Convivo v EUIPO - Porcesadora Nacional de Alimentos (M'Cooky) (EU trade mark - Judgment) [2018] EUECJ T-288/16 (26 April 2018)

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(EU trade mark — Opposition proceedings –International registration designating the European Union — Word mark M’Cooky — Earlier national figurative mark MR.COOK — Relative ground for refusal — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) — Likelihood of confusion)

Convivo GmbH, established in Vienna (Austria), represented by C. Düchs, lawyer,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini and D. Walicka, acting as Agents,

Porcesadora Nacional de Alimentos C. A. Pronaca, established in Quito (Ecuador),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 7 March 2016 (Case R 1039/2015-2), concerning opposition proceedings between Porcesadora Nacional de Alimentos C. A. Pronaca and Convivo.

composed of G. Berardis, President, D. Spielmann (Rapporteur) and Z. Csehi, Judges,

having regard to the application lodged at the Registry of the General Court on 2 June 2016,

having regard to the response lodged at the Registry of the General Court on 19 August 2016,

1 On 22 December 2010, the applicant, Convivo GmbH, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) an international registration designating the European Union for the word sign M’COOKY.

2 On 19 May 2011, the European Union Intellectual Property Office (EUIPO) received notification of that international registration.

3 The goods in respect of which the international registration was granted fall within Classes 30 and 43 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 30: ‘Pastry and confectionery, in particular cookies, sweets, wafers, waffles, long-life bakery products, cakes, fancy cakes, meringues, cookies, chocolate and chocolate pastries, ginger bread and honey cakes, butter pastry, pastries, stollen (cake), pralines and confectionery, ice cream, muesli and muesli bars, baking and cake mixtures, cake dough, cake mixtures, fancy cake dough, ornaments for cakes and fancy cakes (included in this class), preparations for the production of the aforementioned goods (included in this class), all aforementioned goods (if possible) also being frozen or being primary products’;

– Class 43: ‘Services for providing food and drink; temporary accommodation’.

4 The particulars of the international registration provided for in Article 152(1) of Regulation No 207/2009 (now Article 190(1) of Regulation 2017/1001) were published in the Community Trade Marks Bulletin of 20 May 2011.

5 On 20 February 2012, Porcesadora Nacional de Alimentos C. A. Pronaca filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

7 The earlier mark had been filed on 26 February 2008 and registered, under the number 2815506, on 9 July 2008. It designates goods falling within Classes 29, 30 and 31 and corresponding, for each of those classes, to the following description:

– Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;

– Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours and preparations made from cereals; bread, pastry, and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (except salad dressings); spices, ice’;

– Class 31: ‘Agricultural, horticultural, and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals, malt’.

8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) in respect of all the goods covered by the earlier mark and the mark applied for.

9 By decision of 26 March 2015, the Opposition Division upheld in part the opposition, finding that there was a likelihood of confusion as regards all the goods in Class 30 and the ‘services for providing food and drink’ in Class 43. So far as concerns the ‘temporary accommodation’ services in Class 43, it found that they had no common ground with the opponent’s goods in Classes 29, 30 and 31.

10 On 26 May 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

11 By decision of 7 March 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal on the ground that there was a likelihood of confusion. To that end, it considered it necessary to take account of the point of view of the relevant Spanish public and found its level of attention to be, at most, average. The Board of Appeal noted that neither party disputed the Opposition Division’s findings with regard to the disputed goods in Class 30 and the disputed services in Class 43, which were found to be partly identical, partly similar and partly dissimilar to the opponent’s goods, and concluded that that finding also should be upheld.

12 Furthermore, the Board of Appeal, in ruling on the descriptiveness or distinctive character of the signs at issue, found that, for a large section of the Spanish public, the word element ‘cook’ had no particular meaning and was therefore fanciful. On account of its prominent and central position, the word element ‘cook’ constituted the most dominant and distinctive part of the earlier mark. From a visual point of view, the Board of Appeal considered that the two signs had an average degree of similarity. Phonetically, it found that the pronunciation of the marks coincided in the sounds of the letter ‘m’ and the word ‘cook’ present identically in both signs. Conceptually, it found that the two marks were not similar. The Board of Appeal took the view that, since, in particular, the dominant and distinctive element of the earlier mark was completely included in the mark applied for, there was a likelihood of confusion between the marks at issue. It concluded that it was possible that a significant section of the relevant public might believe that the goods at issue found to be identical or similar come from the same undertaking or, as the case may be, economically linked undertakings.

15 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

A. Admissibility of the evidence adduced for the first time before the General Court

16 In its response, EUIPO argues that the applicant has produced new evidence before the Court and that it must therefore not be taken into account. That evidence is Annexes A.7 to A.12 to the application concerning the level of the Spanish public’s understanding of the English language, in particular of the words used in the signs at issue. Thus, in particular, the applicant annexed to its application a page printed from the Spanish internet site of the brand Subway© (Annex A.7), which shows that, in Spain, biscuits are sold under the name ‘cookies’, document containing Eurostat statistics on the level of learning foreign languages, particularly English, in Spain (Annexes A.8 and A.9), two pages printed from the internet sites www.vocabulary.com and www.manythings.com, according to which the words ‘cook’ and ‘cooking’ both form part of the basic vocabulary of English (Annexes A.10 and A.11), and an extract from the online dictionary Merriam Webster for the definition of the word ‘mister’ (Annex A.12).

17 At the hearing, the applicant stated that, during the proceedings before EUIPO, it had already put forward the argument relating to the level of understanding of English by the average Spanish consumer. In addition, referring to the judgment of 11 July 2013, Metropolis Inmobiliarias y Restauraciones v OHIM — MIP Metro (METRO) (T‑197/12, not published, EU:T:2013:375), it submitted that the General Court had previously accepted evidence submitted for the first time before it. Lastly, it noted that the Eurostat statistics on the level of understanding of English in Spain were ‘well-known facts’.

18 It must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it.

19 However, it is apparent from the case file that Annexes A.7 to A.11 to the application were submitted for the first time before the Court. 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 OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19, and the case-law cited).

20 The applicant’s arguments are not capable of altering that conclusion. In the first place, it must be noted that the applicant itself confirms the fact that it raised before EUIPO the question concerning the level of understanding of English by the average Spanish consumer. Furthermore, it is apparent from the action brought by the applicant before the Board of Appeal that one of its main arguments related to the fact that even if the relevant consumers were Spanish, they would understand the English word ‘cook’ in its initial sense, since the understanding of that term would not require specific language skills. The applicant added that consumers knew that a ‘cook’ was a person who cooked foods, particularly a person whose job was to prepare meals in a restaurant or a canteen.

21 In those circumstances, it was for the appellant to provide, if necessary, all of the evidence in support of its application in the procedure before EUIPO on the level of knowledge of the English language by the Spanish public and, in particular, to the understanding of the word ‘cook’ (see, to that effect, judgment of 23 April 2013, Apollo Tyres v OHIM — Endurance Technologies (ENDURACE), T‑109/11, not published, EU:T:2013:211, paragraph 21).

22 In the second place, unlike in the present case, in the case which gave rise to the judgment of 11 July 2013, METRO (T‑197/12, not published, EU:T:2013:375, paragraph 16), the Court accepted new documents as admissible on the ground that they related to an analysis of the similarity of the signs appearing for the first time in the contested decision.

23 In the third place, it is true that, in accordance with the case-law, an applicant is entitled to submit to the Court documents either to substantiate or to challenge before it the accuracy of a matter of common knowledge which was not established in the decision of the EUIPO body contested before the Court (see, to that effect, judgments of 20 June 2012, Kraft Foods Schweiz v OHIM — Compañía Nacional de Chocolates (CORONA), T‑357/10, not published, EU:T:2012:312, paragraph 16, and of 15 January 2013, Gigabyte Technology v OHIM — Haskins (Gigabyte), T‑451/11, not published, EU:T:2013:13, paragraph 22).

24 In the present case, however, the applicant does not refer to any well-known fact on which the Board of Appeal based its decision without having established its accuracy. It merely claims that Eurostat’s statistics on the level of learning of English in Spain constitute well-known facts in themselves, which is not the case. Consequently, the case-law cited in paragraph 23 above is not applicable to the present case.

25 In the light of the foregoing, Annexes A.7 to A.11 to the application must be rejected as inadmissible.

26 As regards Annex A.12, consisting of an extract from the online dictionary Merriam Webster on the definition of the word ‘mister’, it must be stated that it was not produced before the Board of Appeal. Nonetheless, that document demonstrates a fact which is referred to in paragraph 37 of the contested decision, namely that the element ‘mr.’ of the earlier mark is the common abbreviation of the English word ‘mister’. Thus, the fact that the applicant refers to that dictionary is immaterial, for the purposes of assessing the admissibility of that annex, since the fact actually shown by that reference is part of the factual framework of the procedure before the Board of Appeal (see, to that effect, judgment of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 35). The case-law pursuant to which an extract, which has not previously been produced before the Board of Appeal, must be declared inadmissible, without it being necessary to assess its probative value, is therefore not applicable to it (see, to that effect, judgment of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 19).

27 Accordingly, it must be held that Annex A.12 to the application is admissible.

28 In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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.

29 According to established case law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question 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 covered (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).

30 It is in the light of those observations that the arguments advanced by the applicant in support of its single plea in law must be examined.

31 The applicant submits that it is appropriate in the present case to take into consideration the point of view of the relevant Spanish public. Moreover, its level of attention is, at least, average.

32 The applicant claims that the Board of Appeal erred in dissecting the relevant public into an English-speaking part and a non-English speaking part and in considering that a significant number of Spanish consumers do not have a sufficient level of English to understand the meaning of the English words ‘cook’ and ‘cookie’. In particular, the applicant is of the opinion that that distinction is inappropriate and random, in so far as it only vaguely concerns the goods and services in question. In the applicant’s view, only the Spanish-speaking general public, that is to say the ‘everyday consumer’, should be taken into account in the present case. It believes that the concept of the ‘average consumer’ implies the existence of a single person possessing the most common characteristics of the whole group to which he belongs. Consequently, the average consumer would either be capable of understanding basic English words or not. In addition, the applicant submits that the Board of Appeal erred in considering that the average Spanish consumer had no knowledge of English. In fact, as a result, in particular, of tourism, which is an important sector of the Spanish economy, the average Spanish consumer would understand basic English words such as ‘cook’ and ‘mr.’, the latter being the abbreviation of the word ‘mister’.

33 EUIPO submits that the Board of Appeal was correct to split the relevant public into an English-speaking section and a non-English-speaking section.

34 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 goods or services 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).

35 In the present case, it is appropriate to confirm the findings made by the Board of Appeal in paragraphs 17 and 19 of the contested decision, which the applicant does not, moreover, dispute in respect of the relevant territory and relevant public.

36 It must therefore be held that the goods and services at issue are everyday consumer goods and are directed at the general public. Furthermore, the earlier mark is a Spanish mark and, in consequence, it is in relation to the Spanish public that the question whether there is a likelihood of confusion must be examined.

37 As regards the argument that the Board of Appeal erred in law by distinguishing between the English-speaking public and the non-English-speaking public, it must be observed that such a distinction is relevant since it is directly linked to the ability of the public to understand the English word ‘cook’. That distinction is therefore essential in order to characterise this word element as descriptive or distinctive.

38 In that regard, it must be recalled that, in accordance with the case-law, in order to find that there exists a likelihood of confusion as referred to in Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that that likelihood exists for the whole of the relevant public (judgment of 10 October 2012, Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, not published, EU:T:2012:535, paragraph 69).

39 With regard to the ability of the relevant public to understand the work ‘cook’, it should be noted that, firstly, as regards average consumers, knowledge of a foreign language cannot in general be assumed (see, to that effect, judgment of 26 February 2016, Mederer v OHIM — Cadbury Netherlands International Holdings (Gummi Bear-Rings), T‑210/14, not published, EU:T:2016:105, paragraph 51), and, secondly, in accordance with settled case-law, the Spanish public’s degree of familiarity with the English language is generally held to be low (judgments of 18 April 2007, House of Donuts v OHIM — Panrico (House of donuts), T‑333/04 and T‑334/04, not published, EU:T:2007:105, paragraph 53; of 26 February 2015, 9Flats v OHIM — Tibesoca (9flats.com), T‑713/13, not published, EU:T:2015:114, paragraph 62; and of 26 February 2016, Gummi Bear-Rings, T‑210/14, not published, EU:T:2016:105, paragraph 52).

40 In the present case, the Board of Appeal was correct to find, in accordance with the case-law cited in paragraph 39 above, that a significant number of Spanish consumers, particularly the older generations, would not be capable of grasping the meaning of the word ‘cook’ and that, for that non-English-speaking section of the relevant public, the word ‘cook’ would be ‘a meaningless, fanciful expression’.

41 The applicant’s arguments are not capable of casting doubt on that finding.

42 As regards, firstly, the applicant’s argument that the Board of Appeal applied the concept of ‘poorly educated consumer’, instead of applying the required concept of a reasonably well-informed consumer, it must be held that that argument is based on an incorrect premiss. In particular, the Board of Appeal did not at all have recourse to the general concept of lack of education in order to rule on the distinctiveness or descriptiveness of the signs at issue, but to the ability of a section of the relevant public to understand English.

43 As regards, secondly, the applicant’s argument that tourism is an important sector of the Spanish economy and, that, consequently, the average Spanish consumer would find it difficult to avoid meeting the English language in daily life, it cannot invalidate the finding that a section of the Spanish public would not understand the meaning of the word ‘cook’. It is true that familiarity with the English language is more important in the section of the public which is employed in the field of tourism. However, other sections of the Spanish public, employed in other professional fields, see less of the English language in daily life to be able to understand the meaning of the word ‘cook’. In any event, the applicant’s argument concerning tourism in Spain is speculative, since it does not specify the section of the relevant public which would understand English as a result of that activity.

44 With regard, thirdly, to the applicant’s argument that the word ‘cook’ forms part of the basic vocabulary of the English language, the view must be taken that that English term is not a basic English-language word that is internationally recognised, which could therefore be understood even by the non-Anglophone section of the Spanish public, unlike, for example, other words such as ‘shoes, ‘unisex’ or ‘girl’ (see, to that effect, judgment of 19 April 2013, Hultafors Group v OHIM — Società Italiana Calzature (Snickers), T‑537/11, not published, EU:T:2013:207, paragraph 50). Furthermore, as has rightly been observed by the Board of Appeal, the word ‘cook’ bears no resemblance to its Spanish counterparts: the verb ‘cocinar’ or the noun ‘cocinero’ (see, to that effect, judgment of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, not published, EU:T:2016:69, paragraph 120).

45 In the light of the foregoing, given that the section of Spanish consumers who do not understand the meaning of the word element ‘cook’ represents a considerable part of the relevant public and that the Board of Appeal assessed the likelihood of confusion solely in relation to that part of the relevant public, it is necessary to examine, solely in relation to that part of the relevant public, whether the Board of Appeal was right to conclude that there was a likelihood of confusion (see, to that effect, judgment of 5 February 2016, Kicktipp, T‑135/14, not published, EU:T:2016:69, paragraph 129).

46 The applicant disputes the findings of the Board of Appeal that the services for providing food and drink’ in Class 43 covered by the mark applied for are regarded as being similar to the goods ‘coffee’ and ‘ices’ in Class 30 and covered by the earlier mark (see paragraph 20 of the contested decision). In particular, it claims that although ‘coffee’ and ‘ices’ are essential to services for providing food and drink, consumers are not led to think that the responsibility for the production of those goods and the provision of those services lies with the same undertaking.

47 EUIPO contends that this complaint should be rejected as inadmissible, since it is not apparent from the file that the applicant had raised it before the Board of Appeal. As to the substance, in any event it disputes the applicant’s arguments.

48 If that head of claim were admissible, the Board of Appeal correctly held that the services for providing food and drink in Class 43 covered by the mark applied for and goods such as ‘coffee’ and ‘ices’ in Class 30 and covered by the earlier mark were everyday food and services, were intended for the same consumers and were distributed via the same distribution channels. Manufacturers of food or drink products, including ices and coffee, can also promote their products through services for providing food and drink.

49 It is therefore appropriate to find that the Board of Appeal acted correctly in confirming, in paragraph 20 of the contested decision, the Opposition Division’s uncontested assessment that the goods covered by the marks at issue were identical or similar, with the exception of the temporary accommodation services.

51 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).

52 In accordance with the case-law, 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, namely the visual, phonetic or conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 89).

53 Moreover, 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 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).

54 The applicant submits that, contrary to the Board of Appeal’s finding, the word ‘cook’, contained in the marks at issue, is purely descriptive and does not lead to a likelihood of confusion. With regard to the earlier mark, it argues that the Board of Appeal erred in classifying its distinctiveness as ‘normal’. That assertion is, indeed, contrary to the findings of the Board of Appeal, in paragraph 29 of the contested decision, according to which the term ‘cook’ is purely descriptive for the goods concerned. In the view of the applicant, at most, the distinctiveness of the earlier mark could be regarded as very weakly distinctive depending on how the distinctiveness of the element ‘mr.’ of the earlier mark, which is its dominant element, is to be assessed.

56 In the light of the considerations set out in paragraphs 40 to 44 above, it is necessary to reject the applicant’s argument that the descriptive character of the word ‘cook’ in the signs in question, as regards the section of the Spanish public which does not speak English, and to conclude that that word has distinctive character for that part of the relevant public.

57 In that regard, and contrary to the applicant’s submissions, there is no contradiction in the classification by the Board of Appeal of the distinctiveness of the earlier mark as ‘normal’. Indeed, in paragraph 29 of the contested decision, the Board of Appeal found that the word ‘cook’ was purely descriptive for the goods in question, in so far as it would be understood in its English meaning. Consequently, the non-English-speaking section of the Spanish public is not capable of grasping the meaning of the word element ‘cook’, which confirms its distinctive character for that part of the relevant public.

58 Visually, the Board of Appeal found that the signs at issue had an average degree of similarity, particularly taking into account the dominant and distinctive nature of the word ‘cook’. Phonetically, it found that the signs at issue were similar, because their pronunciation coincided in the sound of the letter ‘m’ and the word ‘cook’. Conceptually, the Board of Appeal found that the two signs at issue were not similar. The Board of Appeal concluded that the signs at issue were, overall, at least slightly similar.

59 The applicant claims that, in so far as the marks share an element devoid of any distinctive character, namely the word ‘cook’, the assessment of the likelihood of confusion must focus on the word ‘Mr. ’ for the earlier mark and ‘m’’ and ‘y’ for the contested mark. With regard to the visual comparison, it maintains that the single letter ‘m’ is not sufficient to establish a likelihood of confusion. With regard to the phonetic comparison, the two elements to be compared are the word ‘mister’ of the earlier mark, as the meaning of the element ‘mr.’, and the element ‘m’cooky’ of the mark applied for. The applicant concludes that the two signs are phonetically dissimilar and conceptually very different. Phonetically, the word ‘mister’ consists of two syllables, whereas ‘m’cooky’ consists of three. In addition, the two signs have a very different meaning and are therefore conceptually different.

61 It must be recalled, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

62 Moreover, the fact that a mark consists exclusively of the earlier mark, to which another word element is attached is an indication that the two trade marks are similar (judgments of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 28, and of 28 October 2009, X-Technology R & D Swiss v OHIM — Ipko-Amcor (First-On-Skin), T‑273/08, not published, EU:T:2009:418, paragraph 31).

63 In the present case, the Board of Appeal was fully entitled to conclude that the signs at issue were visually similar.

64 In the first place, it is not disputed that the signs at issue have in common the word ‘cook’ and the letter ‘m’, which is at the beginning of each word element. In the light of the case-law recalled in paragraph 62 above, those shared elements are thus an indication that the marks at issue are visually similar. This is all the more true in the present case since, if the letter ‘m’ and the word element ‘cook’ are taken into account jointly, the signs at issue have in common five out of six letters and appear identically in each of the signs at issue.

65 The applicant maintains that, when assessing the likelihood of confusion, the word element ‘cook’ of the earlier mark should not be taken into account, since it is devoid of any distinctive character.

66 However, that argument must be rejected. Indeed, as has already been stated in paragraph 56 above, the word ‘cook’ has distinctive character for the section of the Spanish public which does not speak English. Moreover, and above all, in the light of its central position in the earlier mark, it forms its visually dominant element. In any event, even if it were devoid of distinctive character, this would not imply in all cases that the relevant element cannot constitute a dominant element (see, to that effect, judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited), or that it should be completely excluded from the assessment of the likelihood of confusion.

67 In view of the fact that the word ‘cook’ is part of the element ‘cooky’ in the mark applied for, the view must be taken that the signs at issue, assessed as a whole, are visually similar. In that regard, it is appropriate to note that, as was rightly pointed out by the Board of Appeal, the minor visual differences between the terms ‘cook’ and ‘cooky’ will go unnoticed among the relevant public, especially since the only different letter is at the end of the words.

68 In the second place, the points of dissimilarity between the signs at issue are not sufficient to dispel the relevant consumer’s impression that those signs are visually similar. In that regard, it must be pointed out that, as regards the figurative elements of the earlier mark, namely the representation of a blue background in the form of an almond and a cook’s hat above the element ‘mr.’, the Board of Appeal has held, rightly, that their impact is limited. Those graphical elements are purely decorative and do not alter the dominant character of the term ‘cook’ within the marks at issue.

69 In that regard, it should be borne in mind that, 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/services in question by quoting their name than by describing the figurative element of the trade mark (judgment of 10 March 2016, LG Developpement v OHIM — Bayerische Motoren Werke (MINICARGO), T‑160/15, not published, EU:T:2016:137, paragraph 43).

70 The Board of Appeal was therefore fully entitled to consider that the two signs at issue were visually similar.

71 In the first place, it should be noted that, contrary to the applicant’s submissions and having regard to the finding made in paragraph 66 above, it is necessary to take into account the word ‘cook’ in the earlier mark when comparing the aural aspects of the signs in question.

72 In the second place, the element ‘mr.’ of the earlier mark is the common abbreviation of the English word ‘mister’ and constitutes the title used before a man’s surname. In that regard, it must be noted that, unlike the word ‘cook’, the element ‘mr.’ may be regarded as forming part of the basic vocabulary of the English language, since it is commonly used in the media or when travelling abroad. Furthermore, as the Board of Appeal has pointed out, in Spanish it is usual to use a title before a man’s surname, namely ‘Sr.’ for the word ‘señor’. The relevant public will therefore be capable of understanding the meaning of the abbreviation ‘mr.’ and will pronounce the earlier mark ‘mister kuk’, while it will pronounce the mark applied for ‘mkuki’.

73 In light of the foregoing, the pronunciation of the two signs coincides in the sound of the letter ‘m’, located at the beginning of the word elements, and the sound of the word ‘cook’. Moreover, those two elements are placed in the same order. Contrary to the applicant’s assertions, the two signs do not have totally different vowel or rhythm sequences.

74 It follows that the Board of Appeal was correct in finding that the signs in question were phonetically similar.

75 Firstly, it must be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57 and the case-law cited).

76 In the present case, as regards the earlier mark, as has already been held, the word element ‘cook’ has no particular meaning for the non-English-speaking section of the Spanish public.The combination of the element ‘mr.’ and the word ‘cook’ could rather give the impression to the non-English-speaking section of the Spanish public that the earlier mark refers to a foreign man named Cook and to a cook’s hat, which forms the figurative element of the earlier mark.

77 As regards the mark applied for, the word element ‘cooky’ makes a direct reference to the word ‘cookie’. That word is defined in English as a sweet food which is usually small, flat and round and which is manufactured from flour and sugar and, in the area of IT, as a file which can be added to a computer when a site is consulted and which contains information about the user.

78 The applicant has not established that the word ‘cookie’ formed part of the basic vocabulary of the English language and that the element ‘cooky’ would be understood in that way by the non-English-speaking section of the Spanish public. Consequently, that section of the Spanish public will not attribute any specific meaning to the mark applied for.

79 In the light of the foregoing, it is appropriate to confirm the Board of Appeal’s finding that the signs at issue are not conceptually similar.

80 The applicant claims that there is no likelihood of confusion in view of the lack of distinctiveness of the earlier mark or, ‘at best’, the very low degree of distinctive character and given the lack of visual, phonetic and conceptual similarity between the signs at issue.

82 The 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 the similarity of the goods or services concerned. 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).

83 In the present case, the applicant’s argument that the earlier mark has a very weak distinctive character has already been discarded, since, as regards the non-English-speaking section of the Spanish public, the word element ‘cook’ is not descriptive (see paragraph 56 above).

84 In any event, it is sufficient to state in that regard that the finding of a weak distinctive character for the earlier trade mark would not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a 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, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

85 In the present case, the Board of Appeal rightly found, on the one hand, that the goods and services covered by the marks at issue were identical or similar (see paragraph 49 above) and, on the other, that the two marks were similar to an average degree visually (see paragraph 70 above) and phonetically (see paragraph 74 above). Finally, in light of the foregoing considerations, the lack of conceptual similarity between the signs at issue is not such as to preclude a likelihood of confusion.

86 It follows from all of the foregoing that, since the relevant public has an average level of attention, the goods and services in question are identical or similar, that the signs at issue are similar visually and phonetically and that the earlier mark has a normal level of distinctiveness, the Board of Appeal was correct to conclude that there was a likelihood of confusion within the meaning of Article 8(1), (b) of Regulation No 207/2009.

87 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.

88 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

2. Orders Convivo GmbH to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO).

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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) >> Convivo v EUIPO - Porcesadora Nacional de Alimentos (M'Cooky) (EU trade mark - Judgment) [2018] EUECJ T-288/16 (26 April 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T28816.html Cite as: ECLI:EU:T:2018:231, [2018] EUECJ T-288/16, EU:T:2018:231

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