant disputes the Board of Appeal’s findings as regards the earlier German trade mark No 302011044414 and, more specifically, the Board of Appeal’s finding that the goods covered by that mark and those covered by the mark applied for are different. According to the applicant, there is a ‘close connection’ between the goods at issue. Those goods have the same nature, in particular because they belong to the food market sector, are aimed at the same consumers, share the same distribution channels and points of sale, namely supermarkets or grocery stores, and have the same purpose, which is to serve as snacks. It adds that the goods covered by the marks at issue are often consumed together or complement each other. For example, cheese or yoghurt could be enriched with nuts. Lastly, the applicant claims that the goods at issue are in competition with each other, given that meat and cheese products can serve as snacks for the average consumer.
15 EUIPO disputes the applicant’s arguments.
16 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, an 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. That likelihood of confusion includes the likelihood of association with the earlier trade mark.
17 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and 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).
18 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
19 It is in the light of those considerations that it must be examined whether the Board of Appeal was right to find, as regards the marks at issue, that there was no likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
20 As regards the definition of the relevant public, in paragraph 13 of the contested decision, the Board of Appeal noted that the goods covered by the marks at issue were intended for the general public with an average level of attention. Since the earlier mark was registered in Germany, the assessment had to be based on the perception of the general public in that country.
21 The Board of Appeal’s findings as regards the definition of the relevant public, which appear to be well founded in the light of the evidence in the file and are not, moreover, disputed by the parties, must be upheld.
22 Therefore, for the purposes of assessing the similarity of the goods, it is necessary to compare, on the one hand, the ‘cheese, sausages, charcuterie’ in Class 29 covered by the earlier mark and, on the other hand, ‘dried pulses; dried nuts and fruits; prepared nuts and fruits; preserved nuts and fruits; prepared nuts and dried fruits as snacks; dried and preserved nuts and fruits’ in Class 29 and ‘Baking powder; flour, semolina, starch for food; tea, ice tea; cereal-based snack foods; popcorn; crushed oats; corn chips; breakfast cereals; processed wheat for human consumption; crushed barley for human consumption; processed oats; processed oats for food for human consumption; processed rye for human consumption; rice’ in Class 30 and covered by the mark applied for.
23 In that regard, the Board of Appeal observed that the goods at issue were different in nature, that they did not coincide as regards their composition or manufacturing process and that they were generally produced by different manufacturers. The Board of Appeal noted that the goods at issue could have a different use given that cheese, sausages and charcuterie covered by the earlier mark could be consumed as snacks, but also as starters or as a main dish. Lastly, the Board of Appeal stated that the goods at issue were not complementary. Having regard to all those considerations, it concluded that those goods were different even though they are foodstuffs which can be marketed through the same channels, such as grocery stores, shops or supermarkets.
24 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
25 In the present case, the Board of Appeal’s finding that the goods at issue are different in nature must be upheld. Even though the goods covered by the earlier mark and the goods covered by the mark applied for belong to the food market sector, the composition of those goods is clearly different. Indeed, the goods covered by the earlier mark are of animal origin whereas the goods covered by the mark applied for are of plant origin. Furthermore, as EUIPO correctly pointed out, the goods covered by the earlier mark have a shorter life cycle than the goods covered by the mark applied for and must normally be kept in a refrigerator.
26 As regards their purpose, it is admittedly true that the goods covered by the earlier mark and some of the goods covered by the mark applied for could be consumed as snacks. Nevertheless, the indications relating to the goods covered by the earlier mark, namely ‘cheese, sausages, charcuterie’, are generic and those goods could also be consumed as a starter or even as a main dish. It cannot be inferred from that information that the goods covered by the earlier mark are intended solely to be consumed as snacks as such. Thus, the goods covered by the earlier mark and the goods covered by the mark applied for may have, and often have, different purposes.
27 In the light of those considerations, the mere fact that the goods covered by the earlier mark, on the one hand, and the goods covered by the mark applied for, on the other, belong to the general category of foodstuffs intended for human consumption is not sufficient, in itself, to render them similar, since their nature, the raw materials of which they are made, their intended purpose and their method of use may be completely different (see, to that effect, judgment of 8 December 2021, Cyprus v EUIPO–Fontana Food (GRILLOUMI BURGER), T‑593/19, not published, EU:T:2021:865, paragraph 44).
28 In addition, the applicant does not dispute that the goods covered by the earlier mark and the goods covered by the mark applied for are usually manufactured by different undertakings.
29 Furthermore, the applicant has also failed to demonstrate that the goods at issue are complementary. According to settled case-law, goods are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that the responsibility for the production of those goods lies with the same undertaking (see, to that effect, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
30 Even though some of the goods covered by the mark applied for, in particular nuts, may indeed be consumed with cheese, sausages and charcuterie, which are goods covered by the earlier mark, their overall use depends on the culinary and food traditions of each Member State and cannot be regarded as indispensable. In any event, the applicant has not shown in what way and for what relevant public the goods covered by the mark applied for are important for the use of the goods covered by the earlier mark, with the result that consumers might think that the responsibility for the production of those goods lies with the same undertaking, which is clearly not the case for the goods at issue.
31 The same is true of the applicant’s argument that nuts, covered by the mark applied for, could occasionally be present in cheeses covered by the earlier mark. According to the case-law, the mere fact that a particular good may be used as a part, element or component of another, does not in itself suffice to show that the finished goods containing those components are similar since, in particular, their nature, intended purpose and the customers for those goods may be completely different (judgment of 27 October 2005, Éditions Albert René v OHIM – Orange (MOBILIX), T‑336/03, EU:T:2005:379, paragraph 61).
32 Furthermore, it is true that the goods at issue share the same distribution channels, in particular grocery stores or supermarkets, and are intended for the same relevant public, consisting of the general public.
33 However, that fact alone cannot justify a similarity between the goods at issue. The fact that goods may be sold in the same commercial establishments, such as large shops or supermarkets, is of no particular importance, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin (see, to that effect, judgment of 13 December 2004, El Corte Inglés v OHIM – Pucci (EMILIO PUCCI), T‑8/03, EU:T:2004:358, paragraph 43).
34 In that regard, it must be stated that the applicant has not provided any evidence in support of its assertion that nuts, covered by the mark applied for, and cheeses, covered by the earlier mark, are generally sold in close proximity to each other in supermarkets.
35 On the contrary, it is well known that cheese, covered by the earlier mark, must normally be refrigerated, which is not the case with nuts covered by the mark applied for. Contrary to what the applicant claims, it must therefore be held that the goods at issue are not necessarily found close to each other in large shops or supermarkets.
36 Furthermore, the fact that goods may be aimed at the same public is not in itself sufficient for a finding of similarity between the goods at issue, since not all the goods aimed at the same consumers are necessarily identical or similar.
37 Lastly, as regards the applicant’s argument that the goods at issue are in competition with each other, it must be borne in mind that, in order for those goods to be regarded as being in competition with each other, there must be a relationship of interchangeability or substitutability between them (see, to that effect, judgment of 4 November 2003, Díaz v OHIM – Granjas Castelló (CASTILLO), T‑85/02, EU:T:2003:288, paragraph 35).
38 In the present case, for part, or even a large majority, of the relevant public, the goods covered by the mark applied for and those covered by the earlier mark are neither interchangeable nor substitutable, in so far as the goods covered by the earlier mark are of animal origin and have a short life cycle, whereas the goods covered by the contested mark are of plant origin and have a longer life cycle and do not share the same intended purpose. That conclusion is also supported by the applicant’s argument that some of the goods covered by the earlier mark are often consumed together with some of the goods covered by the mark applied for, with the result that they are complementary.
39 Lastly, since EUIPO’s application of the principles of equal treatment and sound administration must be consistent with respect for the principle of legality, a person who has filed an opposition to registration of a sign as an EU trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73, 75 and 76).
40 In the present case, the Board of Appeal rightly concluded that the applicant’s opposition to the mark applied for could be rejected only on the ground that one of the conditions necessary for the application of Article 8(1)(b) of Regulation 2017/1001 was not satisfied, with the result that the applicant cannot successfully rely, for the purposes of casting doubt on that finding, on previous decisions of the Opposition Division of EUIPO.
41 Having regard to all the foregoing considerations, the Board of Appeal did not make an error of assessment in finding that there was no similarity between the goods covered by the marks at issue.
42 Therefore, since one of the conditions necessary for a finding of a likelihood of confusion is not satisfied, the Board of Appeal was entitled to conclude, without erring in law or making an error of assessment, that there was no likelihood of confusion on the part of the relevant public as regards the mark applied for and the earlier German mark No 30201144414.
43 As regards the other earlier marks, the Board of Appeal stated that those marks were identical to the earlier German mark No 302011044414 and that they covered a narrower range of goods. That finding of the Board of Appeal, which appears to be well founded and is not, moreover, disputed by the parties, must be upheld.
44 In the light of the foregoing, the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected and the action must be dismissed, without it being necessary for the Court to rule on the admissibility of the applicant’s second head of claim seeking rejection of the application for registration of the mark applied for in respect of all the goods concerned or on the admissibility, disputed by EUIPO, of evidence produced for the first time before the Court.
Costs
45 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
46 Although the applicant has been unsuccessful, EUIPO has applied for costs to be awarded against it only in the event that a hearing is convened. As no hearing has taken place, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Yadex International GmbH and the European Union Intellectual Property Office (EUIPO) to each bear their own costs.
Costeira | Öberg | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 17 April 2024.
V. Di Bucci | | S. Papasavvas |