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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

12 September 2018 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark PRIMART Marek Łukasiewicz — Earlier national work marks PRIMA — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

In Case T‑584/17,

Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz, established in Wołomin (Poland), represented by J. Skołuda, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,

defendant,

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

Bolton Cile España, SA, established in Madrid (Spain), represented by F. Celluprica, F. Fischetti and F. De Bono, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 June 2017 (Case R 1933/2016-4), relating to opposition proceedings between Bolton Cile España and Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen (Rapporteur), President, I.S. Forrester and E. Perillo, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 24 August 2017,

having regard to the response of EUIPO lodged at the Court Registry on 17 November 2017,

having regard to the response of the intervener lodged at the Court Registry on 12 November 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 27 January 2015, the applicant, Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz, 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)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are in Class 30 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas, cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; processed grains, starches, and goods made thereof, baking preparations and yeasts; crackers’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 2015/022 of 3 February 2015.

5        On 29 April 2015, the intervener, Bolton Cile España, SA, filed a notice of opposition, under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation No 2017/1001), to the registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

6        The opposition was based in particular on the Spanish trade mark PRIMA, registered on 22 September 1973 under number 2 578 815 and renewed on 9 April 2013, designating goods in Class 30 and corresponding to the following description: ‘Sauces and condiments; coffee; tea; cocoa; sugar; rice; tapioca; sago, artificial coffee; flour and preparations made from cereals; bread; biscuits; cakes; pastry and confectionery; edible ices; honey; treacle; yeast, baking-powder, salt; mustard; pepper; vinegar; ice’.

7        The ground relied upon 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).

8        On 2 September 2016, the Opposition Division dismissed the opposition in its entirety.

9        On 24 October 2016, the intervener 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 Opposition Division’s decision.

10      By decision of 22 June 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decision, upheld the opposition, refused the trade mark application and ordered the applicant to bear the costs incurred in the course of the opposition and appeal proceedings.

11      In the first place, the Board of Appeal held, as regards the earlier Spanish mark, that the relevant territory for analysing the likelihood of confusion was Spain and that the relevant public was the public at large in that Member State (paragraph 12 of the contested decision).

12      In the second place, the Board of Appeal held that the level of attention of the relevant public for the goods concerned was average, or even lower than average, taking into account the nature of the goods (paragraph 26 of the contested decision).

13      In the third place, as regards the comparison of the goods, the Board of Appeal upheld the examination conducted by the Opposition Division, except so far as concerns ‘substitutes for coffee, tea, cocoa’, which the Board considered to be similar to a high degree to ‘coffee, tea, cocoa’, and ‘seasonings, flavourings’, which it found to be highly similar, if not identical, to ‘sauces and condiments; salt; mustard; pepper; vinegar’. It also concluded that the goods at issue were all identical, highly similar, or similar to an average degree, to the earlier goods (paragraphs 13 to 16 of the contested decision).

14      In the fourth place, the Board of Appeal held that the word ‘primart’ was the most distinctive and dominant part of the mark applied for. Furthermore, it considered that, owing to their size and depiction, the words ‘marek łukasiewicz’ were barely legible and therefore of minor importance in the overall impression conveyed by the contested mark, and could even be overlooked altogether. It also observed that, inasmuch as the consumer is used to focusing on the textual elements of a mark and, as in the present case, the figurative elements of the mark at issue are purely decorative, they play only a secondary role (paragraph 19 of the contested decision).

15      In the fifth place, with regard to the visual comparison of the signs, the Board of Appeal found that the earlier national mark PRIMA was highly similar to the contested mark’s distinctive and dominant element ‘primart’, the first five letters being reproduced in the same order. Moreover, it found that the element ‘primart’ of the mark applied for differed only in the addition of the letters ‘r’ and ‘t’. Furthermore, it observed that, while the mark applied for also differed in its figurative elements and the script added beneath the word ‘primart’, which had no equivalent in the earlier mark, those elements nevertheless played only a secondary role. The Board thereby concluded that the marks were visually similar to an average degree (paragraph 20 of the contested decision).

16      In the sixth place, as regards the phonetic comparison of the signs at issue, the Board of Appeal took the view that the very small and unclear script which appears beneath the word ‘primart’, namely ‘marek łukasiewicz’, would not be pronounced. The mark applied for would therefore be pronounced as ‘primart’, and the earlier national mark as ‘prima’. It therefore concluded that, phonetically, the marks presented an above average degree of similarity (paragraph 21 of the contested decision).

17      In the seventh place, as regards the conceptual comparison of the signs at issue, the Board of Appeal held that the word ‘prima’ meant ‘female cousin’ or ‘bonus payment’ for the relevant Spanish consumer, but that, by contrast, the mark applied for lacked any meaning. It consequently concluded that the marks were not conceptually similar (paragraph 22 of the contested decision).

18      In the eighth place, the Board of Appeal found that, in the absence of any meaning of the earlier national mark with regard to the goods concerned, its level of intrinsic distinctive character was average. According to the Board of Appeal, the Spanish consumer would not understand the word ‘prima’ as a word denoting the excellence of something, as is the case in other languages of the European Union (paragraph 27 of the contested decision).

19      In the ninth place, the Board of Appeal concluded that, having regard to the identity and similarity of the goods at issue, the average level of visual and above-average level of phonetic similarity of the signs at issue, together with the at most average level of attention of the relevant public and the average level of inherent distinctiveness of the earlier mark, there was a likelihood of confusion on the part of the relevant public (paragraph 28 of the contested decision).

20      In the 10th place, the Board of Appeal rejected the applicant’s argument that the mark applied for included the name of an entity present on the market for 20 years, taking the view that, aside from the fact that no evidence had been produced in support of that assertion, it was settled case-law that only the reputation or high distinctiveness of the earlier mark would be taken into account in the assessment of the likelihood of confusion, and that the applicant could not rely on the reputation of its later mark (paragraph 29 of the contested decision).

21      Lastly, in the 11th place, the Board of Appeal held that it was not necessary to assess the evidence produced by the intervener to demonstrate the enhanced distinctiveness of the earlier mark, or to examine the other earlier mark, which formed the basis of the opposition (paragraph 30 of the contested decision).

 Forms of order sought

22      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs of the proceedings, including the costs incurred before the Board of Appeal.

23      EUIPO and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

24      In support of its action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

25      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the 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 at issue, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. Likelihood of confusion includes the likelihood of association with the earlier trade mark.

26      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 from economically linked undertakings constitutes a likelihood of confusion. According to the same line of 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).

27      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, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

 The relevant public

28      It is apparent from paragraph 12 of the contested decision that the Board of Appeal took the view that the relevant public was the public at large in Spain.

29      Having regard to the contents of the case file, it is appropriate to endorse that definition of the relevant public, which, moreover, is not disputed by the parties.

 Comparison of the goods

30      It is apparent from paragraph 16 of the contested decision that the Board of Appeal concluded that the goods were identical, highly similar or similar to an average degree to the earlier goods.

31      Having regard to the contents of the case file, it is appropriate to endorse that assessment of the comparison of the goods, which, moreover, is not disputed by the parties.

 The level of attention of the relevant public

32      It should be recalled that the Board of Appeal considered, in paragraph 26 of the contested decision, that the level of attention of the relevant public for the goods concerned was average or, taking into account the nature of those goods, even lower than average.

33      The applicant claims, first, that the Board of Appeal erred in finding that the level of attention of the relevant public was lower than average, since such an assessment is in no way supported by the facts; and, secondly, that, while the level of attention was lower than average for certain goods — in particular foodstuffs purchased on a daily basis — the Board of Appeal ought to have stated which particular goods were deemed to be connected with a lower level of consumer attention.

34      EUIPO and the intervener dispute those arguments.

35      First, it must be pointed out that the applicant’s claim, to the effect that the Board of Appeal considered that the level of attention of the relevant public was lower than average, is based on an incorrect reading of the contested decision, paragraph 26 of which states that ‘[t]he level of attention of the relevant public for the goods [...] concerned is average or, taking into account the nature of the goods, even lower than average’.

36      Secondly, it should be noted that the goods at issue are common or everyday foodstuffs, of low value and high frequency of purchase, a fact which, moreover, is not contested by the applicant.

37      The Board of Appeal’s assessment does not, in that regard, diverge from settled case-law, according to which the level of attention of the relevant public, so far as concerns everyday foodstuffs, of low value and high frequency of purchase, is relatively low and average at most (judgments of 20 October 2016, Monster Energy v EUIPO — Hot-Can Intellectual Property (HotoGo self-heating can technology), T‑407/15, not published, EU:T:2016:624, paragraph 29, and of 18 July 2017, Freddo v EUIPO — Freddo Freddo (freggo), T‑243/16, not published, EU:T:2017:522, paragraphs 26 and 28).

38      Furthermore, that case-law assesses the attention of the relevant public by considering the goods in Class 30 without establishing any distinction between them. In the present case, taking into account the fact that the goods concerned are all common or everyday foodstuffs, of low value and high frequency of purchase, there is nothing to justify diverging from that case-law and stating the level of attention for each specific product.

39      It must also be pointed out that the applicant itself in no way substantiates its claim that a different line of reasoning ought to have been followed in the present case, depending on the goods concerned.

40      Consequently, the applicant’s line of argument must be rejected, and it must be found that the Board of Appeal did not err in finding that the level of attention of the relevant public for the goods concerned was average or, taking into account the nature of the goods, even lower than average.

 The comparison of the signs

41      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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).

42      The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

 The distinctive and dominant character of the word ‘primart’ in the mark applied for

43      In paragraph 19 of the contested decision, the Board of Appeal found that the word ‘primart’ was the most distinctive and dominant element of the mark applied for. According to the Board, owing to their size and depiction, the words ‘marek łukasiewicz’ were barely legible and therefore of minor importance in the overall impression conveyed by the contested mark, and could even be overlooked altogether. It also observed that, inasmuch as the consumer is used to focusing on the textual elements of a mark and, as in the present case, the figurative elements of the mark at issue are purely decorative, they play only a secondary role.

44      The applicant disputes that assessment.

45      It claims that the Board of Appeal erred in its finding as to the dominant character of the word ‘primart’ since (i) the marks must be perceived as a whole and no element may be omitted by the Board; (ii) the average consumer is assumed to be reasonably attentive and will therefore perceive all the elements of the mark at issue; (iii) the words ‘marek łukasiewicz’ correspond to the name of the applicant and indicate clearly the origin of the goods; and, lastly, (iv) those words are only 50% smaller in size than the word ‘primart’, they are written in white characters on a red background and will therefore be clearly visible on all packaging.

46      The applicant takes the view that, on account of that erroneous basis, the Board of Appeal failed to take into account the words ‘marek łukasiewicz’ in the visual, phonetic and conceptual assessment of the similarity between the marks at issue, and that the contested decision is consequently vitiated by error.

47      EUIPO and the intervener dispute those arguments.

48      As a consequence, it is appropriate to examine beforehand the distinctive and dominant character of the word ‘primart’ in the mark applied for.

49      The mark applied for is composed of (i) the word ‘primart’ written in large characters in white surrounded by a blue border, which makes them easier to read; and (ii) the words ‘marek łukasiewicz’ written in fine white italic characters on a red background, those words being placed beneath the word ‘primart’ and written in a font which is much smaller than that used for the word ‘primart’. The letters ‘i’, ‘m’ and ‘a’ of the word ‘primart’ are positioned against a background consisting in a red diamond surrounded by a blue border.

50      It must be noted that the Board of Appeal did not err in finding that the figurative elements of the mark applied for were purely decorative and consequently played only a secondary role.

51      It is also appropriate to uphold the decision of the Board of Appeal in so far as it found that, on account of their size and depiction, the words ‘marek łukasiewicz’ were barely legible and that, as a result, they were of minor importance in the overall impression conveyed by the mark applied for.

52      The Board also acted correctly in taking the view that, on account of their size and depiction, those words could even be overlooked altogether.

53      Consequently, the Board of Appeal did not err in finding that, on account of the size and lettering of its characters and its predominant position in the mark applied for, the word ‘primart’ was the most distinctive and dominant element of that mark.

54      It cannot, however, be inferred from those assessments carried out by the Board of Appeal as to the more distinctive and dominant character of the word ‘primart’ that it failed to take into consideration the words ‘marek łukasiewicz’ and the figurative elements of the mark applied for, as the applicant maintains.

55      It is in fact evident fromparagraph 19 of the contested decision that ‘the word “primart” forms the most distinctive and dominant part of the contested mark’, that the words ‘marek łukasiewicz’ ‘are hardly legible and … thus of minor importance within the overall impression of the contested mark’, and that the latter’s figurative elements ‘also ... only play a secondary role’.

56      The applicant’s argument is consequently based on a misreading of the contested decision and must therefore be rejected.

57      As to the argument that the words ‘marek łukasiewicz’ correspond to the name of the applicant, appear in the name of the applicant’s company, and indicate clearly the origin of the goods, it must be noted that that line of argument has no bearing on whether the word ‘primart’ has a more distinctive and dominant character in the mark applied for than the other word and figurative elements which feature therein. Consequently, that argument must also be rejected.

 The visual comparison of the signs

58      It should be recalled that, in paragraph 20 of the contested decision, the Board of Appeal found that the marks were visually similar to an average degree, inasmuch as the earlier national mark PRIMA was highly similar to the distinctive and dominant element ‘primart’ of the mark at issue, the first five letters of which are identical and reproduced in the same order, while the word ‘primart’ in the mark applied for differs from the word ‘prima’ only by the two letters ‘r’ and ‘t’. Furthermore, the Board observed that, while the mark applied for also differed in its figurative elements and the script added beneath the word ‘primart’, which had no equivalent in the earlier mark, those elements played only a secondary role.

59      The applicant disputes those assessments, but merely claims in essence that, in so far as the Board of Appeal erred in finding that the word ‘primart’ was dominant in the mark applied for and failed to take into consideration the other elements therein, the assessment of the visual similarity between the signs at issue is vitiated by error.

60      EUIPO and the intervener dispute those claims.

61      Since the line of argument put forward by the applicant as regards the dominant character of the word ‘primart’ and the Board of Appeal’s failure to take into consideration the other word and figurative elements of the mark applied for must be rejected (see paragraphs 56 and 57 above) — which assessment is borne out, furthermore, by the content of paragraph 20 of the contested decision, in which the Board of Appeal states that ‘[t]he contested mark also differs in its figurative elements and the additional script underneath the word “primart” which have no counterpart in the earlier mark, but these elements only play a secondary role’ — the applicant’s argument on this point must also be rejected.

62      Lastly, and for the same reasons as those stated by the Board of Appeal, the latter’s assessment, whereby the marks at issue are visually similar to an average degree, must be upheld.

 The phonetic comparison of the signs

63      It should be recalled, as regards the phonetic comparison of the signs at issue, that the Board of Appeal found, in paragraph 21 of the contested decision, that the marks were similar to an above-average degree inasmuch as the unclear and very small script which appears beneath the word ‘primart’, namely ‘marek łukasiewicz’, would not be pronounced. The mark applied for would therefore be pronounced as ‘primart’, and the earlier national mark as ‘prima’ (paragraph 21 of the contested decision).

64      The applicant disputes that assessment. It claims that (i) the Board of Appeal erred in finding that the word ‘primart’ had dominant character and that it was not necessary to take the other word element ‘marek łukasiewicz’ into consideration;(ii) the taking into consideration of those words results in a finding of a lesser degree of similarity between the marks at issue, as the words ‘marek łukasiewicz’ have a bearing on the length, rhythm and intonations thereof, thus making them different, in the light of the fact that the earlier mark comprises two syllables, whereas the mark applied for contains eight syllables;and, (iii) even if the words ‘prima’ and ‘primart’ alone were taken into account but not the words ‘marek łukasiewicz’, they could not be regarded as having a high degree of phonetic similarity, as those words are made up of two syllables, one of which sets them apart. In fact and in essence, according to the applicant, for the Spanish-speaking consumer, the stress will be placed on the first syllable of the word ‘prima’ as it ends in a vowel, and on the second syllable of the word ‘primart’ as it ends in the letter ‘t’. The consumer will therefore remember the stressed syllable, thus distinguishing between the marks at issue.

65      EUIPO and the intervener dispute those arguments.

66      In the first place, the applicant’s line of argument, according to which the Board of Appeal found that the word ‘primart’ had a dominant character and that it was not necessary to take the other word element ‘marek łukasiewicz’ into account, must be rejected on the grounds set out in paragraphs 53 to 56 above.

67      Furthermore, it must be pointed out that the Board of Appeal found, on the contrary, that ‘aurally, the unclear and very small script underneath the word “primart” will not be pronounced’, which implies that it did indeed take that script into consideration.

68      In the second place, it must be held that the applicant has not put forward any other argument in support of its claim that the Board of Appeal erred in finding that the words ‘marek łukasiewicz’, taking account of their position in small, white italics beneath the word ‘primart’, which appears in much larger and more legible characters, would not be pronounced, even if they could be made out.

69      The Board of Appeal rightly found that the word ‘primart’ was the most distinctive and dominant word in the mark applied for (see paragraph 53 above) and, to that extent and for the reasons given by the Board of Appeal, recalled in paragraph 67 above, the Board’s assessment that the words ‘marek łukasiewicz’ would not be pronounced by Spanish consumers must be upheld.

70      As regards the phonetic comparison of the words ‘prima’ and ‘primart’, it must be found that the earlier mark, which is composed of two syllables, will be pronounced ‘prima’ and the mark applied for, which is also composed of two syllables, will be pronounced ‘primart’.

71      It is settled case-law that consumers normally attach more importance to the beginning of words (judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraphs 81 and 83, and of 9 March 2018, Recordati Orphan Drugs v EUIPO — Laboratorios Normon (NORMOSANG), T‑103/17, not published, EU:T:2018:126, paragraph 57).

72      Following that case-law, the consumer will therefore attach greater importance to the first common syllable, ‘pri’, that similarity being bolstered by the concomitance, in the second syllable of each of the marks at issue, of the letters and the sound ‘ma’.

73      The letters ‘r’ and ‘t’ which make up the ending of the mark applied for will be pronounced and the letter ‘t’ may even be emphasised, but the effect of the sounds ‘pri’ and ‘ma’ will be to create a phonetic similarity which is higher than average.

74      The Board of Appeal’s assessment in that connection must therefore be upheld, as the arguments put forward by the applicant are not such as to cast doubt on that finding.

 The conceptual comparison of the signs at issue

75      It should be recalled that, in paragraph 22 of the contested decision, as regards the conceptual comparison of the signs at issue, the Board of Appeal held that the marks were not conceptually similar in so far as the word ‘prima’ meant ‘female cousin’ or ‘bonus payment’ for the relevant Spanish consumer but that, by contrast, the mark applied for had no meaning.

76      The applicant disputes that assessment by nonetheless merely reiterating its argument that the Board of Appeal erred in finding that the word ‘primart’ had dominant character and that it was not necessary to take the other word element ‘marek łukasiewicz’ into consideration.

77      That argument must also be rejected on the grounds set out in paragraphs 53 to 56 above.

78      As to the remainder, the Board of Appeal’s finding that the marks at issue are not conceptually similar must be upheld for the reasons given by that Board.

 Conclusion on the comparison of the marks at issue

79      It must be held that the Board of Appeal was entitled to find that the marks at issue were visually similar to an average degree, that they had a higher than average degree of phonetic similarity, and that they were not conceptually similar.

 Global assessment of the likelihood of confusion

80      It must be pointed out that, according to settled case-law, the existence of a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services that are the subject of the application for registration are identical or similar to those in respect of which the earlier mark has been registered. Those conditions are cumulative (see judgment of 11 December 2008, Gateway v OHIM, C‑57/08 P, not published, EU:C:2008:718, paragraph 45 and the case-law cited).

81      It should be recalled that the Board of Appeal found, in paragraph 27 of the contested decision, that the Spanish consumer will not understand the word ‘prima’ as a word denoting the excellence of a thing, as is the case in other languages of the European Union, but rather as meaning ‘female cousin’ or ‘bonus payment’ and that, consequently, in the absence of any meaning of the word ‘prima’ with regard to the goods concerned, the intrinsic distinctive character of the earlier mark was average.

82      It consequently found, in paragraph 28 of the contested decision, that, in the light of the identity and similarity of the goods at issue, the average level of visual and above-average level of phonetic similarity of the signs at issue, the at most average level of attention of the relevant public and the average level of inherent distinctiveness of the earlier mark, there existed a likelihood of confusion on the part of the relevant public.

 The allegedly weak distinctive character of the earlier mark

83      The applicant disputes the Board of Appeal’s assessment that the intrinsic distinctive character of the earlier mark is average and claims, in essence, that it has weak distinctive character only. It recalls, in that connection, the Latin origin of the word ‘prima’ and takes the view that it is a word well known to persons who speak a Romance language, which includes Spanish.

84      Referring to certain websites, the applicant argues that that word is used in Spanishand takes the view that Spanish consumers will perceive the word ‘prima’ as being a reference to a higher quality or as indicating that the products bearing that sign constitute a bonus or free gift connected with the sale of another product.

85      It closes that argument by referring to EUIPO’s guidelines for examination, which state that a coincidence in a weak distinctive element will generally not result in a likelihood of confusion.

86      EUIPO and the intervener dispute those arguments.

87      EUIPO contends that (i) the applicant has put forward the argument as to the weak distinctive character of the word ‘prima’ for the first time before the General Court; (ii) none of the references to the websites produced as supporting documents annexed to the application (Annexes A.5 to A.9) was lodged with EUIPO; and (iii) the applicant confined itself to asserting, before the Opposition Division, that ‘the term “PRIMA” in Spanish means “bonus” or “cousin” (female)’ (see page 1819, second paragraph, of the Board of Appeal’s file), which corresponds to the meanings recognised by the Board of Appeal in paragraph 22 of the contested decision.

88      It must be noted that, under Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. It follows that, as regards a relative ground for refusal to register, matters of law or fact submitted to the Court that have not been submitted previously to the Board of Appeal are not capable of affecting the lawfulness of a decision made by that Board (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 54, and of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM — Garmo (HELLIM), T‑534/10, EU:T:2012:292, paragraph 28).

89      It follows, according to settled case-law, that, in the context of the review of legality of decisions of the Boards of Appeal, for which the General Court has jurisdiction under Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), elements of law and of fact which are pleaded before the Court without having previously been raised before the departments of EUIPO cannot be examined for the purpose of assessing the legality of the decision of the Board of Appeal and must for that reason be declared inadmissible (see judgment of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM — Garmo (HELLIM), T‑534/10, EU:T:2012:292, paragraph 29 and the case-law cited).

90      As the applicant’s argument concerning the weak distinctive character of the earlier mark has been put forward for the first time before the Court, it must be declared inadmissible.

91      In addition, it must be pointed out, as is stated by EUIPO, that the applicant argued before the Opposition Division that ‘the term “PRIMA” in Spanish means “bonus” or “cousin” (female)’, and that those are the meanings accepted by the Board of Appeal in paragraph 22 of the contested decision.

92      It is therefore appropriate, as to the remainder, to uphold the Board of Appeal’s finding that, in the absence of meaning of the earlier mark with regard to the goods concerned, the latter’s intrinsic distinctive character is average (paragraph 22 of the contested decision).

 The absence of an independent distinctive role of the common element ‘prima’ in the mark applied for

93      The applicant argues in essence that the Board of Appeal erred in failing to take into account the fact that the common element of the marks at issue, namely the element ‘prima’, did not have an independent distinctive role in the mark applied for.

94      It takes the view that it follows from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594) that, where the earlier mark is reproduced in its entirety in the mark applied for, the assessment of the likelihood of confusion ought to take into account the fact that that earlier mark has an independent distinctive role in the contested mark.

95      According to the applicant, it is highly unlikely, however, that the average consumer will break the word ‘primart’ down into an element ‘prima’ and the letters ‘r’ and ‘t’. On the contrary, he will understand the word ‘primart’ as an indivisible whole or break it down into two elements, ‘pri’ and ‘mart’.

96      Thus, according to the applicant, a mere coincidence in a sequence of letters will not suffice to establish similarity and EUIPO’s decisions ought not to be based on the mere fact that one sign is contained in the other, which argument is allegedly borne out, moreover, by certain of EUIPO’s decisions.

97      EUIPO and the intervener dispute those arguments.

98      Admittedly, it is apparent from the case-law relied upon by the applicant that it is possible that an earlier mark used by a third party in a composite sign that includes the name of the company of the third party may retain an independent distinctive role in the composite sign. Accordingly, in order to establish the likelihood of confusion, it suffices that, on account of the earlier mark still having an independent distinctive role, the public attributes the origin of the goods or services covered by the composite sign to the owner of that mark (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 24 and the case-law cited).

99      The applicant essentially takes the a contrario view that, in the present case, the earlier mark does not retain an independent distinctive role in the mark applied for and that, consequently, a mere coincidence in the sequence of letters ‘p’, ‘r’, ‘i’, ‘m’, ‘a’ in the mark applied for does not suffice to establish a likelihood of confusion.

100    However, that argument cannot succeed.

101    It must be recalled that it is necessary to ascertain, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion (judgments of 26 July 2017, Meica v EUIPO, C‑182/16 P, not published, EU:C:2017:600, paragraph 58, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 34).

102    Accordingly, the individual assessment of each sign, as required by the case-law of the Court of Justice, must be made in the light of the particular circumstances of the case and cannot therefore be regarded as being subject to general presumptions (judgments of26 July 2017, Meica v EUIPO, C‑182/16 P, not published, EU:C:2017:600, paragraph 59, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 36).

103    The argument that, in order to find a likelihood of confusion on the basis of the independent distinctive role of an element of the mark at issue, it suffices that certain factors be present must be rejected as unfounded (judgment of26 July 2017, Meica v EUIPO, C‑182/16 P, not published, EU:C:2017:600, paragraph 60).

104    The same applies to the argument that, in order to preclude a likelihood of confusion, it is sufficient to rely on the absence of independent distinctive role of an earlier mark in the mark applied for.

105    The individual assessment of each sign must, by contrast, be made depending on the individual circumstances of the case.

106    As to the alleged lack of consistency — which, moreover, is only mentioned and not elucidated — between the contested decision and certain earlier EUIPO decisions relied upon by the applicant, in which greater importance ought, according to the applicant, to have been attached to the independent distinctive role of an element of the mark applied for, it should be recalled that the Court of Justice has consistently held that the decisions which the Board of Appeal are called on to take under Regulation No 207/2009, concerning registration of a sign as an EU trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 36 and the case-law cited).

107    Furthermore, EUIPO must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not. Respect for the principle of legality requires that all applications for registration must be stringent and full and take place in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (see order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 37 and the case-law cited).

108    In the present case, it has been held that the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 207/2009 in concluding that the goods at issue were similar and identical; that the signs at issue were visually similar to an average degree, and phonetically similar to an higher than average degree; that the level of attention of the relevant public was average at most; and that the intrinsic distinctive character of the earlier mark was average.

109    Moreover, it must be found that, while the group of letters ‘prima’ which makes up the earlier mark in its entirety, does not playan independent distinctive role within the dominant element ‘primart’ of the mark applied for, it contributes significantly to the overall impression conveyed by the latter inasmuch as it constitutes five sevenths of that sign and differs only in the two consonants placed at the end of that element (see, to that effect, judgment of 23 October 2015, Vimeo v OHIM — PT Comunicações (VIMEO), T‑96/14, not published, EU:T:2015:799, paragraph 68).

110    Consequently, and in the light of the facts of the present case, the fact that the group of letters ‘prima’ does not playan independent distinctive role is not such as to call into question the Board of Appeal’s conclusion that there is likelihood of confusion, which must be upheld for the reasons given by the Board.

 Conclusion

111    The single plea relied upon by the applicant must consequently be rejected and the action must therefore be dismissed.

 Costs

112    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 forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz to pay the costs.

Delivered in open court in Luxembourg on 12 September 2018.

*      Language of the case: English.

© European Union
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