JUDGMENT OF THE GENERAL COURT (Second Chamber)
9 April 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community trade mark MILANÓWEK CREAM FUDGE — Earlier national figurative marks representing a cow, Original Sahne Muh-Muhs HANDGESCHNITTEN HANDGEWICKELT and SAHNE TOFFEE LUXURY CREAM FUDGE — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) and Article 76(1) of Regulation (EC) No 207/2009)
In Case T‑623/11,
Pico Food GmbH, established in Tamm (Germany), represented by M. Douglas, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs), represented by M. Vuijst and P. Geroulakos, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Bogumił Sobieraj, residing in Milanówek (Poland), represented by O. Bischof, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 8 September 2011 (Case R 553/2010-1), relating to opposition proceedings between PICO Food GmbH and Bogumił Sobieraj,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood, President, F. Dehousse (Rapporteur) and J. Schwarcz, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 30 November 2011,
having regard to the response of OHIM lodged at the Court Registry on 3 April 2012,
having regard to the response of the intervener lodged at the Court Registry on 30 March 2012,
having regard to the reply lodged at the Court Registry on 21 August 2012,
further to the hearing on 15 October 2013,
gives the following
Judgment
Background to the dispute
1 On 31 October 2007, the intervener, Mr Bogumił Sobieraj, trading under the name of Zakład Przemysłu Cukierniczego Milanówek, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
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: ‘Chocolate-covered and glazed fruit, chocolate-covered raisins, chocolate-covered and glazed hazelnuts, chocolate-covered and glazed peanuts, fruit jellies, candy for food, pastry and confectionery, in particular candy for food, caramels (candy), pralines, chocolate, chocolates, chocolate-glazed confectionery, chocolate bars, wafers, pastry, chocolate-glazed pastry’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 22/2008 of 2 June 2008.
5 On 2 September 2008, the applicant, Pico Food GmbH, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based inter alia on the following figurative marks (together ‘the earlier marks’) registered in Germany:
– the figurative mark, filed on 14 April and registered on 30 May 2005 under the number 30522224 (‘the first earlier mark’), represented below:
– the figurative mark, filed on 20 April and registered on 8 June 2005 under the number 30523439 (‘the second earlier mark’), represented below:
– the figurative mark, filed on 10 January and registered on 5 February 2007 under the number 30700574 (‘the third earlier mark’), represented below:
7 The earlier marks were registered in respect of, inter alia, goods in Class 30 corresponding to the following description: ‘chocolate bars, chocolate products; sweets, drops, toffees, in particular made by using milk, cream and/or butter’. The applicant restricted its opposition to those goods.
8 The opposition was also based on other earlier marks registered in Germany which are similar to the second earlier mark although they include different motifs or additional word elements.
9 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
10 By decision of 12 February 2010, the Opposition Division rejected the opposition brought by the applicant.
11 On 9 April 2010, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
12 By decision of 8 September 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It found, in essence, that the differences between the signs at issue were sufficient to avoid any likelihood of confusion in the present case, in spite of the identity of the goods at issue and the reputation which the first and second earlier marks might have. That finding applies a fortiori to the other marks relied on in support of the opposition, which differ even more from the mark applied for.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
14 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
15 The applicant relies on two pleas in law in support of its action. The first plea alleges infringement of Article 76(1) of Regulation No 207/2009. The second alleges infringement of Article 8(1)(b) of Regulation No 207/2009.
The first plea, alleging infringement of Article 76(1) of Regulation No 207/2009
16 The applicant disputes the Board of Appeal’s finding, set out in paragraph 27 of the contested decision, that consumers in the European Union, ‘including Germany’, are accustomed to encountering a number of ‘cow’ marks and will therefore pay less attention to that element. To arrive at that conclusion, the Board of Appeal referred to about 30 Community trade marks which were relied on by the intervener and contain a representation of a cow for goods in Class 30. According to the applicant, the evidence which the intervener put forward during the proceedings does not prove that the marks referred to in the contested decision are in use for the goods at issue in the relevant territory, namely Germany. The Board of Appeal’s assumption is therefore incorrect. The applicant adds, at the stage of the reply, that the Board of Appeal’s argument that the goods concerned are mainly made from milk is incorrect and is not based on any evidence.
17 OHIM and the intervener dispute the applicant’s arguments.
18 Article 76(1) of Regulation No 207/2009 provides that, in proceedings relating to relative grounds for refusal of registration of a mark, such as that at issue in the present case, OHIM is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.
19 Thus the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal on which the party concerned has relied and the related facts and evidence which the parties have presented (see Case T‑185/02 Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 28 and the case-law cited). That does not, however, preclude the Board of Appeal from, inter alia, taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known (PICARO, paragraph 29) or from examining a matter of law even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of the relevant legislative provisions (see, to that effect, Case T‑57/03 SPAG v OHIM — Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraphs 21, 32 and 33).
20 In the present case, as is apparent from the file, the intervener provided OHIM with documents relating to more than thirty or so marks entered in the register of Community trade marks for goods in Class 30, which contained a representation of a cow. The applicant itself stated, in its observations to OHIM, that the intervener was thus claiming that the representation of a cow had a weak distinctive character. Consequently, there is nothing to permit the inference that, in the present case, the examination carried out by the Board of Appeal in that regard was not restricted to the facts, evidence and arguments provided by the parties and the relief sought.
21 The fact that the applicant does not share the conclusions which the Board of Appeal drew from the examination of the facts relied on by the intervener is a substantive issue which cannot be put forward within the context of the examination of a plea alleging infringement of Article 76 of Regulation No 207/2009 (see, to that effect, judgment of 30 May 2013 in Case T‑218/10 DHL International v OHIM — Service Point Solutions (SERVICEPOINT), not published in the ECR, paragraph 66).
22 Furthermore, it must be pointed out that the Board of Appeal’s reference to the marks referred to in paragraph 20 above was an addition to the argument, set out in paragraph 26 of the contested decision, that the representation of a cow alludes to the goods concerned. That argument cannot be called into question by the first plea put forward by the applicant.
23 The Board of Appeal’s finding that the goods at issue are likely to be made from milk or milk products is the result of a straightforward examination of those goods, which are part of the applications submitted by the parties and the facts available to the Board of Appeal. Consequently, without there being any need to rule on the belated nature of the arguments put forward by the applicant in this respect, it cannot be held that there has been any infringement of Article 76(1) of Regulation No 207/2009 as regards that finding. As has been previously stated, the fact that the applicant does not share the conclusions which the Board of Appeal drew from the examination of the facts in this case is a substantive issue which cannot be put forward within the context of a plea alleging infringement of Article 76(1) of Regulation No 207/2009.
24 It follows from the foregoing that the first plea put forward by the applicant must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
25 First, the applicant submits that the Board of Appeal erred in finding that the vertical stripes in the earlier marks are grey. It submits that it has been acknowledged by the General Court that if a trade mark is registered in black and white it covers all the colour combinations which are included in the graphic representation. Consequently, in the present case, the signs at issue are based on identical colours. The visual similarity of those signs is therefore greater than the Board of Appeal found it to be. Furthermore, the figurative elements representing a cow in the signs at issue are highly similar. The Board of Appeal gave too much importance to the word elements of those signs. Secondly, the applicant states that, in view of the way in which the goods concerned are marketed, visual similarity is of greater importance in the present case and that the relevant public’s level of attention is below average. Thirdly, the Board of Appeal did not take into account the evidence which the applicant put forward to show that the earlier marks had acquired distinctive character through use. Fourthly, the applicant submits that the Board of Appeal did not take into consideration a decision of a German court relating to the same signs as those at issue in the present case. Fifthly, the applicant disputes, at the stage of the reply, the Board of Appeal’s finding that the representation of a cow is descriptive of the goods covered by the earlier marks and, in particular, of ‘sweets, drops, toffees’.
26 OHIM and the intervener dispute the applicant’s arguments.
27 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
28 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 economicallylinked 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 the 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 Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited). 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 (Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48, and Case T‑6/01 Matratzen Concord v OHIM — Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 25).
29 Furthermore, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 8 December 2011 in Case T‑586/10 Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy), not published in the ECR, paragraph 20 and the case-law cited).
30 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed, and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in his imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case T‑104/01 Oberhauser v OHIM — Petit Liberto(Fifties) [2002] ECR II‑4359, paragraph 28, and Case T‑186/02 BMI Bertollo v OHIM — Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 38).
31 In addition, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either inherently or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. The distinctive character of the earlier trade mark and, in particular, its reputation, must therefore be taken into account when assessing whether a likelihood of confusion exists (see judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraphs 32 and 33 and the case-law cited, and judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHIM — Allergan (BOTUMAX), not published in the ECR, paragraph 67).
32 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.
33 In the present case, the earlier marks are trade marks registered in Germany. Consequently, as the Board of Appeal found in paragraph 14 of the contested decision, the relevant territory is Germany, a finding which the applicant does not dispute.
34 Furthermore, as the Board of Appeal pointed out in paragraph 15 of the contested decision, the goods at issue are everyday consumer goods. Consequently, the relevant public consists of average, reasonably well informed and reasonably observant and circumspect consumers. In that regard, the applicant’s arguments that the relevant public’s level of attention is far below average must be rejected. The applicant states that the earlier marks are used for sweets and that, in that context, purchases made by consumers are impulse purchases. It must be pointed out that the signs at issue cover goods other than sweets. The applicant’s remark cannot therefore relate to all the goods covered by the signs at issue. What is more, even if a consumer were to make an impulse purchase of sweets in certain circumstances, there is nothing to suggest that that would be the case as a matter of course. Lastly, the mere fact that the relevant public makes an impulse purchase does not, however, mean that that public’s level of attention is lower than that of an average consumer.
35 In the first place, as regards the similarity of the goods concerned, it is clear that, as the Board of Appeal correctly stated in paragraph 17 of the contested decision, without being contradicted on this point by the applicant, the goods in Class 30 covered by the trade mark application and by the earlier marks are identical.
36 In the second place, as regards the similarity of the signs at issue, it must be borne in mind that assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
37 First, at the visual level, it is necessary to reject the applicant’s arguments that the registration of a mark ‘in black and white’ covers ‘all colour combinations which are enclosed within the graphic representation’ and that, ‘[t]herefore, the [applicant] can claim protection for any combination of vertical stripes consisting of white and colour stripes, regarding whether the colour stripes are black, orange or yellow’. From those arguments the applicant draws the conclusion that the ‘marks [at issue] must be regarded as being covering the same colours’.
38 No evidence has been place on the file to suggest that the earlier marks designated a specific colour when they were registered and the applicant confirmed that at the hearing. In that regard, the fact that a mark is registered in colour or, on the contrary, does not designate any specific colour cannot be regarded as a wholly negligible element in the eyes of consumers (see, to that effect, Case C‑252/12 Specsavers International Healthcare and Others [2013] ECR, paragraph 37; see also, to that effect, judgment of 17 January 2012 in Case T‑522/10 Hell Energy Magyarország v OHIM — Hansa Mineralbrunnen (HELL), not published in the ECR, paragraphs 49 and 50, and judgment of 24 January 2012 in Case T‑593/10 El Corte Inglés v OHIM — Ruan (B), not published in the ECR, paragraph 29). It must also be borne in mind that the comparison must be made between the signs as they were registered or as they appear in the application for registration (Case T‑29/04 Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 57).
39 The judgment of 18 June 2009 in Case T‑418/07 LIBRO v OHIM — Causley (LiBRO), not published in the ECR, which the applicant refers to in the reply and in which it is stated that ‘[the protection of an] earlier mark [which] does not designate any specific colour … also extends to combinations of colours’ (paragraph 65), may be interpreted as meaning that if a Community trade mark is not registered in a specific colour, the proprietor of the mark may use it in a colour or a combination of colours and obtain for it, as the case may be, protection under the relevant applicable provisions, in particular if that colour or combination of colours has become, in the mind of a significant portion of the public, that associated with that earlier mark through the use which its proprietor has made of it (see, to that effect, Specsavers International Healthcare and Others, cited at paragraph 38 above, paragraph 41). That does not, however, mean, contrary to what the applicant maintains in its written pleadings, that the registration of a mark which does not designate any specific colour covers ‘all colour combinations which are enclosed within the graphic representation’.
40 Consequently, the Board of Appeal did not err in finding, in the present case, that one difference between the mark applied for and the first and second earlier marks lay in the fact that the mark applied for consisted, in part, of a yellow background with white vertical stripes. Furthermore, the stripes in the first and second earlier marks are arranged vertically, but one of them is also arranged horizontally as was correctly pointed out by the Board of Appeal. In this respect, there are also significant differences between the third earlier mark and the mark applied for as the third earlier mark contains only four vertical stripes, two of which are placed at either side of the figurative element of the sign concerned.
41 Moreover, it must be pointed out that the signs at issue also differ visually inasmuch as the mark applied for contains two frames, one containing the figurative representation of a cow and the other containing the word elements ‘zpc ® milanówek’. The frame containing the figurative representation of a cow differs in shape from the frames used in the earlier marks. It also has four ornaments as was correctly stated by the Board of Appeal. The frame containing the word elements ‘zpc ® milanówek’ is superimposed on the frame containing the figurative representation of a cow. The visual perception of the frame containing the word elements ‘zpc ® milanówek’ is therefore enhanced as a result.
42 In addition, the signs at issue differ inasmuch as the mark applied for contains the word elements ‘milanówek’, ‘zpc ® milanówek’ and ‘cream fudge’, which are not used in the earlier marks, with the exception of the expression ‘cream fudge’ in the third earlier mark. It must be borne in mind in that regard that, where a trade mark consists of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing the name than by describing the figurative element of the trade mark (see judgment of 2 February 2011 in Case T‑437/09 Oyster Cosmetics v OHIM — Kadabell (Oyster cosmetics), not published in the ECR, paragraph 36 and the case-law cited). As regards the expression ‘cream fudge’, which is also used in the third earlier mark, it must be stated that there are also significant visual differences between that mark and the mark applied for, as was pointed out in paragraph 40 above. It also contains other word elements which are not used in the mark applied for, namely the expression ‘sahne toffee’ and the word ‘luxury’.
43 Lastly, it is, admittedly, true that there is a certain visual similarity between the signs at issue on account of the presence in all of them of a figurative element representing a cow. In that regard, it must be stated, as was observed by the Board of Appeal, that there are slight differences between the representation of the cow in the signs at issue, even though, as the applicant submits, in essence, in its written pleadings, and without there being any need to rule on the admissibility of the facts which it put forward in that regard, the slight differences between the figurative elements in question are not capable of altering the fact that consumers will remember the image of a cow (see, to that effect, judgment of 18 May 2011 in Case T‑376/09 Glenton España v OHIM — Polo/Lauren (POLO SANTA MARIA), not published in the ECR, paragraph 33).
44 However, as the Board of Appeal correctly pointed out in paragraph 26 of the contested decision, in the present case the representation of a cow has an allusive character in relation to the goods at issue. In the present case, that element therefore has a weak distinctive character. The applicant disputes, at the stage of the reply, the Board of Appeal’s finding in this respect, in particular as regards the ‘sweets, drops, toffees’ covered by the earlier marks. Without there being any need to rule on the belated nature of the argument put forward by the applicant, it must be held that that argument is unfounded. As regards the goods covered by the trade mark application, the applicant has not put forward any specific argument capable of calling the Board of Appeal’s finding into question. As regards the goods covered by the earlier marks, which are more specifically the subject-matter of the applicant’s arguments, in addition to the fact that chocolate bars and chocolate products may be made by using milk or milk products, the description of the goods covered by those marks contains, specifically as regards the sweets, drops and toffees highlighted by the applicant in its written pleadings, the following information: ‘in particular made by using milk, cream and/or butter’. It follows that, contrary to what the applicant submits, in essence, in its written pleadings, the sweets, drops and toffees covered by the earlier mark may be made by using milk or milk products. That assessment is moreover borne out by a sworn declaration provided as an Annex to the application, in which it is stated that the toffees made by the applicant contain cream, butter and milk. Consequently, the Board of Appeal did not err in that regard. In the light of this finding, it is not necessary to ascertain whether the Board of Appeal erred in finding, on the basis of the evidence which the intervener put forward before OHIM, that consumers in the European Union, including Germany, are accustomed to encountering marks containing the representation of a cow in respect of goods in Class 30. Even if the Board of Appeal had erred in that regard, that would not affect the finding that, in the present case, the representation of a cow has an allusive character in relation to the goods at issue.
45 The applicant’s reference to a decision of the Opposition Division of OHIM relating to another sign including the representation of a cow cannot call into question the Board of Appeal’s finding in the present case. Without there being any need to rule on OHIM’s arguments seeking to have that argument declared inadmissible, it must be pointed out that decisions concerning the registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. The lawfulness of decisions of the Boards of Appeal must therefore be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of those boards (Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraph 65, and judgment of 2 May 2012 in Case T‑435/11 Universal Display v OHIM (UniversalPHOLED), not published in the ECR, paragraph 37). Moreover, if by its arguments the applicant is in fact relying on a breach of the principles of equal treatment and of sound administration, it must be recalled that compliance with those principles must be consistent with compliance with the principle of legality (Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraph 75). For reasons of legal certainty and sound administration, every application for registration must be the subject of a stringent and full examination, which must be undertaken in each individual case (Agencja Wydawnicza Technopol v OHIM, paragraph 77). In the present case, it must be pointed out that the graphic representation of the cow in the precedent relied on by the applicant is significantly different from that in the present case. Furthermore, the specific features connected with the graphic representation of that cow meant that the Opposition Division was able to conclude that, in that case, that figurative element had an undeniably distinctive character. In the present case, it is sufficient to state that the figurative elements representing a cow do not contain any specific features which make it possible to confer on them a distinctive character which is undeniable or capable of attenuating the fact that those elements have an allusive character in relation to the goods at issue.
46 In view of all of those considerations, the Board of Appeal did not err in finding, in essence, that, even although the signs at issue shared a certain similarity having regard in particular to the presence of a figurative element representing a cow, those signs contained significant visual differences.
47 Secondly, on the phonetic level, the Board of Appeal was right to state that the mark applied for did not have any word elements in common with the first and second earlier marks. Concerning the third earlier mark, the Board of Appeal correctly stated that it had only the expression ‘cream fudge’ in common with the mark applied for, but that it differed from that mark inasmuch as it contained other word elements which are not included in the mark applied for, namely the expression ‘sahne toffee’ and the word ‘luxury’. Similarly, the mark applied for contains word elements which are not used in the third earlier mark, namely ‘milanówek’ and ‘zpc ® milanówek’. The applicant does not dispute the Board of Appeal’s findings in that regard. The applicant, however, submits that, inasmuch as the first earlier mark does not contain any word elements, any phonetic comparison is impossible. It is sufficient to state that there is a phonetic difference resulting, at the very least, from the fact that the mark which is the subject-matter of the application for registration may be expressed orally by pronouncing its word elements. Furthermore, even if no phonetic comparison were possible, that would not make it possible to conclude that the two marks at issue have similarities in that regard.
48 Thirdly, on the conceptual level, the Board of Appeal, after reiterating that the signs at issue have a figurative element representing a cow in common, correctly stated that the mark applied for in addition contains the word element ‘milanówek’, which is reproduced twice, once in a distinctly visible manner. As was stated by the Board of Appeal, that element is the name of a town in Poland. The relevant public will therefore either know the name of that town or consider that word element to be an invented term. In those circumstances, there is nothing to permit the inference that the Board of Appeal erred in finding that the similarities between the signs at issue were not sufficient to conclude that there was a conceptual similarity. The applicant does not dispute the Board of Appeal’s finding in that regard. The applicant, however, submits, at the stage of the reply, that, inasmuch as the first earlier mark does not contain any word elements, any conceptual comparison is impossible. Without it being necessary to rule on the belated nature of the argument put forward by the applicant in that regard, that argument is manifestly unfounded since a figurative mark may have a conceptual meaning for the relevant public even if it does not include any word elements.
49 In the third place, as regards the likelihood of confusion, it must be pointed out, first of all that, contrary to what OHIM submits, in essence, in its written pleadings, the Board of Appeal did not find that the signs at issue were different overall, since it carried out, in paragraphs 35 to 37 of the contested decision, an assessment of the likelihood of confusion.
50 Secondly, it must be borne in mind that, as has just been established, the signs at issue contain significant differences. In that regard, even if, as the applicant submits, visual similarity were of greater importance in the present case, in view of the way in which the goods concerned are marketed, that would have no effect on the fact, stated previously, that the signs at issue exhibit significant visual differences.
51 Consequently, even if, as the applicant submits, the earlier marks possess an enhanced degree of distinctiveness through use in the relevant territory, the Board of Appeal did not err in finding, in the present case, that there was no likelihood of confusion on the part of the relevant public, in spite of the identity of the goods at issue. It must be pointed out that, contrary to what the applicant submits in its written pleadings, the Board of Appeal did indeed take into account the fact that the earlier marks could, as the case may be, have acquired an enhanced degree of distinctiveness through use in the relevant territory. The Board of Appeal however found, correctly, as has just been held, that if that were the case it would not lead to the conclusion that there is a likelihood of confusion in the present case. In that regard, it must be pointed out that, contrary to what the applicant seems to suggest in its written pleadings, there is a difference between finding, in the course of the comparison of the signs, that one of the elements of which a composite mark consists has a weak distinctive character and finding, in the course of the global assessment of the likelihood of confusion, that an earlier mark possesses or does not possess an enhanced degree of distinctiveness through use.
52 Lastly, the Board of Appeal did not err in finding that there was also no likelihood of confusion with the other earlier national marks relied on in support of the opposition since they differ even more from the mark applied for.
53 The other arguments put forward by the applicant cannot call that finding into question.
54 In particular, as regards the fact that a national German court delivered a decision relating to the same signs at issue and the Board of Appeal did not take it into consideration, it is sufficient to point out that the Community trade mark system is autonomous and that, accordingly, OHIM is not bound by national registrations (see, to that effect, Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915, paragraph 35, and judgment of 12 December 2007 in Case T‑117/06 DeTeMedien v OHIM (suchen.de), not published in the ECR, paragraph 45 and the case-law cited). Furthermore, the applicant itself pointed out, in its statement of grounds to the Board of Appeal, that OHIM was not bound by the decision in question. The applicant simply stated that that decision constituted an indication of the existence of a likelihood of confusion in the present case. Furthermore, it is apparent from the contested decision as a whole that the Board of Appeal adopted the analysis of the Opposition Division. The Opposition Division had already found, relying specifically on the judgment in Mehr für Ihr Geld, that OHIM was not bound by the decision in question. Having regard to all of those considerations, the Board of Appeal cannot be criticised for not expressly referring to the decision in question in the contested decision.
55 In view of all of those considerations, the second plea put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
56 Under Article 87(2) 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.
57 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Pico Food GmbH to pay the costs.
Delivered in open court in Luxembourg on 9 April 2014.
[Signatures]