Septona v EUIPO - Intersnack Group (welly) (EU trade mark - Judgment) [2018] EUECJ T-763/17 (29 November 2018)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark welly — Earlier EU figurative marks Kelly’s and Kelly’s www.kellys.eu CHIPS — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Septona AVEE, established in Oinofyta (Greece), represented by V. Wellens, lawyer,

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

ACTION brought against the decision of the First Board of Appeal of EUIPO of 12 July 2017 (Case R 1525/2016-1), relating to opposition proceedings between Intersnack Group and Septona,

composed of A.M. Collins, President, R. Barents and J. Passer (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 21 November 2017,

1 On 15 July 2014, the applicant, Septona AVEE, 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Rice cakes; Rice-based snack food; Cereals; Cereal bars; Cereal-based snack food; Muesli; Cake dough; Rusks; Natural sweeteners’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 35/2015 of 20 February 2015.

5 On 20 May 2015 Intersnack Group GmbH & Co. KG filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– the EU figurative mark filed on 10 June 2009 and registered on 21 January 2015 under the number 8353203 (‘the first earlier mark’), as reproduced below:

– the EU figurative mark filed on 8 April 2013 and registered on 20 August 2013 under the number 11719283 (‘the second earlier mark’), as reproduced below:

7 The first earlier mark was registered for goods in Classes 29 and 30 corresponding, for each of those classes, to the following description:

– Class 29: ‘Extruded and pelletised or otherwise manufactured or processed potato products for snacks; roasted, dried, salted, spiced and processed nuts, including with coatings; preserved, dried and cooked fruits’;

– Class 30: ‘Extruded and pelletised or otherwise manufactured or processed tapioca, manioc, rice, maize, wheat or other cereal products for snacks; savoury biscuits; muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains; chocolate and chocolate products; sauces’.

8 The second earlier mark was registered for goods in Classes 29, 30 and 31 corresponding, for each of those classes, to the following description:

– Class 29: ‘Extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks; Roasted, dried, salted, spiced, coated and processed nuts, cashew kernels, pistachios, almonds, peanuts, coconuts (dried); Preserved, dried and cooked fruits and vegetables; Seaweed extracts for food; Ginger products being dried fruit’;

– Class 30: ‘Extruded and pelletised or otherwise manufactured or processed tapioca, manioc, rice, maize, wheat or other cereal products and ginger products being confectionery and jelly fruits for snacks; Savoury biscuits and pretzels; Muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains; Chocolate and chocolate products; Sauces’;

– Class 31: ‘Unprocessed nuts, cashew kernels, pistachios, almonds, peanuts and seeds; Algae for human consumption’.

9 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).

10 On 20 June 2016, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

11 On 19 August 2016, Intersnack Group 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.

12 By decision of 12 July 2017 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division, rejected the EU trade mark application and ordered the applicant to pay the costs. The Board of Appeal held that there was a likelihood of confusion in the minds of the relevant public between the mark applied for and the first earlier mark within the meaning of Article 8(1)(b) of Regulation No 207/2009.

13 The Board of Appeal first of all stated, in paragraph 13 of the contested decision, that the goods at issue were basic food products, that is, mainly snacks, which are generally inexpensive and chosen quickly, and were therefore targeted at average consumers who are likely to have a lower than average level of attention when buying them.

14 Next, in relation to the comparison of the goods, the Board of Appeal held, in paragraph 14 of the contested decision, that the goods at issue were identical, with the exception of natural sweeteners, which it held to be similar to a low degree.

15 In addition, the Board of Appeal proceeded to examine the signs at issue and held, in paragraph 24 of the contested decision, that the degree of visual similarity between the signs was higher than average. In that regard, the Board of Appeal stated, in paragraphs 17 to 20 of the contested decision, that the overall layout of the two signs was similar, that the word element had, in both cases, the appearance of an English name, that the two words had roughly the same length, and that most of the letters of the two words were written in lower case and followed the same sequence. The Board held that, despite the presence of relative differences, particularly the shape of the labels, the first letter of the words and the genitive in the first earlier mark, the similarities pointed out previously were striking and could lead consumers to confuse the two signs at issue. The Board of Appeal also observed, in paragraph 23 of the contested decision, that the mark applied for had no colour claim and could, therefore, be used in red. From the phonetic perspective, the Board of Appeal held, in paragraph 25 of the contested decision, that the words ‘welly’ and ‘kelly’s’ sounded very similar for many consumers in the European Union. From a conceptual perspective, the Board of Appeal took the view, in paragraph 30 of the contested decision, that the words ‘welly’ and ‘kelly’s’ would be perceived by most consumers as fanciful terms whose striking coincidence was that they both looked and sounded English and that, to that limited extent, the two marks did convey a similar connotation.

16 Finally, in its assessment of the likelihood of confusion between the signs at issue, the Board of Appeal held, in paragraphs 32 to 35 of the contested decision, (i) that the goods at issue were identical, except for natural sweeteners, (ii) that the signs at issue were similar to a higher than average degree as regards their visual and phonetic perceptions and to a limited degree as regards their conceptual content, and (iii) that the distinctiveness of the first earlier mark was average and that the relevant consumer’s level of attention was lower than average. In the light of those factors, the Board of Appeal held, in paragraph 36 of the contested decision, that the relevant consumers, who would not normally see the signs at issue at the same time and would therefore have to rely on their imperfect recollection, could confuse the two signs given that they represented English names which look and sound very similar and which are written in a similar typeface on a somewhat similarly-shaped dark label.

19 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.

20 The applicant submits, in essence, that the Board of Appeal erred in finding that the level of attention of the relevant public was below average and that the comparison of the goods and the analysis of the visual, phonetic and conceptual similarities of the signs at issue were incorrect, with the result that there is no likelihood of confusion between the mark applied for and the earlier marks.

21 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because it is identical with, 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.

22 According to settled case-law, the risk that the public may 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 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).

23 For the purposes of applying 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).

24 In the present case, it should be noted, as a preliminary point, that the contested decision is based only on an analysis of a likelihood of confusion between the mark applied for and the first earlier mark. In those circumstances, the applicant’s arguments relating to the second earlier mark are ineffective and it is sufficient to examine the contested decision in so far as it concerns the opposition between the mark applied for and the first earlier mark.

25 The applicant does not dispute the Board of Appeal’s assessment that the relevant public is composed of average consumers in the European Union.

26 By contrast, the applicant submits that the contested decision is contradictory in that it states that the relevant public is ‘reasonably observant and circumspect’, before concluding that the level of attention of that public is lower than average for the goods concerned. In that regard, the applicant emphasises that the goods concerned are not typical snacks but primarily health food snacks, which attract a public with a level of attention which is at least average.

28 In the first place, it must be borne in mind that it follows from settled case-law that, while, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect, the level of attention of that average consumer is likely to vary according to the category of goods or services in question (see, to that effect, 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).

29 Therefore, contrary to what the applicant claims, the contested decision is not vitiated by contradictory reasoning, in that, in paragraph 13 of that decision, the Board of Appeal found, first, that the relevant public is made up of average consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect, and, secondly, that consumers are likely to have a lower than average level of attention when purchasing the goods in question.

30 In the second place, with regard to the applicant’s argument that the goods concerned are not typical snacks, but primarily health food snacks, that argument is not capable of calling into question the Board of Appeal’s assessment.

31 The goods at issue are neither medicinal products nor similar ‘products with certain potential hazards’, for which the level of attention of the relevant public is deemed to be high or increased (see, to that effect, judgments of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 26; of 2 December 2014, Boehringer Ingelheim Pharma v OHIM — Nepentes Pharma (Momarid), T‑75/13, not published, EU:T:2014:1017, paragraphs 49 and 50, and of 12 December 2014, Selo Medical v OHIM — biosyn Arzneimittel (SELOGYN), T‑173/13, not published, EU:T:2014:1071, paragraphs 16 to 26). Quite to the contrary, the goods here at issue are everyday consumer goods, inexpensive, generally sold in supermarkets, the purchase of which is not preceded by a lengthy period of reflection and for which no danger to health has been established (see, to that effect, judgments of 28 March 2012, Hipp v OHIM — Nestlé (Bebio), T‑41/09, not published, EU:T:2012:163, paragraphs 29 and 30, and of 10 May 2016, August Storck v EUIPO (Representation of a white and blue square-shaped packaging), T‑806/14, not published, EU:T:2016:284, paragraphs 38 and 39).

32 It must therefore be held that the relevant public for goods such as those in question will not display a high or even average level of attention, but one which is lower than average.

33 Consequently, it does not appear that the Board of Appeal erred in its determination of the level of attention of the relevant public to be taken into consideration for the purpose of assessing the likelihood of confusion between the marks at issue.

34 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, in particular, their nature, their intended purpose and 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).

35 In the present case, the applicant does not dispute the Board of Appeal’s assessment that, with the exception of ‘natural sweeteners’, the goods covered by the mark applied for are identical to those covered by the first earlier mark.

36 By contrast, the applicant submits that the Board of Appeal erred in holding that the ‘chocolate’ covered by the first earlier mark is similar to a low degree to ‘natural sweeteners’.

38 It should be noted at the outset, as observed by EUIPO, that the applicant does not put forward any specific argument in support of the present complaint.

39 In any event, it must be noted that the goods for which the first earlier mark was registered include ‘chocolate’ and ‘chocolate products’. It must be held, as EUIPO correctly submitted in its written pleadings, without being contradicted on this point by the applicant, that, in the preparation of cereal snacks, muffins and cakes, chocolate and chocolate products, such as chocolate chips, are often used to sweeten those preparations naturally.

40 The Board of Appeal also acted correctly in finding, in paragraph 14 of the contested decision, that sugar or other sweeteners are usually added to chocolate products, such as chocolate drinks, covered by the first earlier mark.

41 Accordingly, the Board of Appeal’s conclusion that natural sweeteners have a low degree of similarity to the goods covered by the first earlier mark is correct and must be upheld.

42 At the outset, it should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression that they produce, 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 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).

43 The applicant claims that the signs at issue are very different visually. First, the figurative elements, namely the shape and colour of the labels and the location and graphical presentation of the word elements, differ substantially. Furthermore, the word element of the first earlier mark contains two characters more than the mark applied for. Secondly, the difference between the signs at issue is particularly important as the first letter of the word element of each sign, namely the letters ‘k’ and ‘w’ respectively, written in upper case and lower case, differ completely, since those word elements are, moreover, relatively short. The fact that those letters are not, it claims, pronounced in some languages, which the Board of Appeal failed to specify, is relevant only in the context of the phonetic comparison.

45 According to settled case-law, where a trade mark is composed of word and figurative elements, the former must, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by citing the name of the mark rather than by describing the figurative element (see judgment of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM — Staccata (QUARTODIMIGLIO,QM) T‑76/13, not published, EU:T:2015:94, paragraph 53 and the case-law cited).

46 In the present case, EUIPO is correct in its submission that the colour combinations used in the respective signs are quite common and that the quadrilateral forms in the backgrounds are commonplace and frequently used in the relevant area of commerce.

47 With regard to the word elements in the signs at issue, it is true that those elements are, as correctly held by the Board of Appeal, very similar in length, the word element of the mark applied for being composed of five letters and that of the first earlier mark containing six letters, and that the two signs have in common the letters ‘e’, ‘l’, ‘l’ and ‘y’, placed in the same order.

48 However, this is not sufficient for the view to be taken that the signs at issue are, overall, visually similar to a ‘higher than average’ degree, as was stated by the Board of Appeal in paragraphs 24 and 36 of the contested decision.

49 It follows from the case-law that the existence of a similarity between two signs, such as that arising from the common characteristics of the signs at issue found in paragraph 47 above, cannot offset the difference between those signs resulting, as applicable, from their different initial letters. This is the case, in particular, where those letters are visually very different and the signs at issue are short (see, to that effect, judgment of 25 January 2017, Anton Riemerschmid Weinbrennerei und Likörfabrik v EUIPO — Viña y Bodega Botalcura (LITU), T‑187/16, not published, EU:T:2017:30, paragraph 25).

50 In the present case, the two word elements are relatively short. Moreover, the letter ‘w’, which is written in lower case, differs significantly from the letter ‘k’, written in upper case, as the contour and shape of those letters are very different.

51 Furthermore, the word element of the first earlier mark contains another element, which is not negligible in visual terms and does not feature in the mark applied for, namely the apostrophe followed by the letter ‘s’.

52 Moreover, although the figurative elements in the signs at issue are not distinctive, but quite commonplace (see paragraph 46 above), they still possess several differences and therefore strengthen the difference in the overall impression created by each of the signs.

53 In this regard, the applicant correctly points out several differences between the figurative elements in question. First, as was, moreover, noted by the Board of Appeal in paragraph 21 of the contested decision, the labels differ in shape, one being a square, while the other is an irregular quadrangle. Moreover, the latter is characterised by white lines emphasising the upper and lower edges of the label. Secondly, the word element ‘kelly’s’ is arranged diagonally, while the word element ‘welly’ is placed horizontally in the mark applied for. Thirdly, the letters of the word element of the mark applied for display an internal graffiti effect and are straight, whereas the letters of the word element of the first earlier mark are white, have a shaded effect and are slightly rounded.

54 In addition, in its response and again at the hearing, EUIPO acknowledged that, contrary to what the Board of Appeal concluded in paragraph 23 of the contested decision, the red background of the first earlier mark also counts as a difference.

55 In those circumstances, it must be held that the signs at issue are only slightly similar in visual terms and that the Board of Appeal therefore made an error of assessment in finding that the visual similarity between the signs at issue was above average.

56 The applicant submits that the signs at issue are phonetically different. First, it argues, the Board of Appeal’s conclusion that both word elements would be regarded as English names is rather an assessment from a conceptual perspective. Secondly, according to the rules of English pronunciation, the word element of the signs at issue is pronounced as two different syllables, namely ‘ke’ and ‘liz’ in the first earlier mark and ‘we’ and ‘li’ in the mark applied for. The phonetic difference, it submits, is strengthened by the difference in the first letters of the signs at issue, which are completely different types of consonants, ‘k’ being a voiceless consonant and ‘w’ being a voiced consonant, and also by the addition of an apostrophe followed by the letter ‘s’ in the first earlier mark. Thirdly, with regard to the part of the relevant public which does not speak English, there is a phonetic difference between the signs at issue which is at least as significant as it is for the English-speaking public.

58 As a preliminary point, it should be noted, as EUIPO did, that the two word elements in the signs at issue have the same number of syllables and an identical vowel structure, corresponding to the pronunciation of the letters ‘e’ and ‘y’. It is also probable that the stress will fall on the same syllable, thus leading to an identical rhythm and intonation.

59 Furthermore, it is apparent from the case-law that the letter ‘s’ following an apostrophe will not necessarily be pronounced (see, to that effect, judgment of 15 February 2011, Yorma’s v OHIM — Norma Lebensmittelfilialbetrieb (YORMA’S), T‑213/09, not published, EU:T:2011:37, paragraph 81).

60 However, it follows from the case-law that a difference between the letters placed at the beginning of each of the signs at issue, while otherwise identical, may make it possible to distinguish the signs phonetically, in particular if they consist of markedly different letters (see, to that effect, judgment of 25 January 2017, LITU, T‑187/16, not published, EU:T:2017:30, paragraph 28).

61 In the present case, it must be held that the letters placed at the beginning of each word element, namely the letter ‘w’ for one and the letter ‘k’ for the other, are, as the applicant rightly points out, markedly different letters. Those letters therefore allow the signs at issue to be distinguished phonetically.

62 It follows that, contrary to what the Board of Appeal found, the signs at issue must be regarded as having only a low degree of phonetic similarity.

63 According to the applicant, the word element ‘kelly’s’ has a meaning which will be immediately understood by the public of the European Union, in particular by English-speaking consumers. For the latter, ‘kelly’, with the letter ‘k’ in upper case, is a surname or a first name, an idea reinforced by the addition of the genitive ‘s’. By contrast, the word element ‘welly’ is a common noun or, at the very least, refers to the word ‘well’. In that regard, the contested decision is highly contradictory, given that the Board of Appeal acknowledged that, for those consumers who eat snacks, ‘welly’ could refer to the word ‘well’, which can also mean ‘good’, which, however, conveys a conceptual content that is completely different from the word ‘kelly’s’, while concluding, at the same time, that the signs at issue have a similar connotation.

64 With regard to the relevant public that does not speak English, the word element of the mark applied for will, according to the applicant, most likely have no conceptual meaning. By contrast, it is clear that, for that public, the word ‘kelly’s’, with the letter ‘k’ in upper case, in the earlier mark refers to a name.

66 It must be observed, from the outset, that it is evident, as acknowledged by EUIPO, that the word ‘kelly’, with the letter ‘k’ in upper case, will be construed as a reference to a name by the English-speaking public. This assessment is reinforced, as the applicant rightly points out, by the addition of the apostrophe followed by the letter ‘s’. With this addition, the English-speaking public is likely to perceive the word element of the earlier mark as being, for example, the name of an undertaking belonging to someone called ‘Kelly’ or as the name of a person who designed the manufacturing formula for the goods in question.

67 However, this same assessment is also valid for part of the non-English-speaking public. The addition of the apostrophe followed by the letter ‘s’ is a basic concept in English grammar and is also commonly used by undertakings operating at a world-wide level.

68 Furthermore, it is generally known that the word ‘kelly’, with the letter ‘k’ in upper case, is a name. That word, a name of Irish origin, was and still is used as a family name or first name, in particular by several well-known personalities in the entertainment industry. It is therefore likely that a large number of consumers will perceive the word element ‘kelly’ as a name, even without understanding the meaning of the presence, in the earlier mark, of the apostrophe followed by the letter ‘s’, which is a grammatical phenomenon unknown in most other languages.

69 As for the word element ‘welly’ contained in the mark applied for, it is unlikely, as was correctly pointed out by the Board of Appeal in paragraph 29 of the contested decision, that that word would bring footwear to the minds of ‘English-speaking consumers who eat snacks’. This is even less likely in the case of non-English-speaking consumers. Although it is true that the word ‘welly’ (or ‘wellie’), used most often in its plural form ‘wellies’, means ‘Wellington boot (s)’, consumers buying snacks will not be likely to understand the word ‘welly’ as being a reference to footwear.

70 Although it is possible that some English-speaking consumers will understand that the word ‘welly’ in English slang means ‘energy, concentration or commitment’ or that, as noted by the Board of Appeal in paragraph 29 of the contested decision, that word may evoke, in particular in the minds of English-speaking consumers, the word ‘well’, in the sense of ‘good’, that assessment cannot be accepted for a large part of the relevant public. On the contrary, it is, for a large part of the relevant public, a fanciful term which does not refer to any concept.

71 It follows that, for many consumers, the signs at issue are conceptually different and that, for those consumers who do not understand that the word ‘kelly’, with the letter ‘k’ in upper case, is a name and do not perceive any concept in the word ‘welly’, the conceptual comparison of the signs at issue is neutral.

72 With regard to those latter consumers, contrary to what was concluded by the Board of Appeal in paragraphs 30 and 33 of the contested decision, a conceptual similarity, even to a limited degree, cannot be inferred merely from the fact that, for the words in question, ‘a striking coincidence is that they both look and sound English’.

73 In this regard, EUIPO referred, at the hearing, to the judgment of 9 April 2014, Ferring v OHIM — Tillotts Pharma (OCTASA) (T‑502/12, not published, EU:T:2014:192), in which the Court held that the signs at issue were conceptually similar inasmuch as they both referred to Greek numbers, namely ‘penta’ and ‘octa’.

74 However, it is apparent from paragraph 65 of the judgment of 9 April 2014, OCTASA (T‑502/12, not published, EU:T:2014:192), that this conclusion was accepted only for that portion of end-users who understood that the beginnings of the signs at issue referred to Greek numbers. This solution is also apparent from the judgments of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM — Tillotts Pharma (OCTASA) (T‑501/12, not published, EU:T:2014:194, paragraph 63), and of 21 June 2017, Tillotts Pharma v EUIPO — Ferring (OCTASA) (T‑632/15, not published, EU:T:2017:408, paragraph 56). By contrast, the Court held, in paragraph 64 of the judgment of 9 April 2014, OCTASA (T‑502/12, not published, EU:T:2014:192), that, for those end users who did not understand that the beginnings of the signs at issue referred to Greek numbers, the conceptual comparison of the signs was neutral. This solution is also apparent from the judgment of 9 April 2014, OCTASA (T‑501/12, not published, EU:T:2014:194, paragraph 62).

75 It follows that EUIPO cannot succeed in seeking to justify the finding made by the Board of Appeal in paragraphs 30 and 33 of the contested decision by referring to the case-law cited in paragraph 73 above.

76 Quite to the contrary, inasmuch as some consumers will perceive the words ‘welly’ and ‘kelly’s’ as fanciful terms, as indicated in paragraph 30 of the contested decision, and therefore as terms which do not refer to any concept (see paragraph 71 above), that case-law confirms that, for those consumers, the conceptual comparison must be regarded as neutral.

77 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 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).

78 The applicant submits that the Board of Appeal erred in its assessment of a likelihood of confusion in that, first, it incorrectly assessed the differences in both the non-verbal and the verbal elements of the marks at issue; secondly, it failed to take into account the Court’s settled case-law finding, among other things, that a difference of one letter in relatively short words does not, in principle, give rise to a similarity that is above average from a visual or phonetic perspective; and, thirdly, it took insufficient account of the fact that, on a conceptual level, there are differences between the marks at issue which counteract the phonetic or visual similarities, if any.

80 It follows from the foregoing that, contrary to what the Board of Appeal found, the signs at issue, taken as a whole, have only a low degree of visual and phonetic similarity. Moreover, the signs at issue are conceptually different for a large part of the relevant public and, for the remainder of that public, the conceptual comparison between those signs is neutral.

81 In those circumstances, the low degree of similarity between the signs at issue, so far as concerns the visual and phonetic aspects, cannot be offset by the fact that most of the goods in question are identical.

82 It is, admittedly, true that the average consumer only rarely has a chance to compare the various marks directly, but must rather rely on his imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

83 In the present case, however, the initial part of the word elements of the signs at issue helps to differentiate them in such a way that their similarities are insufficient to offset that difference. The initial position of the letters ‘w’ and ‘k’ in the signs at issue and the striking differences, both visually and phonetically, between them, on the one hand, and the fact that the word elements in the signs at issue are short, which allows the relevant public to perceive the differences between them more easily, on the other, are important factors which must be taken into account (see, to that effect, judgment of 25 January 2017, LITU, T‑187/16, not published, EU:T:2017:30, paragraph 32).

84 Moreover, visually, that difference is further reinforced by the differences between the figurative elements of the signs at issue and by the presence, in the first earlier mark, of the apostrophe followed by the letter ‘s’, which does not feature in the mark applied for.

85 In the light of those differences between the signs at issue, it must be held that, notwithstanding the fact that the majority of the goods at issue are identical, there is no risk that the relevant public might believe that the goods in question come from the same undertaking or from economically-linked undertakings.

86 It follows that the Board of Appeal erred in holding that the conditions for the existence of a likelihood of confusion were met.

87 The single plea in law must therefore be upheld and the contested decision consequently annulled.

88 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.

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

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 July 2017 (Case R 1525/2016-1);

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Septona v EUIPO - Intersnack Group (welly) (EU trade mark - Judgment) [2018] EUECJ T-763/17 (29 November 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T76317.html Cite as: [2019] ETMR 16, EU:T:2018:861, ECLI:EU:T:2018:861, [2018] EUECJ T-763/17

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