JUDGMENT OF THE GENERAL COURT (First Chamber)
10 July 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark Thé Vert de Chine AL ASSAD HBOUB R3505 Chaara 4011 – Earlier EU figurative mark Grand Lion 4011 B552 – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑541/23,
Laura Food Srl, established in Milan (Italy), represented by C. Bercial Arias, lawyer,
applicant
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Bella Tawziaa II SLU, established in Marbella (Spain),
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, R. Mastroianni (Rapporteur) and I. Gâlea, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Laura Food Srl, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 June 2023 (Case R 2017/2022-2) (‘the contested decision’).
Background to the dispute
2 On 14 May 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covers 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: ‘Tea; Rice, pasta and noodles; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ice cream, sorbets, frozen yoghurt and other ice creams; Honey, treacles; Yeast, baking-powder; Salts, seasonings, flavourings and condiments; Spices, preserved herbs; vinegar, sauces and other condiments; Ice for refreshment; Agave syrup [natural sweetener]; Mustard; Sandwiches; Pizzas; Pancakes; Biscuits; Cakes; Rusks; Toasted bread; Tea-based beverages; Plum-cakes; Tarts; Candy; Flavouring syrups; Syrup for food; Confectionery; prepared desserts (pastries and confectionery); convenience food and savoury snacks, namely corn, cereal, flour and sesame based snacks; Crackers; Dishes based on pasta, rice and cereals; Bakery goods; Sugars, natural sweeteners, sweet coatings and fillings, bee products’.
4 On 2 September 2021, Bella Tawziaa II SLU filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the earlier EU figurative mark, reproduced below, registered on 30 January 2015 under No 13 237 268, covering, inter alia, goods in Class 30 corresponding to the following description: ‘Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Bread; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice’:
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 20 September 2022, the Opposition Division rejected the opposition.
8 On 17 October 2022, Bella Tawziaa II filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal upheld the appeal. In the first place, it stated that the relevant public consisted of consumers in the European Union likely to use both the goods covered by the earlier mark and the goods covered by the mark applied for and that the level of attention of that public was below average. In the second place, it found that the goods covered by the marks at issue were in part identical, in part highly similar, and in part similar. In the third place, it found that the marks at issue were visually similar to a low degree, were not phonetically similar or similar to a low degree and were conceptually similar to an above-average degree, at least for the English-speaking and French-speaking public of the European Union, and for the part of the public in the European Union which understands Arabic. Lastly, it found that the inherent distinctiveness of the earlier mark was normal. In conclusion, following an overall assessment of the signs at issue, it concluded that there was a likelihood of confusion between the two marks for the relevant public in the European Union.
Forms of order sought
10 The applicant claims that the Court should:
– partially annul the contested decision in so far as it overturned the decision of the Opposition Division and rejected the application for registration in respect of ‘teas’ in Class 30;
– order EUIPO and, if it intervenes, Bella Tawziaa II to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
Admissibility of evidence submitted for the first time before the General Court
12 The applicant adduced, in Annex 6.2 to the application, evidence intended to establish the descriptive character of the element ‘4011’, which is common to the marks at issue. In addition, in Annex 11 to the application, the applicant adduced extracts from a website for the purposes of establishing that, on account of the high price of the goods in question, the public’s level of attention cannot be considered to be below average.
13 EUIPO is of the view that that evidence constitutes new evidence which had not been filed in the proceedings before the Board of Appeal and is, therefore, inadmissible.
14 The applicant submits, in contrast, that the evidence adduced in Annex 6.2 cannot be regarded as new evidence as it merely supplements a decision of the Cancellation Division of EUIPO of 1 March 2021, which the applicant adduced before the Board of Appeal for the purposes of proving that the element ‘4011’ is descriptive.
15 According to settled case-law, the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162 paragraph 53).
16 It is therefore not the Court’s function to re-examine the factual circumstances in the light of evidence submitted for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
17 It should be stated that, before the Board of Appeal, for the purposes of establishing the descriptiveness of the element ‘4011’, the applicant relied on a decision of the Cancellation Division of EUIPO of 1 March 2021 (Case 8 930 349) annulling a mark consisting exclusively of the number ‘4011’ on account of its descriptive character. The applicant adduced extracts from that decision as an annex to its response before the Board of Appeal.
18 It must be stated that, before the Board of Appeal, the applicant produced only extracts from that decision of the Cancellation Division of EUIPO, without submitting any of the evidence adduced in Annex 6.2 to the application before the Court. The applicant also did not submit before the Board of Appeal the evidence in Annex 11 with regard to the price of the goods in question.
19 In those circumstances, it must be held, as EUIPO submits, that that evidence was submitted for the first time before the Court and must, consequently, be declared inadmissible.
20 The foregoing conclusion cannot be invalidated by the applicant’s claim that the evidence adduced in Annex 6.2 merely supplements the decision of the Cancellation Division of EUIPO of 1 March 2021. Even if that evidence were to support the arguments relied on by the applicant before the adjudicating bodies of EUIPO, the fact remains that that evidence was submitted for the first time before the Court and is consequently inadmissible.
The plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001
21 The applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
22 In the context of that plea, the applicant raises, in essence, six complaints in respect of the contested decision, the first two alleging an incorrect assessment of the visual and phonetic similarity of the signs at issue, the third, an error in the assessment of the distinctive character of the element ‘4011’, the fourth, an incorrect assessment of the conceptual similarity of the signs at issue, the fifth, an incorrect determination of the relevant public and its level of attention, and the sixth, an incorrect assessment of the likelihood of confusion.
23 The applicant states that the scope of its appeal is limited in that the Board of Appeal rejected the contested application for registration in respect of the product ‘tea’ in Class 30 of the Nice Agreement.
24 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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.
25 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. 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).
26 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
27 It is in the light of all the foregoing that it is necessary to examine whether, as the applicant submits, the Board of Appeal erred in finding that there was a likelihood of confusion in accordance with Article 8(1)(b) of Regulation 2017/1001.
The relevant public and territory
28 In paragraphs 18 to 24 of the contested decision, the Board of Appeal found, in essence, that the relevant public consisted of consumers in the European Union likely to use both the goods covered by the earlier mark and the goods covered by the mark applied for and that the level of attention of that public was below average. The Board of Appeal considered, in particular, the situations of, on the one hand, the English- and the French-speaking members of the public which do not understand Arabic, both those that perceive and those that do not perceive the expression ‘grand lion’ in the earlier mark, and, on the other, that of the European public which understands Arabic.
29 First, the applicant criticises the Board of Appeal for having regarded the European public which understands Arabic as part of the relevant public, since the population of the European Union which understands Arabic is very limited and the goods in question are not necessarily aimed at the Arabic community. Second, it submits that the average level of attention of consumers is not necessarily lower than average, since they will pay attention when choosing the goods in question, for reasons relating to their price and the protection of their health.
30 EUIPO disputes the applicant’s arguments.
31 As a preliminary point, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that it is necessary to take into account consumers in the territory of the European Union, since the mark applied for is an EU trade mark. Nor does the applicant dispute the fact that the relevant public is composed of consumers in the European Union likely to use both the goods covered by the earlier mark and the goods covered by the mark applied for. There is therefore no need to call those findings into question.
32 As regards the argument that the part of the population of the European Union which understands Arabic does not constitute the relevant public for the goods in question in the present case, first, it must be borne in mind that an understanding of a foreign language may not, in general, be presumed (see, to that effect, judgments of 24 May 2011, Space Beach Club v OHIM – Flores Gómez (SpS space of sound), T‑144/10, not published, EU:T:2011:243, paragraph 63, and of 20 October 2021, Yadex International v EUIPO – Sütas Süt Ürünleri (PINAR Süzme Peynir), T‑559/20, not published, EU:T:2021:713, paragraph 53). Second, as regards the Arabic community present in the European Union, it should be noted, as did the Board of Appeal, that, even though the goods in question are teas which are not necessarily specifically aimed at that community, it cannot be ruled out that that community is part of the relevant public. Consequently, that argument must be rejected.
33 As regards the argument that the average level of attention of consumers is not necessarily lower than average, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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).
34 It is settled case-law that, for goods in Class 30 which are similar or identical to those covered by the marks at issue, the attention level of the public concerned is expected to be average at most, indeed low, since the goods in question are food products, mostly inexpensive items, intended for mass consumption (judgments of 7 October 2015, Panrico v OHIM – HDN Development (Krispy Kreme DOUGHNUTS), T‑534/13, not published, EU:T:2015:751, paragraph 32; of 13 September 2016, Perfetti Van Melle Benelux v EUIPO – PepsiCo (3D), T‑390/15, not published, EU:T:2016:463, paragraphs 39 and 40; and of 7 February 2018, Krasnyiy oktyabr v EUIPO – Kondyterska korporatsiia "Roshen" (CRABS), T‑795/16, not published, EU:T:2018:73, paragraph 21).
35 In the present case, first, it should be recalled that the evidence which the applicant provided as an annex to its action (annex 11) seeking to demonstrate the high price of the products in question was rejected as inadmissible (see paragraphs 20 and 21 above). Second, the applicant in no way substantiates its claim that the level of attention of the relevant consumers is average, in particular because of the impact which the purchase of those products would have on their health. Accordingly, since the applicant fails to challenge the considerations of the Board of Appeal, it must be concluded that the level of attention of the relevant public must be regarded as below average.
36 Consequently, in those circumstances, the applicant is not justified in claiming that the Board of Appeal made an error of assessment when determining the relevant public and its level of attention.
The comparison of the goods
37 In paragraph 29 of the contested decision, the Board of Appeal noted that the goods covered by the appeal in question were identical.
38 Since that assessment has not been disputed by the applicant, there is no need to call it into question.
The comparison of the signs
39 It should be borne in mind that the global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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 that 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).
40 According to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural, or conceptual aspects (see judgment of 17 February 2011, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).
The distinctive and dominant elements
41 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 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, 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).
42 According to the case-law, for the purposes 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, 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 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 intrinsic 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 complex mark (see judgment of 8 February 2007, Quelle v OHIM-Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58 and the case-law cited).
44 It is in the light of those considerations that the presence of any distinctive and dominant elements in the signs at issue must be assessed.
45 In that regard, the Board of Appeal noted that the mark applied for consisted of the following elements:
– the word elements ‘al assad’, ‘thé vert de chine’, ‘hboub’ and ‘chaara’ and other word elements in Arabic;
– the element ‘4011’;
– the element ‘R3505’;
– a number of figurative elements, namely two pairs of lions, stars in a row, the background of the sign and the metallic frame elements.
46 According to the Board of Appeal, the word element ‘al assad’ and the representation of the two pairs of lions are the most striking elements of the mark applied for, both of which also have distinctive character. Moreover, the elements ‘hboub’ and ‘R3505’, which are also distinctive, are not negligible in the overall perception of the sign at issue. In addition, the Board of Appeal found, inter alia, that the element ‘4011’ would be perceived, first, as a descriptive indication of the quality of tea by a non-negligible part of the relevant consumers, but also, second, as the number to which it refers by a substantial portion of the relevant consumers. Moreover, it found that the elements ‘thé vert de chine’ and ‘chaara’ could not be accorded much importance in the overall impression created by the sign applied for, while not being negligible in the overall perception of that sign. Lastly, the Board of Appeal concluded that the word elements in Arabic were of only secondary importance and that the other elements of the mark applied for, such as the figurative element consisting of stars in a row, the background of the sign and the metallic frame elements, would be perceived as mere decorative elements.
47 As regards the earlier mark, the Board of Appeal found, in paragraphs 67 to 74 of the contested decision, that it consisted of the following elements:
– the element ‘4011’;
– the figurative elements consisting of three representations of lions;
– the word elements ‘grand lion’ and ‘لسبعا’.
48 According to the Board of Appeal, the most visually striking element of that mark is the element ‘4011’. As is the case in respect of the mark applied for, that element will be perceived, first, as a descriptive indication of the quality of the tea by a non-negligible part of the relevant consumers, but also, second, as the number to which it refers by a substantial part of the relevant consumers. In addition, the Board of Appeal noted that the three representations of lions were not negligible in the overall perception of the earlier mark, although they might be imperceptible to some of the relevant consumers. Lastly, according to the Board of Appeal, the word elements ‘grand lion’ and ‘لسبعا’ have distinctive character.
49 The applicant disputes the contested decision, stating, first, that the element ‘4011’ is descriptive in relation to teas, with the result that that element cannot be taken into account in assessing the similarity of the signs at issue, and, second, that the word elements of the mark applied for, ‘thé vert de chine’ and ‘chaara’, ought to be regarded as perfectly distinctive for consumers in the European Union.
50 EUIPO disputes the applicant’s arguments.
51 It should be borne in mind that, as has been pointed out in paragraph 48 above, the Board of Appeal found that although, on the one hand, a non-negligible part of the relevant consumers perceived the element ‘4011’ as a descriptive indication of the quality of the tea, the fact remains that, on the other hand, a substantial proportion of consumers would perceive that element only as the number that it identifies.
52 The applicant has not succeeded in calling into question those findings of the Board of Appeal.
53 In the first place, the applicant provided a certain amount of documentary evidence in support of its contention that the element ‘4011’ is descriptive. However, that evidence is inadmissible as evidence submitted for the first time before the Court (see paragraphs 19 and 20 above) and, consequently, cannot be taken into consideration in assessing the descriptiveness of that element.
54 In the second place, the applicant relied on a decision of the Cancellation Division of EUIPO of 1 March 2021 cancelling a mark consisting exclusively of the element ‘4011’ on account of its descriptive character, on the basis of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation 1001/2017. Nevertheless, as the Board of Appeal did and as EUIPO correctly pointed out in its response, it should be noted that the decision in question was based on the fact that part of the relevant public, namely importers, tea connoisseurs, and consumers who often purchase or consume tea, may understand the element ‘4011’ as a description of the goods in question. The fact remains that, in that same decision, the Cancellation Division of EUIPO found that part of the relevant public would not perceive the element in question as being descriptive of the goods covered by the contested mark. Therefore, in the context of the assessment of the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, as was pointed out by the Board of Appeal, that decision cannot demonstrate that all consumers in the European Union will perceive the element ‘4011’ as being descriptive.
55 Therefore, that claim cannot succeed.
56 Next, as the Board of Appeal found, it must be held that the element ‘chaara’ has no particular meaning in relation to the goods in question for some of the relevant consumers, with the exception of consumers who systematically consume tea, tea connoisseurs or professionals in the relevant field, for whom the word at issue is merely descriptive for tea, as it refers to a specific type of tea leaves. In addition, as was pointed out by the Board of Appeal, the word element ‘thé vert de chine’ cannot be given much importance in the overall impression conveyed by the sign, given its position, its size and the fact that part of the relevant public will perceive that element as being descriptive.
57 Consequently, the Board of Appeal’s findings regarding the distinctive and dominant elements of the mark applied for must be upheld.
58 As regards the distinctive and dominant elements of the earlier mark, it must be borne in mind that, in principle, the likelihood of confusion is to be assessed on the basis of a comparison between the mark applied for, as described in the EUIPO register, and the earlier mark, as registered (see judgment of 7 May 2015, Cosmowell v OHIM – Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 35 and the case-law cited).
59 In that regard, as the applicant submits, it must be held that the representations of lions in the earlier mark, as well as the word elements, cannot be perceived and read without difficulty by the relevant consumers, because of their size. In addition, it should be noted that the earlier mark also consists of the element ‘b552’ which, on account of its size and position in the sign at issue, cannot be regarded as negligible in the overall perception of that sign. The Board of Appeal erred in not taking any account of that factor.
60 In those circumstances, the element ‘4011’ and the element ‘b552’ must be regarded as the distinctive and dominant elements of the earlier mark.
61 It is on the basis of those factors that the degree of similarity between the signs at issue must be assessed.
Visual similarity
62 The applicant submits that the marks at issue are not visually similar. In particular, it states that the signs at issue coincide only (i) in the descriptive element ‘4011’ and (ii) in secondary elements. In addition, it submits that the representations of lions in the marks at issue are different because of their size and the more realistic nature of those images in the mark applied for than in the earlier mark. Lastly, it submits that the mark applied for contains additional elements which further differentiate it from the earlier mark.
63 EUIPO disputes the applicant’s arguments, submitting that, on account of the illegible or imperceptible nature of the representations of lions in the earlier mark, those representations cannot serve as differentiating elements between those signs.
64 In the present case, the Board of Appeal found, in paragraph 75 of the contested decision, that the marks at issue coincided in the element ‘4011’, which would not be perceived as descriptive by a substantial part of the relevant public in the European Union. In addition, according to the Board of Appeal, the two signs share comparable representations of lions, which display, however, significant differences. Lastly, the Board of Appeal noted that the colours and use of certain decorative elements in the contested marks were similar. It therefore concluded that there was a low degree of visual similarity between the marks at issue.
65 In that regard, it has already been held in paragraphs 53 to 55 above that the common element ‘4011’ was not descriptive for all consumers in the European Union. That element appears both in the mark applied for and in the earlier mark, in different positions and size.
66 Next, it is true that the contested signs also coincide in the representation of the same animal, namely the lion. Nevertheless, first, those representations in the signs at issue differ on account of their shapes, size and colours. Second, as has been pointed out in paragraph 61 above, in view of the dimensions of those representations in the earlier mark, it is very likely that they are imperceptible to the relevant consumers in the European Union.
67 Furthermore, it should be noted that the mark applied for differs from the earlier mark in other word elements, in particular the elements ‘al assad’, ‘hboub’, ‘R3505’, ‘chaara’ and ‘thé vert de chine’, which are not negligible in the overall perception of the contested sign. The two marks also differ in the element ‘b552’, which appears only in the earlier mark. The two signs are, at most, similar in terms of secondary elements, such as the decoration of the metallic frame, and colours, which nevertheless differ. In particular, the decorations of the metallic frame differ visually and the yellow and green tones used in both marks are not the same. Those elements can therefore be regarded only as similar to a low degree.
68 Therefore, taking into account the elements which coincide in the marks at issue but also the differences between them, in particular, on account of a number of non-negligible word elements, as well as the difficulties in perceiving certain elements in the earlier mark, the Board of Appeal’s finding that the degree of visual similarity between the marks at issue is low must be upheld.
Phonetic similarity
69 The applicant submits, in essence, that, due to the descriptive nature of the element ‘4011’, the only element which will be pronounced in the mark applied for is the term ‘al assad’. Therefore, there is no phonetic similarity between the signs at issue even if the earlier mark is pronounced ‘4011’, which, according to the applicant, appears doubtful because of its descriptive character.
70 EUIPO disputes the applicant’s arguments, reiterating the Board of Appeal’s findings regarding the phonetic similarity between the signs at issue on account of the lack of overall descriptive character of the element ‘4011’.
71 In the contested decision, the Board of Appeal found, in paragraphs 76 and 77, that consumers generally referred only to the dominant elements of the marks and that they tended to shorten marks containing a number of words. Therefore, according to the Board of Appeal, for some consumers, the earlier mark will be designated by pronouncing the number ‘4011’ and the contested mark by pronouncing the word element ‘al assad’. For those consumers, the marks at issue are therefore not phonetically similar. The fact remains that, according to the Board of Appeal, some consumers might also pronounce the element ‘4011’ to designate the mark applied for. As such, for that segment of the relevant consumers, there is a low degree of phonetic similarity between the marks at issue.
72 In the present case, since the applicant has failed to show that the element ‘4011’ is devoid of distinctive character, the Board of Appeal’s finding that the earlier mark will be designated by pronouncing that element must be upheld. It should, however, be added that the element ‘b552’ of that mark could also be pronounced by the relevant public.
73 In the mark applied for, the dominant element is ‘al assad’. Even if the element ‘4011’ is not negligible in the perception of the contested sign, the fact remains that it is represented in smaller dimensions and is subordinate to the word element ‘al assad’.
74 In addition, it should be noted that the mark applied for also consists of the word elements ‘hboub’, ‘R3503’, ‘chaara’ and ‘thé vert de chine’, which are also of significant importance in the overall perception of that sign. It cannot be ruled out that some of the relevant consumers will also refer to those additional word elements when pronouncing the mark applied for, which further distinguishes it from the earlier mark.
75 In those circumstances, the Board of Appeal erred in finding that, for some consumers, there was a low degree of phonetic similarity, since the signs at issue were not similar for the relevant public in the European Union in that there were a high number of phonetic differences between those signs.
Conceptual similarity
76 The applicant submits that the Board of Appeal erred in finding that the signs at issue were, as a whole, conceptually similar to an above average degree. It maintains that the only common element of the marks at issue is representations of lions, which are, however, very different from one another. It accordingly criticises the Board of Appeal for having granted a monopoly to the owner of the earlier mark over the concept of a lion, on account of the fact that it attributed significant importance to that common figurative element, although its representations are visually different.
77 EUIPO disputes the applicant’s arguments, stating that the applicant confused the analysis of conceptual similarity with the global assessment of the likelihood of confusion.
78 In the present case, the Board of Appeal found, in paragraphs 78 to 85 of the contested decision, that, for the relevant public in the European Union, there was an above average degree of conceptual similarity between the signs at issue, since they coincided in the representation of lions with distinctive character.
79 In the present case, although it is true that the marks at issue represent the same animal, the lion, it should nevertheless be stated that, in the earlier mark, as registered, it is difficult to perceive the representation of lions because of their size. Furthermore, the expression ‘grand lion’ and the Arabic term ‘لسبعا’, which means ‘lion’, cannot be understood by the relevant consumers without difficulty. In those circumstances, it is unlikely that the relevant public would find that the earlier mark refers to the concept associated with the representation of lions.
80 Therefore, contrary to the finding of the Board of Appeal, it must be held that the marks at issue are conceptually similar to a low degree.
The distinctive character of the earlier mark
81 The applicant has not disputed the Board of Appeal’s findings as to the normal level of distinctiveness of the earlier mark.
The likelihood of confusion
82 The applicant disputes that there is a likelihood of confusion on the part of the relevant public. It contests the Board of Appeal’s global assessment of the similarity of the signs, reiterating the arguments raised to challenge the visual, phonetic and conceptual similarities.
83 EUIPO disputes the applicant’s arguments, stating that the Board of Appeal concluded that there was a likelihood of confusion between the two signs on the basis of a number of elements.
84 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
85 It is apparent from paragraphs 87 to 92 of the contested decision that the Board of Appeal assessed whether there was a likelihood of confusion on the part of the relevant public by taking into account, inter alia, in addition to the identity of the goods in question, the lower than average level of attention of consumers, the average degree of inherent distinctiveness of the earlier mark and the above-average degree of conceptual similarity between the marks at issue.
86 It must be noted that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of the relevant provision (see, by analogy, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 26).
87 In addition, according to the case-law of the Court, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by those signs are marketed. If the goods covered by the mark in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, a visual similarity between the signs will as a general rule be more important (see judgment of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 80 and the case-law cited).
88 In the present case, in the first place, it should be noted that the goods covered by the marks at issue are intended for mass consumption. They are accordingly mainly sold in self-service stores where consumers choose the goods themselves and the visual aspect of the signs will, as a general rule, be more important.
89 In the second place, it follows from all of the foregoing that the signs at issue have a low-degree of visual similarity, taking into account, first, the inclusion in the mark applied for of a number of additional, elements which are non-negligible in the overall perception of the sign and do not appear in the earlier mark and, second, the representations of certain elements of the earlier mark which are difficult to perceive. Moreover, as has been pointed out in paragraphs 69 to 80 above, the marks at issue are not phonetically similar and have a low degree of conceptual similarity.
90 Therefore, in view of the low degree of visual similarity, the predominant aspect of the goods intended for mass consumption, the low degree of conceptual similarity and the lack of phonetic similarity, the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue for the relevant public in the European Union, even if the level of attention of the relevant public is below average.
91 It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be upheld.
Costs
92 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.
93 Since EUIPO has been unsuccessful, it must therefore be ordered to pay the costs in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 June 2023 (Case R 2017/2022-2) in so far as it annulled the decision of the Opposition Division of 20 September 2022 relating to the EU figurative trade mark Thé Vert de Chine AL ASSAD HBOUB R3505 Chaara 4011 in respect of ‘tea’ falling within 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.
2. Orders EUIPO to bear its own costs and those of Laura Food Srl.
Spielmann | Mastroianni | Gâlea |
Delivered in open court in Luxembourg on 10 July 2024.
V. Di Bucci | | S. Papasavvas |