Judgments nº T-243/16 of Tribunal General de la Unión Europea, July 18, 2017

• Resolution Date: July 18, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-243/16

(EU trade mark - Opposition proceedings - Application for registration of the figurative EU trade mark ‘freggo’ - Earlier EU figurative trade mark ‘TENTAZIONE FREDDO FREDDO’ - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-243/16,

Freddo SA, established in Buenos Aires (Argentina), represented by S. Malynicz QC, K. Gilbert and G. Lodge, Solicitors,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

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

Freddo Freddo, SL, established in Madrid (Spain), represented by J.F. Gallego Jiménez and C. Marí Aguilar, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 17 February 2016 (Case R 919/2015-2), relating to opposition proceedings between Freddo Freddo SL and Freddo SA,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, P. Nihoul and J. Svenningsen (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 18 May 2016,

having regard to the response of EUIPO lodged at the Court Registry on 2 August 2016,

having regard to the response of the intervener lodged at the Court Registry on 1 August 2016,

further to the hearing on 17 May 2017,

gives the following

Judgment

Background to the dispute

1 On 17 February 2009, the applicant, Freddo SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the following figurative mark:

3 The goods and services in respect of which registration was sought are in Classes 30 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, following the limitation made during the proceedings before EUIPO, to the following description:

- Class 30: ‘Pastry and confectionery, ices; ice; cones for ice cream, dulce de leche, flavored ices, frozen confections, frozen custards, frozen yogurt, ice cream, ice cream drinks, ice milk, ice cream substitutes, milk shakes, sherbet, and sorbet;’

- Class 43: ‘Services for providing food and drink; temporary accommodation; cafes, snack bars, food preparation, and ice cream parlors.’

4 The EU trade mark application was published in Community Trade Marks Bulletin No 26/2009 of 13 July 2009.

5 On 13 October 2009, the intervener, Freddo Freddo, SL, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

6 The opposition was based on the following earlier marks:

- the EU figurative mark registered under the No 3 441 326, reproduced hereunder:

covering goods and services in Classes 29, 30 and 43 and corresponding, for each of these classes, to the following description:

- Class 29: ‘Milk products’;

- Class 30: ‘Preparations made from cereals, bread, pastry and confectionery, ices; sauces (condiments)’;

- Class 43: ‘Restaurant/ice-cream parlour, coffee shop and snack-bar services’;

- the Spanish trade name FREDDO FREDDO SA, registered under the number 174 102 covering services in Class 43 and corresponding to the following description:

‘Commercial transactions of its business dedicated to provide common services of a café serving hot chocolate as a speciality, ice-cream parlor’.

- the Spanish figurative mark registered under the number 1 791 209, reproduced hereunder:

covering services in Class 30 and corresponding to the following description:

‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces (condiments); spices; ice’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (4) of Regulation No 207/2009.

8 On 11 March 2015, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, only taking into consideration the EU figurative trade mark referred to in the first indent of point 6 above (‘the earlier mark’).

9 On 11 May 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 17 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. Specifically, after deciding that the goods and services are directed at the public at large and having decided to focus its analysis on French- and Spanish-speaking consumer perception, it held, first, that the level of attention of the relevant public is at most average in respect of the relevant goods and services; second, that the goods and services covered by the marks at issue are partly identical and partly similar to highly similar; third, that, in the mark for which registration is sought, the word element ‘freggo’ is the dominant and distinctive element; fourth, that in the earlier mark, the word element ‘freddo freddo’ is particularly eye-catching and is the most distinctive word element; fifth, that both marks have a low degree of visual similarity and an average degree of phonetic similarity; sixth, that although they are not similar from a conceptual standpoint, they do not display any relevant differences which could counteract their visual and phonetic similarity; and, seventh, that the earlier mark has an average degree of inherent distinctiveness.

11 In conclusion, the Board of Appeal considered that there is a likelihood of confusion between the two marks at issue, including a likelihood of association, in that they are identified by their most distinctive elements ‘freggo’ and ‘freddo’, which are confusingly similar, especially when taking into account the fact that, in the trade sector in question, it is common for the same mark to be configured in various different ways depending on the type of goods or services, and for a principal mark to be reconfigured in sub-brands which share a common dominant element with that principal mark.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs.

13 EUIPO and the intervener contend that the Court should:

- dismiss the action for annulment in its entirety;

- order the applicant to pay the costs.

Law

Objection to the admissibility of certain elements put forward in the response of the intervener

14 During the hearing, the counsel for the applicant submitted that various arguments raised by the intervener in its response were inadmissible, since they advanced new or irrelevant information in the context of the present application. Specifically, counsel for the applicant referred to the arguments set out in paragraphs 19 to 22, 54 to 59 and 60 to 65 of the intervener’s response.

15 It should be noted that, in accordance with Article 76(1) of Regulation No 207/2009, in the context of proceedings relating to relative grounds for refusal of registration by EUIPO, the examination by the latter is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. It follows that, as regards a relative ground for refusal to register, matters of law or fact submitted to the Court that have not been submitted previously to the Board of Appeal are not capable of affecting the lawfulness of a decision made by that board. Consequently, in the context of verifying the lawfulness of the decisions taken by the Boards of Appeal, such matters cannot be taken into consideration when determining the lawfulness of a decision taken by the Board of Appeal and must, therefore, be rejected as being inadmissible (see, to that effect, judgment of 17 March 2010, Mäurer + Wirtz v OHIM - Exportaciones Aceiteras Fedeoliva (tosca de FEDEOLIVA), T-63/07, EU:T:2010:94, paragraphs 22 and 23 and the case-law cited).

16 In this instance, in paragraphs 19 to 22 of its response, the intervener submits that, due to the existence of a family of trade marks of which it is the proprietor, which includes, inter alia, the marks set out in paragraph 6 above, consumers are likely to believe that the trade mark applied for belongs to this family of trade marks, which increases the likelihood of confusion. In addition, in paragraph 54 of its response, the intervener refers in particular to judgments of the Spanish courts and decisions of the competent Spanish authority for trade marks. Lastly, in paragraphs 60 to 65 of its response, the intervener maintains that the applicant acted in bad faith when it submitted its application for registration, since it allegedly knew of the existence of the trade marks owned by the intervener and knew that the mark applied for was an unlawful imitation of these marks.

17 However, the matters of law and fact set out in the aforementioned paragraphs of its response were not raised by the intervener in the context of its observations before the Board of Appeal. Therefore, those matters are inadmissible. By contrast, this is not the case for the arguments set out in paragraphs 55 to 59 of the intervener’s response, which relate to the increased likelihood of confusion between the marks at issue resulting from the similarity between the respective company names of the applicant and the intervener and which have already been presented before the Board of Appeal. Furthermore, it should be noted that the question of the...