Copal Tree Brands v EUIPO - Sumol + Compal Marcas (COPAL TREE) (EU trade mark - Judgment) [2022] EUECJ T-572/21 (28 September 2022)

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(EU trade mark – Opposition proceedings – Application for EU word mark COPAL TREE – Earlier national figurative mark COMPAL – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EU) 2017/1001)

Copal Tree Brands, Inc., established in Oakland, California (United States), represented by B. Niemann Fadani, lawyer,

European Union Intellectual Property Office (EUIPO), represented by R. Raponi and J. Ivanauskas, acting as Agents,

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

Sumol + Compal Marcas, SA, established in Carnaxide (Portugal), represented by A. de Sampaio, lawyer,

composed, at the time of the deliberations, of A. Kornezov (Rapporteur), President, E. Buttigieg and G. Hesse, Judges,

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

1 By its action under Article 263 TFEU, the applicant, Copal Tree Brands, Inc., seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 July 2021 (Case R 1580/2020-2) (‘the contested decision’).

2 On 13 September 2018, the applicant, under its former name, Copalli Brands, Inc., filed an application for registration of an EU trade mark with EUIPO pursuant to 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).

4 The goods and services in respect of which registration was sought are in, inter alia, Classes 30, 33 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, to the following description:

– Class 30: ‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (frozen water); candy; candy bars; chocolate; chocolate bars; chocolate cakes; chocolate candies; chocolate chips; chocolate confections; chocolate covered cocoa nibs; chocolate covered fruit; chocolate covered nuts; chocolate covered roasted coffee beans; chocolate for confectionery and bread; chocolate for toppings; chocolate mousse; chocolate mousses; chocolate pastes; chocolate powder; chocolate sauce; chocolate syrup; chocolate topping; chocolate truffles; chocolate-based spreads; chocolates and chocolate based ready to eat candies and snacks; cocoa; cocoa mixes; cocoa powder; cocoa spreads; milk chocolate; candy with cocoa; confectionery, namely, candy and chocolate; frozen confections; white chocolate chips; chocolate fondue; chocolate syrups; chocolate sauces; chocolate coating; chocolate spread; chocolate spreads; chocolate extracts; aerated chocolate; chocolate marzipan; chocolate creams; chocolate sweets; chocolate eggs; chocolate flavourings; chocolate confectionery; chocolate fudge; chocolate pastries; chocolate desserts; chocolate brownies; chocolate biscuits; chocolate beverages; chocolate flavoured confectionery; chocolate based products; milk chocolate teacakes; chocolate drink preparations; chocolate confectionery products; chocolate covered biscuits; chocolate covered cakes; chocolate based drinks; chocolate candy with fillings; chocolate beverages with milk; biscuits containing chocolate flavoured ingredients; ice creams flavoured with chocolate; chocolate spreads for use on bread; chocolate-based fillings for cakes and pies; chocolate essences for the preparation of beverages; chocolate extracts for the preparation of beverages; non-medicated flour confectionery coated with imitation chocolate; confectionery bars; confectionery ices; sugar confectionery; confectionery chocolate products; non-medicated flour confectionery coated with chocolate’;

– Class 33 ‘Alcoholic beverages (except beers); distilled spirits; absinthe; alcoholic aperitifs; alcoholic bitters; alcoholic cocktail mixes; alcoholic cordials; alcoholic energy drinks; alcoholic essences; alcoholic extracts; alcoholic beverages of fruit; alcoholic fruit beverages; alcoholic fruit cocktail drinks; alcoholic jellies; alcoholic tea-based beverage; alcopops; anisette; aperitifs; arak; bitters; blended whisky; bourbon whiskey; brandy; ciders; cooking brandy; cooking wine; distilled beverages; fermented spirit; flavoured tonic liquors; fortified wines; fruit wine; gin; grape wine; liqueurs; preparations for making alcoholic beverages; pre-mixed alcoholic beverages; sake; sparkling wines; spirits and liquors; vodka; vermouth; whiskey; wine’;

– Class 43 ‘Services for providing food and drink; temporary accommodation; hotel services; hotel reservations; hotel information; appraisal of hotel accommodation; arranging of hotel accommodation; hotels, hostels and boarding houses, holiday and tourist accommodation; accommodation reservations; temporary accommodation reservation services; arranging and providing temporary accommodation; holiday lodgings; providing travel lodging information services and travel lodging booking agency services for travellers; mobile catering; outside catering; hotel catering services; food and drink catering; catering of food and drink; information, advisory and consultancy services relating to all the aforesaid services’.

5 The trade mark application was published in European Union Trade Marks Bulletin No 2018/211 of 27 November 2018.

6 On 18 February 2019, the intervener, Sumol + Compal Marcas, SA, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the sign for which registration is sought (‘the mark applied for’) in respect of the goods and services referred to in paragraph 4 above.

7 The opposition was based, inter alia, on the following Portuguese figurative mark No 590 866:

8 That mark was filed on 31 October 2017, registered on 30 January 2018 and covers, inter alia, goods and services in Classes 5, 29, 31, 32 and 43, which correspond, for each of those classes, to the following description:

– Class 5: ‘Dietetic foods and beverages, for medical purposes, based on fruit and fruit extracts; energy drinks with added vitamins; food for babies, namely soups, fruit compotes, fruit pulps (fruit purées), fruit and/or vegetable purées, fruit and/or vegetable juices, fruit nectars, gruel’;

– Class 29: ‘Fruit pulp (liquid fruit paste); fruit paste; prepared and puréed fruits and/or vegetables; tomato paste; vegetable juices for cooking; tomato juices for cooking; cut fruits; fruit chips; fruit salads; fruit extracts for food; fruit based energy bars; meal substitutes based on fruits and fruit extracts; dehydrated dishes based on fruits; snack mixes consisting of dehydrated fruit and processed nuts; snack food (fruit-based -); fruit caviar, balls and crisps; preserved, dried and cooked fruits and vegetables; fruit preparations and fruits extracts; fruit products and fruit extracts for the preparation of dietetic drinks; vegetables and fruits in the form of jelly extracts, frozen or dehydrated preserves; jams, jellies, compotes; gelatine for food use, ready-to-eat jellies, powdered mixtures for preparing fruit jellies; milk beverages, milk predominating; milk shakes; dairy beverages containing fruit or fruit juice; yoghurt; milks and other milk-based beverages, dairy substitutes’;

– Class 31: ‘Fruit, fresh; vegetables, fresh; agricultural, horticultural and forestry products and grains not included in other classes; seeds for planting; natural plants and flowers’;

– Class 32: ‘Fruit and/or vegetable drinks; fruit and/or vegetable juices; fruit and/or vegetable shakes; fruit nectars and other non-alcoholic drinks; syrups and other preparations for making beverages’;

– Class 43: ‘Services for providing food and drink, including bar services, cafes, cafeterias, canteens, snack-bars, restaurants, self-service restaurants and other establishments providing food and drink for consumption; catering of food and drinks; information services related with drinking establishments and installation for selling drinks’.

9 The grounds for the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.

10 By decision of 2 June 2020, the Opposition Division upheld the opposition in respect of all the goods and services referred to in paragraph 4 above, on the basis of Article 8(1)(b) of Regulation 2017/1001.

11 On 29 June 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

12 By the contested decision, the Second Board of Appeal of EUIPO dismissed the appeal.

16 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

17 Article 8(1)(b) of Regulation 2017/1001 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, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

18 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 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).

19 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).

20 In the present case, the Board of Appeal noted, in essence, that, given that the earlier mark was a Portuguese trade mark, the relevant territory to be taken into account in assessing the likelihood of confusion was the territory of Portugal. It also noted that the goods and services covered both by the earlier mark and by the mark applied for were intended for everyday consumption, so that the relevant public was, in essence, the average consumer in Portugal, who is deemed to be reasonably well informed and reasonably observant and circumspect. The applicant does not dispute that definition of the relevant public.

21 In paragraphs 25 to 36 of the contested decision, the Board of Appeal examined the similarity of the goods and services at issue, concluding that those goods and services were similar to varying degrees ranging from low to medium, or even high, in respect of certain goods and services in Classes 30, 33 and 43, and that they were identical in respect of most of the services in Class 43.

22 The applicant does not dispute the Board of Appeal’s conclusions concerning the similarity of the goods and services concerned.

23 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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).

24 In paragraph 40 of the contested decision, the Board of Appeal noted that the earlier mark consisted, first, of a figurative element which could be perceived by the relevant public as a highly stylised bouquet of leaves or as a short, bushy tree and, secondly, of a word element, namely the word ‘compal’ written in large upper-case letters, presented in a slight arc across the crown of the ‘tree’. It also noted that the mark applied for was a word mark consisting of the expression ‘copal tree’.

25 In paragraph 41 of the contested decision, the Board of Appeal took the view that the earlier mark consisted of two co-dominant elements and that both the figurative element and the word ‘compal’ were distinctive and would attract the attention of the relevant public. It stated that the figurative element, because of its size and eye-catching graphic design, did not play a secondary or merely descriptive role within the mark. Nonetheless, in the Board of Appeal’s view, the word element of the earlier mark plays a ‘somewhat more important’ role within that mark, given that it is the only element of that mark that can be pronounced. As regards the mark applied for, the Board of Appeal took the view that it was also composed of two co-dominant elements, namely the words ‘copal’ and ‘tree’, but that it was to the first word, namely ‘copal’, that the relevant public would pay more attention.

26 In addition, the Board of Appeal was of the opinion, in paragraph 42 of the contested decision, that the signs at issue were both fully distinctive and that neither the figurative element of the earlier mark nor the word ‘tree’ of the mark applied for could be regarded as weakly distinctive elements merely referring to the possible ecological characteristics of the food products at issue.

27 First, the applicant argues that the figurative element of the earlier mark does not resemble a tree, but will be perceived as a purely decorative element, with some aspects of the decoration resembling leaves. It also notes that there is a heart motif included in that mark. Secondly, it submits that the word ‘tree’ and the word ‘copal’ of the mark applied for are equally dominant. Accordingly, in the applicant’s view, the word ‘tree’ cannot have less impact than the word ‘copal’ in that the two words appear together as forming the expression ‘copal tree’ in the same way as any other type of tree, such as ‘apple tree’. It also submits that the element ‘tree’ is clearly not negligible and is distinctive.

29 First, the Court notes that the earlier mark is a figurative mark including the word element ‘compal’, which appears in the centre of the sign in upper-case letters in a stylised font and forms a slight arc. That word element is surrounded by a figurative element representing a number of stylised leaves and two arcs pointing outwards, which are placed centrally below the leaves. In that regard, the Board of Appeal correctly noted that that figurative element could be perceived by the relevant public as representing, inter alia, a tree or a short, bushy tree. The two arcs placed centrally below the leaves may be perceived as the drawing of a trunk of a tree or of a short tree over which there are a number of leaves which thus form the crown of the tree or of the short tree. It is true that, as the applicant observes, the earlier mark also includes a stylised heart motif, which the Board of Appeal failed to note. Nonetheless, it must be stated that that particular element will go almost unnoticed because of its small size and of the fact that it is placed within a large number of leaves without being highlighted, so that it is indissociable from those leaves. The presence of that element is therefore not capable of altering the Board of Appeal’s conclusion that the relevant public will perceive the figurative element of the earlier mark as a tree or as a short, bushy tree.

30 Furthermore, contrary to what the applicant submits, the figurative element of the earlier mark cannot be regarded as purely decorative. In paragraphs 41 and 42 of the contested decision, the Board of Appeal correctly found that the figurative element and the word element making up that mark were co-dominant and fully distinctive, which the applicant does not dispute. Accordingly, the figurative element of the earlier mark, by virtue of its co-dominant and distinctive character, cannot be regarded as purely decorative.

31 However, it should also be borne in mind, as the Board of Appeal stated, that where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods at issue by citing the name of the trade mark than by describing its figurative element (judgment of 10 November 2021, AC Milan v EUIPO – InterES (ACM 1899 AC MILAN), T‑353/20, not published, EU:T:2021:773, paragraph 83). Consequently, even though the figurative element and the word element of the earlier mark both constitute co-dominant and distinctive elements, the fact remains that the word element is likely to have a more pronounced impact on the relevant public’s perception of the mark.

32 Secondly, the Court notes, as did the Board of Appeal, that the mark applied for is a word mark consisting of two words, namely ‘copal’ and ‘tree’, which constitute its distinctive and co-dominant elements, which the applicant does not dispute.

33 Furthermore, it should be borne in mind, as the Board of Appeal stated, that consumers will generally pay greater attention to the beginning of a mark than to its end and that the initial part of a mark is normally likely to have a greater impact than the final part (see judgment of 9 September 2020, Gothe and Kunz v EUIPO – Aldi Einkauf (FAIR ZONE), T‑589/19, not published, EU:T:2020:397, paragraph 55 and the case-law cited). Therefore, contrary to what the applicant claims, the Board of Appeal did not make an error of assessment in observing that the relevant public would pay more attention to the word ‘copal’, placed at the beginning of the mark applied for.

34 Consequently, the applicant’s arguments relating to the distinctive and dominant elements of the signs at issue must be rejected.

35 The Board of Appeal found, in paragraph 43 of the contested decision, that the signs at issue were visually similar to an average degree. In the Board of Appeal’s view, the only word element ‘compal’ of the earlier mark is almost entirely reproduced in the first word of the mark applied for and the additional letter ‘m’ in the middle of the word element of the earlier mark amounts only to a small difference which might not be noticed by the relevant public. It stated that the words ‘copal’ and ‘compal’ were the elements to which the relevant public would pay the most attention and that, therefore, even though the figurative element of the earlier mark and the word ‘tree’ of the mark applied for were different, that did not diminish the similarity between the most eye-catching elements of the signs at issue.

36 The applicant argues that the Board of Appeal disregarded the principle that signs must be compared as a whole. It submits that the Board of Appeal placed too much emphasis on the beginning of the marks, without taking sufficient account of the visual effect of the figurative element of the earlier mark. The applicant relies in that regard on the differences in the number of letters of which the signs at issue consist and on the additional word ‘tree’ included in the mark applied for. It also argues that the mere coincidence in a string of letters is not enough for a finding of similarity. It concludes that there is no identifiable or relevant common element between the signs at issue and that, visually, the signs at issue are dissimilar.

38 It must be stated at the outset that, contrary to what the applicant submits, the Board of Appeal, without making an error of assessment, identified the elements of similarity and dissimilarity between the signs at issue in order to assess, globally, whether they are visually similar and, if so, to establish the degree of such similarity by taking into account all the relevant aspects of those signs.

39 In the first place, the Board of Appeal correctly established the elements of similarity between the signs at issue. First, the words ‘copal’ and ‘compal’ coincide in almost all of the letters of which they consist, with the exception of the letter ‘m’. Secondly, the letters which coincide appear in the same order in the two signs, which is of some importance in the assessment of the visual similarities between those signs (see judgment of 8 September 2021, Cara Therapeutics v EUIPO – Gebro Holding (KORSUVA), T‑584/20, not published, EU:T:2021:541, paragraph 27 and the case-law cited). The fact that the mark applied for consists of the word element of the earlier mark, to which other words have been added, is an indication that those two marks are similar. In addition, even though, as the applicant submits, the word ‘copal’ of the mark applied for is not identical to the word ‘compal’ of the earlier mark, it must be stated that the former constitutes almost the entirety of the latter, so that there is a clear similarity between the marks at issue as regards those elements (see, to that effect and by analogy, judgment of 22 March 2018, Agricola J.M. v EUIPO – Miguel Torres (CLOS DE LA TORRE), T‑806/16, not published, EU:T:2018:163, paragraph 32 and the case-law cited). Moreover, those words are those which most attract the attention of the relevant public, as has been stated in paragraphs 31 and 33 above.

40 In the second place, the Board of Appeal also correctly noted that the marks at issue differed in that the earlier mark contained a figurative element and that the mark applied for contained the word ‘tree’ at the end of the sign. However, the Board of Appeal found, without making an error of assessment, that those differences were not sufficient to offset the similarities noted in paragraph 39 above. It is precisely because of those differences that the Board of Appeal concluded that there was an average and not high degree of visual similarity between the signs at issue.

41 Accordingly, the Board of Appeal did not make an error of assessment in taking the view that the signs at issue were visually similar to an average degree.

42 The Board of Appeal found, in paragraph 44 of the contested decision, that the level of phonetic similarity between the signs at issue was average, since the word elements ‘copal’ and ‘compal’ were pronounced in a very similar way, the sound ‘m’ being a soft consonant. The Board of Appeal added that the word element ‘tree’ – the second, shorter element of the mark applied for – did not make the marks dissimilar.

43 The applicant argues that the Board of Appeal wrongly ignored the letter ‘m’ of the word element of the earlier mark. It also argues that the letter ‘c’ at the beginning of the mark applied for would largely be unvoiced, and that the number of syllables was significant in the assessment of the phonetic similarity. Lastly, it submits that the mark applied for has a different rhythm of pronunciation because it consists of two words. It concludes that there is no identifiable or relevant common phonetic element between the signs at issue.

45 It must be noted, as did the Board of Appeal, that the pronunciation of the word element of the earlier mark, namely ‘compal’, is very similar to that of the first element of the mark applied for, namely ‘copal’, given that the letter ‘m’, placed before a consonant, will be pronounced in Portuguese as a nasal sound and, therefore, will be only slightly vocalised and, in any event, will be vocalised in a less noticeable manner than the consonant ‘p’ which follows it. The applicant is therefore wrong to claim that the Board of Appeal ignored the impact of the letter ‘m’ on the pronunciation of the earlier mark. The Board of Appeal correctly examined the impact of that additional letter, but concluded that the pronunciation of that letter did not sufficiently differentiate the two words ‘copal’ and ‘compal’ from a phonetic standpoint.

46 Furthermore, it is true that, as the applicant argues, the mark applied for contains a second word. However, although the pronunciation of the word ‘tree’ may reduce the impression of similarity between the signs at issue, it is not capable of offsetting the similarities found, given that it will be pronounced last and is a short word consisting of only one syllable. Lastly, the applicant does not adduce any evidence to show that the letter ‘c’ of the element ‘copal’ of the mark applied for would not be pronounced.

47 In the light of those considerations, it must be concluded that the Board of Appeal did not make an error of assessment in finding that the degree of phonetic similarity between the signs at issue was average.

48 The Board of Appeal noted, in paragraphs 45 to 47 of the contested decision, that the signs at issue were conceptually ‘highly similar’ for a significant part of the relevant public. First, it will perceive the figurative element of the earlier mark as a tree or leafy plant and will understand the meaning of the English word ‘tree’ of the mark applied for, so that it will find a conceptual identity between the word ‘tree’ and the figurative element of the earlier mark. Secondly, in the Board of Appeal’s opinion, the words ‘compal’ and ‘copal’ will both be meaningless to the majority of the relevant public, given that the word ‘compal’ is a fanciful word and the word ‘copal’, which refers to a very specific kind of resin, is probably unknown to the general public. Accordingly, both signs refer to a tree having almost the same name, namely a ‘copal tree’ and a ‘compal tree’.

49 First, the applicant disputes that the figurative element of the earlier mark will be perceived as a tree. Secondly, it submits that, even if consumers were to perceive the figurative element as a tree, it would be perceived as merely decorative, since, unlike the ‘copal tree’, a species endemic to Central America from which a resin is extracted, a ‘compal tree’ does not exist. Furthermore, in the applicant’s view, consumers would consider the verbal meaning of the figurative element of the earlier mark in their native language, namely Portuguese and not English. In the applicant’s opinion, the relevant public might thus, at a stretch, perceive the earlier mark as ‘compal arvore’, so that there would be no immediate conceptual comparison with the expression ‘copal tree’. Lastly, it disputes that a significant proportion of the relevant public would understand the meaning of the English word ‘tree’. It concludes that the signs at issue are not conceptually similar.

50 First, for the reasons already set out in paragraph 29 above, part of the relevant public will perceive the figurative element of the earlier mark as a stylised tree or a short, bushy tree and not as a purely decorative element.

51 Secondly, the Board of Appeal correctly noted that the word ‘tree’ was a basic English word, which the applicant does not, moreover, dispute. As has been observed in the case-law, basic English words will be understood by the majority of the Portuguese public. It is therefore incorrect to claim, as the applicant does, that people who understand the English word ‘tree’ in Portugal do not amount to a significant proportion of the relevant public in the present case. A knowledge of English, admittedly to varying degrees, is relatively widespread in Portugal. Although it cannot be claimed that the majority of the Portuguese public speaks English fluently, it may, however, reasonably be presumed that a significant part of that public has at the very least a basic knowledge of that language which enables it to understand and to pronounce English words as basic and everyday as ‘tree’ (see, to that effect and by analogy, judgment of 16 January 2014, Aloe Vera of America v OHIM – Detimos (FOREVER), T‑528/11, EU:T:2014:10, paragraph 68 and the case-law cited).

52 Accordingly, the Board of Appeal was entitled, without making an error of assessment, to take the view that a significant part of the relevant public would find a conceptual identity between the figurative element of the earlier mark and the word ‘tree’ included in the mark applied for.

53 Thirdly, as regards the meaning of the words ‘compal’ in the earlier mark and ‘copal’ in the mark applied for, the applicant does not dispute that the former is a fanciful word and that the latter is not generally known by the relevant public. It merely states that the copal tree is a tree endemic to Central America from which a resin is extracted, without, however, showing that the meaning of that word is, as it argues, known by the majority of the relevant public.

54 Consequently, the Board of Appeal was correct to note that, for the majority of the relevant public, the signs at issue will refer to a tree or a short, bushy tree having almost the same name, namely a ‘copal tree’ and a ‘compal tree’.

55 Lastly, the applicant errs in seeking to rely on the judgment of 17 October 2018, Golden Balls v EUIPO – Les Éditions P. Amaury (GOLDEN BALLS) (T‑8/17, not published, EU:T:2018:692), to show that the signs at issue are, as it argues, conceptually dissimilar. While it is true that, in that case, the Court concluded that there was no conceptual similarity between two signs – one of which, in English, was an almost literal translation of the other, in French – by taking the view that the relevant public would not make an immediate translation, it based that conclusion, inter alia, on the fact that the two signs were, moreover, completely dissimilar phonetically and visually, that the order of the words of which the signs consisted changed depending on the language of the sign in question and that one of the marks used the word ‘balls’ in the plural while the other used it in the singular (‘ballon’). Furthermore, that case involved the comparison of two word marks, both consisting of two words, which required the relevant public, in order to make a connection between the signs, to translate an entire expression (judgments of 16 September 2013, Golden Balls v OHIM – Intra-Presse (GOLDEN BALLS), T‑448/11, not published, EU:T:2013:456, paragraphs 37 to 51, and of 17 October 2018, GOLDEN BALLS, T‑8/17, not published, EU:T:2018:692, paragraphs 90 and 91).

56 It follows from the foregoing that the Board of Appeal did not make an error of assessment in concluding that there was a high degree of conceptual similarity between the signs at issue.

57 In paragraphs 48 to 50 of the contested decision, the Board of Appeal concluded that there was a likelihood of confusion in view of the normal degree of distinctiveness of the earlier mark, the similarity, or even identity, of the goods and services at issue, as well as the average degree of visual and phonetic similarity and the high degree of conceptual similarity between the signs at issue.

58 The applicant submits that the signs at issue are dissimilar and that, therefore, there can be no likelihood of confusion. On any view, in the event of a finding of certain similarities, it submits that those similarities are too weak in order to conclude that there is a likelihood of confusion.

60 First of all, it should be borne in mind that 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).

61 In that regard, first, as regards the similarity of the signs at issue, it should be noted that, as stated in paragraphs 41, 47 and 56 above, the Board of Appeal did not make an error of assessment in finding that those signs were visually and phonetically similar to an average degree and conceptually similar to a high degree. Accordingly, contrary to what the applicant claims, those similarities are not too weak.

62 Secondly, as regards the distinctive character of the earlier mark, the parties do not dispute that it must be regarded as normal, as the Board of Appeal found.

63 Thirdly, as noted in paragraphs 20 to 22 above, the goods and services at issue are in part identical and in part similar and the relevant public will have an average level of attention.

64 In the light of all those factors, the Board of Appeal did not make an error of assessment in concluding that there was a likelihood of confusion.

65 In the light of the foregoing, the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected and, consequently, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the head of claim seeking annulment of the Opposition Division’s decision of 2 June 2020.

66 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.

67 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Copal Tree Brands v EUIPO - Sumol + Compal Marcas (COPAL TREE) (EU trade mark - Judgment) [2022] EUECJ T-572/21 (28 September 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T57221.html Cite as: ECLI:EU:T:2022:594, EU:T:2022:594, [2022] EUECJ T-572/21

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