JUDGMENT OF THE GENERAL COURT (Third Chamber)
8 January 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark AlìBabà – Earlier EU word mark ALIBABA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑1082/23,
Fresh Tropical Srl by Jawad, established in Seveso (Italy), represented by G. Nosengo, V. Liebermann and L. Di Maria, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Alper Altunyaldiz, residing in Mainz (Germany), represented by M. Thewes and S. Lamothe, lawyers,
THE GENERAL COURT (Third Chamber),
composed of I. Nõmm (Rapporteur), acting as President, G. Steinfatt and D. Kukovec, Judges,
Registrar: R. Ūkelytė, administrator,
having regard to the written part of the procedure,
further to the hearing on 11 September 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Fresh Tropical Srl by Jawad, seeks the annulment and the alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 September 2023 (Joined Cases R 418/2023-4 and R 427/2023-4) (‘the contested decision’).
Background to the dispute
2 On 20 July 2018, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods in Classes 29 and 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding, for each of those classes, to the following description:
– Class 29: ‘Processed pulses’;
– Class 30: ‘Rice; spices; seasonings, flavourings and condiments; flour’.
4 On 23 August 2018, the intervener, Mr Alper Altunyaldiz, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based, in the first place, on EU word mark No 16 732 984 ALIBABA, filed on 18 May 2017 and registered on 29 August 2017, covering goods in Class 29 corresponding to the following description: ‘Roasted nuts; dried nuts; nuts being cooked; processed nuts; ground nuts; nuts, prepared; blanched nuts; candied nuts; flavoured nuts; salted nuts; edible nuts; preserved nuts; shelled nuts; spiced nuts; snack foods based on nuts; snack mixes consisting of dehydrated fruit and processed nuts; processed fruits, fungi and vegetables (including nuts and pulses)’.
6 In the second place, the opposition was also based on EU figurative mark No 16 553 737 Alibaba NUTS, filed on 5 April 2017 and registered on 18 July 2017, reproduced below, covering goods in Class 29 corresponding to the following description: ‘Roasted nuts’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of 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).
8 On 20 December 2022, the Opposition Division upheld the opposition in part on the ground that there was a likelihood of confusion between the mark applied for and earlier EU word mark No 16 732 984 ALIBABA and thus rejected the application for registration of the mark applied for in respect of the following goods:
– Class 29: ‘Processed pulses’;
– Class 30: ‘Spices; seasonings, flavourings and condiments’.
9 Both the applicant (Case R 418/2023-4) and the intervener (Case R 427/2023-4) filed a notice of appeal with EUIPO, on 17 February 2023 and on 20 February 2023 respectively, against the decision of the Opposition Division. The appeal against that decision was brought by the applicant in so far as the opposition was upheld with regard to the goods referred to in the preceding paragraph, on the one hand, and by the intervener in so far as the opposition was rejected, on the other.
10 By the contested decision, after joining the cases referred to in the preceding paragraph, the Board of Appeal dismissed the appeal brought by the applicant and upheld the appeal brought by the intervener. It first of all examined earlier EU word mark No 16 732 984 ALIBABA and found that there existed a likelihood of confusion on the part of the relevant public, having regard to the fact that, first, the relevant public consisted of the public at large, which displayed a low or average level of attention; second, the goods in question were in part identical and in part similar to a low degree; third, the signs at issue were visually similar to a high degree, were phonetically similar to a high degree or identical, and were conceptually identical or neutral; and fourth, the earlier mark had an average degree of inherent distinctiveness. It then considered that there was no need to examine the other earlier mark invoked by the intervener.
Forms of order sought
11 The applicant claims, in essence, that the Court should:
– annul in whole or in part and, where appropriate, alter the contested decision;
– order EUIPO and the intervener to pay the costs, including those incurred in the previous proceedings.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
13 The intervener contends, in essence, that the Court should:
– dismiss the action;
– order the applicant to bear the costs incurred by the intervener, including those incurred in the previous proceedings.
Law
14 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
Admissibility of some of the applicant’s arguments
15 In the first place, EUIPO contends that the applicant’s arguments referring to Annex A.22 as set out in paragraph 40 of the application and the arguments referring to Annexes A.15 and A.22 as set out in paragraph 68 of the application are inadmissible, in so far as they provide only general, and therefore insufficiently precise, en bloc references to the applicant’s own previous written submissions. In the second place, it maintains that the argument relating to the alleged non-use of the earlier word mark ALIBABA is irrelevant for the purposes of the present proceedings.
16 In the first place, it should be borne in mind that, while the text of the application can be supported by references to extracts in documents annexed to it, it is not for the Court to seek and identify in the annexes the pleas and arguments on which it may consider the action to be based, the annexes having a purely evidential and instrumental function. It follows that an application, in so far as it refers to pleadings submitted to EUIPO, is inadmissible to the extent to which the general references in it cannot be linked to the pleas and arguments put forward in that application itself (see judgment of 26 July 2023, Yayla Türk v EUIPO – Marmara Import-Export (Sütat), T‑315/22, not published, EU:T:2023:432, paragraph 21 and the case-law cited).
17 In that regard, first, it must be stated that, in paragraphs 40 and 68 of the application, the applicant makes a general reference to Annex A.22 containing the observations which it submitted to the Board of Appeal on 13 June 2023.
18 Therefore, in so far as the applicant has not in any way identified the relevant extracts of the annex in question, it is not for the Court to seek in that annex the arguments to which the applicant might be referring. Accordingly, the reference thus made to Annex A.22 is, to that extent, inadmissible.
19 Second, in paragraph 40 of the application, the applicant also refers to page 26 of Annex A.15. Since the number on the first page of Annex A.15 was 110 and the page numbering specific to that annex was not mentioned, the applicant was called upon at the hearing to confirm that page 26 of that annex corresponded to page 136 thereof, which the applicant did. It clarified, on that occasion, that its arguments relating to the issue of the similarity between ‘rice’ and ‘pulses’ extended from the abovementioned page 136 to page 138 of that annex, of which the Court took formal note.
20 Similarly, although, in paragraph 68 of the application, the applicant made a general reference to Annex A.15 regarding the arguments relating to the similarity between ‘spices, seasonings, flavourings and condiments’, on the one hand, and ‘processed vegetables’, on the other, the clarifications provided by the applicant at the hearing with regard to ‘rice’ have made it possible to establish that the arguments concerning that product appeared in the same paragraph as those relating to the other goods referred to above. Those arguments relating to the other goods at issue must therefore be declared admissible.
21 In the second place, as regards the argument relating to the alleged non-use of the earlier mark, it should be recalled that the issue of proof of genuine use of the earlier mark must be raised expressly and timeously before the Opposition Division, as genuine use of the earlier mark is a matter which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper. Accordingly, that issue cannot be raised for the first time before the Board of Appeal or before the General Court (see judgment of 15 May 2024, Korkmaz v EUIPO – Intersnack Deutschland (CETOS), T‑308/23, not published, EU:T:2024:312, paragraph 19 and the case-law cited).
22 In the present case, it must be observed that the applicant did not make a request for proof of use of the earlier mark before the Opposition Division, a point which, moreover, it does not dispute. Consequently, the argument relating thereto must be regarded as inadmissible (see, to that effect, judgment of 15 May 2024, CETOS, T‑308/23, not published, EU:T:2024:312, paragraphs 20 and 21).
The single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
23 In the context of its single plea in law, the applicant submits that the Board of Appeal made an incorrect assessment regarding, first, the similarity of the goods covered by the marks at issue; second, the similarity of the signs at issue; third, the inherent distinctiveness of the earlier mark; fourth, the definition of the relevant public, the level of attention of that public and the distribution channels; and, fifth, the existence of a likelihood of confusion.
24 EUIPO and the intervener dispute the arguments put forward by the applicant.
25 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.
26 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. 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 2017/1001, 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).
28 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
29 It is in the light of those considerations that the present plea in law must be examined.
30 As the Board of Appeal found there to be a likelihood of confusion with regard to EU word mark No 16 732 984 ALIBABA (‘the earlier mark’), it is necessary to review the assessments relating to that mark.
Relevant public
31 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
32 In the present case, the Board of Appeal considered, first, that the goods at issue were directed at the general public with a level of attention which varied from below average to average depending on the price or speciality of the foodstuff and, second, that the protection of the earlier mark extended to the whole of the European Union.
33 The applicant submits that, contrary to what the Board of Appeal found, the relevant public comprises both specialised and general audiences with a high degree of attention. It maintains that the goods in question are aimed at a specialised public with a high level of attention, given that the goods in question are also sold wholesale and that they are additionally aimed at end consumers who must also be regarded as a specialised public with a high level of attention, since the goods in question can be purchased only in markets specialising in ethnic products, which have a clientele from eastern and South American countries that has immigrated to Europe and has not abandoned its traditions.
34 EUIPO and the intervener dispute the arguments put forward by the applicant.
35 As regards the applicant’s arguments relating to the use which it has made of the mark applied for, namely the sale of goods covered by that mark wholesale or in specialised stores, it should be borne in mind that the relevant public must be defined on the basis of the list of goods and services as covered by the marks at issue and not on the basis of the commercial choices made by the proprietors of those marks (see, to that effect, judgment of 21 November 2019, K.A. Schmersal Holding v EUIPO – Tecnium (tec.nicum), T‑527/18, not published, EU:T:2019:798, paragraph 49).
36 In that regard, it is clear from settled case-law that the rights conferred or capable of being conferred by the marks at issue extend to each category of goods or services in respect of which those marks are protected or to each category of goods or services covered by the application for registration. The commercial choices made or which may be made by the proprietors of the marks at issue are factors which must be distinguished from the rights derived from those marks and may change, since they depend solely on the will of the proprietors of those marks. So long as the list of the goods covered by the marks at issue has not been amended, such factors cannot affect the relevant public to be taken into account in the assessment as to whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 (see judgment of 21 November 2019, tec.nicum, T‑527/18, not published, EU:T:2019:798, paragraph 50 and the case-law cited).
37 Thus, even if the applicant intended to direct its activities towards professionals by selling the goods at issue wholesale or in specialised stores, that fact is irrelevant in determining the relevant public (see, to that effect, judgment of 14 September 2022, Gioioso v EUIPO – Maxi Di (MARE GIOIOSO di Sebastiano IMPORT EXPORT), T‑423/21, not published, EU:T:2022:562, paragraph 27).
38 Therefore, it must be held, as the Board of Appeal did, that, having regard to the fact that the goods at issue in Classes 29 and 30, as they were registered, are foodstuffs for everyday consumption, they are aimed at the general public with a level of attention varying from low to average (see, to that effect, judgment of 18 February 2016, Penny-Markt v OHIM – Boquoi Handels (B!O), T‑364/14, not published, EU:T:2016:84, paragraph 16).
39 Consequently, there is no need to call into question the Board of Appeal’s assessment.
Comparison of the goods
40 In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
41 In opposition proceedings, EUIPO may only take account of the list of goods applied for as it appears in the trade mark application, subject to any amendments thereto (see, to that effect, judgment of 22 March 2007, Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraph 89).
42 In the present case, first, with regard to the goods in Class 29, the Board of Appeal considered that ‘processed pulses’ covered by the mark applied for were contained in the category of goods ‘processed fruits, fungi and vegetables (including nuts and pulses)’ covered by the earlier mark and that, therefore, those goods were identical. Second, so far as concerns the goods in Class 30 covered by the mark applied for, it found that they were similar to a low degree to the goods in Class 29 covered by the earlier mark.
43 The applicant maintains, in essence, that the goods covered by the mark applied for are not similar to those covered by the earlier mark, given that they differ on account of their nature, nutritional and organoleptic properties, intended purpose, method of use, producers, end consumers, outlets and distributors. Furthermore, it submits that the goods in question are neither in competition with nor complementary to each other.
44 EUIPO and the intervener dispute the arguments put forward by the applicant.
45 In the first place, with regard to ‘processed pulses’ in Class 29 and covered by the mark applied for, it must be recalled that, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited). The ‘processed pulses’ covered by the mark applied for are included in the category of goods ‘processed fruits, fungi and vegetables (including nuts and pulses)’ covered by the earlier mark. They must therefore be considered to be identical.
46 In the second place, with regard to rice in Class 30 and covered by the mark applied for, the Board of Appeal considered that rice and other foodstuffs such as ‘processed vegetables (including nuts and pulses)’ covered by the earlier mark (together, ‘the goods concerned’) had a similar nature and that they were often used in combination with or as an alternative to each other. Furthermore, it found that they had the same nutritional purpose and that they were sold in the same outlets. That reasoning must be upheld and none of the arguments put forward by the applicant is such as to call it into question.
47 First, the arguments claiming that the goods concerned differ on account of their nature, nutritional and organoleptic properties and method of use cannot suffice to call into question the fact that they are basic foodstuffs and that they are often used in combination with or as an alternative to each other. The same applies to the argument that, in the light of the fact that it is rich in fibre, vitamins and minerals, and has a high carbohydrate content, rice is used as an alternative to pasta in western countries and as the main food of meals in eastern countries. In addition to the fact that that general assertion has not been proved, it does not contradict the Board of Appeal’s finding as to the goods concerned often being used in combination with or as an alternative to each other, or the fact that they are sold in the same outlets.
48 Second, the applicant argues that the goods concerned differ in their intended purpose and their producers and that they target different consumer needs. Furthermore, it submits that the goods covered by the mark applied for are not sold alongside the goods covered by the earlier mark and that they are not alternatives. In addition, the applicant maintains that the goods in question are neither in competition with nor complementary to each other and are produced by different undertakings. In support of those arguments, it confines itself to referring to the decision-making practice of the Opposition Division of EUIPO.
49 In that regard, it suffices to recall that, according to settled case-law, the Boards of Appeal are not bound by the decisions of lower adjudicating bodies of EUIPO (see judgment of 19 September 2019, Showroom v EUIPO – E-Gab (SHOWROOM), T‑679/18, not published, EU:T:2019:631, paragraph 96 and the case-law cited). Therefore, the references to the decision-making practice of the Opposition Division cannot, by themselves, call into question the Board of Appeal’s assessment regarding the similarity of the goods concerned.
50 Third, the applicant submits that the fact that rice can be consumed together with beans, legumes or vegetables is of no importance for the purpose of determining similarity between the goods. Furthermore, it maintains that rice is not interchangeable with pulses or vegetables since they have different functionalities. However, in line with what has been stated in paragraph 47 above, the applicant has not adduced any evidence in support of its claims.
51 In any event, it must be observed that, in paragraph 46 of the contested decision, the Board of Appeal carried out a complete assessment of the similarity between rice and processed vegetables, including beans, covered by the earlier mark by taking into account their nature, their nutritional purpose, their method of use, whether they are in competition with each other or are complementary, and their distribution channels, in accordance with the case-law cited in paragraph 40 above.
52 Accordingly, even if there are some differences between rice and pulses, as the applicant maintains, the fact remains that the Board of Appeal was correct in finding that the goods concerned were similar to a low degree, in view of the fact that they have the same nutritional purpose, are found in the same outlets and may originate from the same undertakings.
53 In the third place, as regards flour in Class 30 and covered by the mark applied for, the Board of Appeal considered that it was similar to a low degree to ‘processed vegetables (including nuts and pulses)’ covered by the earlier mark, since flours based on processed pulses such as beans and peas may serve as flour alternatives. In addition, it stated that ‘ground nuts’ covered by the earlier mark could also be used as a substitute for flour when baking and consumers would therefore look for those goods in the same outlets.
54 The applicant relies on the same arguments and on the same decisions of the Opposition Division of EUIPO as those put forward in respect of the product ‘rice’. Moreover, it submits that, unlike ‘processed vegetables (including nuts and pulses)’, flour is not a product that is ready to be eaten on its own.
55 First, as stated in paragraph 49 above, the Board of Appeal is not bound by the decisions of the Opposition Division of EUIPO.
56 Second, with regard to the argument that flour differs from the goods covered by the earlier mark in that it is an ingredient and not a dish ready to be eaten, it must be stated that processed pulses are not ready to be eaten either and also require preparation, such as boiling.
57 It is true that there are some differences between the goods referred to in paragraph 53 above. However, the fact remains that, as the Board of Appeal correctly found, there is also a low degree of similarity, given that processed pulse-based flours or ground nuts are commonly used as a substitute for flour.
58 In the fourth place, as regards ‘spices, seasonings, flavourings and condiments’ in Class 30 and covered by the mark applied for, the Board of Appeal stated that they were similar to a low degree to ‘processed vegetables (including nuts and pulses)’ covered by the earlier mark given that, first, the latter included dried vegetables (such as mushrooms or tomatoes), which are used for seasoning dishes, in the same way as the goods covered by the mark applied for. Second, it noted that those goods could have the same method of production, the same producers and be sold in the same outlets. Lastly, it considered that they were aimed at the same consumers and were often complementary to each other.
59 The applicant submits that the Board of Appeal’s findings are general, insufficient and unfounded. It argues that the goods referred to in paragraph 58 above cannot be regarded as similar on the ground that they are vegetable in nature, since all foodstuffs are either animal or vegetable in nature. Furthermore, it maintains that those goods differ in their intended purpose, their method of use and their production, and that they are not complementary to each other. In addition, it argues that those goods have different purposes, in that the goods in Class 29 have the purpose of providing nourishment while the goods in Class 30 have the purpose of flavouring or seasoning.
60 It must be stated that, according to the case-law, some nuts in Class 29 may be used to add flavour to foodstuffs. Because of that use, which is sometimes similar to that of spices, they can be in competition with the latter. Lastly, those goods may also be sold at the same outlets as spices (judgment of 4 October 2016, Lidl Stiftung v EUIPO – Horno del Espinar (Castello), T‑549/14, not published, EU:T:2016:594, paragraph 76).
61 In that regard, the argument put forward by the applicant before the Opposition Division, according to which many spices, seasonings, flavourings and condiments also have other uses, for example for food preservation and in religious rituals, cosmetics or perfumery products, is irrelevant. That argument merely highlights other uses of those goods without, however, calling into question the possibility of using them and ‘processed vegetables (including nuts and pulses)’ to season dishes.
62 It must therefore be held that the Board of Appeal was correct in finding that ‘spices, seasonings, flavourings and condiments’ covered by the mark applied for were similar to a low degree to ‘processed vegetables (including nuts and pulses)’ covered by the earlier mark.
63 It follows from the foregoing that the applicant has not put forward any argument capable of calling into question the Board of Appeal’s assessment regarding the similarity of the goods at issue.
Comparison of the signs
64 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarities of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
65 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 15 November 2023, Portal Golf Gestión v EUIPO – Augusta National (imaster.golf), T‑677/22, not published, EU:T:2023:720, paragraph 58 and the case-law cited).
66 In the present case, the Board of Appeal considered that the signs at issue were visually similar to a high degree, were phonetically similar to a high degree or identical and that, from a conceptual point of view, the signs were identical for the part of the relevant public that knows the story ‘Ali Baba and the 40 Thieves’, and for the other part of the public, the comparison remained neutral.
67 The applicant submits, in essence, that the signs are visually, phonetically and conceptually different.
68 EUIPO and the intervener dispute the arguments put forward by the applicant.
69 In the present case, before comparing the marks at issue visually, phonetically and conceptually, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the mark applied for.
– Distinctive and dominant elements of the mark applied for
70 The Board of Appeal considered that the word element ‘alìbabà’ was the most distinctive and dominant element of the mark applied for.
71 The applicant submits that the figurative elements of the mark applied for are not devoid of distinctive character and that they may have a relevance equivalent to that of the word element.
72 EUIPO and the intervener dispute the arguments put forward by the applicant.
73 It is true that, in the case of a composite mark, the figurative element may, in particular on account of its shape, size, colour or position in the sign, rank equally with the word element (see, to that effect, judgment of 12 January 2022, 1031023 B.C. v EUIPO – Bodegas San Valero (Representation of a circle drawn by a brush), T‑366/20, not published, EU:T:2022:4, paragraph 47 and the case-law cited).
74 Nevertheless, it should be recalled that, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods at issue by citing the name than by describing the figurative element of the mark (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
75 In the present case, the Board of Appeal was correct in finding that the blue and gold rectangle which surrounds the word element ‘alìbabà’ is a common geometrical shape that will not be particularly memorable for the public. According to the case-law, that shape is used to highlight information and does not make the mark applied for distinctive (judgment of 15 December 2009, Media-Saturn v OHIM (BEST BUY), T‑476/08, not published, EU:T:2009:508, paragraph 27; see, also, judgment of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO), T‑37/16, not published, EU:T:2016:634, paragraph 42 and the case-law cited).
76 As for the curved line under the letters ‘a’, ‘l’ and ‘ì’, it must be stated, as the Board of Appeal did, that that line does not convey a clear concept and its purpose appears to be to underline the first part of the word element ‘alìbabà’.
77 In that regard, it must be observed that the underlining as well as the colours and typography of the mark applied for are not sufficiently significant to make a striking impression on the consumer and do not constitute elements which will be remembered by the relevant public as being distinctive. They are therefore insignificant elements in the perception that the relevant public will have of the mark applied for (see, to that effect, judgment of 14 September 2011, Olive Line International v OHIM – Knopf (O-live), T‑485/07, not published, EU:T:2011:467, paragraph 88 and the case-law cited).
78 It follows that the Board of Appeal was correct in considering that the word element ‘alìbabà’ constituted the distinctive and dominant element of the mark applied for.
– Visual similarity
79 The Board of Appeal found there to be a high degree of visual similarity between the signs at issue on the ground that the word elements of the two signs coincide.
80 The applicant submits that, due to the presence of the figurative elements in the mark applied for, the two signs are visually different.
81 EUIPO and the intervener dispute the line of argument put forward by the applicant.
82 It must be observed that the distinctive and dominant elements of the signs at issue, namely the word elements ‘alibaba’ and ‘alìbabà’, are practically identical from a visual point of view, the only difference being the presence of the accents on the letter ‘i’ and the last letter ‘a’ in the mark applied for. Consequently, the signs at issue are, as the Board of Appeal correctly found, visually similar to a high degree. That finding cannot be called into question by the presence of the figurative elements in the mark applied for, as those elements are purely decorative.
– Phonetic similarity
83 The Board of Appeal considered that, on the one hand, there was a high degree of phonetic similarity for the part of the public that pronounced the mark applied for differently to the earlier mark on account of the accents on the letter ‘i’ and the final letter ‘a’ in the mark applied for. On the other hand, it found that, for the part of the public that did not pronounce the mark applied for differently on account of the accents, the signs at issue were phonetically identical.
84 The applicant claims that the signs are phonetically different given that the mark applied for is characterised by the accentuation of the letter ‘i’ and of the final letter ‘a’, as well as by the presence of the capital letters ‘A’ and ‘B’ which suggests that the mark applied for is made up of two different words, which are to be read and pronounced with a pause between ‘alì’ and ‘babà’.
85 EUIPO and the intervener dispute the arguments put forward by the applicant.
86 First, with regard to the presence of the capital letters ‘A’ and ‘B’ in the mark applied for, it must be stated that, so far as concerns the earlier mark, the protection which results from the registration of a word mark applies to the word mentioned in the application for registration and not to the specific graphic or stylistic characteristics which that mark might have (see judgment of 26 January 2022, Diego v EUIPO – Forbo Financial Services (WOOD STEP LAMINATE FLOORING), T‑498/20, not published, EU:T:2022:26, paragraph 68 and the case-law cited).
87 Accordingly, that argument is irrelevant since the capital letters could be used in the same way in the earlier mark (see, to that effect, judgment of 29 March 2012, You-Q v OHIM – Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 42 and the case-law cited).
88 Second, as regards the accents on the letter ‘i’ and the final letter ‘a’ of the mark applied for, it must be observed that the applicant has not explained in what way or in what language such accents would lead to a different pronunciation of the mark applied for in relation to the earlier mark. In any event, even with a difference in pronunciation, the fact remains that the accents will not have any effect on the phonetic similarity for the part of the relevant public for which those accents do not exist (see, to that effect, judgment of 30 June 2021, Biovene Cosmetics v EUIPO – Eugène Perma France (BIOVÈNE), T‑232/20, not published, EU:T:2021:396, paragraph 69).
89 Consequently, it must be held that the applicant has not put forward any argument capable of calling into question the Board of Appeal’s finding which, moreover, contains no error of assessment.
– Conceptual similarity
90 The Board of Appeal considered that, for the part of the relevant public that knows the story ‘Ali Baba and the 40 Thieves’, the signs at issue were conceptually identical and, for the other part of the public, the comparison remained neutral.
91 The applicant submits that the mark applied for leads the relevant public to connect the elements of the mark – that is, the name of the literary character Ali Baba, the arabesque font, and the vivid colours, typical of oriental culture – with the oriental world and therefore to consider the mark applied for to be an indication of the origin of the goods covered by it.
92 EUIPO and the intervener dispute the arguments put forward by the applicant.
93 It must be observed that the applicant has in no way explained how the signs at issue, which both include the name of the literary character Ali Baba in their distinctive and dominant elements, would be perceived differently, from a conceptual point of view, by the relevant public. Even if, as the applicant maintains, the relevant public perceives the mark applied for as a reference to the oriental world and therefore to the origin of the goods at issue, there is no reason to consider that the same reasoning does not apply to the earlier mark.
94 It is therefore necessary to uphold the Board of Appeal’s assessment that, on the one hand, the signs are conceptually identical for the part of the relevant public that knows the story ‘Ali Baba and the 40 Thieves’ and, on the other, the conceptual comparison remains neutral for the part of the relevant public that does not associate the signs at issue with that story.
Inherent distinctiveness of the earlier mark
95 The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, second, by reference to the perception of the mark on the part of the relevant public, which consists of the average consumer of those goods or services, who is reasonably well informed and reasonably observant and circumspect (see judgment of 25 October 2023, Quantic Dream v EUIPO – Quentia (Q), T‑458/21, not published, EU:T:2023:671, paragraph 64 and the case-law cited).
96 The Board of Appeal pointed out that the intervener had not claimed that the earlier mark was particularly distinctive by virtue of intensive use or reputation and that, in the light of the fact that that mark had no meaning with respect to any of the goods covered by it, its inherent distinctiveness had to be regarded as average in degree.
97 The applicant submits that the earlier mark has a low degree of distinctiveness given that consumers have now been exposed to extensive use of the sign at issue and are familiar with trade marks that include the word element in question. Furthermore, it alleges that the fact that the earlier mark has no relation to the goods which it identifies is not sufficient to indicate a high degree of distinctiveness.
98 EUIPO and the intervener dispute the arguments put forward by the applicant.
99 It must be stated that, in support of its arguments, the applicant merely refers to ‘evidence presented in the earlier proceedings’. In the light of the case-law cited in paragraph 16 above, the argument based on a reference to evidence produced in the course of the earlier proceedings without any further clarification must be rejected as inadmissible.
100 Furthermore, the argument that the earlier mark has weak distinctive character due to the existence on the market of several trade marks containing the word element ‘alibaba’ must be rejected. Even if the applicant had demonstrated that that word element was commonly used, which is not the case in this instance, it is not because a sign is composed of commonly used words that it must automatically be found that the mark in question has weak distinctive character (see, to that effect, judgment of 1 September 2021, FF IP v EUIPO – Seven (the DoubleF), T‑23/20, not published, EU:T:2021:523, paragraph 122).
101 Consequently, there is no need to call into question the Board of Appeal’s assessment that the earlier mark has an average degree of distinctive character.
Likelihood of confusion
102 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
103 The Board of Appeal considered that there existed a likelihood of confusion between the mark applied for and the earlier mark on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001 having regard to the fact that, first, the goods at issue were in part identical and in part similar to a low degree; second, the relevant public displayed an average or low level of attention; and, third, the signs at issue were visually highly similar, and phonetically and conceptually identical for a non-negligible part of the relevant public. In those circumstances, it found that there was no need to examine earlier EU figurative mark No 16 553 737 Alibaba NUTS, relied on by the intervener.
104 The applicant submits, in essence, that there is no likelihood of confusion given that, first, the goods at issue are not similar; second, the visual comparison is of much greater importance having regard to the fact that the goods at issue are sold in supermarkets; and third, the earlier mark is not being used.
105 EUIPO and the intervener dispute the arguments put forward by the applicant.
106 It follows from paragraphs 40 to 63 above that the Board of Appeal correctly found that, contrary to the applicant’s claim, the goods at issue were in part identical and in part similar to a low degree.
107 With regard to the importance of the visual comparison given the nature of the goods at issue, it follows from the foregoing that the signs are visually similar to a high degree. Therefore, the alleged high importance of the visual comparison, which is claimed to stem inter alia from the fact that the goods at issue are in principle sold in supermarkets, can only reinforce the Board of Appeal’s assessment that there exists a likelihood of confusion.
108 As regards the argument relating to the alleged non-use of the earlier mark, it must be recalled that, as was stated in paragraph 22 above, that argument is inadmissible in the context of the present proceedings since the applicant did not make a request for proof of use of the earlier mark before the Opposition Division.
109 Therefore, the applicant has not put forward any argument capable of calling into question the Board of Appeal’s assessment that there exists a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
110 In the light of all the foregoing considerations, it is necessary to reject the single plea in law relied on by the applicant in support of its claims, and the action must therefore be dismissed in its entirety.
Costs
111 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.
112 First of all, since the applicant has been unsuccessful and a hearing has been held, it should be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by the latter.
113 Next, as regards the intervener’s claim that the applicant should be ordered to pay the costs incurred for the purposes of the proceedings before EUIPO, it is sufficient to state that, since the present judgment is dismissing the action against the contested decision, it is point 4 of the operative part of that decision which continues to determine the costs incurred in the opposition proceedings and in the two sets of appeal proceedings before EUIPO (see, to that effect, judgment of 20 March 2024, Nehera and Others v EUIPO – Zdút (nehera and Others), T‑334/23 to T‑337/23, not published, EU:T:2024:192, paragraph 45 and the case-law cited).
114 Lastly, at the hearing, the intervener submitted a head of claim requesting that the applicant be ordered to pay its costs. According to case-law, it is open to the parties to apply for costs subsequently, even at the hearing, although they did not do so when the action was lodged (judgments of 13 May 2015, Group Nivelles v OHIM – Easy Sanitairy Solutions (Shower drainage channel), T‑15/13, EU:T:2015:281, paragraph 142, and of 20 September 2019, M.I. Industries v EUIPO – Natural Instinct (NATURE’S VARIETY INSTINCT), T‑288/18, not published, EU:T:2019:640, paragraph 93). Accordingly, that head of claim submitted by the intervener is admissible. The applicant must therefore be ordered to pay the costs incurred by the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Fresh Tropical Srl by Jawad to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Mr Alper Altunyaldiz.
Nõmm | Steinfatt | Kukovec |
Delivered in open court in Luxembourg on 8 January 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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