Amiguitos pets & life v EUIPO - Societe des produits Nestle (THE ONLY ONE by alphaspirit wild and perfect) (EU trade mark - Judgment) [2019] EUECJ T-40/19 (19 December 2019)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark THE ONLY ONE by alphaspirit wild and perfect — Earlier EU word mark ONE — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Article 8(5) of Regulation 2017/1001)

Amigüitos pets & life, SA, established in Lorca (Spain), represented by N. Fernández Fernández-Pacheco, lawyer,

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and J. Crespo Carrillo, acting as Agents,

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

Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz, A. Lambrecht and C. Elkemann, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 19 November 2018 (Case R 272/2018-4) relating to opposition proceedings between Société des produits Nestlé SA and Amigüitos pets & life,

composed of S. Gervasoni, President, L. Madise and R. Frendo (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 21 January 2019,

having regard to the response of EUIPO lodged at the Court Registry on 25 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 28 March 2019,

having regard to the fact that no request for a hearing was submitted by the parties within 3 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,

1 On 28 April 2016, the applicant, Amigüitos pets & life, 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)).

3 The goods in respect of which registration was sought are in Classes 5 and 31 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, for each of those classes, to the following description:

– Class 5: ‘Dietary, protein and vitamin supplements for animals, in particular for dogs; Feeding stimulants for animals, including food coatings for giving medicines; Trace elements (Preparations of -) for human and animal use; Protein supplements for animals, dietary, dietetic and protein supplements, antibiotics for animals; Medicated supplements for foodstuffs for animals; Medicated additives for animal foods; Animal washes; Antiparasitic collars for animals; Attractants for pet animals; Animal dips [preparations]; Animal flea collars; Animal sperm; Animal semen for animal insemination; Animal repellent formulations; Medicines for veterinary purposes; Absorbent diapers of cellulose for pets; Powders for killing fleas on animals; Pharmaceutical preparations for animal skincare; Pharmaceutical preparations for animals, Animal washes, Disposable housebreaking pads for pets; Skin treatment [medicated] for animals; Foot rot vaccines; Vitamins for animals; Animal washes and lotions; Parasiticides; Antiparasitic preparations; Antiparasitic collars for animals; Bacterial and bacteriological preparations for veterinary use; Enzyme preparations for veterinary purposes; Amino acids for veterinary purposes, Greases for veterinary purposes, Medicines for veterinary purposes, Cement for animal hooves, pharmaceuticals and veterinary preparations; Hygiene products for medical purposes’;

– Class 31: ‘Foodstuffs for animals, foodstuffs for dogs; Foodstuffs containing liver, chicken, lamb, beef or veal, fish, or pork, for dogs; Foodstuffs in the form of cubes, rings and sticks for dogs; Canned foodstuffs for dogs; Cheese flavoured foodstuffs for dogs; Food for racing dogs; Beverages for canines; Dog treats [edible]; Foodstuffs for dogs; Dog biscuits; Bones for dogs; Digestible chewing bones for dogs; Milk for use as foodstuffs for dogs; Litter for dogs; Foodstuffs for dogs; Food preparations for dogs; Edible chewing products for dogs, live animals; Seeds, natural plants and flowers; Agricultural, horticultural and forestry products and grains not included in other classes; Mash for fattening domestic animals; Strengthening animal forage; Edible chews for animals; Bird food; Dog biscuits; Proteins for foodstuffs for animals, aromatic sand for pets, beverages for pet animals, products for animal beds, treats for animals’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/11 of 27 June 2016.

5 On 21 September 2016, the intervener, Société des Produits Nestlé S.A., filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation No 2017/1001) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the EU word mark ONE, filed on 23 December 2013 and registered on 6 May 2014 under No 012460275, which covers goods in Class 31 corresponding to the following description: ‘Foodstuffs for animals’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

8 On 7 December 2017, the Opposition Division held that the mark applied for was likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark ONE and, consequently, upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001 for most goods in Classes 5 and 31. On the other hand, the Opposition Division rejected the opposition on the basis of Article 8(1)(b) and (5) of that regulation for ‘trace elements (preparations of -) for human and animal use’ in Class 5 and ‘flowers’ in Class 31.

9 On 7 February 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.

10 By decision of 19 November 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal against the decision of the Opposition Division. More specifically, it upheld the intervener’s opposition, first, on the grounds set out in Article 8(1)(b) of Regulation 2017/1001, for identical or similar goods, and, secondly, on the grounds set out in Article 8(5) of Regulation 2017/1001, for goods with a low degree of similarity and for dissimilar goods.

– order registration of the mark applied for in respect of all the goods for which protection is sought;

– order the intervener and, where appropriate, EUIPO to pay the costs, including those incurred before EUIPO.

13 The intervener disputes the formal admissibility of the action, relying on infringement of Articles 177(5) and 51(3) of the Rules of Procedure of the General Court. According to the applicant, the action is inadmissible in so far as the ‘Power of Attorney’ lodged at the Court Registry was signed by a person who is not listed as the applicant’s legal representative in the extract from the business registry attached to the application.

14 As a preliminary point, it should be noted that the intervener claims that it is not apparent from the documents submitted before the Court that the power of attorney was signed by the applicant’s legal representative. In that regard, however, it is sufficient to note that, under Article 51(3) of the Rules of Procedure, to which Article 177(5) thereof explicitly refers, lawyers are required, where the party they represent is a legal person governed by private law, to lodge at the Registry an authority to act given by that person, which has been done in this instance. It follows that, contrary to what the intervener claims, that article, unlike Article 44(5)(b) of the Rules of Procedure of the General Court of 2 May 1991, no longer requires proof that the authority granted to the lawyer was conferred on him by someone authorised for the purpose (judgment of 28 September 2016, European Food v EUIPO — Société des produits Nestlé (FITNESS), T‑476/15, EU:T:2016:568, paragraph 19).

15 It is therefore necessary to reject the intervener’s arguments as to the formal inadmissibility of the action.

16 By its second head of claim, the applicant requests, in substance, that the Court order EUIPO to register the mark applied for in respect of all the goods covered by it.

17 It is clear from settled case-law that, in an action before the EU Courts against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU judicature. It is therefore not for the General Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited). The applicant’s second head of claim must therefore be rejected as inadmissible.

18 In support of its action, the applicant relies on two pleas in law: (i) infringement of Article 8(1)(b) of Regulation No 2017/1001 and (ii) infringement of Article 8(5) of that regulation.

1. The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

20 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not 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 trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

21 According to settled case-law, the risk that the public may 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 the same 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).

22 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue 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).

23 The question whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks at issue in the present case must be examined in the light of those considerations.

24 It follows from the case-law that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind 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).

25 In paragraph 21 of the contested decision, the Board of Appeal found that the relevant public was the public of the European Union, consisting of the general public and the professional public in the veterinary sector. More specifically, it found that the goods concerned in Class 5 were aimed at the general public and the professional public in the veterinary sector and that the level of attention of the relevant public was above average for food additives and supplements and high for veterinary preparations. As regards the identical goods in Class 31, it found that they were aimed at the general public and that the level of attention of the relevant public was no more than average since animal food was purchased on a regular basis.

26 The applicant does not dispute that the goods in question are aimed at the general public and professionals nor that the level of attention is above average for food additives and supplements and high for veterinary preparations. Nevertheless, the applicant disputes the Board of Appeal’s assessment that the relevant public’s level of attention is average with regard to animal food in Class 31. In particular, it argues that, in relation to those goods, the level of attention of the relevant public is high or very high in view of the fact that there is a link between animals’ nutrition and health.

27 As regards the relevant territory, the finding of the Board of Appeal, which is not contested by the applicant, must be regarded as well founded.

28 As regards the public’s level of attention, the applicant challenges the Board of Appeal’s assessment only with regard to the goods in Class 31.

29 In that respect, it should be noted, first, that goods in Class 31, such as animal food, are everyday consumer goods that are aimed at the general public and are inexpensive.

30 Secondly, with regard to the alleged link in the minds of consumers between food and pet health, the applicant merely refers to the decision of the Board of Appeal in Case R 2303/2011-1. However, it cannot be inferred from that decision or the judgment to which it refers (judgment of 15 March 2012, Cadila Healthcare v OHMI — Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124) that the alleged link would establish that the relevant public has a high level of attention. Accordingly, that argument cannot be accepted.

31 In particular in view of the above, the findings of the Board of Appeal concerning the relevant public and the level of their attention must be upheld.

32 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

33 In the present case, the Board of Appeal found, in paragraphs 28 to 31 of the contested decision, that the goods at issue were, in part, identical, in part, similar and, in part, dissimilar.

34 It must be concluded that the Board of Appeal did not err in its comparison of the goods, particularly since that comparison has not been called into question by the applicant.

35 It should be recalled that 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 this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

36 In the presence of a composite trade mark, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, 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 trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

37 It is in the light of those principles that the signs at issue must be examined.

38 In the present case, as is apparent from paragraph 24 of the contested decision, the mark applied for THE ONLY ONE by α alpha spirit wild and perfect is a complex mark composed of both word and figurative elements. In particular, it is composed of the three word elements ‘the only one’, in bold white capital letters, placed one above the other and separated by small dotted lines. The other word elements ‘by α’ are placed below on the right, the word ‘by’ is in a different font of a slightly smaller size, while the letter ‘α’ is the same size as the words ‘the’ and ‘one’, and is in red. The word elements ‘alpha spirit’ are placed further below in a smaller font and the word ‘alpha’ is in red. Underneath that, in a very small font compared to the words ‘the only one’ are the word elements ‘wild and perfect’.

40 The Board of Appeal noted that the words ‘the only one’ constituted the dominant part of the mark applied for and that the word ‘one’ formed an independent and distinctive part. It essentially assessed the similarity between the marks on the basis of the ‘the only one’ element of the mark applied for. The Board of Appeal thus found that, visually, taking account of the independent and distinctive role of the word ‘one’ in the earlier word mark ONE, the marks at issue were similar to a low degree. It found that, phonetically, the marks were similar to a below average degree and that, conceptually, they were highly similar for the English-speaking part of the relevant public and similar for the non-English-speaking part of the relevant public.

41 The applicant submits, however, that the marks at issue are not visually, phonetically or conceptually similar, in particular taking account of the fact that the word ‘one’ does not play an independent role and that no element of the mark applied for plays a secondary role.

42 The Board of Appeal noted, in paragraph 24 of the contested decision, that, on account of the position, colour and size of the words making up the mark applied for, the words ‘the only one’ constituted the dominant element of the mark applied for and that the word ‘one’ formed an independent and distinctive part. As for the other elements of the mark applied for, the Board of Appeal found that, on account of their size and positioning, they played a secondary role.

43 The applicant contests that assessment. According to the applicant, the word element ‘one’ of the mark applied for does not play an independent role. The applicant submits that that element is merely part of the whole expression conveyed by the mark applied for THE ONLY ONE by α alpha spirit wild and perfect and that the other elements do not play a secondary role and cannot be ignored. In addition, the applicant considers that the Greek letter ‘α’ will be particularly eye-catching due to its size and red colour and that the word ‘alpha’ will also attract the attention of consumers because of its colour.

44 EUIPO and the intervener essentially dispute the applicant’s arguments. According to EUIPO, the element ‘one’, which is also present in the earlier mark, is in a central position and is the dominant element of the mark applied for in conjunction with the words ‘the’ and ‘only’. With regard to the letter ‘α’ and the word ‘alpha’, EUIPO considers that account should be taken of the fact that, when signs consist of both word and figurative elements, in principle, the word element of the sign usually has a stronger impact on the consumer than the figurative component.

45 First of all, it should be noted that as regards the assessment of 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 (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).

46 In the present case, the signs at issue both contain the element ‘one’ but differ as a result of the other word elements present in the mark applied for, namely the words ‘the’, ‘only’ and ‘by α alpha spirit wild and perfect’, and as a result of the figurative elements constituted by the letters ‘α’ in red, the word ‘alpha’, which is also in red, and the black background of the mark applied for.

47 However, contrary to the Board of Appeal’s assessment, the fact that the component ‘the only one’ occupies an important part of the black square must be put into perspective. The comparison of that component with the other components demonstrates that its position and size do not give it a dominant character while removing all significance, in the overall impression, from the other elements which are components of the mark applied for.

48 While it is true that the words ‘by α’ are placed below on the right of the words ‘the only one’, it cannot be ignored that the word ‘by’ is written in a smaller font than the words ‘the only one’ and that the size of the letter ‘α’ is large enough to attract the attention of the relevant public. The same applies to the words ‘alpha spirit’, which, on account of their position below the letter ‘α’ and the fact that the word ‘alpha’ is in red, give the impression of forming a whole with the words ‘by α’ and will be perceived by the relevant public.

49 Therefore, the only element that may be regarded as negligible is that consisting of the words ‘wild and perfect’ because of its size and the font used.

50 It must therefore be noted that the elements ‘by α’ and ‘alpha spirit’ cannot be regarded as negligible and that the assessment of similarity cannot be carried out solely on the basis of the element ‘the only one’, but must rather be carried out on the basis of the elements ‘the only one’, ‘by α’ and ‘alpha spirit’.

51 In addition, it should be noted that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25 and case-law cited). In the present case, the element ‘one’, as part of a number of non-negligible word elements, does not retain an independent distinctive role in the mark applied for.

52 It follows that the Board of Appeal erred in its assessment, in paragraph 24 of the contested decision, that the word ‘one’ formed an independent and distinctive part within the dominant elements of the sign applied for.

53 Visually, by attaching greater weight to the element ‘one’, the Board of Appeal found, in paragraph 25 of the contested decision, that there was a low degree of similarity between the marks at issue in so far as they both contained the element ‘one’, taking account of the independent and distinctive role of the word ‘one’ and the secondary role of the other elements.

54 The applicant disputes the Board of Appeal’s assessment and claims that the marks at issue are different. According to the applicant, the Board of Appeal erred in focusing its analysis on the ‘one’ element and in failing to take into account the fact that the mark applied for was made up of different elements, both word and figurative.

55 EUIPO and the intervener essentially agree with the analysis of the Board of Appeal and dispute the applicant’s arguments.

56 As a preliminary point, it should be recalled that, as noted in paragraph 50 above and contrary to the findings of the Board of Appeal, the similarity between the signs at issue must be assessed on the basis of the earlier mark ONE and on the basis of a number of elements of the mark applied for, namely ‘the only one by α alpha spirit’, given that the element ‘wild and perfect’ is the only negligible element of the mark applied for.

57 Visually, as the applicant claims, although it is clear from the comparison of the signs at issue that both contain the word ‘one’, the signs are different as regards the other word and figurative elements.

58 In that regard, it should be borne in mind that the visual impression given by two marks which share a common element may be different, in particular where the comparison concerns a word mark, such as the earlier mark, and a mark composed of word and figurative elements, such as the mark applied for (see, to that effect, judgment of 8 December 2011, Aktieselskabet af 21. November 2001 v OHIM — Parfums Givenchy (only givenchy), T‑586/10, not published, EU:T:2011:722, paragraph 33 and the case-law cited).

59 First, it should be noted that, whereas the visual impression of the earlier mark is determined by the word ‘one’, which is its only component, the visual impression of the mark applied for is determined by seven words, ‘the only one by α alpha spirit’, with the last three words ‘wild and perfect’ being negligible. The visual impression of the mark applied for is different to that of the earlier mark on account of its length, given that the latter is composed of the single element ‘one’. This leads to a different visual impression.

60 Secondly, it should also be noted that the figurative elements of the mark applied for, the black square in which the word elements are written and the letter ‘α’ and the word ‘alpha’ in red, contribute to visual differentiation between the marks at issue.

61 It has, admittedly, been held that relevant consumers may not perceive the differences between the signs since they only rarely have the chance to make a direct comparison between different marks and must rely on the imperfect picture of them that that they have retained (see, to that effect, judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26, and of 21 November 2018, Shenzhen Jiayz Photo Industrial v EUIPO — Seven (SEVENOAK), T‑339/17, not published, EU:T:2018:815, paragraph 76). However, in the present case, the overall visual impression of the two marks that consumers will retain will nevertheless be very different despite the presence of the common element ‘one’.

62 It follows that the Board of Appeal made an error of assessment in finding, in paragraph 25 of the contested decision, that there was a low degree of similarity between the marks at issue. Those marks are visually different.

63 Phonetically, considering that the mark applied for will be pronounced ‘the only one’ due to the size and position of its other elements, the Board of Appeal found that the signs at issue were similar ‘to a below average degree’, which must be understood as meaning that, in the Board of Appeal’s view, they were similar to a certain extent.

64 The applicant submits that those marks are not similar, taking account of the fact that they share one single word and that the mark applied for consists of 10 words rather than one.

65 EUIPO and the intervener essentially agree with the analysis of the Board of Appeal and dispute the applicant’s arguments.

66 In that regard, it must be observed, as the applicant submits, that the earlier mark is composed of a single word, whereas the mark applied for is composed of 10 words, seven of which are not negligible. Thus, the seven words ‘the only one by α alpha spirit’ are substantially distinct from the single word ‘one’ composing the earlier mark.

67 Moreover, given that the element ‘the only one’ is not such as to render the other elements of the mark applied for negligible, it cannot be concluded that the average consumer who is reasonably well informed and reasonably observant and circumspect will systematically disregard the other words forming the mark applied for. Therefore, in the present case, there is no reason to assume that the element ‘by α alpha spirit’ of the mark applied for will not be pronounced.

68 It follows that, despite the presence of the element ‘one’ in both of the marks at issue, the fact that there are at least six other words that could be pronounced in the mark applied for serves to differentiate it from the earlier mark.

69 It must therefore be concluded that the degree of phonetic similarity between the marks at issue, which the Board of Appeal considered to be below average, must be regarded as low.

70 In paragraph 27 of the contested decision, the Board of Appeal found that the word ‘one’ was universally understood by the relevant public as a number or as designating a person who, or a thing which, consists of a single individual or unit, while the words ‘the only one’ formed, for the English-speaking public, an expression indicating that there is no one or nothing else like that specific person or thing. That meaning of that expression is based on the concept that is conveyed by the single word ‘one’ of which the earlier mark is composed. The Board of Appeal therefore found that, conceptually, the marks were highly similar for the English-speaking part of the relevant public and similar for the non-English-speaking part, which would not understand the expression ‘the only one’, but would understand the meaning of the word ‘one’.

71 The applicant disputes that reasoning. It submits that the Board of Appeal erred in finding that there was a conceptual similarity between the marks. It claims that the Board of Appeal should also have taken into consideration the other elements of the mark applied for, namely ‘by α alpha spirit wild and perfect’.

72 EUIPO and the intervener essentially agree with the analysis of the Board of Appeal and dispute the applicant’s arguments.

73 In that regard, the Board of Appeal’s finding that the word ‘one’ will be universally understood by the relevant public as a number should be upheld. However, the Board of Appeal’s finding that the word ‘one’ would be understood as designating a person who, or a thing which, consists of a single individual or unit is incorrect. The word ‘one’ taken in isolation means the number one and does not designate other meanings. To designate other meanings, such as the uniqueness of a person or thing, the word ‘one’ must be used with other words such as in the expressions ‘the one’, ‘the one and only’ or ‘the only one’.

74 The arguments of EUIPO and the intervener intended to establish that the relevant non-English-speaking public will not understand the term ‘the only one’ must also be rejected. The latter expression, which is part of basic vocabulary, may be understood by that part of the relevant public as meaning ‘the only one’.

75 In addition, the combination of the element ‘one’ and the ‘the only’ and ‘by α alpha spirit’ elements means that those elements will be perceived as a single expression that must be considered as a whole.

76 The concepts suggested or conveyed by the words ‘one’ of the earlier mark and ‘the only one by α alpha spirit’ of the mark applied for must therefore be found to be different.

77 That conclusion is not affected by the intervener’s arguments regarding the percentages of people in the relevant public who speak English.

78 First, the words that make up the mark applied for, in particular ‘one’, ‘only’, ‘by’ and ‘alpha’, are words that are part of basic English vocabulary and are easily understood even by the non-English-speaking public. Given the flow of trade in the European Union and current means of electronic communication, those words will be understood even by that public.

79 Secondly, even if, as argued by EUIPO and the intervener, the non-English-speaking public would not understand the words ‘one’, ‘only’, ‘by’ and ‘alpha’, the part of the mark applied for ‘the only one by alpha spirit’ creates, in any event, an expression with a logical and conceptual unity that is distinct from the concept conveyed by the element ‘one’ taken in isolation, as it is in the earlier mark (see, to that effect, judgment of 8 December 2011, only givenchy, T‑586/10, not published, EU:T:2011:722, paragraph 39).

80 It should therefore be noted that the presence in the signs at issue of the common element ‘one’ is not sufficient to conclude that there is a strong conceptual similarity between the two signs, as held by the Board of Appeal.

81 It follows from the above that the Board of Appeal’s finding that the marks have a degree of conceptual similarity ranging from medium to high must be rejected given that the signs at issue are conceptually different.

82 Therefore, the signs at issue are visually and conceptually different and have a low degree of phonetic similarity.

83 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 that of the goods or services covered. 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 29 September 1998, Canon, C 39/97, EU:C:1998:442, paragraph 17, and 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 74).

84 As is apparent from recital 8 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous factors, in particular the public’s recognition of the earlier mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

85 In the present case, the Board of Appeal found that the inherent distinctiveness of the earlier mark ONE was normal and that, in any event, even taking into account any possible weakened inherent distinctiveness, as argued by the applicant, the earlier mark had enhanced distinctiveness and reputation.

86 Taking into account the enhanced distinctiveness of the earlier mark, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for the goods at issue, in Class 31, considered to be identical. In particular, it took into account the fact that the goods in question were identical, the low degree of visual similarity, the below-average degree of phonetic similarity and the medium to high degree of conceptual similarity between the signs at issue, the enhanced distinctiveness of the earlier mark with respect to ‘pets, namely cats and dogs’ and the average level of attention of the relevant public. The Board of Appeal held that the same conclusion was valid for the goods at issue, in Class 5, regarded as similar, notwithstanding the higher level of attention of the relevant public.

87 The applicant disputes the findings of the Board of Appeal and claims that, since there is no similarity between the signs at issue, there is no likelihood of confusion.

88 In the alternative, the applicant submits that, in any event, the earlier mark ONE has very little inherent distinctiveness and that neither acquisition through intensive use nor reputation can be claimed for the mark ONE as a standalone mark because all the evidence provided in support of its reputation relates to use of the mark ONE in conjunction with the mark PURINA.

89 EUIPO and the intervener essentially agree with the analysis of the Board of Appeal and dispute the applicant’s arguments.

90 In the present case, it has already been noted that the signs at issue are visually and conceptually different and have a low degree of phonetic similarity.

91 In that regard, without it being necessary to rule on the inherent distinctiveness of the earlier mark, it must be noted that the very low degree of similarity between the signs does not support the conclusion that there is a likelihood of confusion in the present case, notwithstanding the similarity, if not the identity, of the goods, and even having regard to the public, which has a level of attention that is no higher than the average.

92 It should be added that the method of marketing the goods at issue also contributes to there being no likelihood of confusion. In that regard, it should be noted, first, that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight. The extent of the similarity or difference between the signs may depend, in particular, on the conditions under which the goods or services covered by the marks at issue are marketed. It is thus appropriate to analyse the objective conditions under which the marks may be present on the market (judgment of 6 October 2004, New Look Ltd v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).

93 In the present case, goods in Classes 31 and 5 are generally sold in self-service stores and are physically displayed to consumers who will, generally, perceive the visual aspect of the marks before purchase. In relation to such goods, visual similarity plays a very important part in the global assessment of the likelihood of confusion (see, to that effect, the judgments of 6 October 2004, NLSPORT, NLJEANS, NLACTIVE and NLCollection, T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 50). In that respect, the visual difference between the earlier mark ONE and the mark applied for THE ONLY ONE by α alpha spirit wild and perfect will clearly be noticed by the average consumer, even when account is taken of only the part of the mark applied for which is negligible.

94 Consequently, in the present case, the visual and conceptual difference and the low degree of phonetic similarity will preclude consumers from believing that the goods at issue, when sold under the marks at issue, come from the same undertaking or from economically linked undertakings.

95 That conclusion cannot be called into question by the arguments of EUIPO and the intervener to the effect that the earlier mark ONE has enhanced distinctiveness and reputation that compensates for any possible weakened inherent distinctiveness of the earlier mark.

96 In that regard, it must be borne in mind that, in order to satisfy the requirement of reputation, a mark must be known by a significant part of the public which is relevant with regard to the goods or services covered by that mark. In examining whether that condition is fulfilled, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking concerned in promoting it, without there being any requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (judgment of 19 June 2008, Mülhens v OHMI — Spa Monopole (MINERAL SPA), T‑93/06, not published, EU:T:2008:215, paragraph 33; see also, to that effect and by analogy, judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraphs 24, 25 and 27 to 29).

97 In addition, an overall assessment of the evidence produced by the proprietor of the mark should be carried out in order to establish whether the mark is well known (see, to that effect, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 72).

98 In the present case, the Board of Appeal relied on a number of factors in finding that the reputation of the earlier mark had been established.

99 First, it relied on press articles relating to the mark PURINA ONE, information showing the evolution of that mark, and screen shots from the intervener’s websites in Germany, France, Italy, Portugal and the United Kingdom, all of which have a domain name composed of the words ‘www.purina’ or ‘www.purina-one’, showing images and information regarding the goods of the mark PURINA ONE.

100 Secondly, it relied, inter alia, on the sworn statement of the Nestlé Marketing Director giving information on the marketing, distribution and market shares of the mark ONE and on the registrations of the marks PURINA ONE and ONE.

101 Thirdly, the Board of Appeal took into account, inter alia, images of the goods distributed in stores carrying the mark PURINA ONE, screen shots of a number of websites in several Member States showing that the intervener’s goods bearing the mark PURINA ONE were sold online, television advertisements run in several Member States in relation to the mark PURINA ONE, advertisement campaigns relating to the mark PURINA ONE, extracts from magazines and newspapers regarding the mark PURINA ONE, certificates and information on prizes won by the mark PURINA ONE and an independent market study on the mark PURINA ONE.

102 However, as noted by the applicant, it is apparent from the documents before the Court that it is the words ‘purina one’, sometimes accompanied by the symbol ‘®’, that appear on the documents submitted by the intervener as evidence of the reputation of the earlier mark. Thus, in all the images of the intervener’s goods, the earlier mark ONE always appears with the mark PURINA. It is also apparent from the information relating to the television advertisements in EUIPO’s administrative file that it is the mark PURINA ONE that is represented and mentioned orally in the various advertisements. It is also the words ‘purina one’ that appear in the press extracts and on all the other documents provided, including the market study.

103 Consequently, contrary to the claims of EUIPO and the intervener, the evidence provided by the latter establishes the reputation of the mark PURINA ONE and not that of the earlier mark ONE.

104 The Board of Appeal was therefore wrong to consider that proof of the reputation of the earlier mark had been furnished in the present case.

105 The arguments raised by EUIPO and the intervener do not invalidate that conclusion.

106 First, the argument that the use of the mark ONE with the mark PURINA as an umbrella mark is a common commercial practice must be rejected. The fact that those two marks are used together does not alter the finding that ONE, the earlier mark on which the opposition is based, does not include the word ‘PURINA’ and does not itself appear on the documents produced as proof of reputation.

107 Secondly, the intervener submits that the fact that the earlier mark examined may have been used in a slightly different way does not call into question its reputation and does not affect its proprietor’s ability to acquire rights in relation to that mark.

108 In that regard, it is true that the proprietor of a registered mark may, in order to establish the reputation of that mark, rely on evidence of its reputation under a different form, in particular under the form of another registered mark, provided that the relevant public continues to perceive the goods at issue as originating from the same undertaking (judgments of May 5, 2015, Spa Monopole v OHIM — Orly International (SPARITUAL), T‑131/12, EU:T:2015:257, paragraph 33, and of 1 March 2018, Shoe Branding Europe v EUIPO — adidas (Position of two parallel stripes on a shoe), T‑629/16, EU:T:2018:108, paragraph 28 and 76). In order to determine whether that is the case, it should be ascertained that the components which differentiate the two marks do not prevent the relevant public from continuing to perceive the goods at issue as originating from a particular undertaking (judgments of 5 May 2015, SPARITUAL, T‑131/12, EU:T:2015:257, paragraph 35, and of 1 March 2018, Position of two parallel stripes on a shoe, T‑629/16, EU:T:2018:108, paragraph 28).

109 In the present case, in finding that the earlier mark had a reputation, the Board of Appeal relied, essentially, on the evidence concerning the mark PURINA ONE and did not raise the question of whether or not that reputation could be established on the basis of a mark presented in a different form.

110 Similarly, the condition laid down in the case-law referred to in paragraph 108 above, concerning whether or not the elements that differentiate those two marks of the intervener prevent the relevant public from continuing to perceive the goods at issue as originating from a particular undertaking, was not examined by the Board of Appeal either.

111 Consequently, the arguments of EUIPO and the intervener based on the reputation of the earlier mark examined in a different form cannot call into question the conclusion set out in paragraph 91 above that there is no likelihood of confusion between the marks at issue.

112 It follows from all of the foregoing that the applicant’s first plea must be upheld.

2. The second plea in law, alleging infringement of Article 8(5) of Regulation No 2017/1001

113 Article 8(5) of Regulation 2017/1001 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

114 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of on earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).

115 That the mark has a reputation is therefore one of the essential conditions for the application of Article 8(5) of Regulation 2017/1001.

116 In that respect, it has already been noted that the Board of Appeal was wrong to consider that proof of the reputation of the earlier mark had been furnished in the present case.

117 It follows that the condition requiring that the mark has a reputation is not satisfied.

118 In view of all the foregoing and in view of the cumulative nature of the conditions laid down in Article 8(5) of Regulation No 2017/1001, the second plea raised by the applicant must be upheld, without it being necessary to examine whether the other conditions laid down in that provision are fulfilled.

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

121 In the present case, since EUIPO and the intervener have been unsuccessful in their main heads of claim, they must each be ordered to pay half of the costs incurred by the applicant, in accordance with the form of order sought by the latter.

122 As regards the applicant’s request that the intervener and, where appropriate, EUIPO be ordered to pay the costs incurred in the administrative proceedings before EUIPO, it must be pointed out 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, with the result that the applicant’s claim in respect of those costs is admissible. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the applicant’s request that the intervener and, where appropriate, EUIPO, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 November 2018 (Case R 272/2018-4);

3. Orders EUIPO to pay, in addition to its own costs, half of the costs incurred by Amigüitos pets & life, SA, including those incurred for the purposes of the proceedings before the Board of Appeal;

4. Orders Société des produits Nestlé, SA to pay, in addition to its own costs, half of the costs incurred by Amigüitos pets & life, including those incurred for the purposes of the proceedings before the Board of Appeal;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Amiguitos pets & life v EUIPO - Societe des produits Nestle (THE ONLY ONE by alphaspirit wild and perfect) (EU trade mark - Judgment) [2019] EUECJ T-40/19 (19 December 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T4019.html Cite as: [2020] ETMR 19, EU:T:2019:890, ECLI:EU:T:2019:890, [2019] EUECJ T-40/19

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