JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

14 July 2016 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark PREFERISCO — Earlier EU word mark I PREFERITI — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑371/15,

Preferisco Foods Ltd, established in Vancouver, British Columbia (Canada), represented by G. Macías Bonilla, P. López Ronda, G. Marín Raigal and E. Armero, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by K. Sidat Humphreys and J.-F. Crespo Carrillo, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Piccardo & Savore’ Srl, established in Chiusavecchia (Italy),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 15 April 2015 (Case R 2598/2013-2), relating to opposition proceedings between Piccardo & Savore’ and Preferisco Foods,

THE GENERAL COURT (Seventh Chamber),

composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 9 July 2015,

having regard to the response lodged at the Court Registry on 9 September 2015,

further to the hearing on 28 April 2016,

gives the following

Judgment

 Background to the dispute

1        On 19 June 2012 the applicant, Preferisco Foods Ltd, filed an application for registration of an EU trade mark at 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).

2        The mark in respect of which registration was sought is the following figurative sign:

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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 the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 29: ‘Food products, namely, cooking oil, edible oil, salad oil, vegetable oil, potato-based gnocchi, tomato paste, processed pimentos, processed olives, dried figs, processed tomatoes, sun dried tomatoes, pickled vegetables, processed vegetables, processed artichokes, processed bell peppers and hot peppers, processed mushrooms, processed beans, soups, cheeses, fish for food purposes, processed anchovies, packaged deli meats; processed vegetables; antipasto comprised of processed olives, processed peppers, processed tomatoes; processed pickles, processed artichoke hearts; processed, fresh, deli or preserved meat, fish and poultry; processed and dried fruit and nuts, jam and fruit spreads; vegetable-based spreads’;

–        Class 30: ‘Food products, namely vinegar, egg noodles, pasta, lasagne, flour-based gnocchi, pasta sauces, tomato sauces, spices, capers, rice, cornmeal, biscuits, bread sticks; baking products, namely Italian specialty yeasts; food flavourings; confectioneries, namely candies and chocolates, biscuits, vanilla beans, coffee beans; mustard; vegetable sauces; rice mixtures, namely rice and seasoning mix combined in unitary packages; pesto; salt; condiments, namely pickles, pimentos used as a condiment; non-alcoholic beverages, namely coffee’;

–        Class 32: ‘non-alcoholic beverages, namely, fruit nectars, fruit juices and mineral water’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 150/2012 of 8 August 2012.

5        On 27 August 2012 Piccardo & Savore’ Srl filed a notice of opposition under Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the earlier EU word mark I PREFERITI, covering goods in Classes 29, 30 and 32, and corresponding, for each of those classes, to the following description:

–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible fats and oils’;

–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’;

–        Class 32: ‘Alcoholic beverages (except beers)’.

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 28 October 2013 the Opposition Division upheld the opposition and rejected the EU trade mark application in its entirety.

9        On 17 December 2013 the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10      By a decision of 15 April 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO partially upheld the appeal, annulling the Opposition Division’s decision of 28 October 2013 as regards only the goods contained in Class 32, in view of the difference between those goods and those covered by the earlier mark. As regards the comparison of the signs at issue, first, with regard to the visual aspect, the Board of Appeal considered, in particular, that the marks were overall similar, given the common element ‘preferi’, the graphic elements of the mark applied for being decorative and not very distinctive. Second, with regard to the phonetic aspect, irrespective of the different pronunciation rules applicable in different parts of the relevant territory, the Board of Appeal noted that the pronunciation of the signs at issue coincided in the syllables ‘pre’ and ‘fe’ and in the pronunciation of the letters ‘r’ and ‘i’, appearing identically in both signs in the same position. Third, the Board of Appeal found that, with regard to the conceptual aspect, the earlier mark and the word element of the mark applied for had no meaning for the relevant public and that the flag in the mark applied for was capable, if noticed, of creating a slight conceptual difference. In those circumstances, the Board of Appeal found that there was a likelihood of confusion.

 Forms of order sought

11      The applicant claims that the Court should:

–        partially annul the contested decision, in particular in so far as it rejected the application for registration for the goods applied for in Classes 29 and 30;

–        order EUIPO to pay the costs, including those incurred in the proceedings before the Opposition Division and before the Second Board of Appeal of EUIPO.

12      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of its action, the applicant raises a single plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009. It submits that the Board of Appeal erred in relation to the comparison of the signs at issue and the likelihood of confusion.

14      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 may not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

15      According to established 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 that 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 judgment of 9 July 2003 in 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).

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

17      It should be emphasised at the outset that the applicant is not disputing, firstly, the fact that the relevant public consists of average consumers, with the result that the level of attention will be normal, or, secondly, the fact that the goods in classes 29 and 30 are partially identical, partially highly similar and partially similar. Nor does the applicant dispute the fact that the Board of Appeal, in the same way as the Opposition Division, examined the likelihood of confusion from the point of view of the Bulgarian-, Lithuanian- and Hungarian-speaking public.

 Comparison of the signs

18      The applicant argues that the signs at issue are visually, phonetically and conceptually different.

19      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 created 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 engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

20      It should also be pointed out that, according to the case-law, the first component of word marks may be more likely to catch the consumer’s attention than the following components. However, that consideration cannot hold good in all cases and cannot, in any event, cast doubt on the principle that the assessment of the similarity of the signs must take account of the overall impression which they create (see judgment of 10 March 2016 in credentis v OHIM — Aldi Karlslunde (Curodont), T‑53/15, not published, EU:T:2016:136, paragraph 35 and the case-law cited).

21      In the present case, with regard to visual similarity, the Board of Appeal took the view that the signs at issue produced similar visual impressions due to the common word element ‘preferi’ and the fact that the graphic elements of the mark applied for were decorative and not particularly distinctive. With regard to the earlier mark, it also found that the element ‘i’ at the beginning of the sign did not have a particularly distinctive character that was liable to have a decisive influence on the overall impression produced by that sign. With regard to the phonetic aspect, the Board of Appeal took the view that, irrespective of the different pronunciation rules applicable among different parts of the relevant public, the signs coincided in their syllables ‘pre’ and ‘fe’ and by reason of the pronunciation of the letters ‘r’ and ‘i’, appearing in the same way and in the same position in both signs. With regard to the conceptual aspect, the Board of Appeal took the view that neither the earlier mark nor the word element of the mark applied for had any meaning for the relevant public and that the signs were therefore not similar. It did, however, take the view that the presence of a small flag in the mark applied for, if noticed by consumers, was capable of introducing a slight conceptual difference. The Board of Appeal therefore concluded that the signs at issue were overall similar, account being taken of the existence of visual and phonetic similarities.

22      The applicant does not put forward any argument capable of challenging the Board of Appeal’s conclusion that the signs at issue are overall similar.

23      In the first place, with regard to the visual aspect, it must be stated that the element ‘i’ at the beginning of the earlier mark and the figurative elements in the mark applied for do, admittedly, constitute differentiating elements. However, those differences are slight in comparison with the length of the common element ‘preferi’ and the important position occupied by the latter element in the signs at issue and, consequently, with the overall visual impression which those signs convey to consumers.

24      First, in this regard, it must be held that, contrary to what the applicant claims, the Board of Appeal compared the signs at issue in their entirety in paragraphs 32 to 37 of the contested decision. The Board of Appeal took into account, in paragraphs 33 to 35 of that decision, the element ‘i’ at the beginning of the earlier mark; the fact that the endings ‘ti’ and ‘sco’ were different, the fact that the mark applied for contained graphic elements, and the fact that the earlier mark consisted of two words. Moreover, contrary to what has also been submitted by the applicant, the Board of Appeal did not in any way take the view that a low degree of visual similarity between marks would generally be sufficient to confirm the existence of a likelihood of confusion between two signs.

25      Second, it must be noted that the Board of Appeal did not underestimate the significance of the element ‘i’ at the beginning of the earlier mark. It recognised, in paragraph 35 of the contested decision, that the element ‘i’ was not negligible. However, it correctly concluded that the element ‘i’, which is composed of a single letter and is not particular distinctive, would not decisively influence the overall impression produced by that sign, the visual impression of the earlier mark being dominated by the element ‘preferiti’.

26      Third, with regard to the mark applied for, it should be borne in mind that, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name than by describing the figurative element of the trade mark (see order of 7 June 2012 in Gitana v OHIM — Teddy (GITANA), T‑569/11, not published, EU:T:2012:282, paragraph 56 and the case-law cited). In view of the characteristics of the figurative element of the mark applied for, namely, in particular, a black rectangle on a white background whose upper side contains an oval element containing a flag, the Board of Appeal was right to take the view, in paragraph 35 of the contested decision, that that mark would be perceived as principally containing the word ‘preferisco’. The first seven letters of that word element are presented in the same order in the dominant element of the earlier mark.

27      Fourth, as regards the judgments of the Court to which the applicant refers, suffice it to state that the applicant merely referred to those judgments without putting forward any arguments whatsoever designed to demonstrate that they could cast doubt on the Board of Appeal’s analysis in the present case. In that regard, it must also be stressed that those judgments relate to factual situations that differ from those in the present case.

28      In those circumstances, the Board of Appeal’s assessment that the marks at issue are visually similar must be confirmed.

29      In the second place, with regard to the phonetic aspect, it must be noted again that, contrary to what is argued by the applicant, the Board of Appeal did not underestimate the importance of the element ‘i’ at the beginning of the earlier mark. On the contrary, the Board of Appeal highlighted, in paragraph 38 of the contested decision, that the pronunciation of the signs at issue differed only as regards, on the one hand, the element ‘i’ at the beginning of the earlier mark and, on the other hand, the elements ‘ti’ and ‘sco’ at the respective ends of the two signs. The Board of Appeal, however, correctly took the view that the signs at issue were phonetically similar in so far as, first, the syllables and letters of the common element ‘preferi’ were identical and appeared in the same order in the two signs. The common element ‘preferi’ belongs to the dominant element in the earlier mark and to the word element in the mark applied for. Second, it must be stressed that the earlier mark and the word element of the mark applied for contain the same number of letters. Therefore, the element ‘i’ at the beginning of the earlier mark and the changes of intonation and rhythm which may result from the pronunciation of the elements ‘ti’ and ‘sco’ are not such as to call into question the existence of a phonetic similarity.

30      With regard to the argument that the Bulgarian-, Lithuanian- and Hungarian-speaking public will pronounce the two marks in completely different ways, it must be stated that the applicant has not put forward any conclusive evidence whatsoever in that regard. Moreover, it must be noted that the common element ‘preferi’ is pronounced in the same way in those three languages. The applicant’s argument must therefore be rejected.

31      Consequently, the Board of Appeal’s assessment that the marks at issue are phonetically similar must be upheld.

32      In the third place, with regard to the conceptual aspect, it must be recalled that the word elements of the marks at issue do not have any meaning for the relevant public. In that regard, once again, the applicant has put forward no evidence in support of its argument that the Bulgarian-, Lithuanian- and Hungarian-speaking public, first, will immediately perceive the presence of the English first person singular pronoun ‘I’ in the earlier mark and, second, will associate the term ‘preferiti’ with the English verb ‘prefer’. In any event, even if the applicant had put forward such evidence, that evidence, advanced for the first time before the Court, would have been rejected as inadmissible since the Court is unable, in reviewing the legality of acts, to take into consideration facts produced for the first time before it (see judgment of 13 March 2007 in OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 54 and the case-law cited).

33      Therefore, it is not possible to make a conceptual comparison between the signs at issue and accordingly, even though the small flag in the mark applied for, if noticed, may be capable of being perceived as an indication of the origin of the goods, there is no similarly between those signs in that regard.

34      In light of the foregoing considerations in paragraphs 28, 31 and 33 above, the Board of Appeal was right to conclude, in paragraph 40 of the contested decision, that the signs at issue were, in view of the visual and phonetic similarities, overall similar.

 The likelihood of confusion

35      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 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 in Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006 in 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 74).

36      The Board of Appeal took the view that there was a likelihood of confusion for a significant part of the relevant public in so far as, first, the earlier mark was characterised by a normal level of distinctiveness in respect of all the goods in the relevant territory; second, the signs were similar; and, third, the goods were either identical or similar to varying degrees.

37      In the first place, the applicant argues that the mark applied for is composed of the word element ‘preferisco’ as well as the fanciful figurative design. It therefore presented, considered in its entirety, a high level of distinctiveness, given that it is not descriptive of the goods in respect of which it had been applied for.

38      In the second place, according to the applicant, the visual, phonetic and conceptual differences which distinguish the marks at issue, if taken together, counteract the similarities between them. The alleged errors of law made in the contested decision resulted in the Board of Appeal underestimating the importance of the letter ‘i’ at the start of the sign, the figurative elements in the mark applied for, and the different endings of the marks at issue.

39      In that regard, first, in respect of the arguments that the signs at issue are different, suffice it to note that all of the applicant’s arguments relating to the absence of similarity between the signs at issue have been rejected. In particular, it has been held in paragraphs 24 to 26, 29, 32, and 33 above that, inter alia, (i) the Board of Appeal did not underestimate the significance of the element ‘i’, of the figurative elements of the mark applied for, and of the different endings of the two signs, and that it therefore did indeed examine the marks in their entirety, and (ii) that the slight conceptual difference occasioned by the presence of the flag was not such as to call into question the overall similarity of the marks at issue.

40      Second, it must be held that the applicant’s argument that the mark applied for is particularly distinctive has not been supported by any conclusive evidence. Even if it had been, that argument would have had to be rejected as ineffective since the applicant has not cast any doubt on the earlier mark’s normal level of distinctiveness.

41      In light of the similarity of the marks at issue and the fact that the goods concerned are partially identical, partially highly similar and partially similar, these being matters which the applicant does not contest, it must be held that the Board of Appeal was right to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

42      In view of all of the foregoing, since the single plea in law relied on by the applicant is unfounded, the action must be dismissed in its entirety.

 Costs

43      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.

44      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Preferisco Foods Ltd to pay the costs.

Van der Woude

Wiszniewska-Białecka

Ulloa Rubio

Delivered in open court in Luxembourg on 14 July 2016.

[Signatures]