JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

21 July 2016 (*)

(EU trade mark — Invalidity proceedings — EU figurative mark Tropical — Earlier national word mark TROPICAL — Relative ground for refusal — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 — Extent of the applicant’s rights under national law — Coexistence of the marks — Obligation to state reasons — Article 75 of Regulation No 207/2009)

In Case T‑804/14,

Tadeusz Ogrodnik, residing in Chorzów (Poland), represented by A. von Mühlendahl and H. Hartwig, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Garrido Otaola, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO having been

Aviário Tropical, SA, established in Loures (Portugal),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 September 2014 (Case R 1948/2013-4), relating to invalidity proceedings between Aviário Tropical and Mr Ogrodnik,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 4 December 2014,

having regard to the response lodged at the Court Registry on 5 May 2015,

having regard to the reply lodged at the Court Registry on 7 August 2015,

further to the hearing on 21 April 2016,

gives the following

Judgment

 Background to the dispute

1        On 31 October 2003, Mr Andrzej Ogrodnik filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO) in accordance with Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)). On 7 July 2005 the application was assigned to the applicant, Mr Tadeusz Ogrodnik, trading under the name TROPICAL.

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

3        On 6 September 2004 the EU trade mark application was published in European Union Trade Marks Bulletin No 36/2004. On 7 September 2007 the mark applied for was registered under number 3435773.

4        The goods for which the contested mark was registered are in Classes 5 and 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, for each of those classes, to the following description:

–        Class 5: ‘Veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, terraristics, fauna breeding and flora cultivation’;

–        Class 31: ‘Food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals, food for fauna containing nutritives, products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals; excluding bird feed and bird treats’.

5        On 21 November 2011 Aviário Tropical, SA, filed an application with EUIPO seeking that the contested mark be declared invalid in respect of all of the goods for which it had been registered.

6        In support of its application for a declaration of invalidity, Aviário Tropical relied on the earlier national word mark TROPICAL, registered in Portugal on 30 October 1985 under number 196004 and subsequently renewed until 30 October 2015, for goods in Class 31 and corresponding to the following description: ‘Food for fish, live fish and live plants’.

7        The ground for invalidity relied on in support of that application was that referred to in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof.

8        Following a request from the applicant, Aviário Tropical submitted documents designed to prove genuine use of the earlier mark.

9        On 15 July 2013 the Cancellation Division rejected the application for a declaration of invalidity in its entirety, finding that Aviário Tropical had not proved genuine use of the earlier mark during the relevant periods for all of the goods for which it had been registered.

10      On 4 October 2013 Aviário Tropical filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

11      By decision of 22 September 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO allowed that appeal and upheld the application for a declaration of invalidity in respect of all of the goods covered by the contested mark. In the first place, it held that Aviário Tropical had proved genuine use of the earlier mark in Portugal so far as concerned, at least, the food for fish, in Class 31, covered by the earlier mark. It considered that it was unnecessary to examine whether the earlier mark had been put to genuine use in connection with the other goods which it covered (paragraphs 10 to 36 of the contested decision).

12      In the second place, the Board of Appeal held that Portugal was the relevant territory and that the relevant public, made up both of the general public and of business customers wishing to install an aquarium or start breeding fish, displayed an average or above average level of attention (paragraphs 38 and 54 of the contested decision).

13      As regards the goods covered by the marks at issue, the Board of Appeal concluded that those in Class 31 were identical, while the goods in Class 5 covered by the contested mark and those in Class 31 covered by the earlier mark were similar to an average degree (paragraphs 40 to 43 of the contested decision).

14      With regard to the signs at issue, the Board of Appeal took the view that they were phonetically identical and, on the visual and conceptual levels, similar to a strong degree. It considered that the inherent distinctiveness of the earlier mark was below average and noted that Aviário Tropical had not claimed that the earlier mark enjoyed an enhanced distinctiveness acquired through use (paragraphs 48 to 50 and 55 of the contested decision).

15      The Board of Appeal concluded that, in view of the identity and similarity of the goods concerned and of the fact that the signs at issue were phonetically identical and, on the visual and conceptual levels, similar to a strong degree, there was a likelihood of confusion for the relevant public, even taking into account its higher level of attentiveness and the below average distinctiveness of the earlier mark (paragraph 56 of the contested decision).

16      In the third place, the Board of Appeal rejected the applicant’s argument whereby he had relied on limitation in consequence of acquiescence in order to restrict Aviário Tropical’s right to lodge the application for a declaration that the contested mark was invalid (paragraph 57 of the contested decision).

 Forms of order sought

17      The applicant claims that the Court should:

–        annul the contested decision;

–        dismiss the appeal brought by Aviário Tropical against the decision of the Cancellation Division;

–        order EUIPO to pay the costs.

18      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

19      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof.

1.     Infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof

20      The applicant contests the assessment of the Board of Appeal, which found that there was a likelihood of confusion between the marks at issue. In his view, the Board of Appeal erred in finding that the comparison of the goods at issue led to the conclusion that they were identical or similar and that the overall comparison of the marks at issue showed their similarity. In addition, he submits, the Board of Appeal did not properly take into consideration the low degree of distinctiveness, or indeed absence thereof, of the earlier mark and the coexistence on the market of the marks at issue.

21      Pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof, an EU trade mark is to be declared invalid on application by the proprietor of an earlier trade mark if, because of its identity with or similarity to that 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. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

22      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 that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the goods or services in question, and taking account of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services covered (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).

23      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 (judgment of 23 January 2014 in OHIM v riha WeserGold Getränke, C‑558/12 P, EU:C:2014:22, paragraph 41; see also 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).

24      The Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations.

25      As a preliminary point, it should be pointed out that the Board of Appeal found that genuine use of the earlier mark had been demonstrated for the ‘food for fish’, in Class 31, covered by the earlier mark (‘the relevant goods covered by the earlier mark’), without examining whether that mark had been put to genuine use for the other goods which it covers. Therefore, only ‘food for fish’ was taken into account by the Board of Appeal in the assessment of the likelihood of confusion. Those assessments of the Board of Appeal, which are not disputed by the applicant, a fact which he confirmed during the hearing, must be confirmed.

 Relevant public

26      The Board of Appeal essentially took the view that, since the earlier mark to be taken into consideration was a national mark, the relevant territory was that of Portugal. In addition, it considered that the relevant public, made up both of the general public and of business customers wishing to install an aquarium or start breeding fish, displayed an average or above average level of attention (paragraphs 38 and 54 of the contested decision).

27      It is appropriate to confirm the definition of the relevant public and its level of attention as accepted by the Board of Appeal in the contested decision; that definition has not, moreover, been called into question by the applicant.

 Comparison of the goods

28      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 and 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 11 July 2007 in 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).

29      In the present case, the Board of Appeal took the view that the relevant goods covered by the earlier mark, on the one hand, were identical to the goods in Class 31 covered by the contested mark (paragraph 41 of the contested decision) and, on the other, were similar to an average degree to the goods in Class 5 covered by the contested mark (paragraph 42 of the contested decision). It indicated that those findings were in no way affected by the fact that the goods in Class 31 covered by the contested mark explicitly excluded ‘bird feed and bird treats’, which did not correspond to the relevant goods covered by the earlier mark (paragraph 43 of the contested decision).

30      The applicant disputes the Board of Appeal’s finding that the goods concerned are identical or similar.

31      As a preliminary point, it should be noted that the applicant claims that EUIPO brings forward no convincing argument capable of showing that the contested decision is not vitiated by reversible error as regards the finding, on the one hand, of identity of the relevant goods covered by the earlier mark and the goods covered by the contested mark in Class 31 and, on the other, of similarity to an average degree of the relevant goods covered by the earlier mark and the goods covered by the contested mark in Class 5. It must, however, be noted that the onus of proving an error of law or an error of assessment of the facts by the Board of Appeal lies with the applicant and that it is not for EUIPO to show that the contested decision is not vitiated by any error.

 The goods in Class 31 covered by the contested mark

32      In the present case, the Board of Appeal took the view that the goods in Class 31 covered by the contested mark were ‘food for fauna’, which was mentioned in a non-exhaustive list of specific examples after the word ‘especially’. It considered that, since food for fauna constitutes a broader category than the ‘food for fish’ covered by the earlier mark, the first category encompasses the second. It inferred from this that those goods were identical (paragraph 41 of the contested decision).

–       ‘Food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’ and ‘food for fauna containing nutritives’

33      It should be noted that, even though the applicant states that he disputes the Board of Appeal’s assessment that the goods in Class 31 were identical, he acknowledges, as he confirmed during the hearing, that the ‘food for fish’ covered by the earlier mark is included in the ‘food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’ and in the ‘food for fauna containing nutritives’, covered by the contested mark, which is food for fauna. The category of food for fauna is, in fact, broader than that of the ‘food for fish’ covered by the earlier mark.

34      It is thus appropriate to confirm the Board of Appeal’s assessment (paragraph 41 of the contested decision) and to find that the goods mentioned in paragraph 33 above are identical, since, in accordance with the case-law, goods may be regarded as identical where the goods covered by the earlier mark are included in a more general category covered by the later mark (see judgment of 4 June 2015 in Stayer Ibérica v OHIM — Korporaciya ‘Masternet’ (STAYER), T‑254/13, not published, EU:T:2015:362, paragraph 84 and the case-law cited).

–       ‘Products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’

35      The applicant refutes the finding of the Board of Appeal regarding the identity of the other goods in Class 31 covered by the contested mark and the relevant goods covered by the earlier mark. He claims that the ‘products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’ covered by the contested mark are clearly different from food for fauna, encompassing the ‘food for fish’ covered by the earlier mark. In the reply, the applicant takes issue with EUIPO’s argument that it is mere examples that are listed after the word ‘especially’ in the list of goods in Class 31 covered by the contested mark, on the ground that the various items are separated by commas rather than semicolons.

36      According to EUIPO, the applicant’s arguments are based on a preliminary dissection, into nine different ‘categories’ of goods, of the specification of the goods in Class 31 covered by the contested mark. Such a subdivision, it submits, is artificial and does not take into account the presence of the term ‘especially’, which serves to introduce a non-exhaustive list of specific examples of a more general designation. Consequently, that specification should be interpreted as encompassing ‘food [in different forms] for fauna; excluding bird feed and bird treats’ as a broad category, while the other terms it contains from the word ‘especially’ until the semicolon marking the end of the non-exhaustive list should be read as mere examples of that broad category and not as independent subcategories to be compared with the ‘food for fish’ covered by the earlier mark.

37      It is appropriate to point out that the applicant and EUIPO are in disagreement as to the scope of the term ‘especially’ used in the list of goods covered by the contested mark. In that regard, it must be observed that, in that list, the various items are separated by commas, apart from ‘excluding bird feed and bird treats’. It is thus not evident from that wording to what the term ‘especially’ relates, that is to say, whether it concerns all the goods mentioned thereafter, as EUIPO argues, or only the first of them, as the applicant claims, namely ‘fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’.

38      It is important to bear in mind that the only matter to be resolved is whether ‘products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’ are covered by the term ‘especially’. Given that the applicant indeed acknowledges that ‘food for fauna containing nutritives’ is identical to the relevant goods covered by the earlier mark (see paragraph 33 above), it is not necessary to examine whether or not those goods are covered by the term ‘especially’.

39      First, if EUIPO’s interpretation were to be followed, the list of goods covered by the contested mark should be read as follows: ‘Dried and lyophilised natural food for fauna, especially … products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’. EUIPO did, it is true, add, in its written submissions, the word ‘food’ immediately after the term ‘especially’. If the text were to be read with this addition, the list of goods covered by the contested mark would still be read in the same manner as that indicated above and it is not apparent from such a reading that the aforementioned goods after the term ‘especially’ are mere examples.

40      Second, the repetition of the mention of ‘fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’ in the list of goods covered by the contested mark is at odds with the reading of that list as relied on by EUIPO. It should be understood that various kinds of goods for those animals are listed, namely dried and lyophilised natural food as well as products and preparations for their breeding.

41      Third, the reading of the list of goods covered by the contested mark relied on by EUIPO assumes that ‘products and preparations for the cultivation of plants and aquarium plants’ constitute food for fauna. However, the contested mark does not cover plants, but rather products and preparations for the cultivation of plants. For the same reason, contrary to EUIPO’s assertions during the hearing, those products and preparations cannot be regarded as overlapping with the category of food for fish and thus be considered identical to the relevant goods covered by the earlier mark.

42      Therefore, even if the wording of the list may be regarded as clumsy in respect of the use of punctuation, it is appropriate to consider that, as the applicant claims, the term ‘especially’ in no way relates to ‘products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’.

43      In such circumstances, contrary to EUIPO’s assertions, it must be held that the ‘products and preparations for the cultivation of plants and aquarium plants’ covered by the contested mark cannot be regarded as examples of the food for fauna mentioned before the term ‘especially’, thus encompassing the ‘food for fish’ covered by the earlier mark, and they are therefore not identical to them for that reason, contrary to the Board of Appeal’s assessment.

44      In addition, ‘products and preparations for the breeding of birds, reptiles and amphibians’ do not constitute examples of the food for fauna mentioned before the term ‘especially’ and cover, inter alia, food for certain types of fauna or animals, as distinct from fish. They do not, therefore, constitute food for fauna encompassing ‘food for fish’ and are not, therefore, identical to them, for that reason, contrary to the Board of Appeal’s assessment.

45      By contrast, it is appropriate to consider that, even though the ‘products and preparations for the breeding of fish, ornamental fish, breeded small animals’ covered by the contested mark do not represent examples of the food for fauna mentioned before the term ‘especially’, they constitute food for fauna encompassing the ‘food for fish’ covered by the earlier mark, signifying the identity of those goods, as the Board of Appeal found.

46      Therefore, it is appropriate to conclude that, in view of the Board of Appeal’s error of assessment regarding some of the goods in Class 31 covered by the contested mark (paragraph 41 of the contested decision), the contested decision must be annulled to the extent to which the Board of Appeal found that the ‘products and preparations for the cultivation of plants and aquarium plants’ and the ‘products and preparations for the breeding of birds, reptiles and amphibians’ covered by the contested mark were identical to the relevant goods covered by the earlier mark.

 The goods in Class 5 covered by the contested mark

47      With regard to the goods in Class 5 covered by the contested mark, namely the ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, terraristics, fauna breeding and flora cultivation’, the Board of Appeal found that these were similar to an average degree to the ‘food for fish’ covered by the earlier mark. It stated that those goods were distributed by the same companies, had the same points of sale and were directed at the same end-consumers, namely those interested in aquaculture and the maintenance and farming of aquatic organisms (paragraph 42 of the contested decision).

48      The applicant contends that those goods are not similar. In the first place, he takes the view that the only reasoning provided in that regard is found in a single sentence in paragraph 42 of the contested decision. The conclusion that the goods concerned are similar to an average degree is, in his view, faulty, because the contested decision does not identify the criteria on which that similarity is based.

49      In the second place, the applicant claims, first, that the criteria applied by the Board of Appeal are contrary to established case-law and that, consequently, the result is vitiated by an error of law. Applying the criteria relating to the nature, composition, manner of manufacture, use, point of sale, complementarity and substitutability of the goods concerned reveals the error in the contested decision. He takes the view, second, that an enumeration of the goods shows that there are wide differences between them, that the various goods covered by the contested mark, depending on whether they are used in terraristics, fauna breeding or flora cultivation, serve different clienteles and, last, that the uses of the goods concerned differ. Third, he claims, in the reply, in response to one of EUIPO’s arguments, that the goods do not form a sufficiently homogenous category or group.

50      EUIPO contends, in the first place, that the applicant’s argument that the criteria applied by the Board of Appeal are contrary to established case-law is clearly unfounded, since those criteria are relevant.

51      In the second place, EUIPO contends that the applicant’s argument is based on an artificial dissection, into six distinct categories, of the broad category of the goods contained in Class 5 for which the contested mark is registered. In addition, contrary to the applicant’s argument, the wording of the list of those goods indicates clearly that it consists of a broad category of goods with various possible uses. In any event, the only explanation given by the applicant of the allegedly wide differences between the goods covered is that some of them are intended for aquariums and others for terrariums, without taking into account the fact that both types of goods are usually sold at the same shops, distributed by the same companies and directed at the same end-consumers. In that regard, EUIPO notes that, according to the case-law, the Board of Appeal may use only general reasoning for all of the goods concerned, provided that, as in the present case, they form a sufficiently homogeneous category or group.

52      It is appropriate to hold that the applicant relies both on the inadequacy, or even non-existence, of the reasons for the contested decision and on the error of law in the selection of the factors applied by the Board of Appeal when comparing the goods concerned and on its error of assessment when comparing the goods concerned in the light of the factors applied.

–       The adequacy of the reasons for the contested decision

53      The applicant claims that the conclusion of similarity to an average degree of the goods concerned is faulty because the contested decision does not identify the criteria on which that similarity is based.

54      Even though that wording stems from a confusion between the question of the merits of the reasons for the contested decision and the question of the adequacy of those reasons, it should be understood that the applicant invokes an inadequate statement of reasons for the contested decision in so far as it fails to identify the criteria on which the conclusion of average similarity of the goods concerned is based, as he had already mentioned in the application.

55      That argument must, however, be rejected. The Board of Appeal stated, in paragraph 42 of the contested decision, that the goods concerned, namely those in Class 5 covered by the contested mark and the relevant goods covered by the earlier mark, ‘[were] distributed by the same companies, [had] the same points of sale and [were] directed at the same end-consumers, namely those interested in aquaculture and the maintenance and farming of aquatic organisms’. It thus indicated the criteria that were applied for the purpose of comparing the goods concerned. In addition, in so far as it referred to all the goods concerned in that paragraph, it must be understood that the Board of Appeal took the view that the examination based on the three factors mentioned was valid for all of the goods compared. Last, the fact that those reasons are contained in one sentence cannot mean that they are inadequate, and even less that they are absent.

–       The relevance of the criteria employed by the Board of Appeal in the comparison of the goods concerned

56      The applicant claims that the Board of Appeal did not apply the proper criteria during the comparison of the goods concerned, a claim which EUIPO disputes. It was, according to the applicant, necessary to analyse those goods in the light of the factors established in the judgment of 29 September 1998 in Canon (C‑39/97, EU:C:1998:442), and same point of sale and end-consumers are broad criteria applicable to many goods which have nothing else in common, inter alia their nature, their use, their complementarity or their substitutability.

57      It should be noted that the applicant raises the question of the existence of two categories of criteria, namely a first category comprising principal criteria, by reference to the judgment of 29 September 1998 in Canon (C‑39/97, EU:C:1998:442), and a second category encompassing secondary criteria. He argues that the factors on the basis of which the Board of Appeal assessed the similarity of the goods are ‘incomplete’ criteria.

58      It is necessary to point out that, in the judgment of 29 September 1998 in Canon (C‑39/97, EU:C:1998:442, paragraph 23), the Court of Justice indicated that ‘all the relevant factors relating to [the] goods or services themselves should be taken into account’ and that ‘those factors include[d], inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary’. That wording indicates that that list of criteria is not exhaustive. It was, moreover, supplemented, in particular by the addition of the criterion of the distribution channels of the goods concerned (see the case-law cited in paragraph 28 above).

59      As EUIPO pointed out during the hearing, the Board of Appeal employed as comparison criteria distribution by the same companies, at the same points of sale and to the same end-consumers (paragraph 42 of the contested decision).

60      In that regard, since EUIPO equated during the hearing the factor of distribution by the same companies with that of the distribution channel, it must be pointed out that the latter has been recognised in the case-law as being a relevant factor in the comparison of goods (judgment of 21 April 2005 in Ampafrance v OHIM — Johnson & Johnson (monBeBé), T‑164/03, EU:T:2005:140, paragraph 53; see, also, judgment of 4 June 2015 in STAYER, T‑254/13, not published, EU:T:2015:362, paragraph 80 and the case-law cited).

61      Moreover, concerning the factor of the point of sale, this tends to be confused with that of the distribution channel. It is appropriate to note, as EUIPO did, that the applicant claims that this factor is contrary to the case-law, while indicating that he does not dispute the criteria applied by the Board of Appeal and that, among them, the factor of the point of sale constitutes, according to settled case-law, an applicable criterion. The view must be taken that this factor also constituted a relevant factor for the purposes of the comparison of the goods.

62      Last, as EUIPO indicated during the hearing, the Board of Appeal took the view that the goods at issue were directed at the same end-consumers, it being necessary to understand that statement as a reference to the persons buying the goods, namely the relevant public. However, the question whether it is the same persons who buy the same goods is relevant for the purposes of assessing the likelihood of confusion.

63      Consequently, the factors for the comparison of the goods applied by the Board of Appeal in the present case must be regarded as being relevant.

64      Before any examination of whether the Board of Appeal ought to have compared the goods in the light of other comparison factors, it is necessary to determine whether its assessment during the examination of the goods concerned in view of the criteria which it employed could indeed allow it to conclude, without erring, that the goods concerned were similar, that similarity being, moreover, average.

–       The Board of Appeal’s assessment in the comparison of the goods concerned in the light of the criteria employed by it

65      First, with regard to the application of the factors of distribution by the same companies and at the same point of sale, the Board of Appeal provided no evidence allowing it to conclude that veterinary products and preparations, which fall within the medical field, are distributed by the same companies and sold at the same points of sale as food for fish (paragraph 42 of the contested decision).

66      In any event, assuming that the goods covered by the contested mark and the relevant goods covered by the earlier mark are sold at the same point of sale, it could not be deduced from that finding alone that the goods concerned were similar to an average degree. Since the same point of sale will sell all kinds of goods, the relevant public will not necessarily consider those goods to share a common origin simply because they are sold at the same point of sale.

67      Second, as regards the application of the factor of the relevant public, the Board of Appeal took the view that the goods at issue were directed at the same persons buying the goods concerned, namely those interested in aquaculture and in the maintenance and farming of aquatic organisms (paragraph 42 of the contested decision). To the extent that the applicant claims that the goods concerned serve a different clientele, it must be stated that ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ and ‘food for fish’ do indeed address different publics. In view of that factor, therefore, it could not be inferred from the comparison of those goods that they were similar.

68      By contrast, it must be considered that the persons buying ‘food for fish’ may also buy ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, fauna breeding’, or even for ‘flora cultivation’, since the latter flora could be aquarium plants. However, given that those persons may also buy very different products, such as filters or decorative objects for aquariums, that common element cannot be regarded as being sufficient — even assuming that the goods concerned are distributed at the same point of sale (see paragraph 66 above) — for a finding that the goods concerned are of average similarity.

69      In view of the foregoing, it must be held that the comparison of the goods concerned in the light of the criteria employed by the Board of Appeal could not enable it to conclude that the goods concerned were of average similarity.

70      That finding is not called into question by EUIPO’s argument that the applicant performed an artificial dissection, into six distinct categories, of the broad category of the goods contained in Class 5 for which the contested mark is registered, and then stating that the mere enumeration of those subcategories suffices to show that there were wide differences, whereas the Board of Appeal could use general reasoning for all of the goods concerned.

71      The Court of Justice has indeed acknowledged that, where the same ground of refusal is given for a category or group of goods, the reasoning may be general for all of the goods concerned; however, as EUIPO points out, such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods (see judgment of 17 October 2013 in Isdin v Bial-Portela, C‑597/12 P, EU:C:2013:672, paragraphs 26 and 27 and the case-law cited).

72      In the present case, however, the issue does not concern the question of whether a sufficiently homogeneous group of goods exists and whether the reasons for the contested decision were inadequate as regards the comparison of the goods concerned, but rather the prior question, which is to determine whether the goods at issue, or even only some of them, are similar in the light of the factors applied by the Board of Appeal.

73      It follows from all of the foregoing that the assessment of the Board of Appeal, according to which the relevant goods covered by the earlier mark and the goods in Class 5 covered by the contested mark are of average similarity, is erroneous, in that the Board of Appeal could not conclude that those goods were of average similarity by comparing them only on the basis of the three factors which it applied (paragraph 42 of the contested decision). Consequently, the contested decision must be annulled in this regard.

 Comparison of the signs

74      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

75      The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

76      It is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark. In addition, the fact that an element is not negligible does not mean that it is dominant, and by the same token the fact that an element is not dominant in no way means that it is negligible (judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 43 and 44).

77      Moreover, where a mark is composed of verbal 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 their name than by describing the figurative element of the mark (see judgment of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited).

78      Last, 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 (judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30).

79      The question whether the Board of Appeal was right to conclude that the composite contested mark, as reproduced in paragraph 2 above, and the earlier word mark TROPICAL are similar must be examined in the light of those principles of case-law.

80      In the present case, as the Board of Appeal observed in paragraph 46 of the contested decision, the contested mark consists of several elements. It is made up of two elements placed next to one another, that is to say, on the left part of the sign, a figurative element depicting a fish and, on the right part of the sign, the word ‘tropical’, written in a standard font, in lower-case letters, apart from the first letter, ‘t’, which is written in upper-case. The earlier mark, by contrast, is composed of the single word element ‘tropical’, as is evident from paragraph 47 of the contested decision.

 The distinctive and dominant elements of the contested mark

81      It is apparent from paragraph 46 of the contested decision that the Board of Appeal considered that the graphic representation of the fish in the contested mark had a weak distinctive character in relation to the goods at issue, which are related to food for fish. Moreover, it noted that the relevant public, which perceives a mark as a whole, tends to focus more on its word elements than on its figurative elements. The Board of Appeal concluded that the figurative element played a secondary role in the overall comparison of the signs at issue and that the more dominant and distinctive element of the contested mark was the word element ‘tropical’.

82      The applicant claims that the Board of Appeal disregarded the goods for which protection was claimed and disregarded the fact that the analysis required for identifying the dominant and distinctive elements of a mark had to take into account the inherent degree of distinctiveness of the marks at issue, particularly that of the earlier mark.

83      In the first place, according to the applicant, the word ‘tropical’ cannot, in the present case, constitute a dominant and distinctive element. That word, common to both marks, is non-distinctive and descriptive of ‘food for fish’, that is to say, of the goods for which the earlier mark is registered. Both in English and in Portuguese, the use of that word indicates clearly and without any ambiguity that those goods are intended for tropical fish. Therefore, the Board of Appeal erred in finding that that word was the more dominant and distinctive element of the contested mark and that the figurative element of that mark played only a secondary role in the overall comparison of the signs (paragraph 46 of the contested decision), whereas that figurative element should be considered the distinctive and dominant element of the contested mark and the element ‘tropical’ should not be taken into consideration.

84      In the second place, the applicant takes the view that, as the earlier mark consists only of a single word element, it cannot be dissected. He considers that it is justified to conclude that that mark is non-distinctive and descriptive of ‘food for fish’. He acknowledges that the validity of the earlier mark may not be contested. However, he considers that the Court must make a determination as to whether that mark has any distinctive and dominant element and must, in any event, make a determination on its distinctiveness in order to assess the likelihood of confusion.

85      EUIPO takes issue with the applicant’s argument. Apart from the case-law which indicates that it has to be assumed that the word ‘tropical’ possesses some degree of distinctiveness, since it is the only element making up the earlier mark, the applicant’s argument that that word is more directly allusive or descriptive of ‘food for fish’ than a figurative element depicting a fish is, in EUIPO’s view, manifestly untenable. According to EUIPO, even if the distinctive character of the word ‘tropical’ for the goods at issue is somewhat below average, as the Board of Appeal indicated, the distinctive character of the figurative element is clearly even lower, since that element not only alludes to some exotic notion of the tropics but directly refers to the animals for which those goods are intended.

86      In the first place, it should be stated, first, that it is clear from the contested decision that the Board of Appeal took the view that none of the elements, figurative or word, was capable of dominating by itself the image of the contested mark or of being completely disregarded in the overall impression created by it. Therefore, contrary to what the applicant appears to imply by citing the judgment of 20 September 2007 in Nestlé v OHIM (C‑193/06 P, not published, EU:C:2007:539), the figurative element of the contested mark was not disregarded by the Board of Appeal in the comparison of the marks at issue, including in the visual comparison, and the contested decision does not contradict that case-law.

87      Second, discounting the word element of the contested mark in the comparison of the marks at issue, including in the visual comparison, as the applicant suggests, would be at variance with the case-law cited in paragraph 75 above as well as with that cited in paragraph 86 above, since it would assume that it is regarded as negligible.

88      However, the word element of the contested mark cannot be classified as negligible. It cannot be argued that the word ‘tropical’ is more directly allusive or descriptive of ‘food for fish’ than is a figurative element depicting a fish. Even if one were to assume that, as EUIPO essentially contends, the distinctive character of the word ‘tropical’ is somewhat below average for the goods at issue, as the Board of Appeal indicated (paragraph 55 of the contested decision), the distinctive character of the figurative element is clearly even lower, since that element refers directly to the animals for which the relevant goods covered by the contested mark are intended. In that regard, contrary to what the applicant claims, the Board of Appeal stated clearly that ‘the graphic representation of the fish is a weak element considering the goods at stake which are related to food for fish’ (paragraph 46 of the contested decision).

89      Accordingly, it must be concluded that, in the contested mark, neither the word ‘tropical’ nor the figurative element may be regarded as negligible and the former must be regarded as being more distinctive and dominant than the latter.

90      That conclusion cannot be invalidated by the applicant’s argument that there are many ways in which a fish in general or a tropical fish in particular may be rendered figuratively and that the degree of distinctiveness of the figurative element depends on the degree to which the designer of that element has departed from a purely naturalistic rendering of the animal. Apart from the fact that the applicant does not dispute that, in any event, the figurative element of the contested mark will be perceived by the relevant public as depicting a fish, it must be noted that the applicant puts forward no argument to support the proposition that, in the present case, the depiction of the fish confers on that figurative element a particularly distinctive character.

91      Similarly, the conclusion mentioned in paragraph 89 above cannot be called into question by the applicant’s argument that he is the proprietor not only of the contested mark, but also of a large number of other marks composed of the same figurative element as that present in the contested mark, as well as of the word ‘tropical’ or variations thereof. It is sufficient to recall in this regard that, in the present case, it is necessary to examine whether the elements making up the contested mark are distinctive or dominant in relation to the relevant goods and that, in that context, it is of little importance whether the applicant is the proprietor of any other marks.

92      In the second place, according to the case-law, in order to avoid infringing Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 53(1)(a) thereof, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an application for a declaration of invalidity of an EU trade mark is based (see, by analogy, judgment of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47). Consequently, regarding the earlier mark as descriptive or as lacking in distinctiveness — as argued by the applicant — would run counter to that case-law. Thus, with regard to the earlier mark, the view must be taken, as EUIPO did, that the word ‘tropical’ possesses some degree of distinctiveness given that it is the only element of which that mark consists.

93      It follows from all of the foregoing that, contrary to what the applicant contends, the Board of Appeal rightly took into consideration the overall impression created by the contested mark in the comparison of the signs at issue and formed the view that the word element ‘tropical’ constituted the more dominant and distinctive element of the contested mark and that the figurative element could not be regarded as negligible. In addition, the word ‘tropical’ making up the earlier mark must be regarded as possessing some degree of distinctiveness.

 The visual comparison

94      It follows from, inter alia, paragraph 48 of the contested decision that, in the visual comparison of the marks at issue, the Board of Appeal carried out a global assessment of the signs, taking into account, in essence, that the more dominant and distinctive element of the contested mark was the word element ‘tropical’. According to the Board of Appeal, despite the differences between the two signs in terms of the presence of the graphic device of a fish in the contested mark, the signs are highly similar in so far as that figurative element plays only a secondary role in the overall comparison of the signs and the earlier mark is entirely incorporated in the contested mark.

95      The applicant claims that the signs at issue are not similar, because the mere fact that the marks at issue have the element ‘tropical’ in common does not mean that they are similar.

96      EUIPO disagrees with the applicant’s argument.

97      As a preliminary point, it must be pointed out that there is nothing to prevent a determination as to whether there is visual similarity between a word mark and a figurative mark, since those two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005 in Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited; judgment of 26 November 2014 in Aldi Einkauf v OHIM — Alifoods (Alifoods), T‑240/13, EU:T:2014:994, paragraph 46 (not published)).

98      It must be noted that the applicant bases his claim that the marks at issue produce different visual impressions on two premisses. First, he submits, the figurative element constitutes the dominant and distinctive element of the contested mark, since the element ‘tropical’ of that mark has to be discounted, and, second, a word mark which is descriptive or lacking in distinctiveness, as in this case, cannot be invoked to support a finding of similarity sufficient to support a finding of likelihood of confusion with a contested mark, where that latter mark consists of the same descriptive word and a distinctive figurative element.

99      However, those two premisses are mistaken (see paragraphs 92 and 93 above).

100    Furthermore, it must be pointed that, given that the element ‘tropical’, which is the sole component of the earlier mark, is fully incorporated in the contested mark, of which it is, moreover, the more dominant and distinctive element, the signs at issue have a partial identity such as to create, in the mind of the relevant public, an impression of strong visual similarity.

101    That assessment is not called into question by the fact that the contested mark contains a figurative element. As the Board of Appeal rightly indicated, that element will be perceived by the relevant public as being secondary to the word element and it does not prevent the relevant public from perceiving a visual similarity by reason of the common element ‘tropical’.

102    It follows from the foregoing that, as the Board of Appeal concluded in paragraph 48 of the contested decision, the signs at issue are visually similar to a high degree.

 The phonetic comparison

103    In paragraph 49 of the contested decision, the Board of Appeal considered that the signs at issue were identical from a phonetic perspective, as both will be pronounced as ‘tropical’ by the relevant public and that, as the figurative element would not be pronounced, it had no impact on the phonetic comparison.

104    The applicant claims that the signs at issue are not similar, because the mere fact that they have the element ‘tropical’ in common does not mean that they are similar.

105    EUIPO contends that the applicant’s arguments are unfounded.

106    In that respect, it should be pointed out that the applicant bases his claim that the marks at issue produce a different phonetic impression on the same premisses as those set out in paragraph 98 above.

107    However, those two premisses are mistaken (see paragraphs 92 and 93 above).

108    In addition, it is important to note that, in the strict sense, the phonetic reproduction of a composite mark corresponds to that of all its word elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the mark on a visual level (see judgment of 26 November 2014 in Alifoods, T‑240/13, EU:T:2014:994, paragraph 64 (not published) and the case-law cited). There is thus no need to take into account the figurative element of the contested mark for the purposes of that mark’s phonetic comparison with the earlier mark. What must therefore be compared are the word element ‘tropical’, comprising the earlier mark, and the word element ‘tropical’ of the contested mark.

109    It must be stated that that common element will be pronounced in the same way in the marks at issue, which are, consequently, phonetically identical, as the Board of Appeal correctly found (paragraph 49 of the contested decision).

 The conceptual comparison

110    The Board of Appeal found, in paragraph 50 of the contested decision, that, from a conceptual perspective, the signs at issue were similar to a high degree. It noted that, in so far as they coincided in the word element ‘tropical’, they had the same semantic content, that element evoking for the relevant public the climate or flora of the tropics and thus denoting something very hot or ardent. It noted that they differed, however, as to the figurative element of the contested mark, that element, however, playing only a secondary role in the overall comparison of the signs.

111    The applicant claims that the signs at issue are not conceptually similar, because the mere fact that they have the element ‘tropical’ in common does not mean that they are similar. Contrary to the Board of Appeal’s assertions (paragraph 50 of the contested decision), conceptual similarity cannot, in his view, be based on non-distinctive or descriptive elements of the marks at issue.

112    EUIPO calls into question the merits of the applicant’s argument.

113    In that regard, it must be pointed out that the applicant’s argument rests, essentially, on the mistaken premiss that the word ‘tropical’ is an element without distinctiveness or with a descriptive character. As has already been indicated (see paragraphs 87 to 93 above), it represents the more dominant and distinctive element of the contested mark and must be taken into consideration in relation to the earlier mark. Accordingly, that argument must be rejected.

114    Moreover, as the Board of Appeal essentially considered (paragraph 50 of the contested decision), and as the applicant acknowledges, it must be stated that the relevant public will understand the word ‘tropical’, common to the marks at issue, as evoking a characteristic of the tropics or as referring to the idea of great heat. Therefore, the signs at issue refer to the same concept.

115    Nevertheless, the signs at issue cannot be regarded as being conceptually identical since the contested mark additionally contains a figurative element representing a fish. The association of that element and the word ‘tropical’ may directly invoke the concept of tropical fish, whereas, in relation to the earlier mark, the presence of the sole term ‘tropical’ might indirectly refer to the concept of tropical fauna or, more indirectly still, to the concept of tropical fish. However, as the figurative element is secondary to the word element ‘tropical’ in the contested mark (see paragraph 93 above), the differences linked to its presence in that mark cannot supplant the reference to the shared concept mentioned in paragraph 114 above.

116    Therefore, it must be held that, as the Board of Appeal found (paragraph 50 of the contested decision), the signs at issue are conceptually similar to a high degree.

 Conclusion on the comparison of the signs

117    It follows from all of the foregoing that, contrary to what the applicant argues, the Board of Appeal was correct to take the view that the marks at issue, considered as a whole, were phonetically identical and, on the visual and conceptual levels, highly similar. Accordingly, in accordance with the case-law cited in paragraph 78 above, the marks at issue are to be regarded as similar overall.

 Global assessment of the likelihood of confusion

 Preliminary observations

118    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 that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the goods or services concerned, 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 judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraphs 16, 17 and 29 and the case-law cited, and 9 July 2003 in GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

119    The relevant factors mentioned in paragraph 118 above also include the distinctive character of the earlier trade mark, which it derives from the inherent qualities of that mark or its reputation (see, to that effect, judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 18, and 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

120    Furthermore, the coexistence of two marks on a market might be taken into account since it is accepted in the case-law that, together with other elements, such coexistence may contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (see, to that effect, judgment of 3 September 2009 in Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 82; see also, to that effect and by analogy, judgment of 22 September 2011 in Budějovický Budvar, C‑482/09, EU:C:2011:605, paragraphs 75 to 82).

121    In the contested decision, the Board of Appeal stated that, in view of the identity and similarity of the goods concerned and of the fact that the signs at issue were phonetically identical and highly similar on the visual and conceptual levels, there was a likelihood of confusion on the part of the relevant public, even taking into account the higher level of attentiveness of the relevant consumer and the below average distinctiveness of the earlier mark (paragraphs 55 and 56 of the contested decision).

122    The applicant disputes the assessment of the Board of Appeal concerning the existence of a likelihood of confusion between the marks at issue. The Board of Appeal, he submits, erred in finding that the comparison of the goods at issue led to the conclusion that they were identical or similar and that the overall comparison of the signs at issue revealed their similarity. In addition, he contends, the Board of Appeal failed properly to take into consideration the low degree of distinctiveness, or even absence thereof, of the earlier mark and the coexistence on the market of the marks at issue.

 The identity or similarity of the goods concerned and the similarity of the signs at issue

123    As a preliminary point, the applicant claims that the contested decision, in paragraph 56 thereof, is silent on the degree of similarity of the goods when examining the likelihood of confusion. In that regard, it is sufficient to state that it is clear from paragraphs 41 to 43 of the contested decision that the Board of Appeal found that some of the goods covered were identical or similar and from paragraph 42 of that decision that the other goods were similar to an average degree. Therefore, the fact that the Board of Appeal did not recall the degree of similarity between the goods at issue, in paragraph 56 of the contested decision, in the global assessment of the likelihood of confusion does not mean that there was a difficulty of comprehension in the Board of Appeal’s reasoning or reveal an inconsistency or contradiction in the reasons for its decision.

124    In the first place, so far as concerns the goods in Classes 5 and 31, mentioned in paragraphs 46 and 73 above, it was stated in those paragraphs that the contested decision had to be annulled, on the ground that the Board of Appeal had erroneously concluded that they were identical or similar to an average degree. Therefore, it will be for the Board of Appeal to carry out once again the comparison of those goods and, if appropriate, to assess in that connection whether there is a likelihood of confusion between the marks at issue for the relevant public.

125    In the second place, with regard to the other goods in Class 31 covered by the contested mark, mentioned in paragraphs 33 and 45 above, and the relevant goods covered by the earlier mark, since the Board of Appeal correctly concluded that they were identical, it is appropriate to proceed with the review of the lawfulness of the contested decision and to examine the Board of Appeal’s global assessment of the likelihood of confusion.

126    In that respect, it is necessary to bear in mind that the relevant public, made up both of the general public and of business customers wishing to install an aquarium or start breeding fish, displays an average or above average level of attentiveness (paragraphs 38 and 54 of the contested decision). It is not claimed that the part of the relevant public displaying an average level of attentiveness is insignificant. Therefore, so far as concerns the assessment of the likelihood of confusion, it is the public with the lowest level of attentiveness that must be taken into consideration.

127    Moreover, the Board of Appeal correctly found that the marks at issue were similar overall (see paragraph 117 above).

128    Consequently, in view of the identity of the goods concerned and of the overall similarity of the signs at issue, a likelihood of confusion between the marks at issue for the relevant public cannot be excluded from the outset. However, as has been recalled in paragraphs 118 to 120 above, the likelihood of confusion must be assessed globally, taking into account all the relevant factors. In the present case, the applicant also relies on the low degree of distinctiveness, or even the absence thereof, of the earlier mark and on the peaceful coexistence on the market of the marks at issue in support of his argument that there is no likelihood of confusion between them. Therefore, the Court must examine those two factors before carrying out, if appropriate, the final global assessment of the likelihood of confusion.

 The distinctiveness of the earlier mark

129    In accordance with the case-law cited in paragraph 119 above, marks with a highly distinctive character enjoy a broader scope of protection than do marks with a less distinctive character. However, the finding of weak distinctive character for the earlier mark does not prevent a finding that there is a likelihood of confusion. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion, in particular where the goods in question are identical and the signs at issue are similar (see, to that effect, judgments of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61, and 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

130    In paragraphs 55 and 56 of the contested decision, the Board of Appeal took account of the distinctiveness of the earlier mark, but found that the fact that that distinctiveness was lower than average did not preclude the existence of a likelihood of confusion between the marks at issue.

131    In the applicant’s view, the Board of Appeal erroneously found the earlier mark to have a below average level of distinctiveness, whereas it has no distinctiveness or, at least, a very low or extremely low level of distinctiveness. According to the applicant, because of the earlier mark’s descriptiveness or lack of distinctiveness, that mark cannot be invoked to support a finding of similarity sufficient to support a finding that there is a likelihood of confusion with the contested mark, which contains the same descriptive word and a distinctive figurative element.

132    EUIPO contends that the applicant’s argument is unfounded.

133    First, as regards the registration of the earlier mark in Portugal, it cannot be found to be descriptive or devoid of distinctive character without calling into question its validity in proceedings for a declaration of invalidity of an EU trade mark, which would give rise to an infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof (see, to that effect and by analogy, judgment of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 47, 51 and 52) (see paragraph 92 above).

134    Furthermore, supposing that the earlier mark is descriptive, as the applicant claims, it must be pointed out that he cannot, in proceedings for a declaration of invalidity, rely on an absolute ground for refusal precluding valid registration of a sign by a national office. The validity of the registration of a sign as a national trade mark cannot be called into question in proceedings for a declaration of invalidity of an EU trade mark, but only in cancellation proceedings brought in the Member State concerned (judgments of 30 June 2004 in BMI Bertollo v OHIM — Diesel (DIESELIT), T‑186/02, EU:T:2004:197, paragraph 71, and 13 April 2011 in Bodegas y Viñedos Puerta de Labastida v OHIM — Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, not published, EU:T:2011:173, paragraph 65).

135    Second, it must be noted that the applicant’s approach would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would be given undue importance. The result would be that, where the earlier mark is of only weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the contested mark, whatever the degree of similarity between the marks at issue. Such a result would not, however, be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof (see, to that effect and by analogy, judgments of 15 March 2007 in T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 41 and the case-law cited, and 13 December 2007 in PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 71 and the case-law cited). Furthermore, it should be noted that, in the present case, the earlier mark is fully incorporated in the contested mark.

136    In any event, even if it were to be assumed that the term ‘tropical’ could be regarded as being descriptive of the goods covered by the marks at issue, referred to in paragraphs 33 and 45 above, and that, consequently, the earlier mark could itself be regarded as having a weak distinctive character, the identical nature of those goods and the degree of similarity between the marks at issue, considered cumulatively, prove to be sufficiently high to justify the conclusion that there is a likelihood of confusion for the relevant public, subject, however, to it being taken into consideration whether the marks at issue coexist.

 Coexistence of the marks at issue

137    It should be recalled that, in accordance with the case-law cited in paragraph 120 above, it cannot be ruled out that the coexistence of two marks on a particular market might, in conjunction with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public.

138    Moreover, although it is for the proprietor of the contested mark to demonstrate during the proceedings before EUIPO concerning relative grounds of refusal that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the mark upon which the proprietor relies and the earlier mark on which the application for a declaration of invalidity is based (see, to that effect, judgments of 11 May 2005 in Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, EU:T:2005:169, paragraph 86, and 23 October 2015 in Vimeo v OHIM — PT Comunicações (VIMEO), T‑96/14, not published, EU:T:2015:799), it is open to such a proprietor to advance a body of evidence to that effect. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue is particularly relevant (see judgment of 30 June 2015 in La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 80 and the case-law cited). Furthermore, in so far as, according to the case-law, the coexistence of two trade marks must be sufficiently long to be capable of influencing the perception of the relevant consumers (see, to that effect, judgments of 1 March 2005 in Fusco v OHIM — Fusco International (ENZO FUSCO), T‑185/03, EU:T:2005:73, paragraph 64, and 10 April 2013 in Höganäs v OHIM — Haynes (ASTALOY), T‑505/10, not published, EU:T:2013:160, paragraph 47), the duration of the coexistence also constitutes an essential factor.

139    It should also be noted that any argument based on coexistence implies a priori, first, that the earlier trade marks are identical to the trade marks at issue (see, to that effect, judgment of 11 May 2005 in GRUPO SADA, T‑31/03, EU:T:2005:169, paragraphs 86 and 88) and, second, that there is genuine use of the trade mark on which the applicant relies in the relevant territory (judgment of 21 April 2005 in PepsiCo v OHIM — Intersnack Knabber-Gebäck (RUFFLES), T‑269/02, EU:T:2005:138, paragraphs 23 to 25).

140    Moreover, in so far as only peaceful coexistence between the trade marks at issue can be taken into account, any dispute between the proprietors of the earlier trade marks prevents a finding of coexistence (see, to that effect, judgments of 3 September 2009 in Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 82, and 30 June 2015 in VIÑA ALBERDI, T‑489/13, EU:T:2015:446, paragraph 82 and the case-law cited).

141    The applicant raises the coexistence, first, of the earlier mark and, second, of the contested mark as well as of an international trade mark identical to the contested mark. First, he claims that, pursuant to a principle which he refers to as a ‘sound principle of trade mark law’, that coexistence has limited the extent of Aviário Tropical’s rights under national law. Second, he argues that it should have been examined as a factor to be taken into consideration in the assessment of the likelihood of confusion.

–       The principle invoked by the applicant relating to the extent of Aviário Tropical’s rights under national law

142    The applicant invokes the coexistence of the earlier mark and an international trade mark, of which he is the proprietor and which was registered on 6 October 1993 under number 612658, effective in, inter alia, Portugal since 13 March 1996, for goods in Classes 5 and 31 (‘the international trade mark’). The applicant indicates that, apart from the only difference of the addition of the letter ‘r’, written in upper-case, encircled and adjoining the letter ‘l’ of the word ‘tropical’, its depiction is identical to that of the contested mark.

143    The applicant argues that the application for a declaration of invalidity of the contested mark must be dismissed on the ground that the proprietor of the earlier mark should be precluded from asserting rights vis-à-vis an EU trade mark application or registration identical to a national mark of the EU trade mark proprietor and the use of which in the country in question cannot be prohibited by the proprietor of the earlier mark.

144    In the present case, he submits, Aviário Tropical has never challenged the validity of the extension of the international registration to Portugal or the continued use of that international mark in that State since 1996. An application for a declaration of invalidity, lodged by Aviário Tropical, as the applicant stated during the hearing, and based on the absence of genuine use of that mark, was rejected by the Portuguese intellectual property office on 20 January 2012, and that decision was not the subject of any legal challenge.

145    The applicant claims that, even though he invoked the existence of that international mark in the proceedings before EUIPO under the aspect of acquiescence and absence of likelihood of confusion, the Board of Appeal investigated only whether Aviário Tropical had acquiesced in the use of the contested mark. He essentially alleges that, since Aviário Tropical had acquiesced in the use of the international trade mark for over five years, it lost the right to obtain its invalidation in Portugal and, consequently, should not be authorised to assert, vis-à-vis the contested mark, rights more extensive than those that it has against the same mark in that State. According to the applicant, this is a ‘sound principle of trade mark law’ which, hitherto, has not found expression in legislation or in the case-law of the EU judicature.

146    EUIPO contends that, in accordance with settled case-law, the applicant’s argument is inadmissible, since it alters the legal context of the dispute as it was brought before the Board of Appeal. It argues that, even if the international trade mark was mentioned at one point in connection with a decision of the Portuguese trade mark office rejecting a request for revocation, the new principle of trade mark law on which that argument is based was not mentioned by the applicant at any point during the administrative proceedings. The applicant’s observations were thus centred exclusively on the acquiescence, within the meaning of Article 54 of Regulation No 207/2009, as regards the contested mark by Aviário Tropical, and not on its acquiescence as regards any other mark. EUIPO refers in this context to a number of observations made by the applicant during the administrative proceedings.

147    In EUIPO’s view, that argument is, in any event, clearly unfounded since it ignores the autonomous character of the EU trade mark regime, which applies independently of any national system.

148    It is appropriate to find that the applicant’s argument is, contrary to his assertions, inadmissible and, in any event, unfounded, as EUIPO contends.

149    It should be borne in mind that the purpose of actions before the General Court under Article 65(2) of Regulation No 207/2009 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 76 thereof requires that review to be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see, to that effect, judgment of 22 June 2004 in ‘Drie Mollen sinds 1818’ v OHIM — Nabeiro Silveria (Galáxia), T‑66/03, EU:T:2004:190, paragraph 45). Likewise, an applicant does not have the power to alter before the General Court the terms of the dispute as delimited in the respective claims and allegations submitted by that applicant and by the intervener (judgments of 26 April 2007 in Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 43, and 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 122).

150    It is, however, not in any way apparent from the file relating to the administrative proceedings before EUIPO that the applicant at that time argued that, since Aviário Tropical had acquiesced in the use of the international trade mark for over five years, it no longer had the right to secure cancellation of that mark in Portugal and was not to be authorised to assert, vis-à-vis the contested mark, rights more extensive than those which it had against the same mark in Portugal.

151    Consequently, that argument of the applicant is inadmissible before the Court, because he did not put it forward before EUIPO, which was not obliged to examine it of its own motion, since Article 76(1), in fine, of Regulation No 207/2009 restricts its examination to the facts, evidence and arguments provided by the parties and the relief sought.

152    In addition, the applicant does not base his argument on any text or on any case-law, a fact, moreover, which he acknowledges. That argument must therefore be rejected as inadmissible pursuant to Article 44(1)(c) of the Rules of Procedure of the General Court of 2 May 1991.

153    It is true that the applicant asserts that the absence of precedent is not in itself a reason for rejecting his claims. He refers to Article 9 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (OJ 2008 L 299, p. 25).

154    It must, however, be borne in mind that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (judgment of 5 December 2000 in Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47). The legality of the decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation No 207/2009, as interpreted, where necessary, by the EU judicature (judgment of 17 July 2008 in L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58). Thus, the proprietor of a contested trade mark, as in the present case, must rely on a provision of that regulation in order to contest the application for a declaration of invalidity, and may not invoke a principle — assuming that it exists — that refers only to national provisions.

155    Consequently, the applicant’s argument must, in any event, be rejected as unfounded.

–       Whether the marks at issue coexist in Portugal

156    The applicant claims that the coexistence of the marks at issue in Portugal shows that there is no likelihood of confusion. He argues that, in the present case, all the conditions for taking into consideration that coexistence, namely the identity of the marks and goods as well as 16 years of continued use in Portugal of the international trade mark, are satisfied. The Board of Appeal, he submits, limited its analysis to the claim of acquiescence in the sense of Article 54 of Regulation No 207/2009. It thus failed to take into account the fact that the applicant, by relying on acquiescence in Portugal, also expressly relied on the absence of a likelihood of confusion. The applicant refers in this respect to certain excerpts from the submissions which he made in the context of the administrative proceedings.

157    The applicant claims that, since the Board of Appeal dealt only with the application of Article 54 of Regulation No 207/2009, the contested decision is vitiated by an inadequate statement of reasons.

158    In the reply, responding to an argument of EUIPO, the applicant disputes the inadmissibility of his argument that the coexistence of the marks at issue should have been examined as a factor to be taken into consideration in assessing the likelihood of confusion. He claims to have consistently argued during the administrative proceedings that the long-standing coexistence in Portugal of the marks at issue precluded a finding of likelihood of confusion and he refers to various excerpts from the administrative file before EUIPO.

159    EUIPO considers that argument to be inadmissible, since it is being put forward for the first time before the Court. It is apparent from the administrative file, and even from the excerpts cited by the applicant, that coexistence was never cited as an independent argument during the administrative proceedings in the context of the applicant’s observations on the likelihood of confusion, but merely as a remark within the claim of acquiescence. It would have been highly contradictory to argue, as the applicant did during the administrative proceedings, that the earlier mark had not been put to genuine use and that the marks at issue had coexisted in the sense of being used at the same time on the same market.

160    On the merits, EUIPO contends that the Board of Appeal did not breach the obligation to state reasons. In EUIPO’s view, given that the Board of Appeal found, in the contested decision, that the most basic condition to apply Article 54 of Regulation No 207/2009, invoked by the applicant in support of his claim, had not been fulfilled, the contested mark having been registered for less than five years at the date of filing of the application for a declaration of invalidity, there was no need to address the remainder of the applicant’s arguments on that issue.

161    In the alternative, EUIPO submits, the applicant’s argument must be regarded as being manifestly unfounded, since he made no attempt to demonstrate that the marks at issue had coexisted on the market or that such coexistence stemmed from the absence of any likelihood of confusion.

162    It must be pointed out that, by the argument put forward in support of the present plea, the applicant essentially relies on the coexistence of the marks at issue on the Portuguese market from the perspective both of the reasons for the contested decision and of the effects of that possible coexistence on the likelihood of confusion, in the sense that the earlier mark and the international trade mark, of which he is the proprietor and which is identical to the contested mark, coexisted.

163    It should be noted that, in the contested decision, the Board of Appeal rejected the argument of the applicant by which he had invoked limitation in consequence of acquiescence with a view to restricting Aviário Tropical’s right to lodge an application for a declaration of invalidity within the meaning of Article 54 of Regulation No 207/2009 (paragraph 57 of the contested decision), without examining the effects of a possible coexistence of the marks at issue in the assessment of the likelihood of confusion.

164    To the extent to which the applicant invokes a failure to state reasons for the contested decision, it is appropriate to examine first of all whether the Board of Appeal ought to have examined whether the marks at issue coexisted in Portugal, given that the applicant had raised that argument during the administrative proceedings, as he claims. That question did not have to be examined by EUIPO of its own motion, since Article 76(1), in fine, of Regulation No 207/2009 restricts its examination to the facts, evidence and arguments provided by the parties and the relief sought.

165    In the first place, with regard to the passages cited by the applicant, the first, mentioned in the application and the reply, is an extract from his submissions of 27 September 2012, made during the administrative proceedings, and is essentially part of his argument relating to Article 54(2) of Regulation No 207/2009. Aviário Tropical also made submissions in reply in relation to the application of Article 54(2) of Regulation No 207/2009.

166    It must nevertheless be pointed out that the applicant did indeed mention the international trade mark, when arguing that the marks had coexisted for 16 years in Portugal. Aviário Tropical, moreover, stated that the applicant had essentially relied on his international trade mark, but that he had relied on a mere formal coexistence. Next, after having recalled the case-law on the possibility of taking into account the coexistence of two marks on a market, under the relevant factors mentioned in paragraph 118 above, in the assessment of the likelihood of confusion, Aviário Tropical maintained that the applicant’s argument was essentially incidental and could not be taken to mean that he had proved peaceful coexistence.

167    As regards the second passage cited by the applicant, mentioned in the application and in the reply, it is taken from the submissions of 20 May 2013, made during the administrative proceedings. Although it is true that, in that extract and, more generally, in those submissions, the applicant raised the question of limitation in consequence of acquiescence within the meaning of Article 54(2) of Regulation No 207/2009, it must also be borne in mind that he repeatedly mentioned in those submissions that the marks at issue had coexisted for 16 years, while citing the international trade mark.

168    Moreover, in the reply, the applicant refers in particular to a passage of the part of his submissions on the differences between the signs at issue. In that passage, the applicant asserts that the fact that consumers did not confuse the marks at issue during the 16 years of coexistence on the Portuguese market provides proof of the differences between those marks. It must be noted that that argument did not concern limitation in consequence of acquiescence, but sought to raise the coexistence of the marks at issue as a factor to be taken into consideration in the assessment of the likelihood of confusion.

169    With regard to the third reference by the applicant, mentioned in the application and relating to his submissions made during the administrative proceedings, it concerns, generally speaking, the observations of 14 February 2014. It is apparent from those submissions that they contain an argument according to which Aviário Tropical had acquiesced in the applicant’s ‘trade mark’. However, since they also reproduce extracts from the submissions of 20 May 2013, including those addressing the issue of the coexistence for 16 years of the marks at issue, by citing the international trade mark (see paragraph 167 above), the view must be taken that the applicant also wished to raise that issue again in his submissions of 14 February 2014.

170    In the reply, the applicant refers in particular to pages 2 and 3 of those submissions, which reproduce in part the submissions of 20 May 2013, the citation of which has already been mentioned in paragraph 167 above. As has already been indicated (see paragraphs 167 and 169 above), both in the submissions of 20 May 2013 as well as in those of 14 February 2014, the applicant invoked limitation in consequence of acquiescence, but also coexistence as a factor to be taken into consideration in the assessment of the likelihood of confusion.

171    In the second place, in the reply, the applicant claims that, when filing his submissions of 27 September 2012, he provided evidence of long-lasting use and presence on the market in Portugal of his mark, which is identical to the contested mark. However, according to the applicant, that evidence clearly had no bearing on the applicability of Article 54 of Regulation No 207/2009. Neither the Cancellation Division nor the Board of Appeal made any reference to that evidence.

172    In that respect, it must be stated that, as the Cancellation Division rejected the application for a declaration of invalidity for lack of evidence of genuine use of the earlier mark, it was not required to examine that evidence.

173    By contrast, it is appropriate to consider that, although, in his submissions of 27 September 2013, the applicant set out an argument relating to the limitation in consequence of acquiescence referred to in Article 54(2) of Regulation No 207/2009, he had also invoked the coexistence of the marks at issue as a factor to be taken into consideration in the assessment of the likelihood of confusion (see paragraphs 165 and 166 above), which presupposed that the Board of Appeal was required to examine the evidence submitted by the applicant in support of that argument.

174    It follows from all of the foregoing considerations that the applicant’s argument that the coexistence of the marks at issue should have been examined as a factor to be taken into consideration in the assessment of the likelihood of confusion by the Board of Appeal must be regarded as admissible in so far as, during the administrative proceedings, the applicant did indeed invoke limitation in consequence of acquiescence, but on repeated occasions — and not on one single occasion, as EUIPO argues — invoked the coexistence of the marks at issue as a factor to be taken into consideration in the assessment of the likelihood of confusion.

175    In those circumstances, it being borne in mind that the Board of Appeal did not examine that question of the coexistence of the marks at issue or respond to the applicant’s arguments in the contested decision, this being one of the factors to be taken into consideration in the assessment of the likelihood of confusion, it must be concluded that the contested decision is vitiated by a failure to state reasons and must be annulled in that respect.

176    Admittedly, in the response and during the hearing, EUIPO essentially asks the Court to alter the contested decision, as provided for in Article 65(3) of Regulation No 207/2009, and to adopt the decision that, in its view, the Board of Appeal ought to have taken, namely a decision finding that the conditions for taking the view that the marks at issue had coexisted on the relevant territory were not fulfilled, with the result that EUIPO would enforce it by concluding that there was a likelihood of confusion and by annulling the contested decision for the goods concerned.

177    However, the Board of Appeal did not examine the applicant’s argument relating to the coexistence of the marks at issue as a relevant factor in the assessment of the likelihood of confusion, and, a fortiori, did not examine the evidence relied on in support of that argument. Consequently, the Court may not rule on that question, relating to the coexistence of the marks at issue, or on the global assessment of the likelihood of confusion in regard to the goods in Class 31 covered by the contested mark, mentioned in paragraphs 33 and 45 above, and is not in a position to determine the decision that the Board of Appeal was required to take. It cannot, therefore, exercise its power to alter the decision.

2.     Conclusion on the outcome of the action

178    In view of all of the foregoing considerations, the applicant’s first head of claim must be allowed and the contested decision annulled on the ground that, first, the Board of Appeal wrongly concluded that certain goods in Class 31 covered by the marks at issue (see paragraphs 43 and 44 above) were identical and that the goods in Class 5 covered by the contested mark and those in Class 31 covered by the earlier mark were similar to an average degree (see paragraph 73 above), and, second, with regard to the goods in Class 31 covered by the marks at issue (see paragraphs 33 and 45 above), the contested decision is vitiated by a failure to state reasons in so far as the Board of Appeal omitted to rule on the applicant’s argument relating to the coexistence of the marks at issue (see paragraph 175 above).

179    With regard to the applicant’s second head of claim, by which he asks the Court to dismiss the appeal brought by Aviário Tropical against the decision of the Cancellation Division, it should be understood that he asks, essentially, the Court to alter the contested decision, as is provided for in Article 65(3) of Regulation No 207/2009, and to adopt the decision that, in its view, the Board of Appeal ought to have taken. However, for, among others, the reasons set out in paragraph 177 above, the Court is not in a position to determine the decision that, according to the applicant, the Board of Appeal was required to take and thus cannot exercise its power to alter the decision. Accordingly, the second head of claim of the applicant must be rejected.

 Costs

180    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (Ninth Chamber),

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 September 2014 (Case R 1948/2013-4);

2.      Orders EUIPO to bear its own costs and to pay those incurred by Mr Tadeusz Ogrodnik.

Berardis

Czúcz

Popescu

Delivered in open court in Luxembourg on 21 July 2016.

[Signatures]

Table of contents

Background to the dispute

Forms of order sought

Law

1.  Infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof

Relevant public

Comparison of the goods

The goods in Class 31 covered by the contested mark

–  ‘Food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’ and ‘food for fauna containing nutritives’

–  ‘Products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals’

The goods in Class 5 covered by the contested mark

–  The adequacy of the reasons for the contested decision

–  The relevance of the criteria employed by the Board of Appeal in the comparison of the goods concerned

–  The Board of Appeal’s assessment in the comparison of the goods concerned in the light of the criteria employed by it

Comparison of the signs

The distinctive and dominant elements of the contested mark

The visual comparison

The phonetic comparison

The conceptual comparison

Conclusion on the comparison of the signs

Global assessment of the likelihood of confusion

Preliminary observations

The identity or similarity of the goods concerned and the similarity of the signs at issue

The distinctiveness of the earlier mark

Coexistence of the marks at issue

–  The principle invoked by the applicant relating to the extent of Aviário Tropical’s rights under national law

–  Whether the marks at issue coexist in Portugal

2.  Conclusion on the outcome of the action

Costs