Franmax v EUIPO - Ehrmann (Dino) (Judgment) [2016] EUECJ T-21/15 (26 April 2016)

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(EU trade mark — Opposition proceedings — Application for EU figurative trade mark Dino — Earlier EU figurative trade mark representing a dinosaur — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009)

Franmax UAB, established in Vilnius (Lithuania), represented by E. Saukalas, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent, assisted by B. Uriarte Valiente, lawyer,

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

Ehrmann AG Oberschönegg im Allgäu, established in Oberschönegg (Germany), represented by A. Gaul, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 23 October 2014 (Case R 2012/2013-5) concerning opposition proceedings between Ehrmann AG Oberschönegg im Allgäu and Franmax UAB,

composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,

having regard to the application lodged at the Court Registry on 19 January 2015,

having regard to the response of EUIPO lodged at the Court Registry on 11 May 2015,

having regard to the response of the intervener lodged at the Court Registry on 29 April 2015,

having regard to the fact that no request for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge-Rapporteur, pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991, to rule on the action without an oral procedure,

1 On 16 April 2012 the applicant, Franmax UAB, filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The mark in respect of which registration was sought is the following figurative sign:

3 The goods in respect of which registration was sought are, inter alia, in Classes 29 and 30 of the Nice Agreement of 15 June 1957 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 29: ‘Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and other milk products’;

– Class 30 ‘Coffee, cocoa and artificial coffee; rice, tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; spices; ice’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2012/111 of 14 June 2012.

5 On 13 September 2012 the intervener, Ehrmann AG Oberschönegg im Allgäu, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to the registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the international figurative mark designating the European Union, registered on 23 June 2006 under number 903019, reproduced below, in that it covers goods in Classes 29 and 30 corresponding, for each of those classes, to the following description:

– Class 29: ‘Milk and milk products, especially sour milk products, yoghurt products, butter milk products, cream products, whey products for nutrition purposes, non-alcoholic milk drinks with a predominant milk fraction, curd products, half-fat milk products, desserts consisting essentially of milk and/or cream, also using binding agents based on starch; soya products as foodstuffs, especially substitute products for milk, cheese, butter, yoghurt, curd, pudding, desserts and similar food based on soya (as far as included in this Class); all above goods also containing fruits, vegetables, herbs, spices, cereals, juices or extracts from the above ingredients and flavours, all above-mentioned goods as fresh or cured finished products’;

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8 By decision of 14 August 2013, the Opposition Division partially upheld the opposition and rejected the registration application for ‘preserved fruits’, ‘compotes’ and ‘milk and other milk products’ in Class 29, and ‘coffee’, ‘cocoa’, ‘artificial coffee’, ‘pastry’, ‘confectionery’, ‘preparations made from cereals’, ‘spices’ and ‘ices’ in Class 30. In comparing the goods covered by the marks at issue, the Opposition Division first noted the existing identity between, on the one hand, ‘milk and other milk products’ covered by those marks and, on the other hand, ‘ices’ covered by the mark applied for and ‘ice-cream’ covered by the earlier mark. Second, the Opposition Division held that there was a similarity between, on the one hand, ‘coffee’ and ‘cocoa’ covered by the mark applied for and ‘milk products’ covered by the earlier mark and, on the other hand, ‘confectionery’ covered by the mark applied for and ‘ice-cream’ covered by the earlier mark. Third, it found that there was a low degree of similarity between, on the one hand, ‘preserved fruits’, ‘compotes’, ‘artificial coffee’, ‘preparations made from cereals’ and ‘pastry’ covered by the mark applied for and ‘milk products’ and ‘ice-cream’ covered by the earlier mark and, on the other hand, ‘spices’ covered by the mark applied for and ‘soya products’ covered by the earlier mark.

9 On 14 October 2013 the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

10 By decision of 23 October 2014, the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division in so far as it had rejected the trade mark application for ‘preserved fruits’ and ‘spices’, and dismissed the appeal as to the remainder (‘the contested decision’). According to the Board of Appeal, the ‘preserved fruits’ and ‘spices’ covered by the mark applied for and the ‘milk and milk products’ covered by the earlier mark did not bear any similarity. It also endorsed the Opposition Division’s findings that the ‘milk and milk products’ and ‘ices’ covered by the mark applied for were identical to the goods covered by the earlier mark. As regards the comparison between ‘coffee’, ‘cocoa’, ‘artificial coffee’ and ‘preparations made from cereals’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark, the Board of Appeal partially endorsed the Opposition Division’s conclusions by finding a low degree of similarity between those products, in so far as the relevant consumer could think that the same undertaking had responsibility for their manufacture. Last, the Board of Appeal departed from the Opposition Division’s conclusions by finding that the ‘compotes’, ‘pastry’ and ‘confectionery’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark were similar, in so far as those goods had an identical purpose, the same method of use, the same distribution channels and target public, and that they were in competition or complementary. As regards the comparison of the signs at issue, the Board of Appeal held, first, that the representation of dinosaurs in the two marks at issue displayed, despite some differences, a medium degree of visual similarity. It further indicated that phonetic comparison of the signs at issue was irrelevant, since a figurative mark without verbal elements could not be pronounced. Finally, the Board of Appeal found that the marks at issue both evoked a happy dinosaur and were therefore ‘highly similar’ conceptually. The Board of Appeal concluded from this that the marks at issue must be considered similar overall. As regards the global assessment of the likelihood of confusion, the Board of Appeal observed that the verbal element ‘dino’ in the mark applied for only strengthens the concept derived from the figurative element. Consequently, the Board of Appeal held that, taking account of the similarity of the marks at issue, of some of the goods covered by them, and of the average level of attentiveness of the relevant public, it was likely that that public would believe that those goods came from the same undertaking or from an economically-linked undertaking, so that the mark applied for could not be registered for those same goods.

13 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.

14 As regards the comparison of the goods, the applicant first submits, in substance, that contrary to what the Board of Appeal held in the contested decision, ‘coffee’, ‘cocoa’, ‘artificial coffee’ and the ‘preparations made from cereals’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark are not similar. Furthermore it argues that, contrary to what was found in that decision, there is no similarity between the ‘compotes’, ‘pastry’ and ‘confectionery’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark.

15 Concerning the comparison of the signs at issue, the applicant argues that, contrary to what was found in the contested decision, they are not visually similar. It concedes, however, that there is a certain conceptual similarity between the signs in that the relevant public will recognise the image of a dinosaur in them.

16 As regards the global assessment of the likelihood of confusion, the applicant argues that, in so far as the goods covered by the marks at issue are normally sold in self-service stores, the visual similarity between the signs is more important than their conceptual similarity. In the present case, the visual differences between the signs at issue offset their conceptual similarity. Consequently, there is no likelihood of confusion between the marks at issue.

18 Article 8(1)(b) of Regulation No 207/2009 provides that, 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

19 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 line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and take account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

20 At the outset, it is important to note that, as is apparent from the contested decision and is not disputed by the applicant, the relevant territory in the present case is the European Union, and, taking into consideration the characteristics of the goods, the relevant public consists of the public at large, namely reasonably well-informed and reasonably observant and circumspect persons whose degree of attention is not particularly high.

21 According to settled case-law, in assessing the similarity of the goods or services in question, all relevant factors pertaining to the relationship between those goods and services should be taken into account. Those factors include, in particular, their nature, purpose, 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 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

22 Complementary goods or services are those with a close connection with each other, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the manufacture of those goods or provision of those services lies with the same undertaking. By definition, it must be possible for complementary goods or services to be used together, with the result that goods and services intended for different publics cannot present such a character (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

Comparison between ‘coffee’, ‘cocoa’ and ‘artificial coffee’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark

23 In the contested decision, the Board of Appeal found that there was a ‘low degree of similarity’ between ‘coffee’, ‘cocoa’ and ‘artificial coffee’ on the one hand and ‘milk products’ on the other. In that regard, it indicated that coffee was often consumed with milk and cocoa was typically prepared with milk. Although milk is not essential or indispensable to coffee, but, conversely, it is however essential for some types of coffee, such as cappuccinos, frappuccinos and lattés. Various milkshakes or other milk-based drinks are coffee- or cocoa-flavoured. Coffee and milk are often sold together, for example in vending machines, so that the relevant public may think that the responsibility for the manufacture of those goods lies with the same undertaking.

24 The applicant argues that ‘coffee’, ‘cocoa’ and ‘artificial coffee’ on the one hand and ‘milk products’ on the other are not similar. It argues that the distribution channels and manufacturing process of those goods are different, given that the technologies used for products of vegetable origin are not the same as those used for products of animal origin. Furthermore, the applicant claims that the notion of complementarity covers only the use of the goods or services concerned and not their manufacturing process, as is clear from directives, earlier EUIPO decisions, and the case-law of the Court. The applicant adds that, according to EUIPO’s research tool for assessing the similarity between goods and services, ‘coffee’, ‘cocoa’ and ‘artificial coffee’ on the one hand and ‘milk products’ on the other are not similar. Finally, it notes that the goods concerned are sold in different sections of supermarkets.

26 As the Board of Appeal correctly held in the contested decision, ‘coffee’, ‘cocoa’ and ‘artificial coffee’ are complementary to ‘milk products’ in so far as they are often consumed together as coffee, cocoa and artificial coffee are generally mixed with milk (see, to that effect, judgment of 12 December 2014 in Comptoir d’Épicure v OHIM — A-Rosa Akademie (da rosa), T‑405/13, EU:T:2014:1072, paragraph 99). Furthermore, although coffee, cocoa and artificial coffee do not constitute beverages per se, they can be used to prepare beverages which enter into competition with milk, thus they must also be considered as goods that are in competition with the latter (see, to that effect, judgment of 12 December 2014 in Ludwig Schokolade v OHIM — Immergut (TrinkFix), T‑105/13, EU:T:2014:1070, paragraphs 81 and 82).

27 It should also be noted that ‘coffee’, ‘cocoa’, ‘artificial coffee’ and ‘milk products’ share the same distribution channels, are generally displayed in the same or nearby sections of supermarkets, and that they can come from the same producers (see, to that effect, judgment in da rosa, cited in paragraph 26 above, EU:T:2014:1072, paragraph 99).

28 The Board of Appeal was therefore correct to find in the contested decision that ‘coffee’, ‘cocoa’ and ‘artificial coffee’ in Class 30, covered by the mark applied for, and ‘milk products’ in Class 29, covered by the earlier mark, were similar, albeit at a low degree.

30 First, even if, as the applicant submits, ‘coffee’, ‘cocoa’ and ‘artificial coffee’, on the one hand, and ‘milk products’, on the other, cannot be considered to be complementary on the grounds that one would be needed to manufacture the other, it must be noted that, as indicated at paragraph 26 above, those products are complementary in their use, given that coffee, cocoa and artificial coffee are often consumed with milk. That finding by the Board of Appeal is not contested by the applicant.

31 Furthermore, the applicant merely claims that the distribution channels and the manufacturing process of ‘coffee’, ‘cocoa’ and ‘artificial coffee’ on the one hand and ‘milk products’ on the other are different, given that the technologies used to manufacture products of vegetable origin are different from those used for products of animal origin. Thus, the applicant does not indicate how those technological differences prevent an undertaking producing both milk products and coffee, cocoa and artificial coffee.

32 Moreover, as regards the argument that EUIPO’s research tool for assessing the similarity between goods and services showed that ‘coffee’, ‘cocoa’ and ‘artificial coffee’ on the one hand and ‘milk products’ on the other were not similar, it is sufficient to note that, as acknowledged by the applicant itself, that tool evaluates the similarity of goods only by reference to earlier EUIPO decisions. However, it is settled case-law that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice of those Boards of Appeal (judgment of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 48, and order of 3 October 2012 in Cooperativa Vitivinícola Arousana v OHIM, C‑649/11 P, EU:C:2012:603, paragraph 59).

33 If the principles of equal treatment and good administration require EUIPO, in the course of examining an application for registration of an EU trade mark, to take into account decisions already taken in respect of similar applications and to consider with special care whether it should decide in the same way or not, their application must however observe the principle of legality, from which it is clear that the person applying for registration of a sign as a trade mark may not rely, to its advantage and in order to secure an identical decision, upon a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and of good administration, the examination of any application for registration must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, applicable in the factual circumstances of the particular case, the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 77, and 30 April 2013 in Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, EU:T:2013:225, paragraph 34).

34 In the present case, it is clear from the considerations set out in paragraphs 26 to 28 above that the Board of Appeal correctly held in the contested decision that ‘coffee’, ‘cocoa’ and ‘artificial coffee’ in Class 30, covered by the mark applied for and ‘milk products’ in Class 29, covered by the earlier mark, were similar. Consequently, pursuant to the case-law cited in paragraphs 32 and 33 above, that assessment cannot be called into question by virtue of the mere fact that the Board of Appeal did not follow EUIPO decision-making practice in the present case (see, to that effect, judgment of 3 July 2013 in Airbus v OHIM (NEO), T‑236/12, ECR, EU:T:2013:343, paragraph 52).

Comparison between ‘preparations made from cereals’ covered by the mark applied for and ‘milk products’ covered by the earlier mark

35 In the contested decision, the Board of Appeal found that there was a ‘low degree of similarity’ between ‘preparations made from cereals’ and ‘milk products’. In that regard, it noted that those products were in competition, in so far as cereal milk, such as quinoa milk or oat milk, which fall within the category of ‘preparations made from cereals’, is often consumed as a substitute for cow’s milk by persons who are lactose intolerant.

36 The applicant argues that the manufacturers of cereal products do not manufacture milk, and vice versa, due to the different technologies used to produce those goods. Furthermore, it was clear from a search carried out using EUIPO’s research tool for assessing the similarity between goods and services, and from a decision of the First Board of Appeal of EUIPO, placed in the case file for the present case, that the goods in question are not similar.

38 First, it must be noted that the applicant does not challenge the Board of Appeal’s finding that the goods in question are in competition, given that cereal milk, which falls within the category of ‘preparations made from cereals’, is often consumed as a substitute for cow’s milk by persons who are lactose intolerant.

39 Furthermore, it should be noted that the applicant merely claims that the producers of ‘preparations made from cereals’ and ‘milk products’ are not the same, on the grounds that different technologies are used to produce those goods, without explaining how that technological consideration prevents an undertaking manufacturing both ‘preparations made from cereals’ and ‘milk products’.

40 As for the applicant’s argument that it was clear from research carried out with the help of EUIPO’s research tool for assessing the similarity between goods and services, and from a decision of the First Board of Appeal of EUIPO, that the goods in question were not similar, it is sufficient to note that, as is clear from the case-law cited at paragraph 32 above, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice of those Boards of Appeal.

41 It follows that the Board of Appeal was correct to find in the contested decision that the ‘preparations made from cereals’ in Class 30, covered by the mark applied for, and the ‘milk products’ in Class 29, covered by the earlier mark, were similar, albeit to a low degree.

Comparison between the ‘compotes’ covered by the mark applied for and the ‘milk products’ covered by the earlier mark

42 In the contested decision, the Board of Appeal held that ‘compotes’ could be consumed as desserts or sweet snacks, just as ‘milk products’ could. Moreover, dual-pot yoghurts often have compotes in one pot and yoghurt in the other coming from the same undertaking. Consequently, those goods have the same purpose, the same method of use, the same distribution channels, the same target public, and are in competition with each other or are complementary. The Board of Appeal therefore concluded that those goods were similar.

43 The applicant argues that ‘compotes’ and ‘milk products’ are not similar, given that they are placed in different sections in supermarkets and their methods of production are different.

45 As the Board of Appeal rightly states in the contested decision, ‘compotes’ and ‘milk products’ are competing goods, in that ‘compotes’ can be consumed as desserts or sweet snacks, just as ‘milk products’ such as yoghurt or milk pudding can. That relationship of competition between ‘compotes’ and ‘milk products’ is, moreover, not contested by the applicant.

46 The applicant merely claims that the methods of production of the goods in question are different, without establishing how that consideration precludes them from coming from the same undertaking. However, as the Board of Appeal correctly set out in the contested decision, the example of dual-pot yoghurts, cited at point 42 above, shows that those goods can come from the same undertaking.

47 As for the argument that the goods in question are sold in different sections in supermarkets, it must be noted, first, that such a claim is not substantiated by the applicant and, second, even assuming that that were the case, that argument would not be capable of calling into question the Board of Appeal’s finding that those goods have the same purpose, the same method of use, the same distribution channels, the same target public and are in competition with each other or are complementary.

48 It follows that the Board of Appeal was correct to find in the contested decision that the ‘compotes’ in Class 29, covered by the mark applied for, and the ‘milk products’ in Class 29, covered by the earlier mark, were similar.

Comparison between ‘pastry’ and ‘confectionery’ covered by the mark applied for and ‘milk products’ covered by the earlier mark

49 In the contested decision the Board of Appeal observed that ‘pastry’ and ‘confectionery’ can be consumed as desserts or sweet snacks, just as ‘milk products’ can. Furthermore, ‘milk products’ can also include milk-based desserts. As for confectionery consisting of milk, it is customary in a number of countries. According to the Board of Appeal, ‘pastry’ and ‘confectionery’, on the one hand, and ‘milk products’, on the other, have the same purpose, the same method of use, the same distribution channels, the same target public and are in competition with each other or are complementary.

50 The applicant admits that milk is used in the preparation of various sweets and desserts. However, there is no complementarity between ‘pastry’ and ‘confectionery’ on the one hand and ‘milk products’ on the other solely because ‘milk products’ are ingredients used in ‘pastry’ and ‘confectionery’. Only complementarity of the use of goods should be taken into account, as is clear from a decision of EUIPO, placed in the case file for the present case, and from the case-law of the Court. Finally, the applicant claims that the goods in question are placed in different sections of supermarkets and are distinguished by their methods of production.

52 As the Board of Appeal stated in the contested decision, without this point being disputed by the applicant, the goods in question are in competition with each other given that ‘pastry’ and ‘confectionery’ can be consumed as desserts or sweet snacks, just as ‘milk products’ such as yoghurt or milk pudding can.

53 Admittedly, as was pointed out by the applicant, the mere fact that pastries and confectionary may contain some milk does not make them similar to milk or milk products in general (see, to that effect, judgment of 14 October 2009 in Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT), T‑140/08, ECR, EU:T:2009:400, paragraph 62).

54 However, as EUIPO and the intervener point out, the Board of Appeal did not find that the goods in question were similar solely on the ground that milk can form part of the composition of pastries and confectionery. It also took account, as is clear from the contested decision, of the fact that the goods in question have the same purpose and method of use, the same distribution channels, the same target public and that they are in competition with each other.

55 The applicant has neither claimed nor, a fortiori, established that those findings are incorrect.

56 In fact, the applicant merely claims that the methods of production of the goods in question are different, without substantiating that assertion, nor establishing how that consideration precludes those products coming from the same undertaking.

57 As for the argument that the goods in question are sold in different sections of supermarkets, it must be noted that that argument is not substantiated. Furthermore, as the intervener pointed out, ‘pastry’ and ‘confectionery’ on the one hand and ‘milk products’ on the other can be found in the same refrigerated sections of supermarkets.

58 The Board of Appeal was therefore right to find in the contested decision that ‘pastry’ and ‘confectionery’ in Class 30, covered by the mark applied for, and ‘milk products’ in Class 29, covered by the earlier mark, were similar.

59 It follows from the considerations set out at paragraphs 23 to 58 above that the Board of Appeal did not err in finding, in the contested decision, that on the one hand there was a ‘low degree of similarity’ between the ‘coffee’, ‘cocoa’, ‘artificial coffee’ and ‘preparations made from cereals’ in Class 30, covered by the mark applied for, and the ‘milk products’ in Class 29, covered by the earlier mark, and that on the other hand the ‘compotes’ in Class 29 and ‘pastry’ and ‘confectionery’ in Class 30, covered by the mark applied for, and the ‘milk products’ in Class 29, covered by the earlier mark, were similar.

60 The global assessment of the likelihood of confusion must, in so far as it 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 of the goods or services in question by the average consumer plays a decisive role in the global assessment of that likelihood. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

61 In the present case, the mark applied for is composed of a figurative element representing a dinosaur, seen in profile, standing, facing to the right, walking, with one foot on the ground and one foot raised, and the word element ‘dino’ situated in the background at the level of the dinosaur’s head. As for the earlier mark, it is composed of a single figurative element representing a dinosaur, seen in profile, standing, facing to the left, walking, with one foot on the ground and one foot raised, holding a glass of milk and licking its lips.

62 In the contested decision, the Board of Appeal held that the signs at issue appeared ‘visually similar to a medium degree’ in that they both represent ‘a cartoon-like image of a dinosaur, giving an impression of a friendly, happy creature’ walking, with one foot raised and one foot on the ground, despite some differences between the signs, such as the presence of the verbal element ‘dino’ in the mark applied for and the fact that the dinosaur in the earlier mark is holding a glass of milk and licking its lips.

63 The applicant submits in the first place that the figurative representation of a dinosaur cannot be the subject of a monopoly. Furthermore, it argues that the overall impression produced by the signs at issue is different in that, first, the dinosaurs are not facing in the same direction, second, only the dinosaur in the earlier mark carries a glass and wears boots, third, the blotches on their bodies are arranged differently, and fourth, the dinosaur in the earlier mark puts out its tongue and closes its mouth while the dinosaur in the mark applied for opens its mouth slightly and its tongue is hidden. The applicant also notes that several EU trade marks represent a dinosaur with a head, eyes, nose, hind legs and arms. It adds that the dinosaurs represented in those marks have all the characteristics of a friendly, happy creature and that, in those circumstances, the comparison of the marks at issue must be global and take greater account of the presence of the verbal element ‘dino’, which is present only in the mark applied for. The applicant also cites a decision of the Opposition Division of EUIPO, placed in the case file for the present case, under which the two marks compared, although both representing a unicorn’s head, were found not to be similar with regard to their stylisation and position, one facing left and the other right, to the fact that the horn of one was longer than that of the other, and to the fact that one had a characteristic mane that the other did not. Finally, the applicant submits that, in so far as the signs at issue represent a dinosaur with the same basic characteristics, the differences that exist between those signs, namely, the presence of a glass of milk and boots in the earlier mark, the positioning of the dinosaurs, the pattern of the blotches on their bodies and the presence or absence of their tongue, are clearly evident; thus they cannot be considered to be visually similar.

65 It must be recalled, first, that the marks at issue have in common a figurative element representing a dinosaur. As the Board of Appeal correctly held in the contested decision, the dinosaur represented in each of those marks resembles a ‘cartoon-like image’ and gives an ‘impression of a friendly and happy creature’. Indeed, this is not disputed by the applicant. In addition, as stated by the intervener, the shapes of the body of the dinosaur are nearly identical in the marks at issue. Furthermore, in each of them, the dinosaur is standing, in profile, at fairly similar angles, walking, with one foot on the ground, one leg raised and a slightly raised tail.

66 Admittedly, as was argued by the applicant, the signs at issue also contain certain differences which led the Board of Appeal to find, moreover, that they presented only a ‘medium degree’ of visual similarity.

67 However, it must be noted that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 23, and OHIM v Shaker, cited in paragraph 60 above, EU:C:2007:333, paragraph 35). The average consumer only rarely has the chance to make a direct comparison between the different signs and must place his trust in the imperfect image of them that he has kept in his memory (see judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 60 and the case-law cited).

68 In the present case, the Board of Appeal was right to find in the contested decision that, despite some differences between the marks at issue, they showed an average degree of similarity with regard to the overall visual impression they produced.

69 In that regard, it must be held that the pattern of the blotches on the dinosaurs’ bodies, the wearing of boots by only the dinosaur represented in the earlier mark, the presence of a glass of milk in that mark, and the fact that only the dinosaur in the earlier mark has its tongue out, constitute minor elements of differentiation which do not stay in the memory of the relevant public. Those differences therefore do not modify the imperfect image that the relevant public will recall of the marks at issue, namely the representation of a moving dinosaur giving the impression of a friendly, happy creature.

70 Furthermore, as noted by the applicant in the mark applied for, in so far as the dinosaur is walking to the right, while in the earlier mark it is walking to the left, it must be observed that, taking account of the fairly similar angles used in the signs at issue and the comparable relative dimensions (namely, the height to width ratio) of the figurative representation of the dinosaur in those signs, the visual comparison of those signs gives the impression of a certain symmetry (see, to that effect, judgment of 18 September 2014 in Polo/Lauren v OHIM — FreshSide (Representation of a boy on a bicycle holding a mallet), T‑265/13, EU:T:2014:779), which is a factor of visual similarity between the two signs.

71 Moreover, as regards the presence of the word element ‘dino’ in the mark applied for, it must be noted, as is clear from the contested decision, that the Board of Appeal took this into account when finding that there was only an ‘average degree’ of visual similarity between the signs at issue.

72 As was pointed out by the applicant, where a mark is composed of both word and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the word element rather than by describing the figurative elements of the mark (see judgment of 7 February 2013 in AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, EU:T:2013:68, paragraph 29 and the case-law cited). However, given that the marks are perceived as a whole, consumers will also perceive, in the present case, the figurative representation of a dinosaur in the mark applied for, even if it is accompanied by a verbal element, namely, the word ‘dino’. In fact, as is clear from the contested decision, the figurative representation of a dinosaur being conceptually linked to the word ‘dino’, it will retain all its power to visually attract and will be remembered by consumers, who will make the link between the word and figurative elements making up the mark applied for and will remember both elements (see, to that effect, judgment of 17 April 2008 in Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, EU:T:2008:114, paragraph 81).

73 Consequently, the Board of Appeal’s finding that the signs at issue present an ‘average degree’ of visual similarity must be upheld.

74 That conclusion is not affected by the applicant’s claim that the Opposition Division of EUIPO held, in a similar case, that the signs at issue were not similar. It is sufficient to note that, according to the case-law cited at paragraph 32 above, EUIPO is required to decide each case on its own merits and is not bound by previous decisions taken in other cases. The lawfulness of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of its earlier decision-making practices.

75 It is necessary to confirm the Board of Appeal’s assessment in the contested decision that, in the present case, the phonetic comparison of the signs at issue is irrelevant, given that a figurative mark without word elements such as the earlier mark cannot, as such, be pronounced. At the very most, the visual or conceptual content of such a mark can be described orally. However, such a description necessarily coincides with either the visual or the conceptual perception of the mark concerned. Accordingly, there is no need to examine separately the phonetic perception of a figurative mark lacking verbal elements and to compare it with the phonetic perception of other marks (see, to that effect, judgment of 7 February 2012 in Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, ECR, EU:T:2012:58, paragraphs 45 and 46). Moreover, in the present case, the applicant does not deny that the phonetic comparison of the signs at issue is irrelevant.

76 In the contested decision the Board of Appeal held that the signs at issue were conceptually ‘highly similar’, given that they both evoked a happy dinosaur. According to the Board of Appeal, in so far as the glass of milk clearly alludes to the goods in question, it does not introduce any relevant conceptual difference between the signs at issue.

77 The applicant concedes that the relevant public will recognise, in the signs at issue, the figurative representation of a dinosaur and therefore admits to the existence of a certain conceptual similarity between the signs.

78 In the present case, it is necessary to confirm the Board of Appeal’s assessment in the contested decision that the signs at issue are conceptually ‘highly similar’, in so far as they both refer to the concept of a moving dinosaur giving the impression of a friendly, happy creature.

79 It follows from the considerations set out at paragraphs 62 to 78 above that the Board of Appeal was correct in finding that the signs at issue were similar.

80 In the contested decision, the Board of Appeal found that although, in principle, in the case of marks composed of both verbal and figurative elements, word elements were considered the more distinctive elements, in the present case the element ‘dino’ referred to a dinosaur and did not therefore affect the perception of the mark, but rather strengthened the concept of the figurative element. It concluded, taking account of the similarity of the signs at issue and of certain goods designated by them, as well as the average level of attentiveness of the relevant public, that it was likely that the relevant public would believe that the goods covered by the marks at issue came from the same undertaking or from economically-linked undertakings. That likelihood is all the more probable where consumers must rely on the imperfect image that they have kept in their memory.

81 The applicant argues that the goods covered by the marks at issue are sold in self-service stores in which the consumer freely chooses the product, relying on the image of the mark applied to it. Accordingly, in its view, the visual similarity between the signs at issue in the present case would be more important than their conceptual similarity. The applicant adds that the conceptual similarity resulting from the fact that the two marks use figurative representations with analogous conceptual content could give rise to a likelihood of confusion only in the situation where the earlier mark has a particularly distinctive character either per se or because of the reputation it enjoys. However, in the present case, the earlier mark is not especially well known and consists of an unremarkable figurative representation of a dinosaur. Furthermore, even if the marks are visually or phonetically different, the conceptual similarity rarely leads to the finding that the signs are globally similar. Finally, the applicant argues that, assessed globally, the marks at issue show significant differences between them. It concludes that in the present case there is no likelihood of confusion between those marks.

83 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, in particular, the similarity of the marks at issue and of the goods or services covered by them. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

84 In the present case, as is apparent from paragraphs 23 to 59 above, the Board of Appeal correctly held in the contested decision that, on the one hand, there was a low degree of similarity between the ‘coffee’, ‘cocoa’, ‘artificial coffee’ and ‘preparations made from cereals’ in Class 30, covered by the mark applied for, and the ‘milk products’ in Class 29, covered by the earlier mark, and, on the other hand, that the ‘compotes’ in Class 29 and ‘pastry’ and ‘confectionery’ in Class 30, covered by the mark applied for, and the ‘milk products’ in Class 29, covered by the earlier mark, were similar.

85 Moreover, it is clear from paragraphs 65 to 78 above that the signs at issue present an average degree of visual similarity, a strong conceptual similarity, and that it is irrelevant to compare them phonetically.

86 The Board of Appeal was therefore correct to find in the contested decision that, taking account of the average level of attention of the relevant public, there was a likelihood of confusion in the present case between the marks at issue, in so far as the mark applied for covers ‘coffee’, ‘cocoa’, ‘artificial coffee’ and ‘preparations made from cereals’ in Class 30, ‘compotes’ in Class 29, and ‘pastry’ and ‘confectionery’ in Class 30.

87 That conclusion cannot be affected by the applicant’s claim that the proprietor of the earlier mark has a monopoly on the figurative representation of a dinosaur. It must be recalled, first, that the advantage of the legal regime of the EU trade mark lies precisely in the fact that it enables holders of an earlier mark to oppose the registration of later marks which take unfair advantage of the distinctive character of the original mark. Hence, far from according an unjustifiable monopoly to the proprietors of an earlier mark, that regime enables them to protect and exploit the substantial investment made to promote their earlier mark (judgments of 21 February 2006 in Royal County of Berkshire Polo Club v OHIM — Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB), T‑214/04, ECR, EU:T:2006:58, paragraph 43, and 17 September 2008 in FVB v OHIM — FVD (FVB), T‑10/07, EU:T:2008:380, paragraph 57).

88 It is important to note, second, that the numerous Community trade marks representing a dinosaur, cited by the applicant, show that EU law does not prevent the registration of a figurative representation of a dinosaur as an EU trade mark, when there is no likelihood of confusion.

89 It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and, accordingly, the present action must be dismissed.

90 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.

91 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form 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) >> Franmax v EUIPO - Ehrmann (Dino) (Judgment) [2016] EUECJ T-21/15 (26 April 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T2115.html Cite as: ECLI:EU:T:2016:241, EU:T:2016:241, [2016] EUECJ T-21/15

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