Campofrio Food Group v EUIPO - Cerioti Holding (SNACK MI) (EU trade mark - Judgment) [2023] EUECJ T-736/22 (20 December 2023)

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(EU trade mark – Opposition proceedings – Application for EU figurative mark SNACK MI – Earlier national figurative marks CAMPOFRIO SNACK’IN – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – No damage to reputation – Article 8(5) of Regulation 2017/1001)

Campofrío Food Group, SA, established in Madrid (Spain), represented by J. Erdozain López, M. Del Río Aragó, E. Seijo Veiguela and J. Vicente Martínez, lawyers,

European Union Intellectual Property Office (EUIPO), represented by C. Bovar, E. Markakis and V. Ruzek, acting as Agents,

composed of F. Schalin, President, I. Nõmm (Rapporteur) and G. Steinfatt, Judges,

1 By its action under Article 263 TFEU, the applicant, Campofrío Food Group, SA, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 August 2022 (Case R 59/2022-2) (‘the contested decision’).

2 On 25 February 2020, the intervener, Cerioti Holding SA, filed with EUIPO an application for registration of the following figurative sign as an EU trade mark:

3 The mark applied for covered goods and services in Classes 29, 30 and 35 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, corresponding, for each of those classes, to the following description:

– Class 29: ‘Salty and sweet potato-based snacks, salty and sweet potato-based snacks in salty and milk coating’;

– Class 30: ‘Salty and sweet snacks based on flour, cereals and corn; salty and sweet snacks based on flour, cereals and sweetcorn; chocolate snacks; salty and sweet snacks based on flour, cereals and corn in milk coating; bakery products in chocolate, sweet and milk coating; thin breadsticks covered in chocolate, in sweet coating and / or milk coating; pretzels in chocolate, in sweet coating and / or in milk coating; rice and/or cereal crisps covered in chocolate, in sweet and / or milk coating; crackers in chocolate, in sweet and / or milk coating; shrimp chips; sauces’;

– Class 35: ‘Wholesale and retail sales, also via the Internet of salty and sweet snacks’.

4 On 12 June 2020, the application for registration was published in European Union Trade Marks Bulletin No 2020/110.

5 On 9 September 2020, the applicant filed a notice of opposition, based on seven earlier marks, to registration of the mark applied for in respect of all of the goods and services referred to in paragraph 3 above.

6 The opposition was based, in the first place, on Czech figurative mark No 382315, filed on 19 October 2017 and registered on 29 October 2020, covering, inter alia, goods in Class 29 corresponding to the following description: ‘Meats; Game, not live; Meat extracts; Poultry; Fish, not live; Frozen vegetables; Preserved vegetables; Vegetables, dried; Vegetables, cooked; Fruit, preserved; Dried fruit; Frozen fruits; Cooked fruits; Jellies for food; Jams; Eggs; Milk; Milk products; Oils and fats; Cured sausages; Prepared dishes consisting principally of meat; Meat-based snack foods; Snack foods based on legumes; Nut-based snack foods; Fruit-based snack food’, reproduced below:

7 In the second place, the opposition was based on Portuguese figurative mark No 586467, filed on 3 August 2017 and registered on 30 October 2017, covering, inter alia, goods in Class 29 corresponding to the following description: ‘Meat, fish, poultry and game; Meat extracts; Prepared meat dishes; preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Oils and fats’, reproduced below:

8 In the third place, the opposition was based on United Kingdom figurative mark No 3377420, filed on 21 February 2019 and registered on 14 June 2019, covering, inter alia, goods in Class 29 corresponding to the following description: ‘Meats; Game, not live; Meat extracts; Poultry; Fish, not live; Frozen vegetables; Preserved vegetables; Vegetables, dried; Vegetables, cooked; Fruit, preserved; Dried fruit; Frozen fruits; Cooked fruits; Jellies for food; Jams; Eggs; Milk; Milk products; Oils and fats; Cured sausages; Prepared dishes consisting principally of meat; Meat-based snack foods; Snack foods based on legumes; Nut-based snack foods; Fruit-based snack food’, reproduced below:

9 In the fourth place, the opposition was based on Spanish figurative mark No 3678448, filed on 2 August 2017 and registered on 9 February 2018, covering, inter alia, goods in Class 29 corresponding to the following description: ‘Meat, fish, poultry and game; Meat extracts; prepared meat dishes; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats’, reproduced below:

10 In the fifth place, the opposition was based on Spanish figurative mark No 4059772, filed on 10 March 2020 and registered on 26 October 2020, reproduced below:

11 The mark referred to in the preceding paragraph covered, inter alia, goods in Classes 29 and 30, corresponding, for each of those classes, to the following description:

– Class 29: ‘Meats; Game, not live; Meat extracts; Poultry; Fish, not live; Frozen vegetables; Preserved vegetables; Vegetables, dried; Vegetables, cooked; Fruit, preserved; Dried fruit; Frozen fruits; Cooked fruits; Jellies for food; Jams; Eggs; Milk; Milk products; Oils and fats; Cured sausages; Chorizo; Sausages; Salami; Sausages; Prepared dishes consisting principally of meat; Meat-based snack foods; Snack foods based on legumes; Nut-based snack foods; Fruit-based snack food’;

– Class 30: ‘Coffee; Tea; Cocoa; Artificial coffee; Rice; Tapioca; Sago; Flour; Cereal preparations; Bread; Pastries; Edible ices; Sugar; Honey; Treacle; Yeast; Baking powder; Salt; Mustard; Vinegar; Sauces [condiments]; Spices; Ice for refreshment; Pizzas; Pizza bases; Sauces for pizzas; Pizza dough; Pizza spices; Pizza flour; Prepared meals in the form of pizzas; Cereal-based snack food; Snack foods consisting principally of confectionery; Crispbread snacks; Fruit cake snacks; Flour based savoury snacks; Prepared pizza meals; Cereal-based meal replacement bars; Rice-based prepared meals; Pasta-based prepared meals; Carbohydrate preparations for food; Sandwiches’;

12 In the sixth place, the opposition was based on Polish figurative mark No 516574, filed on 19 October 2017 and registered on 7 January 2021, covering, inter alia, goods in Class 29 corresponding to the following description: ‘Meats; Game, not live; Meat extracts; Poultry; Fish, not live; Frozen vegetables; Preserved vegetables; Vegetables, dried; Vegetables, cooked; Fruit, preserved; Dried fruit; Frozen fruits; Cooked fruits; Jellies for food; Jams; Eggs; Milk; Milk products; Oils and fats; Cured sausages; Prepared dishes consisting principally of meat; Meat-based snack foods; Snack foods based on legumes; Nut-based snack foods; Fruit-based snack food’, reproduced below:

13 In the seventh place, the opposition was based on Romanian figurative mark No 202004308, filed on 19 October 2017 and registered on 13 February 2021, covering, inter alia, goods in Class 29 corresponding to the following description: ‘Meat; Game, not live; Meat extracts; poultry meat; Fish, not live; Frozen vegetables; Preserved vegetables; Vegetables, dried; Vegetables, cooked; Fruit, preserved; Dried fruit; Frozen fruits; Compotes; Jellies for food; Jams; Eggs; Milk; Kumys [kumyss] [milk beverage]; Edible oils and fats; Cured sausages; Prepared dishes consisting principally of meat; Meat-based snack foods; Snack foods based on legumes; Snack foods based on nuts; Fruit-based snack food’, reproduced below:

14 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of 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) for all of the earlier marks referred to in paragraphs 6 to 13 above, and in Article 8(5) of that regulation for the earlier Spanish figurative marks Nos 3678448 and 4059772.

15 On 15 November 2021, the Opposition Division rejected the opposition in its entirety. Moreover, it stated that the opposition could not be based on the earlier United Kingdom figurative mark No 377420 or the earlier Spanish figurative mark No 4059772.

16 On 11 January 2022, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision. It then withdrew its opposition in so far as it was based on the earlier United Kingdom figurative mark No 377420 and earlier Spanish figurative mark No 4059772.

17 By the contested decision, the Board of Appeal dismissed the appeal. As the Opposition Division had done, it began by examining the earlier Spanish figurative mark No 3678448 and ruled out the existence of a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001 given that the signs at issue had only a very low degree of visual and phonetic similarity and were conceptually dissimilar, and the inherent distinctiveness of the earlier sign was normal. It then concluded that that finding also applied to the other earlier marks all of which were as similar or less similar to the mark applied for.

18 The Board of Appeal also rejected the opposition in so far as it was based on Article 8(5) of Regulation 2017/1001, on the ground that the earlier mark did not have a reputation and, therefore, one of the conditions set out in that article was not satisfied.

– order the applicant to pay the costs in the event that a hearing is convened.

The plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001

21 The applicant submits that the Board of Appeal was wrong to find that there was no likelihood of confusion for the purposes of Article 8(1)(b) of Regulation 2017/1001. It claims that EUIPO compared the signs based on a partial impression instead of an overall one. In essence, it disputes the validity of the Board of Appeal’s assessments of the distinctive and dominant elements of the marks at issue, the similarity of the signs at issue and the distinctiveness of the earlier mark.

23 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier mark, the mark applied for must not be registered if, because of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

24 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. 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).

25 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

26 It is in the light of those principles that it is necessary to examine whether the Board of Appeal was correct to conclude that there was no likelihood of confusion on the part of the relevant public for the purposes of Article 8(1)(b) of Regulation 2017/1001.

27 Since the Board of Appeal began by examining the likelihood of confusion in respect of the earlier Spanish figurative mark No 3678448 (‘the earlier mark’), it is appropriate, in the first place, to analyse the assessments relating to that mark before proceeding to examine, in the second place, the assessments relating to the other earlier marks.

28 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. 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).

29 In the present case, the protection of the earlier mark extends to Spain, which is therefore the relevant territory where the perception of the marks at issue by the average consumer is to be taken into account. According to the Board of Appeal, the goods and services covered by the marks at issue are aimed at the general public with an average level of attention, with the exception of wholesale services in Class 35, which are aimed at the professional public, also with an average level of attention. There are no grounds on which to call those assessments into question; moreover, they are not disputed by the applicant.

30 In paragraph 27 of the contested decision, the Board of Appeal found that the goods and services at issue were deemed identical or similar. There are no grounds on which to call that finding into question; moreover, it is not disputed by the applicant.

31 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 components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

32 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).

33 In the present case, the Board of Appeal found that the signs were visually and phonetically similar to a low degree and that conceptually they were dissimilar.

34 The applicant argues that the signs are visually and phonetically similar to a high degree and that conceptually they are similar to a low degree.

36 In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue.

37 In relation to the earlier mark, the Board of Appeal found that the distinctiveness of the element ‘campofrío’ was lower than normal and that the element ‘snack’in’ was the dominant element of that mark. As regards the mark applied for, it found that the distinctiveness of the word element ‘snack mi’ as a whole and the figurative elements of the letter ‘a’ in the word ‘snack’ was lower than normal and that the element ‘snack’, in particular its letter ‘a’, was the dominant element of that mark.

38 The weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 32).

39 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 easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).

40 It is in the light of those considerations that the assessment of the distinctive and dominant elements of the marks at issue is to be examined.

41 The applicant submits that, in the two marks at issue, the element ‘snack’ is distinctive given that it does not convey any specific meaning for the relevant public. As for the earlier mark, it submits that the Board of Appeal made an error of assessment in finding that the dominant element was only the term ‘snack’ and not ‘snack’in’. Furthermore, it states that the term ‘campofrío’ is also distinctive, but, due to its small size, is likely to be ignored by consumers and is therefore not dominant. Regarding the mark applied for, the applicant confirms that the dominant element is ‘snack’ and adds that the word ‘mi’ is also visually striking.

43 As regards the distinctive and dominant elements of the earlier mark, it should first be pointed out that the parties are in agreement that ‘snack’in’ is the only dominant element of that mark and, consequently, there is no need to call that assessment into question.

44 Concerning the distinctive elements of the earlier mark, as regards the element ‘snack’in’, it should be noted that the General Court has previously held that the word ‘snack’ forms part of the basic English vocabulary known by a large part of the general public of the European Union. Moreover, it is a term used in many EU languages to refer to a light meal eaten quickly and is included in the more general notion of ‘food’ (see, to that effect, judgment of 11 May 2010, Wessang v OHIM – Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraphs 19 and 52). Therefore, given that, in the present case, the relevant Spanish public is part of the general public of the European Union, the Board of Appeal was correct in assuming that the word ‘snack’ would be understood by the relevant public as referring to a light meal or, in other words, a snack and that it is thus descriptive of the goods and services at issue.

45 In that regard, it should be borne in mind that, when certain elements are descriptive of the goods and services in respect of which the mark is protected or of the goods and services designated by the application for registration, those elements are regarded as having only a low or even very low degree of distinctiveness. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark (see judgment of 2 March 2022, Degode v EUIPO – Leo Pharma (Skinovea), T‑715/20, not published, EU:T:2022:101, paragraph 59 and the case-law cited).

46 In addition to the word ‘snack’, the element ‘snack’in’ also contains the word ‘in’, a preposition in the English language which, in accordance with case-law, always requires a context in order for its exact meaning to be understood (see, to that effect, judgment of 24 October 2017, Keturi kambariai v EUIPO – Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 124). Therefore, the term ‘in’ has no clear definition for the relevant public and thus a normal degree of distinctiveness.

47 Given that the degree of distinctiveness of the word ‘snack’ is low or even very low, and that the distinctiveness of the word ‘in’ is normal, the distinctiveness of the element ‘snack’in’ as a whole must be considered low.

48 As regards the element ‘campofrío’, it should be pointed out that it does not exist in Spanish. It is true that, taken separately, the words ‘campo’ and ‘frío’ mean ‘field’ and ‘cold’, respectively. Nevertheless, their meaning does not appear to relate directly to the goods and services at issue and therefore the distinctiveness of the element ‘campofrío’ is normal.

49 Accordingly, in the earlier mark, the dominant element is the element ‘snack’in’, which also constitutes a distinctive element of which the distinctiveness is low, while the distinctiveness of the element ‘campofrío’ is normal.

50 As regards the distinctive and dominant elements of the mark applied for, it is clear that the dominant element of the mark applied for is the term ‘snack’, including the letter ‘a’. Although the letter ‘a’ is more stylised than the other letters, it is an integral part of the word ‘snack’ and is not distinguishable from the other letters by its colour or font. Even in terms of size, it is not much larger than the letters ‘s’ and ‘k’. Consequently, it should not be regarded as dominating the rest of the word ‘snack’. Neither the letter ‘a’ nor the word ‘mi’ is negligible, since, as secondary elements, they will be taken into consideration in the global assessment.

51 As regards the distinctive elements of the mark applied for, the term ‘snack’ is also present in that mark and must be regarded, as stated in paragraph 47 above, as an element the distinctiveness of which is low or even very low. Furthermore, it is clear that the figurative elements, namely the letter ‘a’ alluding to the consumption of snacks, further reinforce the descriptiveness of the term ‘snack’ and, therefore, its lack of distinctive character.

52 The word ‘mi’ is the possessive pronoun in the first person singular in Spanish. Given that the inversion of the position of the possessive ‘mi’ is unusual in Spanish, the element ‘snack mi’ has a certain degree of distinctiveness. However, in the presence of the descriptive term ‘snack’, the distinctiveness of the element ‘snack mi’ as a whole is only low, as the Board of Appeal was correct to find.

53 Therefore, in the mark applied for, the dominant element is the word ‘snack’ and the distinctiveness of the element ‘snack mi’, as a whole, is low.

54 The Board of Appeal found that the signs at issue were visually similar to a very low degree. It considered that those signs were similar in so far as they shared the non-distinctive word element ‘snack’ and that they differed in the additional word elements ‘campofrío’, ‘in’ and ‘mi’ and in their figurative and decorative elements.

55 The applicant submits that the signs at issue are similar to a high degree in view of the presence and positioning of the common term ‘snack’ in each of those signs, the very similar or identical colour of the graphical elements and the fact that the additional elements do not give rise to sufficient dissimilarity.

57 Both marks at issue share the element ‘snack’, which is a dominant element in each of them, but which is not distinctive. The distinctive elements, namely the terms ‘in’ and ‘campofrío’ of the earlier mark and the term ‘mi’ in the mark applied for, do not coincide.

58 Furthermore, the marks differ in their colours, font and figurative elements. Contrary to the applicant’s assertion, the colours of the graphical elements of the two marks are neither almost identical nor similar. The letters of the element ‘snack’in’ are white whereas the letters of the element ‘snack mi’ appear mainly in a colour which could be described as light magenta or dark pink. The background colour of the earlier mark is dark purple, whereas the mark applied for has a white background. Even though the colours magenta, pink and purple may be regarded as belonging to the same colour range, it should be pointed out that, in the present case, the colours are at different ends of that range, which makes it easy to distinguish them.

59 It should also be pointed out that there are notable differences in the outlines of the marks at issue in so far as the earlier mark has a dark purple rectangle which serves as a background, whereas the outline of the mark applied for blends into the letters of the element ‘snack mi’.

60 Moreover, the distinctive element ‘campofrío’ of the earlier mark, depicted against a red background, is also striking in the visual impression of the earlier mark due to its colour and positioning. As regards the mark applied for, the decorative elements of the letter ‘a’ are likewise not negligible and must be taken into account in the visual comparison of the marks at issue. Lastly, it should be noted that there is a difference in fonts, reinforced by the fact that the letters forming the mark applied for are offset whereas those forming the earlier mark are in a straight line.

61 In the light of the foregoing, it must be held that the only visual similarity between the signs at issue is the presence of the non-distinctive element ‘snack’. Although that word is a dominant element, there are substantial differences between all of the other elements, including the distinctive elements of the marks at issue. Consequently, there is only a low degree of visual similarity between the signs at issue.

62 The Board of Appeal found that the signs at issue were phonetically similar to a low degree, given that their pronunciation coincided only in the common element ‘snack’.

63 The applicant submits that the signs at issue are similar to a high degree because of the common term ‘snack’ and the similar sound of the terms ‘in’ and ‘mi’.

65 The signs at issue coincide in the word ‘snack’ and differ due to the presence of the words ‘in’ and ‘mi’. Admittedly, there is also some similarity between the words ‘in’ and ‘mi’, in view of the fact that they are both formed of two letters, one of which is the letter ‘i’. However, the positioning of the letter ‘i’ is different in those signs and there are therefore differences between the terms ‘mi’ and ‘in’ in the global assessment of the phonetic similarity. As regards the word ‘campofrío’ in the earlier mark, it will probably not be pronounced owing to its smaller size.

66 Accordingly, since the signs at issue share the word ‘snack’ and differ in the terms ‘in’ and ‘mi’, they are phonetically similar to an average degree.

67 The Board of Appeal found that the signs were conceptually dissimilar, in view of the fact that the mark applied for alluded to the idea of ‘my snack’ and the earlier mark had no clear meaning as a whole.

68 The applicant argues that the term ‘snack’ and the elements ‘snack mi’ and ‘snack’in’ are devoid of meaning for the relevant public. It thus submits that the Board of Appeal made an error of assessment in finding that the signs at issue were conceptually different.

70 As set out in paragraph 44 above, it should be recalled that the word ‘snack’ is descriptive and would be understood by the relevant public as referring to a snack.

71 In the earlier mark, the word ‘snack’ is juxtaposed with the word ‘in’, which has no clear meaning, as stated in paragraph 46 above. Furthermore, the sign in question contains the invented word ‘campofrío’ which also has no clear meaning for the relevant public. Therefore, in view of the presence of the terms ‘in’ and ‘campofrío’, the earlier mark as a whole has no clear meaning.

72 In the mark applied for, the word ‘snack’ is juxtaposed with the word ‘mi’, meaning ‘my’ in Spanish. In that regard, it should be noted that the Board of Appeal was right to find that the sign in question alluded to the idea of ‘my snack’. The fact that the order of those words does not follow the rules of Spanish or English grammar is not such as to render the sign incomprehensible. That is even less so in the presence of the figurative elements attached to the letter ‘a’, which allude to the possession and consumption of a snack.

73 In that regard, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks in question are conceptually dissimilar (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89). In view of the fact that the earlier mark as a whole has no meaning and that the mark applied for has a meaning, it follows that the signs are conceptually dissimilar.

74 However, by breaking down the mark into word elements which, for the relevant public, suggest a concrete and immediately understandable meaning, the relevant public would understand the word ‘snack’ as referring to the goods and services covered by the marks at issue, which supports the conclusion that there is a certain degree of conceptual similarity between those marks (see, to that effect, judgment of 1 February 2023, NFL Properties Europe v EUIPO – Groupe Duval (DUUUVAL), T‑671/21, not published, EU:T:2023:33, paragraph 57 and the case-law cited). However, since the other word elements of those marks will have a different meaning, while the similarity derives from an element which is descriptive of the goods and services covered by those marks, which plays only a limited role in the assessment of the likelihood of confusion, the level of conceptual similarity between them must, at most, be regarded as low (see, to that effect, judgment of 9 December 2020, Man and Machine v EUIPO – Bim Freelance (bim ready), T‑819/19, not published, EU:T:2020:596, paragraph 65 and the case-law cited).

75 In those circumstances, the conceptual similarity between the signs at issue must be considered low.

76 In the light of the foregoing, it must be held that there is a low degree of visual similarity, an average degree of phonetic similarity and a low degree of conceptual similarity between the marks at issue.

77 The Board of Appeal stated that the evidence provided by the applicant was insufficient to demonstrate the enhanced distinctiveness of the earlier mark acquired through use or reputation.

78 The applicant submits that the earlier mark enjoys enhanced distinctiveness acquired through use and reputation. It claims that the Board of Appeal failed to take into account Decision No 4034211/5 of the Oficina Española de Patentes y Marcas (Spanish Patent and Trademark Office; ‘OEPM’) of 4 June 2020, which, according to the applicant, confirmed the reputation of the earlier mark. In addition, it submits that Annexes 5 to 8 filed during the proceedings before EUIPO prove that it has made significant investments in the snack sector and has become the leader in the snack market with the mark ‘snack’in’.

80 It must be borne in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either per se or because of the reputation which they possess on the market, enjoy broader protection than marks with less distinctive character. The distinctive character of the earlier mark, and in particular its reputation, must therefore be taken into account when assessing whether there exists a likelihood of confusion (see judgment of 2 February 2022, Vita Zahnfabrik v EUIPO – VIPI Produtos Odontológicos (VITABLOCS TriLuxe forte), T‑202/21, not published, EU:T:2022:42, paragraph 25 and the case-law cited).

81 In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 8 March 2023, Sympatex Technologies v EUIPO – Liwe Española (Sympathy Inside), T‑372/21, not published, EU:T:2023:111, paragraph 126 and the case-law cited).

82 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was entitled to find that the earlier mark did not enjoy enhanced distinctiveness.

83 First, as regards the evidence contained in Annexes 5 to 8 filed before EUIPO, it must be confirmed, as the Board of Appeal found, that those annexes, comprising extracts from four websites relating to Campofrío’s advertising campaigns and translations thereof, do not provide relevant information, such as sales volumes, market surveys, financial information on advertising campaigns or other evidence referred to in paragraph 81 above, for the purpose of examining whether the mark has acquired enhanced distinctiveness through use or reputation.

84 In that regard, it must be held that, in the absence of data demonstrating the extent of the dissemination of the earlier mark in the relevant territory, the applicant has failed to show that a large number of consumers had been exposed to that mark and, therefore, the enhanced distinctiveness of that mark on account of the relevant public’s recognition of it, within the meaning of the case-law cited in paragraph 81 above (see, to that effect, judgment of 16 November 2022, Grupo Eig Multimedia v EUIPO – Globalización de Valores CFC & GCI (FORO16), T‑796/21, not published, EU:T:2022:711, paragraph 59).

85 Second, as regards the decision of the OEPM of 4 June 2020, it should be borne in mind that the EU trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation 2017/1001, with the result that EUIPO or, on appeal, the General Court, is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur and Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).

86 In any event, the Board of Appeal duly examined that decision of 4 June 2020 and rightly concluded that it did not state that the earlier mark had acquired a reputation. Accordingly, the decision of the OEPM is not capable of affecting the legality of the Board of Appeal’s findings that the inherent distinctiveness of the earlier mark is normal.

87 In the light of the foregoing, it must be held that the applicant did not demonstrate before the Board of Appeal that the earlier mark had acquired enhanced distinctiveness through use or reputation.

88 In paragraphs 87 to 93 of the contested decision, the Board of Appeal found that, despite the fact that the goods and services covered by the marks at issue were identical, there was no likelihood of confusion on the part of the relevant public with an average level of attention, given the very low degree of visual and phonetic similarity of the marks at issue, the conceptual differences and the fact that the inherent distinctiveness of the earlier mark is normal.

89 The applicant submits that there is a likelihood of confusion on account of the high degree of visual and phonetic similarity between the marks at issue and the fact that the goods and services at issue are identical or highly similar.

91 It should be recalled that, in accordance with settled case-law, the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (see judgment of 12 October 2022, MCO (IP) v EUIPO – C8 (C2), T‑461/21, not published, EU:T:2022:624, paragraph 45 and the case-law cited).

92 In the present case, it follows from the considerations already set out that the relevant Spanish public displays an average level of attention with regard to the goods and services at issue. Next, it has been found that the goods and services at issue were identical or similar. In addition, the visual similarity of the marks at issue was regarded as low, the phonetic similarity as average and the conceptual similarity as low. Lastly, it has been pointed out that the inherent distinctiveness of the earlier mark was normal, since it had not acquired enhanced distinctiveness through use or reputation.

93 Furthermore, as regards the similarity of the signs at issue, it should be stated that they coincide only in the descriptive element ‘snack’ and that all the other elements are different.

94 In addition, it should be borne in mind that, where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does often not lead to a finding that such likelihood exists (see judgment of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 121 and the case-law cited).

95 In those circumstances, it should be stated that, in the light of the weak distinctive character of the term ‘snack’ and the presence of the distinctive and sufficiently dissimilar elements distinguishing the marks at issue visually, phonetically and conceptually, the Board of Appeal was right in ruling out a likelihood of confusion on the part of the relevant public, despite the fact that the goods and services at issue were identical or similar.

96 In the light of the foregoing, it must be held that, as regards the earlier mark and the mark applied for, the Board of Appeal was entitled to conclude that there was no likelihood of confusion for the purposes of Article 8(1)(b) of Regulation 2017/1001.

97 In paragraphs 97 to 99 of the contested decision, the Board of Appeal found that the other earlier marks relied on in support of the opposition were all as similar as the earlier mark to the mark applied for, or less similar, and that, consequently, the outcome of the assessment of the likelihood of confusion could not differ as regards those other marks. Furthermore, it found that the enhanced distinctiveness of the other earlier marks was likewise not proved, for the same reasons as those relied on in respect of the earlier mark.

98 The applicant has adduced no evidence seeking specifically to contest that finding or the Board of Appeal’s assessments which support it.

99 Consequently, the Board of Appeal’s finding that there was no likelihood of confusion on the part of the relevant public as regards the other earlier marks relied on in support of the opposition must be upheld.

100 It follows from the foregoing that the plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected in its entirety as unfounded.

The plea in law alleging infringement of Article 8(5) of Regulation 2017/1001

101 Under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

102 The applicant submits that the Board of Appeal wrongly concluded that the evidence provided by it was insufficient to demonstrate the reputation of the earlier mark for the purposes of Article 8(5) of Regulation 2017/1001. It states that even though some evidence dates from 2021, that evidence establishes that the reputation was obtained due to efforts to increase the reputation of the earlier mark prior to that date. Furthermore, it submits that the evidence shows that the applicant has made significant investments in advertising campaigns, which have enabled it to become a leader in the snack market and thus set the trend in that field.

104 In the examination of the enhanced distinctiveness of the earlier mark allegedly acquired through use or reputation, the Board of Appeal, in paragraphs 69 to 83 of the contested decision, carried out a thorough examination of the evidence adduced by the applicant. As regards Annexes 1 to 10, the Board of Appeal rightly found that that evidence was not sufficient, given that it did not provide any quantitative or financial data or sufficient information on the trade mark awareness, market share and intensity of use.

105 As regards the additional evidence produced before the Board of Appeal, namely documents 1 to 7, the Board of Appeal rightly pointed out, first, that all of that evidence postdated the relevant period or was undated, and, second, that most of it, in so far as it related to a single shared award, was aimed at a professional public and therefore did not demonstrate reputation in the perception of the relevant public, in particular in the absence of additional information regarding traffic on magazines’ websites or the distribution figures for magazines referring to that award or to the reach of that award. In addition, it argued that the majority of the evidence aimed primarily to reiterate that the applicant had acquired a leading position in the relevant market through its mark ‘Campofrío’, but not through the earlier mark.

106 In those circumstances, the Board of Appeal was right in concluding that the evidence adduced by the applicant was insufficient to demonstrate that the condition relating to the existence of a reputation of the earlier mark was satisfied.

107 Accordingly, since one of the cumulative conditions necessary for the application of Article 8(5) of Regulation 2017/1001 has not been satisfied, the enhanced protection granted to an earlier trade mark under that provision cannot validly be relied on.

108 The plea alleging infringement of Article 8(5) of Regulation 2017/1001 must be rejected as unfounded and, consequently, the action must be dismissed in its entirety.

109 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.

110 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by 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) >> Campofrio Food Group v EUIPO - Cerioti Holding (SNACK MI) (EU trade mark - Judgment) [2023] EUECJ T-736/22 (20 December 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T73622.html Cite as: EU:T:2023:852, [2023] EUECJ T-736/22, ECLI:EU:T:2023:852

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