Judgments nº T-21/15 of The General Court, April 26, 2016

• Resolution Date: April 26, 2016
• Issuing Organization: The General Court
• Decision Number: T-21/15

(EU trade mark - Opposition proceedings - Application for EU figurative trade mark Dino - Earlier EU figurative trade mark representing a dinosaur - Relative ground for refusal - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-21/15,

Franmax UAB, established in Vilnius (Lithuania), represented by E. Saukalas, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent, assisted by B. Uriarte Valiente, lawyer,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the Court, being

Ehrmann AG Oberschönegg im Allgäu, established in Oberschönegg (Germany), represented by A. Gaul, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 23 October 2014 (Case R 2012/2013-5) concerning opposition proceedings between Ehrmann AG Oberschönegg im Allgäu and Franmax UAB,

THE GENERAL COURT (First Chamber),

composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 19 January 2015,

having regard to the response of EUIPO lodged at the Court Registry on 11 May 2015,

having regard to the response of the intervener lodged at the Court Registry on 29 April 2015,

having regard to the fact that no request 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, pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991, to rule on the action without an oral procedure,

gives the following

Judgment

Background to the dispute

1 On 16 April 2012 the applicant, Franmax UAB, filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The mark in respect of which registration was sought is the following figurative sign:

3 The goods in respect of which registration was sought are, inter alia, in Classes 29 and 30 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 29: ‘Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and other milk products’;

- Class 30 ‘Coffee, cocoa and artificial coffee; rice, tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; spices; ice’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2012/111 of 14 June 2012.

5 On 13 September 2012 the intervener, Ehrmann AG Oberschönegg im Allgäu, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to the registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the international figurative mark designating the European Union, registered on 23 June 2006 under number 903019, reproduced below, in that it covers goods in Classes 29 and 30 corresponding, for each of those classes, to the following description:

- Class 29: ‘Milk and milk products, especially sour milk products, yoghurt products, butter milk products, cream products, whey products for nutrition purposes, non-alcoholic milk drinks with a predominant milk fraction, curd products, half-fat milk products, desserts consisting essentially of milk and/or cream, also using binding agents based on starch; soya products as foodstuffs, especially substitute products for milk, cheese, butter, yoghurt, curd, pudding, desserts and similar food based on soya (as far as included in this Class); all above goods also containing fruits, vegetables, herbs, spices, cereals, juices or extracts from the above ingredients and flavours, all above-mentioned goods as fresh or cured finished products’;

- Class 30: ‘Ice-cream’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8 By decision of 14 August 2013, the Opposition Division partially upheld the opposition and rejected the registration application for ‘preserved fruits’, ‘compotes’ and ‘milk and other milk products’ in Class 29, and ‘coffee’, ‘cocoa’, ‘artificial coffee’, ‘pastry’, ‘confectionery’, ‘preparations made from cereals’, ‘spices’ and ‘ices’ in Class 30. In comparing the goods covered by the marks at issue, the Opposition Division first noted the existing identity between, on the one hand, ‘milk and other milk products’ covered by those marks and, on the other hand, ‘ices’ covered by the mark applied for and ‘ice-cream’ covered by the earlier mark. Second, the Opposition Division held that there was a similarity between, on the one hand, ‘coffee’ and ‘cocoa’ covered by the mark applied for and ‘milk products’ covered by the earlier mark and, on the other hand, ‘confectionery’ covered by the mark applied for and ‘ice-cream’ covered by the earlier mark. Third, it found that there was a low degree of similarity between, on the one hand, ‘preserved fruits’, ‘compotes’, ‘artificial coffee’, ‘preparations made from cereals’ and ‘pastry’ covered by the mark applied for and ‘milk products’ and ‘ice-cream’ covered by the earlier mark and, on the other hand, ‘spices’ covered by the mark applied for and ‘soya products’ covered by the earlier mark.

9 On 14 October 2013 the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

10 By decision of 23 October 2014, the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division in so far as it had rejected the trade mark application for ‘preserved fruits’ and ‘spices’, and dismissed the appeal as to the remainder (‘the contested decision’). According to the Board of Appeal, the ‘preserved fruits’ and ‘spices’ covered by the mark applied for and the ‘milk and milk products’ covered by the earlier mark did not bear any similarity. It also endorsed the Opposition Division’s findings that the ‘milk and milk products’ and ‘ices’ covered by the mark applied for were identical to the goods covered by the earlier mark. As regards the comparison between ‘coffee’, ‘cocoa’, ‘artificial coffee’ and ‘preparations made from cereals’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark, the Board of Appeal partially endorsed the Opposition Division’s conclusions by finding a low degree of similarity between those products, in so far as the relevant consumer could think that the same undertaking had responsibility for their manufacture. Last, the Board of Appeal departed from the Opposition Division’s conclusions by finding that the ‘compotes’, ‘pastry’ and ‘confectionery’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark were similar, in so far as those goods had an identical purpose, the same method of use, the same distribution channels and target public, and that they were in competition or complementary. As regards the comparison of the signs at issue, the Board of Appeal held, first, that the representation of dinosaurs in the two marks at issue displayed, despite some differences, a medium degree of visual similarity. It further indicated that phonetic comparison of the signs at issue was irrelevant, since a figurative mark without verbal elements could not be pronounced. Finally, the Board of Appeal found that the marks at issue both evoked a happy dinosaur and were therefore ‘highly similar’ conceptually. The Board of Appeal concluded from this that the marks at issue must be considered similar overall. As regards the global assessment of the likelihood of confusion, the Board of Appeal observed that the verbal element ‘dino’ in the mark applied for only strengthens the concept derived from the figurative element. Consequently, the Board of Appeal held that, taking account of the similarity of the marks at issue, of some of the goods covered by them, and of the average level of attentiveness of the relevant public, it was likely that that public would believe that those goods came from the same undertaking or from an economically-linked undertaking, so that the mark applied for could not be registered for those same goods.

Procedure and forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO 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

13 In support of its action, the applicant raises a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

14 As regards the comparison of the goods, the applicant first submits, in substance, that contrary to what the Board of Appeal held in the contested decision, ‘coffee’, ‘cocoa’, ‘artificial coffee’ and the ‘preparations made from cereals’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark are not similar. Furthermore it argues that, contrary to what was found in that decision, there is no similarity between the ‘compotes’, ‘pastry’ and ‘confectionery’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark.

15 Concerning the comparison of the signs at issue, the applicant argues that, contrary to what was found in the contested decision, they are not visually similar. It concedes, however, that there is a certain conceptual similarity between the signs in that the relevant public will recognise the image of a dinosaur in them.

16 As regards the global assessment of the likelihood of...