Hikari Miso v OHMI - Nishimoto Trading (Hikari) (Judgment) [2015] EUECJ T-751/14 (11 December 2015)

Judgment Background to the dispute On 2 December 2010, the applicant, Hikari Miso Co. Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). Registration as a mark was sought for the word sign Hikari. The goods in respect of which registration was sought are in Classes 29 and 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: – Class 29: ‘Instant or pre-cooked miso soup’; – Class 30: ‘Miso (soya bean paste [condiment])’. The Community trade mark application was published in Community Trade Marks Bulletin No 1/2011 of 3 January 2011. On 11 February 2011, the intervener, Nishimoto Trading Co. Ltd, filed a notice of opposition under Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based, inter alia, on the following earlier marks: – United Kingdom word mark Hikari, registered on 23 November 1990 under No B 1 328 523 for goods in Class 30, including, inter alia, ‘rice’, and – Community word mark Hikari, registered on 6 February 2001 under No 1 052 075 for goods in Class 30, including, inter alia, ‘five grain cooked rice’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. On 2 October 2013, the Opposition Division rejected the opposition. On 2 December 2013, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. By decision of 8 September 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the appeal and rejected the Community trade mark application in its entirety. In particular, it held that the low degree of similarity of the goods in question was outweighed by the fact that the signs at issue were identical, that, moreover, the inherent distinctive character of the earlier mark was average and that there was therefore a likelihood of confusion. Procedure and forms of order sought by the parties The applicant claims that the Court should: – annul the contested decision; – order OHIM to pay the costs, including those incurred in the proceedings before the Board of Appeal. OHIM and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its action, the applicant relies on two pleas in law, the first of which alleges infringement of Article 75 of Regulation No 207/2009 and the second of which alleges infringement of Article 8(1)(b) of that regulation. The plea in law alleging infringement of Article 75 of Regulation No 207/2009 The applicant submits that the contested decision fails to state reasons as regards the inherent distinctive character of the earlier mark and the similarity of the goods. In particular, it submits that the Board of Appeal systematically rejected its arguments without ever responding to them and annulled the decision of the Opposition Division without setting out any specific criticisms as regards that decision. OHIM and the intervener dispute the applicant’s arguments. It should be recalled that, under the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. It is settled case-law that that obligation has the same scope as that laid down in the second paragraph of Article 296 TFEU and that the statement of reasons required by that provision must disclose in a clear and unequivocal manner the reasoning followed by the body which adopted the measure in question. The purpose of the obligation to state the reasons for OHIM’s decisions is twofold: to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision. However, in stating the reasons for the decisions which they are called upon to make, the Boards of Appeal are not obliged to take a view on every argument submitted to them by the parties. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 30 April 2014 in Beyond Retro v OHIM — S&K Garments (BEYOND VINTAGE) , T‑170/12, EU:T:2014:238, paragraph 88 and the case-law cited). In the present case, the statement of reasons for the contested decision describes in a readily understandable manner all the steps taken in examining whether there was a likelihood of confusion: it sets out the applicable legislative provisions and describes the position under the relevant case-law in paragraph 20; it goes on to determine the relevant public in paragraph 21; and then undertakes a detailed analysis of the similarity of the goods concerned in paragraphs 23 to 28 and of the signs at issue in paragraph 29. The conclusions reached as to the likelihood of confusion, set out in paragraph 31 of the contested decision, are thus amply supported by the reasoning leading up to those findings. In particular, contrary to the applicant’s submission, the statement in paragraph 31 of the contested decision that ‘[i]n the absence of any meaning of the earlier trade mark its inherent distinctive character is assessed as being average’ is not unclear. That statement is duly reasoned, since the Board of Appeal indicated that it was because of the absence of meaning of the earlier trade mark that it came to the conclusion that the inherent distinctive character of that mark was average. Accordingly, the first plea in law, alleging an infringement of Article 75 of Regulation No 207/2009, must be rejected. The plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 The applicant submits, in essence, that the Board of Appeal erred in finding a low degree of similarity between the goods in question, and a likelihood of confusion between the marks at issue. It does not, however, dispute the Board of Appeal’s conclusions regarding the identity of the marks at issue. OHIM and the intervener dispute the applicant’s arguments. Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with, or similarity to, an 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. Furthermore, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks’ means Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community 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 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, ECR, 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 judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel) , T‑316/07, ECR, EU:T:2009:14 , paragraph 42 and the case-law cited). Where the protection of the earlier trade mark extends to the entirety 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 a Community 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 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others) , T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397 , paragraph 76 and the case-law cited). Since the Board of Appeal based its decision on a thorough analysis of the earlier United Kingdom mark registered under No B 1 328 523, it is appropriate to begin the examination on the basis of that mark. The relevant public The applicant submits that the Board of Appeal did not identify the relevant public and therefore could not have carried out an informed analysis of the likelihood of confusion. 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 products 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 in Mundipharma v OHIM — Altana Pharma (RESPICUR) , T‑256/04, ECR, EU:T:2007:46 , paragraph 42 and the case-law cited). It can be seen from paragraph 21 of the contested decision that the Board of Appeal found that, since the goods in question were addressed to end consumers and purchased on a regular basis, and since the earlier mark examined in the first place was a United Kingdom mark, the relevant public was composed of end consumers in the United Kingdom, who were reasonably observant and circumspect with respect to those goods. In paragraph 31 of the contested decision, the Board of Appeal noted that the level of attention of consumers is not particularly high in respect of goods of everyday use such as those at issue. Therefore, contrary to the applicant’s submission, the Board of Appeal defined the relevant public. Moreover, in view of the matters referred to in paragraph 29 above, the Board of Appeal’s definition of the relevant public must be confirmed. The comparison of the goods The goods to be compared are ‘Instant or pre-cooked miso soup’, in Class 29, and ‘Miso (soya bean paste [condiment])’, in Class 30, covered by the mark applied for, and ‘rice’, in Class 30, covered by the earlier United Kingdom mark. The applicant submits, in the first place, that the comparison of goods by the Board of Appeal shows an ‘inherent flaw in the logic and reasoning adopted’ and an ‘inherent inconsistency in their approach and progression of their analysis’. In the second place, the applicant argues that the Board of Appeal erred in finding even a low degree of similarity between the goods in question. The applicant submits in that respect that the Board of Appeal’s conclusions regarding the similarity of the goods are incorrect and are not based on any evidence. OHIM and the intervener dispute the applicant’s arguments. As regards, in the first place, the alleged inconsistency in the reasoning adopted by the Board of Appeal, it must be noted that the applicant refers solely, in that respect, to paragraph 16 of the contested decision, according to which ‘[t]he similarity between the goods is outweighed by the identity of the signs and the inherent distinctive character of the earlier trade mark’. In that regard, it must be observed that it is clear from a reading of the rest of the contested decision, and, in particular, from paragraph 31 where the Board of Appeal found that the identity of the signs ‘outweigh[ed] the low degree of similarity of the goods’, that the wording of that sentence in paragraph 16 of the contested decision is due to a typographical error, in that the adjective ‘low’ is omitted before the term ‘similarity’. Contrary to the applicant’s assertions, this constitutes neither an inconsistent approach nor flawed reasoning on the part of the Board of Appeal. Furthermore, the fact that, in that sentence, the Board of Appeal set out a solution before expanding upon it also does not constitute a flaw in the contested decision. Moreover, it was found above that the reasoning of the contested decision was set out in a comprehensible manner at all stages of the examination of whether there was a likelihood of confusion and it appears that the applicant was in a position to defend itself on the points in dispute. The applicant’s argument must therefore be rejected. As regards, in the second place, the examination of the similarity of the goods in question, settled case-law provides that all the relevant factors relating to those goods 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 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) , T‑443/05, ECR, EU:T:2007:219 , paragraph 37 and the case-law cited). As OHIM rightly pointed out in its reply, the degree of similarity of the goods is a matter of law which must be assessed ex officio by OHIM even if the parties do not comment on it. The criteria for applying a relative ground for refusal or any other provision relied on in support of arguments put forward by the parties are naturally part of the matters of law submitted for examination by OHIM. It should be stated, in that regard, that a matter of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 207/2009 having regard to the facts, evidence and arguments provided by the parties. Thus the matters of law put forward before the Board of Appeal also include any matters of law which must necessarily be examined for the purpose of assessing the facts and evidence relied on by the parties and for the purpose of allowing or dismissing the arguments, even if the parties have not put forward a view on those matters (see, to that effect, judgment of 1 February 2005 in SPAG v OHIM — Dann and Backer (HOOLIGAN) , T‑57/03, ECR, EU:T:2005:29, paragraph 21). That is the situation in the present case as regards the matter of whether the goods covered by the signs at issue are similar, in the context of the examination of the ground of relative refusal derived from Article 8(1)(b) of Regulation No 207/2009. The applicant also criticises the Board of Appeal for relying on an article from an online encyclopaedia, submitted as evidence by the intervener. The applicant submits that it is well known that the information on the site in question may or may not be correct. In that respect, it is settled case-law that information based on articles from a collective encyclopaedia established on the Internet, the content of which may be amended at any time and in certain cases by any visitor, even anonymously, must be regarded as uncertain (see, to that effect, judgments of 10 February 2010 in O2 (Germany) v OHIM (Homezone) , T‑344/07, ECR, EU:T:2010:35, paragraph 46, and 16 November 2011 in Dorma v OHIM — Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS) , T‑500/10, EU:T:2011:679, paragraph 55). However, it can be seen from the contested decision that, apart from that online encyclopaedia article, the Board of Appeal based the finding of the (low degree of) similarity between the goods in question on various other pieces of evidence. In those circumstances, the fact that it also took account of information based on that article is not such as to vitiate the contested decision. In addition, the applicant criticises the Board of Appeal’s finding that ‘[m]iso is also produced from rice; hence the goods [covered by the mark applied for] have the goods [covered by] the earlier trade mark as their (main) ingredient.’ In that respect, without it being necessary to examine the complaint alleging that the Board of Appeal relied on facts which are not well known, it suffices to point out that, as the Board of Appeal noted in the contested decision, there are clear links between the goods in question, since they are both food products, they may have the same distribution channels, they may, in some circumstances, be available close to each other in supermarkets, and they both form part of Japanese cuisine — miso and miso soups as Japanese specialities and rice as a basic element of Japanese cuisine. Those factors, which are not disputed by the applicant, constitute a similarity between the goods in question. It should be added, moreover, that those goods are also complementary, since a Japanese meal including miso soup is likely to include rice also. However, the Board of Appeal also rightly pointed out certain differences between the goods, such as the fact that rice is widely used in Europe, and in particular independently of Asian cuisine, the fact that the goods covered by the mark applied for are liquid, powdered or sold as a paste, whereas the rice covered by the earlier mark is solid, and that their purpose is not identical, since the goods in Class 30 covered by the mark applied for serve to flavour food, whereas the goods covered by the earlier mark serve to nourish the consumer. In those circumstances, it rightly considered that, in view of those differences, the degree of similarity of the goods in question should be classified as low. It is also necessary to reject the applicant’s argument alleging that, if the use of the earlier Community trade mark for ‘five grain cooked rice’ was held to be insufficient by the Opposition Division to maintain the mark in respect of other rice products, such as rice flour, that proves that a raw product cannot be considered similar to a processed product made from that raw product. It suffices to note, in that respect, that the proof of use of a mark for some categories of goods, on the one hand, and the analysis of the similarities of goods in the context of opposition proceedings, on the other, are two different issues, which give rise to different challenges and are based on analysis criteria specific to each issue. It cannot therefore be maintained that the goods in question in the present case are not similar because the use of the earlier Community trade mark for one of those goods was not found to constitute use of that mark for the other. The comparison of the signs 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 in OHIM v Shaker , C‑334/05 P, ECR, EU:C:2007:333 , paragraph 35 and the case-law cited). In the present case, the Board of Appeal rightly considered, without being contradicted by the parties, that the signs at issue were identical. The likelihood of confusion The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, 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 (judgments of 29 September 1998 in Canon , C‑39/97, ECR, EU:C:1998:442 , paragraph 17, and VENADO with frame and others , cited in paragraph 25 above, EU:T:2006:397 , paragraph 74). The Board of Appeal rightly held that, in view of the foregoing considerations and of the average inherent distinctive character of the earlier mark, there was a likelihood of confusion in that the consumers interested in both types of goods might be led to think that the goods originated from the same undertaking. In particular, it must be emphasised that a similarity, even faint, between the goods in question is liable to lead the targeted public to believe that, if the goods bear an identical or similar sign, they have originated under the control of a single undertaking which is responsible for their quality. The applicant argues that there is no proof of the distinctive character of the earlier mark, which, it submits, the intervener accepted in its appeal before OHIM. First, it can be seen from the intervener’s appeal before OHIM that it in no way accepted the lack of distinctive character of the earlier mark. Moreover, the Board of Appeal rightly found that, in the absence of any meaning of the earlier mark for the end consumer in the United Kingdom, its inherent distinctive character should be regarded as average. The Board of Appeal therefore rightly found that there was a likelihood of confusion between the mark applied for and the earlier United Kingdom mark. Accordingly, the plea in law alleging an infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected, and it is not necessary to examine the earlier Community trade mark. Since none of the pleas in law relied upon by the applicant is well founded, 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM and the intervener. On those grounds, THE GENERAL COURT (First Chamber) hereby: 1. Dismisses the appeal; 2. Orders Hikari Miso Co. Ltd to pay the costs. Kanninen Pelikánová Buttigieg Delivered in open court in Luxembourg on 11 December 2015. [Signatures] * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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