Judgments nº T-628/18 of Tribunal General de la Unión Europea, October 17, 2019

• Resolution Date: October 17, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-628/18

(EU trade mark - Opposition proceedings - Application for European Union figurative mark fripan VIENNOISERIE CAPRICE Pur Beurre - Earlier EU figurative mark Caprice - Relative ground for refusal - 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-628/18,

Viomichania mpiskoton kai eidon diatrofis E.I. Papadopoulos SA, established in Moschato-Tavros (Greece), represented by C. Chrysanthis, P.V. Chardalia and A. Vasilogamvrou, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, S. Palmero Cabezas and H. O’Neill, acting as Agents,

defendant,

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

Europastry, SA, established in Sant Cugat del Vallès (Spain), represented by L. Estropá Navarro, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 August 2018 (Case R 493/2018-5), relating to opposition proceedings between Viomichania mpiskoton kai eidon diatrofis E.I. Papadopoulos and Europastry,

THE GENERAL COURT (Eighth Chamber),

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

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 22 October 2018,

having regard to the response of EUIPO lodged at the Court Registry on 14 January 2019,

having regard to the response of the intervener lodged at the Court Registry on 4 January 2019,

further to the hearing on 10 July 2019,

gives the following

Judgment

Background to the dispute

1 On 30 July 2014, the intervener, Europastry, 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), 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: ‘Flour and preparations made from cereals; Bread, pastry and confectionery (- all frozen)’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 171/2014 of 12 September 2014.

5 On 10 December 2014, the applicant, Viomichania mpiskoton kai eidon diatrofis E.I. Papadopoulos SA, filed a notice of opposition pursuant to 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 earlier EU figurative mark filed on 13 October 2006 and registered on 16 October 2008 under No 5 386289, reproduced below:

7 The goods in respect of which the earlier mark is registered are in Class 30 and correspond to the following description: ‘Stuffed wafers in the form of cigarillos’.

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 By decision of 13 May 2016, the Opposition Division rejected the opposition.

10 By decision of 5 May 2017 in Case R 1246/2016-5, the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division of 13 May 2016 in its entirety, remitted the case to the Opposition Division and considered that a new decision was to be taken on the ground that the decision of 13 May 2016 contained substantial errors as well as procedural errors which may have affected its outcome, inter alia, in the context of the assessment of proof of genuine use of the earlier mark and of the question of whether the evidence adduced proved the enhanced distinctiveness of that mark.

11 By decision of 24 January 2018, the Opposition Division rejected the opposition taking the view that, while the evidence showed genuine use of the earlier mark, it did not enable that mark to be recognised as having enhanced distinctiveness. Next, it considered that (i) the goods were identical and similar, with the exception of ‘flour’ covered by the mark applied for, (ii) the signs at issue were phonetically dissimilar but displayed limited visual and conceptual similarities and (iii) taking into account all the relevant factors, there was no likelihood of confusion.

12 On 16 March 2018, the applicant filed an appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division of 24 January 2018.

13 By decision of 8 August 2018 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal.

14 It found, in paragraphs 37 and 39 of the contested decision, that the relevant territory was that of the European Union and that the relevant public consisted of the average consumer with an average level of attention.

15 As regards the comparison of the goods in question, in paragraph 43 of the contested decision, the Board of Appeal endorsed the Opposition Division’s assessment that the goods were identical or similar, with the exception of ‘flour’ covered by the mark applied for, and noted that the parties had not called into question that finding.

16 As regards the comparison of the signs at issue, it found in paragraph 54 of the contested decision that, at best, they displayed very limited similarities. It pointed out in paragraph 51 of the contested decision that, visually, the only similarity lay in the common word element ‘caprice’, which however differed in its specific placement in those signs, the typefaces and colours used and their relative size and importance. Regarding the phonetic comparison, the Board of Appeal found in paragraph 52 of the contested decision that the signs at issue were similar in that the sole word element, ‘caprice’, is pronounced in the earlier mark whereas, in the mark applied for, that term is pronounced in the middle of a long line of word elements, namely within the expression ‘fripan viennoiserie pur beurre’. That said, it considered that it was far more likely that consumers would only pronounce the visually dominant elements, namely ‘caprice’ for the earlier mark and ‘fripan’ for the mark applied for. Regarding the conceptual comparison, the Board of Appeal considered in paragraph 53 of the contested decision, just as the Opposition Division did, that the term ‘caprice’ would be understood by the French- or English-speaking part of the relevant public as a reference to a ‘sudden or unpredictable change of attitude, behaviour’ or by the French-speaking public only as ‘a sudden feeling of desire towards someone or something’. It added that, for the French-speaking part of the relevant public, the term ‘viennoiserie’ designated a kind of pastry, the expression ‘pur beurre’ would be understood as ‘pure butter’ and, irrespective of any linguistic background, the world ‘fripan’ had no clear semantic content.

17 As regards the assessment of the likelihood of confusion, the Board of Appeal found, as a preliminary point, in paragraphs 58 to 60 of the contested decision, that while the evidence submitted by the applicant, including the affidavit sworn before a notary public by its sales department director, were clearly sufficient to show genuine use of the earlier mark, it did not prove any degree of enhanced distinctiveness and the assessment of the likelihood of confusion should therefore be based on the inherent distinctiveness of that mark which must be considered to be normal. Next, it noted, in paragraphs 62 and 63 of the contested decision, that there were overwhelming differences between the signs at issue and it considered that the applicant had not presented any convincing argument to show that the presence of the common word element ‘caprice’ in those signs was sufficient to give rise to a likelihood of confusion and that the relevant public would completely ignore the figurative elements of the earlier mark, dissect the mark applied for so as to only pay attention to a minor element, ignore all the other larger and dominant word elements of that mark and confuse the signs at issue on the basis of that complex mental exercise. In that regard, it found in paragraph 64 of the contested decision that the word element ‘fripan’ was the distinctive and dominant element of the mark applied for, including when it was examined in the light of all the other additional elements comprising that mark, and therefore the applicant’s argument that the element ‘caprice’ retained a distinctive and independent character was entirely unconvincing. Furthermore, the Board of Appeal took the view in paragraph 65 of the contested decision that the differences between the signs at issue - in particular, the additional word elements in the mark applied for, the figurative elements and the negligible position of the only common element ‘caprice’ - were sufficient to offset any similarity between those marks. It therefore considered that consumers were unlikely to confuse the marks at issue or believe that the goods originated from the same undertaking or from economically linked undertakings.

Forms of order sought

18 The applicant asks the General Court to:

- annul the contested decision;

- order EUIPO and the intervener to pay the costs.

19 EUIPO contends that the Court should:

- dismiss the action in its entirety;

- order the applicant to pay the costs incurred by EUIPO.

20 The intervener contends, in essence, that the Court should:

- uphold the contested decision in its entirety so that the European Union trade mark...