JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
13 May 2020 (*)
(EU trade mark — Opposition Proceedings — International registration designating the European Union — Figurative mark РОШЕН — Earlier international figurative mark ромашки — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑63/19,
Rot Front OAO, established in Moscow (Russia), represented by M. Geitz and J. Stock, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’, established in Kiev (Ukraine), represented by I. Lukauskienė, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 16 November 2018 (Case R 1872/2018-2), relating to opposition proceedings between Rot Front and Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, A. Marcoulli (Rapporteur) and A. Kornezov, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 31 January 2019,
having regard to the response of EUIPO lodged at the Court Registry on 26 March 2019,
having regard to the response of the intervener lodged at the Court Registry on 25 April 2019,
further to the hearing on 28 November 2019, in which the intervener did not participate,
gives the following
Judgment
Background to the dispute
1 On 12 December 2016, the intervener, Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’ requested the protection in the European Union of the international registration No 1233784. That registration was notified to the European Union Intellectual Property Office (EUIPO) on 4 May 2017, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 The international registration in respect of which protection in the European Union was sought is the following figurative sign:
3 The goods in respect of which protection was sought are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Candies, chocolate, chocolate candies’.
4 On 18 July 2017 the applicant, Rot Front OAO, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the registration of the mark applied for.
5 The opposition was based on the earlier international mark No 1194309, designating Germany, Spain, France, Greece, Latvia and Lithuania, registered on 13 November 2013 for goods in Class 30 and corresponding to the following description: ‘sweetmeats (candy)’, except for Latvia, where a restriction rendered the goods as follows: ‘sweetmeats (candy) except milk-based candy’, as reproduced below:
6 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).
7 On 24 July 2018, the Opposition Division upheld the opposition and rejected the application for registration.
8 On 24 September 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.
9 By decision of 16 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division and rejected the opposition in its entirety, holding that there was no likelihood of confusion between the marks at issue.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
12 The intervener submits that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant raises six pleas in law, alleging, respectively:
– first, misapplication of Article 94(1) of Regulation 2017/1001 and of the right to be heard because the Board of Appeal based its decision on facts which were not presented by either of the parties;
– second, misapplication of Article 94(1) of Regulation 2017/1001 and of the right to be heard, in that the Board of Appeal did not base its decision on facts presented by the applicant;
– third, misapplication of Article 47(5) and Article 8(1)(b) of Regulation 2017/1001, with regard to the assessment of the distinctive character of the earlier mark;
– fourth, misapplication of Article 47(5) and Article 8(1)(b) of Regulation 2017/1001, with regard to the assessment of the similarity of the signs;
– fifth, misapplication of Article 47(5) and Article 8(1)(b) of Regulation 2017/1001, with regard to the assessment of the likelihood of confusion;
– sixth, misapplication of Article 94(1) of Regulation 2017/1001 and of the right to be heard, with regard to the assessment of the likelihood of confusion.
14 Accordingly, in essence, the applicant alleges, first, infringement of Article 8(1)(b) and Article 47(5) of Regulation 2017/1001 (third, fourth and fifth pleas in law) and, second, infringement of Article 94(1) of that regulation and of the right to be heard (first, second and sixth pleas in law).
15 In that context, it is necessary to examine, first, the third, fourth and fifth pleas in law, namely the infringement of Article 8(1)(b) and Article 47(5) of Regulation 2017/1001.
16 As a preliminary remark, it should be noted that Article 47(5) of Regulation 2017/1001 limits itself to providing that ‘if examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the EU trade mark application has been made, the application shall be refused in respect of those goods or services’ and that ‘otherwise the opposition shall be rejected’. Although the applicant alleges infringement of that provision, it must be held that, in the submissions made in the context of the third, fourth and fifth pleas, the applicant does not put forward any arguments specifically aimed at the content of that provision, but rather refers to the factual preconditions for the application of Article 8(1) b) of that regulation.
17 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark. Furthermore, under Article 8(2)(a)(iii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
18 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 that 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).
19 For the purpose 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).
Preliminary observations
20 As regards, first, the relevant territory, in paragraph 15 of the contested decision, the Board of Appeal found, in essence, that the relevant territory was that of Greece, France, Spain, Germany, Latvia and Lithuania, since the earlier mark was protected in those Member States. Having regard to the facts of the case, there is no reason to call into question such a finding, which is, moreover, not disputed by the applicant.
21 Secondly, as regards the relevant public, in paragraph 16 of the contested decision, the Board of Appeal considered that the relevant public consisted of the general public in the relevant territories. The Board of Appeal added that the public’s level of attention was below average, since the trade marks at issue concerned goods such as inexpensive sweets, including toffees or sucking sweets, and that this was not affected by the intervener’s argument that the level of attention could be high in relation to luxury goods.
22 Nor is there any reason to call into question the definition of the relevant public, which, moreover, is not disputed by the parties. In accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services 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). Furthermore, it must be borne in mind that, as regards the assessment of the likelihood of confusion, the section of the public which has the lowest level of attention must be taken into consideration (see judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited). Accordingly, in the present case, the likelihood of confusion must be assessed by taking into consideration an average consumer who is reasonably well informed and reasonably observant and circumspect, but whose level of attention is below average in relation to sweets, which are commonly inexpensive products intended for mass consumption and sold in self-service outlets.
23 Finally, with regard to the comparison of the goods, in paragraph 17 of the contested decision, the Board of Appeal noted that the goods covered by the trade marks at issue were identical, since those covered by the trade mark applied for, namely ‘candies, chocolate candies’, were identical to those covered by the earlier mark, namely ‘sweetmeats (candy)’, irrespective of the restriction relating to the Latvian territory, concerning ‘sweetmeats (candy), except milk-based candy’. Having regard to the facts of the case, there is no need to call into question such an assessment, which, moreover, is not contested by the applicant.
The comparison of the signs
24 The global assessment of the likelihood of confusion must, so far as concerns the visual, aural or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
25 The 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 at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
26 The weak distinctive character of an element of a composite mark does not necessarily imply 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 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited).
The distinctive and dominant elements
27 In the present case, in paragraph 20 of the contested decision, the Board of Appeal considered that, in the signs at issue, the word elements were small in size and therefore had only a limited impact on the overall impression. It noted that the public’s attention was rather drawn to the configuration of the flowers and the overall pattern, which should be regarded as the ‘most dominant’ part of the signs at issue.
28 In that perspective, in paragraphs 21 and 22 of the contested decision, the Board of Appeal added that, in general, the words written in the Cyrillic alphabet were not understood by Greek, French, Spanish or German consumers. It noted, as regards the earlier mark, on the one hand, that a ‘significant part’ of the Lithuanian and Latvian public could understand the word ‘ромашки’ which, for this public, meant ‘camomiles’ or ‘daisies’ and was likely to call to mind the flowers displayed in the mark or the flavour of the confectionery, and on the other hand, that the word ‘конфетти’, intermittently recurring on the vertical edges of the mark and meaning ‘confetti’, was hardly legible, so that it ‘ha[d] little consequence’ in the comparison of signs. As regards the mark applied for, the Board of Appeal stated that the word ‘рошен’ had no meaning in the languages spoken in the relevant territories or in Russian.
29 In paragraph 23 of the contested decision, the Board of Appeal also stated that, as regards confectionery, the figures of flowers against a green background were not highly distinctive, given that they usually conveyed the idea of products that are natural, pure, free from chemical and suchlike. It added that the Russian-speaking consumers who understood the word ‘ромашки’ as a reference to ‘camomile’ or those consumers who recognised the depiction of the camomile flower in the marks could assume that the confectionery possessed a camomile flavour. Accordingly, in the Board of Appeal’s view, the flower motif in itself was weak in distinctive character.
30 The applicant, first, in the third plea in law, disputes certain of the Board of Appeal’s assessments contained in paragraphs 20 to 23 of the contested decision concerning the comparison of the signs at issue and, more specifically, their distinctive and dominant elements. In particular, the applicant specifically criticises paragraph 23 of the contested decision and argues that the Board of Appeal failed to consider that the representation of white flowers with a yellow heart on a green background is highly distinctive for the goods in question. The Board of Appeal’s assessment that the representation of those flowers was not highly distinctive as it allegedly conveyed the image of a natural product or alluded to the flavour of the product, was erroneous and unfounded. The applicant also alleges, in this context, an erroneous application of Article 94(1) of Regulation 2017/1001. It claims that the relevant public does not attribute any meaning to the flowers represented in the marks at issue and that even if the assessment of the Board of Appeal was correct in respect the Russian-speaking public, this did not apply to the non-Russian-speaking public.
31 Secondly, under the fourth plea in law, the applicant argues that the word elements are either meaningless or decorative. According to the applicant, the signs at issue are dominated by the figurative element of arcs made of three white flowers arranged beneath each other in the middle section of the signs. It adds that the structure and the elements of the signs at issue are distinctive in respect of the goods in question.
32 EUIPO and the intervener dispute those arguments.
33 As a preliminary point, it should be noted that, on the one hand, the earlier mark consists of a square, green background in the centre of which several flowers with elongated white petals and a yellow centre are represented in a stylised manner. These flowers are juxtaposed in such a way as to comprise five horizontal parallel arcs, each consisting of three flowers, curved towards the bottom and placed at a different height. Furthermore, three of those arcs are placed at the centre of the sign and are entirely visible, while two of those arcs straddle the horizontal edges of the sign and are only partially visible, with one part protruding from the background of the sign. In the spaces between those arcs, again in the centre of the sign, the word element consisting of the word ‘ромашки’ is depicted four times in small yellow upper-case letters. After the last letter in that word, there is a very small circle, whose content is not clearly visible, but which evokes the symbol usually used to indicate a registered trade mark. On both sides of the sign, near its vertical edges, there is a motif consisting of identical and parallel horizontal triangular or conical shapes in shades of white and yellow. In keeping with those vertical motifs, the word element consisting of the word ‘конфетти' is depicted six times vertically in very small yellow characters.
34 On the other hand, the mark applied for consists of a rectangular background divided into three vertical stripes, namely two outer green stripes and a yellow central stripe, the separation of which is not clear, but which is achieved by means of a colour gradation. In the centre of the central yellow stripe, several flowers with elongated white petals and a yellow centre (which is darker than the background and tends towards yellow-orange near the edges) are stylised. Those flowers are juxtaposed so as to form three horizontal parallel arcs, each consisting of three flowers with a black outline, curved upwards and placed at various heights, namely, one at the very top, one towards the middle and one towards the bottom of the rectangle, respectively. In the spaces between those arcs, at the bottom of each arc, always in the centre of the rectangle, but slightly offset to the right, the word element consisting of the word ‘рошен’ is represented three times in small black upper-case characters. To the left and to the right of each arc, there is another arc, always made up of the same three flowers, but without a black outline and curved towards the inside of the rectangle. On the two green sides of the rectangular background, next to its vertical edges, there is a pattern consisting of six horizontal, parallel pairs of the same flowers with white petals and yellow centres and no black outline. In keeping with those vertical motifs, the word element ‘roshen’ is represented three times vertically in small black characters, framed by a thin black line.
35 In this context, in the first place, as regards the dominant elements of the signs at issue, it should be noted that the applicant does not appear to challenge the Board of Appeal’s assessment, contained in paragraph 20 of the contested decision, that ‘configuration of flowers’ and ‘the overall pattern’ constitute ‘the most dominant part[s]’ of the signs at issue and that the word elements have a limited impact on the overall impression. It even appears to confirm such an assessment, which, moreover, must not be called into question in the circumstances of the present case.
36 In that regard, it must be noted that, for the purposes of assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent 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 27 September 2018, TenneT Holding v EUIPO — Ngrid Intellectual Property (NorthSeaGrid), T‑70/17, not published, EU:T:2018:611, paragraph 66).
37 In the present case, it must be said that, as far as the earlier mark is concerned, although the word elements consisting of the words ‘ромашки’ and ‘конфетти' do not go unnoticed, the attention of the public does not, however, focus on those elements. Indeed, given their small size — or even very small size, as regards the second word, which is not clearly legible — and their yellow colour, those word elements do not stand out against the green background and do not attract the public’s attention. By contrast, the public’s attention immediately focuses on the three fully visible flower arcs depicted in the centre of the sign, which are much larger (both in width and height) than the word element ‘ромашки’ and are highlighted by their sharp outline and the white colour of the petals. Attention is then drawn to the recurring decorative motifs on the sides, which, although they have less sharp contours and more nuanced colours, still occupy the entire height of the square background of the sign. Likewise, with regard to the mark applied for, although the word elements consisting of the word ‘рошен’ and the word ‘roshen’ also do not go unnoticed, it must be noted that the public’s attention is drawn to the figurative elements, having regard both to their large number and to their size, which is much greater than that of the word elements. In particular, the public’s attention is focused on the white flowers with yellow centres forming three horizontal arcs of three flowers in the centre of the sign, whose flowers are highlighted by a precise design and a more pronounced black outline. Attention is then drawn to the other flowers forming vertical arcs and pairs on the sides of the mark, whose design is less precise and whose outline is less pronounced.
38 It follows that both in the earlier mark and in the mark applied for, as rightly noted by the Board of Appeal, the public’s perception is attracted by the flowers and by the overall structure of the figurative motif represented in the marks.
39 This being so, while the figurative elements constitute the ‘most dominant’ part of the signs at issue, the word elements written horizontally in the centre of the signs, as observed in paragraph 37 above, do not pass unnoticed and cannot be considered negligible since, although smaller in size compared with the figurative elements, they are clearly legible and recurring several times. On the other hand, while the word elements written vertically on the sides of the signs are also perceptible, they are more difficult to read in view of both their vertical orientation and the size of their characters. As the Board of Appeal noted, the latter therefore have less impact on the perception of the signs and therefore have little consequence when compared.
40 In the second place, as regards the distinctive character of the elements making up the signs at issue, first, as regards the word elements, on the one hand, it is common ground that the word ‘ромашки’ in the earlier mark means ‘camomile’ or ‘daisy’ in Russian. Consequently, since it is likely to evoke the flavour or composition of the goods, that element is weakly distinctive for the Russian-speaking part of the relevant public. On the other hand, it is also common ground that the non-Russian-speaking part of the relevant public does not attribute any significance to that word element, or to the word element ‘рошен’ of the mark applied for, which, moreover, has no significance in Russian. Consequently, the word ‘рошен’ has some distinctiveness for the relevant public, as does the word ‘ромашки’ for the non-Russian speaking part of that public.
41 Secondly, by contrast, the parties disagree as to the degree of distinctiveness that must be recognised, for goods such as sweets, in respect of the figurative element consisting of the representation of white flowers with a yellow centre on a green background. In particular, according to the applicant, those figurative elements have a very high degree of distinctiveness, while EUIPO and the intervener defend the position of the Board of Appeal that those elements do not have a very high degree of distinctiveness and that the flower motif is weakly distinctive.
42 As a preliminary point, it should be recalled that, according to the case-law, for the purposes of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (order of 3 May 2018, Siberian Vodka v EUIPO — Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38).
43 In that regard, it should be noted that small flowers with white petals and yellow centres, such as those depicted in the signs at issue, may evoke, in the perception of the relevant public, common field flowers, such as common daisies or ox-eye daisies, or the flowers of an equally common medicinal plant such as camomile. Moreover, with regard to the earlier mark, such a perception is all the more plausible for the Russian-speaking part of the relevant public, since the word ‘ромашки’ actually means ‘camomile’ or ‘daisy’ in Russian, which is not disputed by the parties. It cannot be ruled out that the representation of small flowers for goods such as sweets is likely to evoke, in the mind of the relevant public, the flavour or content of the sweets, their natural character or, again, their properties, such as refreshing or sweetening qualities. That is precisely what may occur in the present case, particularly for the relevant section of the public which perceives in the signs at issue the representation of camomile flowers, which may allude to certain characteristics of the goods in question, such as their flavour or composition.
44 The applicant’s argument that the relevant public will not attribute any meaning to the flowers depicted in the signs at issue cannot therefore be upheld. Even if the relevant public does not recognise a precise typology of flower (common daisies, ox-eye daisies, camomile or other) in the figurative elements represented in the signs at issue, it would still be in a position to perceive, as such, the representation of fairly simple flowers, which, regardless of their names, would still be capable of alluding to the natural character of the product, irrespective of whether that public is Russian-speaking or non-Russian-speaking.
45 It follows that, in the present case, the depiction of simple and common flowers, of no particular originality, cannot be regarded as being particularly distinctive for sweets and that the Board of Appeal was therefore right to consider that their distinctive character was not very high, including where those flowers are juxtaposed so as to form small arcs of three flowers or horizontal pairs of two flowers, which also do not present any particular originality, nor do the triangular or conical shapes appearing on the sides of the earlier mark, which rather have a decorative function.
46 However, the weak distinctive character of those figurative elements does not call into question the fact that they constitute the ‘most dominant’ part of the signs at issue. As is clear from the case-law, it should be borne in mind that the weak distinctive character of an element of a composite mark does not necessarily imply 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 (judgment of 12 June 2018, Cotécnica v EUIPO — Mignini & Petrini (cotecnica MAXIMA), T‑136/17, not published, EU:T:2018:339, point 52). In the light of the findings in paragraphs 37 and 38 above, it must be noted that, despite their weakly distinctive character, those figurative elements constitute ‘the most dominant’ part of the signs at issue.
47 Furthermore, as regards the applicant’s argument that there has been an infringement of Article 94(1) of Regulation 2017/1001, it should be noted that an infringement of that provision, which concerns the right to be heard, cannot be found on the sole ground that the Board of Appeal did not afford the applicant the opportunity to state its position on its assessment of the inherent characteristics of the figurative elements of the marks at issue. Indeed, it should be recalled that Article 94(1) of Regulation 2017/1001 provides that EUIPO decisions may only be based on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision affirms, in EU trade mark law, the general principle of protection of the rights of the defence. Under that principle, which includes the right to be heard, any person adversely affected by a decision of a public authority must have been afforded the opportunity effectively to make known his views before the adoption of that decision. The right to be heard extends to all the matters of fact or of law which form the basis of the decision, but not to the final position which the authority intends to adopt (judgment of 20 March 2019, Prim v EUIPO — Primed Halberstadt Medizintechnik (PRIMED), T‑138/17, not published, EU:T:2019:174, paragraphs 25 et 26).
The visual comparison
48 In the present case, in paragraph 24 of the contested decision, the Board of Appeal held that, while it was true that the signs at issue had three connected flowers in the centre forming a kind of arc and that those flowers had white petals, ‘the similarity end[ed] there’. To that effect, first of all, in paragraph 24 of the contested decision, the Board of Appeal stated that, in the earlier mark, the petals were arranged evenly around the centre, the flower was represented in a highly stylised manner and the interconnected flowers took the form of a shallow ‘u’, whereas, in the mark applied for, the petals were grouped in groups of two or three, the flower was an accurate representation of its appearance in nature and the interconnected flowers appeared to represent a ring of flowers viewed from the front. Then, in paragraph 25 of the contested decision, the Board of Appeal added that ‘other notable dissimilarities’ were that, in the earlier mark, the flowers were depicted on a green background and the vertical edges were decorated with a recurring pattern of yellow conical elements, whereas, in the mark applied for, the flowers were depicted on a yellow background and the vertical edges were decorated with the same flowers arranged in pairs. Moreover, in paragraph 26 of the contested decision, it held that the word element ‘ромашки’ contained in the earlier mark had no obvious connection with the word element ‘рошен’ contained in the mark applied for. Finally, in paragraph 27 of the contested decision, the Board of Appeal stated that, while there were some similarities between the signs, they were not strong since they related to ‘relatively weak marginal elements’ or ‘elements weak in distinctive character’. Based on those elements, in paragraph 27 of the contested decision, the Board of Appeal concluded that the signs were similar to a low degree.
49 The applicant, in the fourth plea in law, claims that the Board of Appeal wrongly concluded that the visual similarity is of a low level, by making an erroneous comparison, as it was too detailed and dissected. According to the applicant, there is a high degree of visual similarity between the signs at issue, stemming from the fact that the structure of the signs is identical: they are rectangular; the combination of colours is the same; they contain arcs formed by three flowers with small white petals around a yellow heart and edges composed of floral figurative elements to the left and right of those arcs, as well as a yellow-green background. The applicant claims that those elements create the same impression for the relevant public.
50 EUIPO argues that, although the two signs have certain similarities, they are also characterised by significant differences in the representation of the flowers, in the colour palette and in the arrangement of the background as well as in the word element. In particular, the earlier mark is highly stylised and has geometric and abstract floral shapes, whereas the mark applied for includes flowers depicted in a realistic way, the number of which is also very significant. Furthermore, there are completely different word elements of different lengths. To conclude, according to EUIPO, since the signs display notable visual differences and the similarities concern elements whose distinctiveness is weakened, the signs share only a low degree of visual similarity.
51 The intervener contests the applicant’s arguments: there is no arc in the mark applied for, since the flowers form circles; the flowers are different and they are presented differently; the structure of the marks is not identical; there are no yellow hearts in the flowers represented in the mark applied for; the colour of the background is different, as are the number of flowers and the word elements. Those differences can lead only to a finding of low visual similarity.
52 As a preliminary remark, it should be noted that it is common ground that there is a visual similarity between the signs at issue, with the parties disagreeing only as to the degree of such similarity. According to EUIPO and the intervener, as held by the Board of Appeal in the contested decision, that degree of similarity is low. According to the applicant, it is high. Furthermore, as is apparent from paragraph 5 of the contested decision, the Opposition Division, in the decision of 24 July 2018 upholding the opposition referred to in paragraph 7 above, found that those signs were similar to an average degree.
53 In those circumstances, in order to determine whether the Board of Appeal was correct in finding a low degree of similarity, it should be recalled that, in accordance with the case-law referred to in paragraph 25 above, the comparison of the marks at issue must be carried out by examining each of those marks taken as a whole. As noted in paragraph 39 above, although the arrangement of the flowers and the figurative motif as a whole constitute ‘the most dominant part’ of the conflicting signs, the other elements, such as the word elements, are not negligible, but, given their position and size, have a proportionally more limited impact on the overall impression of the signs at issue.
54 In the first place, as regards the structure of the marks at issue, it must be noted that, as the applicant points out, the two marks have a similar structure. First of all, both of the marks at issue are composite marks, composed of word and figurative elements set against a quadrilateral background with four right angles, namely a square in the earlier mark and a rectangle in the mark applied for. Next, the figurative elements are arranged, on the one hand, in the centre of the background so as to compose arcs, which, although oriented differently in the two signs, are parallel and composed of three flowers in both signs, and, on the other hand, on the edges of the background so as to compose, both to the left and to the right, a recurring pattern occupying the entire height of the signs. Finally, although smaller, the word elements are also arranged according to the same logic: some in the centre, written horizontally between the arcs, and others on the sides, written vertically in front of the recurring pattern. Consequently, even if the number of different elements is different in the two signs, having regard in particular to the fact that the mark applied for has more flowers but fewer word elements than the earlier mark, they are, in both cases, repetitive elements, the arrangement of which follows an analogous structure.
55 In the second place, as regards the figurative elements, as already noted in paragraphs 33 and 34 above, first, both marks represent flowers with elongated white petals and a yellow centre. Furthermore, in the latter respect, the intervener’s argument that the flowers represented in the mark applied for do not have a yellow centre is in fact lacking, since such a centre is clearly visible where the petals of each flower converge, even though the yellow colour of the centre is darker in the mark applied for.
56 As regards the representation of those flowers in the two signs, on the one hand, it should be noted that they are depicted in the same way, namely as viewed from above, showing only the petals and the centre of the flower, without stem, leaves or other elements. On the other hand, the fact that, in the earlier mark, the flowers are represented in a more geometric manner, their size is identical and the petals are 12 in number and equidistant from each other, whereas, in the mark applied for, the flowers are represented in a slightly more natural manner, their size is slightly variable and the petals are more irregular (sometimes together, sometimes more distant), and are therefore difficult to count, is not likely to call into question the fact that, in both signs, those representations refer to the same typology of flower, namely a rather simple flower, which combines elongated white petals with a yellow centre. In other words, although there are a large number of flowers whose appearance, petals and centre can vary greatly in shape and colour, the two signs at issue, although with perceptible stylistic differences, clearly represent several times the same type of flower.
57 Secondly, in the centre of the background of the signs at issue, those flowers are arranged so as to form small arcs, each consisting of three flowers. It is true that the earlier mark contains only five horizontal parallel downward-curving arcs, three of which are fully visible and two of which are partially visible, whereas the mark applied for contains three horizontal parallel upward-curving arcs and six vertical arcs curving towards the interior of the rectangular background. However, although the number, alignment and orientation, and even the depth of those arcs is slightly different, the fact remains that, in the signs at issue, the flowers are arranged in such a way as to comprise the same motif, namely several arcs consisting of three flowers and, in particular, horizontal arcs parallel to the centre of the sign, where the public’s attention focuses, having regard to the precise design and sharp outline of the flowers comprising those arcs.
58 In that context, the intervener’s argument that, in the mark applied for, the flowers do not form arcs but circles, and the Board of Appeal’s statement contained in paragraph 24 of the contested decision, that the flowers represent ‘a ring of flowers seen end on’, must be rejected.
59 It is not apparent that, in the mark applied for, the flowers are arranged in such a way as to form the perimeter of a circle or an oval, which would evoke, inter alia, the image of a ring of flowers. Even if it were possible to perceive, in the configuration of the flowers contained in the mark applied for, curved lines evoking parts of a circle or an oval, they would correspond precisely to arcs, an arc being a portion of a curved line.
60 Even assuming that it is possible to perceive, in the mark applied for, horizontal arcs of seven flowers and therefore larger than the three flowers contained in the earlier mark, on the one hand, such a hypothesis is unlikely, since it would not take into account one flower on each side of each arc. On the other hand, in each hypothetical arc of seven flowers, the three central flowers would remain highlighted in relation to the other flowers, since their design is more precise and their outline more pronounced. That would therefore highlight, in the mark applied for, three parallel horizontal arcs of three flowers similar to the three parallel horizontal arcs of three flowers which are entirely visible in the earlier mark.
61 Thirdly, on the sides of the background of the signs at issue, a recurring motif that occupies the entire height of the sign is represented both to the left and to the right. In the earlier mark, this consists of conical or triangular shapes in shades of white and yellow, which may evoke the image of a petal. In the mark applied for, it consists of six pairs of flowers with white petals and yellow centres on each side. Although, taken individually, such flowers in the mark applied for are distinguishable from the conical or triangular shapes in the earlier mark, in the context of an overall comparison of the signs at issue, however, the presence of a recurring pattern consisting of white and yellow horizontal elements and filling the entire height of the rectangular background constitutes an element of visual similarity between the two signs.
62 In the third place, with regard to the word elements, by way of introduction, as already observed in paragraph 52 above, it should be noted that they are arranged in the signs at issue according to the same structural logic: a word element repeated in the centre, horizontally in the spaces between the arcs, and another word element repeated on the sides, vertically in front of the recurring figurative motif. Those latter elements written vertically, however, as can be seen from paragraph 39 above, taken individually, have little impact in the visual comparison of the signs at issue, having regard to their orientation and size.
63 On the other hand, as regards the word elements written horizontally between the arcs, namely the word ‘ромашки’ in the earlier mark and the word ‘рошен’ in the mark applied for, the Board of Appeal erroneously considered that they had ‘no obvious point of similarity’. First of all, those word elements are both written in standard upper-case letters, although the fonts used are respectively yellow and black. Next, the two words, which are seven and five letters respectively, have exactly the same first two letters, namely the letters ‘p’ and ‘o’, as well as another common letter, namely the letter ‘ш’, which, moreover, in both words, is the third letter from the end of the word. Lastly, as is common ground between the parties, they are all written in Cyrillic characters. Even supposing that only the Russian-speaking part of the Lithuanian and Latvian public is able to recognise that these are words written in the Cyrillic alphabet, the other part of the relevant public, given the identity of certain letters, is nevertheless able to recognise that these are words written in the same alphabet and that it is neither the Greek alphabet (for the Greek public) nor the Latin alphabet (for the French, Spanish and German public as well as for the non-Russian speaking part of the Lithuanian and Latvian public).
64 In view of all those elements, it should be noted that the Board of Appeal erred in its view that the finding of the Opposition Division, as to the degree of similarity between the signs at issue, should be altered and that there should be a finding of a low degree of visual similarity. On the contrary, having regard to the similarities inherent in the structural, figurative and word elements contained in the signs at issue, it must be concluded that the degree of visual similarity between those signs should be regarded as average.
The aural comparison
65 In the present case, in paragraph 28 of the contested decision, the Board of Appeal held that the only word in the earlier trade mark that could be pronounced was the word ‘ромашки’ which was pronounced in three syllables, namely ‘ro’, ‘mach’ and ‘ki’, by the Russian-speaking part of the relevant public, whereas the word ‘конфетти’, meaning ‘confetti’, was unlikely to be pronounced given its small size and off-centre position. The Board of Appeal added that the word ‘рошен’ of the mark applied for was pronounced in two syllables, namely ‘ro’ and ‘chen’, by that same public. In paragraph 29 of the contested decision, the Board of Appeal concluded that, in view of the identical sound of the first two letters of each sign, the signs at issue were to be considered similar to a very low degree. Finally, in paragraph 30 of the contested decision, the Board of Appeal stated that for the non-Russian-speaking part of the public it was not possible to make an aural comparison.
66 The applicant submits that, in the contested decision, the Board of Appeal correctly held that, for the relevant non-Russian-speaking public, an aural comparison was not possible and that, for the Russian-speaking public, the signs were aurally similar.
67 EUIPO states that the applicant does not contest the findings of the Board of Appeal. The intervener argues that the applicant distorts the conclusions of the Board of Appeal, according to which the signs are similar ‘but only to a very low degree’.
68 As a preliminary point, it should be noted that the Board of Appeal carried out the aural comparison of the signs at issue by taking into consideration only the word elements written horizontally, namely the words ‘ромашки’ and ‘рошен’. Indeed, as the Board of Appeal noted, in essence, it is unlikely that the relevant public would pronounce the vertically written word elements, namely the words ‘конфетти’ and ‘roshen’, in view of their very small size and off-centre position, as well as, moreover, their vertical orientation.
69 As regards the aural comparison of the words ‘ромашки’ and ‘рошен’, there is nothing in the file concerning the pronunciation of those words to call into question the findings of the Board of Appeal that, on the one hand, the Russian-speaking part of the relevant public will pronounce the first word in three syllables, namely ‘ro’, ‘mach’ and ‘ki’, and the second word in two syllables, namely ‘ro’ and ‘chen’, so that the sound of the first two letters of those words are identical, and, on the other hand, the non-Russian-speaking part of the relevant public is not in a position to make an aural comparison of the signs.
70 In the circumstances of the present case, therefore, as the applicant points out, the Board of Appeal rightly considered that, for the Russian-speaking part of the relevant public, the signs at issue were similar, and that, as the intervener points out, to a very low degree, since the only word elements that can be pronounced are proportionately less important than the figurative elements in the context of the comparison of the signs.
The conceptual comparison
71 In the present case, in paragraph 32 of the contested decision, as regards the Russian-speaking part of the relevant public, the Board of Appeal found that there was a conceptual difference between the signs at issue, since that part of the public would interpret the word element ‘ромашки’ of the earlier mark and thus associate it with camomile flowers or daisies, whereas the word element ‘рошен’ of the later mark ‘project[ed] no clear idea at all; apart from the general notion of a pattern of flowers’. However, the Board of Appeal added that, despite this conceptual divergence arising from the word elements, the signs had an ‘overarching conceptual similarity’, owing to the common presence of rather similar-looking flowers. In paragraph 33 of the contested decision, with regard to the non-Russian-speaking part of the relevant public, the Board of Appeal stated that, although the word elements ‘ромашки’ and ‘рошен’ had no meaning, the signs at issue had a certain degree of conceptual similarity ‘owing to the figurative representation of camomile[s] or simply because both signs feature[d] similar patterns of flowers’. On the basis of those elements, in paragraph 34 of the contested decision, the Board of Appeal concluded that, although the signs were conceptually similar, the degree of such similarity ‘[was] not high’ as it was based on rather banal figurative and word elements.
72 The applicant submits that the signs at issue are conceptually identical because of the arcs formed by three flowers with white petals and a yellow heart, with edges composed of floral elements on the left and right, against a green and yellow-green background. That, it claims, had been recognised in the contested decision. According to the applicant, however, the Board of Appeal erred in its finding that that similarity was based on rather banal elements. The conceptual similarity should have been found to have been at least average.
73 EUIPO and the intervener dispute the applicant’s arguments.
74 In the first place, it should be noted that, as the Board of Appeal points out, without any of the parties contesting it and there being nothing in the file to cast doubt on it, the word element ‘ромашки’ means ‘camomile’ or ‘daisy’ in Russian and the word element ‘рошен’ is devoid of any meaning or does not project any ‘clear idea at all’ in Russian. Accordingly, for the Russian-speaking part of the relevant public, the word elements are potentially likely to result in a conceptual difference between the signs at issue. However, since those word elements are combined, in those signs, with similar figurative elements consisting of white flowers with yellow centres and therefore evoke a similar concept, any conceptual difference is compensated for by the conceptual similarity resulting from those figurative elements.
75 In particular, the white flowers with yellow centres represented in both signs evoke, in the mind of the relevant public, the image of simple and common field flowers, such as common daisies, ox-eye daisies or camomile flowers. Moreover, on the one hand, the perception of the earlier mark as evoking the image of a daisy or a camomile flower is only reinforced, for the Russian-speaking public, by the meaning of the word ‘ромашки’ repeated several times in the sign. On the other hand, such a conceptual perception of the mark applied for is not contradicted by the presence of the word element ‘рошен’, which, far from evoking a concept that is different or opposite to that of those flowers, simply does not evoke any concept.
76 In the second place, the non-Russian-speaking part of the relevant public does not make any conceptual comparison on the basis of the word elements of the signs at issue, since they have no meaning for that public. Nevertheless, in view of the fact that the figurative elements contained in the signs at issue evoke a similar concept (see paragraph 75 above), those signs as a whole remain conceptually similar also for that part of the relevant public.
77 Thus, the Board of Appeal did not err in finding that the signs at issue were, as a whole, conceptually similar, a similarity which, however, in view of the fact that it derives from figurative elements which are not particularly distinctive, is not high, but at most average.
78 Furthermore, in this respect, contrary to what is stated by EUIPO in paragraph 40 of the contested decision, the Board of Appeal did not expressly confirm that the conceptual similarity would be low, but only considered such a hypothesis in the context of the examination of the likelihood of confusion, as is apparent from the expression ‘even recognising that there may exist a low level of conceptual similarity between the signs’, which is of a manifestly hypothetical nature.
The likelihood of confusion
79 In the present case, after noting, in paragraph 37 of the contested decision, that the goods covered by the marks at issue were identical, the Board of Appeal, in paragraphs 38 and 39 of that decision, stated that, although the signs had certain similarities, those similarities were rather banal and were outweighed by other factors. In that regard, the Board of Appeal states, first, that they are not the same flowers and that, in the earlier mark, the flowers are more stylised, whereas, in the mark applied for, the flowers are more natural; second, that the signs are characterised by completely different word elements; third, that the signs differ in their first and last parts as regards the decorative elements, namely conical elements in the earlier mark and flowers in the mark applied for; fourth, that the connected flowers are placed on a green background in the earlier mark and on a yellow background in the mark applied for; and, fifth, that the signs differ in the nature of the flowers. In paragraph 40 of the contested decision, the Board of Appeal added, on the one hand, that the similar elements of the marks at issue, namely the colour green and the floral design, did not have a high degree of distinctiveness and, on the other hand, that even recognising that there may be a low degree of conceptual similarity between the signs at issue, where the earlier mark is not especially known to the public and consisted, as in the present case, of an image or design of little imaginative content, mere conceptual similarity was not sufficient to give rise to a likelihood of confusion. The Board of Appeal thus concluded, in paragraph 41 of the contested decision, that the common concept of flowers was not decisive and that the multiple differences between the marks, compared against several rather banal similarities, were sufficient to avoid any likelihood of confusion, even if the marks were displayed on identical goods. Furthermore, in the paragraphs 42 to 46 of the contested decision, the Board of Appeal set out the reasons why, in its view, the results of the market study relied on by the applicant could not call into question such a conclusion, the value of that study being ‘doubtful’ according to the Board of Appeal.
80 The applicant, in the third and fifth pleas, first, claims that the Board of Appeal erred in failing to take into account the ‘high’ distinctiveness of the earlier mark. It seems to be taking such a distinctive character from the depiction of white flowers with yellow centres on a green background, which, it claims has a very high level of distinctiveness in relation to the goods at issue. The applicant also claims that the Board of Appeal did not contest the fact that the earlier mark had at least a normal degree of distinctiveness. The fact that the earlier mark was registered as a trade mark demonstrated that it has at least such distinctiveness, which it claims is, in fact, ‘rather [high]’.
81 Second, the applicant claims that, in view of the fact that the goods at issue are identical, even a low degree of similarity between the signs is sufficient to establish a direct likelihood of confusion. In the present case, having regard to the identity of the goods, the degree of similarity of the signs being at least average, the distinctiveness of the earlier mark being at least average, the level of attention of the relevant public being low and the fact that the goods are generally purchased on sight, there is a direct likelihood of confusion. The Board of Appeal erroneously based its decision on minimal differences between the signs and on the alleged weak distinctiveness of the similar elements, without considering the identical nature of the goods. The applicant adds that there is also an indirect likelihood of confusion in so far as the relevant public may perceive the sign applied for as a modernisation of the earlier sign or as a sub-brand. Furthermore, the applicant claims that the assessment by the Board of Appeal contradicts both its own findings on the factors relevant to the case and the findings of the Court in the similar case between the same parties that gave rise to the judgment of 7 February 2018, Kondyterska korporatsiia ‘Roshen’ v EUIPO — Krasnyiy oktyabr (Representation of a crayfish) (T‑775/16, not published, EU:T:2018:74).
82 EUIPO, first, states that the Board of Appeal found that the distinctiveness of the earlier mark was weakened in relation to the goods in question. According to EUIPO, even if the Board of Appeal did not expressly mention this reduced degree of inherent distinctiveness of the earlier mark as a whole, that conclusion is obvious from the overall context of the reasoning set out in the contested decision. There is nothing to indicate how, in the present case, a degree of distinctiveness that is at least normal with regard to the earlier mark as a whole could result from the simple conjunction of weak elements. There is no automatic link between the registration of a mark and the alleged existence of an average or high degree of distinctiveness.
83 Second, EUIPO states that it is undisputed that the goods are identical, that the signs have a certain degree of similarity and that the level of attention of the relevant public may be lower than average, but that there is disagreement as to the degree of similarity between the signs and the inherent distinctiveness of the earlier mark: the Board of Appeal correctly concluded that the similarity is ‘(very) low’ and that distinctiveness is ‘weakened’. Those elements enabled the Board of Appeal to reach the conclusion that there was no likelihood of confusion. That result is not called into question by the applicant’s reference to the case which gave rise to the judgment of 7 February 2018, Representation of a crayfish (T‑775/16, not published, EU:T:2018:74), in which, even independently of the other elements, the earlier mark had a normal degree of inherent distinctiveness.
84 The intervener contends, first, that the applicant did not refer to the high distinctiveness of the earlier mark during the opposition proceedings or before the Board of Appeal and did not provide any evidence to that effect. Second, it argues that the differences between the signs at issue are not minimal and that the Board of Appeal correctly took into account the banal nature of the white flowers and the descriptive nature of the colour green. According to the intervener, the word elements in Cyrillic characters only confirm the visual dissimilarity and, for Russian-speaking consumers, they lead to aural dissimilarity. Finally, the intervener contends that the applicant is wrong to refer to the case which gave rise to the judgment of 7 February 2018, Representation of a crayfish (T‑775/16, not published, EU:T:2018:74), in so far as the circumstances are different.
85 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 marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
86 In the first place, it should be noted that, in assessing the likelihood of confusion in paragraphs 37 to 41 of the contested decision, the Board of Appeal failed to take into account certain relevant factors or erroneously took into account other factors.
87 First, as regards the goods covered by the marks at issue mentioned in paragraph 37 of the contested decision, while the Board of Appeal rightly pointed out that those goods were identical, it must be noted that at no time in the assessment of the likelihood of confusion did it take into account the level of attention of the relevant public, even though it is an important factor in that assessment and, moreover, in the present case the relevant public, which is the general public, shows a lower than average level of attention for goods such as sweets.
88 Second, as regards the five factors allegedly capable of offsetting the similarities between the marks at issue mentioned in paragraph 39 of the contested decision and recalled in paragraph 79 above, some of those factors have no factual basis. On the one hand, as regards the first and fifth factors, as noted in paragraph 55 above, the flowers represented in both marks are not diverse or of a different nature, since, on the contrary, in view of the characteristics of their petals and their centres, despite certain clearly visible stylistic differences, they clearly correspond to the same typology. On the other hand, as regards the second factor, as noted in paragraph 63 above, the word elements horizontally written in the signs at issue are not ‘entirely different’, but, on the contrary, present both visual and aural similarities.
89 Thirdly, the other factors mentioned in paragraph 39 of the contested decision refer to particular differences between similar aspects. Thus, as regards the fourth factor, while it is true that, in the earlier mark, the connected flowers are arranged on a green background and, in the mark applied for, on a yellow background, this only relates to the central part of the two trade marks since, on the other hand, the mark applied for also contains, on the sides, flowers connected to each other and arranged on a green background, and, above all, both marks use the same colour code, namely green, yellow and white, which is not called into question by the fact that their sequence and gradation are different, nor by the fact that, in the mark applied for, the outlines of certain flowers and the word elements are represented using fine black lines. Similarly, as regards the third factor, while it is true that the decorative elements arranged on the sides of the marks are different when considered individually, in both marks, however, they consist of patterns made up of horizontal elements repeated over the entire height of the signs which, moreover, are white and yellow in colour on a green background.
90 Fourth, with regard to the alleged fact that the similarities between the marks at issue are ‘rather banal’, referred to in paragraphs 39 and 41 of the contested decision, it should be noted at the outset that the contested decision does not contain any further clarification of the significance to be attributed to such a characterisation. When questioned in that regard at the hearing, EUIPO stated that that characterisation was to be understood, in essence, as meaning that the similar elements contained in the signs at issue were descriptive, in particular taking into account the natural character or flavour of the goods concerned. Even if such an interpretation were correct, it should be noted that the fact that certain elements of similarity of the signs at issue may be perceived as alluding to the characteristics of the goods in question, and thus as being descriptive or weakly distinctive, is not in itself sufficient to rule out a likelihood of confusion between the marks at issue, since they remain visually, aurally and conceptually similar as a whole.
91 Fifth, as regards the distinctive character of the earlier mark, it should be noted that, contrary to what is argued by EUIPO, the Board of Appeal did not expressly characterise the earlier mark as being weakly distinctive, but insisted only that the similar elements composing the signs at issue, such as the colour green and the floral design, were not highly distinctive.
92 It is necessary to distinguish between the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a composite mark possesses, which determines its ability to dominate the overall impression created by the mark (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43). While it is true that it is necessary to examine the distinctiveness of an element of a composite mark at the stage of assessing the similarity of the signs in order to determine any dominant element of the sign, the degree of distinctiveness of the earlier mark is an element to be taken into account in the context of the global assessment of the likelihood of confusion (judgment of 25 March 2010, Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 65).
93 However, it must be noted that the contested decision does not contain any assessment of the distinctive character of the earlier mark.
94 Furthermore, in that regard, the arguments alleging that the earlier mark is not ‘especially known’, mentioned incidentally in paragraph 40 of the contested decision, and alleging lack of use or distinctive character acquired through the use of that mark, referred to by EUIPO at the hearing, should be dismissed as ineffective, since it is common ground that, in the course of the administrative proceedings before EUIPO authorities, the applicant did not rely on the reputation of the earlier mark or on the increased distinctiveness resulting from the use of that mark, nor did the intervener request that genuine use of that mark be proved.
95 In any event, even supposing that, in the present case, the inherent distinctiveness of the earlier mark is weak, it must be borne in mind that, although the distinctiveness of the earlier mark must be taken into account in order to assess the likelihood of confusion, it is only one element among others involved in that assessment. Consequently, even in a case involving an earlier mark with a 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 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
96 In the second place, it must be borne in mind that the likelihood of confusion on the part of the public must be assessed as a whole, taking into account all factors relevant to the circumstances of the case (order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 44).
97 In the present case, in the context of such an overall assessment, it is appropriate to begin by pointing out, first, that the goods covered by the marks at issue are identical, that the relevant public is the general public and that that public shows a below-average level of attention for the goods in question. On the other hand, it should be borne in mind that the marks at issue, far from being similar only in certain respects, display visual similarity, aural similarity and also conceptual similarity. Although the aural similarity is indeed very low, the fact remains that both visual and conceptual similarity are average.
98 Thus, even supposing that the earlier mark has a weak inherent distinctive character, such a circumstance would not make it possible to rule out a likelihood of confusion between the marks at issue, having regard to the identity of the goods covered by the earlier mark and by the mark applied for, in respect of which the relevant public shows a below-average level of attention, and to all the elements of similarity between the signs at issue, even if certain similar elements of those signs have a weak distinctive character. Indeed, it cannot be excluded that the relevant public, showing a below-average level of attention, confronted with identical goods such as sweets, sold under marks presenting a pattern consisting of, in the centre, arcs of three white flowers with yellow centres and recurring words written in Cyrillic characters and, on each side, recurring decorative motifs, all of which on a wholly or partly green rectangle, may suggest that they are marks which originate from the same undertaking or which constitute variations of the same mark.
99 It follows from all of the foregoing that the Board of Appeal wrongly found that there was no likelihood of confusion between the marks at issue on the part of the relevant public.
100 It follows that the third, fourth and fifth pleas in law must be regarded as well founded, in so far as they allege infringement of Article 8(1)(b) of Regulation 2017/1001.
101 Consequently, the decision must be annulled in its entirety, without there being any need to consider the first, second and sixth pleas in law, alleging infringement of Article 94(1) of Regulation 2017/1001 and of the right to be heard.
Costs
102 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.
103 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
104 Since the intervener has been unsuccessful, it must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 November 2018 (Case R 1872/2018-2);
2. Orders EUIPO to pay, in addition to its own costs, those incurred by Rot Front OAO;
3. Orders Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’ to bear its own costs.
Tomljenović | Marcoulli | Kornezov |
Delivered in open court in Luxembourg on 13 May 2020.