Perfetti Van Melle Benelux v EUIPO - PepsiCo (3D) (Judgment) [2016] EUECJ T-390/15 (13 September 2016)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark 3D — Earlier EU word and figurative marks 3D’S and 3D’s — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No (EC) No 207/2009)

Perfetti Van Melle Benelux BV, established in Breda (Netherlands), represented by P. Testa, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and A. Folliard-Monguiral, acting as Agents,

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

PepsiCo, Inc., established in New York, New York (United States), represented by V. von Bomhard and J. Fuhrmann, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 May 2015 (Case R 465/2014-5), relating to opposition proceedings between PepsiCo and Perfetti Van Melle Benelux,

composed of S. Papasavvas, President, E. Bieliūnas (Rapporteur) and C. Iliopoulos, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 23 September 2015,

having regard to the response of the intervener lodged at the Court Registry on 22 October 2015,

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

1 On 17 September 2010, Perfetti Van Melle Benelux BV, the applicant, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was requested 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: ‘sugar; pastry; confectionery; candies; chew candies; drops;
gumdrops; caramel; chewing gum; bubble gums; lollipops; licorice; jellies (confectionery); toffee; mints; sweets; chocolate; cocoa’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 199/2010 of 22 October 2010.

5 On 24 January 2011, the intervener, PepsiCo, Inc., 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 3 above.

6 The opposition was based on the following earlier EU trade marks, all covering goods in Classes 29 and 30:

– the earlier EU word mark 3D’S, registered on 21 January 2004 under number 2931111;

– the earlier EU figurative mark 3D’s, registered on 7 February 2005 under number 3406196, reproduced below:

– the earlier EU figurative mark 3D’S, registered on 11 June 2001 under number 1289834, reproduced below:

7 Amongst the goods in Class 30 covered by the earlier EU marks, and relevant for the purposes of the present proceedings, are ‘preparations made from cereals’.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and (5) of Regulation No 207/2009.

9 On 29 September 2011, the applicant requested the intervener to provide proof of genuine use of the earlier EU trade marks. On 17 February 2012, the intervener requested that the evidence previously sent as proof of the reputation of its trade marks be taken into account as proof of use.

10 On 22 January 2014, the Opposition Division partially upheld the opposition. In the first place, it stated that the genuine use of the earlier EU trade marks had only been shown in respect of ‘cereal chips’ which can be considered to be an objective sub-category of ‘preparations made from cereals’ in Class 30. The Opposition Division, therefore, upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009 for the goods ‘chocolate; pastry; confectionery; candies; chew candies; drops; gumdrops; caramel; chewing gum; bubble gums; lollipops; licorice; jellies (confectionery); toffee; mints; sweets’ in Class 30 and covered by the mark applied for (‘the goods at issue’), with the exception of sugar and cocoa, also in that class. In the second place, it considered that the intervener had not shown that its earlier EU trade marks enjoyed a reputation in the European Union and, therefore, rejected the opposition based on Article 8(5) of Regulation No 207/2009.

11 On 10 February 2014, the applicant filed an appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

12 By decision of 8 May 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it endorsed the findings of the Opposition Decision concerning the proof of genuine use of the earlier EU trade marks and it found that there was a likelihood of confusion between the signs at issue for the goods at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

– annul the contested decision and grant the application for registration of an EU trade mark for the goods at issue;

15 The intervener submits that the application is partially inadmissible in that it does not contain any express pleas in law or at least in so far as the applicant may have had the intention to raise pleas in law alleging infringement of any provision of Regulation No 207/2009 other than Article 8(1)(b) of that regulation.

16 It must be borne in mind that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, the application must contain a brief statement of the pleas in law on which it is based. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (see judgment of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 27, and of 3 December 2014, Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, EU:T:2014:1020, paragraphs 17 and 18).

17 It is clear from the application that the plea advanced by the applicant in support of its action is a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In that regard, the summary of the applicant’s arguments was sufficiently clear to enable EUIPO and the intervener to prepare their defence, as is apparent from their respective responses, and to enable the Court to rule on the present action.

18 Therefore, the present action is admissible and must be examined as to its substance.

19 In the annex to the application, the applicant produced excerpts from an English-French and an English-Spanish online dictionary, results of a search using the Google search engine and an excerpt from the website of the European Snacks Association (ESA) in order to show that the description ‘chips’ refers to salty snacks only. It also produced extracts from the intervener’s website to underline that the earlier EU trade marks were used for salty ‘cereal chips’ only. Furthermore, the applicant produced excerpts from the websites of large retail distributors and a selection of photographs in order to show that the goods at issue and the goods covered by the earlier EU trade marks are sold separately. In addition, it annexed various excerpts from ESA’s website and a website listing the world’s 25 largest producers of confectionery in support of its contention that the goods at issue are not made by the same undertakings. Moreover, the applicant annexed various documents concerning opposition proceedings which referred to the earlier EU word mark 3D’S and which allegedly showed that the intervener had not considered that the goods at issue were similar. In addition, to support its claim that the element ‘3d’ is descriptive of a characteristic of the goods at issue, the applicant put forward the results of research on the internet concerning machines designed to produce snacks in three-dimensional shapes and of other results concerning snacks in a three-dimensional shape. Lastly, the applicant supplied a list of marks registered at EUIPO including the element ‘3d’ and photographs of the goods marketed by the intervener in order to show that the intervener habitually used marks including the element ‘’s’.

20 As for the intervener, it reproduced, in its response, pictures of packets of traditional crisps made from potatoes or multigrains covered in sugar or chocolate in order to show that those goods are not necessarily salty but can be sweet.

21 However, none of those documents, produced for the first time before the Court by both the applicant and the intervener, can be taken into consideration for the purposes of the Court’s assessment of the validity of the contested decision. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHMI — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

22 By contrast, the Examiner’s decision of 7 March 2011 in which registration of the mark med3D was refused, relied on by the applicant although it was produced for the first time before the Court, is not, strictly speaking, evidence. Rather, it relates to EUIPO’s practice in reaching decisions, to which, even after the procedure before EUIPO is complete, a party has the right to refer (judgments of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 20, and of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 16). Consequently, the claim that that annex is inadmissible must be rejected.

23 In support of its action, the applicant puts forward, in essence, a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

24 First, the applicant maintains that the Board of Appeal wrongly considered that the goods at issue, covered by the mark applied for, and ‘cereal chips’, covered by the earlier EU trade marks, had a slightly lower than average degree of similarity. Secondly, the Board of Appeal wrongly held that the earlier EU marks were distinctive to an average degree. Thirdly, the applicant maintains that the signs at issue are not similar. Fourthly and lastly, the applicant considers that in the present case there is no likelihood of confusion.

25 The applicant also refers in its application to the absence of genuine use of the earlier EU word mark 3D’S.

26 EUIPO and the intervener claim, in essence, that the Board of Appeal correctly concluded that there was a likelihood of confusion.

27 As for the applicant’s complaint alleging an absence of genuine use of the earlier EU word mark 3D’S, EUIPO and the intervener maintain that it must be rejected as inadmissible in so far as the applicant has not advanced any specific arguments on that point.

28 It is necessary, before examining the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009, to determine the admissibility of that plea.

29 In that regard, it must be noted, as have EUIPO and the intervener, that the applicant simply makes general statements, without raising or setting out pleas in law with sufficient clarity and precision to allow the defendant and the intervener to prepare their defence and the Court to rule on that point. Consequently, the complaint alleging absence of genuine use of the earlier EU word mark 3D’S is inadmissible in accordance with the case-law referred to in paragraph 16 above.

30 In any event, as the Board of Appeal noted in paragraph 19 of the contested decision, the applicant, at the time of the action before the Board, put forward no arguments to dispute the decision of the Opposition Division in so far as it found genuine use of the earlier EU trade marks relied on in support of the opposition to ‘cereal chips’.

31 Under Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. It follows that, in relation to a relative ground for refusal of registration, elements of law and of fact which are pleaded before the Court without having previously been raised before the Board of Appeal cannot affect the legality of a decision of that Board (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 54 and judgment of 17 March 2010, Mäurer + Wirtz v OHIM — Exportaciones Aceiteras Fedeoliva (tosca de FEDEOLIVA), T‑63/07, EU:T:2010:94, paragraph 22).

32 It follows that, in the review of the legality of decisions of the Boards of Appeal for which the Court has jurisdiction under Article 65 of Regulation No 207/2009, elements of fact and of law which are pleaded before the Court without having previously been raised before the adjudicating bodies of EUIPO cannot be examined for the purpose of assessing the legality of the decision of the Board of Appeal and must therefore be declared inadmissible (see judgment of 17 March 2010, tosca de Fedeoliva, T‑63/07, EU:T:2010:94, paragraph 23 and the case-law cited).

33 Since the applicant did not put forward any arguments, in support of its appeal before the Board of Appeal, to dispute the merits of the Opposition’s Division decision concerning proof of genuine use of the earlier EU trade marks and, in particular, of the earlier EU word mark 3D’S for ‘cereal chips’, it is appropriate for that reason also to reject that complaint as inadmissible.

34 Concerning the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009, it should be recalled that, pursuant to that article, upon opposition by the proprietor of an earlier EU trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier EU trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier EU trade mark.

35 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services identified (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

36 For the purposes of the application of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (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).

37 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. 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 (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

38 Moreover, it must be recalled that, where the protection of the earlier EU trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, in order to refuse registration of an EU trade mark, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

39 The Board of Appeal considered that, as the goods at issue in the present case were food products, mostly inexpensive items, the attention level of the public concerned is expected to be average at most and indeed relatively low (paragraphs 17 and 40 of the contested decision). It added, in essence, that since the use of the earlier EU trade marks was proved in Spain and France, the relevant public is that located within the territory of those Member States (paragraph 18 of the contested decision).

40 Since those considerations are free from error they must be upheld. Moreover, they have not been called into question by the parties.

41 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

42 The Board of Appeal stated, firstly, that sugar can be a common ingredient in the goods at issue and in ‘cereal chips’ (paragraph 24 of the contested decision), secondly, that the goods at issue have the same purpose, namely that they are consumed occasionally as snacks between main meals and satisfy a certain urge or craving for food with a certain taste (paragraph 25 of the contested decision), thirdly, that they can be produced by the same undertakings and share the same distribution channels (paragraph 26 of the contested decision) and, fourthly, that they are in competition with each other, since an immediate energy need might be satisfied by any type of sweet, sour or salty snack depending on the consumer’s taste (paragraph 27 of the contested decision). The Board of Appeal concluded that the goods at issue and ‘cereal chips’ are similar to a slightly lower than average degree (paragraph 28 of the contested decision).

43 The applicant maintains that the conclusions of the Board of Appeal are incorrect and are not supported by any evidence. Furthermore, according to the applicant, ‘cereal chips’, covered by the earlier EU trade marks, are salty snacks only, do not serve the same purpose as ‘sweets’ covered by the mark applied for and are sold separately from those goods. In addition, it is unjustified to claim that the goods at issue are made by the same undertakings or, a fortiori, that they can be marketed under the same trade mark. Lastly, contrary to the Board of Appeal’s assertions, the goods at issue and ‘cereal chips’ are not in competition.

44 Moreover, the fact that the intervener limited the list of goods covered by the earlier EU word mark 3D’S following opposition proceedings concerning the registration of that trade mark so that ‘pastry and confectionery; [and] ices’ in Class 30 were removed from that list, shows that, for the intervener, those goods are not similar to ‘cereal chips’.

46 Concerning, first of all, the nature of the goods at issue, it must be held that these are food products. Furthermore, concerning the nature of ‘cereal chips’, it must be noted, first, that even taking the view that in France and Spain the word ‘chips’ refers normally to slices of fried potato, as the applicant maintains, in the present case that is not the case since it is specified that those chips are cereal-based. Secondly, it is not apparent from the description of ‘preparations made from cereals’ in Class 30 and covered by the earlier EU trade marks, the category to which ‘cereal chips’ belong, that that description relates to salty goods only. Therefore it must be acknowledged that the ‘cereal chips’ at issue in the present case can be both sweet and salty and therefore that sugar can be a common ingredient in the goods at issue, as the Board of Appeal stated.

47 In that regard, the applicant’s argument that the intervener has shown a genuine use of the earlier EU trade marks only for salty ‘cereal chips’ must be rejected. First, that argument is a mere assertion and is not based on any evidence that the Court is capable of taking into account. Secondly, in so far as that argument is to be interpreted as challenging the Opposition Division’s conclusion which accepted the genuine use of the earlier EU trade marks without making a distinction between salty and sweet ‘cereal chips’, it must be rejected as inadmissible in accordance with the case-law referred to in paragraphs 31 and 32 above.

48 The fact that the goods at issue can share a common ingredient, namely sugar, is not, however, sufficient to conclude that the nature of all the goods at issue and that of ‘cereal chips’, both salty and sweet, is the same. The other ingredients of the goods at issue must, therefore, be taken into consideration. In that regard, it should be noted that ‘chocolates; pastry; confectionery’ can be made from the same ingredients as ‘cereal chips’ and, therefore, be the same in nature as, or similar to, sweet ‘cereal chips’ and very slightly similar to salty ‘cereal chips’. On the other hand, that is unlikely to be the case as regards ‘candies; chew candies; drops; gumdrops; caramel; chewing gum; bubble gum; lollipops; licorice; jellies (confectionery); toffee; mints [and] sweets’, even in relation to sweet ‘cereal chips’.

49 Next, as regards the intended purpose of the goods at issue, the Board of Appeal was correct in finding that they could serve as snacks consumed between main meals to satisfy a certain urge or craving for a certain taste. In that regard, while the applicant disagrees that they could have the same purpose, it does not explain what is the particular purpose of the goods at issue, on the one hand, and of ‘cereal chips’, on the other hand, and furthermore accepts that they can both be used as snacks.

50 Nevertheless, the Court has already held that, even if the goods at issue can have as their main purpose the satisfaction of a craving for a treat, the satisfaction of such a craving can vary according to whether it is a particular craving to eat something sweet or to eat something salty, a craving just for a salty food treat not being capable of being satisfied by the consumption of sweet foods and vice versa (judgment of 15 December 2006, Ferrero Deutschland v OHIM — Cornu (FERRO), T‑310/04, not published, EU:T:2006:403, paragraphs 81 and 82).

51 Therefore, while the goods at issue and sweet ‘cereal chips’ have the same purpose in so far as they are intended to serve as sweet snacks, the same is not true of the goods at issue and salty ‘cereal chips’.

52 Furthermore, concerning the distribution channels for the goods at issue, the Court upholds the Board of Appeal’s finding that they can be offered for sale next to each other in vending machines, on kiosk shelves, in small shops, cafeterias and other similar locations, is regardless of the sweet or salty taste of the ‘cereal chips’. The fact that the goods at issue and ‘cereal chips’ are not found on the same shelves in supermarkets, as the applicant maintains, cannot, even if it were accepted, call that finding into question.

53 In addition, as regards the manufacture of the goods at issue, it must be found, as did the Board of Appeal, that they can be produced by the same undertakings, in particular if the ‘cereal chips’ in question are sweet. In that regard, the applicant has adduced no evidence which could effectively call that finding into question.

54 Lastly, concerning whether the goods at issue are in competition with each other, it must be stated that the consumer wishing to satisfy an immediate need for energy can make his choice between those various snacks which are consumed occasionally between main meals. Nevertheless, the goods at issue and salty ‘cereal chips’ cannot be regarded as interchangeable (see, to that effect, judgment of 15 December 2006, FERRO, T‑310/04, not published, EU:T:2006:403, paragraph 82). Therefore, competition exists only between the goods at issue and sweet ‘cereal chips’.

55 Moreover, the applicant’s argument concerning the restriction of the list of goods for the earlier EU word mark 3D’S, referred to in paragraph 44 above, must be rejected as ineffective. The comparison of the goods and services must be carried out, as has been noted at paragraph 41 above, by taking into account the factors which characterise the relationship between them. The intervener’s conduct in opposition proceedings cannot have an influence on the relationship which exists between the goods at issue and ‘cereal chips’.

56 It follows from all the foregoing considerations that the goods at issue and sweet ‘cereal chips’ show significant similarities in that they share the same intended purpose, the same distribution channels, can be manufactured by the same undertakings and are in competition with each other. Thus, even in the case of goods at issue which are not the same in nature as sweet ‘cereal chips’, an at least average degree of similarity must be recognised. Concerning the goods at issue and salty ‘cereal chips’, having regard to their overall differences, their different intended purpose, their different manufacture and the fact that they are not in competition, but having regard to the fact that they share the same distribution channels, a low degree of similarity must be found.

57 Therefore, it must be held that the Board of Appeal was right to find that, taken as a whole, ‘cereal chips’ and the goods at issue are similar to a slightly lower than average degree.

58 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, 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 assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

59 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42 and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, such that all the other components of the mark are negligible in the overall impression which it creates (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06, EU:C:2007:539, paragraph 43).

60 The Board of Appeal considered that visually all the signs at issue had the element ‘3d’ in common, which is also their dominant element, so that the degree of visual similarity was higher than average (paragraph 32 of the contested decision). It added that phonetically, notwithstanding the rules of French, Spanish and possibly English pronunciation, only slight differences appear at the end of the signs, which led it to accept that there was a high degree of phonetic similarity (paragraph 33 of the contested decision). Finally, conceptually, the Board of Appeal found that the element ‘3d’ means ‘three-dimensional; the quality of being three-dimensional’, a concept known by the public in the whole of the European Union and that, therefore, the signs at issue convey the same concept (paragraph 34 of the contested decision). Consequently, the Board of Appeal concluded that overall the signs at issue were highly similar (paragraph 35 of the contested decision).

61 The applicant maintains that the Board of Appeal was wrong to hold that the signs at issue were highly similar. In that regard, it argues, first of all, that the comparison of the signs should only be made by taking into account the earlier EU figurative marks, the intervener having failed to demonstrate of the genuine use of the earlier EU word mark 3D’S. Next, the applicant maintains, in essence, that visually the differences between the signs outweigh the similarity arising from the presence of the shared element ‘3d’. It also considers that the pronunciation of the signs at issue is different because of the presence of the element ‘’s’ at the end of the earlier EU trade marks. The element ‘’s’ would, moreover, have a not insignificant conceptual impact in so far as it has a very clear meaning in English and indicates the possessive case. Lastly, the applicant points out that, according to the case-law, the length of the signs influences the effect of the differences between them and that in short words a single letter may be sufficient to rule out a high visual and phonetic similarity between the signs.

63 As regards, first of all, the applicant’s argument that it is not appropriate to take into account the earlier EU word mark 3D’S for the purposes of the comparison between the signs at issue, that argument must be rejected. As was noted at paragraphs 29 to 33 above, the applicant has not called into question the findings of the Opposition Division concerning genuine use of the earlier EU trade marks before the Board of Appeal with the result that it cannot do so before the Court. Consequently, the signs should be compared taking into account all the earlier signs.

64 Next, concerning the visual comparison of the signs at issue, the Board of Appeal’s assessment must be upheld. As it stated, the signs at issue all share the common element ‘3d’ which is, furthermore, the sole element of the mark applied for and the dominant element of the earlier EU figurative marks. Concerning those earlier marks, first, it must be noted that the element ‘’s’ is much smaller than the element ‘3d’ and occupies an ancillary role in relation to that element. Secondly, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 2 February 2011, Oyster Cosmetics v OHIM — Kadabell (Oyster cosmetics), T‑437/09, not published, EU:T:2011:23, paragraph 36 and the case-law cited).

65 In the present case, the figurative elements of the earlier EU figurative mark 3D’s represent either cone-shaped biscuits, which are descriptive of the goods covered by the trade mark, or geometric shapes, which are purely decorative. On the other hand, as regards the earlier EU word mark 3D’S, it must be noted that as the element ‘’s’ has the same size as the element ‘3d’, the latter element does not appear to dominate on its own the image of that mark with the result that the element ‘’s’ is negligible in the overall impression produced by that mark and, therefore, that mark must be considered in its entirety when comparing the signs.

66 It should be noted, contrary to what is stated by the applicant, that the differences which exist between the signs at issue are not such as to outweigh the high degree of similarity which comes from the common element ‘3d’ and especially as account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the various marks but has to rely on his imperfect recollection of them (see judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 68 and the case-law cited). In that regard, so far as concerns the mark applied for and the earlier EU figurative marks, although the typeface used is not the same, the fact remains that it is similar, in particular the intended three-dimensional effect which indeed emphasises the meaning of the element ‘3d’. Furthermore, as previously mentioned, the letter ‘s’ only occupies an ancillary place in the earlier EU figurative marks and the figurative elements of the earlier EU figurative mark 3D’s have only a limited impact on the global perception of the sign. Likewise, in respect of the mark applied for and the earlier EU word mark 3D’S, it must be found that there is a greater degree of similarity because of their common element ‘3d’. In that regard, the letter ‘s’ is separated from the element ‘3d’ by an apostrophe in all the earlier EU marks so that it appears detached from the common element and cannot, therefore, affect the high degree of similarity which exists between the signs at issue.

67 Concerning the comparison of the signs at issue from a phonetic point of view, it should be noted that the relevant public is the French and Spanish public. That public, when faced with the signs at issue, will refer to them by pronouncing the number and the letter separately. It is possible that, despite its ancillary position, the relevant public will also pronounce the ‘s’ of the earlier EU trade marks and even that a part of the public will perceive a word of English origin on account of the presence of the apostrophe and will instead pronounce the earlier EU trade marks in accordance with the English pronunciation rules. Nevertheless, those differences are not such as to counteract the phonetic similarity of the signs at issue.

68 Concerning the comparison of the signs at issue from a conceptual point of view, the Board of Appeal was right to find that they conveyed the same concept. The element ‘3d’, whether or not accompanied by the letter ‘s’, has the meaning ‘three-dimensional; the fact of being three-dimensional’. In that regard, the applicant’s argument that the presence of the element ‘’s’ will lead the relevant public to understand the earlier EU trade marks as meaning ‘something belonging to 3D’ must be rejected. Even if a part of the relevant public understands the element ‘’s’ as referring to the English possessive case, the meaning of the element ‘3d’ as referring to something three-dimensional will automatically be dominant in the mind of the public, which is used to that element and the meaning that it conveys, with the result that it is not capable of being modified by the presence of the element ‘’s’.

69 It must be held that the Board of Appeal was right, therefore, to find that the signs at issue, taken as a whole, were highly similar.

70 In that regard, the applicant’s argument that it is clear from the case-law that in the case of signs which are relatively short even a difference consisting of a single consonant will preclude a finding of a high degree of similarity (see, to that effect, judgments of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 54 and of 16 January 2008, Inter-Ikea v OHIM — Waibel (idea), T‑112/06, not published, EU:T:2008:10, paragraph 54) cannot succeed. Unlike the signs at issue in the cases which gave rise to the judgments of 22 June 2004, PICARO (T‑185/02, EU:T:2004:189) and of 16 January 2008, idea (T‑112/06, not published, EU:T:2008:10), which differed by a consonant, the element ‘3d’ in the signs at issue is identical in the present case. The letter ‘s’ is merely an additional element which exists in the earlier EU trade marks but cannot be considered to introduce a difference in consonant in accordance with the case-law cited above. Furthermore, the letter ‘s’ is separated from the element ‘3d’ by an apostrophe with the result that the consumer will perceive the earlier EU trade marks as being constituted by two distinct elements connected by an apostrophe. Since the consumer generally pays greater attention to the beginning of a mark than to the end, the consumer will pay less attention to the final letter ‘s’ (see, to that effect, judgment of 25 March 2009, L’Oréal v OHIM — Spa Monopole (SPALINE), T‑21/07, not published, EU:T:2009:80, paragraph 24).

71 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 14 December 2006, VENADO with frame and Others, T‑81/03, T‑82/03 and T‑103/03 EU:T:2006:397, paragraph 74).

72 The Board of Appeal found, first of all, that the earlier EU trade marks had an average degree of distinctiveness (paragraph 36 of the contested decision). Next, it considered that the goods at issue were similar to a lower than average degree but that the signs at issue were highly similar due to the fact that they were dominated by the element ‘3d’, which conveys a common concept (paragraph 38 of the contested decision). Lastly, given the relatively low attention of the relevant public, it held that there was a likelihood of confusion in the present case (paragraph 40 of the contested decision).

73 The applicant maintains that the Board of Appeal erred in finding an average degree of distinctiveness in respect of the earlier EU trade marks in so far as the element ‘3d’ is descriptive of the goods covered by those marks. Furthermore, the differences between the signs at issue outweighing their elements of similarity and the goods at issue being different, it cannot be found that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

75 As regards the applicant’s argument concerning the descriptive character of the element ‘3d’ and the weak distinctive character of the earlier EU trade marks, for which it relies on the Examiner’s decision of 7 March 2011 concerning the refusal to register the trade mark med3D, it must be recalled that the earlier EU trade marks were validly registered as EU trade marks and that their validity cannot be called into question in opposition proceedings before EUIPO or before the Court, on appeal. Therefore, the Board of Appeal rightly took account, in the examination of the likelihood of confusion, of a certain degree of distinctiveness and, more particularly, ruled out that the word ‘3d’ could be considered to be descriptive of the goods covered by those marks (see, to that effect, judgment of 23 April 2013, Apollo Tyres v OHIM — Endurance Technologies (ENDURACE), T‑109/11, EU:T:2013:211, paragraph 80 and the case-law cited).

76 In any event, the finding of weak distinctive character for the earlier EU trade marks does not prevent a finding that there is a likelihood of confusion. While the distinctive character or the earlier EU trade marks must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Thus, even in a case involving an earlier EU trade mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

77 In the present case it has been established, in paragraph 69 above, that the signs at issue were highly similar and, in paragraph 56 above, that the degree of similarity between the goods at issue in the present case was lower than average. Furthermore, the relevant consumer will show a relatively low degree of attention when purchasing these everyday consumer goods. Therefore, on the basis of these various factors and notwithstanding the distinctiveness of the earlier EU trade marks, it must be held that the Board of Appeal was right to find that there was a likelihood of confusion.

78 In the light of all the foregoing, the single plea in law must be rejected and, therefore, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s first head of claim, in so far as it requests that the Court grant its application for registration of an EU trade mark for the goods at issue.

79 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the 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) >> Perfetti Van Melle Benelux v EUIPO - PepsiCo (3D) (Judgment) [2016] EUECJ T-390/15 (13 September 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T39015.html Cite as: [2016] EUECJ T-390/15, EU:T:2016:463, ECLI:EU:T:2016:463

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