Freddo v EUIPO - Freddo Freddo (Freggo) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-243/16 (18 July 2017)

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(EU trade mark — Opposition proceedings — Application for registration of the figurative EU trade mark ‘freggo’ — Earlier EU figurative trade mark ‘TENTAZIONE FREDDO FREDDO’ — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Freddo SA, established in Buenos Aires (Argentina), represented by S. Malynicz QC, K. Gilbert and G. Lodge, Solicitors,

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

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

Freddo Freddo, SL, established in Madrid (Spain), represented by J.F. Gallego Jiménez and C. Marí Aguilar, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 17 February 2016 (Case R 919/2015-2), relating to opposition proceedings between Freddo Freddo SL and Freddo SA,

composed of I. Pelikánová, President, P. Nihoul and J. Svenningsen (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 2 August 2016,

having regard to the response of the intervener lodged at the Court Registry on 1 August 2016,

1 On 17 February 2009, the applicant, Freddo SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

3 The goods and services in respect of which registration was sought are in Classes 30 and 43 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, following the limitation made during the proceedings before EUIPO, to the following description:

– Class 30: ‘Pastry and confectionery, ices; ice; cones for ice cream, dulce de leche, flavored ices, frozen confections, frozen custards, frozen yogurt, ice cream, ice cream drinks, ice milk, ice cream substitutes, milk shakes, sherbet, and sorbet;’

– Class 43: ‘Services for providing food and drink; temporary accommodation; cafes, snack bars, food preparation, and ice cream parlors.’

4 The EU trade mark application was published in Community Trade Marks Bulletin No 26/2009 of 13 July 2009.

5 On 13 October 2009, the intervener, Freddo Freddo, SL, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

– the EU figurative mark registered under the No 3 441 326, reproduced hereunder:

covering goods and services in Classes 29, 30 and 43 and corresponding, for each of these classes, to the following description:

– Class 30: ‘Preparations made from cereals, bread, pastry and confectionery, ices; sauces (condiments)’;

– Class 43: ‘Restaurant/ice-cream parlour, coffee shop and snack-bar services’;

– the Spanish trade name FREDDO FREDDO SA, registered under the number 174 102 covering services in Class 43 and corresponding to the following description:

‘Commercial transactions of its business dedicated to provide common services of a café serving hot chocolate as a speciality, ice-cream parlor’.

– the Spanish figurative mark registered under the number 1 791 209, reproduced hereunder:

‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces (condiments); spices; ice’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (4) of Regulation No 207/2009.

8 On 11 March 2015, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, only taking into consideration the EU figurative trade mark referred to in the first indent of point 6 above (‘the earlier mark’).

9 On 11 May 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 17 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. Specifically, after deciding that the goods and services are directed at the public at large and having decided to focus its analysis on French- and Spanish-speaking consumer perception, it held, first, that the level of attention of the relevant public is at most average in respect of the relevant goods and services; second, that the goods and services covered by the marks at issue are partly identical and partly similar to highly similar; third, that, in the mark for which registration is sought, the word element ‘freggo’ is the dominant and distinctive element; fourth, that in the earlier mark, the word element ‘freddo freddo’ is particularly eye-catching and is the most distinctive word element; fifth, that both marks have a low degree of visual similarity and an average degree of phonetic similarity; sixth, that although they are not similar from a conceptual standpoint, they do not display any relevant differences which could counteract their visual and phonetic similarity; and, seventh, that the earlier mark has an average degree of inherent distinctiveness.

11 In conclusion, the Board of Appeal considered that there is a likelihood of confusion between the two marks at issue, including a likelihood of association, in that they are identified by their most distinctive elements ‘freggo’ and ‘freddo’, which are confusingly similar, especially when taking into account the fact that, in the trade sector in question, it is common for the same mark to be configured in various different ways depending on the type of goods or services, and for a principal mark to be reconfigured in sub-brands which share a common dominant element with that principal mark.

Objection to the admissibility of certain elements put forward in the response of the intervener

14 During the hearing, the counsel for the applicant submitted that various arguments raised by the intervener in its response were inadmissible, since they advanced new or irrelevant information in the context of the present application. Specifically, counsel for the applicant referred to the arguments set out in paragraphs 19 to 22, 54 to 59 and 60 to 65 of the intervener’s response.

15 It should be noted that, in accordance with Article 76(1) of Regulation No 207/2009, in the context of proceedings relating to relative grounds for refusal of registration by EUIPO, the examination by the latter is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. It follows that, as regards a relative ground for refusal to register, matters of law or fact submitted to the Court that have not been submitted previously to the Board of Appeal are not capable of affecting the lawfulness of a decision made by that board. Consequently, in the context of verifying the lawfulness of the decisions taken by the Boards of Appeal, such matters cannot be taken into consideration when determining the lawfulness of a decision taken by the Board of Appeal and must, therefore, be rejected as being inadmissible (see, to that effect, judgment of 17 March 2010, Mäurer + Wirtz v OHIM — Exportaciones Aceiteras Fedeoliva (tosca de FEDEOLIVA), T‑63/07, EU:T:2010:94, paragraphs 22 and 23 and the case-law cited).

16 In this instance, in paragraphs 19 to 22 of its response, the intervener submits that, due to the existence of a family of trade marks of which it is the proprietor, which includes, inter alia, the marks set out in paragraph 6 above, consumers are likely to believe that the trade mark applied for belongs to this family of trade marks, which increases the likelihood of confusion. In addition, in paragraph 54 of its response, the intervener refers in particular to judgments of the Spanish courts and decisions of the competent Spanish authority for trade marks. Lastly, in paragraphs 60 to 65 of its response, the intervener maintains that the applicant acted in bad faith when it submitted its application for registration, since it allegedly knew of the existence of the trade marks owned by the intervener and knew that the mark applied for was an unlawful imitation of these marks.

17 However, the matters of law and fact set out in the aforementioned paragraphs of its response were not raised by the intervener in the context of its observations before the Board of Appeal. Therefore, those matters are inadmissible. By contrast, this is not the case for the arguments set out in paragraphs 55 to 59 of the intervener’s response, which relate to the increased likelihood of confusion between the marks at issue resulting from the similarity between the respective company names of the applicant and the intervener and which have already been presented before the Board of Appeal. Furthermore, it should be noted that the question of the relevance of those arguments relates to the substance of the case at issue.

18 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. This plea in law is divided into five grounds of challenge, the first four of which relate to the contested decision in so far as it deals with the comparison of the marks at issue and the fifth of which concerns the part of the decision relating to the global assessment of the likelihood of confusion. These grounds of challenge refer to various errors that the Board of Appeal has supposedly made, namely:

– second, failing to take adequate account of the word element ‘tentazione’ in the earlier mark, when it is allegedly the most prominent element visually and the most important element phonetically;

– third, considering the distinctive character of the marks at issue when comparing them, when this element should have been taken into account during the assessment of the likelihood of confusion;

– fourth, adopting contradictory approaches as to the meaning or absence of meaning of the terms ‘tentazione’ and ‘freddo’ in the earlier mark in the perception of French-speaking and Spanish-speaking consumers; and

– fifth, considering that the mark for which registration is sought could be mistaken for a sub-brand of the earlier mark.

19 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.

20 The likelihood of confusion on the part of the public, which is defined as the likelihood that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings, must be assessed globally according to the relevant public’s perception of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case (see, to that effect, judgment of 16 October 2014, Novartis v OHIM — Tenimenti Angelini (LINEX), T‑444/12, not published, EU:T:2014:886, paragraph 19 and the case-law cited).

21 Where the protection of the earlier trade mark extends to the entirety of the territory of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services concerned in that territory. Nevertheless, it should be noted that a finding that there is a likelihood of confusion for a not insignificant part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgment of 24 June 2014, Hut.com v OHIM — Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 58 and the case-law cited).

22 Further, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 41).

23 The applicant’s grounds of challenge must be assessed in the light of those considerations in particular.

24 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the relevant category of goods, 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).

25 The Board of Appeal established the relevant public in paragraphs 20 to 23 of the contested decision.

26 First, it found that the relevant consumers of the goods and services referred to in the notice of opposition filed by the intervener were part of the public at large, whose level of attentiveness is, with regard to the relevant goods — being mass consumer goods of a relatively low price — generally rather low and at best average, and is of an average kind with regard to the relevant services; such consumers must place their trust in the imperfect image of those marks that they have retained and rarely have the chance to make a direct comparison between them.

27 Furthermore, since the earlier mark was an EU trade mark, the Board of Appeal held that the relevant territory for the purposes of applying Article 8(1)(b) of Regulation No 207/2009 was the entirety of the Member States, but decided to limit its assessment to French- and Spanish-speaking consumer perception for reasons of procedural economy.

28 It must be noted that none of the findings stated in paragraphs 26 and 27 above are disputed in the context of the main proceedings. Further, these findings are based on assessments that the Court endorses.

29 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 (see judgment of 23 September 2015, L’Oréal v OHIM — Cosmetica Cabinas (AINHOA), T‑400/13, not published, EU:T:2015:670, paragraph 21 and the case-law cited).

30 In this regard, according to findings that are not contested and that must, moreover, be approved, the Board of Appeal upheld the Opposition Division’s assessment that the relevant goods in the context of the intervener’s opposition are either identical, or highly similar, and the relevant services in the context of that opposition are either identical or similar.

31 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that 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 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

32 Assessing the similarity between two marks means more than taking just one component of a composite trademark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue 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 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

33 In the contested decision, the Board of Appeal held, first, at paragraph 30 that in the mark applied for the word element ‘freggo’ is the dominant and distinctive element, while the figurative elements, consisting of the slight stylisation of that word element and the inclusion of the latter within an oval label, have a mere decorative function.

34 Second, the Board of Appeal found, inter alia at paragraphs 31, 33 and 34 of the contested decision, that the word element ‘freddo freddo’ in the earlier mark is particularly eye-catching and is the most distinctive part, and that the other word element, ‘tentazione’, is secondary and has a weak distinctive character, as do the ice-cream cones added to each final letter ‘o’ in the word element ‘freddo freddo’.

– Taking into consideration the word element ‘tentazione’ in the earlier mark

35 By its first ground of challenge, the applicant criticises the Board of Appeal for having based the contested decision on a comparison between the mark applied for and one of the elements of the earlier mark, in disregard of case-law according to which the comparison between the marks at issue must consider each of the marks taken as a whole. The applicant maintains that, when comparing the marks at issue, the Board of Appeal only took into consideration a single element of the earlier mark, namely the double word element ‘freddo’, thereby ignoring all the differences arising from the other constituent elements of that mark. By doing so, the conclusion reached by the Board of Appeal, namely that the marks at issue are similar, is allegedly contrary to the perception of an averagely well-informed and reasonably careful and attentive consumer, having regard to the differences between the marks.

36 EUIPO and the intervener dispute the merits of this ground of challenge. In particular EUIPO submits that the Board of Appeal did assess the similarity of the marks at issue by comparing the overall impression given by the marks, specifically by taking into consideration all of the elements of the earlier mark and assessing the distinctive character of each element.

37 It must be held that this ground has no factual basis, since it is the result of a misreading of the contested decision; the Board of Appeal did actually take into consideration all of the constituent elements of the earlier mark, including the word element ‘tentazione’, when comparing the marks at issue.

38 Indeed, the Board of Appeal first described the figurative elements of the earlier mark and the two word elements that it contains, ‘tentazione’ and ‘freddo freddo’, in paragraph 28 of the contested decision. In addition, it noted in paragraph 29 of the decision, by making reference to the judgment of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER) (T‑460/11, not published, EU:T:2012:432), that when a mark is composed of word and figurative elements, it is the word elements, in principle, that are more distinctive than the figurative elements, as the average consumer will more easily refer to the goods in question by quoting the name of the mark than by describing its figurative elements.

39 On this basis, the Board of Appeal held in paragraph 31 of the contested decision, first, that the word element ‘freddo freddo’ is particularly eye-catching due to the use of large letters, a stylised typeface and the fanciful representation of each final letter ‘o’, while the word element ‘tentazione’ is depicted in smaller, ordinary letters, and, second, that it is also the word element ‘freddo freddo’ that is the most distinctive, given that it is meaningless for French- and Spanish-speaking consumers, while the word element ‘tentazione’ will be perceived by those consumers as a laudatory term by association with the equivalent French and Spanish terms ‘tentation’ and ‘tentación’, which are very similar.

40 It must be held that, as set out in the contested decision, it was by ‘bearing in mind the above’, that is to say on the basis of all of the considerations summarised in the preceding paragraph of the present judgment relating, first, to the comparative importance of the word elements present in the earlier mark and, second, to the differences as to the structure and stylisation of the marks at issue, that the Board of Appeal proceeded in paragraph 32 of the contested decision to compare the marks at issue visually and found that on that level these marks displayed a low degree of similarity.

41 The Board of Appeal also took into consideration, as regards the earlier mark, the pronunciation of the double word element ‘freddo’, which was found to be dominant and distinctive, and the word element ‘tentazione’, as an element of phonetic differentiation that was insufficient to cancel out the high degree of phonetic similarity noted in the elements ‘freddo’ and ‘freggo’, and held in paragraph 33 of the contested decision that there was an average degree of phonetic similarity between the marks at issue.

42 Lastly, on the basis of the concepts evoked by the word element ‘tentazione’ in the earlier mark, which the Board of Appeal had already found in paragraph 31 of the contested decision to have a laudatory character that evoked the power of attraction of the goods and services to which it referred, and on the basis of the figurative elements added to each letter ‘o’ of the word element ‘freddo freddo’, the Board of Appeal held in paragraph 34 of that decision that the marks at issue are not conceptually similar.

43 It must therefore be held that, contrary to the applicant’s submissions in its first ground of challenge, the Board of Appeal did not compare the marks at issue by taking into consideration only the word element ‘freddo freddo’ in the earlier mark.

– The distinctive and dominant character of the earlier mark’s word elements ‘tentazione’ and ‘freddo freddo’

44 By its second, third and fourth grounds of challenge, the applicant criticises the Board of Appeal for having failed to take adequate account of the respective importance of the word elements ‘tentazione’ and ‘freddo freddo’ in the earlier mark.

45 First, the applicant submits in its second ground of challenge that the element ‘tentazione’, positioned at the top and in the centre of the earlier mark, has, according to case-law, a particular importance in the context of determining the extent of the similarity between the marks at issue, as much on a visual level as on a phonetic level, since it occupies a first and prominent position in that mark. In this instance, the applicant maintains that the element is decisive and the considerations submitted by the Board of Appeal do not justify the failure to accord the word element ‘tentazione’ the importance that it should have by virtue of its position.

46 Subsequently, by its third ground of challenge, the applicant complains that the Board of Appeal compared the marks at issue by focusing, in the case of the earlier mark, on what it considered to be the most distinctive word element of the earlier mark, namely the element ‘freddo’, while it maintains that it is settled case-law that this type of consideration is only relevant when assessing the likelihood of confusion, since the comparison of the marks must be made by considering each mark as a whole.

47 Lastly, by its fourth ground of challenge, the applicant criticises the Board of Appeal for having held that the term ‘freddo’ has no meaning for French- and Spanish-speaking consumers, which in turn caused it to find that the word element ‘freddo freddo’ is the most distinctive element of the earlier mark, while the applicant maintains that this term is understood by those consumers.

48 EUIPO and the intervener dispute the merits of those three grounds of challenge.

49 As regards the applicant’s second ground of complaint, it should be noted that, while it is true that the first part of a mark’s word elements may be more likely to catch the consumer’s attention than the other parts that follow, this assumption does not, however, apply in all cases (see, to that effect, judgment of 16 May 2007, Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, not published, EU:T:2007:143, paragraph 70 and the case-law cited). The assertion that the beginning of the mark applied for is the part that particularly attracts the consumer’s attention cannot be assessed independently of the facts of the present case, and in particular the specific characteristics of the signs at issue (see, to that effect, judgment of 13 April 2011, United States Polo Association v OHIM — Textiles CMG (U.S. POLO ASSN.), T‑228/09, not published, EU:T:2011:170, paragraph 37).

50 In this instance, as has been observed in paragraphs 38 to 42 above, the Board of Appeal compared the marks at issue after having assessed, with regard to the earlier mark, the relative importance of the word elements ‘tentazione’ and ‘freddo freddo’. In the context of this assessment, it came to a number of findings, which the Court endorses, that led it to conclude that ‘freddo freddo’ is both the dominant and the most distinctive element of the earlier mark.

51 First, the Board of Appeal held that ‘freddo freddo’ is the central element of the earlier mark and that it is particularly eye-catching because of the fanciful character of each final letter ‘o’, depicted as ice-cream balls over stylised ice-cream cones and also because of the size of the letters and the use of a stylised typeface, when compared with the element ‘tentazione’, which is depicted in standard black letters which are not slightly smaller, as the applicant maintains, but are markedly smaller, since the size of the letters in the word element ‘tentazione’ is approximately two thirds of the size of those in the word element ‘freddo freddo’. To this, it should be added that the repetition of the latter word element only gives it all the more resonance (see, to that effect, judgment of 11 February 2015, Fetim v OHIM — Solid Floor (Solidfloor The professional’s choice), T‑395/12, not published, EU:T:2015:92, paragraph 32).

52 Therefore, it is apparent that the Board of Appeal did take into account the specific characteristics of the marks at issue and, in particular, the different components of the earlier mark in order, inter alia, to determine the particular importance that French- and Spanish-speaking consumers accord to each of the components and to find that, regardless of the fact that it is not at the beginning of the earlier mark, the element ‘freddo freddo’ is likely to dominate in terms of consumer perception and be remembered by consumers as a result of the specific characteristics of that mark, including that element’s greater size and the secondary character of the other word element, ‘tentazione’, and the figurative elements of that mark.

53 Second, the verbal element ‘freddo freddo’ was classified as the most distinctive element of the earlier mark because of the lack of meaning of the term ‘freddo’ for French- and Spanish-speaking consumers, in contradistinction to the Italian term ‘tentazione’, which consumers will assimilate to the French and Spanish equivalents ‘tentation’ and ‘tentación’ and which they will perceive as a laudatory term.

54 In this respect, the applicant is incorrect in claiming in the context of its third ground of challenge that, when comparing the marks at issue, taking the view that the element ‘freddo freddo’ is the most distinctive word element of the earlier mark was erroneous, because such a finding was not relevant when assessing the likelihood of confusion, since the marks must each be compared as a whole.

55 As EUIPO correctly submits, it is crucial to distinguish between, first, the distinctive character of the earlier mark, which determines the protection granted to that mark and is, therefore, not a factor in assessing the similarity of the marks at issue, and, second, the distinctive character of an element of a composite mark, namely the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking and thus to distinguish those goods or services from those of other undertakings, by taking into consideration the inherent characteristics of the element in question in the light of whether, inter alia, it is at all descriptive of the goods and services for which the mark has been registered (see, to that effect, judgment of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35).

56 The distinctive character of the constituent elements of a composite mark is a relevant factor when assessing the similarity of the marks at issue, as is established in the case-law set out above in paragraph 31.

57 Consequently, the Board of Appeal did not err in assessing the degree of distinctive character of the various elements composing the earlier mark and, as a result, in concluding inter alia that, in that mark, it is the element ‘freddo freddo’ that is particularly distinctive, since it has no meaning for French- and Spanish-speaking consumers and that, by contrast, the word element ‘tentazione’ is only weakly distinctive, since it will be perceived by those consumers as a laudatory term alluding to the attractive power of the goods and services in question.

58 The applicant’s argument in its fourth ground of challenge, in which it submits that the term ‘freddo’ can be understood by French- and Spanish-speaking consumers, cannot be accepted either. The parallel that it establishes in this respect between the terms ‘tentazione’ and ‘freddo’, from which it deduces that the contested decision is illogical in treating these two terms differently, is not justified.

59 As regards the term ‘tentazione’, since the sounds ‘zi’ and ‘ci’ are identical in Spanish and are only slightly different in French, the only actual difference between the Italian term and the equivalent French and Spanish terms, ‘tentation’ and ‘tentación’ respectively, is the final ‘e’ in the term ‘tentazione’, which means that the latter is so similar to the equivalent French and Spanish terms that it will be assimilated to those terms by French- and Spanish-speaking consumers. By contrast, as a result of the markedly greater differences between the Italian term ‘freddo’ and the French and Spanish equivalents, ‘froid’ and ‘frío’ respectively, the Italian term is too far from those terms for it to be possible to take the view that French- and Spanish-speaking consumers will perceive them as equivalents by pure assimilation to the equivalent term in their language.

60 In addition, the combination of the word element ‘freddo’ and the figurative element depicting an ice-cream cone is insufficient to overcome the dissimilarity between the Italian term and its French and Spanish equivalents. Accordingly, the Board of Appeal was correct in finding that, as regards the earlier mark, those consumers will understand the word element ‘tentazione’, but the word element ‘freddo freddo’ will be meaningless for them.

61 It follows from the assessments above that the Board of Appeal did not err in taking into consideration, as regards the earlier mark, the word elements ‘tentazione’ and ‘freddo freddo’ and in its assessment of the distinctive and dominant characters of those elements.

62 Having regard to the considerations set out in paragraphs 33 to 61 above, the Board of Appeal did not err in finding, in paragraph 32 of the contested decision, after having established the similarity of ‘freddo freddo’ and ‘freggo’, the dominant elements of each of the marks at issue, that there is a certain similarity between them from a visual perspective, though it is low due to the differing structure and stylisation of the two marks, thereby referring, albeit implicitly, in particular to the least eye-catching and least distinctive word element of the earlier mark, namely the element ‘tentazione’.

63 Indeed, a finding that the dominant elements of two marks at issue are similar, as has been established in this instance between the elements ‘freggo’ and ‘freddo freddo’, implies that there is a certain visual similarity between those marks, notwithstanding the differences between them in other areas (see, to that effect, judgment of 11 February 2015, Solidfloor The professional’s choice v OHIM, T‑395/12, not published, EU:T:2015:92, paragraph 35).

64 In should be noted, in addition, that the finding of the Board of Appeal relative to the different structure and stylisation of the marks at issue, set out in paragraph 62 above, in so far as it relates to the differences in the stylisation of the marks at issue, also concerns the figurative elements of the earlier mark, described as stylised ice-cream cones on which each final letter ‘o’ of the word element ‘freddo freddo’ are depicted as ice-cream balls. It cannot therefore be held, contrary to what counsel for the applicant submitted during the hearing, that the Board of Appeal omitted to take into consideration those elements when comparing the marks on a visual level.

65 The Board of Appeal also did not err in finding, in paragraph 33 of the contested decision, that there is an average level of similarity between the marks at issue from a phonetic perspective, having regard to the high level of phonetic similarity between, first, the element ‘freddo’, described as being ‘the most distinctive word of the earlier mark’ and as being both eye-catching and a part of the central word element of that mark, and, second, the element ‘freggo’, the sole word element of the other mark at issue and the element which the Board of Appeal, in paragraph 30 of the contested decision, found to be that mark’s dominant and distinctive element, such considerable degree of similarity being reduced, but not cancelled out, by the differentiating element formed by the word element ‘tentazione’, which is described as being secondary in nature.

66 In this respect, it should be noted that the applicant’s claim that the Board of Appeal allegedly found that the word element ‘tentazione’ in the earlier mark would not be read or pronounced by consumers is based on a misreading of paragraph 33 of the contested decision. That paragraph does state that the element would not necessarily be pronounced first, since the Board of Appeal took the view that it was possible that some consumers first pronounce the element ‘freddo freddo’, given its central position in that mark. In any event, it appears to be evident that the Board of Appeal proceeded to compare the marks at issue on a phonetic level and took into account the pronunciation of the element ‘tentazione’, which it found to be an element of phonetic differentiation between those marks.

67 The Board of Appeal was also correct in taking the view in paragraph 34 of the contested decision, on the basis of all the findings and assessments that it had made as to the various components of the marks at issue and as to their greater or lesser degrees of dominance or distinctiveness, that the word element ‘tentazione’ and the figurative elements consisting of ice-cream cones gave the earlier mark a semantic meaning that was entirely absent in the other mark at issue, but also in finding that that conceptual difference is not particularly relevant, given the nature of those elements. Indeed, the word element ‘tentazione’ has a laudatory character, as noted in paragraph 57 above, while the figurative elements consisting of ice-cream cones topped with balls of ice cream have an allusive, even descriptive character, given the goods and services involved.

68 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 marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 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 74).

69 In the context of the contested decision, the Board of Appeal found, first, in paragraph 35 of that decision, that the earlier mark has, according to the perception of the French- and Spanish-speaking public, an average degree of inherent distinctiveness overall, since the word element ‘freddo’ (repeated twice) which represents the central and most eye-catching part of the mark, has no meaning for that public. This assessment as to the distinctive character of the earlier mark, which is not disputed as such, appears to be well founded.

70 Furthermore, in paragraph 37 and 38 of the contested decision, the Board of Appeal summarised its previous findings and assessments. The Board of Appeal thus noted that the level of attention of the relevant public is at most average in respect of the goods and services in question, that those goods and services are partly identical and partly similar, even highly similar, and that the marks at issue have a certain degree of visual similarity, though low, and an average degree of phonetic similarity. The Board of Appeal also noted that the marks at issue presented a certain conceptual difference, which, however, it assessed to be insufficiently great to cancel out the similarities on the visual and phonetic levels. In this respect, the Board of Appeal pointed out that the difference on a conceptual level was derived only from the presence in the earlier mark of the word and figurative elements previously identified in paragraph 34 of the contested decision as the word element ‘tentazione’ and the figurative elements depicting ice-cream cones, which have, if any, a weak distinctive character with regard to the goods and services concerned and have little ability to indicate the commercial origin of those goods and services. The Board of Appeal added that, since the average consumer must rely on his imperfect recollection of the marks, there is no reason to assume he would pay greater attention to the differences between the marks at issue than to their common points.

71 In paragraph 39 of the contested decision, the Board of Appeal concluded by finding that the targeted French- and Spanish-speaking consumers, at least, are likely to believe that the goods and services in question come from the same undertaking or from economically related ones, identified by the ‘confusingly similar’ most distinctive elements ‘freggo’ and ‘freddo’.

72 With regard to the likelihood of confusion in general and as observed in paragraph 17 above, the intervener points out in paragraphs 55 to 59 of its response that in this instance the likelihood of confusion is increased as a result of the similarity between its company names and that of the applicant. Further, the intervener maintains that the fact that the company name of the applicant is identical to the word element ‘freddo’, which, when doubled, forms the dominant element of the earlier mark, implies to consumers that there is an association between the goods and services marketed by the applicant and those marketed under the intervener’s marks.

73 In this respect it should be noted, first, that the respective company names of the applicant and the intervener are extraneous, as such, to the marks at issue. Second, it should be borne in mind that the intervener’s line of argument is based on the assumption that the applicant would present its goods and services by displaying both its company name and the mark applied for. However, the decision to present the goods and services using the mark applied for alongside the company name would be a commercial choice to be made by the applicant for registration. The manner in which the applicant for registration will use the mark applied for is irrelevant for the purposes of assessing the relative likelihood of confusion (see, by analogy, judgements of 13 April 2005, Gillette v OHIM — Wilkinson Sword (RIGHT GUARD XTREME sport), T‑286/03, not published, EU:T:2005:126, paragraph 33, and of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 38).

74 By its fifth ground of challenge, the applicant claims that the Board of Appeal erred in law by raising the possibility in paragraph 40 of the contested decision that the mark applied for could be considered a sub-brand of the earlier mark.

75 According to the applicant, the Board of Appeal incorrectly found that, taking account of certain habitual practices in the relevant trade sector, it is conceivable that the relevant public may think that the goods and services referred to by the marks at issue belong to two distinct ranges from the same undertaking. The applicant submits that there is no possibility for a mark to be considered by consumers to be a sub-brand of another mark with which the former is in conflict where there is no common element between the marks at issue. The applicant maintains that in this instance the marks at issue have no dominant element in common, since the element ‘freggo’ in the mark applied for and ‘freddo’ in the earlier mark are incapable of being associated by a rational consumer.

76 EUIPO contests the merits of this ground of challenge and submits that the statements in paragraph 40 of the contested decision have only an illustrative value to demonstrate the likelihood of confusion between the marks at issue. Further, the Board of Appeal maintains that the possibility that a mark could be mistaken for a sub-brand of another mark is not limited to situations involving an identical common element.

77 In this regard, the Court finds that, while the contested decision may contain superfluous statements included for the sake of completeness, the applicant’s fifth ground of challenge must be considered ineffective.

78 Indeed, as EUIPO correctly points out, the Board of Appeal reached its global assessment of the likelihood of confusion in paragraph 39 of the contested decision ‘taking into account all the relevant factors of the case’, which are summarised in paragraph 35 to 38 of that decision. The statement criticised in the context of the fifth ground of challenge is found in paragraph 40 of the contested decision, which starts with the word ‘furthermore’. Therefore, it is manifest that the statement is not included to provide the support necessary for the conclusion set out in paragraph 39 of that decision, such that, even if it were incorrect, that statement would not be sufficient to invalidate that decision.

79 As a result, the single plea in law raised by the applicant must be rejected and the action accordingly dismissed.

80 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.

81 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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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Freddo v EUIPO - Freddo Freddo (Freggo) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-243/16 (18 July 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T24316.html Cite as: EU:T:2017:522, ECLI:EU:T:2017:522, [2017] EUECJ T-243/16

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