Foodterapia v EUIPO - Sperlari (DIETOX) (EU trade mark - Judgment) [2018] EUECJ T-486/17 (14 November 2018)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

(EU trade mark — Opposition proceedings — Application for EU figurative mark DIETOX — Earlier EU figurative mark Dietor — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Foodterapia, SL, established in Barcelona (Spain), represented by J.C. Erdozain López, J. Galán López and H. Tellez Robledo, lawyers,

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

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

Sperlari Srl, formerly Cloetta Italia Srl, established in Cremona (Italy), represented by P. Pozzi and G. Ghisletti, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 May 2017 (Case R 1611/2016‑5), concerning opposition proceedings between Cloetta Italia and Foodterapia,

composed of V. Tomljenović, President, E. Bieliūnas and A. Kornezov (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 11 October 2017,

having regard to the response of the intervener lodged at the Court Registry on 11 October 2017,

1 On 10 July 2014, the applicant, Foodterapia, SL, 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)).

3 The goods and services for which registration was sought are in Classes 3, 5, 29, 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, so far as concerns the goods at issue in the present case, to the following description:

– Class 5: ‘Dietetic infusions for medical use; Medicinal infusions; Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Foodstuffs and dietetic substances for medical or veterinary purposes; Food for babies; Dietary supplements for humans and animals’;

– Class 29: ‘Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products; Edible oils and fats’;

– Class 30: ‘Infusions, not medicinal; Infusions, not medicinal; Aromatic preparations for making non-medicated infusions; Infusions, not medicinal; Tea for infusions; Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices and ice creams; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice’.

4 The trade mark application was published in Community Trade Marks Bulletin No 158/2014 of 26 August 2014.

5 On 25 November 2014, Cloetta Italia Srl 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 in Classes 5, 29 and 30 listed in paragraph 3 above.

6 The opposition was based on the following earlier EU figurative mark registered on 3 December 2012 under the number 10160646:

7 The goods in respect of which the earlier mark was registered are also in Classes 5, 29 and 30.

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).

10 On 5 September 2016, Cloetta Italia 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.

11 By decision of 12 May 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division and upheld the opposition.

– consequently, reject the mark applied for, in so far as it concerns the goods against which the opposition is directed;

– order the applicant to pay the costs, including the costs incurred during the opposition and appeal proceedings before EUIPO.

15 By letter lodged at the Court Registry on 29 November 2017, the intervener requested that a hearing be held. By letter lodged at the Court Registry on 1 December 2017, the applicant made a similar request.

16 In support of the action, the applicant relies on a single plea in law, alleging, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant submits that the cumulative conditions laid down in Article 8(1)(b) of Regulation No 207/2009 for the purpose of establishing a likelihood of confusion have not been satisfied in the present case.

17 EUIPO, supported by the intervener, disputes that assertion and contends that the single plea in law should be rejected.

18 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the two trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

19 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

20 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

21 Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T–82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

22 It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was right to find that there was, in the present case, a likelihood of confusion between the earlier mark and the mark applied for.

23 The Board of Appeal took the view that all the goods in question were intended for average consumers, while ‘sanitary preparations for medical purposes’ were intended for both professionals and the general public. It noted, in this regard, that when the relevant public is composed of professionals and the general public, the section of the public which has the lowest level of attention must be taken into consideration for the purposes of assessing the likelihood of confusion (paragraph 16 of the contested decision). The Board of Appeal stated that the level of attention of that section of the public would also depend on the goods in question. In relation to the goods in Classes 29 and 30, it would vary from average to slightly below average. Thus, although everyday products, consumers would tend to pay a reasonable level of attention in relation to food products, with the exception of some products which may be purchased spontaneously, such as snacks (paragraph 17 of the contested decision). By contrast, the Board of Appeal noted that the level of attention will be higher in relation to goods in Class 5, since these have an impact on the consumer’s health (paragraph 18 of the contested decision).

24 The applicant makes two criticisms of the definition of the relevant public. In the first place, it takes the view that the Board of Appeal based its assessment of the likelihood of confusion ‘primarily, although not necessarily’ (application, paragraph 33) on the specialisation of the public for whom the goods are intended. The Board of Appeal, it submits, therefore held in the contested decision, wrongly and contrary to the case-law, that the public to be taken into account is that which has a lower level of attention. In the second place, it claims that the fact that the relevant public is composed of the general public does not necessarily mean that its level of attention is not high.

26 First, the Board of Appeal was fully entitled to find that the relevant public consists of the general public with regard to all of the goods in question, and of professionals with regard to certain goods. Indeed, goods such as pharmaceutical and veterinary preparations, sanitary preparations for medical purposes and dietetic food and substances adapted for medical or veterinary use, in Class 5, can be purchased by the general public as well as by professionals in those sectors. It is also in accordance with settled case-law, which it is necessary to restate, that the Board of Appeal noted that, in such cases, it is the section of the public with the lowest level of attention that has to be taken into account for the purposes of assessing the likelihood of confusion (judgments of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO Group), T‑221/09, not published, EU:T:2011:393, paragraph 21; of 29 April 2015, Chair Entertainment Group v OHIM — Libelle (SHADOW COMPLEX), T‑717/13, not published, EU:T:2015:242, paragraph 27; and of 16 March 2017, Sociedad agraria de transformación No 9982 Montecitrus v EUIPO — Spanish Oranges (MOUNTAIN CITRUS SPAIN), T‑495/15, not published, EU:T:2017:173, paragraph 26).

27 Second, as EUIPO pertinently notes in its response, the Board of Appeal did not state that the general public could not display a higher degree of attention, since it specifically differentiated its assessment on the basis of the goods that would be encountered by that public, noting, in paragraph 18 of the contested decision, that, since the goods in Class 5 have an impact on the health of the consumer, the consumer would have a higher level of attention.

28 It should be noted, in this regard, that the Board of Appeal was right to take into consideration the fact that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited) and that it considered that level to be lower than average in the case of, for example, goods that might be bought spontaneously, such as snacks, reasonable — that is, average — in the case of most of the goods in question, the average consumer being deemed to be reasonably well informed and reasonably observant and circumspect, and higher in the case of the consumer health goods in Class 5.

29 The applicant is wrong to invoke the case-law arising from the judgment of 12 July 2012, Smart Technologies v OHIM (C‑311/11 P, EU:C:2012:460), according to which the distinctive character of the signs at issue cannot depend on the degree of specialisation of the relevant public. The Board of Appeal simply noted that it was the section of the public with the lowest level of attention that had to be taken into consideration for the purposes of assessing the likelihood of confusion and it in no way based the degree of distinctiveness of the signs at issue on the specialisation of that section of the public, but merely on the goods in question (paragraphs 23 and 24 of the contested decision).

30 The applicant’s arguments concerning the definition of the relevant public and the level of attention shown by that public must therefore be rejected.

31 In paragraph 15 of the contested decision, the Board of Appeal noted that the goods covered by the mark applied for are identical to those covered by the earlier mark.

32 The applicant does not contest that the goods in question are identical. However, in its summary of the contested decision, it suggests that the Board of Appeal stated that the goods ‘are quite similar’ (end of the last indent of paragraph 10 of the application). However, it is clear not only from paragraph 15 of the contested decision, as mentioned above, but also from paragraph 27 of that decision that the Board of Appeal qualified the goods as identical, without any restriction.

33 As the parties do not dispute that the goods in question are identical, it is thus necessary to consider the first of the cumulative conditions laid down in Article 8(1)(b) of Regulation No 207/2009 for the purpose of establishing whether there is indeed a likelihood of confusion.

34 The applicant challenges the assessment made by the Board of Appeal of the visual, phonetic and conceptual aspects of the comparison of the signs at issue and, accordingly, the assessment by the Board of the overall impression given by those signs, which were classified — wrongly, in the applicant’s opinion — as similar or very similar, according to the circumstances.

36 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgments of 21 January 2016, Rod Leichtmetallräder v OHIM — Rodi TR (ROD), T‑75/15, not published, EU:T:2016:26, paragraph 25; of 28 March 2017, Regent University v EUIPO — Regent’s College (REGENT UNIVERSITY), T‑538/15, not published, EU:T:2017:226, paragraph 27; and of 8 November 2017, Steiniger v EUIPO — ista Deutschland (IST), T‑80/17, not published, EU:T:2017:784, paragraph 43).

37 Furthermore, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Account must also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must rely on his imperfect recollection of them (see judgments of 28 March 2017, REGENT UNIVERSITY, T‑538/15, not published, EU:T:2017:226, paragraph 28, and of 8 November 2017, IST, T‑80/17, not published, EU:T:2017:784, paragraph 44).

38 In the present case, both the earlier mark and the mark applied for are formed of signs which include a figurative element and a word element.

39 It must be noted that the Board of Appeal did not take the view, before proceeding to the visual, phonetic and conceptual comparison of the signs at issue, that they included a dominant element. It was only during the global assessment of the likelihood of confusion that the Board of Appeal noted, in paragraph 27 of the contested decision, that the word element of a sign generally has a stronger impact on the consumer than the figurative element.

40 The applicant takes issue with that analysis. In its view, it is necessary to determine which of the graphic and word elements comprising the mark applied for and the earlier mark are distinctive and dominant and which are devoid of distinctiveness since, according to the case-law, an element of a composite mark which is descriptive cannot, in principle, be considered to be the dominant element. It submits, in this regard, that, while the earlier mark is ‘basically a word mark’, the dominant element of the mark applied for is the graphic element.

41 The applicant claims that the Board of Appeal’s reasoning is contradictory, in so far as it considers the word element ‘dietor’ to have a normal degree of distinctiveness in respect of sanitary preparations for medical purposes, meat, fish, poultry and game, eggs, flour, ices, sugar, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, and ice, while, with regard to all of the goods considered to be dietetic or used in a well-balanced diet, it regards it as having weak distinctive character. Consequently, the applicant considers that the Board of Appeal based its analysis on the assumption that the distinctive character depends on the type of goods covered by the earlier mark. Yet, the Board of Appeal found that that assumption was not decisive when assessing the likelihood of confusion and applied that same ground for rejecting the mark applied for in respect of all the goods in question.

42 According to the applicant, by considering the term ‘diet’ to be the principal element of the earlier mark, notwithstanding its weak distinctive character, the Board of Appeal failed to have regard to the case-law and wrongly concluded that there was a likelihood of confusion between the mark applied for and the earlier mark. The applicant claims that many EU marks include the term ‘diet’ in respect of goods in Classes 5, 29 and 30, which makes the term weaker in comparison with the other elements of the signs at issue.

43 It is therefore necessary to determine whether the signs at issue have a distinctive and dominant element. The assessment of the similarity between two marks must not be limited to taking just one component of a composite trade mark and comparing it with another mark. Rather, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 8 March 2018, Claro Sol Cleaning v EUIPO — Solemo (Claro Sol Facility Services desde 1972), T‑159/17, not published, EU:T:2018:123, paragraph 33; also see, to that effect, judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43, and of 13 May 2015, easyGroup IP Licensing v OHIM — TUI (easyAir-tours), T‑608/13, not published, EU:T:2015:282, paragraph 33).

44 As regards, in the first place, the mark applied for, it must be noted that this composite mark is composed of (i) a word element, namely the word ‘dietox’, written in white capital letters at the bottom of the sign, with a stylised letter ‘o’, and (ii) a figurative element, consisting of a grey background and a representation, taking up the greater part of the sign, of that same stylised letter ‘o’, reproducing almost identically the stylised letter ‘o’ of the word element. That letter ‘o’ is not closed at the top, and the space left empty as a result is filled by a vertical cylinder. The letter is divided into two equal parts by a snaking line, thinner than the outline of the letter, which descends from the left towards the right. The only difference between the motif above the word element and the stylised letter ‘o’ included in the word element is the presence, in the lower part of the latter, of a dot, which is not reproduced in the motif.

45 According to the case-law, in assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (see judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 36 and the case-law cited).

46 In the present case, it must be noted, first, that both the word element and the figurative element are very visible, the former being represented in white capital letters standing out clearly in the sign, and the latter appearing above the word element and occupying the greater part of that sign.

47 Second, as regards the position of each of those elements, although it is true that the figurative element occupies a larger portion of the sign than does that word element, the latter cannot go unnoticed by the consumer given the size of the letters used.

48 Third, it is clear that the word element echoes the figurative element of the mark applied for, as the motif reproduces or announces the letter ‘o’ contained in the word element and the word element is itself integrated in the figurative element since the grey background of the latter makes the white capital letters forming the word ‘dietox’ stand out. As the Board of Appeal noted in paragraph 27 of the contested decision, the figurative element of the sign making up the mark applied for does not have any particular meaning which could divert the consumer’s attention away from the word element and make the figurative element more memorable.

49 The Board of Appeal therefore acted correctly in not discerning any dominant element in the mark applied for and the applicant is wrong to claim that that mark consists of a sign with a dominant graphic element.

50 Since neither the word element nor the figurative element in the mark applied for can be regarded as dominant or negligible, it is thus the overall impression created by that mark which must be taken into account in the comparison with the earlier mark (see, to that effect, judgments of 13 May 2015, easyAir-tours, T‑608/13, not published, EU:T:2015:282, paragraph 44, and of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 43).

51 In the second place, with regard to the earlier mark, it must be noted that the word and figurative elements are equally combined in it. The mark depicts the word ‘dietor’, written in black stylised characters slanting upwards from left to right. The dot of the letter ‘i’ occupies a clearly visible position and appears to represent a target, with one circle filled in in black placed in the centre of a second, larger circle and traversed by a straight line. A segment, perpendicular to that straight line, just touches the edge of the second circle, coming from the letter ‘i’ and ending in a dot itself.

52 Although the applicant claims in its written submissions (see paragraph 44 of the application) and reaffirmed during the hearing that the earlier mark is ‘basically a word mark’, that assertion is not strictly correct, since it cannot be denied that the earlier mark is a composite mark composed of a word element and a figurative element. It is therefore not a word mark. However, in so far as the actual purpose of that assertion is to secure recognition that the word element is the dominant element of the earlier mark, it must be regarded as well founded. The respective positions occupied by the figurative element and by the word element make the former appear to be simple decoration of the latter, even though, as noted in paragraph 51 above, the dot of the letter ‘i’ is clearly visible. Furthermore, the lack of colour and the fact that, figuratively, only part of one letter of the word ‘dietor’ is highlighted (the dot of the letter ‘i’) mean that the graphic aspects, although easily perceptible, are diminished in comparison with the word element of the earlier mark, with the result that that word element may be regarded as being the dominant element.

53 By contrast, the applicant cannot derive any argument from the case-law resulting from the judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN) (T‑6/01, EU:T:2002:261, paragraph 41), according to which an element of a composite mark that is descriptive of the goods covered by that mark cannot, in principle, be considered to be the dominant element of that mark. That case-law cannot be applied in the present case since, while the figurative element in the case giving rise to that judgment was descriptive, the present case deals not with descriptive elements but with allusive elements, that is to say, elements that are at least weakly distinctive.

54 The Board of appeal noted, with regard to the distinctive character of the sign forming the earlier mark, that that sign alludes to a diet and, as a result, it had to be considered to have a weak distinctive character in relation to all of the goods which could be deemed dietetic or used in a well-balanced diet, but that it had a normal distinctive character in relation to numerous goods, listed in paragraph 24 of the contested decision, which, given their nature, the relevant public was not used to seeing marketed in a version alluding to a diet.

55 During the hearing, EUIPO noted that it was necessary to moderate the assessment made by the Board of Appeal in paragraph 24 of the contested decision, clarifying that, in its view, the earlier mark was weakly distinctive in relation to all of the goods covered by it.

56 However, the question whether the earlier mark has a weakly distinctive or a normally distinctive character in relation to the various goods which it covers in no way affects the outcome of the present dispute. Even if the sign forming the earlier mark is considered to be weakly distinctive in relation to all the goods in question, that sign cannot, under any circumstances, be considered to be descriptive or devoid of distinctive character, as the applicant also agreed in response to a question put by the Court during the hearing. The word ‘dietor’ has no known meaning as such, as it is an invented word. In so far as it alludes to a ‘diet’, it must be considered to be at the very least weakly distinctive in relation to goods that could be associated with a balanced diet.

57 However, the mere fact that one element of a composite sign is weakly distinctive does not mean that that element must be considered, because of that mere fact, to be negligible (see, to that effect, judgment of 7 November 2017, Mundipharma v EUIPO — Multipharma (MULTIPHARMA), T‑144/16, not published, EU:T:2017:783, paragraph 42), in so far as that element may be taken into consideration by the relevant public by reason in particular of its position in the sign or its size or length (see, to that effect, judgment of 26 November 2015, Bionecs v OHIM — Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 47). It also cannot be inferred from the presence of a weakly distinctive element in a composite sign that the other elements of that sign are to be regarded as dominant. It follows from the case-law that, even when one of the elements of the signs at issue must be regarded as having a weak distinctive character, it is possible that none of the other elements making up the same signs may be considered to have a greater distinctive character or to be dominant (see, to that effect, judgment of 28 January 2015, BSH v OHIM — Arçelik (AquaPerfect), T‑123/14, not published, EU:T:2015:52, paragraph 42).

58 Lastly, the applicant, in paragraphs 26 and 27 of the application, relies on the existence of various national marks containing the words ‘dieto’ or ‘diet’, as set out in annexes 5 to 8 to the application. EUIPO submits that those annexes are inadmissible on the ground that they were not submitted before the Board of Appeal.

59 In that regard, it must be borne in mind that, according to settled case-law, the EU trade mark regime is an autonomous system with its own set of objectives and rules; it applies independently of any national system. Registrations already made in Member States are only one factor which may be taken into account in connection with the registration of an EU trade mark and the mark applied for must be assessed on the basis of the relevant EU rules. It follows that EUIPO is under no obligation to follow the requirements and assessment of the authority with jurisdiction over trade marks in the country of origin or to register the mark applied for on the basis of the registration decisions taken by national patent and trade mark offices (judgments of 17 December 2010, Chocoladefabriken Lindt & Sprüngli v OHIM (Shape of a chocolate rabbit), T‑395/08, not published, EU:T:2010:550, paragraph 44, and of 20 July 2017, Windfinder R&L v EUIPO (Windfinder), T‑395/16, not published, EU:T:2017:530, paragraph 70).

60 In any case, and even if those annexes were considered admissible, the reference made by the applicant to certain national marks containing the word element ‘dieto’ and to a list of national marks featuring the word element ‘diet’ cannot call into question the conclusion reached in paragraph 56 above, regarding the weakly distinctive character of the sign containing the word element ‘dietor’ in relation to the goods in question. The applicant’s argument must therefore be rejected.

61 To conclude, the Board of Appeal was right not to identify a dominant element in the mark applied for before proceeding to the comparison of the signs at issue on the visual, phonetic and conceptual levels, but it should have noted that the earlier mark had a dominant element, namely the word element, which will have to be taken into account when comparing the signs at issue in order to establish whether, in the present case, that omission vitiated the contested decision.

62 The Board of Appeal noted that the signs at issue are visually similar in so far as they share five out of six letters of the word elements in the same order, namely ‘d’, ‘i’, ‘e’, ‘t’ and ‘o’, but differ in the last letter of their word elements (‘r’ in the earlier mark and ‘x’ in the mark applied for), in their stylisation and with respect to the figurative element in the mark applied for (paragraph 20 of the contested decision).

63 The applicant claims that the visual impressions produced by the signs at issue are ‘completely different’. It submits that the signs at issue are similar only with regard to the common presence of the sequence of letters ‘dieto’. It takes the view that, since a significant section of the relevant public will perceive the sequence of letters ‘diet’ — the principal part of the word element of the signs at issue — as being descriptive of the goods in question, and since that sequence of letters is present in other marks, the relevant public will not confuse the mark applied for with the earlier mark, despite that public not being in a position to compare the marks in practice. According to the applicant, that sequence of letters is common in the domain covered by the goods in question. That descriptive character is all the more significant given that the word ‘diet’ is located at the beginning of the respective word elements of the signs at issue and that, according to the case-law, the consumer generally pays greater attention to the beginning of a mark containing a word element. The applicant adds that the clear graphical differences between the signs at issue may be significant when assessing the likelihood of confusion, as the Opposition Division noted in the present case. The signs at issue, it submits, differ in their general outlines and by reason of their final letters — ‘x’ in respect of the mark applied for and ‘r’ in the earlier mark.

64 The applicant claims that the Board of Appeal concluded that the mark applied for and the earlier mark are similar overall, even though it acknowledged in the contested decision that the distinctive character of the sequence of letters ‘diet’ is weak. According to the Board of Appeal, the word element of a sign usually has a stronger impact on the consumer than the figurative component. The applicant disputes that finding, which it links to the ‘overall impression theory’, on the ground that the dominant and other elements making up the signs at issue are so different that there would be no likelihood of confusion.

66 It must be held that the Board of Appeal’s assessment is free from error. It cannot be denied that the common presence of the first five letters of the word elements that make up the signs at issue, namely the sequence of letters ‘dieto’, positioned in the same order, constitutes a visual similarity. This necessarily affects the visual impression produced. In that regard, it must be noted that the fact that the stem ‘diet’ confers on the respective word elements of the signs at issue a weakly distinctive character does not mean that that element should be ignored in the analysis of the visual similarity of those signs (see, to that effect, judgment of 7 November 2017, MULTIPHARMA, T‑144/16, not published, EU:T:2017:783, paragraph 42).

67 By contrast, the signs at issue differ clearly in their figurative elements, their design and the last letter of their word elements (‘dietor’ for the earlier mark and ‘dietox’ for the mark applied for).

68 The fact that the word element of the earlier mark is its dominant element reinforces both the similarities and the differences between the signs at issue. On the one hand, since that word element is very broadly the same in those signs (five letters out of six, placed in the same order), that similarity is even more apparent because the word element dominates the earlier mark. On the other hand, since the figurative element is quite unobtrusive in the earlier mark, that element appears even more evident in the mark applied for.

69 However, as the figurative element of the mark applied for reproduces or announces the stylised letter of its word element and also makes up the grey background on which the word element is written, the relevant public will remain focused on that word element. In addition, reading that word element reveals its similarity with the word element of the earlier mark.

70 As a result, the differences found between the signs at issue are not sufficient to exclude the existence of a certain visual similarity, owing to the near identity of their respective word elements, which is the conclusion reached by the Board of Appeal.

71 According to the Board of Appeal, phonetically, the signs at issue will be pronounced in two syllables, namely ‘die’ and ‘tor’ and ‘die’ and ‘tox’. Their first syllables are identical and the second syllables are very similar since they are based on the same vowel ‘o’. The signs at issue are therefore phonetically highly similar.

72 The applicant reiterates that account must be taken of the fact that the intrinsic distinctive character of the word ‘diet’ is very weak. Even if it were conceded that that word is descriptive of the goods in question, in particular those in Class 5, it cannot therefore serve as the basis of an assessment of the likelihood of confusion. Moreover, the sounds of the letters ‘x’ and ‘r’ differ. The Court has already found, with regard to the letters ‘l’ and ‘p’, that they allowed the relevant public to notice the differences between the signs at issue more easily and that this had to be taken into account. The same is true in the present case. In particular, the Court has also held that mere phonetic similarity plays only a minor role.

73 EUIPO and the intervener contend that the Court should reject the applicant’s arguments.

74 It must be noted from the outset that it is not certain, as the parties stressed during the hearing, that the relevant public will always pronounce the respective word elements of the signs at issue in two syllables. For example, English-speaking consumers will in all likelihood divide the words ‘dietor’ and ‘dietox’ into three syllables. However, this finding does not invalidate the Board of Appeal’s analysis as regards the identity of the pronunciation of the first letters of those signs, whether that involves one or two syllables depending on the language commonly used by the relevant public. No matter how they are pronounced, the letters common to the word element in each of the signs at issue, ‘d’, ‘i’, ‘e’, ‘t’ and ‘o’, will always be pronounced in the same way. The Board of Appeal was also right to find that the last syllables of the words, however analysed, are almost identical and are based on the same vowel ‘o’. As the intervener has correctly noted, the signs at issue have the same rhythm, sound and intonation because of their identical structure, differing only in the last consonant of the respective word elements. It is necessary, therefore, to conclude, as the Board of Appeal did, that the signs at issue are phonetically very similar.

75 The applicant’s arguments that the letters ‘x’ and ‘r’ differ as to their sound and that the Court has already noted, in a comparable case concerning the letters ‘l’ and ‘p’, that those letters allow the relevant public to note the differences between the signs at issue more easily, are insufficient, in the present case, to counter that finding of very strong phonetic similarity. The applicant relies on the judgment of 25 January 2017, Anton Riemerschmid Weinbrennerei und Likörfabrik v EUIPO — Viña y Bodega Botalcura (LITU) (T‑187/16, not published, EU:T:2017:30), which was delivered in a case in which the signs at issue were very short (four letters) and the letter that differed in each sign was the first. The Court therefore applied, in paragraph 33, the case-law according to which the first part of a word mark is more likely to catch the consumer’s attention than are the subsequent components (judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 13 May 2015, Harper Hygienics v OHIM — Clinique Laboratories (CLEANIC natural beauty), T‑363/12, not published, EU:T:2015:278, paragraph 69), holding that this was particularly likely in the case in point given that the mark was short.

76 In the present case, however, the letter that differs is the last letter of the respective word elements of the signs at issue and those word elements are made up of six letters. Accordingly, the applicant is not justified in relying on that case-law.

77 Furthermore, the applicant is not justified in claiming that the phonetic similarity between the signs at issue plays only a minor role in the comparison of those signs, since it is not contested in the present case that a portion of the goods in question may be purchased by pronouncing the earlier mark and the mark applied for.

78 Lastly, the applicant’s argument based on the weakly distinctive character of the word ‘diet’ must be rejected for the reasons already set out in paragraph 66 above.

79 According to the Board of Appeal, both of the signs at issue allude to the concept of ‘diet’. They are therefore conceptually similar to that extent (paragraph 22 of the contested decision).

80 According to the applicant, conceptually, in so far as they both contain the stem ‘diet’, the word elements of the signs at issue provide information on some aspects of the goods in question. As a result, for almost all of the goods in question, the earlier mark is weakly distinctive, whereas the same is not true of the mark applied for, the most distinctive element of which is the figurative element, which is arbitrary in respect of those goods.

81 EUIPO, supported by the intervener, considers that those arguments must fail.

82 First, it must be held that the words ‘dietor’ and ‘dietox’ have no known meaning as such.

83 Second, nonetheless, as EUIPO correctly notes, the stem ‘diet’, which is common to both words, gives them a clear and analogous semantic content which alludes to the concept of diet or dietetic foodstuffs, as the Board of Appeal rightly stated. The words ‘dietor’ and ‘dietox’, whether they are written or pronounced, thus allude to the word ‘diet’, in some way, that is to say, a particular diet, whether medically prescribed or followed as part of a healthy lifestyle. There is therefore a conceptual similarity between the signs at issue in that regard.

84 Third, it should be noted that the figurative elements of the signs at issue have no definite meaning. To start with, the figurative element of the earlier mark, namely the stylised dot of the letter ‘i’, may bring to mind a target, as has already been noted in paragraph 51 above, and therefore the aim of a diet. Next, as the Board of Appeal correctly noted, it is unlikely that the relevant public would associate the figurative element of the sign forming the mark applied for as the symbol for yin and yang, owing to the lack of contrasting colours and of dots. Furthermore, the Board of Appeal noted, without being contradicted in that regard, that that figurative element will be perceived, at most, as a stylised letter ‘o’, given that it has the same characteristics as the letter ‘o’ of the word element ‘dietox’. Lastly, the applicant itself acknowledges that the same figurative element could be understood as something else, for example a representation of a switch. It is therefore doubtful that the relevant public would recognise any particular meaning in the graphic element of the mark applied for.

85 The figurative elements of the signs at issue can therefore be considered to be conceptually neutral, with the result that the Board of Appeal was justified in finding, in paragraph 22 of the contested decision, that the signs are conceptually similar as a result of the presence, in both of them, of word elements alluding to a diet.

86 In the light of all the foregoing, it is necessary to uphold the Board of Appeal’s conclusion in paragraph 27 of the contested decision that the signs at issue are similar overall.

87 In the global assessment of the likelihood of confusion, the Board of Appeal noted, in particular, that the goods in question are identical and, as a result, a weak degree of similarity between the marks is sufficient to establish a likelihood of confusion. The Board of Appeal applied, in that regard, the principle of interdependence, as it results from the case-law referred to in paragraph 19 above.

88 The applicant challenges, in particular, the Board of Appeal’s application of the principle of interdependence in a case such as the present one. It submits that that principle cannot be applied as such in order automatically to offset the lack of distinctiveness of the signs at issue with the similarity between the goods at issue.

90 In the circumstances of the present case, it is important to bear in mind the settled case-law according to which a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 28 March 2017, REGENT UNIVERSITY, T‑538/15, not published, EU:T:2017:226, paragraph 71, and of 8 November 2017, IST, T‑80/17, not published, EU:T:2017:784, paragraph 64).

91 In that regard, it must be stated that, first, the goods covered by the mark applied for and those covered by the earlier mark are identical. Second, those marks have some visual and conceptual similarity and a high degree of phonetic similarity; according to the case-law referred to in paragraph 36 above, that similarity presupposes that the signs at issue are at least partially identical as regards one or more relevant aspects, that is to say, the visual, phonetic and conceptual aspects. As a result, in application of the principle of interdependence referred to in paragraph 90 above, it must be concluded, as did the Board of Appeal, that there is a likelihood of confusion on the part of the relevant public.

92 Although, in paragraph 30 of the application, the applicant challenges the application, in the present case, of the principle of interdependence between the similarity of the signs and the similarity of the goods or services covered, it must be emphasised that its argument is based on a misreading of the case-law. The applicant insists, in essence, that that principle is not applicable when the signs at issue lack distinctive character or are only weakly distinctive. However, it must be noted that both the Court of Justice and the General Court have already had occasion to hold that the low distinctive character of the earlier mark cannot, on its own, exclude a likelihood of confusion. Indeed, giving predominant relevance to the weak distinctiveness of the earlier mark would have the effect of neutralising the factor of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that, where the earlier mark is of only low distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the signs at issue. Such a result would not, however, be consistent with the very nature of the global assessment that the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 207/2009 (judgment of 25 April 2018, Perfumes y Aromas Artesanales v EUIPO — Aromas Selective (Aa AROMAS artesanales), T‑426/16, not published, EU:T:2018:223, paragraph 108; also see, to that effect, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 41 and the case-law cited).

93 Accordingly, the Board of Appeal acted correctly in finding, in paragraph 28 of the contested decision, that, even if the earlier mark’s distinctive character is low, the identity between the goods and the similarities between the signs are sufficient to support the conclusion that there is a likelihood of confusion on the part of the relevant public.

94 Lastly, the applicant cannot succeed in its argument to the effect that, because numerous EU marks contain the word ‘diet’, the intervener does not have a monopoly over that word. Indeed, the individual assessment of each sign, as required by the settled case-law of the Court of Justice, must be made in the light of the particular circumstances of the case and cannot therefore be regarded as being subject to general presumptions (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 36 and the case-law cited). In the present case, the fact that the intervener does not have a monopoly over the word ‘diet’, to which the earlier word alludes, cannot, in principle, preclude a finding, in the light of all the other relevant factors, that the allusion to that word in the respective word elements of the signs at issue contributes to a likelihood of confusion. By contrast, excluding a likelihood of confusion on the sole ground that that element is weakly distinctive, as requested by the applicant, would mean that the proprietor of the earlier mark would be improperly denied the rights attached to its registration by reason of an incorrect reliance on general presumptions (see, to that effect, judgments of 28 April 2016, Gervais Danone v EUIPO — Mahou (B’lue), T‑803/14, not published, EU:T:2016:251, paragraph 36, and of 25 April 2018, Aa AROMAS artesanales, T‑426/16, not published, EU:T:2018:223, paragraph 112).

95 Moreover, the applicant errs in invoking an infringement of the EUIPO Guidelines.

96 First, it is important to bear in mind that the EUIPO Guidelines are merely a set of consolidated rules setting out the line of conduct which EUIPO proposes to adopt, which means that they constitute a self-imposed restriction on EUIPO, in that it must comply with the rules of conduct which it has itself laid down. That self-imposed restriction, however, necessarily presupposes that those guidelines comply with the applicable legal provisions (see judgment of 21 May 2014, Eni v OHIM — Emi (IP) (ENI), T‑599/11, not published, EU:T:2014:269, paragraph 43 and the case-law cited). Consequently, those guidelines cannot in any event go against the interpretation which the Courts of the European Union have given to a legal rule, in the present case Article 8(1)(b) of Regulation No 207/2009.

97 Second, in any case, the Board of Appeal found there to be an overall similarity between the signs at issue given all the circumstances of the case, in accordance with the EUIPO Guidelines.

98 Accordingly, it follows from all of the foregoing that the sole plea in law must be rejected and, as a result, the action must be dismissed in its entirety.

99 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

100 In the present case, EUIPO and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings. Since the applicant has been unsuccessful, the forms of order sought by EUIPO and the intervener must be granted and the applicant must be ordered to pay the costs incurred by EUIPO and the intervener in the proceedings before the Court.

101 The intervener has also claimed that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Consequently, the intervener’s request that the applicant be ordered to pay the costs of the administrative proceedings before EUIPO can be granted only in regard to the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see, to that effect, judgment of 25 April 2018, Aa AROMAS artesanales, T‑426/16, not published, EU:T:2018:223, paragraph 125).

2. Orders Foodterapia, SL, to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Sperlari Srl, including the costs necessarily incurred by the latter’s legal predecessor before the Board of Appeal of EUIPO.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Foodterapia v EUIPO - Sperlari (DIETOX) (EU trade mark - Judgment) [2018] EUECJ T-486/17 (14 November 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T48617.html Cite as: [2018] EUECJ T-486/17, EU:T:2018:778, ECLI:EU:T:2018:778

Court of Justice of the European Communities (including Court of First Instance Decisions)