JUDGMENT OF THE GENERAL COURT (First Chamber)
15 November 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark TIFFANY CRUNCH N CREAM – International registration of the earlier figurative mark CRUNCH – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑321/22,
International Foodstuffs Co. LLC, established in Sharjah (United Arab Emirates), represented by J. Blum, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Hamel, M. Eberl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz, C. Elkemann and J. Thomsen, lawyers,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, R. Mastroianni (Rapporteur) and I. Gâlea, Judges,
Registrar: R. Ukelyte, Administrator,
having regard to the written part of the procedure,
further to the hearing on 27 June 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, International Foodstuffs Co. LLC, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 March 2022 (Case R 2136/2020-2) (‘the contested decision’).
Background to the dispute
2 On 20 December 2018, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign TIFFANY CRUNCH N CREAM.
3 The mark applied for covered goods 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, corresponding to the following description: ‘Chocolates; confectionery; candies; biscuits (all types); cakes; pasta; macaroni; noodles; instant noodles; spaghetti; vermicelli; yeast; baking powder; salad dressings; mayonnaise; vinegar; ketchup and sauces (condiments); ready to cook dough products; frozen dough; frozen parathas; ice creams; non-dairy frozen desserts; frozen fruit desserts; ice desserts; coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; bread; pastry; treacle; salt; mustard; flour made from cereals; spices; gravies; herbal tea; honey’.
4 On 6 May 2019, the intervener, Société des produits Nestlé SA, 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, inter alia, the international registration designating the European Union in respect of the figurative mark reproduced below:
6 The earlier mark was registered on 13 May 2008 under the number 966515. It covers goods in Classes 29, 30 and 32 corresponding, for each of those classes, to the following description:
– Class 29: ‘Vegetables and potatoes (preserved, dried or cooked), fruits (preserved, dried or cooked), mushrooms (preserved, dried or cooked), meat, poultry, game, fish and seafood products, all these products in the form of extracts, soups, jellies, spreads, preserves, cooked, deep-frozen or dehydrated dishes; jams; eggs; milk, cream, butter, milks, cheeses and other foodstuffs based on milk; milk substitutes; beverages made with milk; desserts made of milk and desserts made of cream; yoghurts; soya milk (milk substitutes), preserved soya beans for human consumption; edible oils and fats; protein preparations for human consumption; whiteners for coffee and/or tea (cream substitutes); sausages; charcuterie, peanut butter; soups, concentrated soups, thick soups, bouillon cubes, bouillons, clear soups’;
– Class 30: ‘Coffee, coffee extracts, coffee-based preparations and beverages; iced coffee; artificial coffee, artificial coffee extracts, preparations and beverages made with artificial coffee; chicory; tea, tea extracts, preparations and beverages made with tea; iced tea; malt-based preparations for human consumption; cocoa and cocoa-based preparations and beverages; chocolate, chocolate products, chocolate-based preparations and beverages; confectionery, sugar confectionery, sweets; sugar; chewing gum not for medical purposes; natural sweeteners; bakery goods, bread, yeast, pastries; biscuits, cakes, cookies, wafers, toffees, desserts included in this class, puddings; edible ices, water ices, sorbets, ice confectioneries, frozen cakes, ice-creams, ice desserts, frozen yogurts, powders and binding agents (included in this class) for making edible ices and/or water ices and/or sorbets and/or ice confectioneries and/or frozen cakes and/or ice-creams and/or ice desserts and/or frozen yogurts; honey and honey substitutes; breakfast cereals, muesli, corn flakes, cereal bars, ready-to-eat cereals; cereal preparations; rice, pasta, noodles; foodstuffs made with rice, flour or cereals, also in the form of cooked dishes; pizzas; sandwiches; pasta and ready-to-bake cake dough preparations; sauces, soya sauce; ketchup; products for flavouring or seasoning foodstuffs; edible spices, condiments, dressings for salads, mayonnaise; mustard; vinegar’;
– Class 32: ‘Beers; mineral water and other non-alcoholic beverages, syrups, extracts and essences for making non-alcoholic beverages, fruit juices, cocoa-based beverages’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) 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).
8 On 29 September 2020, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
9 On 11 November 2020, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
10 By the contested decision, the Board of Appeal dismissed the appeal. It found that, on account of the identity and similarity between the goods at issue, the at least low degree of visual similarity, the average degree of phonetic similarity, the lack of conceptual similarity as well as the enhanced distinctiveness of the earlier mark and the low to average level of attention of the relevant public, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
12 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The issue of whether the documents and arguments which have allegedly been submitted for the first time before the Court are admissible
13 The intervener claims, in its response, that the applicant has submitted a number of new annexes and new arguments for the first time before the Court, which must, for that reason, be declared inadmissible.
14 In the first place, according to the intervener, the applicant annexed to the application, inter alia, a series of new documents corresponding to an extract from the Wikipedia website relating to the English expression ‘cookies and cream’ (Annex A.6), a series of website extracts relating to the expression ‘cookies and cream’ and to the terms ‘crunch’ and ‘n’ (Annexes A.7 and A.8) and a French advertisement relating to the chocolate bar bearing the trade mark CRUNCH (Annex A.9).
15 In the second place, according to the intervener, the new arguments put forward by the applicant are those relating, in essence, to the distinctive and dominant elements of the mark applied for and of the earlier mark and to the assessment of the likelihood of confusion. In particular, the intervener submits that what is involved are arguments, as regards the distinctive and dominant elements of the mark applied for, concerning the relevant public’s understanding of the element ‘n’ and of the expression ‘crunch n cream’ as a whole, on the one hand, and of the elements ‘n cream’ or ‘crunch n’, taken separately, on the other hand. Next, as regards the distinctive and dominant elements of the earlier mark, the intervener submits that the applicant puts forward for the first time before the Court the argument that, as the figurative elements of that mark are dominant, the word element ‘crunch’ will be perceived as having a space or a full stop between the letters ‘u’ and ‘n’. As regards the assessment of a likelihood of confusion between the marks at issue, the applicant’s new argument, according to the intervener, is that it is unusual for the principal mark to be placed in the middle of a series of words rather than at the beginning or the end of a composite sign.
16 At the hearing, the applicant submitted, first, as regards the admissibility of the new arguments, that the assessment of the distinctive and dominant elements and the overall impression of the likelihood of confusion were issues of law which constituted the substance of the action which had to be examined by the Court. Secondly, as regards the admissibility of Annexes A.6, A.7, A.8 and A.9 to its application, it submits that it annexed those documents in response to the Board of Appeal’s findings in the contested decision regarding the average consumer’s perception of the expression ‘crunch n cream’.
17 EUIPO submitted at the hearing, first, that those new arguments were admissible since they were linked to a factual assessment which the Court had to take into account in the context of the application of Article 8(1)(b) of Regulation 2017/1001. However, EUIPO points out that this is a significant reversal of the applicant’s arguments in that the Board of Appeal cannot be criticised for not having taken into account arguments which had been submitted to it beforehand. Secondly, in response to a question put by the Court during the hearing on the admissibility of Annexes A.6, A.7, A.8 and A.9 to the application, EUIPO claimed that Annex A.6 was admissible in that it consisted of a page from the Wikipedia website and was therefore a well-known fact. As regards Annexes A.7, A.8 and A.9 to the application, EUIPO submits that they must be regarded as inadmissible since they were not submitted in the course of the proceedings before EUIPO.
18 In that regard, it is true that, under Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal.
19 It should also be noted that, according to settled case-law, it follows from Article 72 of Regulation 2017/1001 that the Court is called upon to assess the legality of decisions of the Boards of Appeal of EUIPO by reviewing their application of EU law, having regard, in particular, to the facts which were submitted to them. It also follows from Article 95(2) of that regulation that it is for the parties to produce before EUIPO in due time the matters of fact upon which they intend to rely. Thus, facts not relied on by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action brought before the Court, and the latter cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it, except facts which should have been examined of their own motion by EUIPO’s bodies, in accordance with Article 95(1) of that regulation (see, to that effect, judgments of 10 November 2011, LG Electronics v OHIM, C‑88/11 P, not published, EU:C:2011:727, paragraphs 23 to 26; of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19; and of 29 September 2010, Interflon v OHIM – Illinois Tool Works (FOODLUBE), T‑200/08, not published, EU:T:2010:414, paragraph 11).
20 In the first place, as regards the admissibility of the annexes described in paragraph 14 above, it must be noted, first of all, that Annex A.9 was adduced by the applicant during the proceedings before EUIPO. Consequently, since that annex was not adduced for the first time before the Court, within the meaning of the case-law cited in paragraph 19 above, it cannot be disregarded.
21 Next, as regards Annexes A.6 and A.7, the applicant seeks, by those annexes, to challenge the Board of Appeal’s assessment in paragraph 54 of the contested decision, relating, in the context of the assessment of the distinctive and dominant elements of the mark applied for, to the independent distinctive role of the element ‘crunch’ within the mark applied for, in that it would be perceived independently of the other elements ‘tiffany’, ‘n’ and ‘cream’. Lastly, by Annex A.8, the applicant seeks to challenge the Board of Appeal’s assessment in paragraph 50 of the contested decision, according to which the element ‘crunchy’, and not ‘crunch’, is used in such a way that it could be perceived as being descriptive of the goods at issue. Accordingly, those annexes must be regarded as being admissible in so far as they relate to facts referred to in the contested decision and which therefore form part of the factual context of the proceedings before the Board of Appeal (see, to that effect, judgment of 5 February 2020, Hickies v EUIPO (Shape of a shoe lace), T‑573/18, EU:T:2020:32, paragraph 18 and the case-law cited).
22 In the light of the foregoing considerations, Annexes A.6, A.7, A.8 and A.9 to the application must be declared admissible.
23 In the second place, as regards the admissibility of the arguments described in paragraph 15 above, it should be noted that they relate to those concerning the distinctive and dominant elements of the mark applied for and of the earlier mark as well as the assessment of the likelihood of confusion, which were assessed by the Board of Appeal in paragraphs 51 to 55 and 77 to 79 of the contested decision.
24 Accordingly, it must be held that those arguments cannot change the subject matter of the proceedings before the Board of Appeal within the meaning of the case-law cited in paragraph 18 above and must, therefore, be regarded as admissible.
Substance
25 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
26 In its single plea, it disputes the Board of Appeal’s finding that there exists, pursuant to Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion on the part of the relevant public in this case. In particular, it questions the findings of the Board of Appeal on (i) the distinctive and dominant elements of the signs at issue, (ii) the finding of an average degree of phonetic similarity, (iii) the enhanced distinctiveness of the earlier mark, and (iv) the overall assessment of the likelihood of confusion.
27 At the hearing, the applicant withdrew the argument relating to the enhanced distinctiveness of the earlier mark, formal note of which was taken in the minutes of the hearing.
Preliminary observations
28 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may 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. The likelihood of confusion includes the likelihood of association with the earlier mark.
29 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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).
30 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).
31 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
32 The present action must be examined in the light of the abovementioned principles.
The relevant public
33 In the present case, the Board of Appeal found that the goods at issue were aimed at the general public, which displayed a level of attention which could vary from low to average, and that, since the evidence submitted by the intervener during the proceedings before EUIPO concerned France and Spain, it was the French and Spanish general public which had to be taken into consideration. That assessment has not been contested by the parties.
The comparison of the goods
34 In the present case, the Board of Appeal found that some of the goods at issue were identical and others similar to varying degrees. That assessment has not been contested by the parties.
The comparison of the signs
35 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
36 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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).
37 Furthermore, it should be observed that the higher or lower level of the distinctiveness of the elements common to a mark applied for and an earlier mark is one of the relevant factors in the context of the assessment of the similarity between the signs (see, to that effect, judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 47 and the case-law cited).
38 In the present case, before addressing the issue of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue.
– The distinctive and dominant elements of the signs at issue
39 In the first place, the applicant submits that the Board of Appeal did not correctly assess the distinctive and dominant elements of the mark applied for and that it essentially focused on the distinctiveness of the element ‘crunch’. According to the applicant, the Board of Appeal did not assess the distinctive character of the element ‘n’ and stopped its examination after finding that the element ‘tiffany’ was distinctive, without examining, first, whether one of the elements of the mark applied for was dominant in relation to the others and, secondly, why the element ‘crunch’ would be perceived by the relevant public as being more distinctive, as having an independent distinctive role or even as prevailing over the element ‘tiffany’. The applicant considers that the latter element is the most distinctive and dominant element of the mark applied for owing to its inherent distinctiveness, its position at the beginning of that mark and the nature and meaning of the other elements making up the mark applied for. In particular, the applicant submits that, because of its position and the other elements making up the mark applied for, the element ‘crunch’ is considered to be descriptive of a characteristic of the goods at issue in the mark applied for or as a word making up the expression ‘crunch n cream’. According to the applicant, it is artificial to break down that English expression in that consumers understand that the element ‘n’, as a reference to the English word ‘and’, makes it possible to make the connection between ‘crunch’ and ‘cream’. Finally, the applicant maintains that, for those reasons, the relevant public, when confronted with a mark starting with a distinctive element such as ‘tiffany’ followed by ‘crunch n cream’, will perceive the word ‘tiffany’ as the trade mark name itself, or as a distinctive and independent word forming part of a composite trade mark, and the three words ‘crunch’, ‘n’ and ‘cream’ as a single phrase playing a separate role as part of the composite sign.
40 In the second place, the applicant submits that the Board of Appeal failed to duly examine the distinctive and dominant elements of the earlier mark. In particular, it claims that the Board of Appeal did not take into account all the figurative elements of the earlier mark in so far as it refers, in paragraph 55 of the contested decision, only to the ‘blue background’ over which the distinctive element ‘crunch’ is dominant. Thus, in essence, the applicant submits that the Board of Appeal did not take into account all the elements making up the earlier mark, namely the figurative elements, and that it based its assessment on a mark other than that as registered. According to the applicant, it is clear that the blue triangular icon at the bottom right of the letter ‘u’ represents a full stop and that, therefore, the word elements of the earlier mark appear visually to be ‘cru’ and ‘nch’ separated by a space and a full stop. In particular, the applicant considers that the position and colours of those elements contribute to creating the image of the earlier mark which the public will keep in mind and that, therefore, the figurative elements of the earlier mark cannot be regarded as mere decorative elements which are negligible.
41 EUIPO and the intervener contest the applicant’s arguments.
42 As regards the distinctive and dominant elements of the signs at issue, the Board of Appeal considered that, first, the word ‘cream’ in the mark applied for was associated with the equivalent words ‘crema’ in Spanish and ‘crème’ in French and that, therefore, it had a weak distinctive character for the French and Spanish public in relation to the goods at issue falling within Class 30. Secondly, as regards the word ‘tiffany’ in the mark applied for, the Board of Appeal considered that it was a first name with some distinctive character. Thirdly, as regards the word ‘crunch’ in the two marks at issue, the Board of Appeal found that it was not a basic English word which could therefore be presumed to be understood by the relevant public and that, consequently, it was distinctive. Lastly, the Board of Appeal found that the word ‘crunch’ retained an independent distinctive role in the mark applied for as a separate word and that the relevant public would not perceive the expression ‘crunch n cream’ as a whole. In the earlier mark, the Board of Appeal found that ‘crunch’ was the distinctive element which was dominant over a blue background.
43 According to the case-law, for the purpose of determining the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is descriptive of the goods or services for which the mark has been registered (see 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 and the case-law cited).
44 In the first place, as regards the distinctive and dominant elements of the mark applied for, it must be pointed out, first of all, that the Board of Appeal’s findings that, first, the element ‘tiffany’ of the mark applied for, consisting of a first name, is distinctive and, secondly, the element ‘cream’ of that mark has a weak distinctive character in that it is associated with its equivalents in Spanish and French (see paragraph 42 above) have not been disputed by the applicant.
45 Next, as regards the distinctive character of the word element ‘crunch’, it should be borne in mind that, first, according to settled case-law, an understanding of a foreign language may not, in general, be presumed (see judgment of 21 May 2015, Nutrexpa v OHIM – Kraft Foods Italia Intellectual Property (Cuétara MARĺA ORO), T‑271/13, not published, EU:T:2015:308, paragraph 35 and the case-law cited).
46 In so far as the Spanish and French public’s knowledge of English is not a matter of common knowledge, it was for the applicant to provide, in the context of the administrative procedure, evidence of the relevant public’s knowledge of a language other than its mother tongue.
47 Secondly, although it is true that many consumers in the European Union know basic English vocabulary (see judgment of 22 June 2022, Kubara v EUIPO (good calories), T‑602/21, not published, EU:T:2022:382, paragraph 33 and the case-law cited), it has, by contrast, been held that other English terms or one of their meanings could not be considered to form part of such basic vocabulary (see, to that effect, judgments of 16 October 2014, Junited Autoglas Deutschland v OHIM – Belron Hungary (United Autoglas), T‑297/13, not published, EU:T:2014:893, paragraphs 32 and 42, and of 16 February 2017, Jaguar Land Rover v EUIPO – Nissan Jidosha (Land Glider), T‑71/15, not published, EU:T:2017:82, paragraph 45).
48 Consequently, with the exception of certain terms forming part of basic English vocabulary, it cannot be assumed that English terms are widely known in the European Union. In the present case, the English word ‘crunch’ cannot be considered to form part of that language’s basic vocabulary which may be assumed to be widely known by consumers throughout the European Union (see, by analogy, judgment of 16 February 2017, Land Glider, T‑71/15, not published, EU:T:2017:82, paragraph 58).
49 In so far as the English word ‘crunch’ refers to an abstract concept and not to a simple and basic term, it cannot be assumed that a non-English-speaking public would have a command of that word and would understand its meaning separately and immediately.
50 However, if an English term has an equivalent in the language of the non-English-speaking public and a link may be established by that public between those terms and their translation into the language concerned, then that public must be held to understand their meaning (see judgment of 15 September 2021, Celler Lagravera v EUIPO – Cyclic Beer Farm (Cíclic), T‑673/20, not published, EU:T:2021:591, paragraph 46 and the case-law cited).
51 In the present case, it should be noted that the English term ‘crunch’ cannot be compared by part of the relevant public with its French and Spanish equivalents, namely ‘croquant’ and ‘crujiente’ respectively.
52 It follows that the Board of Appeal was right in finding that the English term ‘crunch’ had no meaning for the Spanish and French public and possessed an intrinsic distinctive character.
53 Furthermore, as regards the applicant’s argument that the first name Tiffany is the dominant element of the mark applied for, on the ground that, being situated at the beginning of that mark, it is immediately perceived by consumers and is more likely to attract their attention, it must be pointed out that the fact that a term is situated at the beginning of a mark cannot, even if that term is more likely than the terms which follow it to attract the relevant public’s attention, result in that term dominating the overall impression conveyed to that public by a trade mark for the purposes of the judgment of 12 June 2007, OHIM v Shaker (C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited) by virtue of that fact alone (see, to that effect, judgment of 7 October 2015, CBM v OHIM – Aeronautica Militare (Trecolore), T‑227/14, not published, EU:T:2015:760, paragraph 35). The applicant’s argument relating to the particular importance attached by the consumer to the beginning of a sign is therefore not conclusive and in no way indicates, in any event, that the element ‘tiffany’, despite its distinctive character, must be regarded as being the dominant element of the mark applied for.
54 Lastly, it must be held, as observed by EUIPO, that the element ‘n’ in the mark applied for is distinctive and that the evidence produced by the applicant in Annexes A.6 to A.8 is not sufficient to demonstrate the meaning of that element and of the expression ‘crunch n cream’ for the relevant public. Therefore, the Board of Appeal was right to find that the element ‘crunch’ had a distinctive and independent role within the mark applied for.
55 In the second place, as regards the distinctive and dominant elements of the earlier mark, it must be held that the Board of Appeal took the sign into account as a whole in finding, in paragraph 55 of the contested decision, that within the earlier mark the word element ‘crunch’ was the distinctive element which was dominant over the blue background.
56 In that regard, it must be borne in mind that, according to settled case-law, where a trade mark consists of both verbal and figurative elements, the former are, in principle, more distinctive than the latter because the relevant public will more readily refer to the goods at issue by quoting their name than by describing the figurative element of the trade mark (judgments of 9 September 2008, Honda Motor Europe v OHIM – SEAT (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30; and of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 49; see also, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
57 Consequently, as EUIPO and the intervener submit, it must be held that the figurative elements of the earlier mark play a secondary role in relation to the word element ‘crunch’ and, as the applicant claims, do not prevent that word element from being read.
– Visual similarity
58 From a visual point of view, the Board of Appeal found that the signs at issue coincided in their common element ‘crunch’ and differed in the elements ‘tiffany’, ‘n’ and ‘cream’ present in the mark applied for and in the figurative elements of the earlier mark. Thus, according to the Board of Appeal, the element ‘crunch’ has an independent distinctive role within the mark applied for and the figurative elements of the earlier mark do not affect the perception of the word element ‘crunch’ which is striking. Therefore, the signs are visually similar at least to a low degree. The parties do not dispute that assessment.
– Phonetic similarity
59 The applicant contests that the mark applied for has an average degree of phonetic similarity in that the Board of Appeal did not take into account the space between the letters ‘u’ and ‘n’ of the element ‘crunch’ of the earlier mark. In any event, the applicant submits that, even if the sequence of letters ‘c’, ‘r’, ‘u’, ‘n’, ‘c’ and ‘h’ were to be pronounced as ‘crunch’, the Board of Appeal was wrong to conclude that there was an average degree of phonetic similarity between the signs at issue. According to the applicant, the marks at issue differ in three words out of four and their beginnings and their endings are different and will therefore be pronounced differently. Furthermore, the applicant submits that, having regard to the position of the word ‘crunch’ in the mark applied for, the word ‘tiffany’, in the light of the fact that it is the first word that the consumer will hear and in the light of its distinctiveness, will have a greater impact for the consumer. Lastly, according to the applicant, since only one of the six syllables of the mark applied for, which falls in the middle, is the same as the syllable of the earlier mark, the Board of Appeal should have found that the signs at issue were dissimilar or phonetically similar at most to a low degree.
60 EUIPO and the intervener contest the applicant’s arguments.
61 From a phonetic point of view, the Board of Appeal found that the pronunciation of the signs at issue coincided to the extent that, within the mark applied for, the sole element of the earlier mark, namely ‘crunch’, was reproduced. Furthermore, the Board of Appeal stated that the figurative elements of the earlier mark were not subject to pronunciation and that the signs at issue differed in the pronunciation of the elements ‘tiffany’, ‘n’ and ‘cream’ of the mark applied for. The Board of Appeal concluded that the signs at issue were phonetically similar to an average degree.
62 In that regard, it must first of all be noted, as the Board of Appeal found, that the signs at issue coincide in the pronunciation of the common element ‘crunch’. Next, as the Board of Appeal also correctly pointed out, the signs at issue differ in the pronunciation of the elements ‘tiffany’, ‘n’ and ‘cream’ of the mark applied for, which have no equivalent in the earlier mark. However, as EUIPO observes, on account of the weak distinctive character of the element ‘cream’ and the fact that the element ‘n’ is short, those elements will have a lesser impact on the pronunciation of the mark applied for.
63 As regards the applicant’s argument that the Board of Appeal did not take into account the difference in pronunciation resulting from the space between the letters ‘u’ and ‘n’ of the element ‘crunch’ in the earlier mark, it should be noted that it seems clear that it is not a space separating the word into two but a graphic effect that makes it possible to read the element ‘crunch’ without altering its pronunciation.
64 In that respect, it should be noted that, according to the case-law, in the strict sense, the phonetic reproduction of a composite trade mark corresponds to that of all its word elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level. Therefore, for the purposes of the phonetic comparison, there is no need to take into account the figurative element of the earlier mark, which will not be pronounced by the relevant public (see judgment of 15 February 2023, Topcart v EUIPO – Carl International (TC CARL), T‑8/22, not published, EU:T:2023:70, paragraph 72 and the case-law cited).
65 In the present case, in the first place, it must be held, as observed by EUIPO and the intervener, that the space between the letters ‘u’ and ‘n’ of the earlier mark has no impact on the pronunciation of the element ‘crunch’ as a whole. In the second place, it must be held that the Board of Appeal was right to find that, phonetically, the graphic elements of the earlier mark were not subject to pronunciation and that the signs at issue coincided in their common element ‘crunch’ and differed in the pronunciation of three other elements of the mark applied for, namely ‘tiffany’, ‘n’ and ‘cream’. Consequently, the Board of Appeal was right to find that the signs at issue were phonetically similar to an average degree.
– Conceptual similarity
66 The Board of Appeal found that, from a conceptual point of view, neither of the signs taken as a whole had a meaning for the vast majority of the relevant public. The Board of Appeal states that the only conceptual difference is to be found in the element ‘cream’, which will be understood, but that its impact will be limited in that that element makes reference to the non-distinctive concept of a creamy product. That assessment has not been contested by the parties.
The enhanced distinctiveness of the earlier mark
67 The Board of Appeal found that it was clear from the evidence produced by the intervener in the action before EUIPO that the earlier mark had been subject to intensive and long-standing use in France and Spain and that it was known on the relevant market, where it enjoyed a consolidated position among the dominant marks. In particular, the evidence highlighting sales figures, marketing expenditure and the results of the surveys conducted among the relevant consumers shows that the CRUNCH mark is widely known among the relevant public. The Board of Appeal concluded that the distinctiveness of the earlier mark was enhanced through the use made of it in France and Spain, at least for ‘chocolate products’ and ‘cereal preparations’ in Class 30. Since the applicant withdrew the argument relating to the enhanced distinctiveness of the earlier mark (see paragraph 27 above), that assessment by the Board of Appeal was not contested by the parties.
The overall assessment of the likelihood of confusion
68 First, the applicant submits that the Board of Appeal failed to take into account that the marks at issue produced very different overall impressions on the average consumer. It added that the Board of Appeal dedicated only one paragraph to the overall assessment of the likelihood of confusion and that the reasoning set out in that paragraph was unjustified, wrong and illogical. The applicant also submits that it is abnormal to place a trade mark name in the middle of a series of words rather than at the beginning or the end of a composite mark. That applies even more where the mark applied for includes the connecting word ‘and’ represented in this case by the element ‘n’. Secondly, the applicant states that the Board of Appeal did not examine the mark applied for as a whole and did not attach any importance to the other elements. Thirdly, the applicant asserts that the mark applied for cannot be regarded as a sub-mark of the earlier mark just because they have an element in common. Fourthly, the applicant claims that the Board of Appeal ignored the element ‘tiffany’ in its overall assessment of the likelihood of confusion and did not, therefore, examine the mark applied for as a whole. Fifthly, the applicant disputes the Board of Appeal’s assessment in paragraph 44 of the contested decision that the element ‘crunch’ played an independent and distinctive role in the sign as a whole.
69 EUIPO and the intervener contest the applicant’s arguments.
70 The Board of Appeal found that, in accordance with the interdependence principle and taking into account the at least low degree of visual similarity, the average degree of phonetic similarity and the absence of relevant conceptual similarity between the signs at issue, there was a likelihood of confusion and association between those signs, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for the relevant public, whose level of attention is low to average.
71 It should be noted that, according to settled case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned 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 concerned. In accordance with the principle of interdependence, there may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the marks at issue, where the goods or services covered by them are very similar (see judgment of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraph 50 and the case-law cited).
72 As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
73 It follows from the considerations already set out in paragraphs 33 to 66 above that, first of all, the relevant public displays a level of attention which may vary from low to average for the goods in Class 30, covered by the signs at issue, and that those goods were identical. Next, it was also found that the element ‘crunch’, which is common to the signs at issue, had to be regarded as the distinctive word element of the earlier mark. Moreover, that element is entirely reproduced in the mark applied for. Furthermore, it was found that the visual similarity was at least low, that the phonetic similarity was average and that there was no conceptual similarity. Lastly, it must be observed that the earlier mark enjoys enhanced distinctiveness as a result of its use. In those circumstances and in the light of the case-law referred to in paragraphs 71 and 72 above, the Board of Appeal was fully entitled to find that there was a likelihood of confusion in respect of the goods at issue.
74 It follows from all the foregoing considerations that the Board of Appeal was right to dismiss the appeal brought by the applicant against the Opposition Division’s decision under Article 8(1)(b) of Regulation 2017/1001, with the result that the action must be dismissed in its entirety.
Costs
75 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.
76 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders International Foodstuffs Co. LLC to pay the costs.
Spielmann | Mastroianni | Gâlea |
Delivered in open court in Luxembourg on 15 November 2023.
V. Di Bucci | | M. van der Woude |