Sumol + Compal Marcas v EUIPO - Jacob (Dr. Jacob's essentials) (EU trade mark - Judgment) [2020] EUECJ T-879/19 (09 September 2020)

Judgment Background to the dispute On 16 February 2015, the intervener, Mr Ludwig Manfred Jacob, 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)). Registration as a mark was sought for the following figurative sign: The goods in respect of which registration was sought are in Classes 5, 29, 30 and 32 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: ‘Pharmaceutical preparations; sanitary preparations for medical purposes; dietetic preparations adapted for medical use; nutritional supplements; food supplements for non-medical purposes’; – Class 29: ‘Weed extracts for food; alginates for culinary purposes; jellies, jams, compotes, fruit and vegetable spreads; oils and fats; processed fruits, fungi and vegetables (including nuts and pulses); dairy products and dairy substitutes; stews; fruit-based snack food; soy chips; soya [prepared]; extracts for soups; canned soups; yucca chips; prepared salads’; – Class 30: ‘Baked goods, confectionery, chocolate and desserts; ice, ice creams, frozen yoghurts and sorbets; salts, seasonings, flavourings and condiments; processed grains, starches, and goods made thereof, baking preparations and yeasts; sugars, natural sweeteners, sweet coatings and fillings, bee products; packaged tea [other than for medicinal use]; aromatic preparations for making non-medicated infusions; aromatic preparations for making non-medicated tisanes; aromatic teas [other than for medicinal use]; flowers or leaves for use as tea substitutes’; – Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages, except non-alcoholic beverages with a base of coffee or with coffee flavouring, and preparations for the aforesaid beverages’. The EU trade mark application was published in Community Trade Marks Bulletin No 056/2015 of 24 March 2015. On 24 June 2015, the applicant, Sumol + Compal Marcas, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the following earlier marks: – international registration No 860539, filed on 18 July 2005, of the word mark COMPAL ESSENCIAL, with an extension of protection to the European Union; – Portuguese registration No 426382, registered on 29 February 2008, and international registration No 969360, filed on 31 March 2009, with an extension of protection to the United Kingdom, of the following figurative mark: – Portuguese registration No 426383, registered on 6 March 2008, and international registration No 970169, filed on 31 March 2009, with an extension of protection to the United Kingdom, of the following figurative mark: – Portuguese registration No 530005, registered on 10 November 2014, of the following figurative mark: – Portuguese registration No 530007, registered on 6 August 2014, of the following figurative mark: The earlier marks No 426382 and No 426383 and the international registrations No 860539, No 969360 and No 970169 cover goods in Classes 29 and 32, corresponding, for each of those classes, to the following description: – Class 29: ‘Fruit pulp (liquid fruit paste); preserved fruits and vegetables’; – Class 32: ‘Non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’. The earlier marks No 530005 and No 530007 cover goods in Classes 5, 29 and 32, corresponding, for each of those classes, to the following description: – Class 5: ‘Food for babies, in particular: soups, fruit jams, fruit pulp (liquid fruit pastes), fruit and/or vegetable purées, fruit and/or vegetable juices, gruel’; – Class 29: ‘Fruit pulp (liquid fruit paste); preparations and purées of fruits and/or vegetables; jellies, jams, compotes; dairy beverages containing fruit or fruit juices; yoghurts; milk and other milk-based beverages, substitutes for milk products and other dairy products’; – Class 32: ‘Beers; mineral and aerated waters and other non‑alcoholic beverages; fruit and/or vegetable drinks and fruit and/or vegetable juices; syrups and other preparations for making beverages’. 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 12 September 2016, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. On 12 November 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. By decision of 11 July 2017 (‘the earlier decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. It held that, despite a low degree of similarity between the signs, the differences between them were sufficient to rule out any likelihood of confusion, even for identical goods, and that, therefore, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. On 25 September 2017, the applicant brought an action before the Court seeking annulment of the earlier decision. It argued, inter alia, that in the visual comparison the Fifth Board of Appeal had failed to take into account the impact of the differences between the colours of the mark applied for and those of the earlier colour marks. The earlier decision was annulled by the General Court on the ground that, by failing to take into account all the relevant elements of some of the earlier marks, in particular their colours, even though these might constitute additional similarities, the Fifth Board of Appeal did not compare the marks at issue in their entirety (judgment of 7 February 2019, Sumol + Compal Marcas v EUIPO – Jacob (Dr. Jacob’s essentials) , T‑656/17, not published, EU:T:2019:71 , paragraph 34). Following that judgment, the Presidium of the Boards of Appeal referred the case to the First Board of Appeal, under reference R 1025/2019‑1. By decision of 3 October 2019 (‘the contested decision’), the First Board of Appeal dismissed the appeal. The examination of the First Board of Appeal focused mainly on the comparison of the mark applied for and the earlier colour marks, namely the earlier marks No 530007 and No 426383, the latter being identical to international registration No 970169. As regards, in the first place, the earlier mark No 530007, it found, in paragraph 23 of the contested decision, that that mark was protected in Portugal and that the relevant public for the purposes of assessing the likelihood of confusion between that mark and the mark applied for consisted of consumers in that country. In paragraphs 24 and 25 of the contested decision, the First Board of Appeal found that the goods at issue were mainly non-alcoholic beverages, food products, dietetic preparations, nutritional supplements and pharmaceutical preparations. Those goods were directed at the general public and at a specialist public, such as nutritional experts. The Board of Appeal stated that the relevant public’s level of attention in relation to food products and beverages was neither low nor particularly high, whereas the relevant public’s level of attention in relation to medical products and pharmaceutical preparations in Class 5 was enhanced. In paragraphs 26 and 27 of the contested decision, the First Board of Appeal endorsed the assessment of the Opposition Division, confirmed by the Fifth Board of Appeal, concerning the comparison of the goods covered by the mark applied for and those covered by the earlier marks, noting that that analysis, according to which some goods are identical, some are similar or very similar, and some are different, had not been challenged by the parties. In paragraphs 28 to 49 of the contested decision, the First Board of Appeal carried out a visual, phonetic and conceptual comparison of the signs, concluding that they were similar to a low degree overall. When comparing the signs visually, the First Board of Appeal found, first, that the element ‘essential’ or ‘essencial’ of the earlier sign and the element ‘essentials’ of the sign applied for would be understood by consumers as referring to food products or beverages containing nutritionally important and necessary ingredients. According to the First Board of Appeal, those terms are laudatory in that they inform the public of a desirable effect of the goods in question and their inherent distinctiveness is therefore very low. The Board of Appeal noted that, on the other hand, the element ‘Dr. Jacob’s’ of the sign applied for and the term ‘compal’ of the earlier sign in question enjoyed a normal degree of inherent distinctiveness. Second, the Board of Appeal found that the consumer’s attention would be drawn to the first word of the sign applied for, namely ‘Dr. Jacob’s’, and to the first word of the earlier sign, namely ‘compal’. Third, the colour combination in the signs at issue differed. The Board of Appeal observed that the element ‘essential’ or ‘essencial’ of the earlier sign was written in white, the element ‘compal’ appeared in red and it was the orange colour of the jar that dominated. It clarified that, by contrast, the element ‘essentials’ of the sign applied for was written in different shades of green, red and orange, and that green was the dominant colour. Consequently, the Board of Appeal concluded that the signs at issue were visually similar to a low degree. When comparing the signs phonetically, the First Board of Appeal held that the rhythm and intonation of the signs were very different, the similarities being limited to the very similar pronunciation of the element ‘essential’ or ‘essencial’ of the earlier sign and the element ‘essentials’ of the sign applied for. It noted that the overall phonetic impression of the signs was not very similar, especially since the pronunciation of the initial parts, namely the elements ‘compal’ of the earlier sign and ‘Dr. Jacob’s’ of the sign applied for, were different. It consequently concluded that the signs at issue were phonetically similar to a low degree. When comparing the signs conceptually, the First Board of Appeal found that the signs at issue were similar as regards the element ‘essencial’ or ‘essential’ of the earlier sign and the element ‘essentials’ of the sign applied for. It stated that the degree of similarity was, however, low in the overall impression produced by those signs, having regard, in particular, to the very weak distinctive character of those terms. Furthermore, the element ‘Dr. Jacob’s’ of the sign applied for evoked additional and different associations in the sense that the consumer would assume that the goods originate from a person named ‘Doctor Jacob’. Consequently, the First Board of Appeal concluded that the signs at issue were conceptually similar to a low degree. In paragraph 51 of the contested decision, the First Board of Appeal found that the inherent distinctiveness of the earlier mark, taken as a whole, was normal. In paragraphs 52 to 62 of the contested decision, it carried out a global assessment of the likelihood of confusion. Concerning the goods regarded as being identical, it found that, due to the differences in the distinctive elements of the marks at issue and their different overall impression, consumers would not confuse their origin. The First Board of Appeal found that that conclusion was a fortiori valid for the goods regarded as being similar. As regards, in the second place, the mark applied for and the earlier mark No 426383, which is identical to registration No 970169, the First Board of Appeal carried out a comparison of the signs at issue in paragraphs 63 to 72 of the contested decision, concluding that they were phonetically and conceptually similar to a low degree and that they were visually similar at most to a medium degree. That analysis broadly follows that summarised in paragraphs 22 to 24 above. It concluded that, because of the differences in the distinctive elements of the signs and their different overall impression, consumers would not confuse the origin of the goods in question, even for identical goods. In paragraphs 73 to 79 of the contested decision, the First Board of Appeal completed its analysis by carrying out a comparison of the mark applied for and the other earlier marks. Overall, it concluded, in paragraphs 80 and 81 of the contested decision, that the Opposition Division acted correctly in finding that the marks at issue were not confusingly similar within the meaning of Article 8(1)(b) of Regulation 2017/1001. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO and the intervener to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should: – dismiss the action; – order the applicant to pay the costs of the present action and of the action which gave rise to the judgment of 7 February 2019, Dr. Jacob’s essentials (T‑656/17, not published, EU:T:2019:71 ). Law The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, claiming that the First Board of Appeal erred in finding that there was no likelihood of confusion between the marks at issue. On the one hand, it argues that the First Board of Appeal incorrectly assessed the degree of similarity between the signs at issue, that is to say, their visual similarity. On the other, it submits that the First Board of Appeal did not correctly apply the rule of interdependence. EUIPO and the intervener dispute the applicant’s arguments. As a preliminary point, it should be noted that, although the First Board of Appeal states in the contested decision that it is applying the provisions of Regulation 2017/1001, those references should be understood, as regards the substantive rules, as in fact relating to the identical provisions of Regulation No 207/2009. Next, it should be observed that the applicant does not dispute the definition of the relevant public and its level of attention, or the comparison of the goods. It calls into question only the First Board of Appeal’s finding that there is no likelihood of confusion in respect of some of the goods in Classes 29 and 32. These include, first, ‘beverages’ in Class 32, which the Board of Appeal regarded, in paragraph 27 of the contested decision, as being identical to ‘non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ covered by the earlier marks. They include, second, ‘jellies, jams, compotes; fruit and vegetable spreads; processed fruits, fungi and vegetables (including nuts and pulses); stews; fruit-based snack food; extracts for soups; canned soups; prepared salads’ in Class 29, which the Board of Appeal regarded, in that same paragraph of the contested decision, as being identical or highly similar to the goods ‘fruit pulp (liquid fruit paste); preserved fruits and vegetables’ covered by the earlier marks. Furthermore, the applicant bases its arguments, alleging, in essence, a high degree of visual similarity of the signs at issue and the existence of a likelihood of confusion, on all of the earlier marks listed in paragraph 6 above. Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered, if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the 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). 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). For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide) , T‑153/03, EU:T:2006:157 , paragraph 35 and the case-law cited). 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). The applicant’s arguments must be examined in the light of those considerations. In the first place, the applicant submits that the element ‘essencial’ or ‘essential’ of the earlier marks and the element ‘essentials’ of the mark applied for are visually dominant, since those elements draw the consumer’s attention by virtue of their size and colour. There is, it argues, a high degree of visual similarity between the marks at issue on the ground that those elements are similar because of their nearly identical and highly distinctive font and similar colour. Consumers refer to the goods designated by the earlier marks using the term ‘essencial’ and might think that the mark applied for designates another product of the applicant. It follows that, according to the applicant, the signs are similar to a high or, at least, a medium degree. It should be noted that the First Board of Appeal correctly took into account, in accordance with the case-law cited in paragraph 40 above, the fact that the element ‘essencial’ or ‘essential’ of the earlier marks and the element ‘essentials’ of the mark applied for had a very low degree of inherent distinctiveness in the present case, given that they are laudatory, since they inform the consumer of a desirable effect of the goods in question. Those elements thus have a lesser capacity to identify the commercial origin of the goods in question (see, to that effect, judgments of 15 December 2009, Trubion Pharmaceuticals v OHIM – Merck (TRUBION) , T‑412/08, not published, EU:T:2009:507, paragraphs 39 and 41 to 43, and of 22 May 2012, Kraft Foods Global Brands v OHIM – fenaco (SUISSE PREMIUM) , T‑60/11, not published, EU:T:2012:252, paragraph 58). Admittedly, as the applicant claims, the weakly distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES. COM) , T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited). However, a component of a composite mark forms the dominant element of that mark where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression given by it (see, to that effect, judgment of 13 June 2006, Representation of a cowhide , T‑153/03, EU:T:2006:157 , paragraph 27 and the case-law cited). It must be held that, in the present case, the First Board of Appeal correctly took into account the other elements of the marks at issue, which are not negligible in the overall impression which they produce, namely, in particular, the element ‘Dr. Jacob’s’ of the mark applied for and, where relevant, the element ‘compal’ of the earlier figurative and word marks. Although the elements ‘compal’ and ‘Dr. Jacob’s’ are smaller in size than the element ‘essencial’ or ‘essential’ of the earlier marks and the element ‘essentials’ of the mark applied for, they are clearly legible and appear in the initial part of the marks at issue. In that regard, it should be observed that, according to settled case-law, the consumer generally pays greater attention to the beginning of a mark than to the end (see judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) , T‑133/05, EU:T:2006:247 , paragraph 51 and the case-law cited). Moreover, it is likely that the attention of the relevant public will be drawn to the element ‘Dr. Jacob’s’ of the mark applied for, which appears in the initial part of that mark, above the element ‘essentials’ and will be perceived as an arbitrary and fanciful word, with average distinctiveness (see, to that effect, judgment of 13 September 2010, Procter & Gamble v OHIM – Prestige Cosmetics (P&G PRESTIGE BEAUTE) , T‑366/07, not published, EU:T:2010:394, paragraph 66). As regards the earlier marks containing the element ‘compal’, the attention of the relevant public will be focused on that element, which appears in the initial part of the earlier marks in question. With regard, more particularly, to the earlier word mark No 860539, which also contains the initial element ‘compal’, it must be held that the visual and phonetic similarities linked to the weakly distinctive common elements ‘essencial’ of the earlier mark in question and ‘essentials’ of the mark applied for are insufficient to offset the differences resulting from the presence of the different initial word elements ‘compal’ and ‘Dr. Jacob’s’. The same applies with regard to the earlier figurative marks No 426382 and No 969360, consisting of the elements ‘fruta’ and ‘essencial’ or ‘essential’. The similarities relating to the weakly distinctive common elements ‘essential’ or ‘essencial’ of the earlier marks in question and ‘essentials’ of the mark applied for are insufficient to offset the differences relating to the other elements, in particular the element ‘Dr. Jacob’s’ in the mark applied for. As for the applicant’s argument that there is a high degree of visual similarity between the marks at issue due, first, to the fact that the element ‘essencial’ or ‘essential’ of the earlier figurative marks and the element ‘essentials’ of the mark applied for are written in an almost identical font, it cannot succeed. First of all, it should be noted, as the First Board of Appeal has done, that they are standard letters, that is to say, commonly used typefaces, without any particular stylisation or decoration. Next, in accordance with the case-law cited in paragraph 46 above and the Court’s finding in paragraph 47 above, it must be observed that any similarity between the typefaces of those elements of the marks at issue is not decisive, but must be taken into account in the overall assessment of visual similarity. Second, contrary to the applicant’s contention, the First Board of Appeal correctly found that there was a difference between the colour combination of the mark applied for and the colours in the earlier colour marks. Thus, the element ‘essencial’ or ‘essential’ of the earlier mark No 530007 is written in white, the element ‘compal’ appears in red and the orange colour of the jar is dominant. By contrast, the element ‘essentials’ of the mark applied for is written in different shades of green, red and orange and it is the colour green which is dominant, since it is the colour used for the elements ‘Dr. Jacob’s’ and the part ‘essen’ of the element ‘essentials’ of the mark applied for. Furthermore, the element ‘essencial’ or ‘essential’ of the earlier marks No 426383 and No 970169 is written in dark green and the element ‘compal’ in red, whereas the element ‘essentials’ of the mark applied for is written in differing shades of green, red and orange. It follows from the foregoing that the applicant has not established that the First Board of Appeal erred in its assessment of the degree of visual similarity between the signs at issue. In the second place, as regards the global assessment of the likelihood of confusion, the applicant submits that the First Board of Appeal infringed the rule of interdependence between the similarity of the marks and that of the goods and services. It submits that, having regard to the identity of the goods in question and the similarity of the marks at issue, there is a likelihood of confusion. It should be noted that the applicant does not put forward any argument in support of that complaint which has not already been assessed and rejected in the context of the first ground. In so far as it has failed to demonstrate that the First Board of Appeal erred in finding that the degree of similarity between the signs at issue was only weak, and in the absence of specific arguments relating to the overall assessment made by the First Board of Appeal, it must be held that that complaint has to be rejected. Finally, in any event, it must be held that the similarities relating to the weakly distinctive elements ‘essential’ or ‘essencial’ and ‘essentials’ are insufficient to offset the differences resulting from the presence of the additional elements in the signs at issue, even for identical goods, and, for the same reasons, the relevant public will not think that the mark applied for is a variant of the earlier marks. It follows that the action must be dismissed in its entirety as being unfounded. 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 of the present action, in accordance with the forms of order sought by EUIPO and the intervener. Under Article 133 of the Rules of Procedure, a decision as to costs is to be given in the judgment or order which closes the proceedings. It follows that the costs relating to the present action do not include those incurred by the intervener in the case which gave rise to the judgment of 7 February 2019, Dr. Jacob’s essentials (T‑656/17, not published, EU:T:2019:71 ). That judgment concluded the proceedings concerning the action brought by the applicant against the decision of the Fifth Board of Appeal of EUIPO of 11 July 2017 (Case R 2067/2016‑5). The costs incurred by the intervener in that action remain governed by that judgment. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Sumol + Compal Marcas, SA to pay the costs relating to the present action. Collins Csehi De Baere Delivered in open court in Luxembourg on 9 September 2020. E. Coulon S. Papasavvas 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