Societe des produits Nestle v EUIPO - Amiguitos pets & life (THE ONLY ONE by alphaspirit wild and perfect) (EU trade mark - Judgment) [2024] EUECJ T-359/23 (06 November 2024)

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( EU trade mark - Opposition proceedings - Application for the EU figurative mark THE ONLY ONE by alphaspirit wild and perfect - Earlier EU word mark ONE - Relative grounds for refusal - Article 8(1)(b) and (5) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and (5) of Regulation (EU) 2017/1001) - Decision taken following the annulment of an earlier decision by the General Court - Article 72(6) of Regulation 2017/1001 - Res judicata - Obligation to state reasons - Article 94(1) of Regulation 2017/1001 )

Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz and C. Elkemann, lawyers,

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

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

Amigüitos pets & life, SA, established in Lorca (Spain), represented by N. Fernández Fernández-Pacheco, lawyer,

composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and U. Öberg, Judges,

1 By its action under Article 263 TFEU, the applicant, Société des produits Nestlé SA, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 March 2023 (Case R 424/2020-2) (‘the contested decision’), relating to opposition proceedings between the applicant and the intervener, Amigüitos pets & life, SA.

2 On 28 April 2016, the intervener filed an application for registration of an EU trade mark with 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 Registration as a mark was sought, claiming the colours white, red and black, for the following figurative sign:

4 The goods in respect of which registration was sought are in Classes 5 and 31 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 5: ‘Dietary, protein and vitamin supplements for animals, in particular for dogs; feeding stimulants for animals, including food coatings for giving medicines; trace elements (preparations of -) for human and animal use; protein supplements for animals, dietary, dietetic and protein supplements, antibiotics for animals; medicated supplements for foodstuffs for animals; medicated additives for animal foods; animal washes; antiparasitic collars for animals; attractants for pet animals; animal dips [preparations]; animal flea collars; animal sperm; animal semen for animal insemination; animal repellent formulations; medicines for veterinary purposes; absorbent diapers of cellulose for pets; powders for killing fleas on animals; pharmaceutical preparations for animal skincare; pharmaceutical preparations for animals, animal washes, disposable housebreaking pads for pets; skin treatment [medicated] for animals; foot rot vaccines; vitamins for animals; animal washes and lotions; parasiticides; antiparasitic preparations; antiparasitic collars for animals; bacterial and bacteriological preparations for veterinary use; enzyme preparations for veterinary purposes; amino acids for veterinary purposes, greases for veterinary purposes, medicines for veterinary purposes, cement for animal hooves, pharmaceuticals and veterinary preparations; hygiene products for medical purposes’;

– Class 31: ‘Foodstuffs for animals, foodstuffs for dogs; foodstuffs containing liver, chicken, lamb, beef or veal, fish, or pork, for dogs; foodstuffs in the form of cubes, rings and sticks for dogs; canned foodstuffs for dogs; cheese flavoured foodstuffs for dogs; food for racing dogs; beverages for canines; dog treats [edible]; foodstuffs for dogs; dog biscuits; bones for dogs; digestible chewing bones for dogs; milk for use as foodstuffs for dogs; litter for dogs; foodstuffs for dogs; food preparations for dogs; edible chewing products for dogs; live animals; seeds, natural plants and flowers; agricultural, horticultural and forestry products and grains not included in other classes; mash for fattening domestic animals; strengthening animal forage; edible chews for animals; bird food; dog biscuits; proteins for foodstuffs for animals; aromatic sand for pets; beverages for pet animals; products for animal beds; treats for animals’.

5 The application for registration was published in European Union Trade Marks Bulletin No 2016/117 of 27 June 2016.

6 On 21 September 2016, the applicant filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 4 above.

7 The opposition was based on the earlier EU word mark ONE, which was filed on 23 December 2013 and registered on 6 May 2014 under number 012460275, covering goods in Class 31 and corresponding to the following description: ‘Foodstuffs for animals’.

8 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

9 On 7 December 2017, the Opposition Division found that the mark applied for was likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark ONE and, consequently, upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001 in respect of most of the goods in Classes 5 and 31. In contrast, the Opposition Division rejected the opposition on the basis of Article 8(1)(b) and (5) of that regulation in respect of ‘trace elements (preparations of -) for human … use’ in Class 5 and ‘flowers’ in Class 31.

10 On 7 February 2018, the intervener filed a notice of appeal, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

11 By decision of 19 November 2018, the Fourth Board of Appeal of EUIPO dismissed the intervener’s appeal against the Opposition Division’s decision. More specifically, it upheld the applicant’s opposition, first, on the grounds set out in Article 8(1)(b) of Regulation 2017/1001, in respect of the goods which were identical or similar to at least an average degree, and, secondly, on the grounds set out in Article 8(5) of Regulation 2017/1001, in respect of the goods which were similar to a low degree and the goods which were dissimilar.

12 By application lodged at the Registry of the General Court on 21 January 2019, the intervener brought an action seeking the annulment of the Fourth Board of Appeal’s decision of 19 November 2018 on the grounds of infringement of Article 8(1)(b) and (5) of Regulation No 207/2009.

13 By judgment of 19 December 2019, Amigüitos pets & life v EUIPO – Société des produits Nestlé (THE ONLY ONE by alphaspirit wild and perfect) (T‑40/19, not published, EU:T:2019:890), the General Court upheld the two pleas put forward by the intervener and annulled the decision of the Fourth Board of Appeal of 19 November 2018.

14 By order of 4 June 2020, Société des produits Nestlé v Amigüitos pets & life and EUIPO (C‑97/20 P, not published, EU:C:2020:442), the Court of Justice refused to allow the applicant’s appeal to proceed.

15 Following the order of 4 June 2020, Société des produits Nestlé v Amigüitos pets & life and EUIPO (C‑97/20 P, not published, EU:C:2020:442), the case was remitted, by decision of the Presidium of the Boards of Appeal of 19 February 2020, to the Fifth Board of Appeal, under reference number R 424/2020-5, for a new decision.

16 By decision of the Fifth Board of Appeal of 29 July 2020, the intervener’s appeal was upheld and the applicant’s opposition was rejected in its entirety.

17 By application lodged at the Court Registry on 5 October 2020, the applicant brought an action seeking the annulment of the Fifth Board of Appeal’s decision of 29 July 2020.

18 By judgment of 17 November 2021, Société des produits Nestlé v EUIPO – Amigüitos pets & life (THE ONLY ONE by alphaspirit wild and perfect) (T‑616/20, not published, EU:T:2021:794), the General Court upheld the applicant’s action and annulled the decision of the Fifth Board of Appeal of 29 July 2020.

19 Following the judgment of 17 November 2021, THE ONLY ONE by alphaspirit wild and perfect (T‑616/20, not published, EU:T:2021:794), the case was remitted to the Second Board of Appeal, under reference number R 424/2020-2, for a new decision on the case.

20 By the contested decision, the Second Board of Appeal upheld the intervener’s appeal and rejected the applicant’s opposition in its entirety.

– order the applicant to pay the costs incurred by EUIPO in the event that an oral hearing is convened.

24 Given the date on which the application for registration at issue was filed, namely 28 April 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

25 Consequently, in the present case, in so far as concerns the substantive rules, the references made by the Second Board of Appeal in the contested decision and by the parties in their pleadings to Article 8(1)(b) and (5) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and (5) of Regulation No 207/2009, as amended, the wording of which is identical.

26 By contrast, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.

27 In support of its action, the applicant relies on four pleas in law, alleging (i) infringement of Article 94(1) of Regulation 2017/1001; (ii) infringement of Article 8(5) of Regulation No 207/2009; (iii) infringement of Article 8(1)(b) of that regulation; and (iv) infringement of Article 72(6) and Article 94(1) of Regulation 2017/1001.

The first plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001

28 By its first plea in law, which is divided into two parts, the applicant alleges that the Board of Appeal infringed Article 94(1) of Regulation 2017/1001. More specifically, first, the Board of Appeal based the contested decision on reasons or evidence on which it had not had an opportunity to present its comments, which is contrary to the second sentence of Article 94(1) of Regulation 2017/1001 and may be regarded as a breach of its right to be heard. Secondly, the Board of Appeal failed to provide an adequate statement of reasons for the contested decision, which is contrary to the first sentence of Article 94(1) of Regulation 2017/1001.

The first part of the first plea, alleging infringement of the second sentence of Article 94(1) of Regulation 2017/1001

29 In paragraph 92 of the contested decision, the Board of Appeal explained that the sign PURINA ONE used by the applicant would be perceived by the relevant public as indicating that what was designated by the word ‘purina’ was the ‘best’ or the number one, or that this was the first of a series that might, for example, be described by the expressions ‘purina one’ and ‘purina two’.

30 According to the applicant, in the course of the proceedings before EUIPO, both it and the intervener agreed only that ‘purina’ was a fanciful, meaningless term and that the word ‘one’ merely designated the number one. The Board of Appeal failed to provide the applicant with an opportunity to present its comments on all of the considerations set out in paragraph 92 of the contested decision, which were therefore ‘completely new’ findings. The fact that the applicant was not given an opportunity to present its comments on those considerations constitutes a breach of its right to be heard, which should result in the annulment of the contested decision, as it is vitiated by an infringement of the second sentence of Article 94(1) of Regulation 2017/1001.

32 In that connection, in the first place, it should be noted that this part of the plea is ineffective.

33 Indeed, in principle, an argument alleging the existence of irregularities, of a procedural nature or otherwise, is ineffective when the decision in question contains other elements which, in themselves, provide sufficient legal justification for it (see, to that effect, judgments of 12 July 2001, Commission and France v TF1, C‑302/99 P and C‑308/99 P, EU:C:2001:408, paragraph 27; of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 41; and of 20 December 2017, EUIPO v European Dynamics Luxembourg and Others, C‑677/15 P, EU:C:2017:998, paragraphs 49 and 50).

34 In the present case, first, the assessments of the meaning of the juxtaposition of the words ‘purina’ and ‘one’ set out in paragraph 92 of the contested decision were made by the Board of Appeal in order to support the interim conclusion set out in paragraph 95 of that decision, which is that the inherent distinctive character of the word ‘one’, as used in combination with the word ‘purina’, is, at the very best, low.

35 Secondly, it is true that, as the applicant notes, in paragraph 92 of the contested decision, the Board of Appeal explained that the sign PURINA ONE would be perceived by the relevant public as indicating that what was designated by the word ‘purina’ was the ‘best’ (first meaning), or that this was the first of a series that might be described by the expressions ‘purina one’, ‘purina two’ (second meaning). However, in the same paragraph of the contested decision, the Board of Appeal also found that the compound ‘purina one’ could be understood as ‘indicating that “purina” is … the number [one]’ (third meaning).

36 That third meaning, which is based on a finding made by the General Court in paragraph 73 of the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890) – duly cited by the Board of Appeal in paragraph 92 of the contested decision – by itself justifies the finding in paragraph 95 of the contested decision, which is that the inherent distinctive character of the word ‘one’, read in conjunction with the word ‘purina’, is, at the very best, low.

37 However, the applicant does not argue any breach of its right to be heard in relation to the third meaning of the expression ‘purina one’. In paragraph 22 of its application, it argues a breach of its right to be heard solely in relation to the first and second meanings.

38 It follows that, since the applicant has failed to establish the existence of an error – of a procedural or substantive nature – vitiating the Board of Appeal’s assessment regarding this third meaning, and since that assessment provides sufficient legal support for the interim conclusion regarding the level of the inherent distinctiveness of the expression ‘purina one’, any alleged breach of the applicant’s right to be heard in relation to the other two meanings of the expression ‘purina one’, as explained by the Board of Appeal in paragraph 92 of the contested decision, necessarily has no bearing on the grounds or operative part of that decision.

39 In the second place, and in any event, the present part of the plea is unfounded.

40 In that regard, it must be borne in mind that, pursuant to the second sentence of Article 94(1) of Regulation 2017/1001, EUIPO decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision enshrines in the law of EU trade marks the general principle of protection of the rights of the defence, in accordance with which a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his, her or its point of view known. The right to be heard extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt (see judgment of 17 October 2018, Golden Balls v EUIPO – Les Éditions P. Amaury (GOLDEN BALLS), T‑8/17, not published, EU:T:2018:692, paragraph 58 and the case-law cited).

41 However, it follows from settled case-law that the rights of the defence, which include the right to be heard, are infringed by reason of a procedural irregularity only in so far as the irregularity actually has a specific effect on the ability of the individuals concerned to defend themselves. Accordingly, non-compliance with rules in force whose purpose is to protect the rights of the defence, such as that laying down the right to be heard, can vitiate the administrative procedure only if it is shown that the latter could have had a different outcome if the rules had been observed (judgments of 12 May 2009, Jurado Hermanos v OHIM (JURADO), T‑410/07, EU:T:2009:153, paragraph 32; of 6 September 2013, Eurocool Logistik v OHIM – Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraph 51; and of 16 June 2021, Fidia farmaceutici v EUIPO – Ioulia and Irene Tseti Pharmaceutical Laboratories (HYAL), T‑215/20, not published, EU:T:2021:371, paragraph 84).

42 In the present case, however, it has in no way been established that the proceedings before the Board of Appeal could have had a different outcome if the applicant had been heard on the meanings of the expression ‘purina one’ set out in paragraph 92 of the contested decision. More specifically, the applicant does not state how it might have been able to influence the interim conclusion regarding the level of inherent distinctiveness (which the Board of Appeal found to be ‘at the very best, low’) if it had been heard on those meanings. In fact, the applicant in no way sets out what it could or would have argued in relation to the three meanings of the expression ‘purina one’. Its statement that, if it had been given the opportunity to comment on the considerations set out in paragraph 92 of the contested decision, it could have explained that the Board of Appeal’s reasoning was not ‘convincing’ is not sufficient to show that the outcome of the procedure might have been different.

43 Consequently, in the light of all of the foregoing, the first part of the first plea must be rejected.

The second part of the first plea, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001

44 According to the applicant, the Board of Appeal similarly failed to state reasons for the findings made in paragraph 92 of the contested decision and set out in paragraph 29 above, thus infringing the first sentence of Article 94(1) of Regulation 2017/1001.

46 It must be borne in mind at the outset that, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons has the same scope as that under Article 296 TFEU, according to which the reasoning of the author of the act must be shown clearly and unequivocally. Its purpose is twofold: first, to enable the persons concerned to ascertain the reasons for the measure taken in order to defend their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all of the legal rules governing the matter in question (see judgment of 14 September 2022, Sushi&Food Factor v EUIPO (READY 4YOU), T‑367/21 and T‑432/21, not published, EU:T:2022:552, paragraph 47 and the case-law cited).

47 The applicant’s allegation that the Board of Appeal failed to state reasons for the findings regarding the meanings of the expression ‘purina one’ has no factual basis. Indeed, on this point, the explanations in the contested decision are very clear as to the meanings of that expression. It is those explanations which, to the requisite legal standard, made it possible for the applicant to put forward its arguments in the first part of the first plea. Those same explanations have enabled the General Court to examine the arguments put forward in that part of the plea.

48 There is nothing in the case file to support the conclusion that the applicant was unable to ascertain the reasons for the contested decision in order to defend its rights or that the General Court is unable to exercise its power to review the legality of that decision. The applicant has not offered any information explaining why the reasons stated by the Board of Appeal were so deficient that it could be deemed that they ran counter to the twofold purpose referred to in paragraph 46 above.

49 Consequently, the present part of the plea must be rejected, as, therefore, must the plea in its entirety.

The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009

50 By its second plea in law, which is divided into two parts, concerning, respectively, the repute of the earlier mark and the existence of a link between the signs at issue, the applicant argues, in essence, that the Board of Appeal infringed Article 8(5) of Regulation No 207/2009.

51 In that regard, it must be borne in mind that, pursuant to Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, including a mark that has been registered, under international arrangements, in one or more Member States, the trade mark applied for is not to be registered where it is identical with or similar to the earlier trade mark and it is to be registered for goods or services which are dissimilar to those for which the earlier trade mark is registered, where the earlier mark has a reputation in the Member State or Member States concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark (see judgment of 3 May 2023, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – Fontana Food (GRILLOUMI), T‑168/22, not published, EU:T:2023:231, paragraph 76 and the case-law cited).

52 Indeed, while the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35).

53 It is clear from the wording of Article 8(5) of Regulation No 207/2009 that a number of conditions must be satisfied in order for that provision to apply. First, the earlier mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, in the case of an earlier mark registered under international arrangements having effect in one or more Member States, it must have a reputation in that Member State or those Member States. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 3 May 2023, GRILLOUMI, T‑168/22, not published, EU:T:2023:231, paragraph 77 and the case-law cited).

54 As regards the fourth condition, the infringements referred to, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for as a result of which the relevant public makes a connection between those two marks. In other words, the relevant public establishes a link between them, even though it does not confuse them (see judgment of 7 June 2023, Chocolates Lacasa Internacional v EUIPO – Esquitino Madrid (Conguitos), T‑339/22, not published, EU:T:2023:308, paragraph 18 and the case-law cited). The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see judgment of 7 June 2023, Conguitos, T‑339/22, not published, EU:T:2023:308, paragraph 19 and the case-law cited).

55 It is in the light of those considerations that the present plea must be examined.

The first part of the second plea, alleging manifest errors of assessment and of law regarding the repute of the earlier mark

56 After endorsing the findings made by the General Court in paragraphs 25 and 29 to 31 of the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), regarding the composition of the relevant public and its level of attention, the Board of Appeal proceeded, in paragraphs 62 to 120 of the contested decision, to examine the conditions to which the application of Article 8(5) of Regulation No 207/2009 is subject. The aim of that examination was to establish whether it could be concluded that the earlier mark enjoyed a reputation as a result of its use in the form PURINA ONE, where the word ‘purina’ was depicted within a black rectangle, preceded by a small white and red chequerboard image, while the word ‘one’ was sometimes accompanied by the symbol ®. So doing, the Board of Appeal examined the existence of dominant and distinctive elements added to the earlier mark that were liable to alter that mark. In that connection, the Board of Appeal found that the word ‘one’ was immediately noticeable and more prominent than the word ‘purina’. The inherent distinctive character of the word ‘one’, used in combination with the word ‘purina’, was, at the very best, low, given that it had to be understood as meaning the number one and that the symbol ® accompanying it was banal. The stylisation of the word ‘one’ was also commonplace. On examining the word ‘purina’, the Board of Appeal found that it was meaningless and that the black rectangle in which the word was placed had a merely decorative purpose. The combination ‘purina one’ would, according to the Board of Appeal, be perceived by the relevant public as indicating that what is designated by the word ‘purina’ is the best or the number one, or that this is the first of a series that could be described, for example, with the expressions ‘purina one’ and ‘purina two’. On completing its analysis, the Board of Appeal concluded that the component ‘purina’ differentiated the sign PURINA ONE from the earlier word mark ONE to such a degree that it could be concluded that it prevented the relevant public from perceiving the goods at issue as originating from one particular undertaking. The applicant had therefore not succeeded in establishing the reputation of the earlier mark ONE under a different form. Moreover, given that the applicant had argued that its group of companies used the mark PURINA as an ‘umbrella brand’ for various other well-known brands, the Board of Appeal concluded, essentially, that, were that argument to be accepted, it would, if anything, further increase the strength of the component ‘purina’ and thus further differentiate the reputation of the sign PURINA ONE from any possible reputation of the mark ONE.

57 The applicant argues, in essence, that the Board of Appeal’s assessment of whether the reputation of the earlier mark could be established on the basis of its use under a different form (see paragraph 56 above) is vitiated by manifest errors of assessment and manifest errors of law.

58 In the first place, the applicant submits that, by stating in paragraph 85 of the contested decision that the word ‘purina’ remained clearly legible, the Board of Appeal disregarded the fact that the element ‘one’ was the dominant element visually. The element ‘purina’ is written in a much smaller and different font than the element ‘one’, with the element ‘one’ being almost six times larger than the element ‘purina’, which is especially important, bearing in mind that the goods concerned are bought on sight in supermarkets. It is clear from Annexes 14 and 25 to the written observations of 30 March 2017 submitted to EUIPO by the applicant that the sign ONE is used in isolation there and that the element ‘purina’ is barely legible, if not illegible, on the packaging of the product concerned.

59 In the second place, the applicant claims that the Board of Appeal was wrong to consider, in paragraph 94 of the contested decision, that the symbol ® is barely noticeable. In fact, according to Annex 22 to the written observations of 30 March 2017 submitted to EUIPO by the applicant, the symbol ® is used in connection with the word sign PURINA ONE, making the combination ‘PURINA ONE ®’, and is clearly visible. Thus, if one were to agree with the Board of Appeal’s finding in paragraph 85 of the contested decision, which is that the element ‘purina’ remains clearly visible when used in connection with the element ‘one’ – which it is not – the same must also apply to the symbol ®. Either the relevant public will perceive both elements, or they will perceive neither of them.

60 In the third place, according to the applicant, the assessment made by the Board of Appeal in paragraph 92 of the contested decision – according to which the element ‘one’ in combination with the word ‘purina’ will be perceived as indicating that what is designated by the term ‘purina’ is the best or the number one or that this is the first in a hypothetical series ‘purina one’, ‘purina two’, ‘purina three’ and so on – is vitiated by an error of assessment. To perceive something as ‘the best’, there first needs to be an understanding of what is under discussion. Without that, it would be difficult then to determine which version is better or worse. However, in the present case, as is clear from paragraph 97 of the contested decision, the word ‘purina’ is a fanciful, meaningless term. Therefore, contrary to what the Board of Appeal argued in paragraph 92 of the contested decision, when combining that fanciful term with the term ‘one’, there is no reason to assume that the public would perceive the sign PURINA ONE as indicating that the fanciful term is ‘the best’. Similarly, there is nothing to support the finding that the element ‘one’ will be perceived as referring to the first product in a series. Such an interpretation might be justified in respect of goods where it is typical to have a series of products or films. However, in the present case, since ‘purina’ is a purely fanciful term, there is no reason to assume that it is the name of a product; it could be the name of a person or a fictitious concept. Moreover, in the market for animal foodstuffs, there is no practice of having consecutive series of products. On the contrary, in that field, such products are marketed simultaneously and independently from each other. It is therefore implausible that the term ‘one’ would be understood as referring to the first product in a series of products designated by the element ‘purina’.

61 In the fourth place, the applicant submits that the Board of Appeal’s assessment in paragraph 95 of the contested decision that ‘the inherent distinctive character of the word “one” …, as used and perceived by the relevant public, in combination with [the word] “purina” is, at the very best, low’ is not consistent with the findings in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890). The applicant submits that it was not for the Board of Appeal to assess whether the sign ONE is distinctive when used in the expression ‘purina one’. Instead, the Board of Appeal should have compared the mark ONE with the sign PURINA ONE, carrying out an overall assessment of the distinctive and dominant character of the added element and basing its assessment on the intrinsic qualities of that element, its relative position within the arrangement of the mark and its interactions with the other different elements.

62 In the fifth place, the applicant submits that, in so far as the Board of Appeal considered in the contested decision that ‘the element “purina” refers to the company actually selling the products under the earlier mark’, the Board of Appeal’s considerations are vitiated by errors of law. In that respect, the Board of Appeal ‘accepted’ that certain trade marks can be used next to ‘house brands’ (also known as ‘umbrella brands’), in the market for foodstuff products in particular. However, as the applicant submits is apparent from paragraphs 100 and 102 of the contested decision, the Board of Appeal claimed that ‘this can only happen when dealing with simultaneous use of independent brands, but not when dealing with use in a form different from the one registered’. However, that interpretation is incorrect. Thus, it is clear, in essence, from the Court’s case-law, in particular the judgment of 5 December 2013, Olive Line International v OHIM – Carapelli Firenze (Maestro de Oliva) (T‑4/12, not published, EU:T:2013:628), and the judgment of 22 March 2023, Beauty Biosciences v EUIPO – Société de Recherche Cosmétique (BIO-BEAUTÉ) (T‑750/21, not published, EU:T:2023:147), that ‘it is a highly relevant factor whether the additional element might be perceived as a house brand/an umbrella brand’.

63 In the sixth place, the applicant submits that the findings made in the judgment of 22 March 2023, BIO-BEAUTÉ (T‑750/21, not published, EU:T:2023:147), should be applied to the present case. The element ‘one’, like the element ‘bio-beauté’, is depicted in a significantly larger font. In addition, in the present case, the element ‘one’ is used in connection with the symbol ®. That was also the case for the element ‘bio-beauté’. Similarly, the word ‘purina’ is, in the present case, clearly used and recognised as an ‘umbrella brand’, which is true of the element ‘nuxe’, at issue in the judgment of 22 March 2023, BIO-BEAUTÉ (T‑750/21, not published, EU:T:2023:147).

64 In addition, in that context, the applicant states that the Board of Appeal asserted in paragraph 106 of the contested decision that the decisive difference between the present case and the case that resulted in the judgment of 22 March 2023, BIO-BEAUTÉ (T‑750/21, not published, EU:T:2023:147), is that the word ‘one’ is not used in the arrangement ‘one by purina’, but in the arrangement ‘purina one’. However, that argument is not persuasive, since use of the element ‘by’ is not always necessary for the public to understand that a certain element of a sign refers to the manufacturer of the goods.

65 In the seventh place, according to the applicant, the Board of Appeal was wrong to find in paragraph 107 of the contested decision that, if one were to accept that ‘purina’ will be recognised as a well-known company name, this would increase the strength of the component ‘purina’ and thus further differentiate the signs PURINA and PURINA ONE. Yet the opposite is true, since when a product brand is used alongside a company name, the focus is clearly on the product brand and not on the company name, as is clear from the judgment of 30 November 2006, Camper v OHIM – JC (BROTHERS by CAMPER) (T‑43/05, not published, EU:T:2006:370), and from the EUIPO decision of 7 September 2015 in Case B 2 360 454 – 1one v One by SANA Hotel.

66 In the eighth place, the applicant submits that, contrary to what the Board of Appeal suggested in paragraphs 105 and 108 of the contested decision, it is not true ‘that the word “one”, when used in combination with [the word] “purina”, is by no means apt to identify the goods to which it relates as originating from a particular undertaking’. In that regard, the applicant conducted a market survey for the territory of Germany, which confirmed that the distinctiveness of the mark ONE, taken in isolation, was ‘quite impressive’, even though the mark has always been used in the composite mark PURINA ONE. It could also be inferred from the survey, produced in Annex A.7 to the application, that the relevant public continued to perceive the mark ONE as a badge of origin for the goods at issue. According to the survey, 45.8% of the relevant public and 32.5% of the general public had already seen the mark ONE in conjunction with cat or dog food. In addition, 29.3% of the relevant public confirmed that they believed that the mark ONE in conjunction with cat or dog food was an indication of one very specific company.

67 In the ninth place, the applicant submits that an overall assessment is clearly lacking in the contested decision. Even though, in paragraph 86 of the contested decision, the Board of Appeal found that the word ‘one’ is the dominant element of the mark, that aspect is entirely disregarded in the overall assessment. The dominance of the element ‘purina’, as determined, inter alia, by its size and position, is of course relevant to the assessment, as is confirmed by the judgment of 23 January 2019, Klement v EUIPO (C‑698/17 P, not published, EU:C:2019:48), which concerned the three-dimensional shape of an oven. In that case, there was no doubt that the word mark Bullerjan was more distinctive per se than the three-dimensional shape of the oven. Similarly, there was no doubt that the word mark Bullerjan was, in principle, visible on the oven, although less visible than the shape thereof. What was decisive for the Court was the dominance of the three-dimensional shape of the oven, as opposed to the less dominant, but clearly more distinctive, word mark Bullerjan. The same should apply here. Irrespective of the distinctiveness of the mark ‘PURINA’, the sign is clearly dominated by the element ‘one’.

69 First, the Court observes that, in paragraphs 72 to 74 of the contested decision in particular, the Board of Appeal addressed the question of whether the earlier mark had acquired a reputation by virtue of the use of the sign PURINA ONE, and applied the requirements relating to genuine use set out in Article 15(1)(a) of Regulation No 207/2009, which are analogous to those concerning the acquisition of a reputation for the purposes of Article 8(5) of that regulation.

70 That approach must be endorsed at the outset, since use of an EU trade mark in a different form may be taken into account only if such use has not altered the form of the mark as registered, which is also the test under Article 15(1)(a) of Regulation No 207/2009. Indeed, where a mark is presented in a different form, the existence of differences that alter the distinctive character of the mark is liable to rule out not only a finding that genuine use of the mark has been made (see, to that effect, judgment of 29 April 2020, Lidl Stiftung v EUIPO – Plásticos Hidrosolubles (green cycles), T‑78/19, not published, EU:T:2020:166, paragraph 66), but also a finding that the mark has acquired a reputation on the basis of the different form.

71 Next, the Court also endorses all the legal criteria to which the Board of Appeal referred in paragraphs 75 to 77 of the contested decision and which it applied in order to establish whether the mark ONE had acquired a reputation by virtue of its use in the form PURINA ONE. The Court accordingly confirms the need to apply the criterion that the form in which a registered mark is used must be assessed in the light of its distinctive character, in order to ascertain whether that distinctive character has been altered, as well as the criterion that a finding of an alteration of the distinctive character of the registered mark requires an assessment of the distinctive and dominant character of the added elements, based on the inherent qualities of each of those elements and the relative position of the various elements within the arrangement of the trade mark.

72 The arguments which the applicant puts forward in the first part of the present plea are incapable of calling into question the findings of the Board of Appeal summarised in paragraph 56 above, which may be inferred from the following considerations.

73 The Board of Appeal was entitled to endorse the findings made by the General Court in paragraphs 25 and 29 to 31 of the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), regarding the composition of the relevant public and its level of attention. In those paragraphs, the Court held, in essence, that the relevant public was the public of the European Union, consisting of the general public and the professional public in the veterinary sector. More specifically, as regards the goods concerned in Class 5, the Court found that the level of attention of the relevant public was above average for food additives and supplements and high for veterinary preparations. By contrast, as regards the identical goods in Class 31, the General Court considered that they were aimed at the general public and that the level of attention of the relevant public was no more than average.

74 It was permissible for the Board of Appeal to endorse the General Court’s findings regarding the composition of the relevant public and its level of attention, even though those findings had been made with reference to Article 8(1)(b) of Regulation No 207/2009, whereas the Board of Appeal was in the process of examining the merits of the applicant’s arguments regarding the application of Article 8(5) of that regulation. The legal concepts of ‘relevant public’ and ‘level of attention’ are in fact common to both those provisions. Moreover, the facts put forward in relation to the composition of the relevant public and its level of attention were the same in connection with both provisions. Furthermore, in the present case, the applicant does not dispute the composition of the relevant public or its level of attention.

75 In addition, in the first place, contrary to the applicant’s submission (see paragraph 58 above), there is nothing to suggest that the Board of Appeal disregarded the fact that the element ‘one’ was the dominant element of the sign PURINA ONE. With the words ‘more prominent than the word “purina”’ in paragraph 86 of the contested decision, the Board of Appeal was simply expressing the view that the element ‘one’ was the dominant element. The words ‘more prominent’ must, in the given context, be understood as being synonymous with ‘dominant’. It is important to add, in this regard, that, as is clear from paragraph 85 of the contested decision, the Board of Appeal also took the appearance of the element ‘purina’ into account. According to the Board of Appeal, that word was shown in a clearly smaller size than the word ‘one’, but it was not of negligible importance visually and it remained clearly legible. Moreover, contrary to what the applicant suggests, Annexes 14 and 25 to the written observations of 30 March 2017 submitted to EUIPO by the applicant, which are set out not on the same scale but on a smaller scale, in order to fit on an A4 page (29.7 cm × 21 cm), permit the inference that the element ‘purina’ remains legible on the product packaging. Consequently, the arguments referred to in paragraph 58 above are not such as to alter the findings of the Board of Appeal regarding the inherent qualities of each of the elements ‘one’ and ‘purina’ in the sign PURINA ONE. The applicant’s arguments must therefore be rejected as unfounded.

76 In the second place, the applicant’s arguments regarding the importance of the symbol ® in the sign PURINA ONE (see paragraph 59 above) are not persuasive. The symbol ®, which means ‘registered trademark’ and appears to the right of the mark ONE, is far smaller than the word ‘purina’. As the Board of Appeal stated in paragraph 94 of the contested decision – bearing in mind that what matters is the perception of the relevant public – for the general public, which has a normal level of attention and will not analyse the trade mark goods at issue, the symbol ® will probably not even be noticed. Moreover, the applicant does not dispute the Board of Appeal’s finding that, in numerous images of the applicant’s packaging, the sign PURINA ONE appears alone, that is, without the symbol ®. Therefore, the Board of Appeal made no error in finding, in paragraphs 93 and 94 of the contested decision, essentially, that the symbol ® did not, considering the general public’s perception, have any effect on the assessment of the inherent distinctiveness of the earlier mark. The applicant’s arguments referred to in paragraph 59 above must therefore be rejected.

77 In the third place, contrary to the applicant’s argument (see paragraph 60 above), the Board of Appeal was right to find, in paragraph 92 of the contested decision, in essence, that the word ‘one’, used in the combination ‘purina one’, could be understood by the relevant public as designating either a superior quality or an initial position in a series of several things.

78 In that regard, first of all, it must be borne in mind that, although, in paragraph 73 of the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), the General Court found that the word ‘one’, taken in isolation, meant only the number one, the trade mark ONE is not, as the applicant submits in the present case, used in isolation, but in the form PURINA ONE. When used in such a combination, the word ‘one’ may well have other meanings that go beyond its use as an individual word, as is the case of its use in the earlier mark as registered. In that context, it must also be emphasised that, in paragraph 73 of that judgment, the Court stated that, ‘to designate other meanings, such as the uniqueness of a person or thing, the word “one” must be used with other words such as in the expressions “the one”, “the one and only” or “the only one”.’ In other words, according to paragraph 73 of the judgment, it cannot be ruled out that the word ‘one’ will take on or confer specific meanings when it is used in combination with other words.

79 Next, contrary to the applicant’s argument (see paragraph 60 above), it is in no way necessary for a word like ‘purina’ to have any particular meaning in order for the word ‘one’, when used in the combination ‘purina one’, to put the relevant public in mind of the three meanings identified by the Board of Appeal in paragraph 92 of the contested decision. It is therefore possible, as the Board of Appeal stated, for the element ‘one’, combined with the word ‘purina’, to be perceived as indicating that what the element ‘purina’ refers to is the best or the number one, or the first in a hypothetical series ‘purina one’, ‘purina two’ and ‘purina three’.

80 Lastly, the applicant’s assertion that it is unlikely that the word ‘one’ would be understood as indicating the first product in a series of ‘purina’-designated products because, in the market for animal foodstuffs, there is no practice of having consecutive series of products has no bearing on the merits of the Board of Appeal’s findings, since that assertion is vague, general and speculative. Having regard to all those points, the arguments referred to in paragraph 60 above are unfounded and must, for that reason, be rejected.

81 In the fourth place, by the arguments referred to in paragraph 61 above, the applicant points, somewhat indistinctly, to several errors. First, it alleges a manifest error of assessment vitiating the conclusion, set out in paragraph 95 of the contested decision, that the inherent distinctive character of the word ‘one’, as used and perceived by the relevant public, which is to say, in combination with the word ‘purina’, is, at the very best, low. That, the applicant alleges, is inconsistent with the findings in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890). Secondly, the applicant complains that the Board of Appeal focused on the question of whether the mark ONE was distinctive when used in the combination ‘purina one’, rather than carrying out an overall assessment of the distinctive and dominant character of the elements within the sign PURINA ONE, based on the intrinsic qualities of each element.

82 First of all, it must be observed that the word ‘one’ has strong descriptive connotations. The Board of Appeal was therefore entitled to state that the inherent distinctiveness of that word, in the combination ‘purina one’, was ‘at the very best, low’. That finding by the Board of Appeal is not and cannot be inconsistent with the findings made by the General Court in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), because, in that judgment, the Court did not evaluate the inherent distinctiveness of the element ‘one’ as an element of the combination ‘purina one’.

83 Secondly, contrary to the applicant’s argument, the assessments in paragraphs 78 to 95 of the contested decision are no more than the faithful application of the criteria set out in paragraphs 75 to 77 of that decision. In paragraphs 78 to 95, the Board of Appeal analysed the form in which the earlier mark had been used, it being necessary to appraise that form, in particular, in the light of the inherent distinctiveness of the mark, in order to ascertain whether that distinctiveness had been altered. Those same paragraphs of the contested decision also contain, just as paragraph 98 of the contested decision does, an examination of the distinctive and dominant character of the elements added to the earlier mark, including an examination of the distinctive and dominant character of the verbal element ‘purina’, the symbol ® and the decorative elements. That examination takes account, moreover, of the inherent qualities of each of the added elements and of the relative position of the various elements within the arrangement of the composite mark PURINA ONE. It follows that, contrary to the applicant’s assertion, the Board of Appeal did indeed make an overall assessment of the distinctive and dominant character of the elements within the sign PURINA ONE based on the inherent qualities of each of those elements.

84 Therefore, the applicant’s arguments referred to in paragraph 61 above are manifestly unfounded and, for that reason, must be rejected.

85 In the fifth place, the arguments summarised in paragraph 62 above are not persuasive. Contrary to the applicant’s suggestion, the Board of Appeal did not state or imply in the contested decision that ‘the element “purina” refer[red] to the company actually selling the products under the earlier mark’.

86 Furthermore, the Board of Appeal’s interpretation of the effect of the parallel use of ‘house brands’ (or ‘umbrella brands’) is correct.

87 In paragraphs 99 to 101 of the contested decision, the Board of Appeal essentially asserted the following.

88 First of all, it was the applicant that had insisted during the proceedings before EUIPO that it was a common practice in the market for foodstuff products to use special product brands next to ‘house brands’. Secondly, trade marks are ‘often’ used together with other marks, for example, to indicate a ‘house brand’ and a ‘sub-brand’, and that constituted use of a mark in the same form as registered, in parallel with, but independently from, other marks (simultaneous use of independent marks). Thirdly, those legal criteria did not, however, assist the applicant, since the earlier mark was being used in a different form (that is, in the form ‘purina one’) from that in which it had been registered.

89 Indeed, it is quite permissible to distinguish between the situation where a mark is used in a form which differs from that in which it was registered and the situation where several signs are used simultaneously, without the distinctive character of the registered trade mark being altered (see, to that effect, judgment of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 34). Moreover, from a factual viewpoint, the applicant does not state in the application by what means the relevant public would realise that the expression ‘purina one’ was the equivalent of a simultaneous use of several signs without the distinctive character of the registered trade mark ONE being altered. In that respect, the application lacks sufficient points of fact liable to invalidate the reasoning in paragraphs 99 to 101 of the contested decision.

90 The applicant’s arguments summarised in paragraph 62 above must therefore be rejected as unfounded.

91 In the sixth place, the applicant’s arguments mentioned in paragraphs 63 and 64 above cannot succeed. Contrary to the applicant’s submissions, it is not appropriate to apply the findings made in the judgment of 22 March 2023, BIO-BEAUTÉ (T‑750/21, not published, EU:T:2023:147), to the present case. As the Board of Appeal rightly noted in paragraph 106 of the contested decision, that judgment, which concerned, in particular, questions relating to the acquisition of distinctive character by the mark BIO-BEAUTÉ, registered for ‘beauty’ products, concerned a different factual situation from that in the present case. That mark was used in the form BIO BEAUTÉ by nuxe, whereas the earlier mark at issue in the present case is not used in the arrangement PURINA by ONE or in the arrangement ONE by PURINA, but in the arrangement PURINA ONE. In that regard, the Board of Appeal was entitled, moreover, to proceed from the principle that the arrangement PURINA ONE would be perceived by the relevant public as indicating that what the element ‘purina’ refers to is the best or the number one.

92 Furthermore, as regards the affidavit lodged as Annex A.6 to the application, for the purpose of demonstrating that the mark PURINA is a well-known ‘umbrella brand’, that item of evidence must be excluded as inadmissible, since it was lodged for the first time in proceedings before the Court. In that regard, it is sufficient to recall that the purpose of actions brought before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, as referred to in Article 72 of Regulation 2017/1001, and so it is not the General Court’s function to review the facts in the light of documents produced for the first time before it. Furthermore, in accordance with Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal (see judgment of 28 April 2021, Klaus Berthold v EUIPO – Thomann (HB Harley Benton), T‑284/20, not published, EU:T:2021:218, paragraph 23 and the case-law cited).

93 Consequently, the applicant’s other assertion that, ‘due to the well-known status’ of the element ‘purina’, it is likely to be perceived as a company name, and that, on seeing the sign PURINA ONE, the relevant public will immediately know that ‘purina’ is merely an indication that the goods concerned come from the company Purina, must also be rejected. That claim essentially rests on the reputation that the mark PURINA is alleged to have on the basis of the content of Annex A.6 to the application. As the Court has already pointed out, the applicant cannot base its claims on the content of Annex A.6 to the application, since that annex is inadmissible. Furthermore, nothing in the application supports a finding that the word ‘purina’, which is a fanciful term, is liable to be perceived as a company name.

94 That being so, the applicant’s arguments referred to in paragraphs 63 and 64 above must be rejected as unfounded.

95 In the seventh place, the arguments referred to in paragraph 65 above are unfounded. The applicant is, in fact, reading paragraph 107 of the contested decision incorrectly. In that paragraph, the Board of Appeal did not state that the element ‘purina’ was a ‘company name’. The Board of Appeal did, on the other hand, state that the applicant had argued that PURINA was its ‘umbrella brand’.

96 In addition, the applicant’s endeavour to substantiate its arguments regarding the understanding of the element ‘purina’ as referring to a ‘company name’ by drawing an analogy with the findings in the judgment of 30 November 2006, BROTHERS by CAMPER (T‑43/05, not published, EU:T:2006:370), or those in the EUIPO decision of 7 September 2015 in Case B 2 360 454 – 1one v One by SANA Hotel, cannot be taken into account in the present case. The argument set out in paragraph 107 of that decision in no way rests on the fact that the element ‘purina’ is a ‘company name’.

97 Moreover, regarding the applicant’s reliance on the EUIPO decision of 7 September 2015 in Case B 2 360 454 – 1one v One by SANA Hotel, it must be borne in mind that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are required to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see judgment of 29 November 2023, Vobro v EUIPO – Mieszko (CHERRY Passion), T‑29/23, not published, EU:T:2023:765, paragraph 105 and the case-law cited).

98 In the eighth place, the allegations mentioned in paragraph 66 above are not persuasive, since they lack factual support and, moreover, are based on evidence that is inadmissible.

99 Indeed, the applicant’s allegation that, in paragraphs 105 and 108 of the contested decision, the Board of Appeal suggested that the ‘word ‘one’, when used in combination with the word ‘purina’, is by no means apt to identify the goods to which it relates as originating from a particular undertaking’, is not supported by the contested decision. According to the Board of Appeal, in paragraph 105 of the contested decision, in essence, a mark must be able to ‘identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking’. That statement of principle by the Board of Appeal does not match the applicant’s interpretation of the contested decision as asserting that the word ‘one’ is incapable of identifying certain goods.

100 Similarly, paragraph 108 of the contested decision refers to an overall assessment of the relevant factors of the case and states the conclusion that the additional element ‘purina’ differentiates the sign PURINA ONE from the earlier word mark ONE, as registered, and so prevents the relevant public from perceiving the goods at issue as originating from a particular undertaking. Again, that is not the same as an assertion that the word ‘one’ is incapable of identifying certain goods.

101 Furthermore, in so far as the applicant maintains that the distinctiveness of the mark ONE, taken in isolation, is ‘quite impressive’, even though the mark has always been used in the combined mark PURINA ONE, that allegation is based on the market survey lodged as Annex A.7 to the application. However, as EUIPO has rightly pointed out, that survey is also an item of evidence that was lodged for the first time in proceedings before the Court, and, for that reason, it must be excluded as inadmissible, having regard to the case-law mentioned in paragraph 92 above.

102 It follows that the applicant’s arguments summarised in paragraph 66 above must be rejected.

103 In the ninth place, the arguments mentioned in paragraph 67 above are also unfounded. In the light of the considerations set out in paragraphs 62 to 120 of the contested decision, contrary to the applicant’s submissions, it should not be considered that an overall assessment ‘is clearly lacking’ in the contested decision.

104 In that regard, it must be emphasised that the Board of Appeal did not, in the context of its overall assessment, disregard the fact that the word ‘one’ was the dominant element of the sign PURINA ONE. The words ‘in the light of all the foregoing’, which appear in paragraph 108 of the contested decision, necessarily encompass the interim conclusion that the word ‘one’ is the dominant element of that mark. That finding had already been clearly stated in paragraph 86 of the contested decision, in conclusion of the analysis of a whole series of reasons for which the Board of Appeal considered that the word ‘one’ was more prominent in the combination ‘purina one’, as is clear from paragraphs 82 to 85 of the contested decision. It was not incumbent on the Board of Appeal to reiterate those considerations in the context of the overall assessment. It was instead entitled to refer to them with the wording used in paragraph 108.

105 As regards the applicant’s argument that the dominance of the ‘offset element “purina”’ is relevant to the overall assessment, as was allegedly confirmed by the judgment of 23 January 2019, Klement v EUIPO (C‑698/17 P, not published, EU:C:2019:48), the following should be noted.

106 First of all, in that case, the Court of Justice did not ‘confirm’ any analysis of the elements making up the sign PURINA ONE, for the simple reason that that mark was not analysed in that case.

107 Secondly, none of the considerations set out in the judgment of 23 January 2019, Klement v EUIPO (C‑698/17 P, not published, EU:C:2019:48), is helpful in the present case, since the facts and questions of law were different from those in the present case.

108 In the judgment of 23 January 2019, Klement v EUIPO (C‑698/17 P, not published, EU:C:2019:48), the Court considered not the dominance of an element appearing within a mark, but the distinctiveness of a three-dimensional mark, namely the shape of an oven, taking into account the affixing of a word element, namely the word ‘Bullerjan’, which was significantly less distinctive than the three-dimensional mark. However, in the arguments referred to in paragraph 67 above, the applicant, for its part, relies on that judgment to emphasise the dominance of the element ‘purina’.

109 In the light of the foregoing, the first part of the applicant’s second plea in law must be dismissed as unfounded.

The second part of the second plea in law, alleging errors of assessment regarding the absence of a link between the signs at issue

110 In paragraphs 121 to 141 of the contested decision, the Board of Appeal examined, for the sake of completeness, the fourth condition to which the application of Article 8(5) of Regulation No 207/2009 is subject, that is, more specifically, the question of whether, in the present case, the degree of similarity between the earlier mark and the mark applied for made it possible to find that the relevant public might establish a link between the two marks. In that regard, the Board of Appeal considered, in essence, that the similarity between the signs was to be assessed in the same way with reference to both Article 8(1)(b) and Article 8(5) of Regulation No 207/2009. Relying on the finding, also reached by the General Court in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), that the signs at issue were visually and conceptually different and had a low degree of phonetic similarity, and taking into consideration other circumstances particular to the case, such as the typical method of marketing the goods at issue and the overriding importance of the visual perception of the marks, the Board of Appeal concluded that the relevant public would not establish a link between the signs in relation to any of the contested goods. The Board of Appeal also emphasised the importance of the conceptual difference between the marks at issue, namely the importance of the logical and conceptual unity of the contested mark, taken as a whole, which was clearly distinct from the concept conveyed by the element ‘one’ taken in isolation.

111 By the second part of the second plea, the applicant argues that the Board of Appeal’s finding that the marks at issue were not sufficiently similar for the relevant public to establish a link between them, having regard to the goods at issue, is incorrect. According to the applicant, there are ample reasons why ‘the assessment of the similarity of the signs carried out by the General Court in [the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890)]’ was not correct, as it demonstrated in the appeal which it brought against that judgment.

112 In the first place, in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), in the context of the comparison of the signs, the applicant submits that the Court applied an incorrect legal standard when assessing the dominant elements of the mark THE ONLY ONE by alphaspirit wild and perfect. Instead of establishing whether there were any elements that were not perceivable, the Court should have established the degree of dominance of each element and should have taken it into account in the visual, phonetic and conceptual comparison.

113 In the second place, the applicant submits that, in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), the Court disregarded various principles established in the case-law concerning the distinctiveness of signs, namely the principle that the relevant consumer generally does not consider a descriptive element forming part of a complex trade mark to be a distinctive element, the rule that, where a trade mark is made up of word and figurative elements, the former should, in principle, be regarded as being more distinctive than the latter, the principle that the public tends to abbreviate marks in order to make it easier to pronounce or memorise them, and the rule that ‘umbrella brands’ and indications of the undertaking producing the goods at issue will be perceived as subsidiary. If those principles are applied, the necessary conclusion, according to the applicant, is that the series of elements ‘by α alpha spirit wild and perfect’ of the mark applied for, as a whole, will be perceived as an ‘umbrella brand’ or as a reference to the manufacturer that is clearly secondary in the overall get-up of the brand, while the series of elements ‘the only one’ is the distinctive and dominant element of the mark applied for, all the more so since the intervener itself often refers to its brand as ‘the only one’.

114 In the third place, according to the applicant, the Court erred in finding, in paragraph 51 of the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), that the element ‘one’ did not have an independent distinctive role in the mark applied for. The Court thus incorrectly interpreted the judgment of 8 May 2014, Bimbo v OHIM (C‑591/12 P, EU:C:2014:305), since, in order to rule out the existence of an independent distinctive role, it is not sufficient to find that the earlier mark is part of a number of non-negligible word elements. Many judgments of the EU judicature show that a sign can possess an independent distinctive role even when it is part of a number of non-negligible word elements.

116 It must be noted at the outset that the findings of the Board of Appeal summarised in paragraph 110 above – like the second part of the second plea in law – relate to the fourth of the conditions to which the application of Article 8(5) of Regulation No 207/2009 is subject, referred to in paragraph 54 above.

117 Given that the conditions to which the application of Article 8(5) of Regulation No 207/2009 is subject are cumulative, as the Court has already pointed out (see paragraph 53 above), failure to satisfy one of them is sufficient to render that provision inapplicable. It is clear from the foregoing considerations that, in so far as the applicant has been unable to demonstrate errors vitiating the Board of Appeal’s finding that the earlier mark did not have a reputation in a different form, that is to say, in the form PURINA ONE, the third of the conditions to which the application of Article 8(5) of Regulation No 207/2009 is subject, referred to in paragraph 53 above, has not been fulfilled.

118 Consequently, there is no need to address the fourth of those conditions, and, for that reason, the second part of the second plea in law must be rejected as ineffective.

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

119 By its third plea, the applicant alleges infringement of Article 8(1)(b) of Regulation No 207/2009. In that regard, the applicant submits that, in its assessments addressing the application of that provision, the Board of Appeal referred to its finding that it had not proven the reputation of the earlier mark. However, given that that conclusion is incorrect, as it claims to have demonstrated in the context of its second plea in law, all of the Board of Appeal’s findings in relation to Article 8(1)(b) of Regulation No 207/2009 are similarly vitiated by error. In addition, as is clear from the judgment of 15 September 2016, Arrom Conseil v EUIPO – Nina Ricci (Roméo has a Gun by Romano Ricci) (T‑359/15, not published, EU:T:2016:488), it may, the applicant alleges, be sufficient, in order to assume a likelihood of confusion between two signs, that one of numerous elements of the subsequent mark is contained in the earlier mark.

121 In order to answer the applicant’s arguments, it must be recalled that, in paragraphs 142 to 149 of the contested decision, the Board of Appeal considered the possibility of applying Article 8(1)(b) of Regulation No 207/2009, as the applicant had proposed it should in the opposition proceedings. The Board of Appeal first found that there was no likelihood of confusion for the dissimilar goods. For the identical or similar goods, it referred to the factual and legal grounds established in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), including the composition of the relevant public, the level of attention, the dominant elements of the mark applied for and the comparison of the goods and marks. It concluded that there was no likelihood of confusion, because the degree of similarity between the signs was very low and the reputation of the earlier mark was unproven. Even if the earlier mark ONE did enjoy an enhanced level of distinctiveness, the visual and conceptual differences between the marks precluded any confusion.

122 In that connection, it must also be recalled that, in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), in the course of its examination of the specific facts of the dispute in the light of Article 8(1)(b) of Regulation No 207/2009, the Court already addressed the questions of the relevant public, its level of attention, the dominant elements of the mark applied for, the comparison of the goods and marks at issue and the likelihood of confusion in so far as that last question was unrelated to the issue of the reputation of the earlier mark in a different form. The considerations set out by the Court in relation to those matters have acquired the force of res judicata.

123 As regards the dissimilar goods, the Board of Appeal’s finding that no likelihood of confusion could be established is relevant. Indeed, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited). Where the products covered by the marks at issue are dissimilar, there should be no finding of a likelihood of confusion.

124 As regards the identical or similar goods, the Board of Appeal was entitled to apply the findings reached by the Court in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), regarding the similarity of the signs at issue for the purposes of the application of Article 8(5) of Regulation No 207/2009. Indeed, it is clear from the case-law that the condition that the signs at issue must be identical or similar is common to Article 8(1)(b) and Article 8(5) of that regulation and that the concept of similarity has the same meaning in each of those paragraphs (judgment of 17 October 2018, GOLDEN BALLS, T‑8/17, not published, EU:T:2018:692, paragraph 87). In that regard, it must be borne in mind that the findings reached by the General Court regarding the similarity of the marks at issue had acquired the force of res judicata. It must, therefore, be held that ‘the signs at issue are visually and conceptually different and have a low degree of phonetic similarity’ (judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect, T‑40/19, not published, EU:T:2019:890, paragraph 82).

125 Furthermore, in so far as the Board of Appeal referred, in paragraph 146 of the contested decision, to the absence of distinctiveness of the earlier mark acquired as a result of the use of that mark in a different form, and based that conclusion on the premiss that the applicant had not demonstrated the repute of the earlier mark in the form PURINA ONE, the Court must endorse that reasoning.

126 On the one hand, in order to assess whether an earlier mark has enhanced distinctiveness acquired through use, the Boards of Appeal of EUIPO may rely on the matters alleged by the proprietor of that mark in order to establish its reputation. On the other hand, in the present case, as is clear from the foregoing considerations, the applicant has not demonstrated that the earlier mark enjoyed a reputation as a result of its use in the form PURINA ONE.

127 In addition, the Court must also endorse the reasoning set out in paragraph 148 of the contested decision, according to which, in essence, even if the applicant had proven that the earlier mark had enhanced distinctiveness to the point of enjoying a ‘high reputation’, the effect of the low degree of phonetic similarity between the marks at issue and of the visual and conceptual differences was that the relevant public – even if its level of attention were average – would not be misled into thinking that the identical or similar goods covered by the marks at issue came from the same undertaking or from economically linked undertakings and that, for that reason, there was again no likelihood of confusion.

128 The applicant’s arguments referred to in paragraph 119 above do not call that finding into question.

129 In the first place, the applicant’s allegation that the Board of Appeal’s findings regarding the lack of a reputation of the earlier mark taking account of its use in the form PURINA ONE are incorrect (which, it alleges, also affects the Board of Appeal’s finding regarding the absence of enhanced distinctiveness acquired as a result of the reputation) must be rejected, since, as the Court has already pointed out, the applicant has not proven that the earlier mark had a reputation as a result of its use in that form.

130 In the second place, the applicant’s argument that the judgment of 15 September 2016, Roméo has a Gun by Romano Ricci (T‑359/15, not published, EU:T:2016:488), confirms that ‘for the assumption of a likelihood of confusion between two signs’ it may be sufficient if ‘one of numerous elements of the [later] mark is contained in the earlier mark’ must be rejected as ineffective.

131 Indeed, the applicant’s submission that ‘for the assumption of a likelihood of confusion between two signs’ it may be sufficient if ‘one of numerous elements of the younger mark is contained in the earlier mark’ is an attempt to reopen the debate which has already been had in the case that gave rise to the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), which is to say, more specifically, the debate regarding the visual similarity of the marks at issue. That attempt can only fail, since the question of the visual similarity of the marks at issue falls into the category of matters that have become res judicata.

132 In the light of all of the foregoing, the third plea in law must be dismissed.

The fourth plea in law, alleging infringement of Article 72(6) and Article 94(1) of Regulation 2017/1001

133 The fourth plea in law is divided into two parts, alleging infringement of Article 72(6) of Regulation 2017/1001 and infringement of Article 94(1) of Regulation 2017/1001, respectively.

The first part of the fourth plea in law, alleging infringement of Article 72(6) of Regulation 2017/1001

134 According to the applicant, the contested decision is contrary to Article 72(6) of Regulation 2017/1001 in that the Board of Appeal did not take the measures necessary to comply with the judgments of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), and of 17 November 2021, THE ONLY ONE by alphaspirit wild and perfect (T‑616/20, not published, EU:T:2021:794).

135 In the first place, according to the applicant, the Board of Appeal misconstrued the power conferred on it by Article 72(6) of Regulation 2017/1001 to re-assess the opposition based on Article 8(5) of Regulation No 207/2009 because it failed properly to assess the similarity of the signs when comparing them. With regard to the similarity of the signs, the Board of Appeal confined itself to adopting the reasoning set out by the Court in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), without, however, taking into account the reasoning the applicant had set out in its appeal before the Board of Appeal in order to demonstrate that the assessment of the similarity of the signs adopted in that judgment was incorrect.

136 In the second place, the applicant submits that the Board of Appeal misconstrued the power conferred by Article 72(6) of Regulation 2017/1001, in that it failed properly to carry out a global assessment of the likelihood of confusion with reference to Article 8(1)(b) of Regulation No 207/2009. That may be inferred from the fact that, in paragraph 148 of the contested decision, the Board of Appeal stated that, even if the applicant had proven that the earlier mark had an enhanced level of distinctiveness to the extent of enjoying a high reputation, the relevant public would not be misled. According to the applicant, that finding is at odds with the judgments of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), and of 17 November 2021, THE ONLY ONE by alphaspirit wild and perfect (T‑616/20, not published, EU:T:2021:794). That is because, in the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), the Court specifically left open the possibility of a finding of a likelihood of confusion and because, in paragraphs 45 and 49 of the judgment of 17 November 2021, THE ONLY ONE by alphaspirit wild and perfect (T‑616/20, not published, EU:T:2021:794), the Court emphasised that a positive assessment in respect of the enhanced distinctiveness of the earlier mark was likely to compensate for the weakened inherent distinctiveness of the earlier mark, with regard to Article 8(1)(b) of Regulation No 207/2009.

138 It is important to state at the outset that, as is clear from, inter alia, paragraphs 109 and 110 of the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), and from paragraphs 44, 45, 49 and 56 of the judgment of 17 November 2021, THE ONLY ONE by alphaspirit wild and perfect (T‑616/20, not published, EU:T:2021:794), the General Court had already ruled out a likelihood of confusion between the marks at issue, unless the Board of Appeal were able to find that the earlier mark had enhanced distinctiveness or a reputation, which, in theory, could affect the outcome of the global assessment of the likelihood of confusion. According to those judgments, the Board of Appeal was entitled to examine whether the earlier mark had enhanced distinctiveness or a reputation and also to examine what the effect might be of a finding that that mark had a reputation or enhanced distinctiveness. With the exception of those matters, the remaining findings concerning the application of Article 8(1)(b) and (5) of Regulation No 207/2009 had acquired the force of res judicata. Consequently, the Board of Appeal could not examine those matters, without exposing itself to possible criticism for flouting the principle of res judicata. That conclusion applies, in the present case, in particular to the similarity of the marks at issue.

139 By the arguments mentioned in paragraph 135 above, however, the applicant seeks to reopen the debate regarding the similarity of the signs. In the light of the fact that the General Court’s findings as regards the comparison of the signs have the force of res judicata, those arguments are ineffective.

140 In any event, the applicant’s arguments mentioned in paragraph 136 above are unfounded. It is true that, in paragraph 148 of the contested decision, the Board of Appeal stated that:

‘even if the [applicant] had proven that the earlier mark “ONE” enjoyed an enhanced level of distinctiveness to the extent of a high reputation, taking into account the low degree of phonetic similarity between the signs … the visual and conceptual differences [were] significant enough for the public … not to be misled into thinking that the identical (or similar) goods bearing the signs at issue [came] from the same undertaking or, as the case may be, from undertakings that [were] economically linked’.

141 Nevertheless, contrary to what the applicant suggests (see paragraph 136 above), the Board of Appeal’s assessment of the likelihood of confusion is correct. The Board of Appeal did indeed address the question of whether the earlier mark had acquired enhanced distinctiveness on account of use of the sign PURINA ONE, as is clear from paragraph 146 of the contested decision. Indeed, in that paragraph, the Board of Appeal noted that the applicant had not demonstrated that such enhanced distinctiveness existed. Taking that into account, the Board of Appeal found, in paragraph 147 of the contested decision, that there was no likelihood of confusion in the present case.

142 Furthermore, the reasoning set out by the Board of Appeal in paragraph 148 of the contested decision is not at odds with the findings in the judgments of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), and of 17 November 2021, THE ONLY ONE by alphaspirit wild and perfect (T‑616/20, not published, EU:T:2021:794). In those judgments, the General Court left open not only the question of whether the earlier mark had a reputation or enhanced distinctiveness, but also the question of what the effect might be of the earlier mark having a reputation or enhanced distinctiveness on the global assessment of the likelihood of confusion. The General Court in fact gave no indication as to the global assessment of the likelihood of confusion viewed from the particular perspective of the reputation or enhanced distinctiveness of the earlier mark. Moreover, failing any material specifically concerning the reputation or enhanced distinctiveness of the earlier mark in the decisions which were the subject of the actions brought before it, namely the decisions of 19 November 2018 and of 29 July 2020, the Court, which could not substitute its assessments for those of the Board of Appeal, was not in a position to offer any such indication. The Board of Appeal was therefore free to assess whether the earlier mark had a reputation or enhanced distinctiveness and what the consequences thereof would be for the likelihood of confusion.

143 In the light of the foregoing, the applicant’s arguments referred to in paragraphs 135 and 136 above and the first part of the fourth plea in law must be rejected.

The second part of the fourth plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001

144 In paragraph 92 of the application, the applicant argues that the Board of Appeal’s failure to take the necessary measures to comply with the judgment of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), also constitutes an infringement of the first sentence of Article 94(1) of Regulation 2017/1001, which requires that decisions of the Board of Appeal state the reasons on which they are based.

146 The Court finds that the arguments which the applicant puts forward in support of the second part of the fourth plea are unfounded.

147 Even if a failure on the part of a Board of Appeal of EUIPO to take the necessary measures to comply with a given judgment of the Court that has become final, which constitutes an infringement of Article 72(6) of Regulation 2017/1001, could – in addition – constitute a failure to state reasons censurable under the first sentence of Article 94(1) of that regulation, as the applicant claims, it must be observed that, in the present case, the applicant has not proven that the Board of Appeal did fail to take the necessary measures to comply with the judgments of 19 December 2019, THE ONLY ONE by alphaspirit wild and perfect (T‑40/19, not published, EU:T:2019:890), and of 17 November 2021, THE ONLY ONE by alphaspirit wild and perfect (T‑616/20, not published, EU:T:2021:794).

148 On the contrary, it is clear from the foregoing considerations that the Board of Appeal made no error when considering whether the arguments raised by the applicant in relation to the reputation of the earlier mark examined in a different form and in relation to the enhanced distinctiveness acquired through use of that mark were sufficient for its opposition against the mark applied for to succeed on the basis of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.

149 That being so, the second part of the fourth plea in law must be rejected and the action in its entirety dismissed.

150 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

151 Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs incurred before the Court, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Societe des produits Nestle v EUIPO - Amiguitos pets & life (THE ONLY ONE by alphaspirit wild and perfect) (EU trade mark - Judgment) [2024] EUECJ T-359/23 (06 November 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T35923.html Cite as: EU:T:2024:780, [2024] EUECJ T-359/23, ECLI:EU:T:2024:780

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