Judgments nº T-109/19 of Tribunal General de la Unión Europea, April 29, 2020

Resolution DateApril 29, 2020
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-109/19

(EU trade mark - Opposition proceedings - Application for the EU figurative mark TasteSense - Earlier EU word mark MultiSense - 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-109/19,

Kerry Luxembourg Sàrl, established in Luxembourg (Luxembourg), represented by A. von Mühlendahl and H. Hartwig, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,

defendant,

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

Döhler GmbH, established in Darmstadt (Germany),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 November 2018 (Case R 1178/2018-2), relating to opposition proceedings between Döhler and Kerry Luxembourg,

THE GENERAL COURT (Eighth Chamber),

composed of J. Svenningsen, President, R. Barents (Rapporteur) and C. Mac Eochaidh, Judges,

Registrar: S. Bukšek Tomac, Administrator,

having regard to the application lodged at the Court Registry on 20 February 2019,

having regard to the response lodged at the Court Registry on 29 April 2019,

further to the hearing on 10 December 2019,

gives the following

Judgment

Background to the dispute

1 On 9 September 2016, the applicant, Kerry Luxembourg Sàrl, 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 54, 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 1, 29 and 30 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, to the following description:

- Class 1: ‘Flavour improvers for foods, beverages and oral care products; chemical based food, drink and oral care additives’;

- Class 29: ‘Fruit, vegetables and natural based extracts used as additives in the manufacture of foods and beverages’;

- Class 30: ‘Flavourings and additives other than essential oils for food, beverage and oral care products’.

4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2016/207 of 2 November 2016.

5 On 13 December 2016, the other party to the proceedings, Döhler GmbH, 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 all the goods referred to in paragraph 3 above.

6 The opposition was based, first, on the earlier EU word mark MultiSense, which was filed on 17 November 2015 and registered on 28 March 2016 under the number 14803712 in respect of goods in Classes 1, 3 and 30 corresponding, for each of those classes, to the following description:

- Class 1: ‘Artificial sweeteners; emulsifiers for use in the food and beverage industry’;

- Class 3: ‘Essential oils, food and beverage flavorings prepared from essential oils’;

- Class 30: ‘Flavorings and extracts used as flavoring for food and beverages, other than essential oils; natural sweeteners; fruit based sweeteners; sweeteners based on stevia; plant extracts used as flavoring; processed cereals and malt extracts’.

7 The opposition was based, secondly, on the earlier EU word mark Tastecraft, which was filed on 27 April 2016 and registered on 15 September 2016 under the number 15394703 in respect of goods and services in Classes 1 to 3, 5, 7, 29, 30, 32, 33, 35 and 42 corresponding, for each of those classes to the following description:

- Class 1: ‘Artificial sweeteners; chemical substances for preserving foodstuffs’;

- Class 2: ‘Food colorants’;

- Class 3: ‘Essential oils’;

- Class 5: ‘Infant formula; mixtures and preparations and dietetic substances adapted for medical use’;

- Class 7: ‘Machines for manufacture, filling and packaging for the food, beverage and chemical industries’;

- Class 29: ‘Jams, jellies; eggs, milk and milk products and mixtures and preparations for making the aforesaid products; fruit preparations, included in class 29; mixtures and preparations and dietetic substances not adapted for medical use with a base of meat, fish, poultry, game, fruit, eggs, milk; meat, fish, poultry and game extracts’;

- Class 30: ‘Coffee, tea, cocoa; coffee, tea, cocoa or chocolate-based beverages and preparations for making the aforesaid beverages; sugar, fruit sugar, natural sweeteners, flour and preparations made from cereals; malt extracts, bread, pastry and confectionery; ices and mixtures and preparations for making the aforesaid products; honey, treacle; yeast, baking powder, puddings in powder form and blancmanges; flavorings for food; meat, fish, poultry and game flavourings and other spicy flavourings, other than essential oils’;

- Class 32: ‘Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; preparations, syrups and other preparations for making beverages; beers and mixed drinks containing beer’;

- Class 33: ‘Alcoholic bases, syrups and preparations for making beverages, included in class 33; alcoholic beverages (except beers)’;

- Class 35: ‘Advertising; business management; business administration; office functions; marketing studies; business efficiency expert services; providing of economic expertise; commercial information agencies’;

- Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services’.

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 25 April 2018, the Opposition Division examined the opposition with regard only to the earlier mark MultiSense and upheld the opposition. The Opposition Division found that the goods were, in part, identical and, in part, similar to a high degree and that, in the countries in which English was not understood, such as Spain or Poland, the signs at issue were meaningless. Furthermore, in the light of the existence of an average degree of visual and phonetic similarity, the Opposition Division concluded that there was a likelihood of confusion.

10 On 22 June 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

11 By decision of 27 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.

12 The Board of Appeal, first of all, stated, in paragraph 17 of the contested decision, that, in order to carry out the assessment of the likelihood of confusion, the relevant territory and the relevant public had to be established. As regards, the relevant territory, the Board of Appeal found, in paragraph 19 of the contested decision, that the Opposition Division could, in the light of the unitary character of the EU trade mark, limit its assessment to the non-English-speaking part of the public concerned, namely to the Spanish- and Polish-speaking parts of the public. As regards that public, the Board of Appeal concurred, in paragraph 22 of the contested decision, with the Opposition Division’s findings that the goods in question were specialised goods directed at the general public (for example additives and flavourings in Classes 29 and 30) and a specialist public with regard to all the goods in question, especially given that the specialised goods could be used in the manufacturing process. The Board of Appeal therefore found that the level of attention, which had not been disputed by the parties, would vary from average to high.

13 As regards, the comparison of the goods at issue, the Board of Appeal, in paragraph 23 of the contested decision, upheld the Opposition Division’s finding, which had not been disputed by the applicant, that all of the applicant’s contested goods were identical or similar to a high degree to the goods of the other party to the proceedings.

14 As regards the comparison of the signs at issue, the Board of Appeal, after examining the distinctive and dominant elements of those signs, found, in paragraph 30 of the contested decision, that the element ‘multi’ in the first earlier mark would, since it was a common term, be understood by the relevant public and it assumed that that public would perceive that earlier mark as having two different components. As regards the mark applied for, the Board of Appeal found, in paragraph 31 of the contested decision, that it could be assumed that the relevant public would perceive it as having two different components.

15 As regards the analysis of the inherent distinctiveness of the word elements, the Board of Appeal, having first referred to the judgment of 16 January 2014, Aloe Vera of America v OHIM - Detimos (FOREVER) (T-528/11, EU:T:2014:10), found, in paragraph 36 of the contested decision, that it could not be assumed that English was understood by all the average consumers in the European Union and, particularly with respect to Spanish or Polish consumers, that it could not be presumed that, in general, English words had a meaning for them, unless equivalent words existed in Spanish and Polish.

16 However, in paragraph 38 of the contested decision, the Board of Appeal observed that the term ‘multi’ would be understood both by Spanish and by Polish consumers, with the result that that element lacked distinctiveness (paragraph 41 of that decision).

17 Furthermore, the Board of Appeal found, in paragraph 42 of...

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