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URL: http://www.bailii.org/eu/cases/EUECJ/2011/T12909.html
Cite as: [2011] EUECJ T-129/9, [2011] EUECJ T-129/09

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JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

4 May 2011 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark APETITO – Earlier Community word mark apetito – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

In Case T-129/09,

Bongrain SA, established in Viroflay (France), represented by C. Hertz-Eichenrode, lawyer,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Novais Gonçalves, acting as Agent,

defendant,

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

apetito AG, established in Rheine (Germany), represented by T. Weeg, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 2 February 2009 (Case R 720/2008-4) relating to opposition proceedings between apetito AG and Bongrain SA,

THE GENERAL COURT (Fourth Chamber),

composed of I. Pelikánová, President, K. Jürimäe and M. van der Woude (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 2 April 2009,

having regard to the response of OHIM lodged at the Registry of the General Court on 20 July 2009,

having regard to the response of the intervener lodged at the Registry of the General Court on 2 July 2009,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 30 October 2003, the applicant, Bongrain SA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 Registration as a mark was sought for the word sign APETITO.

3 The goods in respect of which registration was sought are in Class 29 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Milk, cheese, dairy products’.

4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 36/2004 of 6 September 2004.

5 On 3 December 2004, the intervener, apetito AG, filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now 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.

6 The opposition was based on the earlier Community word mark No 385 237, apetito, which was filed on 13 September 1996 and registered on 24 September 2004 for, inter alia, goods in Class 29 corresponding to the following description: ‘Prepared meals, mainly of meat, sausage, fish, game, poultry, prepared fruit and vegetables, potatoes, mashed potatoes, potato dumplings, prepared pulses, mushrooms, meat salads, fish salads, fruit salads, vegetable salads, soups, meat jellies, fish jellies, fruit jellies, vegetable jellies, eggs, cheese, quark, milk, butter, cream, yoghurt and ingredients for the aforesaid meals in prepared form’.

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8 On 4 March 2008, the Opposition Division upheld the opposition on the basis that there was a likelihood of confusion.

9 On 5 May 2008, the applicant filed an appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.

10 By decision of 2 February 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal on the ground that there was a likelihood of confusion – in the minds of the average end consumers – between the mark applied for and the earlier mark.

11 Having found that the signs at issue were visually, phonetically and conceptually identical, the Board of Appeal carried out a comparison of the goods at issue. To that end, it assessed the similarity between, first, the ‘milk, cheese [and] dairy products’ covered by the mark applied for and, secondly, the ‘prepared meals, mainly of cheese, quark, milk, butter, cream, yoghurt and ingredients for the aforesaid meals in prepared form’ covered by the earlier mark. The Board of Appeal took the view that the words ‘prepared meals, mainly of’ should be interpreted as referring to prepared meals mainly of any of the items of foodstuffs listed and that the goods designated by the earlier mark were not limited to prepared meals containing all of the listed foodstuffs as the earlier mark covered, among other things, ‘prepared meals mainly of cheese’ and ‘prepared meals mainly of milk’.

12 The Board of Appeal found that the goods at issue had the same nature, that their purposes were the same, namely to be eaten, that their uses were similar and, lastly, that they were substitutable. The Board of Appeal referred in that regard to its consistent practice according to which a particular foodstuff and prepared meals mainly consisting of that same foodstuff are similar.

Forms of order sought

13 The applicant claims that the General Court should:

– set aside the contested decision;

– order OHIM to pay the costs.

14 OHIM and the intervener contend that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

15 In support of its action, the applicant puts forward a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.

Arguments of the parties

16 The applicant submits inter alia that the Board of Appeal based its analysis of the likelihood of confusion on a misinterpretation of the list of goods in Class 29 covered by the earlier mark. The Board of Appeal did not take into account the conjunction ‘and’, which appears twice in the list of goods in Class 29 covered by the earlier mark and set out in paragraph 6 above. According to the applicant, the prepared meals covered by the earlier mark thus include at least three series of ingredients:

– a portion consisting of ingredients listed before the first ‘and’, namely meat, sausage, fish, game, poultry and prepared fruit;

– a portion consisting of ingredients listed between the first and the second ‘and’, namely vegetables, potatoes, mashed potatoes, potato dumplings, prepared pulses, mushrooms, meat salads, fish salads, fruit salads, vegetable salads, soups, meat jellies, fish jellies, fruit jellies, vegetable jellies, eggs, cheese, quark, milk, butter, cream and yoghurt;

– a portion consisting of ingredients for those meals in prepared form.

17 According to the applicant, that interpretation implies that the goods covered by its application for registration are not identical to those covered by the earlier mark. A prepared meal is a composition of different foodstuffs. The purpose of a prepared meal is to avoid the preparation and cooking of different kinds of foodstuffs. The applicant also states that, apart from prepared meals for astronauts, prepared meals in liquid form do not exist and that a likelihood of confusion with milk is therefore precluded. Lastly, the applicant observes that producers of milk, cheese and dairy products do not produce prepared meals consisting of, inter alia, meat, sausage, fish, vegetables, potatoes and ingredients in prepared form. The goods therefore also differ in terms of their method of production, with the result that they never come from the same producer.

18 OHIM and the intervener dispute the admissibility and the merits of the arguments put forward by the applicant.

Findings of the Court

19 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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.

20 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of 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 designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills ( GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

21 In the present case, the applicant does not call into question either the Board of Appeal’s finding that the signs at issue are identical or the definition of the relevant public applied by the Board of Appeal. The only matter in dispute is the Board of Appeal’s assessment as regards the similarity of the goods concerned.

The similarity of the goods

22 It should be noted at the outset that, according to settled case-law, when the similarity of the goods concerned is being assessed, all the relevant factors which characterise the relationship between those goods should be taken into account, those factors including, in particular, their nature, their end users and their method of use and whether they are in competition with each other or are complementary (Case C-39/97 Canon [1998] ECR I-5507, paragraph 23, and Case T-8/03 El Corte Inglés v OHIM – Pucci (EMILIO PUCCI) [2004] ECR II-4297, paragraph 41).

23 In the present case, the applicant proposes a new interpretation of the list of goods covered by the earlier mark, based on the contention that the fact that the conjunction ‘and’ appears twice in that list shows that each prepared meal consists of three foodstuffs, with the result that there is no confusion between the prepared meals covered by the earlier mark and the dairy goods covered by the mark applied for.

24 Without its being necessary to rule on the admissibility of such an interpretation, which was put forward for the first time in the course of the proceedings before the Court, it is clear that it cannot in any event be accepted.

25 First, it is evident from the combined reading of the different language versions of the list of goods covered by the earlier mark that the first ‘and’ attributes the adjective ‘prepared’ to both fruit and vegetables and that its purpose is not to divide the list of goods designated into the foodstuffs mentioned before and those mentioned after the coordinating conjunction. Although the list in the versions in Latin languages identifies the ‘prepared fruit and vegetables’ by placing the adjective ‘prepared’ after the word ‘vegetables’, the versions in Germanic languages place that adjective before the word ‘fruit’: ‘prepared fruit and vegetables’ and ‘zubereitetem Obst und Gemüse’. The interpretation proposed by the applicant would thus result in a contradiction between the different language versions, in so far as the first group of foodstuffs which it thinks it is able to distinguish would consist of different foodstuffs depending on the language version used. In the versions in Germanic languages, the first group would include prepared fruit and the second group would include unprepared vegetables, whereas in the versions in Latin languages the first group would include fruit and the second group would include prepared vegetables.

26 Secondly, the interpretation proposed by the applicant lacks coherence. It presupposes that the goods covered by the earlier mark necessarily consist of three parts, but it does not provide any explanation as to the dietary significance of the third group, which covers ‘ingredients for the aforesaid meals in prepared form’. The interpretation proposed by the applicant would thus result in the outcome that consumers of prepared meals would be deemed to consume the same foodstuff twice, first in its original form and secondly in prepared form.

27 By contrast, the interpretation put forward by OHIM, according to which the prepared meals covered by the earlier mark may consist of one or several foodstuffs from the list, is coherent and does not pose any linguistic problems.

28 Furthermore, the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s assessment that dairy products and meals prepared from dairy products have the same nature, purpose and use since they all consist of dairy products which give the goods their flavours and are all aimed at the same end consumers for human consumption. All of the applicant’s arguments are based on the alternative interpretation of the list of goods covered by the earlier mark, which has been rejected above.

29 Furthermore, the argument that the goods covered by the earlier mark are complex, contrary to those covered by the mark applied for, cannot have any bearing on the merits of the Board of Appeal’s assessment. The applicant does not explain how the alleged complexity of a meal prepared from dairy products intended for the general public makes its purpose different from that of a dairy product to the extent that it precludes the finding that those goods are similar. The fact that those goods are produced by separate producers, who have their own specific areas of expertise, cannot, moreover, preclude a finding that dairy products and meals prepared from dairy products are similar, having regard to the factors pointed out by the Board of Appeal.

The likelihood of confusion

30 In so far as the signs are identical and the goods are similar, the Board of Appeal was right to find that the Community trade mark applied for was likely to be confused or associated with the earlier mark by the relevant public, namely the average consumer of foodstuffs for everyday consumption, and that there was therefore a likelihood of confusion between the marks at issue.

31 Accordingly, the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94, must be rejected and the action dismissed in its entirety.

Costs

32 Under Article 87(2) 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.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1. Dismisses the action;

2. Orders Bongrain SA to pay the costs.

Pelikánová

Jürimäe

Van der Woude

Delivered in open court in Luxembourg on 4 May 2011.

[Signatures]

* Language of the case: English.