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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

17 April 2018 (*)

(EU trade mark — Opposition proceedings — Application for registration of EU figurative mark BOBO cornet — Earlier EU figurative mark OZMO cornet — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑648/16,

Şölen Çikolata Gıda Sanayi ve Ticaret AŞ, established in Şehitkamil Gaziantep (Turkey), represented by T. Tsenova, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Elka Zaharieva, residing in Plovdiv (Bulgaria), represented by A. Kostov, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 July 2016 (Case R 906/2015-4), relating to opposition proceedings between Șölen Çikolata Gıda Sanayi ve Ticaret and Ms Zaharieva,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen (Rapporteur), President, V. Kreuschitz and N. Półtorak, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 September 2016,

having regard to the response of EUIPO lodged at the Court Registry on 17 November 2016,

having regard to the response of the intervener lodged at the Court Registry on 25 October 2016,

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 11 November 2013, the intervener, Ms Elka Zaharieva, 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 Classes 29, 30 and 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 29: ‘Yoghurt; Milk beverages, milk predominating; Milk products’;

–        Class 30: ‘Candy; Yoghurt (Frozen -) [confectionery ices]; Confectionery made of sugar; Cocoa products; Cocoa-based beverages; Powders for ice cream; Candy; Ices and ice creams; Chocolate beverages with milk’;

–        Class 32: ‘Almonds (Milk of -) [beverage]; Non-alcoholic beverages; Milk (Peanut -) [non-alcoholic beverage]’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 10/2014 of 17 January 2014.

5        In its observations of 18 November 2014, EUIPO requested that the list of goods in Class 30 designated by the trade mark application be restricted by deleting ‘cocoa products; cocoa-based beverages; chocolate beverages with milk’.

6        On 12 February 2014, the applicant, Şölen Çikolata Gıda Sanayi ve Ticaret AŞ, filed, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), a notice of opposition to registration of the mark applied for in respect of all of the goods covered by that mark.

7        The opposition was based on the earlier international registration registered on 10 July 2012 under No 1 148 957 and effective in Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Spain, France, Croatia, Italy, Luxembourg, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia and the United Kingdom, designating goods in Class 30 and corresponding to the following description:

‘Cocoa, cakes, chocolates, chocolate creams, cakes with cocoa milk and chocolate cream’, as reproduced below

8        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).

9        The opposition was based on all the goods covered by the earlier application and directed against all the goods covered by the EU trade mark application.

10      By decision of 11 March 2015, the Opposition Division rejected the opposition in its entirety.

11      On 11 May 2015, 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.

12      By decision of 20 July 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs in the appeal and opposition proceedings.

13      First, the Board of Appeal held, on the one hand, that, since the applicant had relied on an earlier international registration, the relevant territory for the earlier right upon which the contested decision was based consists of the Member States of the European Union designated by the international registration, namely Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Spain, France, Croatia, Italy, Luxembourg, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia and the United Kingdom. On the other hand, the Board of Appeal took the view that the goods at issue are everyday consumer goods intended for the public at large, who will display an average level of attention (paragraphs 9 and 10 of the contested decision).

14      Second, as regards the visual comparison of the signs, the Board of Appeal pointed out that, according to settled case-law, where a sign consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant. Thus, in the case of a sign that contains both figurative and verbal elements, the figurative element may occupy an equivalent, or even a more significant, position than that of the verbal elements. The Board of Appeal went on to find that the only element that the two signs have in common is the word ‘cornet’, that the mere fact that the words ‘bobo’ and ‘ozmo’ share the same vowel ‘o’ does not make them similar, but that, by contrast, the striking feature of the rabbit in the mark applied for has no counterpart in the earlier international registration. According to the Board of Appeal, that element occupies more than half of the sign and hence is not negligible in the overall impression projected by that sign but, on the contrary, dominates the visual image perceived by consumers. It consequently concluded that, in view of the dominance of the figurative elements in the mark applied for, in particular the rabbit, and the absence of any counterpart thereto in the earlier sign, the signs are visually dissimilar (paragraphs 13 to 17 of the contested decision).

15      Third, as regards the phonetic comparison of the signs at issue, the Board of Appeal found that, positioned at the respective beginnings of those signs, the words ‘ozmo’ and ‘bobo’ are likely to have more of an impact on the overall visual and phonetic impression than the final identical element ‘cornet’, and that the words ‘bobo’ and ‘ozmo’ will be pronounced with clearly different sounds due to their different beginnings ‘bo’ and ‘oz’. The Board of Appeal accordingly concluded that the signs are similar from the phonetic perspective only to a less than average degree (paragraph 18 of the contested decision).

16      Fourth, as regards the conceptual comparison of the signs, the Board of Appeal held that it could not find any similarity between the signs given that the words ‘bobo’ and ‘ozmo’ have no meaning in any of the relevant languages and hence cannot convey any concept. It stated that the figurative elements are also different. The Board of Appeal then considered that the only element that the signs have in common, namely the word ‘cornet’, cannot establish a conceptual similarity. According to the Board of Appeal, that word will either be understood by the relevant consumer, and will then be perceived as descriptive of the goods, or it will not be understood, and will therefore be unable to convey any concept (paragraph 19 of the contested decision).

17      Fifth, as regards the overall assessment of the likelihood of confusion, the Board of Appeal found that the goods at issue are similar, that the signs demonstrate a phonetic similarity of a less than average degree, that they are visually dissimilar and conceptually void and that, although the signs share the word ‘cornet’, that single common feature is not sufficient to outweigh the differences between the signs at issue. It then found that, having regard to the principle of interdependence established by the Court of Justice, even where the identity between the goods is assumed, this is counteracted by the visual dissimilarity and the less than average degree of phonetic similarity between the signs. The Board of Appeal consequently concluded that, even if the goods at issue are identical, the other factors are sufficient to exclude any likelihood of confusion, including a risk of association, which cannot be based on a low degree of phonetic similarity, and it dismissed the appeal (paragraphs 20 to 23 of the contested decision).

 Forms of order sought

18      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs incurred for the purpose of the proceedings before the Court and for the purpose of the appeal and opposition proceedings.

19      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

20      The intervener claims that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

21      In support of the action, the applicant relies on two pleas in law. The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009 and the second alleges infringement of (i) Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) and, more particularly, breach of the duty to state reasons, and (ii) infringement of Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001) and, more particularly, breach of the duty of diligence.

 First plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

22      The applicant claims that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009. The Board of Appeal, it submits, erred in the comparison of the goods, in the comparison of the signs, visually, phonetically and conceptually, as well in as the likelihood of confusion between the signs.

23      EUIPO disputes the applicant’s arguments.

 Preliminary observations

24      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 cannot 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 mark.

25      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 of the goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence of 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).

26      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 and its level of attention

27      It is appropriate to uphold the contested decision inasmuch as the Board of Appeal found, first, that since the applicant relied on an earlier international registration, the relevant territory covered by the earlier right consists of the Member States of the European Union designated by that international registration, namely Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Spain, France, Croatia, Italy, Luxembourg, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia and the United Kingdom, and, second, that the goods in question are everyday consumer goods directed at the public at large, who will display an average level of attention. Those findings are, moreover, not contested by the applicant.

 Comparison of the signs at issue

28      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 those signs, bearing in mind, in particular, 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 proceed to analyse 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).

29      Moreover, an assessment of the similarity between two trade marks means more than taking just one component of a composite 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. 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, paragraphs 41 and 42 and the case-law cited).

–       The visual comparison

30      The Board of Appeal took the view, in essence, in paragraphs 15 to 17 of the contested decision, that the signs are visually dissimilar, notwithstanding the word ‘cornet’, in view of the dominance of the figurative elements in the mark applied for, and in particular the element of the rabbit, occupying more than half of the sign, which constitutes a striking feature of it and has no counterpart in the earlier international registration. The mere fact that the words ‘bobo’ and ‘ozmo’ share the same vowel ‘o’ does not, by contrast, make them similar. Furthermore, in paragraph 18 of the contested decision, the Board of Appeal found that the initial element ‘ozmo’ of the earlier international registration and the initial element ‘bobo’ of the mark applied for are likely to have more of an impact on the overall visual and phonetic impression than the final element ‘cornet’.

31      The applicant challenges those assessments, claiming, first of all, that it has been held that, where a mark consists of verbal and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than by describing the figurative element of the mark (judgment of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 35).

32      It follows, according to the applicant, that in the present case the dominant element in the mark applied for consists of the terms ‘bobo’ and ‘cornet’, stylised and framed by a black line, and not of the image of the rabbit, which ought to have been given less importance than that expression. The applicant further submits that the figurative element, that is to say, the rabbit, taking into account its current use for confectionery marks, is likely to be perceived as solely decorative. According to the applicant, the expression ‘bobo cornet’ will be perceived as the name of the goods in question, which are everyday consumer goods, and the consumer will remember that expression.

33      EUIPO and the intervener dispute those claims.

34      According to settled case-law, where a mark consists of both figurative and verbal elements, it does not automatically follow that it is the verbal elements which must always be considered to be dominant. In the case of a composite mark, the figurative element may hold an equivalent position to the verbal element (see judgment of 9 February 2017, International Gaming Projects v EUIPO — adp Gauselmann (TRIPLE EVOLUTION), T‑82/16, not published, EU:T:2017:66, paragraph 34 and the case-law cited.).

35      Further, it is appropriate to examine the intrinsic qualities of the figurative elements and the verbal elements of the mark applied for, as well as their respective positions, in order to identify, where appropriate, whether one of those elements is dominant (see judgment of 9 February 2017, TRIPLE EVOLUTION, T‑82/16, not published, EU:T:2017:66, paragraph 35 and the case-law cited).

36      With regard to the present case, it must be stated that the Board of Appeal did not err when it found that the representation of the rabbit holding an ice cream cornet occupies two thirds of the mark applied for and that it therefore constitutes a particularly striking feature of that sign.

37      In addition, the verbal elements ‘bobo’ and ‘cornet’ framed by a thin black line depicting a cloud in the upper left-hand corner of the mark applied for, even though not insignificant, occupy a less prominent position than does the representation of the rabbit holding an ice cream cornet. Among those verbal elements, the initial element ‘bobo’ of the mark applied for has more of a visual impact than the final element ‘cornet’, given the larger size of its letters in relation to those of the word ‘cornet’.

38      As regards the visual perception of the earlier international registration by the relevant public, the Board of Appeal was correct in finding that the initial element ‘ozmo’ is likely to have a greater visual impact than the element ‘cornet’. The word ‘ozmo’ is written in larger letters than the word ‘cornet’ and is framed by a thin black line.

39      The visual comparison of the signs at issue does, admittedly, establish, as the Board of Appeal has stated, that those signs share the word ‘cornet’ and that the words ‘bobo’ and ‘ozmo’ share the same vowel ‘o’. However, as the Board of Appeal has also observed, the mark applied for can be distinguished from the earlier international registration by the representation of the rabbit holding an ice cream cornet which dominates its visual representation and which has no counterpart in the earlier international registration. Furthermore, the mark applied for can be distinguished visually from the earlier international registration by the word ‘bobo’, which in the overall impression will be perceived by the relevant public as being visually different from the word ‘ozmo’. Those two words will also be regarded as being visually more important than the word ‘cornet’ which is common to the two marks in question. Consequently, it must be held that the Board of Appeal was correct in finding that, following a comparison, the relevant public will perceive the signs in question as visually dissimilar.

40      That conclusion is not called into question by the arguments put forward by the applicant.

41      The applicant argues, first of all, in essence, that the Board of Appeal erred in law in failing to take account of the case‑law to the effect that, where a mark is composed of verbal and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than by describing the figurative element of the mark (judgment of 18 September 2012, BÜRGER, T‑460/11, not published, EU:T:2012:432, paragraph 35).

42      It follows, according to the applicant, that the Board of Appeal erred in not finding that the dominant elements of the mark applied for are the elements ‘bobo’ and ‘cornet’.

43      It is, however, necessary to reject that argument in so far as, as EUIPO contends, it follows from what is now well-established case-law that the rule of general experience relied on by the applicant and previously laid down by the case-law has been clarified and nuanced by subsequent case-law which holds that, having regard to the characteristics of the figurative element, the latter could either contribute visually to the overall impression created by that mark or be the dominant element of that mark (see, to that effect, judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT), T‑449/13, not published, EU:T:2015:839, paragraph 81 and the case-law cited).

44      In the present case, for the reasons set out in paragraphs 36 and 39 above, the applicant errs in arguing that the dominant element in the mark applied for is the expression ‘bobo cornet’ and not the rabbit holding an ice cream cornet.

45      Nor can the applicant succeed in its argument that the figurative element, that is to say, the rabbit holding a cornet, taking into account its current use for confectionery marks, is likely to be perceived as being solely decorative.

46      It must be held that the applicant has not adequately substantiated that assertion.

47      In so far as the applicant seeks to rely on the single package with the image of a rabbit which it produced before the Opposition Division and to which it does not refer in its application, it must be held that reliance on a single package is in any event insufficient to substantiate its allegation, without there being any need to rule on the admissibility of the reference — which is general and gives no further details — to the annexes to its pleadings or to the case file relating to the proceedings before EUIPO which the applicant made in paragraph 8 of its application. In addition, and in any event, it must be held that the rabbit holding a cornet is not a purely decorative element likely to be accessory, but is the most striking visual element in the mark applied for.

48      In addition, and as EUIPO correctly submits, the intervener did not file an application for registration of all representations of rabbits but solely registration of the representation of a very specific rabbit, with a tilted ear and holding a cornet, above which is the representation of a cloud containing a verbal element.

49      In respect of the applicant’s assertion that the Board of Appeal ought to have based its analysis on the perception of the consumer of the goods in question and not on that of the consumer in general, it must be held that this assertion is at variance with the applicant’s claim, in paragraph 41 of its application, according to which the consumer of the goods in question is precisely the general public. Furthermore, EUIPO correctly submits that the goods in question are everyday consumer goods which are aimed at the general public and that the applicant has not put forward any argument seeking to challenge the Board of Appeal’s finding in that regard.

50      Lastly, the applicant maintains that the Board of Appeal failed to take sufficient account of several similarities between the elements ‘bobo’ and ‘cornet’ in the mark applied for and ‘ozmo’ and ‘cornet’ in the earlier international registration, which, having regard to the verbal element which it considers to be the dominant element of the mark applied for, lead to a strong similarity between the signs at issue.

51      First, it must be held, as noted in paragraph 39 above, that the Board of Appeal examined the different elements comprising the signs at issue in paragraphs 15 and 16 of the contested decision and that it is therefore not correct to maintain that it did not take into account the verbal element of the signs in the course of their visual comparison.

52      Second, it should be recalled that, for the reasons set out in paragraph 39 above, the applicant errs in contending that the dominant element of the mark applied for is not the representation of the rabbit holding a cornet.

–       The phonetic comparison

53      The Board of Appeal took the view, in paragraph 18 of the contested decision, that the verbal elements of the signs at issue both consist of two parts, the respective first parts being ‘bobo’ and ‘ozmo’, each including the vowel ‘o’ twice, and the second being the identical word ‘cornet’. It found next that the words ‘bobo’ and ‘ozmo’ are pronounced with clearly different sounds in all of the relevant languages, due to their different beginnings, in the present case ‘bo’ and ‘oz’. Recalling that, according to the case-law, even if he perceives marks as a whole, the consumer generally pays greater attention to the beginning of a mark than to the end, the Board of Appeal took the view that the words ‘bobo’ and ‘ozmo’ are likely to have a greater phonetic impact than the word ‘cornet’ and it concluded that the signs are phonetically similar only to a lower than average degree.

54      The applicant contests those findings, arguing, in essence, first, that the Board of Appeal failed to take into consideration all the relevant factors, including the length and the structure of the verbal elements, and, second, that it relied quite formally on existing case-law to the effect that the initial element is likely to have a greater impact on the overall phonetic impression without considering whether such case-law is applicable to the case at hand. The applicant thus concludes that the signs at issue present an above average phonetic similarity.

55      EUIPO and the intervener dispute those claims.

56      It should be observed that it is settled case-law that the first part of the verbal elements of a mark is likely to attract the consumer’s attention to a greater extent than the following parts, in both the visual and phonetic assessments of the mark in question (see, to that effect, judgments of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51; of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 72; and of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 62).

57      In the present case, the Board of Appeal did not err in finding that the words ‘bobo’ and ‘ozmo’ of the marks in question will have a greater phonetic impact amongst the relevant consumers than will the word ‘cornet’. As the marks in question each consist of two words and those words, considered together, constitute a relatively long combination, it is accordingly likely that the relevant public will pronounce only the first word of each of them when purchasing the goods designated by those combinations. That will be the case in particular for the part of the relevant public with an understanding of the meaning of the word ‘cornet’, which will perceive that word as having a descriptive character and which will therefore refrain from pronouncing it when making the purchase.

58      The Board of Appeal consequently did not err in referring to the case-law cited in paragraph 56 above when it carried out the phonetic comparison of the signs at issue.

59      It is therefore appropriate, first, to reject the applicant’s line of argument that the Board of Appeal should not have accorded more weight to the initial element of each of the verbal elements but should have considered them as a whole and, consequently, should have attached identical weight to the word ‘cornet’ for the purposes of its assessment and, second, to uphold the Board of Appeal’s assessment that, in the present case, the words ‘bobo’ and ‘ozmo’ of the signs at issue are likely to have a greater phonetic impact than the word ‘cornet’.

60      It is also necessary to uphold the Board of Appeal’s assessment that the words ‘bobo’ and ‘ozmo’ are pronounced very differently in all of the relevant languages due to their different respective first syllables.

61      The applicant’s contention that those elements consist of the same number of syllables and include the same vowels ‘o’, one of which is in the same position in each of the elements, which leads to the words ‘bobo’ and ‘ozmo’ having the same rhythm in pronunciation, must therefore be rejected as not altering that assessment.

62      As EUIPO correctly submits, even if the two initial verbal elements consist of two identical vowels and two consonants, the differing arrangement of their letters neutralises to a large extent their elements of similarity.

63      It must therefore be held that the Board of Appeal acted correctly in finding that the degree of phonetic similarity of the marks in question is below average.

–       The conceptual comparison

64      It should be noted that, in paragraph 19 of the contested decision, the Board of Appeal stated that it could not find any conceptual similarity between the signs given that the words ‘bobo’ and ‘ozmo’ have no meaning in any of the relevant languages and hence cannot convey any concept. It stated that the figurative elements were also different. The Board of Appeal found next that the only element that the signs have in common, namely the word ‘cornet’, could not establish any conceptual similarity. According to the Board of Appeal, that word will either be understood by the relevant consumer, in which case it will be perceived as descriptive of the goods, or it will not be understood and will therefore be unable to convey any concept.

65      The applicant challenges those assessments and asserts that, for consumers who understand the meaning of the word ‘cornet’, the Board of Appeal’s statement is based on an incorrect interpretation of the principles relating to the conceptual comparison of the signs. It maintains that, as a general rule, the conceptual comparison is not influenced by the goods and services in question. Therefore, it does not matter that the word may be perceived as descriptive of the goods by the consumers who understand its meaning. Furthermore, according to the applicant, the word ‘cornet’ is not descriptive of all of the goods and, for the goods for which it could be descriptive, it still conveys a clear meaning. According to the applicant, the signs are consequently conceptually similar for consumers who understand the meaning of the word ‘cornet’, namely French- and English-speaking consumers.

66      EUIPO, supported by the intervener, disputes those assertions.

67      The applicant’s line of argument cannot succeed. First, the Board of Appeal correctly found in the course of the conceptual comparison of the signs at issue that their figurative elements are different. The figurative elements of the mark applied for depict a rabbit holding a cornet and the figurative elements of the earlier mark do not contain any such representation.

68      Second, it must be held that the Board of Appeal did not err when it found that the words ‘bobo’ and ‘ozmo’ have no meaning and cannot therefore convey any concept, a finding which is, moreover, not disputed by the applicant.

69      Third, as regards the word ‘cornet’, it is appropriate, first of all, to examine the case of the public which may not understand the meaning of that word.

70      In that regard, the decision of the Board of Appeal must be upheld in so far as it found that, for that public, that word will not convey any concept, a finding which is, moreover, not disputed by the applicant.

71      Consequently, the Board of Appeal correctly concluded that, for the part of the relevant public which does not understand the meaning of the word ‘cornet’, the signs at issue, considered as a whole, are not in any way conceptually similar.

72      Next, as regards the public likely to understand the meaning of the word ‘cornet’, the Board of Appeal took the view that that word could not give rise to any conceptual similarity as it would be regarded as being descriptive of the goods in question.

73      The applicant argues, first, that the conceptual comparison of the signs is not influenced by the goods in question, and, second, even though it does not dispute that the word ‘cornet’ is descriptive of a part of the goods at issue, it nevertheless, even in that case, conveys a concept likely to be understood by the public which understands the meaning of that word.

74      However, as EUIPO correctly maintains, the assessment of the degree of similarity, particularly at the conceptual level, involves the taking into account of the distinctive and potentially descriptive character of the common elements of the signs at issue, that character itself depending on the goods or services in question.

75      The applicant’s line of argument on that point must, therefore, be rejected.

76      In addition, the Board of Appeal found, in the present case, that the word ‘cornet’ conveys a clear concept for the part of the relevant public which understands the meaning of that word, contrary to what the applicant states.

77      It must also be held that, in the present case, the Board of Appeal properly found that, having regard to its descriptive meaning for the goods in question, that common term could not, in itself, give rise to any significant conceptual similarity.

78      The assessment of the similarity between two marks presupposes a comparison by examining each of the marks in question as a whole and taking into account the fact that the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components (see paragraph 29 above).

79      In the present case, regard must be had, first, to the presence of the rabbit holding a cornet, which assumes a dominant character in the mark applied for, and to the absence of any comparable figurative element in the earlier international registration and, second, to the absence of any concept conveyed respectively by the words ‘bobo’ and ‘ozmo’, as the Board of Appeal correctly observes.

80      As for the word ‘cornet’, it is true that that verbal element is present in the two signs at issue but, in view of its descriptive, and therefore non-distinctive, character, and having regard to the absence of any concept conveyed by the words ‘bobo’ and ‘ozmo’ and to the presence of a dominant figurative element in the mark applied, in contrast to the earlier international registration, the mere circumstance that that verbal element is present in the two signs at issue cannot in itself introduce an even low degree of conceptual similarity.

81      The applicant asserts that the word ‘cornet’ is, however, not descriptive of all of the goods.

82      That argument cannot, however, succeed.

83      The word ‘cornet’ may designate the kind or the intended purpose of the goods, and the yoghurts and milk beverages, milk predominating, referred to in Class 29, the candy, confectionery made of sugar, cocoa products, cocoa-based beverages, powders for ice cream and chocolate beverages with milk referred to in Class 30 and the almonds (milk of -) [beverage], non-alcoholic beverages and milk (peanut -) [non-alcoholic beverage] referred to in Class 32 are likely to be served in a cornet, to appear in the shape of a cornet, to be enclosed in a cornet or to be the ingredients of ice cream cornets.

84      Consequently, the applicant’s line of argument must be rejected in its entirety.

–       Conclusion on the comparison of the signs at issue

85      It must therefore be found that the Board of Appeal did not err when it took the view that the signs at issue are visually and conceptually dissimilar and that they display only a lower than average degree of phonetic similarity.

 Comparison of the goods

86      It should be noted that the Opposition Division found that the goods in question are partly identical, partly similar and partly dissimilar.

87      The applicant claimed before the Board of Appeal that the goods are partly identical and partly similar.

88      The Board of Appeal found that the goods are similar (paragraph 20 of the contested decision). It further took the view, in essence, that that finding as regards the global assessment of the likelihood of confusion would remain unchanged even if the goods were identical (paragraphs 21 and 22 of the contested decision).

89      The applicant maintains, in essence, that the contested decision is unclear as to whether the goods in question are similar or identical and argues that the goods are partially identical and partially similar, or even highly similar.

90      It must be held, as EUIPO has done, that that argument is irrelevant.

91      It must be held that it is true that the wording adopted by the Board of Appeal is not particularly clear, but, as EUIPO submitted, since it held that any likelihood of confusion would be excluded even if the goods were identical, the absence of an express finding on the identity or the degree of similarity of the goods compared has no impact on the outcome of the dispute.

92      The applicant’s argument must therefore be rejected.

 Global assessment of the likelihood of confusion

93      It should be noted that, according to settled case-law, the existence of a likelihood of confusion presupposes both that the mark applied for and the earlier international registration 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 international registration 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).

94      It must be recalled that the Board of Appeal did not err when it considered that the signs at issue are visually and conceptually dissimilar and display only a low degree of phonetic similarity.

95      In the light of the dominant character of the rabbit holding the cornet in the mark applied for, the visual and phonetic difference between the marks in question with regard to the words ‘bobo’ in the mark applied for and ‘ozmo’ in the earlier international registration, and the secondary character of the word ‘cornet’ having regard to its position, its size and its descriptive character in relation to the other elements of the marks in question, the Board of Appeal was correct to find that there is no likelihood of confusion between those marks.

96      Despite the low degree of similarity which may exist between the marks in question by reason of the common element ‘cornet’, the differentiating elements between the marks are such that the relevant public will not be misled as to the commercial origin of the goods in question.

97      The Board of Appeal therefore acted correctly in law in holding, in paragraphs 20 to 22 of the contested decision, that, having regard to the principle of interdependence referred to in paragraph 93 above, any likelihood of confusion is ruled out even for identical goods.

98      The first plea must therefore be rejected in its entirety.

 Second plea in law, alleging infringement of Article 75 of Regulation No 207/2009 and, more particularly, breach of the duty to state reasons, and also infringement of Article 76(1) of that regulation and, more particularly, breach of the duty of diligence

99      In support of its second plea, the applicant argues that the contested decision is vitiated by a lack of reasoning and that the Board of Appeal failed to fulfil its duty of diligence on the ground that, in essence, it refrained from any examination of the facts and arguments put forward by the applicant.

100    The applicant further submits, in essence, that the Board of Appeal merely carried out a brief analysis of the phonetic and conceptual comparison of the signs and that there was no analysis of the goods in question.

101    It should be recalled that, according to settled case-law, the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted that measure, in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question of whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65; of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 73; and of 23 January 2014, Novartis v OHIM (CARE TO CARE), T‑68/13, not published, EU:T:2014:29, paragraph 27).

102    It must be held that the statement of reasons for the contested decision as regards the phonetic and conceptual comparison of the signs, even though it is brief, enabled the applicant to substantiate its case before the Court and enabled the Court to understand the reasons which had led the Board of Appeal to find that the signs are phonetically similar to a lower than average degree and that they are conceptually dissimilar.

103    The applicant’s arguments on that point must therefore be rejected.

104    The same is true as regards the lack of detailed analysis of the goods in question, an argument which proves to be of no consequence for the reasons set out in paragraph 91 above. Consequently, the Board of Appeal did not breach its duty of diligence.

105    The second plea must therefore be rejected in its entirety.

106    Accordingly, the action must be dismissed.

 Costs

107    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.

108    Since the applicant has been unsuccessful in the present case, 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 Şölen Çikolata Gıda Sanayi ve Ticaret AŞ to pay the costs.

Delivered in open court in Luxembourg on 17 April 2018.

*      Language of the case: English.

© European Union
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