JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
18 November 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark Jambo Afrika – Earlier Community figurative marks JUMBO, JUMBO CUBE, JUMBO MARINADE, JUMBO NOKKOS, JUMBO ROF, JUMBO CHORBA MOUTON-MUTTON, JUMBO Aroma All purpose seasoning Condiment – Earlier national figurative marks JUMBO – Non-registered earlier word mark JUMBO – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑377/10,
Preparados Alimenticios, SA, established in L’Hospitalet de Llobregat (Spain), represented by D. Pellisé Urquiza, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Rila Feinkost-Importe GmbH & Co. KG, established in Stenwede-Levern (Germany), represented by T. Weeg, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 9 June 2010 (Case No R 1144/2009‑1), relating to opposition proceedings between Preparados Alimenticios, SA and Rila Feinkost-Importe GmbH & Co. KG,
THE GENERAL COURT (Eighth Chamber),
composed of M.E. Martins Ribeiro, acting for the President, A. Popescu (Rapporteur) and C. Wetter, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 6 September 2010,
having regard to the response of OHIM lodged at the Court Registry on 21 December 2010,
having regard to the response of the intervener lodged at the Court Registry on 12 January 2011,
having regard to the decision of 18 April 2011 refusing leave to lodge a reply,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Judgment
Background to the dispute
1 On 31 May 2006, the intervener, Rila Feinkost-Importe GmbH & Co. KG, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the word sign Jambo Afrika.
3 The goods in respect of which registration was sought are in Classes 29, 30 and 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 29: ‘Meat, fish, meat products, charcuterie, poultry and game, meat extracts, preserved fruit and vegetables, meat, fish, fruit and vegetable jellies, fruit sauces, eggs, quails’ eggs, dried vegetables, milk and milk products, namely yoghurt products, cheese, edible oils, salad dressings, meat, fish, fruit and vegetable preserves, including all the aforesaid goods in preserved and frozen form, prepared meals, mainly consisting of the aforesaid goods, and of rice and noodles’;
– Class 30: ‘Prepared meals, mainly consisting of the aforesaid goods, and of rice and noodles; coffee, tea, cocoa, sugar, rice and rice products, tapioca, sago, artificial coffee, flour and preparations made from cereals, namely wholefood products, wholemeal products, soya and soya products, bread, pastry and confectionery, sweets; savoury pastries, honey; vanilla sugar, salt for consumption, vinegar, sauces, including salad dressings, condiments, seasonings, spices, semolina, spice pastes’;
– Class 33: ‘Alcoholic beverages (except beers)’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 45/2006 of 6 November 2006.
5 On 6 February 2007, the applicant, Preparados Alimenticios, SA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6 The opposition was based on the following Community figurative marks:
– the Community figurative mark, filed on 14 May 2001 and registered on 14 October 2003 under number 2217404 for ‘broths’ in Class 29, represented below:
– the Community figurative mark, filed on 16 October 2001 and registered on 17 December 2003 under number 2412823 for ‘soups, broth and dehydrated soups’ in Class 29 and ‘sauces (condiments)’ in Class 30, represented below:
– the Community figurative mark, filed on 16 October 2001 and registered on 25 September 2003 under number 2413391 for ‘soups, broths and dehydrated soups’ in Class 29 and ‘sauces and condiments’ in Class 30, represented below:
– the Community figurative mark, filed on 16 October 2001 and registered on 25 September 2003 under number 2413581 for ‘broths, soups and dehydrated soups’ in Class 29 and ‘condiments and sauces’ in Class 30, represented below:
– the Community figurative mark, filed on 23 October 2001 and registered on 2 October 2003 under number 2423275 for ‘broth, soups and dehydrated soups’ in Class 29 and ‘condiments and sauces’ in Class 30, represented below:
– the Community figurative mark, filed on 19 December 2002 and registered on 3 December 2004 under number 2970754 for ‘broth, soups, dehydrated soups’ in Class 29 and ‘relishes and sauces’ in Class 30, represented below:
– the Community figurative mark, filed on 7 July 2003 and registered on 19 April 2006 under number 3246139 for ‘broth, soups, dehydrated soups’ in Class 29, represented below:
– the Community figurative mark, filed on 16 April 2004 and registered on 1 September 2005 under number 3754462 for ‘broth, soups, dehydrated soups’ in Class 29 and ‘relishes and sauces’ in Class 30, represented below:
– the Community figurative mark, filed on 26 October 2004 and registered on 18 January 2006 under number 4088761 for ‘broth, soups, dehydrated soups’ in Class 29 and ‘relishes and sauces’ in Class 30, represented below:
– the Spanish figurative trade mark, filed on 22 December 2003 and registered on 4 June 2004 under number 2573221 for ‘broths, soups, consommes; preparations for making soups, consommes and broths; broth and bouillon concentrates in cubes, tablets, pills, granules or other forms; jellies; vegetable soups, preparations made from vegetables and/or green vegetables, vegetable juices for cooking’ in Class 29, represented below:
– the Spanish figurative trade mark, filed on 22 December 2003 and registered on 4 June 2004 under number 2573219 for ‘tomato sauces, seasonings’ in Class 30, represented below:
– the Spanish figurative trade mark, filed on 22 December 2003 and registered on 4 June 2004 under number 2573216 for ‘broths, soups, consommes, preparations for making soups, consommes and broths; broth and bouillon concentrates in cubes, tablets, pills, granules or other forms; jellies; vegetable soup preparations; dishes made from vegetables, and/or green vegetables, vegetable juices for cooking’ in Class 29, represented below:
– the word mark JUMBO, which is well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended, and is used throughout the world, especially on the African continent and also in the 27 Member States of the European Union for ‘broths, soups, consommes, preparations for making soups, consommes and broths; broth and bouillon, broth and dehydrated soups, concentrates in cubes, tablets, pills, granules or other forms, jellies, vegetables soups, preparations made from vegetables, and/or green vegetables, vegetables juices for cooking, condiments and sauces’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 By decision of 29 July 2009, the Opposition Division upheld the opposition in so far as it concerned the ‘meat, fish, meat products, charcuterie, poultry and game, meat extracts, preserved fruit and vegetables, meat, fish, fruit and vegetable jellies, fruit sauces, dried vegetables, edible oils, salad dressings, meat, fish, fruit and vegetables preserves, including all the aforesaid goods in preserved and frozen form, prepared meals, mainly consisting of the aforesaid goods, and of rice and noodles’ in Class 29 and the ‘Prepared meals, mainly consisting of the aforesaid goods, and of rice and noodles; rice and rice products, soya and soya products, vinegar, sauces, including salad dressings, condiments seasonings, spices, spice pastes, salt for consumption’ in Class 30 and rejected it as to the remainder.
9 On 25 September 2009, the intervener, Rila Feinkost-Importe GmbH & Co. KG, filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 9 June 2010 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal and annulled the Opposition Division’s decision by rejecting the opposition.
11 In particular, the Board of Appeal found, in paragraphs 17 and 18 of the contested decision, that the relevant public was made up of European Union ‘buyers’, in particular Spanish ‘buyers’ of food products such as soups, broths, condiments and sauces. As regards the comparison of the goods, it concluded, in paragraph 19 of that decision, that there was a degree of similarity between the goods at issue which ranged from very high, or even identical, to low according to the type of goods.
12 As regards the comparison of the signs, the Board of Appeal, first, excluded from the analysis, in paragraph 22 of the contested decision, the applicant’s well-known non registered word mark, on the ground that no evidence of its use in the European Union had been presented.
13 As regards the visual comparison, which was, according to the Board of Appeal, especially important given that the goods in question were visible on a supermarket shelf before being purchased, it found, in paragraphs 24 and 25 of the contested decision, that the signs at issue were manifestly different in so far as the earlier marks are figurative whereas the mark applied for is a pure word mark. As regards the phonetic comparison, the Board of Appeal stated, in paragraphs 26 to 28 of the contested decision, that, bearing in mind how the signs at issue are pronounced in English, there was indeed phonetic identity between those signs. Nevertheless, according to the Board of Appeal, there was a strong conceptual dissimilarity between those signs which made it possible to rule out any similarity between them. The word ‘jumbo’ would be understood as meaning ‘big’, whereas the word ‘jambo’ would be perceived as meaningless, as the average consumer does not know that it means ‘hello’ in Swahili. Furthermore, according to the Board of Appeal, the inclusion of the word ‘afrika’ in the mark applied for played a distinctive role, albeit a secondary role. Lastly, as regards the renown of the earlier mark, the Board of Appeal found, in paragraph 29 of the contested decision, that the status of that mark outside the European Union was not relevant and that African consumers in Europe, who are likely to understand the meaning of the mark applied for, represented only a small portion of the target public. In any event, according to the Board of Appeal, consumers who speak Swahili would be able to perceive the difference in meaning between the words ‘jumbo’ and ‘jambo’ in the signs at issue.
14 The Board of Appeal therefore found, in paragraph 20 of the contested decision, that there was no likelihood of confusion between the signs at issue for the relevant public since those signs could not be regarded as similar.
Forms of order sought
15 The applicant claims that the Court should:
– declare the present action admissible and well founded;
– declare that Community trade mark application No 5141213, Jambo Afrika, should be rejected;
– annul the contested decision;
16 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The admissibility of documents produced for the first time before the Court
17 OHIM argues that some of the documents produced by the applicant before the Court, namely Annexes A.3 and A.4 to the application, are inadmissible, since they were not submitted in the course of the administrative procedure.
18 In that regard, it must be pointed out that it is in fact apparent from the analysis of the administrative file in respect of the proceedings before OHIM that those documents were submitted for the first time before the Court. It must be borne in mind that, according to settled case-law, the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited).
Substance
19 It must be pointed out at the outset that the applicant relied, as a basis for its opposition to the mark applied for, on nine Community registrations, three Spanish registrations and a non-registered word mark which is well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (see paragraph 6 above).
20 However, the Board of Appeal stated, in paragraph 22 of the contested decision – and the applicant has not disputed that statement in the present action – that the well-known non-registered mark had to be excluded from the analysis, given that no evidence of its use on the relevant market, namely that of the European Union, had been presented and, therefore, the opposition had to be examined solely on the basis of the applicant’s earlier registered marks.
21 It is in the light of those earlier registered marks (‘the earlier marks’) that the present action, in support of which the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must therefore be assessed.
22 The applicant disputes, in essence, the Board of Appeal’s assessment of the similarity of the signs at issue and submits that it erred in finding that there was no likelihood of confusion.
23 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
24 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 perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case C‑498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I‑7371, paragraph 59; Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited; and judgment of 8 September 2010 in Case T‑369/09 Quinta do Portal v OHIM – Vallegre (PORTO ALEGRE), not published in the ECR, paragraph 18).
25 Furthermore, for the purposes of the global assessment of the likelihood of confusion, account should be taken of the average consumer of the goods concerned, who is deemed to be reasonably well informed and reasonably observant and circumspect. Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in his imperfect recollection of them. 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 (Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 28; Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 38; and Case T‑361/08 Peek & Cloppenburg and van Graaf v OHIM – Queen Sirikit Institute of Sericulture (Thai Silk) [2010] ECR II‑1207, paragraph 51).
26 It is in the light of those considerations that the existence of a similarity between the signs at issue must be examined.
The relevant public
27 In paragraphs 17 and 18 of the contested decision, the Board of Appeal stated that the relevant public was made up of European Union ‘buyers’, in particular Spanish ‘buyers’ of food products such as soups, broths, condiments and sauces. According to the Board of Appeal, these are relatively inexpensive items which are mostly bought in supermarkets or grocers’ shops on the basis of a visual inspection.
28 The applicant submits that the Board of Appeal erred in its assessment of the relevant public, since, in the present case, that public is made up of African immigrants in Europe and people particularly familiar with food from Africa. Furthermore, the kind of foodstuff in question cannot be purchased in normal supermarkets, but only in specialised grocers’ shops, given that that kind of foodstuff is regarded as exotic.
29 The applicant’s submission in that respect cannot be accepted.
30 First, it must be pointed out, as observed by OHIM, that, given that all the earlier marks were registered either as Community trade marks or Spanish trade marks, the relevant public is made up of European Union consumers, in particular Spanish consumers.
31 Secondly, there is nothing in the wording of the application for registration of the mark at issue to suggest that the goods in question are intended exclusively for a clientele of African immigrants in Europe and of people particularly familiar with food from Africa. The general terms used to designate the goods in that application suggest instead that those goods are intended for normal, average consumers of the food products also covered by the earlier marks (see, to that effect, Case T‑286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 32).
32 Thirdly, even though, in one of the earlier marks, the word ‘jumbo’ is followed by the word ‘chorba’, which describes typically African foodstuffs, or even if it were accepted that the word ‘afrika’ in the mark applied for refers to the geographical origin of the goods at issue, those factors are not sufficient to establish that a particular category of consumers is targeted by the mark applied for (see, to that effect, KIAP MOU, paragraph 33).
33 Consequently, it is necessary to take account, for the purposes of the global assessment of the likelihood of confusion, of the perception of the relevant public, which consists of European Union consumers, in particular Spanish consumers of everyday consumer food products such as soups, broths, condiments and sauces.
The comparison of the goods
34 The Board of Appeal, in paragraph 19 of the contested decision, stated that the degree of similarity between the goods at issue ranged from very high, or even identical, to low according to the type of goods.
35 Although the applicant submits that all the goods at issue are characterised by a high degree of similarity, it confines itself to stating that such a similarity exists between all the goods concerned, without putting forward any argument capable of calling into question the assessment of the Board of Appeal, which carried out an analysis of that similarity in respect of each of the goods covered by the mark applied for and the earlier marks. Accordingly, the Board of Appeal’s assessment referred to in paragraph 34 above must be upheld.
The comparison of the signs
36 The global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23; Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 25; and order in Case C‑3/03 P Matratzen Concord v OHIM [2004] ECR I‑3657, paragraph 29).
37 First, as regards visual similarity, the mark applied for is solely a word mark consisting of the words ‘jambo’ and ‘afrika’, whereas the earlier marks are composite marks, consisting of one or more word elements as well as figurative elements which mostly represent labels or product packages showing brightly coloured pictures of vegetables, dishes, sauces, chicken and mushrooms and, in two cases, a bouillon cube or its unfolded packaging.
38 The applicant claims that the main element of the earlier marks is the element ‘jumbo’, followed by descriptive word and figurative elements representing foodstuffs. It takes the view that the main element in the mark applied for is ‘jambo’ given that the word ‘afrika’ is descriptive as an indication of the origin of the goods.
39 The applicant’s submissions cannot be accepted.
40 In that regard, it must be stated that, where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant (Case T‑3/04 Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA) [2005] ECR II‑4837, paragraph 45).
41 Furthermore, it must be borne in mind that 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 Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, 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 (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, 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 keep in their minds, such that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
42 Lastly, it must be pointed out that the overall visual impression produced by two marks which share the same element may be different, in particular where the comparison concerns, on the one hand, a word mark, such as the mark applied for, and, on the other, marks which consist of word and figurative elements, such as the earlier marks (see, to that effect, KINJI by SPA, paragraphs 40 to 44).
43 In the light of the abovementioned considerations, the Board of Appeal was right to compare the signs at issue as a whole, on account, in particular, of the non-negligible nature of the figurative elements of the earlier marks, and to find that the visual differences between those signs were manifest. As the Board of Appeal correctly stated in paragraph 24 of the contested decision, the earlier marks mostly represent labels or product packages showing brightly coloured pictures of vegetables, dishes, sauces, chicken and mushrooms and, in two cases, a bouillon cube or its unfolded packaging, whereas the mark applied for is purely a word mark.
44 Secondly, as regards the phonetic comparison, the Board of Appeal found, in paragraph 26 of the contested decision that, bearing in mind how the signs at issue are pronounced in English, there was indeed phonetic identity between those signs.
45 The applicant submits that the words ‘jumbo’ and ‘jambo’ in the signs at issue are very similar phonetically.
46 In that regard, it must be pointed out at the outset that the Board of Appeal’s findings as regards the phonetic comparison of the signs at issue are incorrect.
47 The Board of Appeal confined itself, unlike in its approach to the visual comparison, to comparing the element ‘jumbo’ in the earlier marks with the element ‘jambo’ in the mark applied for.
48 In accordance with the case-law referred to in paragraph 41 above, the signs at issue must be compared as a whole without overlooking any of their elements, on account of the non-negligible nature of the other word elements of the signs at issue.
49 In the present case, the earlier marks consist either of the word ‘jumbo’ followed by other elements such as the words or expressions ‘cube’, ‘marinade’, ‘nokkos’, ‘rof’, ‘chorba mouton-mouton’, ‘aroma all purpose seasoning condiment’ and ‘jumbo jumbo’ or the single word ‘jumbo’. The word mark applied for consists, by contrast, of the words ‘jambo’ and ‘afrika’.
50 It follows that, even when the word ‘jumbo’ is the only word element in the earlier marks, it must be compared, as regards phonetic similarity, to the words ‘jambo’ and ‘afrika’ in the mark applied for, not just to the word ‘jambo’. Consequently, if the mark applied for is pronounced as a whole, there is no more than a limited phonetic similarity between the signs at issue, given that those signs contain a different number of words, letters and syllables. Therefore, merely pronouncing the signs in their entirety shows that there is a phonetic difference between them. Consideration of all of the elements of the signs at issue therefore leads to the conclusion that there is some phonetic similarity and such a similarity has to be assessed on the basis of the overall impression produced by those signs when they are pronounced in their entirety.
51 It is therefore possible to conclude, on the basis of the overall phonetic impression, that the signs at issue have a slight degree of similarity.
52 Thirdly, as regards the conceptual comparison, the Board of Appeal found, in paragraph 27 of the contested decision, that the word ‘jumbo’ in the earlier marks would be understood as meaning ‘big’ and that the word ‘jambo’ in the mark applied for would be perceived as meaningless, given that few people outside of Africa know that it means ‘hello’ in Swahili. It stated that the General Court has consistently held that a strong conceptual dissimilarity may rule out any similarity of the signs at issue.
53 The Board of Appeal found, in paragraph 28 of the contested decision, that another conceptual difference resulted from the presence of the word ‘afrika’ (the German spelling of the word Africa) in the mark applied for. According to the Board of Appeal, even though it is a geographical term, it may still sound somewhat exotic today for the average consumer in the European Union (including Spain) because the association between Africa and food is not yet as immediate and strong as it is as regards other parts of the world, such as Asia or South America. It added that the reference to Africa in relation to food does not entirely lack distinctive character from the viewpoint of ordinary consumers of food in the European Union and may, for this reason, play a role, albeit secondary, in ruling out the likelihood of confusion between the mark applied for and the earlier marks.
54 That analysis must be accepted and cannot be altered by the applicant’s claims that the word ‘jumbo’ would not be perceived as meaning ‘big’ and the word ‘afrika’ would not be distinctive in respect of goods from Africa.
55 In that regard, it must be pointed out that the goods at issue, both those covered by the earlier marks and those covered by the mark applied for, are not described as exclusively African goods. Furthermore, even though the element ‘jambo’ in the mark applied for has no meaning in any official language of the European Union, the relevant public will understand the word ‘afrika’ as designating the African continent. That word is written and pronounced in a very similar way in all the languages of the European Union.
56 Furthermore, it must be stated, as observed by the Board of Appeal, that the word ‘jumbo’ has a meaning in English, namely ‘very large’. Consequently, the English-speaking public of the European Union will understand that word.
57 In view of the fact that the word ‘jumbo’ has a meaning, at least in the English-speaking countries of the European Union, and the word ‘jambo’ has no meaning in any of the languages of the European Union, there is therefore no conceptual similarity between those words for consumers in the abovementioned countries.
58 As regards the languages of the European Union in which the word ‘jumbo’ has no meaning, the marks at issue are also conceptually dissimilar, given that the word ‘afrika’ will be understood in all the countries of the European Union as referring to the African continent. Any conceptual similarity is therefore ruled out. Consequently, the Board of Appeal was right to find that the marks being compared were conceptually dissimilar.
The likelihood of confusion
59 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74).
60 In the present case, it has already been pointed out, first, that the degree of similarity between the goods at issue ranges from very high, or even identical, to low, according to the type of goods and, secondly, that the signs at issue are visually and conceptually different and that there is a limited degree of phonetic similarity between them.
61 Furthermore, it must be pointed out, following the example of OHIM, that the phonetic similarity of the signs at issue is of limited significance on account of the nature of the goods at issue, which are generally sold side by side in supermarkets, department stores and other similar retail outlets. According to the case-law, the degree of phonetic similarity between two marks is of limited significance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods. That is the case with respect to the goods in question here (see, to that effect, Case T‑292/01 Philips‑Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 55).
62 It must therefore be held that, in the context of a global assessment of the signs at issue, the visual and conceptual differences between them are sufficient to preclude a likelihood of confusion on the part of the relevant consumer, notwithstanding the existence of some phonetic similarity between those signs and a degree of similarity between the goods at issue.
63 The applicant’s claim that the earlier marks are well known all over the world, and especially on the African continent, does not cast doubt on that finding.
64 It must be pointed out that, as is apparent from recital 8 in the preamble to Regulation No 207/2009, 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 do marks with less distinctive character (see, by analogy, SABEL, paragraph 24; Canon, paragraph 18; and Lloyd Schuhfabrik Meyer, paragraph 20).
65 The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Case T‑277/04 Vitakraft‑Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT) [2006] ECR II‑2211, paragraphs 34 and 35 and the case-law cited).
66 The applicant claims that the Board of Appeal erred in finding that the evidence which it had provided was not sufficient to prove the reputation of the earlier marks among the relevant public.
67 In the present case, the evidence provided by the applicant is as follows:
– a page from the applicant’s Internet site displaying the mark JUMBO;
– a worldwide list of registrations of the earlier marks;
– a catalogue of its products;
– a catalogue of the undertaking Productes Alimentaris La Perla SL, a Spanish distributor of its goods;
– a list of consolidated data relating to its monthly sales for the period 2004 to 2007 in certain African countries;
– a list of expenses incurred in respect of advertising campaigns in 2006 and local press reports from Burkina Faso.
68 It must be pointed out that the evidence submitted by the applicant refers mainly to African countries. The only documents which refer to a European Union country are the applicant’s catalogue and its distributor’s catalogue. However, those documents, whether considered on their own or in conjunction with the other items of evidence submitted, do not state the market shares held by the earlier marks, how intensive, geographically widespread and long-standing their use has been or the amount invested by the undertaking in promoting those marks.
69 As regards the worldwide list of registrations of the earlier marks, it is sufficient to point out that those registrations in no way establish either that those marks are well known or even that they are used.
70 Consequently, it must be held that no evidence that the earlier marks are well known on the European Union market was submitted before the Board of Appeal.
71 The applicant’s argument that the Board of Appeal failed to have regard to the ‘spill over’ effect of the earlier marks’ reputation in Europe, which is due to the growing number of African immigrants living in Europe and to the use of modern technologies, such as the Internet, cannot, likewise, succeed.
72 First, it must be borne in mind, as was pointed out in paragraph 33 above, that the relevant public consists of European Union consumers, in particular Spanish consumers of everyday consumer food products and not only of African consumers living in the European Union. Consequently, as the Board of Appeal correctly pointed out in paragraph 29 of the contested decision, the latter represent only a small portion of the public targeted by the goods at issue.
73 Secondly, even if it is conceded that the earlier marks are well known on the African continent or throughout the world, the applicant has failed to show that that reputation also extends to the market in question, namely that of the European Union. The applicant may not rely on any reputation the earlier marks may have outside the European Union in order to infer that that reputation automatically extends to the European Union market. On the contrary, as the case-law referred to in paragraph 65 above provides, it should have adduced, in respect of the market in question, evidence such as the market share held by the earlier marks; how intensive, geographically widespread and long-standing use of the marks has been; the amount invested by the undertaking in promoting the marks and the proportion of the relevant section of the public which, because of the marks, identifies the goods or services as originating from a particular undertaking. The applicant provided none of that evidence.
74 It follows that the Board of Appeal did not err in not taking into account the earlier marks’ alleged reputation on the African continent or throughout the world.
75 It is apparent from all of the above that, notwithstanding the error which it made in assessing the phonetic similarity between the signs at issue, the Board of Appeal was right to find that there was no likelihood of confusion between the mark applied for and the earlier marks.
76 In those circumstances, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected.
77 Consequently, the action must be dismissed, without there being any need to rule on the admissibility of the applicant’s claim seeking the rejection of the registration of the mark applied for (see, to that effect, judgment of 18 October 2011 in Case T‑304/10 dm‑drogerie markt v OHIM – Semtee (caldea), not published in the ECR, paragraph 73).
Costs
78 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and the intervener, as applied for by them.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action.
2. Orders Preparados Alimenticios, SA to pay the costs.
Martins Ribeiro | Popescu | Wetter |
Delivered in open court in Luxembourg on 18 November 2013.
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