Judgments nº T-648/16 of Tribunal General de la Unión Europea, April 17, 2018

Resolution DateApril 17, 2018
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-648/16

(EU trade mark - Opposition proceedings - Application for registration of EU figurative mark BOBO cornet - Earlier EU figurative mark OZMO cornet - No likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T-648/16,

Şölen Çikolata Gıda Sanayi ve Ticaret AŞ, established in Şehitkamil Gaziantep (Turkey), represented by T. Tsenova, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Elka Zaharieva, residing in Plovdiv (Bulgaria), represented by A. Kostov, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 July 2016 (Case R 906/2015-4), relating to opposition proceedings between Șölen Çikolata Gıda Sanayi ve Ticaret and Ms Zaharieva,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen (Rapporteur), President, V. Kreuschitz and N. Półtorak, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 September 2016,

having regard to the response of EUIPO lodged at the Court Registry on 17 November 2016,

having regard to the response of the intervener lodged at the Court Registry on 25 October 2016,

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

Background to the dispute

1 On 11 November 2013, the intervener, Ms Elka Zaharieva, 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), as amended (replaced by 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)).

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

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3 The goods in respect of which registration was sought are in Classes 29, 30 and 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 29: ‘Yoghurt; Milk beverages, milk predominating; Milk products’;

- Class 30: ‘Candy; Yoghurt (Frozen -) [confectionery ices]; Confectionery made of sugar; Cocoa products; Cocoa-based beverages; Powders for ice cream; Candy; Ices and ice creams; Chocolate beverages with milk’;

- Class 32: ‘Almonds (Milk of -) [beverage]; Non-alcoholic beverages; Milk (Peanut -) [non-alcoholic beverage]’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 10/2014 of 17 January 2014.

5 In its observations of 18 November 2014, EUIPO requested that the list of goods in Class 30 designated by the trade mark application be restricted by deleting ‘cocoa products; cocoa-based beverages; chocolate beverages with milk’.

6 On 12 February 2014, the applicant, Şölen Çikolata Gıda Sanayi ve Ticaret AŞ, filed, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), a notice of opposition to registration of the mark applied for in respect of all of the goods covered by that mark.

7 The opposition was based on the earlier international registration registered on 10 July 2012 under No 1 148 957 and effective in Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Spain, France, Croatia, Italy, Luxembourg, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia and the United Kingdom, designating goods in Class 30 and corresponding to the following description:

‘Cocoa, cakes, chocolates, chocolate creams, cakes with cocoa milk and chocolate cream’, as reproduced below

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8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

9 The opposition was based on all the goods covered by the earlier application and directed against all the goods covered by the EU trade mark application.

10 By decision of 11 March 2015, the Opposition Division rejected the opposition in its entirety.

11 On 11 May 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

12 By decision of 20 July 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs in the appeal and opposition proceedings.

13 First, the Board of Appeal held, on the one hand, that, since the applicant had relied on an earlier international registration, the relevant territory for the earlier right upon which the contested decision was based consists of the Member States of the European Union designated by the international registration, namely Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Spain, France, Croatia, Italy, Luxembourg, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia and the United Kingdom. On the other hand, the Board of Appeal took the view that the goods at issue are everyday consumer goods intended for the public at large, who will display an average level of attention (paragraphs 9 and 10 of the contested decision).

14 Second, as regards the visual comparison of the signs, the Board of Appeal pointed out that, according to settled case-law, where a sign consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant. Thus, in the case of a sign that contains both figurative and verbal elements, the figurative element may occupy an equivalent, or even a more significant, position than that of the verbal elements. The Board of Appeal went on to find that the only element that the two signs have in common is the word ‘cornet’, that the mere fact that the words ‘bobo’ and ‘ozmo’ share the same vowel ‘o’ does not make them similar, but that, by contrast, the striking feature of the rabbit in the mark applied for has no counterpart in the earlier international registration. According to the Board of Appeal, that element occupies more than half of the sign and hence is not negligible in the overall impression projected by that sign but, on the contrary, dominates the visual image perceived by consumers. It consequently concluded that, in view of the dominance of the figurative elements in the mark applied for, in particular the rabbit, and the absence of any counterpart thereto in the earlier sign, the signs are visually dissimilar (paragraphs 13 to 17 of the contested decision).

15 Third, as regards the phonetic comparison of the signs at issue, the Board of Appeal found that, positioned at the respective beginnings of those signs, the words ‘ozmo’ and ‘bobo’ are likely to have more of an impact on the overall visual and phonetic impression than the final identical element ‘cornet’, and that the words ‘bobo’ and ‘ozmo’ will be pronounced with clearly different sounds due to their different beginnings ‘bo’ and ‘oz’. The Board of Appeal accordingly concluded that the signs are similar from the phonetic perspective only to a less than average degree (paragraph 18 of the contested decision).

16 Fourth, as regards the conceptual comparison of the signs, the Board of Appeal held that it could not find any similarity between the signs given that the words ‘bobo’ and ‘ozmo’ have no meaning in any of the relevant languages and hence cannot convey any concept. It stated that the figurative elements are also different. The Board of Appeal then considered that the only element that the signs have in common, namely the word ‘cornet’, cannot establish a conceptual similarity. According to the Board of Appeal, that word will either be understood by the relevant consumer, and will then be perceived as descriptive of the goods, or it will not be understood, and will therefore be unable to convey any concept (paragraph 19 of the contested decision).

17 Fifth, as regards the overall assessment of the likelihood of confusion, the Board of Appeal found that the goods at issue are similar, that the signs demonstrate a phonetic similarity of a less than average degree, that they are visually dissimilar and conceptually void and that, although the signs share the word ‘cornet’, that single common feature is not sufficient to outweigh the differences between the signs at issue. It then found that, having regard to the principle of interdependence established by the Court of Justice, even where the identity between the goods is assumed, this is counteracted by the visual dissimilarity and the less than average degree of phonetic similarity between the signs. The Board of Appeal consequently concluded that, even if the goods at issue are identical, the other factors are sufficient to exclude any likelihood of confusion, including a risk of association, which cannot be based on a low degree of phonetic similarity, and it dismissed the appeal (paragraphs 20 to 23 of the contested decision).

Forms of order sought

18 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs incurred for the purpose of the proceedings before the Court and for the purpose of the appeal and opposition proceedings.

19 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay...

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