Galletas Gullon v EUIPO - Hug (GULLON DARVIDA) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-456/16 (16 November 2017)

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(EU trade mark — Opposition proceedings — Application for the EU word mark GULLON DARVIDA — Earlier international and national word marks DAR VIDA —Documents produced for the first time before the Board of Appeal — Discretion granted by Article 76(2) of Regulation (EC) No 207/2009 (now Article 95(2) of Regulation (EU) 2017/1001) — Rule 19(1) and Rule 20(1) of Regulation (EC) No 2868/95 (now Article 7(1) and Article 8(1) and (7) of Delegated Regulation (EU) 2017/1430) — Rule 50(1) of Regulation No 2868/95 — Relative ground for refusal — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) — Likelihood of confusion)

Galletas Gullón, SA, established in Aguilar de Campoo (Spain), represented by M. Escudero Pérez, lawyer,

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

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

Hug AG, established in Malters (Switzerland), represented by A. Renck, and J. Schmitt, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 June 2016 (Case R 773/2015-4), relating to opposition proceedings between Hug and Galletas Gullón,

composed of A. M. Collins, President, M. Kancheva (Rapporteur) and R. Barents, Judges,

having regard to the application lodged at the Court Registry on 16 August 2016,

having regard to the response of EUIPO lodged at the Court Registry on 16 November 2016,

having regard to the response of the intervener lodged at the Court Registry on 7 December 2016,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 2 April 2013, the applicant, Galletas Gullón, SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p 1)).

3 The goods in respect of which registration was sought are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Cookies’.

4 On 15 July 2013, the intervener, Hug AG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5 The opposition was based on earlier international trade mark No 216 649, registered on 26 January 1959 and renewed until 26 January 2019, for goods falling within Class 30 ‘Cookies and biscuits, wafers, zwiebacks’, as set out below:

6 International trade mark No 216 649 was registered in the name of ‘Hug AG Zwieback & Biscuits’ with effect in Belgium, the Czech Republic, Germany, Ireland, Greece, France, Croatia, Italy, Luxembourg, Hungary, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia and Slovakia.

7 The opposition was also based on the Danish word mark DAR VIDA No VA 1990 02544, the Finnish word mark DAR VIDA No 109 049, the Swedish word mark DAR VIDA No 19888-08616 and the UK word mark DAR VIDA No 1 360 357.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

9 Upon request by the applicant, the Opposition Division invited the intervener to furnish proof of use of its earlier marks, pursuant to Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), for the goods on which the opposition was based.

10 On 14 August 2014, the intervener provided evidence of use of its earlier trade marks within the period fixed by EUIPO.

11 On 25 February 2015, the Opposition Division rejected the opposition and ordered the intervener to pay the costs. In the first place, it found that the intervener had not established its right to the earlier international registration during the relevant period, on the ground that the intervener was not the proprietor of international trade mark No 216 649. The notice of opposition was filed in the name of ‘Hug AG’, whereas the registration extract shows ‘Hug AG Zwieback & Biscuits’ as the proprietor of that international registration. In the second place, it considered that, in accordance with Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(2) of Regulation No 2868/95 (now Article 10(2) of Delegated Regulation 2017/1430), in so far as the opposition was based on the other earlier trade marks, it had to be rejected, since the evidence submitted was not sufficient to establish genuine use of those marks in the relevant territories, namely in Denmark, Finland, Sweden and the United Kingdom, during the relevant period for the goods concerned.

12 On 17 April 2015, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

13 On 1 July 2015, the intervener lodged a statement setting out its grounds of appeal with EUIPO. It claimed, inter alia, that it had based its right to the earlier international registration during the relevant period on the fact that it and Hug AG Zweiback & Biscuits were one and the same entity and that the change of name did not affect the legal status of the company. In that regard, it provided for the first time before the Board of Appeal an extract from the Commercial Register of the Canton of Lucerne (Switzerland), dated 9 April 2015, stating that its company name was, until 5 December 1997, ‘Hug AG Zwieback & Biscuits’, and that it had subsequently become ‘Hug AG’. In addition, it provided a document certifying that on 1 April 2015 it had requested that its new company name be registered by the World Intellectual Property Office (WIPO) and that the change had been registered on 14 April 2015.

14 By decision of 13 June 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division of EUIPO, rejected the EU trade mark application and ordered the applicant to pay the costs.

15 In the first place, with regard to the earlier international registration, the Board of Appeal considered that the fact that the English-language extract from WIPO’s Romarin database produced by the intervener identified ‘Hug AG Zwieback & Biscuits’ as the proprietor of that international trade mark, whereas the notice of opposition was filed by the intervener in the name of Hug AG, did not mean that the intervener did not have the right to file a notice of opposition. The Board of Appeal took the view that the extract from the Commercial Register of the Canton of Lucerne, submitted subsequently in the context of the appeal, proved that the intervener and Hug AG Zwieback & Biscuits were the same entity. Moreover, it considered that the intervener had provided evidence showing that the change of name had been ‘corrected’ in the register. Therefore, the Board of Appeal concluded that the notice of opposition had been filed by the proprietor of the international registration, as the change of company name did not affect the legal status of the company, and, consequently, that the intervener had established its earlier right during the relevant period.

16 In the second place, with regard to the evidence of genuine use of the earlier international trade mark in the relevant territories in respect of the goods in Class 30 during the period from 6 May 2008 to 5 May 2013, the Board of Appeal held that, in the light of the documents produced by the intervener, namely, inter alia, a list of sales figures, advertisements, samples of product packaging, invoices and printouts from websites, such genuine use had been proved, at least in Germany. It took the view that, although there were some slight differences in the stylisation of the marks as regards the letter type used and the presence of a dot or a hyphen between the words ‘dar’ and ‘vida’, these were hardly noticeable and did not affect the distinctive character of the mark. In addition, the Board of Appeal concluded that it was not necessary to consider whether the evidence produced was also sufficient to demonstrate use of the earlier international mark for the other territories in which the international registration took effect, as an international registration was a body of national rights that can all individually form the basis of an opposition.

17 In the third place, with regard to the ground of opposition set out in Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal held that the relevant territory for the assessment of the likelihood of confusion was Germany and that the relevant public was the public at large. First, as regards the comparison of the goods, the Board of Appeal found that the goods that the mark applied for intended to cover were identical to the ‘cookies and biscuits’ covered by the earlier international registration. Second, as regards the comparison of the signs, the Board of Appeal concluded that, visually, the signs at issue were similar to an average degree. In addition, on the phonetic level, although there were differences at the beginning of the mark applied for, the Board of Appeal found that the fact that the syllables ‘dar’, ‘vi’ and ‘da’ were identical gave rise to an average degree of phonetic similarity. Finally, the Board of Appeal held that, on a conceptual level, the comparison of those signs was neutral, since neither the word ‘gullón’, the word ‘darvida’, nor the expression ‘dar vida’ had any meaning in German. Third, as regards the overall assessment of the likelihood of confusion, the Board of Appeal found that, taking into account the fact that the relevant goods were identical, the average level of visual and phonetic similarity of the signs at issue, the normal level of attention of the relevant public and the normal inherent distinctive character of the earlier mark, there was a likelihood of confusion.

18 The Board of Appeal found that, as the opposition was upheld on the basis of an earlier international registration with effect in Germany, there was no need to examine the other earlier marks on which the opposition was based.

– order EUIPO and the intervener to bear their own the costs and pay those of the applicant.

21 In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001) and Rule 19 of Regulation No 2868/95 (now Article 7 of Delegated Regulation 2017/1430), second, infringement of Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(2) of Regulation No 2868/95 and, third, infringement of Article 8(1)(b) of Regulation No 207/2009.

22 It follows, first, from the file in the present case that the applicant has produced for the first time before the Court extracts from its website and has supplemented the list of EU trade marks that include the word ‘vida’ and are registered, inter alia, for goods in Class 30, which was previously produced before EUIPO, derived from the trade mark Fuente de Vida on page 79 of Annex 10 to the application.

23 Second, the intervener has provided to the Court, for the first time, an extract from WIPO’s Romarin database in respect of trade mark No 216 649 DAR VIDA, which reflects its change of name.

24 Since the documents referred to in paragraphs 22 and 23 above, which were annexed by the applicant and the intervener to their respective written submissions, were not assessed by the Board of Appeal, they cannot be taken into account by the Court, on account of them being produced for the first time before it. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001). It is not the Court’s function to review the facts in the light of documents produced for the first time before it. It is therefore necessary to disregard the documents referred to above as inadmissible, without having to consider their evidential value (see, to that effect, judgments of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19, and of 14 May 2013, Masottina v OHIM — Bodegas Cooperativas de Alicante (CA' MARINA), T‑393/11, not published, EU:T:2013:241, paragraph12).

The first plea, alleging infringement of Article 76 of Regulation No 207/2009 and Rule 19 of Regulation No 2868/95

25 The applicant criticises the Board of Appeal, first, for finding that the intervener and Hug AG Zwieback & Biscuits were the same legal entity and that the change in name had no effect on its legal status and, second, for admitting the annexes presented for the first time before it. It is the applicant’s submission that the intervener has neither indicated nor explained the relationship between itself and Hug AG Zwieback & Biscuits, nor otherwise provided evidence of its entitlement to earlier international registration No 216 649. Thus, the applicant disputes, in essence, the Board of Appeal’s assessment of the evidence presented for the first time before it, as well as the very principle of its admission.

27 It must be recalled, at the outset, that the following evidence was adduced for the first time before the Board of Appeal:

– an extract from the Commercial Register of the Canton of Lucerne (Switzerland) dated 9 April 2015;

– an extract from the register of Swiss trade mark No 2P-328782 DAR VIDA, the basic trade mark for international registration No 216 649;

– a request for registration of a change of business name for the international trade mark dated 1 April 2015, as well as the acknowledgement of receipt in respect of that request;

– a letter of 15 June 2016 showing the registration of the change of name dated 14 April 2015 and giving notice of the future publication of the change of name in WIPO Gazette of International Marks No 24/2015.

28 It is appropriate to consider, in the first place, the ground for complaint alleging erroneous admission of evidence produced for the first time before the Board of Appeal and, in the second place, the ground for complaint alleging incorrect assessment of that evidence by the Board of Appeal.

29 Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001) provides that, during proceedings, EUIPO is to examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.

30 Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation No 2017/1001) provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

31 According to settled case-law, it is clear from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42; of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 22; and of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 77), that is to say, after the time limit set by the Opposition Division and, as the case may be, for the first time before the Board of Appeal (judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 44).

32 In stating that EUIPO ‘may’ decide to disregard facts and evidence produced or submitted out of time, Article 76(2) of Regulation No 207/2009 grants EUIPO a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43; of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 23; and of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 78).

33 Considerations relating to legal certainty and sound administration weigh in favour of EUIPO’s having discretion to take into account facts and evidence submitted out of time by the parties. That discretion is, at least in respect of opposition proceedings, likely to contribute to ensuring that marks whose use could later successfully be challenged by means of annulment or infringement proceedings are not registered (judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 46; see also, to that effect, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 48).

34 Rule 19(1) of Regulation No 2868/95 (now Article 7(1) of Delegated Regulation 2017/1430), provides that ‘[EUIPO] shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3) [of that regulation], within a time limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1) [of that regulation]’.

35 Rule 19(2) of Regulation No 2868/95 (now Article 7(2) of Delegated Regulation 2017/1430) provides that, within the period referred to in paragraph 1 of that article, the opposing party is also to file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition and that, in particular, the opposing party is to provide the following evidence: if the opposition is based on a trade mark which is not an EU trade mark, evidence of its filing or registration, by submitting, if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered.

36 Rule 20(1) of Regulation No 2868/95 (now Article 8(1) and (7) of Delegated Regulation 2017/1430) provides that if, until expiry of the period referred to in Rule 19(1) of that regulation, the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition is to be rejected as unfounded.

37 The third paragraph of Rule 50(1) of Regulation No 2868/95 provides that, where the appeal is directed against a decision of an Opposition Division, the Board is to limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division in accordance with the regulation and those rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 76(2) of Regulation No 207/2009.

38 It follows from the case-law of the Court of Justice that the Board of Appeal cannot rely on Rule 20(1) of Regulation No 2868/95 so as not to make use of the discretion granted to it by Article 76(2) of Regulation No 207/2009 for the purposes of taking into account facts and evidence that have been produced out of time (see, to that effect, judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 33).

39 However, it is necessary to distinguish between evidence that is ‘new’ and evidence that is ‘additional’. The Court of Justice has held that Rule 50 of Regulation No 2868/95 cannot be interpreted as extending the discretion of the Boards of Appeal to new evidence (judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 27).

40 In accordance with the provisions and the case-law referred to in paragraphs 29 to 39 above, the Board of Appeal has discretion to admit additional evidence presented for the first time before it.

41 In the present case, the intervener produced before the Opposition Division the extract from WIPO’s Romarin database of the registration of international trade mark No 216 649 DAR VIDA in order to provide evidence of the existence, validity and protection of the earlier trade mark, as well as proving its entitlement to file the opposition, as provided for in Rule 19(2)(a)(ii) of Regulation No 2868/95.

42 Because of the intervener’s change of name on 5 December 1997, consisting in the deletion of the words ‘Zwieback & Biscuits’, there was some doubt as to whether or not the intervener was entitled to file a notice of opposition, given that the extract from WIPO’s register referred to ‘Hug AG Zwieback & Biscuits’ as the proprietor of the aforementioned international registration, but the notice of opposition was filed by the intervener in the name of Hug AG. The intervener therefore sought to adduce before the Board of Appeal additional evidence of its entitlement to file a notice of opposition by producing an extract from the Commercial Register of the Canton of Lucerne, an extract of the registration of Swiss trade mark No 2P-328782 DAR VIDA, the basic trade mark for the aforementioned international registration, a request for registration of a change of business name for the international trade mark dated 1 April 2015 and a letter of 15 June 2016 showing the registration of a change of name dated 14 April 2015 and giving notice of the future publication of the change of name in the WIPO Gazette of International Marks No 24/2015.

43 Thus, the evidence produced by the intervener for the first time before the Board of Appeal constitutes additional evidence within the meaning of Rule 50(1) of Regulation No 2868/95 that sought to allay any doubt as to its entitlement to file a notice of opposition. In accordance with the case-law referred to in paragraphs 31 to 33, 38 and 39 above, the Board of Appeal therefore had discretion to decide whether or not it was necessary to take into account the additional evidence produced for the first time before it.

44 Consequently, the applicant is wrong to submit that the Board of Appeal did not have such discretion in the present case.

45 Second, it is appropriate to ascertain whether in the present case the Board of Appeal correctly exercised the discretion conferred on it.

46 In accordance with settled case-law, the Board of Appeal must justify its decision to take into account evidence produced for the first time before it where it considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 44; see also judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 62 and the case-law cited).

47 In addition, even if it may be concluded that EUIPO did exercise its discretion, in one way or another, it must be borne in mind that, according to case-law, where EUIPO exercises its discretion to decide whether or not to take into account a document that has been submitted out of time, it must give reasons for its decision on the matter (see judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 59 and the case-law cited).

48 As has been observed by the General Court and the Court of Justice, any taking into account by EUIPO of such additional evidence is in no way a ‘favour’ granted to one party or the other, but rather must result from an objective, reasoned exercise of the discretion conferred on EUIPO by Article 76(2) of Regulation No 207/2009. The statement of reasons thus required is all the more necessary when EUIPO decides to reject the evidence submitted out of time (see judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 60 and the case-law cited).

49 In the present case, the Board of Appeal found in paragraph 15 of the contested decision that the fact that the extract from WIPO’s Romarin database referred to ‘Hug AG Zwieback & Biscuits’ as the proprietor of the trade mark, whereas the notice of opposition had been filed by the intervener, did not mean that the intervener did not have the right to file the notice of opposition in the name of Hug AG. In addition, it referred to the fact that the change of name had since been ‘corrected’ in the register.

50 The intervener requested that WIPO register its new company name on 1 April 2015. That change of name was registered on 14 April 2015.

51 Thus, there is no difficulty in finding that, after the Board of Appeal’s decision of 25 February 2015, the intervener remedied the discrepancy between the name of the proprietor of the earlier trade mark included in the extract from WIPO’s Romarin database that had been produced and its current name.

52 With regard to the reasons given by the Board of Appeal, the circumstances of the case and the fact that the Board of Appeal indicated that the change of name had ‘meanwhile been corrected’ in WIPO’s register are sufficient to allow the parties to know the reasons why the Board of Appeal came to its decision and provide the competent Court with sufficient material for it to exercise its power of review (see, to that effect, judgment of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55).

53 In addition, the Court notes that the grounds set out in paragraph 15 of the contested decision establish that the Board of Appeal effectively exercised the discretion conferred on it by Article 76(2) of Regulation No 207/2009 and stated sufficient reasons for its exercise, in order to decide, bearing in mind all relevant facts, whether or not to take into account the additional evidence submitted to it out of time in making the decision it was required to give (see, to that effect, order of 21 April 2015, Real Express v OHIM — MIP Metro (real), T‑580/13, not published, EU:T:2015:245, paragraph 45 and the case-law cited).

54 Consequently, the Board of Appeal correctly exercised the discretion conferred on it by Article 76(2) of Regulation No 207/2009.

55 In the second place, with regard to the ground for complaint alleging erroneous assessment of the evidence produced for the first time before the Board of Appeal, the applicant submits that the Board of Appeal failed correctly to apply Part C, Section 1, of EUIPO’s Guidelines for Examination, which provide that ‘if the opponent is a corporation, the name of the corporation must be carefully compared with the name of the corporation that owns the prior trade mark’, ‘for instance with British companies, John Smith Ltd, John Smith PLC and John Smith (UK) Ltd are different legal entities’, and ‘if the opposition is filed with B as opponent and a copy of the registration certificate shows A as owner of the earlier mark, the opposition will be rejected as not substantiated, unless the opponent has provided evidence of the transfer and, if already available, the registration of the transfer in the relevant register or the opponent has shown that A and B are the same legal entity, which has merely changed its name’. It is the applicant’s submission that the Board of Appeal relied on assumptions drawn from the similarity of the names.

56 It is apparent from case-law that, although they lack binding force, EUIPO’s guidelines are a reference source concerning EUIPO’s practice in respect of trade marks (judgment of 18 September 2015, Federación Nacional de Cafeteros de Colombia v OHIM — Hautrive (COLOMBIANO HOUSE), T‑387/13, not published, EU:T:2015:647, paragraph 45).

57 The guidelines relating to proceedings before EUIPO, published on its website, are a consolidated set of rules setting out the line of conduct which EUIPO itself proposes to adopt, with the result that, provided that those rules are consistent with legal provisions of higher authority, they constitute a self-imposed restriction on EUIPO, namely that of compliance with the rules which it has itself established (see judgment of 18 September 2015, (COLOMBIANO HOUSE), T‑387/13, not published, EU:T:2015:647, paragraph 46 and the case-law cited).

58 The evidence submitted to the Board of Appeal shows that the change of name involved no change in the legal form, in that the acronym ‘AG’, which stands for ‘Aktiengesellschaft’ (share company) in Swiss and German law, remains unchanged. In addition, WIPO confirmed, in a letter of 15 June 2015, that it had registered the change of name and notified the intervener of the future publication of the change of name in WIPO Gazette of International Marks No 24/2015. Consequently, the Board of Appeal correctly applied Part C, Section 1, of EUIPO’s Guidelines for Examination.

59 Thus, as the Board of Appeal rightly found, it is clear and unambiguous that this is a simple matter of a change of name that involves no change of ownership and that the intervener is the proprietor of the international registration No 216 649 DAR VIDA.

60 Consequently, the ground of complaint alleging incorrect assessment by the Board of Appeal of the evidence presented before it must be rejected, as must the first plea in law.

The second plea, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(2) of Regulation No 2868/95

61 The applicant submits that none of the documents presented by the intervener provides information on the extent of use of the earlier international trade mark and the other earlier trade marks in the relevant territories for the goods in Class 30 during the period from 6 May 2008 to 5 May 2013. It is the applicant’s submission that the indirect evidence produced, which concerns only blogs and a product catalogue, is insufficient for the purpose of determining whether or not the goods were actually distributed during the relevant period and, if so, the quantities, frequency or geographical extent involved. In addition, the applicant states that the intervener has not presented any evidence showing actual sales figures for goods sold under its mark in the relevant territories. In that regard, the applicant is of the opinion that it is appropriate to take into account only the four earlier national marks, since the intervener has failed to justify its claim that it was entitled to the earlier international registration during the relevant period.

63 As a preliminary point, it should be noted that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure, the application must include a brief statement of the grounds relied on. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any other supporting information (judgments of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 26; of 3 December 2014, Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, not published, EU:T:2014:1020, paragraphs 17 and 18; and of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT VODKA), T‑450/13, not published, EU:T:2015:841, paragraph 17).

64 The Court is thus obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which that head of claim is based are not indicated coherently and intelligibly in the application itself (judgment of 18 July 2006, Rossi v OHIM, C‑214/05 P, EU:C:2006:494, paragraph 37, and of 12 November 2015, WISENT VODKA, T‑450/13, not published, EU:T:2015:841, paragraph 18).

65 In order to guarantee legal certainty and the sound administration of justice it is therefore necessary, in order for an action to be admissible, that the essential matters of fact and law relied on are stated, at least in summary form, coherently and intelligibly in the application itself. Similar requirements are called for where a submission is made in support of a plea in law (judgments of 3 December 2014, M & Co., T‑272/13, not published, EU:T:2014:1020, paragraph 19, and of 12 November 2015, WISENT VODKA, T‑450/13, not published, EU:T:2015:841, paragraph 19).

66 In the present case, the applicant claims infringement of Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(2) of Regulation No 2868/95. It submits that the intervener has failed to provide evidence of genuine use of the four earlier national marks on the basis of the evidence provided during the administrative procedure but that it is appropriate to take into account only those earlier national trade marks, since the intervener failed to establish its right to the earlier international registration during the relevant period.

67 In that regard, it must be held that, contrary to what the intervener claims, the essential matters of law and of fact on which the applicant relies, such as judgments of the Court of Justice and the General Court or evidence provided during the administrative procedure, are stated coherently and intelligibly in the text of the application itself. Consequently, EUIPO has been able to prepare its defence and the Court is in a position to rule on the substance of that plea.

69 In addition, as EUIPO claims, the Board of Appeal held that the intervener had succeeded in establishing genuine use of the earlier trade mark in Germany. In examining whether there had been genuine use of the earlier marks, the Board of Appeal was entitled to take into account the earlier international registration that took effect in Germany.

70 It should be noted that the applicant merely maintains that the intervener had not justified its claim that it was entitled to the earlier international registration during the relevant period and reproduces, in essence, the decision of the Opposition Division rejecting the opposition on the basis that there had been no genuine use of earlier national trade marks.

71 The Board of Appeal was entitled to take into account the earlier international registration. Consequently, on the basis of the finding by the Board of Appeal of genuine use of the aforementioned registration in Germany, the Board of Appeal was entitled not to examine whether there had been genuine use of the other earlier marks.

72 Furthermore, as EUIPO states, by merely claiming that it was required to prove genuine use only in respect of the earlier national marks, the intervener does not contest the Board of Appeal’s assessment of the evidence of genuine use of the earlier international trade mark in Germany.

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

74 The applicant submits, in the first place, that Gullon is a well-known trade mark. In the second place, it asserts that, as regards the comparison of the marks at issue, the main word in the mark applied for is ‘gullon’, which is different from the words comprising the earlier mark DAR VIDA. In addition, it claims that the Spanish expression ‘dar vida’, meaning ‘giving life’, is a common expression and, consequently, the words comprising that expression must be considered to have rather limited distinctive character. Further, the applicant maintains that the mark applied for will be perceived as a new mark of the Gullon family of trade marks. Lastly, it is the applicant’s submission that the consumer’s attention is usually drawn initially to the first element of the mark. In the third place, with regard to the comparison of the goods, the applicant considers that the goods are similar. In the fourth place, it is of the opinion that, with regard to the common element ‘vida’, the intervener cannot monopolise that word, given that it is used frequently to refer to dietary biscuits, wholegrain bread and dietary pastries. Moreover, the applicant asserts that it is the proprietor of two other trade marks containing that Spanish expression. In the fifth place, regarding the likelihood of confusion, the applicant is of the opinion that the Board of Appeal misapplied the law, since the signs at issue are both phonetically and visually different, and it is irrelevant that the signs have some letters in common, given the presence of the word ‘gullon’, the most significant element of the mark applied for. Thus, the applicant submits that there are sufficient differences between the signs to lead to a different overall impression and the consumer will not assume that the goods covered by the mark applied for have the same origin as those designated by the earlier marks.

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

77 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, in order for registration of an EU trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see judgment of 5 May 2015, Skype v OHIM — Sky and Sky IP International (SKYPE), T‑183/13, not published, EU:T:2015:259, paragraph 18 and the case-law cited).

78 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 17 and the case-law cited).

79 Further, that global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services covered. Accordingly, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa. Consequently, it is necessary to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19).

80 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 the likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited, and of 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 28 and the case-law cited).

81 In addition, the Court was able to find that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (see, by analogy, judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 37).

82 However, even in the circumstances set out in paragraph 81 above, it is necessary to determine, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 34).

83 With regard to the relevant public, the applicant submits, in its second plea, that the territories to be taken into account are those of the four earlier trade marks, namely Denmark, Finland, Sweden and the United Kingdom. Further, by stating that consumers will understand the Spanish expression ‘dar vida’ as it is a common expression, the applicant appears to consider that Spain is also part of the relevant territory.

84 As established in paragraphs 27 to 60 above, the Board of Appeal was entitled to find that the intervener had established its right to the earlier international trade mark during the relevant period and that, consequently, that earlier mark took effect, in particular, in Germany, the country in which the Board of Appeal found that the applicant had established the genuine use of that earlier trade mark for five years. Consequently, the Board of Appeal did not err when it found, in paragraph 24 of the contested decision, that the relevant territory for the analysis of the likelihood of confusion was Germany.

85 In accordance with the case-law referred to in paragraph 77 above, the existence of a likelihood of confusion between the trade marks at issue in Germany would be a sufficient ground for rejecting the applications for registration of the contested sign without it being necessary to assess whether such a likelihood of confusion also exists in the rest of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 83).

86 With regard to the relevant public, the applicant does not contest the Board of Appeal’s assessment in paragraph 24 of the contested decision that the relevant public is the public at large, that is to say, the average consumer who is reasonably well informed and reasonably observant and circumspect. There is no reason to call into question that assessment.

87 In paragraph 25 of the contested decision, the Board of Appeal found that the goods referred to by the mark applied for and those covered by the earlier international registration were identical. That finding must be endorsed and is not disputed by the parties.

88 Before starting to analyse the potential existence of a likelihood of confusion, in accordance with the case-law set out in paragraphs 78 to 82 above, it is necessary to reject at the outset the applicant’s argument that the intervener cannot monopolise the word ‘vida’ because it is commonly used to refer to dietary products. In support of that argument, the applicant has produced a list of EU trade marks including that word, which have been registered, inter alia, for goods in Class 30. It follows from case-law that the fact that there is a need for a sign to be available for economic operators cannot be one of the relevant factors to be taken into account in the assessment of whether there is a likelihood of confusion. The answer to the question as to whether there is a likelihood of confusion must be based on the perception by the public of the goods covered by the mark of the proprietor on the one hand and the goods covered by the sign used by the third party on the other (see, by analogy, judgment of 10 April 2008, adidas and adidas Benelux, C‑102/07, EU:C:2008:217, paragraph 30).

89 On a visual level, the Board of Appeal found, in paragraph 30 of the contested decision, that the signs at issue were visually similar to an average degree because of the considerable similarity between the word elements ‘dar vida’ and ‘darvida’.

90 In the first place, the applicant asserts that the expression ‘dar vida’ has limited distinctive character, since consumers will perfectly understand the usual meaning of that expression, namely, ‘giving life’.

91 In that regard, it is appropriate to note that the relevant territory is Germany. According to Article 8(1)(b) of Regulation No 207/2009, it is in the eyes of the public of the territory in which the earlier mark is protected that the likelihood of confusion must be assessed. The sign DARVIDA is not protected in Spain and the conclusion that the expression ‘dar vida’ is a commonly used expression can only apply to Spanish-speaking consumers. The same cannot be said for German-speaking consumers, given that that expression has no meaning in German.

92 In addition, as EUIPO submits, the applicant does not contest the Board of Appeal’s conclusion that the word ‘darvida’ has no meaning in German and has adduced no proof that that expression has limited distinctive character in the relevant territory, namely Germany.

93 Consequently, the Board of Appeal was entitled to find that, much like the expression ‘dar vida’, the word ‘darvida’ has no meaning for the German consumer.

94 In the second place, the applicant submits that the trade mark Gullon is well known. In support of that argument, the applicant produced a list of the marks that it has registered containing the word ‘gullon’, as well as a news article about the applicant’s investments taken from the website of a Spanish daily newspaper, a news article about the growth of the applicant taken from the website of another Spanish daily newspaper and extracts from the applicant’s website. According to settled case-law, it is the recognition by the relevant public of the earlier mark and not that of the mark applied for that must be taken into account when determining whether there is a likelihood of confusion between the two marks (see judgment of 5 May 2015, SKYPE, T‑183/13, not published, EU:T:2015:259, paragraph 50 and the case-law cited). Therefore, that argument must be rejected.

95 In the third place, it is the applicant’s submission that, since the consumer’s attention is usually drawn initially to the first element of the trade mark, the consumer will pay more attention to the word ‘gullon’ than to the word ‘darvida’.

96 First, it is to be noted that the presence in each of the marks of several letters in the same order may be of some importance in the assessment of the visual similarity between the signs at issue (see judgment of 20 October 2016, Clover Canyon v EUIPO — Kaipa Sportswear (CLOVER CANYON), T‑693/15, not published, EU:T:2016:620, paragraph 29 and the case-law cited).

97 Second, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two marks are similar (see judgment of 20 October 2016, CLOVER CANYON, T‑693/15, not published, EU:T:2016:620, paragraph 30 and the case-law cited).

98 Furthermore, while it has previously been held, as the Board of Appeal also notes in paragraph 30 of the contested decision, that the consumer normally attaches more importance to the first part of a word mark than the subsequent parts, it has also been held that that consideration does not hold true in all cases (see judgment of 20 October 2016, CLOVER CANYON, T‑693/15, not published, EU:T:2016:620, paragraph 31 and the case-law cited).

99 Lastly, it should be pointed out that the validity of the argument that the beginning of the mark applied for is the part that particularly attracts the consumer’s attention cannot be assessed independently of the facts of the case, in particular the specific characteristics of the signs at issue (see, to that effect, judgment of 13 April 2011, United States Polo Association v OHIM — Textiles CMG (U.S. POLO ASSN.), T‑228/09, not published, EU:T:2011:170, paragraph 37).

100 In any event, the fact that the first element of the mark applied for is the element that distinguishes it from the earlier mark cannot call in question the application of the principle that the assessment of the similarity of signs must take account of the overall impression created by them (judgment of 20 October 2016, CLOVER CANYON, T‑693/15, not published, EU:T:2016:620, paragraph 32 and the case-law cited). Contrary to the applicant’s claims, the fact that the signs at issue differ because of the word ‘gullon’, which is the first element of the mark applied for, is insufficient to counteract the visual similarity produced by the seven-letter word ‘darvida’, which comprises the second element of the mark applied for and the earlier mark in its entirety (see, to that effect, judgment of 20 October 2016, CLOVER CANYON, T‑693/15, not published, EU:T:2016:620, paragraph 32 and the case-law cited).

101 The Board of Appeal was, therefore, fully entitled to find that the signs at issue had an average degree of visual similarity.

102 In the light of the case-law set out in paragraphs 97 to 100 above, it is necessary to endorse the Board of Appeal’s conclusion that the signs at issue have an average degree of phonetic similarity, since the three syllables ‘dar’, ‘vi’ and ‘da’ are identical, despite the fact that the word ‘gullon’ appears at the beginning of the mark applied for.

103 In paragraph 32 of the contested decision, the Board of Appeal stated that, since neither the word ‘gullon’ nor the word ‘darvida’ had any meaning in German, the conceptual comparison of the signs is neutral. That finding, which is not, in any case, contested by the parties, cannot be called into question.

104 In paragraphs 36 to 39 of the contested decision, the Board of Appeal found that, taking into account the identity of the relevant goods, the average level of visual and phonetic similarity of the signs at issue, the normal level of attention of the relevant public and the normal degree of inherent distinctiveness of the earlier mark, there was a likelihood of confusion. In addition, the Board of Appeal upheld the opposition without examining the earlier national trade marks, since the likelihood of confusion had been established between the mark applied for and the earlier international registration.

105 The applicant asserts that the signs at issue are different both visually and phonetically and that the word ‘gullon’ is the most significant element.

107 First, it must be conceded that there is no sufficiently direct and specific link between the goods referred to by the mark applied for and those covered by the earlier international trade mark, namely, biscuits, and the Spanish word ‘darvida’, which means ‘giving life’.

108 Further, as stated in paragraph 91 above, the Spanish expression ‘dar vida’ has no meaning for the public at large in Germany.

109 Consequently, the Board of Appeal was entitled to find that the earlier trade mark has a normal degree of intrinsic distinctiveness for the relevant public.

110 Furthermore, it should be added, as noted in paragraphs 101, 102 and 109 above, that the signs have an average degree of visual and phonetic similarity, the level of attention of the relevant public is normal and the earlier mark has a normal degree of distinctiveness.

111 It should be noted that the goods covered by the earlier international trade mark and those that are the subject of the mark applied for are identical. There may be a likelihood of confusion, despite a low degree of similarity between the marks, where the similarity of the goods or services covered by the marks is considerable (judgment of 10 May 2011, Emram v OHIM — Guccio Gucci (G), T‑187/10, not published, EU:T:2011:202, paragraph 73). In the present case, as has already been stated, the goods designated by the mark applied for and those covered by the earlier marks are identical. That identity is a factor that increases the likelihood of confusion between the signs at issue, in spite of the fact that the signs at issue have an average degree of visual and phonetic similarity, the level of attention of the relevant public is normal and the earlier trade mark has a normal degree of distinctiveness.

112 Taking into account the factors listed in paragraph 104 above, the Board of Appeal was entitled to find that there was a likelihood of confusion between the marks at issue, in that there was a likelihood that the public may believe that the goods at issue come from the same undertaking.

113 In the light of the foregoing, it is necessary to reject the third plea and, therefore, to dismiss the action in its entirety.

114 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.

115 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

2. Orders Galletas Gullón, SA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Hug AG.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Galletas Gullon v EUIPO - Hug (GULLON DARVIDA) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-456/16 (16 November 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T45616.html Cite as: EU:T:2017:811, [2017] EUECJ T-456/16, ECLI:EU:T:2017:811

Court of Justice of the European Communities (including Court of First Instance Decisions)