Judgments nº T-763/17 of Tribunal General de la Unión Europea, November 29, 2018 (case . .)

• Resolution Date: November 29, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-763/17

(EU trade mark - Opposition proceedings - Application for EU figurative mark welly - Earlier EU figurative marks Kelly’s and Kelly’s www.kellys.eu CHIPS - Relative ground for refusal - 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-763/17,

Septona AVEE, established in Oinofyta (Greece), represented by V. Wellens, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh and D. Walicka, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Intersnack Group GmbH & Co. KG, established in Düsseldorf (Germany),

ACTION brought against the decision of the First Board of Appeal of EUIPO of 12 July 2017 (Case R 1525/2016-1), relating to opposition proceedings between Intersnack Group and Septona,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, R. Barents and J. Passer (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 21 November 2017,

having regard to the response lodged at the Court Registry on 8 February 2018,

further to the hearing on 11 July 2018,

gives the following

Judgment

Background to the dispute

1 On 15 July 2014, the applicant, Septona AVEE, 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:

3 The goods in respect of which registration was sought are 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, and correspond to the following description: ‘Rice cakes; Rice-based snack food; Cereals; Cereal bars; Cereal-based snack food; Muesli; Cake dough; Rusks; Natural sweeteners’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 35/2015 of 20 February 2015.

5 On 20 May 2015 Intersnack Group GmbH & Co. KG filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the following two earlier marks:

- the EU figurative mark filed on 10 June 2009 and registered on 21 January 2015 under the number 8353203 (‘the first earlier mark’), as reproduced below:

- the EU figurative mark filed on 8 April 2013 and registered on 20 August 2013 under the number 11719283 (‘the second earlier mark’), as reproduced below:

7 The first earlier mark was registered for goods in Classes 29 and 30 corresponding, for each of those classes, to the following description:

- Class 29: ‘Extruded and pelletised or otherwise manufactured or processed potato products for snacks; roasted, dried, salted, spiced and processed nuts, including with coatings; preserved, dried and cooked fruits’;

- Class 30: ‘Extruded and pelletised or otherwise manufactured or processed tapioca, manioc, rice, maize, wheat or other cereal products for snacks; savoury biscuits; muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains; chocolate and chocolate products; sauces’.

8 The second earlier mark was registered for goods in Classes 29, 30 and 31 corresponding, for each of those classes, to the following description:

- Class 29: ‘Extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks; Roasted, dried, salted, spiced, coated and processed nuts, cashew kernels, pistachios, almonds, peanuts, coconuts (dried); Preserved, dried and cooked fruits and vegetables; Seaweed extracts for food; Ginger products being dried fruit’;

- Class 30: ‘Extruded and pelletised or otherwise manufactured or processed tapioca, manioc, rice, maize, wheat or other cereal products and ginger products being confectionery and jelly fruits for snacks; Savoury biscuits and pretzels; Muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains; Chocolate and chocolate products; Sauces’;

- Class 31: ‘Unprocessed nuts, cashew kernels, pistachios, almonds, peanuts and seeds; Algae for human consumption’.

9 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).

10 On 20 June 2016, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

11 On 19 August 2016, Intersnack Group 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 12 July 2017 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division, rejected the EU trade mark application and ordered the applicant to pay the costs. The Board of Appeal held that there was a likelihood of confusion in the minds of the relevant public between the mark applied for and the first earlier mark within the meaning of Article 8(1)(b) of Regulation No 207/2009.

13 The Board of Appeal first of all stated, in paragraph 13 of the contested decision, that the goods at issue were basic food products, that is, mainly snacks, which are generally inexpensive and chosen quickly, and were therefore targeted at average consumers who are likely to have a lower than average level of attention when buying them.

14 Next, in relation to the comparison of the goods, the Board of Appeal held, in paragraph 14 of the contested decision, that the goods at issue were identical, with the exception of natural sweeteners, which it held to be similar to a low degree.

15 In addition, the Board of Appeal proceeded to examine the signs at issue and held, in paragraph 24 of the contested decision, that the degree of visual similarity between the signs was higher than average. In that regard, the Board of Appeal stated, in paragraphs 17 to 20 of the contested decision, that the overall layout of the two signs was similar, that the word element had, in both cases, the appearance of an English name, that the two words had roughly the same length, and that most of the letters of the two words were written in lower case and followed the same sequence. The Board held that, despite the presence of relative differences, particularly the shape of the labels, the first letter of the words and the genitive in the first earlier mark, the similarities pointed out previously were striking and could lead consumers to confuse the two signs at issue. The Board of Appeal also observed, in paragraph 23 of the contested decision, that the mark applied for had no colour claim and could, therefore, be used in red. From the phonetic perspective, the Board of Appeal held, in paragraph 25 of the contested decision, that the words ‘welly’ and ‘kelly’s’ sounded very similar for many consumers in the European Union. From a conceptual perspective, the Board of Appeal took the view, in paragraph 30 of the contested decision, that the words ‘welly’ and ‘kelly’s’ would be perceived by most consumers as fanciful terms whose striking coincidence was that they both looked and sounded English and that, to that limited extent, the two marks did convey a similar connotation.

16 Finally, in its assessment of the likelihood of confusion between the signs at issue, the Board of Appeal held, in paragraphs 32 to 35 of the contested decision, (i) that the goods at issue were identical, except for natural sweeteners, (ii) that the signs at issue were similar to a higher than average degree as regards their visual and phonetic perceptions and to a limited degree as regards their conceptual content, and (iii) that the distinctiveness of the first earlier mark was average and that the relevant consumer’s level of attention was lower than average. In the light of those factors, the Board of Appeal held, in paragraph 36 of the contested decision, that the relevant consumers, who would not normally see the signs at issue at the same time and would therefore have to rely on their imperfect recollection, could confuse the two signs given that they represented English names which look and sound very similar and which are written in a similar typeface on a somewhat similarly-shaped dark label.

Procedure and forms of order sought

17 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

18 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

19 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.

20 The applicant submits, in essence, that the Board of Appeal erred in finding that the level of attention of the relevant public was below average and that the comparison of the goods and the analysis of the visual, phonetic and conceptual similarities of the signs at issue were incorrect, with the result that there is no likelihood of confusion between the mark applied for and the earlier marks.

21 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because it is identical with, or similar to, the earlier trade mark, or because the goods or...