BRF Singapore Foods v EUIPO - Tipiak (SADIA) (EU trade mark - Judgment) [2020] EUECJ T-310/19 (25 November 2020)

Judgment I. Background to the dispute On 22 August 2013, the predecessor in title to the applicant, BRF Singapore Foods Pte Ltd, 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)). That application was given the number 12 084 273. Registration as a mark was sought for the word sign SADIA. The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 29, 30 and 35 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 29: ‘Prepared meals, snacks; ready meals primarily with meat, fish, seafood or vegetables’; – Class 30: ‘Rice; flour; pastry; prepared meals excluding meals which contain couscous; pastry dishes and pasta dishes excluding couscous; convenience food (excluding couscous) and savoury snacks; canned pasta foods excluding couscous; baked foodstuffs’; – Class 35: ‘Food retail services; retail services relating to foodstuffs; promotional services in the form of tasting food samples; information, advisory and consultancy services in relation to the aforesaid’. The trade mark application was published in European Union Trade Marks Bulletin No 2013/218 of 15 November 2013. On 17 February 2014, the intervener, Tipiak, 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 and services referred to in paragraph 3 above. The opposition was based on the earlier French word mark SAIDA, registered on 5 October 1993 and renewed on 14 October 2013, designating goods in Class 30 and corresponding to the following description: ‘Flour and preparations made from cereals’. 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). On 7 November 2014, in response to the opposition, the applicant requested, in accordance with Article 43(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), that proof of use of the earlier mark be provided by the opponent ‘to establish genuine use or that the [opponent] establish proper reasons for non-use so as to allow the present opposition to be terminated or [to] continue with sufficient clarity being given to the term “preparations made from cereals” which the [opponent] relies on as the basis for opposition under Article 8(1)(b) [of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001)]’. On 2 December 2014, EUIPO invited the opponent to provide proof of use of the earlier mark ‘for part of the goods and services on which the opposition is based, namely “preparations made from cereals”’. The parties did not comment on that request from EUIPO and, within the time limit set, proof of use of the earlier mark was submitted by the opponent. On 24 July 2018, the Opposition Division concluded that there was genuine use of the earlier mark in respect of preparations made from cereals. It upheld the opposition in part on the ground that there was a likelihood of confusion for all the goods covered by the mark applied for in Classes 29 and 30 and for some of the services in Class 35, namely ‘food retail services; retail services relating to foodstuffs; information, advisory and consultancy services in relation to the aforesaid’. On 21 September 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. By decision of 19 March 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to bear the costs of the appeal proceedings before it. In particular, the Board of Appeal considered, first, that the comparison of the goods and services in question had to be based on ‘flour’, which was not covered by the request for proof of use, and on ‘couscous (semolina)’ (Class 30), in respect of which genuine use had been proved (contested decision, paragraphs 21 to 23). Second, it stated that the goods and services were identical, similar or displayed an average degree of similarity (contested decision, paragraphs 27 to 33). Third, it considered that, visually, the signs in question were highly similar and, phonetically, they displayed a high degree of similarity, and that the conceptual comparison remained neutral (contested decision, paragraphs 36 to 38). Fourth, it considered that, taking into account the foregoing as well as the normal inherent distinctive character of the earlier mark and the normal level of attention of the relevant public, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. It added that since the opposition had been upheld on the basis of the narrow specification of the goods ‘couscous (semolina)’ (Class 30), there was no need to examine whether those goods were an objective subcategory of ‘preparations made from cereals’ (contested decision, paragraphs 42 to 45). II. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order the intervener to pay the costs. At the hearing, the applicant added to the form of order it sought by requesting that EUIPO also be ordered to pay the costs. EUIPO contends that the Court should: – uphold the action for annulment inasmuch as the contested decision upheld the opposition in respect of ‘pastry; pastry dishes excluding couscous’ in Class 30, and ‘information, advisory and consultancy services in relation to the aforesaid [food retail services; retail services relating to foodstuffs]’ in Class 35 covered by the trade mark application; – dismiss the action as to the remainder; – order each party to bear its own costs. The intervener contends that the Court should: – dismiss the action; – uphold the contested decision; – order the applicant to pay the costs. At the hearing, the intervener added to the form of order it sought by requesting that EUIPO also be ordered to pay the costs. III. Law Given the date on which the application for registration at issue was filed, namely 22 August 2013, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489 , paragraph 2 and the case-law cited). Moreover, since, in accordance with settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain , C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001. Accordingly, in the present case, as far as concerns the substantive rules, it is necessary to understand the references made, by the Board of Appeal in the contested decision and by the parties to the proceedings, to Article 8(1)(b) of Regulation 2017/1001, as referring to the identical provisions of Article 8(1)(b) of Regulation No 207/2009. The Court also observes as a preliminary point that, in proceedings concerning a European Union trade mark brought against a decision of a Board of Appeal, nothing precludes EUIPO from endorsing the applicant’s heads of claim, while putting forward all the arguments that it considers appropriate, in performance of its task relating to the administration of European Union trade mark law and the functional independence which the Boards of Appeal are granted in the exercise of their duties (judgments of 30 June 2004, GE Betz v OHIM – Atofina Chemicals (BIOMATE) , T‑107/02, EU:T:2004:196, paragraphs 32 to 36; of 17 March 2009, Laytoncrest v OHIM – Erico (TRENTON) , T‑171/06, EU:T:2009:70, paragraph 27; and of 6 June 2018, Glaxo Group v EUIPO – Celon Pharma (SALMEX) , T‑803/16, not published, EU:T:2018:330 , paragraph 20). It must therefore be inferred that, in the present case, by its first head of claim EUIPO endorses the form of order sought by the applicant as regards certain goods and services in respect of which registration was sought. The applicant puts forward three pleas in law in support of its action. The applicant claims, in essence, that the Board of Appeal infringed (i) the principles of sound administration and equal treatment, (ii) Article 8(1)(b) of Regulation No 207/2009, by incorrectly assessing the similarity of the goods and services concerned, and (iii) the obligation to state reasons. It is appropriate to examine the first and third pleas together, followed by the second plea. A. The first plea in law, alleging infringement of the principles of sound administration and equal treatment, and the third plea in law, alleging infringement of the obligation to state reasons In support of the first plea, the applicant submits, in essence, that in considering that the goods ‘couscous (semolina)’ did not constitute a different objective subcategory of ‘preparations made from cereals’, the Board of Appeal failed to take into account its own previous decision-making practice and, by failing to provide any justification for that departure, infringed its obligation to state reasons. Specifically, the applicant claims that, in 2017, in initial opposition proceedings No B 2 660 689 brought by Tipiak against Société des Produits Maghreb Sebiane Frère, EUIPO considered, as regards the French trade mark SAIDA registered under No 93 486 246, that the proof of use concerned only ‘semolina’ and that it did not appear justified to accept that use had been demonstrated for the whole category of ‘preparations made from cereals’. The applicant notes, next, that in subsequent opposition proceedings No B 2 662 255 brought by Tipiak against Société des Produits Maghreb Sebiane Frère and concerning the French trade mark SAIDA registered under No 93 486 246, EUIPO considered that the evidence proved use only in respect of ‘couscous (semolina)’ and that that product could thus be regarded as an objective subcategory of ‘preparations made from cereals’. Furthermore, the applicant notes that, in two other final decisions given in 2017, one regarding cancellation proceedings No 12 196 C and the other in opposition proceedings No B 2 673 880, EUIPO also considered that ‘semolina’ was an objective subcategory of ‘preparations made from cereals’. According to the applicant, the scope of the French trade mark SAIDA registered under No 93 486 246 was, in the present case, defined significantly more broadly than it had been in the earlier decisions it invokes. The Board of Appeal, while considering the proof of use relating to semolina, did not conclude, as the previous decisions did, that ‘couscous (semolina)’ was dissimilar to the goods and services in question. By merely stating, in order to dismiss the appeal, that all the goods and services covered were similar, contrary to the previous decisions in question, the Board of Appeal failed to observe the principles of sound administration and equal treatment. Lastly, the applicant submits that the Board of Appeal infringed its obligation to state reasons, since it failed to respond to the applicant’s arguments that there was a requirement to take into account EUIPO’s previous decision-making practice. EUIPO and the intervener dispute those arguments. As a preliminary point, it should be borne in mind that in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose clearly and unequivocally the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to specify all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgments of 21 October 2004, KWS Saat v OHIM , C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65, and of 15 November 2011, Abbott Laboratories v OHIM (RESTORE) , T‑363/10, not published, EU:T:2011:662, paragraph 73). Thus, when EUIPO refuses registration of a sign as an EU trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration as well as the provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on (judgments of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) , T‑304/06, EU:T:2008:268, paragraph 46, and of 23 January 2014, Novartis v OHIM (CARE TO CARE) , T‑68/13, not published, EU:T:2014:29, paragraph 28). It must be noted that the applicant does not dispute the fact that genuine use of the earlier mark for ‘couscous (semolina)’ has been proved by the intervener. It should be borne in mind that the applicant claimed before the Board of Appeal that only the goods ‘couscous (semolina)’ should have been compared by the Opposition Division (contested decision, paragraph 10). The Board of Appeal stated that, ‘in line with the argumentation of the applicant, [it would] base its reasoning on the goods “couscous (semolina)” for which genuine use of the earlier mark [had] undisputedly been proven and which, therefore, in any case [formed] a basis for this opposition’ (contested decision, paragraph 23). Lastly, the Board of Appeal concluded that ‘as the opposition against the relevant contested goods and services [had] already [been] successful taking the narrow specification of goods “couscous (semolina)” as a basis, there [was] no need to further discuss whether or not these goods [were] indeed an objective subcategory of the goods “preparations made from cereals” based on which the opposition would have succeeded a fortiori’ (contested decision, paragraph 45). It must be held that the Board of Appeal did not err in comparing the goods and services covered by the mark applied for with the goods ‘couscous (semolina)’, in respect of which genuine use of the earlier mark had been established. The Board of Appeal, after stating that the opposition had to be upheld on the basis of the goods ‘couscous (semolina)’, also did not err in considering that it was not necessary to assess whether, as the applicant claimed, those goods were an objective subcategory of ‘preparations made from cereals’, since, in any event, the opposition had already been upheld on the basis of the goods in respect of which genuine use of the earlier mark had been established. Whether ‘couscous (semolina)’ is an objective and coherent subcategory of ‘preparations made from cereals’ is therefore irrelevant in the present case, since the contested decision was not based on a comparison of the goods and services on the basis of ‘preparations made from cereals’ and the Board of Appeal did not consider, unlike the Opposition Division and contrary to the applicant’s assertions, that genuine use of the earlier mark had been established in respect of those goods. It follows that the Board of Appeal cannot be criticised for not having taken into account EUIPO’s previous decision-making practice. In any event, it must be borne in mind that, in accordance with case-law, the question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of any previous practice of the Boards of Appeal or Opposition Divisions (judgment of 13 December 2016, Apax Partners v EUIPO – Apax Partners Midmarket (APAX) , T‑58/16, not published, EU:T:2016:724 , paragraph 43). In addition, although EUIPO must take into account decisions already taken and consider with especial care whether it should decide in the same way or not, compliance with the principle of legality requires that the examination of any trade mark application be stringent and full and be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (judgment of 16 January 2019, Poland v Stock Polska sp. z o.o. and EUIPO , C‑162/17 P, not published, EU:C:2019:27 , paragraph 60). It follows that the Board of Appeal cannot be bound by factual assessments made by the Opposition Division in a decision in a separate case from the one giving rise to the contested decision. As a result, the complaint alleging infringement of the principles of sound administration and equal treatment must be rejected. The complaint alleging infringement of the obligation to state reasons must also be rejected. Although it is true that in EUIPO’s earlier decisions it was held that ‘couscous (semolina)’ constituted a different coherent subcategory of the category ‘preparations made from cereals’, that distinction is irrelevant in the present case since the opposition was successful on the basis of the goods ‘couscous (semolina)’ only. Accordingly, in order to respond to the arguments put forward by the applicant, it was sufficient for the Board of Appeal to specify, as it did in paragraph 45 of the contested decision, that ‘as the opposition against the relevant contested goods and services [had] already [been] successful taking the narrow specification of goods “couscous (semolina)” as a basis, there [was] no need to further discuss whether or not these goods [were] indeed an objective subcategory of the goods “preparations made from cereals” …’. The first and third pleas must therefore be rejected. B. The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 As a preliminary point, it should be borne in mind that 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 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. 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). For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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, to that effect, judgment of 22 January 2009, Commercy v O HIM – easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14 , paragraph 42 and the case-law cited). In addition, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (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 74). Where the protection of the earlier 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 or services 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, 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). It is in the light of those considerations that it must be assessed whether the Board of Appeal was right to consider that there was a likelihood of confusion in the present case. 1. The relevant public According to the case-law, 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). The Board of Appeal considered that the relevant territory was that of France. As regards the relevant public, the Board of Appeal stated that this was made up of the general public, the level of attention of which was normal. There is no reason to call into question that analysis by the Board of Appeal, which, moreover, is not disputed by the applicant. 2. The comparison of the goods According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) , T‑443/05, EU:T:2007:219 , paragraph 37 and the case-law cited). Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel , T‑316/07, EU:T:2009:14 , paragraphs 57 and 58 and the case-law cited). The applicant claims that the Board of Appeal erred in considering that all the goods and services in question were similar. EUIPO disputes the applicant’s claims in part, while the intervener disputes them in their entirety. (a) The goods in Class 29 The applicant claims, as regards the ‘prepared meals’ covered by the mark applied for, that these are different from ‘couscous (semolina)’, in respect of which genuine use of the earlier mark has been proved, taking into account their nature, their intended purpose and their manufacturers, that they target different publics in different places, that they are neither complementary nor in competition with each other since they cannot serve the same purpose or satisfy the same consumer needs and, lastly, that they do not have the same distribution channels and usual origin. In addition, according to the applicant, the mere fact that ‘semolina’ may be used in ‘prepared meals’ is not enough for a finding that those goods are similar, as follows both from EUIPO’s decision-making practice and from the case-law. Lastly, the applicant notes that, following EUIPO’s decision-making practice, a Board of Appeal considered in another case that ‘in the absence of any other relevant factors, it will generally not give rise to a similarity between two foodstuff products when one may constitute a simple ingredient of the other’. As regards ‘snacks’ and ‘ready meals primarily with meat, fish, seafood or vegetables’ covered by the mark applied for, the applicant reiterates, in essence, the same arguments as those set out in paragraphs 65 and 66 above. The applicant adds that ‘snacks’ are often consumed on the go while semolina is generally consumed over a sit-down meal, and that dishes containing meat, fish and seafood are not suitable for vegetarians, whereas semolina is. EUIPO and the intervener dispute that line of argument. Nevertheless, EUIPO takes the view, as regards ‘prepared meals’ and ‘ready meals primarily with meat, fish, seafood or vegetables’, that there is a low degree of similarity with ‘couscous (semolina)’, while the Board of Appeal, for its part, had considered that the degree of similarity between those goods was average. In addition, as regards ‘snacks’, EUIPO takes the view that there is a very low degree of similarity with ‘couscous (semolina)’, while the Board of Appeal had considered that that similarity was average. It must be noted that the Board of Appeal stated that ‘couscous (semolina)’ was a type of food consisting of durum wheat semolina, cooked by steaming (contested decision, paragraph 25). That definition, as well as the need for brief preparation in order to be able to consume it, are not called into question by the applicant. The Board of Appeal also considered that the goods in Class 29 covered by the mark applied for could consist, in variable proportions, of ‘couscous (semolina)’, and were similar to the latter to an average degree, since they had the same nature, same purpose and the same method of use as the latter. As a result, it is necessary to reject, as having no factual basis, the applicant’s claims that the Board of Appeal concluded that the goods in question were similar on the sole ground that ‘couscous (semolina)’ could be an ingredient of the goods in Class 29 covered by the mark applied for. It should be stated, next, that the Board of Appeal was fully entitled to consider that the goods in Class 29 covered by the mark applied for had the same nature and the same purpose as ‘couscous (semolina)’. The goods in Class 29 covered by the mark applied for indeed belong to the same category of food products, namely foodstuffs ready to be consumed which are already prepared or can be quickly prepared, and therefore have the same nature as ‘couscous (semolina)’. They also have the same purpose as ‘couscous (semolina)’ in so far as they are also intended for human consumption and seek to satisfy nutritional needs. Since ‘prepared meals’, ‘snacks’ and ‘ready meals primarily with meat, fish, seafood or vegetables’ have the same nature and the same purpose as ‘couscous (semolina)’, it must be found that they display a minimal degree of similarity, without it being necessary to further examine their method of use or other factors for comparison. In other words, it is possible to assume that the goods in question are similar at least to the ‘very low’ degree that EUIPO maintains, as regards the goods in Class 29 covered by the mark applied for, only for ‘snacks’. (b) The goods in Class 30 As regards the ‘savoury snacks’ and ‘baked foodstuffs’ covered by the mark applied for, the applicant merely reiterates, in essence, the same arguments as those set out in paragraphs 65 and 66 above. As regards the ‘pastry’ covered by the mark applied for, the applicant claims that it is not in competition with ‘couscous (semolina)’ since those goods belong to different sectors of the food industry and have specific distribution channels and publics, neither of which overlap. In addition, the applicant takes the view that the average consumer will not expect the goods covered by the earlier mark to be manufactured by the same undertaking as the goods in Class 30 covered by the mark applied for. Lastly, the applicant reiterates, in essence, the same arguments as those set out in paragraph 66 above. As regards the ‘prepared meals excluding meals which contain couscous; pastry dishes and pasta dishes excluding couscous; convenience food (excluding couscous); canned pasta foods excluding couscous’ covered by the mark applied for, the applicant claims, in essence, that those goods are different from ‘couscous (semolina)’ in so far as it deliberately excluded couscous from the goods referred to in the application for registration. Furthermore, the applicant takes the view that, contrary to what was stated by the Board of Appeal, meals excluding semolina do not necessarily consist of alternative carbohydrates but may consist only of meat or fish. Lastly, the applicant reiterates, in essence, its arguments as set out in paragraph 66 above. As regards the ‘rice’ covered by the mark applied for, the applicant reiterates, in essence, the same arguments as those set out in paragraph 65 above. The applicant adds that, unlike rice, semolina is not suitable for persons with a gluten intolerance. Lastly, the applicant claims that it is clear from EUIPO’s decision-making practice that the Opposition Division and a Board of Appeal considered that ‘rice’ was not similar to ‘preparations made from cereals’. In addition, EUIPO’s research tool for assessing the similarity between goods and services, when comparing ‘rice’ with ‘semolina’, referred to the comparison between ‘flour’ and ‘rice’, which appear to be dissimilar. As regards, lastly, the ‘flour’ covered by the mark applied for, the applicant reiterates, in essence, the same arguments as those set out in paragraph 65 above and points out that flour is not generally consumed without further processing, contrary to semolina which is often sold ready to be consumed. In addition, at the hearing the applicant submitted that, before the Opposition Division, the opponent – now the intervener before the Court – did not make substantive arguments as regards ‘flour’. EUIPO and the intervener challenge the admissibility of that argument. EUIPO and the intervener dispute the applicant’s arguments. However, as regards ‘pastry’ and ‘pastry dishes excluding couscous’, EUIPO does not share the Board of Appeal’s assessment. It takes the view that those terms refer generally to sweet baked foodstuffs made of a mixture of flour, fat and water and often filled with fruit or cream. In its view, even if it cannot be ruled out that pastries may contain couscous, the goods in question differ as regards their essential characteristics and are recognised by consumers as different types of foodstuffs consumed in different circumstances. They share neither the same nature nor the same purpose and they also have a different method of use, since couscous cannot be consumed immediately but requires further preparation. In addition, they are usually produced by different undertakings and are sold in different sections of supermarkets or in different shops. The intervener, for its part, takes the view that the Board of Appeal correctly assessed the similarity between ‘couscous (semolina)’ and ‘pastry’. In its view, those goods have the same nature or the same main ingredient, since many oriental pastries are composed of semolina. They are also complementary goods since they are used alternatively in prepared meals and are sold using the same distribution channel. Furthermore, EUIPO considers that ‘couscous (semolina)’ displays a very low degree of similarity with ‘savoury snacks’. As for ‘prepared meals excluding meals which contain couscous; pasta dishes excluding couscous; convenience food (excluding couscous); canned pasta foods excluding couscous; baked foodstuffs’, it maintains that their degree of similarity with ‘couscous (semolina)’ is low. First, it must be borne in mind that, before the Opposition Division, the applicant did not request proof of genuine use of the earlier mark for ‘flour’ (see paragraphs 8 to 10 above). In addition, in its written pleadings before the Court it did not dispute the Board of Appeal’s assessments regarding that genuine use or the conclusions of those assessments as regards the inclusion of those goods in the goods covered by the earlier mark for the purpose of assessing the similarity of the goods (contested decision, paragraphs 20 and 21). Without it being necessary to rule on the admissibility of the argument raised by the applicant at the hearing that, before the Opposition Division, the opponent had not made substantive arguments as regards ‘flour’, it should be borne in mind that the Board of Appeal considered, to the extent necessary, that the ‘flour’ covered by the mark applied for was similar to ‘couscous (semolina)’ (Class 30), since the term ‘flour’ includes semolina and the goods in question have the same nature and a similar purpose (contested decision, paragraph 31). ‘Flour’ and ‘couscous (semolina)’, which include semolina, are both meal – fine or otherwise – of wheat or possibly other grains. ‘Flour’ and ‘couscous (semolina)’ therefore have the same nature and a similar purpose, as they are used in the preparation of various dishes, in particular oriental ones. In addition, ‘flour’ and ‘couscous (semolina)’ are directed at the same public and can be manufactured by the same producers. That assessment is not called into question by the arguments put forward by the applicant, which merely suggests that ‘flour’ and ‘couscous (semolina)’ differ in their nature, their purpose and their producers, that they target a different public by means of different distribution channels and that they are neither complementary nor in competition with each other, without, however, substantiating its assertions, and which claims that ‘flour’ is generally not consumed without further processing, unlike ‘couscous (semolina)’, which is often sold ready to be consumed. However, the latter does require preparation, even if it is a simple preparation, which, although different to the preparation ‘flour’ requires, cannot be sufficient to remove any similarity between those goods. Second, it must be recalled that the Board of Appeal considered, in the first place, as regards the ‘pastry’ covered by the mark applied for, that those goods could consist mainly of ‘couscous (semolina)’ and that those goods were similar to an average degree, since they had the same nature, the same purpose and the same method of use and, in the second place, as regards the ‘pastry dishes excluding couscous’ covered by that mark, that they were similar to ‘couscous (semolina)’ since, even if they expressly excluded couscous, they mainly consisted of other food products such as rice, quinoa or pasta, and they shared the same purpose and the same method of use and were in competition with each other (contested decision, paragraphs 27 and 28). It should be noted that, in various respects, there is a certain degree of similarity between ‘pastry’ and ‘pastry dishes excluding couscous’, on the one hand, and ‘couscous (semolina)’, on the other. ‘Pastry’ and ‘pastry dishes excluding couscous’ could include savoury dishes, such as savoury tarts and quiches, which may be made of meat, fish or vegetables and could include as their main ingredient other food products such as rice, quinoa or pasta, with the result that, as the Board of Appeal stated, those goods and the goods covered by the earlier mark have the same purpose, the same method of use and are in competition with each other. It must then be noted that ‘couscous (semolina)’ may, in some cases, be an ingredient of the goods in Class 30 covered by the mark applied for, as for example in certain pastries, as EUIPO acknowledges. It should, next, be pointed out that the goods in Class 30 covered by the mark applied for belong to the same category of food products, namely that of foodstuffs ready to be consumed which are already prepared (‘pastry’) or can be quickly prepared (‘pastry dishes excluding couscous’), just like ‘couscous (semolina)’. It must therefore be held that the goods in question have the same nature. They also have the same purpose, in so far as they are intended for human consumption and seek to satisfy nutritional needs. Since ‘pastry’ and ‘pastry dishes excluding couscous’, on the one hand, and ‘couscous (semolina)’, on the other, have the same nature and the same purpose, it must be held that they display a minimal degree of similarity, without it being necessary to further examine their method of use or other factors for comparison. In other words, it is possible to assume that the goods in question are similar at least to the ‘very low’ degree that EUIPO maintains, as regards the goods in Class 30 covered by the mark applied for, only for ‘savoury snacks’. The reasoning set out in paragraphs 100 to 104 above also applies to the ‘savoury snacks’ covered by the mark applied for, which are similar to ‘couscous (semolina)’ at least to a ‘very low’ degree. As regards ‘prepared meals excluding meals which contain couscous; … pasta dishes excluding couscous; convenience food (excluding couscous); canned pasta foods excluding couscous’, it must be recalled that the Board of Appeal considered that they were similar to ‘couscous (semolina)’ even if they explicitly excluded couscous, since they mainly consisted of other food products such as rice, quinoa or pasta and the goods at issue had the same purpose and method of use and were in competition with each other (contested decision, paragraph 28). Those findings are not called into question by the applicant’s arguments. The applicant submits that those goods are different from ‘couscous (semolina)’ since it excluded couscous from the goods referred to in the application for registration. However, as EUIPO correctly notes, a limitation in the list of goods – in this case, the exclusion of couscous – does not, on its own, preclude a finding of similarity between the goods (see judgment of 16 May 2017, AW v EUIPO – Pharma Mar (YLOELIS) , T‑85/15, not published, EU:T:2017:336 , paragraph 31 and the case-law cited). As EUIPO maintains, the goods in Class 30 covered by the mark applied for are prepared foodstuffs containing mainly ingredients of plant origin, such as cereals, excluding couscous. As a result, they include ready-to-eat meals such as prepared pasta dishes, various rice-based prepared meals, noodles, quinoa salad, and so on. The goods covered by the earlier mark, for their part, consist of crushed and steamed semolina. As a result, the goods in question belong to the same type of plant-based food products, namely, convenience food, which is either prepared or can be prepared relatively quickly, which means they have the same nature. They also have the same purpose in so far as they are intended for human consumption and seek to satisfy nutritional needs. Since ‘prepared meals excluding meals which contain couscous; … pasta dishes excluding couscous; convenience food (excluding couscous); canned pasta foods excluding couscous’ have the same nature and the same purpose as ‘couscous (semolina)’, it must be found that there is a minimal degree of similarity between them, without it being necessary to further examine their method of use or other factors for comparison. In other words, it is possible to assume that the goods in question are similar at least to the ‘very low’ degree that EUIPO maintains, as regards the goods in Class 30 covered by the mark applied for, only for ‘savoury snacks’. The applicant also claims that meals excluding semolina do not necessarily consist of alternative carbohydrates but may consist of only meat or fish. That claim is, however, ineffective, since, while it is true that the meals covered may consist of only meat or fish, the fact remains that their principal ingredient may also be rice, pasta or quinoa, and those products are therefore in competition with ‘couscous (semolina)’. In addition, it should be noted, as EUIPO does, that the goods in Class 30 covered by the mark applied for contain mainly ingredients of plant origin, as is apparent from the explanatory notes of the Nice Classification. As regards the ‘baked foodstuffs’ covered by the mark applied for, the Board of Appeal considered that they were similar to ‘couscous (semolina)’ to an average degree, since they have the same nature, the same purpose and the same method of use as the latter, and they may mainly consist of couscous (contested decision, paragraphs 27 and 28). In its response, EUIPO wrongly included ‘baked foodstuffs’ among the goods in Class 30 covered by the mark applied for in respect of which couscous had been expressly excluded. It provides no arguments concerning those foodstuffs specifically. First, the Board of Appeal did not err in considering that ‘baked foodstuffs’ could consist mainly of ‘couscous (semolina)’. Second, the Board of Appeal was fully entitled to consider that ‘baked foodstuffs’ had the same nature and the same purpose as ‘couscous (semolina)’. ‘Baked foodstuffs’ belong to the same category of food products, namely foodstuffs ready to be consumed which are already prepared or can be quickly prepared, and therefore have the same nature as ‘couscous (semolina)’. They also have the same purpose as ‘couscous (semolina)’ in so far as they are also intended for human consumption and seek to satisfy nutritional needs. Since ‘baked foodstuffs’ have the same nature and the same purpose as ‘couscous (semolina)’, it must be found that there is a minimal degree of similarity between them, without it being necessary to further examine their method of use or other factors for comparison. In other words, it is possible to assume that the goods in question are similar at least to the ‘very low’ degree that EUIPO maintains, as regards the goods in Class 30 covered by the mark applied for, only for ‘savoury snacks’. Lastly, as regards the ‘rice’ covered by the mark applied for, the Board of Appeal considered that it was similar, at least to an average degree, to ‘couscous (semolina)’ (Class 30), since those goods serve the same purpose and have the same method of use, are in competition with each other, use the same distribution channels and target the same end consumers (contested decision, paragraph 29). As EUIPO and the intervener contend, it should be found that there is an objective degree of similarity between the goods in question, which (i) are cereals, the method of use of which, especially the way in which they are cooked, is similar, (ii) can be found close to each other in the same sections of supermarkets, and (iii) have the same public. The applicant adduces no evidence capable of substantiating its claims that the goods have a different nature, a different purpose and different producers, do not target the same public, use different distribution channels and are neither complementary nor in competition with each other. The applicant merely claims, first, that semolina, unlike rice, is not a product suitable for persons with a gluten intolerance, without explaining to what extent that calls into question the similarity of the goods. The applicant claims, second, that it is apparent from EUIPO’s decision-making practice that the Opposition Division and a Board of Appeal considered that ‘rice’ was not similar to ‘preparations made from cereals’ and that EUIPO’s research tool for assessing the similarity between goods and services, when comparing ‘rice’ with ‘semolina’, referred to the comparison between ‘flour’ and ‘rice’, which appear to be dissimilar. Nevertheless, it must be borne in mind that, in accordance with settled case-law, the question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of any previous practice of the Boards of Appeal or Opposition Divisions (judgment of 13 December 2016, APAX , T‑58/16, not published, EU:T:2016:724 , paragraph 43). Moreover, the goods compared by the Board of Appeal are ‘rice’ and ‘couscous’, not ‘rice’ and ‘preparations made from cereals’ or even ‘rice’ and ‘flour’. The applicant’s claims are therefore, in any event, ineffective. In conclusion, it must be found that the goods in Class 30 covered by the mark applied for are similar to ‘couscous (semolina)’ at least to a very low degree, except as regards ‘rice’, which is similar to an average degree. (c) The services in Class 35 As regards the ‘food retail services; retail services relating to foodstuffs’ covered by the mark applied for, the applicant reiterates, in essence, its line of argument set out in paragraph 65 above. Furthermore, the applicant claims that the earlier mark refers to a specific type of food and that food retail services and retail services relating to foodstuffs are therefore much broader categories with no close link to semolina. Lastly, the applicant takes the view that it is apparent from EUIPO’s decision-making practice and from the case-law that services in Class 35 would be similar to a low degree only if they concerned goods identical to those with which they are compared. As regards ‘information, advisory and consultancy services in relation to the aforesaid’, the applicant reiterates, in essence, its arguments set out in paragraphs 65 and 130 above. EUIPO and the intervener dispute the applicant’s arguments. Nevertheless, as regards ‘information, advisory and consultancy services in relation to the aforesaid’, EUIPO takes the view that the goods and services in question are different, contrary to what was stated by the Board of Appeal. EUIPO takes the view that information, advisory and consultancy services refer to providing information, advice, and consultations that are tailored to the circumstances or needs of a particular user and that enable specific courses of action to be recommended to the user in question. Those services, therefore, are provided to undertakings involved in the food retail services sector and are intended to support or to improve their business. According to EUIPO, although those services are inherent or closely related to retail services, account should be taken of the fact that it is not common in the market for the producers of foodstuffs to provide such services to retail companies. On the contrary, such services are usually provided by companies specialised in the relevant field. Therefore, the goods and services in question have a different nature, purpose and method of use, and are addressed to a different public: ‘couscous (semolina)’ targets the general public whilst ‘information, advisory and consultancy services in relation to the aforesaid’ are aimed at professionals in the retail sector. The intervener, for its part, maintains that the services in question are complementary in so far as the goods in question necessarily require that those services be offered. The Board of Appeal considered that there was an average degree of similarity between the contested ‘food retail services; retail services relating to foodstuffs’ (Class 35) and ‘couscous (semolina)’ (Class 30). In its view, there was a close link between the goods and services in question, since ‘couscous (semolina)’ fell under the generic term ‘food/foodstuffs’ and the latter were indispensable to the provision of those retail services. In addition, such services, which are provided with the aim of selling certain specific goods, would make no sense without the goods. There is, therefore, according to the Board of Appeal, a complementary relationship that establishes an average degree of similarity (contested decision, paragraph 32). As regards ‘information, advisory and consultancy services in relation to the aforesaid’, the Board of Appeal considered that they were inherent to those retail services and, for this reason, concluded that there was an average degree of similarity (contested decision, paragraph 33). In that regard, it must be held that the Board of Appeal was fully entitled to conclude that there was an average degree of similarity as regards ‘food retail services; retail services relating to foodstuffs’, since there is in fact a complementary relationship between the goods and services in question (see, to that effect, judgments of 13 November 2014, Natura Selection v OHIM – Afoi Anezoulaki (natur) , T‑549/10, not published, EU:T:2014:949 , paragraph 33, and of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI) , T‑512/15, EU:T:2016:527 , paragraphs 55 to 57). That conclusion is not called into question by the applicant’s unsubstantiated line of argument that the goods and services in question have a different nature, a different purpose and different producers, do not target the same public, use different distribution channels and are neither complementary nor in competition with each other. Moreover, as regards the applicant’s arguments regarding EUIPO’s decision-making practice, it is sufficient to recall the case-law referred to in paragraph 125 above. Lastly, as regards the applicant’s arguments that it follows from the case-law that the services in Class 35 are similar to a low degree only if they concern goods identical to those in question, it should be borne in mind that, in accordance with the case-law, the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark (see judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) , T‑133/05, EU:T:2006:247 , paragraph 29 and the case-law cited). ‘Couscous (semolina)’ is a specific type of food, as the applicant concedes, and is covered by the broad category of food and foodstuffs, which are the subject matter of the food retail services covered by the mark applied for. Furthermore, in any event, as EUIPO contends, similarity can be found between retail services of certain goods and goods which are not strictly identical to the goods subject to retail (see, to that effect, judgments of 9 June 2010, Muñoz Arraiza v OHIM – Consejo Regulador de la Denominación de Origen Calificada Rioja (RIOJAVINA) , T‑138/09, EU:T:2010:226, paragraphs 41 to 44, and of 5 May 2015, Lidl Stiftung v OHIM – Horno del Espinar (Castello) , T‑715/13, not published, EU:T:2015:256, paragraphs 29 to 35). Therefore the Board of Appeal did not err in stating that there was a certain degree of complementarity between the goods and services in question and concluding that there was an average degree of similarity between them. Moreover, the Board of Appeal also did not err in concluding that ‘information, advisory and consultancy services in relation to the aforesaid’ were inherent to the contested retail services and that it was therefore necessary also to find that there was a degree of similarity between ‘information, advisory and consultancy services in relation to the aforesaid [food retail services; retail services relating to foodstuffs]’, on the one hand, and ‘couscous’, on the other. That assessment is not called into question by the arguments put forward by the applicant, which merely suggests that the goods and services differ in their nature, their purpose and their producers, that they target a different public by means of different distribution channels and that they are neither complementary nor in competition with each other, without, however, substantiating its assertions. As regards the strength of the degree of similarity, while it is not inconceivable, as EUIPO contends, that it is not common in the market for the producers of foodstuffs to provide information, advisory and consultancy services to retail companies, which are usually provided by companies specialised in the relevant field, and that the goods and services in question have a different nature, purpose and method of use, and are addressed to a different public, the fact remains that EUIPO acknowledges that information, advisory and consultancy services are indeed inherent or closely related to retail services. It therefore cannot be ruled out that there is at least a very low degree of similarity between information, advisory and consultancy services, on the one hand, and couscous, on the other. 3. The comparison of the signs It must be borne in mind that the Board of Appeal considered, as regards the comparison of the signs, that the marks were visually highly similar and, phonetically, displayed a high degree of similarity and, lastly, even if both or one of the marks were perceived to be a female first name, that the conceptual comparison remained neutral, as a first name is not capable of conveying any kind of concept (contested decision, paragraphs 36 to 38). There is no reason to call into question that analysis by the Board of Appeal as regards the visual and phonetic comparison of the signs, which, moreover, is not contested by any of the parties. In addition, the parties have adduced no evidence capable of calling into question the Board of Appeal’s finding that the conceptual comparison is neutral. 4. The likelihood of confusion 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, VENADO with frame and others , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). In the present case, with regard to the goods in Class 29 covered by the mark applied for, they are similar to the goods covered by the earlier mark at least to a very low degree. The goods in Class 30 covered by the mark applied for are similar to the goods covered by the earlier mark at least to a very low degree, except as regards ‘rice’, which is similar to an average degree. Contrary to what EUIPO maintains, there is no reason to find a lack of similarity as regards ‘pastry’ and ‘pastry dishes excluding couscous’. Regarding the services in Class 35 covered by the mark applied for, they are similar to the goods covered by the earlier mark to an average degree as regards ‘food retail services; retail services relating to foodstuffs’. As regards ‘information, advisory and consultancy services in relation to the aforesaid’, at least a very low degree of similarity with those goods cannot be ruled out. As regards the comparison of the signs, it must be found that the marks are visually highly similar and display a high degree of phonetic similarity and that their conceptual comparison remains neutral. In circumstances such as those of the present case, when at least a very low degree of similarity has been found between the goods and services covered, it is nevertheless offset by the high degree of similarity between the marks at issue. Accordingly, the Board of Appeal did not err in considering that there was a likelihood of confusion for all the goods in Classes 29 and 30 and some services in Class 35 covered by the application for registration. IV. Conclusion It follows from all of the foregoing that the action must be dismissed in its entirety. Costs 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. In the present case, since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the intervener, in accordance with the form of order sought by the latter. Although EUIPO endorsed the form of order sought by the applicant as regards certain goods and services in respect of which registration was sought, it maintains its position as defendant in the present proceedings (see, to that effect, judgments of 30 June 2004, BIOMATE , T‑107/02, EU:T:2004:196, paragraphs 35 and 97, and of 6 June 2018, SALMEX , T‑803/16, not published, EU:T:2018:330 , paragraph 35). Therefore, in the light of the dismissal of the action in its entirety (see paragraph 155 above), it has not been unsuccessful within the meaning of Article 134(1) of the Rules of Procedure. It must, however, be ordered to bear its own costs in accordance with the form of order whereby it contends that each party should be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders BRF Singapore Foods Pte Ltd to bear its own costs and to pay those incurred by Tipiak; 3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs. Marcoulli Frimodt Nielsen Schwarcz Delivered in open court in Luxembourg on 25 November 2020. E. Coulon M. van der Woude Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII