JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

24 February 2016 (*)

(Community trade mark — Opposition proceedings — Application for Community figurative mark REAL HAND COOKED — Earlier national figurative mark real QUALITY — Relative ground for refusal — Likelihood of confusion — Misuse of power — Article 8(1)(b) of Regulation (EC) No 207/2009 — Articles 64, 75, 76 and 83 of Regulation No 207/2009)

In Case T‑816/14,

Tayto Group Ltd, established in Corby (United Kingdom), represented by R. Kunze and G. Würtenberger, lawyers

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

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

MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate and R. Kaase, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 6 October 2014 (Case R 842/2013-4) relating to opposition proceedings between MIP Metro Group Intellectual Property GmbH & Co. KG and Tayto Group Ltd,

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 17 December 2014,

having regard to the responses of OHIM and the intervener lodged at the Court Registry on 20 April 2015,

further to the hearing on 2 December 2015,

gives the following

Judgment

 Background to the dispute

1        On 28 April 2010, the applicant, Tayto Group Ltd, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        Registration as a mark was sought for the figurative sign reproduced below:

3        The goods in respect of which registration was sought are in Classes 29 and 30 for the purposes of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 29: ‘meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; potato crisps; real potato crisps; potato products and potato preparations prepared in the form of or for use in making into snack foods, puffed pork rind for food for human consumption; processed peanuts and roasted peanuts; snacks in the form of real potato crisps’;

–        Class 30: ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; shaped or extruded savoury snack foods prepared from cereal preparations and/or potato flour’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 117/2010 of 29 June 2010.

5        On 28 September 2010, the intervener, MIP Metro Group Intellectual Property GmbH & Co. KG (‘MIP’), filed a notice of opposition under Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods covered by that mark mentioned in paragraph 3 above.

6        The opposition was based, inter alia, on the earlier national figurative mark reproduced below, filed on 5 October 2007 and registered in Germany on 5 December 2007 under number 30 764 283:

7        That earlier mark designates goods in Classes 29 and 30 and corresponding, for each of those classes, to the following description:

–        Class 29: ‘meat, fish, poultry and game; meat extracts; preserved, dried and stewed fruit and vegetables; jellies for food; jams, compotes; eggs, milk and milk products; edible oils and fats; broth, broth concentrates, fat-containing mixtures for bread slices, butter, peanut butter, broth concentrates, meat jellies, fruit preserved in alcohol, preparations for making bouillon, fruit jellies, lobsters, not live, yoghurt, cocoa butter, crystallized fruits, potato crisps, potato fritters, cheese, Kephir (milk beverage), coconut butter, coconut, dessicated, soups, croquettes, crustaceans, not live, liver pâté, almonds, ground, margarine, marmalade, milk beverages, milk predominating, whey, nuts, prepared, olives, preserved, pickles, mushrooms, preserved, pollen prepared as foodstuff, raisins, cream, sauerkraut, shellfish, not live, ham, soya beans, bacon, gelatine for food, preparations for making soup, tofu, tomato purée, tomato juice for cooking, truffles, preserved, sausages, charcuterie; antipasti, included in this class, meat, fish, poultry and game products, minced meat and meat preparations, ready meals and partially cooked meals and salads, mostly consisting of meat and/or fish and/or poultry and/or sausage and/or game, ready meals and partially cooked meals and salads, mostly consisting of fruit and/or vegetables, vegetarian sandwich spreads, included in this class, butter milk, fresh cream, curd, milk powder, dietetic foods and food supplements not for medical purposes based on white of egg, fats, fatty acids, with added vitamins, minerals, trace elements, either individually or in combination, included in this class, fruit sauces, legumes, potatoes and prepared potato products, included in this class, cheese products and cheese preparations, coffee whitener, potato dumplings, mashed potatoes, caviar, coconut milk, snacks, included in this class, extruded potato products for consumption, included in this class, potato sticks, dried fruits, dried, roasted, salted and/or spiced hazelnuts, peanuts, macadamia nuts, cashew nuts, pistachio nuts, chips, quark, rösti (Swiss potato dish), sour cream, soya products as meat replacements, included in this class, all the above mentioned in class goods also available as preserves or frozen, as far as this is possible’;

–        Class 30: ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee replacement; flours and cereal preparations, bread, pastries, edible ices; honey, golden syrup; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice for refreshment, flavorings (flavourings), other than essential oils, for beverages, flavourings other than essential oils, flavorings (flavourings), other than essential oils, for cakes, thickening agents for cooking foodstuffs, binding agents for ice cream (edible ices), biscuits, sweetmeats (candy), bread rolls, sandwiches, cornflakes, iced tea, essences for foodstuffs, except etheric essences and essential oils, meat tenderizers, for household purposes, meat pies, meat gravies, spring rolls, pastries, cereals, husked barley, tea-based beverages, condiments, glucose for food, gluten for food, yeast, coffee flavorings (flavourings), coffee-based beverages, cocoa products, cocoa-based beverages, candy for food, capers, potato flour for food; biscuits, ketchup (sauce), cake powder, cakes, cake paste, corn, milled, corn, roasted, corn flour, maltose, malt for human consumption, marzipan, mayonnaise, farinaceous foods, gruel, with a milk base, for food, nutmeg, flour-milling products, muesli, noodles, breadcrumbs, pastries, pies, pancakes, pizzas, popcorn, puddings, popcorn, quiches, ravioli, dressings for salad, sandwiches, leaven, chocolate, chocolate-based beverages, mustard meal, soya flour, soya sauce, sherbets (ices), spaghetti, powders for ice cream, starch for food, sushi, natural sweeteners, tacos, tapioca flour for food, tomato sauces, pasta, tarts, tortillas, glucose for food, waffles, seasonings, aromatic preparations for food, confectionary, rusks, confectionary for decorating Christmas trees; ready meals and partially cooked products and salads, mostly consisting of rice and pasta, baking powder, cereal products, corn snacks, bread for toasting, bread for sandwiches, all croissants and baguettes, with and without fillings, crispbread, hamburgers, vegetarian burgers, hot dogs, rice snacks, produced using extrusion methods, wheat, rice and corn products for food, corn crisps, popcorn, salt sticks, savoury snacks, pretzels; confectionary, pralines, also filled, sugar foam products, chocolate products, chocolate marshmallows, wine and fruit gums, liquorice (confectionery), sweet spreads for bread, insofar as included in this class, sweets and desserts, pudding powder, red fruit jelly, rice pudding, gnocchi, tortellini, macaroni, lasagne, spaetzle, Maultaschen (Swabian ravioli), fruit sauces, ready-made sauces, remoulade, pepper, dietic foods or food supplements not for medical purposes based on carbohydrates, fibre, with the addition of vitamins, minerals and trace elements individually or in combination, included in this class, pot herbs’.

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

9        On 6 March 2013, the Opposition Division upheld the opposition on the basis of the earlier mark, which was not subject to an obligation as to use.

10      On 6 May 2013, the applicant filed a notice of appeal at OHIM under Articles 58 to 64 of Regulation No 207/2009 against the decision of the Opposition Division.

11      By decision of 6 October 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal.

12      It considered, first of all, like the Opposition Division, that it was necessary to examine the appeal on the basis of the earlier mark and that the relevant public was the German public. The Board of Appeal further held that the goods covered by the mark applied for were general food products of mass consumption addressed to the public at large, so that, contrary to the applicant’s claim, the attention level of the relevant public was not higher than average. In addition, it considered that the goods were in part identical or similar.

13      Next, with regard to the comparison of the signs, it found that the signs had an average visual similarity, an above-average aural similarity and a conceptual similarity.

14      Lastly, the Board of Appeal held, in essence, that in view of the inherent distinctive character of the earlier mark, the identity and the similarity of the goods and the similarity between the signs, there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009 for the relevant public. It stated that, given the existence of a likelihood of confusion between the earlier mark and the mark applied for, there was no need to examine the likelihood of confusion in respect of the other earlier marks invoked in support of the opposition since the outcome of the present case could not be affected by that examination.

 Forms of order sought

15      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

16      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

17      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to bear the costs incurred by the intervener.

 Law

18      In support of its action, the applicant relies on four pleas in law, alleging, first, infringement of general principles and misuse of power; secondly, infringement of Articles 76 and 83 of Regulation No 207/2009; thirdly, infringement of Article 8(1)(b) of Regulation No 207/2009 and, fourthly, infringement of Article 75 of Regulation No 207/2009.

19      In its application, under section VI entitled ‘Inclusion of facts and arguments’, the application indicates that ‘reference is made to the facts and arguments raised in the proceedings before the Opposition Division, namely the Notice of Opposition dated 24 September 2010, [the] applicant’s submissions dated 10 June 2011 and 21 May 2012, [MIP]’s submissions dated 25 November 2011 as well as the appeal proceedings, in particular concerning the applicant’s submissions of 8 July 2013, which are herewith made an integral part of the present proceedings’.

20      However, it must be pointed out that, in accordance with settled case-law, such a general reference by the applicant to facts and arguments contained in documents that it lodged previously, in the course of the administrative procedure, must be rejected as inadmissible (see, to that effect, order of 29 November 1993 in Koelman v Commission, T‑56/92, ECR, EU:T:1993:105, paragraph 21).

 The first plea in law, alleging infringement of general principles and misuse of power

21      The applicant submits in essence that the Opposition Division limited the scope of the Community mark applied for by substituting the class headings for which the mark had initially been filed with the alphabetical list of goods of the relevant classes contained in the 9th Edition of the Nice Classification. The applicant considers that the Board of Appeal acted ultra vires, misusing powers and limiting the applicant’s rights in an arbitrary and unjustified manner. The Board of Appeal thus committed an infringement of Articles 64 and 76 of Regulation No 207/2009 and contravened the principle of the protection of legitimate expectations.

22      In that respect, the Court takes the view that, even if the applicant’s line of argument were sufficiently clear and consistent to be regarded as meeting the minimum requirements of admissibility, it would nevertheless have to be rejected as inadmissible.

23      First of all, the applicant’s line of argument is based on the erroneous premiss that the Opposition Division and the Board of Appeal limited its rights. As OHIM rightly argues, no limitation of the applicant’s rights results from the contested decision since the Opposition Division extended the protection claimed to all the goods in the alphabetical lists of the relevant classes.

24      Next, as OHIM rightly submits, the Opposition Division took the view that the applicant wished to seek protection for all the goods in the alphabetical lists of Classes 29 and 30 because the applicant did not respond to the request from OHIM to indicate whether or not its intention was to seek protection for all the goods or services in the alphabetical list for the class concerned.

25      Lastly, and in any event, as OHIM submits, the Board of Appeal dealt with and upheld the applicant’s claim that the Opposition Division was wrong in its view that the applicant’s specification included all the goods in the alphabetical lists of Classes 29 and 30. In paragraph 13 of the contested decision, the Board of Appeal indicated, in essence, that account should not be taken of all the goods in the alphabetical lists of Classes 29 and 30 but rather it was appropriate to take account of the list of goods submitted by the application set out in paragraph 1 of the contested decision.

26      In view of the foregoing considerations, the applicant cannot validly claim that the Board of Appeal did not examine its arguments or that it clearly acted ultra vires, misusing its powers and limiting the applicant’s rights in an arbitrary and unjustified manner.

27      The first plea in law must therefore be rejected.

 The second plea in law, alleging an infringement of Articles 76 and 83 of Regulation No 207/2009

28      In the first place, the applicant challenges the legality of the opposition based on the earlier mark, arguing that MIP failed to submit a colour representation of that mark. It argues that the notice of opposition forwarded to it did not contain a colour representation of the mark and that a colour representation was also not present in the online file made available to the public. According to the applicant, there is therefore a presumption that the earlier mark, on which the opposition is based, was submitted in black and white. It adds that this matter has not been clarified and that neither the Board of Appeal nor MIP has provided proof to the contrary.

29      The applicant argues that, had the Board of Appeal examined the validity of the opposition based on the earlier mark, as it was obliged to do under Article 76 of Regulation No 207/2009, it would have had to annul the decision of the Opposition Division and find the opposition inadmissible. In the applicant’s view, this would have required the Board of Appeal to take into account the other earlier opposition marks, which were all subject to the requirement as to proof of use. It argues that it was denied its right to due process as it is highly unlikely that MIP uses those earlier marks for all the goods and services applied for and that the mark applied for would thus have been registered for far more goods even if the Board of Appeal had wrongly found that the signs in issue were similar.

30      In that respect, it must be pointed out that the applicant’s argument has no basis in fact since, contrary to what it claims, the question relating to the representation of the earlier mark was resolved.

31      As OHIM submits, the Opposition Division clearly indicated, on page 2 of its decision, that the colour representation had indeed been attached to the notice of opposition sent by mail and received by OHIM on 28 September 2010. That is further confirmed by point (b) on page 8 of the Opposition Division’s decision in which it is mentioned, inter alia, that the earlier sign is composed of the word ‘real’ written in red and the word ‘quality’ written in blue.

32      Accordingly, the applicant cannot claim that there is a presumption that the representation of the earlier mark was provided in black and white and that that presumption was neither clarified, nor rebutted, by the Board of Appeal or by MIP.

33      As regards a potential infringement of the rights of defence invoked, inter alia, at the hearing, allegedly committed by the Board of Appeal, it must be pointed out, as OHIM submits, that, according to settled case-law, the rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity actually has an effect on the ability of the undertakings or individuals concerned to defend themselves. Consequently, non-compliance with rules in force whose purpose is to protect the rights of the defence can vitiate the administrative procedure only if it is shown that the procedure could have had a different outcome if the rules had been observed (see judgment of 12 May 2009 in Jurado Hermanos v OHIM (JURADO), T‑410/07, ECR, EU:T:2009:153, paragraph 32 and the case-law cited). As OHIM emphasised at the hearing, that is not the case here.

34      As regards the applicant’s argument that it was deprived of its right to due process, it suffices to point out that the Court has precluded the possibility of relying on the right to a ‘trial’ before the Boards of Appeal of OHIM, since proceedings before the Boards of Appeal are administrative and not judicial in nature. It follows that the applicant’s argument relating to an infringement of its right to due process must be rejected as clearly unfounded (see judgment of 12 December 2014 in Comptoir d’Épicure v OHIM — A-Rosa Akademie (da rosa), T‑405/13, EU:T:2014:1072, paragraph 71 and the case-law cited).

35      In the second place, the applicant essentially alleges that the Board of Appeal acted in breach of Article 76(1) of Regulation No 207/2009 by basing the contested decision on the assumption that German consumers would not understand the meaning of the words ‘hand cooked’, thereby calling into questioning the parties’ agreement on this point.

36      In that respect, it suffices to note that the argument invoked by the applicant has no basis in fact and that it must be rejected.

37      As OHIM rightly points out, it does not appear from any paragraph of the contested decision that the Board of Appeal considered that the relevant public would not understand the meaning of the words ‘hand cooked’. It merely indicated, in paragraph 17 of that decision, that the words ‘hand cooked’ were likely to be overlooked as they were even difficult to read due to their size and the dominant presence of the word ‘real’, with which the public can easily refer to the sign.

38      The applicant’s argument relating to the agreement between the parties being called into question (see paragraph 35 above) cannot be upheld.

39      It must be emphasised, first, that although the Court must rule only on the heads of claim put forward by the parties, whose role it is to define the framework of the dispute, the Court cannot be confined to solely the arguments put forward by the parties in support of their claims, or it might be forced to base its decision on erroneous legal considerations (judgment of 12 May 2010 in Beifa Group v OHIM — Schwan-Stabilo Schwanhäußer (Instrument for writing), T‑148/08, ECR, EU:T:2010:190, paragraph 130). Secondly, whilst it is apparent from Article 76(1) of Regulation No 207/2009 that, in the course of opposition proceedings, OHIM cannot examine the facts of its own motion, that does not mean however that it is required to accept that points put forward by one party and not challenged by the other party to the proceedings are established (judgment of 27 October 2005 in Éditions Albert René v OHIM — Orange (MOBILIX), T‑336/03, ECR, EU:T:2005:379, paragraph 34).

40      In the third place, it is necessary to reject the argument that the Board of Appeal invented facts which were not invoked by the parties inasmuch as neither MIP nor the applicant stated that the graphic features of their marks were rather commonplace and likely to be perceived as ornamental.

41      As MIP and OHIM submit, in essence, it must be recalled that, contrary to the reputation or distinctive character acquired due to use, the assessment of the inherent distinctive character of the signs at issue is not a question of fact, but rather a question that OHIM is required to examine, if necessary of its own motion, given that it is one of the elements of law necessary in order to ensure a correct application of Regulation No 207/2009 (see, to that effect, judgment of 1 February 2005 in SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, ECR, EU:T:2005:29, paragraphs 29 to 33).

42      In the light of the foregoing considerations, the second plea in law must be rejected.

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

43      As provided in Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

44      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally by reference to the perception which the relevant public has of the signs and of the goods or services in question, 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 designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33, and the case-law cited). Accordingly, a low degree of similarity between the goods or services designated may be offset by a high degree of similarity between the marks, and vice versa (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25).

45      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

46      The question whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks at issue must be examined in the light of those considerations.

47      In the present case, in view of the goods concerned and the fact that the earlier mark is protected in Germany, it is necessary to confirm the Board of Appeal’s finding in paragraphs 9 to 11 of the contested decision, according to which, in essence, the likelihood of confusion must be analysed from the perspective of the relevant public, which consists of the general public, that is to say the average German consumer, which, moreover, the applicant does not contest. In addition, it is necessary to endorse the comparison of the goods carried out by the Board of Appeal in paragraph 12 of the contested decision — and not disputed by the applicant — according to which the goods at issue as referred to in paragraphs 1 and 2 of the contested decision are identical or similar.

48      However, the applicant submits, in essence, that the Board of Appeal incorrectly assessed the distinctive and dominant elements of the marks at issue, the similarity of the signs and the likelihood of confusion.

 The comparison of the signs

–       The distinctive and dominant elements

49      In accordance with 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 in MATRATZEN, cited in paragraph 44 above, EU:T:2002:261, paragraph 30). 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 marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

50      For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006 in Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, ECR, EU:T:2006:157, paragraph 35, and 13 December 2007 in Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, EU:T:2007:391, paragraph 51).

51      As regards the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments in MATRATZEN, cited in paragraph 44 above, EU:T:2002:261, at paragraph 35, and of 8 February 2007 in Quelle v OHIM — Nars Cosmetics (NARS), T‑88/05, EU:T:2007:45, paragraph 57).

52      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 in OHIM v Shaker, cited in paragraph 49 above, EU:C:2007:333, paragraph 41 and the case-law cited).

53      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 in OHIM v Shaker, paragraph 49 above, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark. Moreover, the fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible (judgment in Nestlé v OHIM, cited above, EU:C:2007:539, paragraphs 43 and 44).

54      It must be recalled that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007 in Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, ECR, EU:T:2007:264, paragraph 92, and in el charcutero artesano, cited in paragraph 50 above, EU:T:2007:391, paragraph 52 and the case-law cited). Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment in el charcutero artesano, cited in paragraph 50 above, EU:T:2007:391, paragraph 53 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark.

55      In the present case, the signs at issue are the figurative signs represented in paragraphs 2 and 6 above.

56      The Board of Appeal found that the signs at issue were similar. In essence, it based its conclusion on the finding that the word element ‘real’, which is the first element of the two signs, constitutes the dominant element of the earlier mark and of the mark applied for by comparison with the word elements ‘quality’ of the earlier mark and ‘hand cooked’ of the mark applied for, the latter element being likely to be overlooked due to its size. Consequently, despite the differences introduced by the other elements, and in particular by the word element ‘quality’, inasmuch as the marks at issue shared the dominant element ‘real’, the Board of Appeal concluded that the signs at issue were similar.

57      The applicant contests the analysis carried out by the Board of Appeal. It submits, first, that the word elements ‘real’ and ‘quality’ of the earlier mark are devoid of inherent distinctive character; secondly, that, since the Board of Appeal rightly found that the relevant public would understand the meaning of those word elements, it ought to have concluded that those two elements were descriptive of the goods in question and, thirdly, that the Board of Appeal wrongly concluded that the word element ‘real’, present in the two signs, was dominant. Furthermore, it submits, in essence, that the Board of Appeal erred in concluding that the signs at issue were visually, aurally and conceptually similar based solely on the word element ‘real’ contained in both signs, ignoring the fact that a similarity of signs based on one element could be found to exist only if the other elements were negligible.

58      It must be noted at the outset that, contrary to the applicant’s submission, the Board of Appeal took into consideration both the word and figurative elements of the earlier mark and the word and figurative elements of the mark applied for in assessing the similarity of the signs, as can clearly be seen from, inter alia, paragraphs 14 to 21 and 26 of the contested decision. In particular, in paragraph 17, the Board of Appeal indicated that the word ‘real’ was a German word meaning ‘true, not fictional, realistic’ which would be understood by the relevant German public. That public would also understand the basic English word ‘quality’ of the earlier mark, all the more as the German equivalent of the word is ‘Qualität’. However, the relevant public was not likely to perceive both words as an ensemble or as an expression on its own. According to the Board of Appeal, German consumers are not used to multilingual expressions. In addition, the comma and dash as well as the different size of the words have the result that the words are perceived as independent and not linked. The word ‘quality’ has a merely laudatory character and is weakly distinctive. The other words constituting the contested sign, namely ‘hand cooked’, are likely to be overlooked since they are even difficult to read due to their size and the dominant presence of the word ‘real’ with which the public can easily refer to the sign. Furthermore, in paragraphs 19 to 21 and 26 of the contested decision, the Board of Appeal found, in essence, that the signs at issue were visually, phonetically and conceptually similar due to the identical dominant element in both signs, and considered that the other elements were not such as to render the signs dissimilar. It is therefore undisputed that the assessment of similarity carried out by the Board of Appeal was not based solely on the word element ‘real’ contained in both signs, but on the overall impression produced by those signs.

59      It must therefore be examined whether, in view of the characteristics of the elements making up the signs at issue, the Board of Appeal correctly assessed the distinctive and dominant elements.

60      As regards the distinctive character, it is necessary to reject the applicant’s argument that, in essence, since the term ‘real’ has a clear meaning, namely ‘true, not fictional, realistic’, it is devoid of inherent distinctive character with respect to the goods concerned in Classes 29 and 30. It is settled case-law that the distinctive character of a mark must always be assessed specifically by reference to the goods or services designated (see judgment of 9 September 2010 in OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, ECR, EU:C:2010:508, paragraph 35 and the case-law cited).

61      It must be noted that the applicant has not put forward any argument such as to call into question the Board of Appeal’s assessment — which the Court confirms — according to which, in essence, although the relevant public may understand the terms ‘real’ and ‘quality’ making up the earlier mark, that mark has no meaning as regards the goods in question.

62      Likewise, it is also necessary to reject the applicant’s argument that, since the Board of Appeal rightly considered that the relevant public would understand the meaning of those word elements, it ought to have concluded that they were descriptive of the goods in question.

63      As MIP submits, the fact that the term ‘real’ has a meaning for the relevant public does not necessarily lead to the conclusion that that term is descriptive of the goods in question. According to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, ECR, EU:T:2005:247, paragraphs 24 and 25 and the case-law cited).

64      In the present case, as the Board of Appeal rightly found in paragraph 24 of the contested decision, it cannot reasonably be maintained that the meaning of the terms ‘real’ and ‘quality’ may be regarded as being descriptive of the goods in question. It is therefore appropriate to confirm the Board of Appeal’s assessment that, in essence, the earlier mark is inherently distinctive in respect of the goods concerned, since that mark does not evoke the nature of those goods.

65      As regards the dominant nature of the elements making up the marks at issue, the Court takes the view that the Board of Appeal correctly applied the case-law cited in paragraphs 51 to 54 above, in finding, in essence, in paragraphs 16 and 17 of the contested decision, that the term ‘real’, which is contained in the two signs at issue, was the dominant element given that it constitutes the first element of the marks at issue, it is much larger than the other word elements and that, since the graphic features of the signs were commonplace, they would be perceived as ornamental and ancillary. Moreover, the Court confirms the assessment in paragraph 17 of the contested decision that the word element ‘hand cooked’ is likely to be overlooked must be confirmed. Not only is that word element situated below the word element ‘real’ but, as the Board of Appeal and OHIM noted, it is difficult to perceive due to its very small size.

66      In the light of all the foregoing, it must be concluded that the Board of Appeal did not err in finding, first, that the earlier mark had an inherent distinctive character, secondly, that the word element ‘real’ constituted the dominant element of those marks by comparison with the word element ‘quality’ of the earlier mark and figurative elements of the marks at issue and, thirdly, that the word element ‘hand cooked’ was negligible given its size.

67      Consequently, in view of the case-law cited in paragraph 53 above, the comparison between the signs cannot be carried out on the sole basis of the dominant element of the marks at issue, but must be carried out having regard to the marks at issue each considered as a whole, taking into account however that the word element ‘hand cooked’ is negligible given its size (see, to that effect, judgment of 6 May 2008 in Redcats v OHIM — Revert & Cía (REVERIE), T‑246/06, EU:T:2008:141, paragraphs 39). The signs at issue must be compared in the light of those considerations.

–       The visual and phonetic comparison

68      The Board of Appeal considered, in essence, that although the other word and figurative elements of the signs at issue introduced differences, those signs were of average visual similarity and of above average phonetic similarity.

69      The applicant contests that assessment by submitting, principally, that the signs are very different visually and phonetically since they differ in the word elements ‘quality’ and ‘hand cooked’ as well as the other figurative elements.

70      In that respect, it must be recalled that the earlier mark is composed of a figurative element and of two word elements. The first word element ‘real’ is written in red lower-case letters and is accompanied by a comma and a dash. The second word element ‘quality’ is placed below the first word element and, although it is written in blue upper-case letters, the font used is much smaller than that of the word element ‘real’. Those two word elements are placed on a light grey background.

71      The mark applied for is also composed of a figurative element and two word elements. The first word element ‘real’ is written in black upper-case letters within a black frame. The second word element ‘hand cooked’ is situated below the first word element in a much smaller font. All of those elements are placed on a rectangular cherry-red background.

72      It is therefore apparent that both of the marks at issue contain the word element ‘real’, which is the first and dominant element of the two signs at issue. The signs at issue are thus partly identical and are therefore likely to be perceived by the relevant public as creating an impression of visual and phonetic similarities.

73      It is true that the marks differ in their figurative elements and the element ‘quality’ situated below the word element ‘real’ of the earlier mark. However, that difference cannot, in the present case, lead to the conclusion that those signs are dissimilar.

74      The overall impression created by the marks at issue must be taken into consideration (judgment of 12 November 2009 in Spa Monopole v OHIM — De Francesco Import (SpagO), T‑438/07, ECR, EU:T:2009:434, paragraph 23). Moreover, it must be borne in mind that, when assessing the degree of similarity between the signs, account must be taken of the fact that a consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his imperfect recollection of them (see paragraph 49 above).

75      It must also be recalled that although the mark applied for contains the word element ‘hand cooked’, that element is negligible due to its size. That nearly illegible element will in no way influence the average consumer’s visual perception of that mark. In that respect, a sign which is so difficult to decipher, understand or read that the reasonably observant and circumspect consumer cannot manage to do so, without making an analysis which goes beyond what may be reasonably expected of him in a purchasing situation, may be considered to be illegible (judgment of 2 July 2008 in Stradivarius España v OHIM — Ricci (Stradivari 1715), T‑340/06, EU:T:2008:241, paragraph 34). That is the case here with respect to the word element ‘hand cooked’. The average consumer will have even greater difficulty reading it because he does not proceed to analyse the various details of the mark when making a purchase (judgment in Nestlé v OHIM, paragraph 53 above, EU:C:2007:539, paragraph 34).

76      Furthermore, it must be noted that the figurative elements of the signs at issue do not introduce a lack of visual similarity between those signs since they are ancillary to the word element ‘real’ (see paragraphs 65 and 66 above). Likewise, the word element ‘quality’, which has a secondary position in the sign and is written in a smaller font, does not result in a lack of phonetic similarity. It must be emphasised that, when speaking, the average consumer will tend to abbreviate a mark comprising a number of terms in order to make it easier to pronounce and, moreover, that the average consumer generally takes more note of the beginning of a sign than of its end (judgment of 11 November 2009 in Frag Comercio Internacional v OHIM — Tinkerbell Modas (GREEN by missako), T‑162/08, EU:T:2009:432, paragraph 44).

77      It follows that, in view of the features of the elements comprising the marks at issue, it must be concluded, as did the Board of Appeal, that there is an average visual similarity and an above-average phonetic similarity between the signs at issue considered in their entirety.

–       The conceptual comparison

78      The Board of Appeal stated, in essence, in paragraph 21 of the contested decision, that the marks were conceptually similar since they would be understood by the German consumer as referring to the concept of ‘real’.

79      The applicant disputes that assessment by submitting that the Board of Appeal should have taken account of the word element ‘hand cooked’ for the purpose of the conceptual comparison. According to the applicant, there is no conceptual similarity between the signs ‘real hand cooked’ and ‘real quality’, since each of those signs forms a whole having a distinct conceptual meaning.

80      That argument cannot be accepted. It suffices to note in that respect that the element ‘hand cooked’ is negligible due to its size, with the result that it cannot be considered that the word elements ‘real’ and ‘hand cooked’ form a meaningful whole.

81      Accordingly, the Court takes the view that the considerations of the Board of Appeal set out in paragraph 21 of the contested decision, according to which, in essence, the signs are conceptually similar because they share the dominant word element ‘real’, are not vitiated by any error and must therefore be confirmed.

82      It follows from the foregoing that, in order to assess the existence of a likelihood of confusion between the marks at issue, it is necessary to take into consideration the fact that they are of average visual and conceptual similarity, above average phonetic similarity and that the goods at issue are identical or similar.

83      It must be noted that even if the word element ‘hand cooked’ were not negligible due to its size, as the applicant submits, it is nevertheless the case that, taken as a whole, the signs at issue would in any event have to be regarded as similar, albeit to a lesser degree, in so far as those signs would still coincide as regards their first word element ‘real’.

–       The likelihood of confusion

84      The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case. That global assessment takes account of the degree of similarity between the marks and between the goods or services covered and implies some interdependence between the factors taken into account, so that a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74.

85      In paragraph 26 of the contested decision, the Board of Appeal found, in essence, that, given the overall similarity of the signs and the level of attention of the relevant public, there was a likelihood of confusion in respect of all the goods deemed identical or similar.

86      In the light of the foregoing considerations relating to the similarity of the goods at issue and of the marks at issue, that conclusion of the Board of Appeal must be confirmed.

87      Given the similarity or identity of the goods and the inherent distinctive character of the earlier mark (see paragraphs 60 to 64 above), on the one hand, and the visual, phonetic and conceptual similarities between the marks (see paragraphs 68 to 81 above), on the other, it must be concluded that the Board of Appeal did not err in considering that there was a likelihood of confusion in the present case.

88      In those circumstances, the third plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected.

 The fourth plea in law, alleging infringement of Article 75 of Regulation No 207/2009

89      In support of this plea in law, the applicant repeats a number of arguments relied on in connection with the first and second pleas, submitting, in essence, that the Opposition Division and the Board of Appeal acted ultra vires and contravened its right to due process. It suffices to note that those arguments were rejected in the context of the first and second pleas in law (see paragraphs 21 to 26 above and paragraphs 29 to 34 above).

90      In addition, the applicant submits that the contested decision is vitiated by a failure to state reasons. It argues that the Board of Appeal failed to give adequate reasons for its finding of a similarity between the signs at issue. In its view, had the Board of Appeal taken all the relevant circumstances into account it would have come to the conclusion that the signs in question are not similar. It maintains that the Board of Appeal simply ignored some elements and gave undue weight to other elements of the signs, without giving sufficient reasons. Therefore, according to the applicant, the contested decision is unfounded and does not address the fundamental issues raised by the applicant.

91      It must be pointed out, first of all, that the line of argument put forward by the applicant is somewhat ambiguous, since, although the applicant submits that the statement of reasons for the contested decision was ‘insufficient’, it puts forward allegations that, if proven, would demonstrate that that decision is vitiated by a substantive illegality. In that regard, it should be borne in mind that, according to settled case-law, the obligation to state reasons is an essential procedural requirement that must be distinguished from the question whether the reasoning is well-founded, which goes to the substantive legality of the measure at issue (judgments of 2 April 1998 in Commission v Sytraval and Brink’s France, C‑367/95 P, ECR, EU:C:1998:154, paragraph 67, and 22 March 2001 in France v Commission, C‑17/99, ECR, EU:C:2001:178, paragraph 35).

92      Moreover, it must be emphasised that, according to settled case-law, under Article 75 of Regulation No 207/2009, the decisions of OHIM must state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the competent Court to exercise its power to review the legality of the decision. The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see judgment of 12 July 2012 in Gucci v OHIM — Chang Qing Qing (GUDDY), T‑389/11, EU:T:2012:378, paragraph 16 and the case-law cited).

93      In that respect, it can be seen inter alia from paragraphs 16, 17 and 19 to 21 of the contested decision that the Board of Appeal provided a very detailed statement of reasons in order to support, in the instant case, its conclusion in relation to the similarity of the signs at issue, irrespective of the question whether that reasoning is well-founded. The line of argument put forward in the context of this plea in law concerns the latter question, which, as OHIM emphasises, falls within the scope of Article 8(1)(b) of Regulation No 207/2009. As can be seen from the assessment of the third plea in law alleging infringement of the latter provision, the Board of Appeal correctly applied that provision.

94      Lastly, the applicant submits, in essence, that even though the Board of Appeal found in the contested decision that German consumers would understand the meaning of the word element ‘quality’, it simply found that the signs are conceptually similar without taking into account the conceptual meaning of that word element, even though that element may be laudatory. The applicant argues that, in so far as the word ‘quality’ is not insignificant, the Board of Appeal was obliged to provide reasons as to why it simply disregarded the word element ‘quality’.

95      In that respect, it suffices to note that the argument invoked by the applicant cannot succeed since it is clear that the Board of Appeal duly took account of that word element, as can be seen from paragraph 21 of the contested decision. In addition, if, as the applicant submits, the Board of Appeal had not taken account of that element in its conceptual comparison, it would necessarily have had to conclude that signs were conceptually identical.

96      It follows from the foregoing that the fourth plea in law must be rejected, and the action must be dismissed in its entirety, without it being necessary to rule on the applicant’s request, made at the hearing, that the Court should remove Annex B1 to OHIM’s reply and Annexes A1 to A3 to MIP’s request for a hearing dated 22 June 2015 from the case-file, since no account was taken of those annexes in the present case.

 Costs

97      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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Ninth Chamber),

hereby:

1.      Dismisses the action;

2.      Orders Tayto Group Ltd to pay the costs.

Berardis

Czúcz

Popescu

Delivered in open court in Luxembourg on 24 February 2016.

[Signatures]