JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

17 February 2017 (*)

(EU trade mark — Opposition proceedings — Application for the EU word mark Paloma — Earlier EU figurative mark Paloma — Relative ground for refusal — Likelihood of confusion — Article 8(1) of Regulation (EC) No 207/2009)

In Case T‑369/15,

Hernández Zamora, SA, established in Murcia (Spain), represented by J.L. Rivas Zurdo and I. Munilla Muños, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Zaera Cuadrado, acting as Agent,

defendant,

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

Rosen Tantau KG, established in Uetersen (Germany), represented by R. Kunze and G. Würtenberger, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 21 April 2015 (Case R 1697/2014-2), relating to opposition proceedings between Hernández Zamora and Rosen Tantau,

THE GENERAL COURT (Ninth Chamber),

composed, at the time of the deliberation, of G. Berardis, President, D. Spielmann and P.G. Xuereb (Rapporteur), Judges,

Registrar: A. Lamote, Administrator,

having regard to the application lodged at the Court Registry on 10 July 2015,

having regard to the response of EUIPO lodged at the Court Registry on 18 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 1 February 2016,

having regard to the Court’s written question to the parties and their replies to that question lodged at the Court Registry on 22 September, 3 and 11 October 2016,

further to the hearing on 26 October 2016,

gives the following

Judgment

 Background to the dispute

1        On 8 March 2013, the intervener, Rosen Tantau KG, filed an application for registration of a European Union trade mark at the European Union Intellectual Property Office (EUIPO), pursuant to Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

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

3        The goods in respect of which registration was applied for are in Class 31 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Roses and rose plants; propagation material of roses’.

4        The EU trade mark application was published in the Community Trade Marks Bulletin No 68/2013 of 10 April 2013.

5        On 7 May 2013, the applicant, Hernández Zamora, SA, filed a notice of opposition under Article 41 of Regulation No 207/2009 against registration of the mark sought in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the earlier EU figurative mark, registered on 20 March 2000 under number 1067289 in respect of goods in Class 31 of the Nice Agreement, corresponding, in English, which was the language of the proceedings before EUIPO, to the description, ‘Fruits, garden herbs, fresh’ and reproduced below:

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8        On 25 June 2014, the Opposition Division rejected the opposition.

9        On 3 July 2014, the applicant filed an appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10      By decision of 21 April 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal on the ground that there was no likelihood of confusion. Regarding the relevant public, the Board of Appeal held that that public consisted of the general public of the European Union and that it had at least a normal level of attention. Regarding the comparison between the goods at issue, it held that ‘roses and rose plants; propagation material of roses’ covered by the mark applied for, were non-edible, living organisms which tended to have aesthetic purposes, whereas ‘fruits, garden herbs, fresh’, covered by the earlier mark, were clearly intended for human consumption and usually had culinary purposes. The Board concluded that the nature and intended use of those goods were very different. It added that, in view of those differences, it was unlikely that the average consumer would think that the same undertaking was responsible for the production of those goods, and that the opponent had not provided any evidence to call into question the finding that the goods in question were not complementary. It also held that the goods covered by the earlier mark were fresh food items that were sold either by greengrocers’ shops or on local markets. Furthermore, it held that the process of planting, cultivating, growing, preserving, etc. the goods covered by the earlier mark was clearly different from that of the goods covered by the mark applied for and that, even when those goods were sold together, for example in supermarkets, they were normally placed in different sections. Finally, it held that those goods could not be used interchangeably, were not in competition with each other, and their distribution channels differed significantly. The Board of Appeal concluded that the goods at issue were different. As to the global assessment of the likelihood of confusion, the Board of Appeal held that the goods at issue were different and that, therefore, the opposition based on Article 8(1)(b) of Regulation No 207/2009 must be dismissed on that ground alone.

 Forms of order sought

11      The applicant claims, in essence, that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

12      EUIPO and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

13      At the hearing on 26 October 2016, EUIPO’s representative produced registration certificates for figurative marks that contained the word element ‘paloma’, which were issued to the applicant by national trade mark offices. The applicant and the intervener received copies of those certificates and had the opportunity of commenting on their production. They did not object to the certificates being placed in the case file.

 Law

14      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

15      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 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, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16      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 the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (see the 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).

17      At the outset, it should be recalled that the Board of Appeal considered that the relevant public was composed of the general public of the European Union, with a level of attention that was at least normal.

18      The Court must concur with that finding of the Board of Appeal which, moreover, has not been disputed by the parties.

19      However, the applicant submits that the Board of Appeal was wrong to conclude that there was no similarity between the goods at issue.

20      In that regard, it submits that the Board of Appeal should have taken into account the fact that the signs at issue are very similar when it compared the goods at issue. According to the applicant, in accordance with the principle of interdependence, where the signs at issue are very similar, the comparison of the goods must be less strict or rigorous. It also submits, relying on the judgment of 23 October 2002, Oberhauser v OHIM — Petit Liberto (Fifties) (T‑104/01, EU:T:2002:262, paragraph 49), that it is conceivable that the targeted public could consider the goods covered by the mark applied for as belonging to a new range of goods different from the goods covered by the earlier mark, but coming from the same undertaking as the latter. In addition, it argues, in essence, that the goods in question are similar because they are all goods of plant origin belonging to Class 31 and because it is well known that those goods are grown in greenhouses and that they may be sold in the same establishments. In addition, it emphasises that, as stated in the Explanatory Note to the ninth edition of the Nice Classification relating to Class 31, the goods in that class are land products which have not been prepared for consumption, live animals and plants, and foodstuffs for animals, and that all the goods in question in the present case are such products.

21      EUIPO and the intervener dispute the applicant’s arguments.

22      According to settled case-law, 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, for example, the distribution channels of the goods concerned (see the judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

23      In the first place, it should be recalled that, by virtue of the principle of interdependence relied on by the applicant, the global assessment of the likelihood of confusion implies a certain interdependence of the factors taken into account and, in particular, of the similarity of the marks and that of the designated goods or services. 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 (judgment of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 17). It follows from that principle, therefore, that the similarity between the goods or services and the similarity of the signs are amongst the factors that must be taken into account in the context of the global assessment of the likelihood of confusion. However, contrary to the applicant’s submissions, it does not follow from that principle that the Board of Appeal had to take into account the similarity of the signs when comparing the goods at issue.

24      In the light of the case-law referred to in paragraph 22 above, the Board of Appeal was correct to take into account, when assessing the similarity of the goods at issue, their nature, their intended use, whether they competed with one another or were complementary, and their distribution channels.

25      As regards their nature and intended use, the Board of Appeal considered, correctly, that ‘roses, rose plants and propagation material of roses’, covered by the mark applied for, were non-edible living organisms which usually had aesthetic purposes, whereas ‘fruits, garden herbs, fresh’, covered by the earlier mark, were fresh food items that usually were for culinary purposes. The Board of Appeal therefore held, correctly, that the nature and intended use of the goods at issue were very different.

26      As to whether the goods at issue are in competition with each other, it must be noted that, according to the case-law, in order for goods to be regarded as in competition with each other, there must be an element of interchangeability between them (see the judgment of 4 February 2013, Hartmann v OHIM — Protecsom (DIGNITUDE), T‑504/11, not published, EU:T:2013:57, paragraph 42 and the case-law cited). To the extent that the goods at issue serve different needs, the Board of Appeal held, correctly, that the goods were not interchangeable and therefore that they were not in competition with each other.

27      As regards whether the goods at issue are complementary, it must be recalled that, according to the case law, goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods, or provision of those services, lies with the same undertaking (see the judgement of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). It must be observed that, as the Board of Appeal stated, the applicant did not provide any evidence to prove that the goods at issue were complementary. In any event, it must be held that ‘roses, rose plants and propagation material of roses’ are neither indispensable to, nor important for, the consumption of ‘fruits, garden herbs, fresh’. Those goods cannot therefore be regarded as complementary.

28      Finally, as regards the distribution channels of the goods at issue, it must be observed that the fact, relied on by the applicant, that those goods can be sold in the same establishments does not permit any conclusion to be drawn as regards their similarity. It is apparent from the case-law that the fact that the goods in question may be sold in the same commercial establishments, such as department stores or supermarkets, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin (see the judgment of 2 July 2015, BH Stores v OHIM — Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 83 and the case-law cited). Only the presence of those goods in the same section of such shops would be an indication of their similarity. However, the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s finding that the goods at issue are normally placed in different sections. Furthermore, the intervener and EUIPO rightly point out that the goods at issue are not sold in the same specialist shops. ‘Fruits, garden herbs, fresh’ are sold in fruit and vegetable shops, whereas ‘roses’ are sold by florists and ‘rose plants and propagation material for roses’ are sold in garden centres.

29      The Board of Appeal therefore concluded, correctly, that the distribution channels of the goods at issue differed significantly.

30      It follows from the foregoing that, having regard to the differences between the goods at issue, the Board of Appeal was fully entitled to hold that the goods were different.

31      The applicant’s other arguments do not call that conclusion into question.

32      First, the applicant’s argument based on the judgment of 23 October 2002, Fifties (T‑104/01, EU:T:2002:262, paragraph 49), cannot succeed. In that judgment, the Court compared ‘clothing, footwear, headgear’ within Class 25, and ‘Denim clothing’ within Class 25. It found that those goods were similar because ‘Denim clothing’ was included within the broader category of ‘clothing, footwear, headgear’. However, in the present case, ‘roses and rose plants; propagation material of roses’ are not included within ‘fruits, garden herbs, fresh’ or vice versa. Therefore, no conclusion can be drawn on the basis of that judgment regarding the similarity of the goods at issue.

33      Secondly, the reference made by the applicant to the Explanatory Note to Class 31, to which the goods at issue – which are plant-based goods – belong, also fails to establish that those goods are similar. On the contrary, it is clear from that note that Class 31 includes a great variety of different goods. Furthermore, as the Board of Appeal stated, Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) provides that the classification of goods and services under the Nice Agreement are to serve exclusively administrative purposes. Therefore, goods and services may not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and goods and services may not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

34      Thirdly, the fact that the goods at issue could be grown in greenhouses is not sufficient ground for the conclusion that the goods are similar since many other goods can be grown in greenhouses.

35      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 the judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

36      In the present case, given that one of the conditions required by Article 8(1)(b) of Regulation No 207/2009 for a finding of a likelihood of confusion, namely the identity or similarity of the goods at issue, was not met, the Board of Appeal was fully entitled to find that there was no likelihood of confusion, and could do so irrespective of the degree of similarity or even identity of the marks at issue.

37      In addition, in its response, EUIPO stated that the registration certificate of the earlier mark showed that the wording of the goods covered by that mark were, in Spanish — the language in which the application for the earlier mark had been lodged — ‘frutas y hortalizas frescas’, namely ‘Fresh fruits and vegetables’. In reply to a written question by the Court and at the hearing, EUIPO also stated that the wording of the goods covered by the earlier mark had been incorrectly translated into English by its staff, for want of a translation provided by the applicant — as ‘fruits, garden herbs, fresh’. EUIPO moreover pointed out that, pursuant to Article 120(3) of Regulation No 207/2009, the Spanish version was authentic and the fact that the goods covered by the earlier mark and the goods covered by the mark applied for are different was all the more evident if the Spanish wording of the goods covered by the earlier mark was taken into account. Finally, EUIPO added that that translation error had no effect on the legality of the contested decision since the Board of Appeal’s conclusions regarding the comparison of the goods covered by the mark applied for and ‘fruits, garden herbs, fresh’ could a fortiori be transposed to the comparison of the goods covered by the mark applied for and ‘fresh fruits and vegetables’.

38      In reply to a written question of the Court, the applicant stated that the earlier mark covered ‘fruits, garden herbs, fresh and fruits and vegetables’, as was shown by the registration certificates of the figurative marks containing the word element ‘paloma’, provided by certain national trade mark offices. It added that the protection granted by EUIPO to the earlier mark could not be restricted or the facts in the opposition proceedings would be altered and the contested decision would have to be annulled. The goods covered by the earlier mark should not therefore be interpreted restrictively. That list covers, the applicant submits, all types of fruits, vegetables and greens, namely plants harvested in gardens or orchards which are also used to grow roses or their seeds.

39      The intervener observed only that, if the wording of the goods covered by the earlier mark had been translated correctly, the lack of similarity between the goods covered by the mark applied for and those covered by the earlier mark would have been even more obvious.

40      Article 120(3) of Regulation No 207/2009 provides that ‘in cases of doubt, the text in the language of [EUIPO] in which the application for the EU trade mark was filed shall be authentic’. In the present case, it is therefore the Spanish version of the wording of the goods covered by the earlier mark that is authentic. The Spanish version is also consistent with the language versions of the wording of the goods covered by the earlier mark, other than the English version. The earlier mark was therefore applied for and registered in respect of, ‘fresh fruits and vegetables’.

41      Moreover, it must be observed that the registration certificates provided by the applicant do not confirm what it submits, namely that the earlier mark was registered in respect of ‘fruits, garden herbs, fresh and fruits and vegetables’.

42      In any event, whether the exact wording of the goods covered by the earlier mark is ‘fruits, garden herbs, fresh’, ‘fresh fruits and vegetables’ or ‘fruits, garden herbs, fresh and fruits and vegetables’, it has no effect on the findings of the Board of Appeal regarding the comparison of the goods at issue.

43      As EUIPO observed, none of the findings made by the Board of Appeal regarding the comparison of the goods at issue, which are set out in paragraph 10 above, are specific to garden herbs. Those findings are, on the contrary, all applicable to the comparison between the goods covered by the mark applied for and ‘fresh fruits and vegetables’. Therefore, the Board of Appeal’s conclusion that the goods at issue are different is equally valid whether the earlier mark is to be regarded as having been registered for ‘fresh fruits and vegetables’ or, whether it is regarded, as the applicant submits, as registered for ‘fruits, garden herbs, fresh and fruits and vegetables’.

44      It follows from the foregoing that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

45      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.

46      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 (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Hernández Zamora, SA to pay the costs.

Berardis

Spielmann

Xuereb

Delivered in open court in Luxembourg on 17 February 2017.

E. Coulon

      H. Kanninen

Registrar

President