SFD v EUIPO - Allmax Nutrition (ALLNUTRITION DESIGNED FOR MOTIVATION) (EU trade mark - Judgment) [2022] EUECJ T-35/21 (30 March 2022)

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(EU trade mark – Opposition proceedings – Application for EU figurative mark ALLNUTRITION DESIGNED FOR MOTIVATION – Earlier EU word marks ALLMAX NUTRITION – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

SFD S.A., established in Opole (Poland), represented by T. Grucelski, lawyer,

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

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 28 October 2020 (Case R 511/2020-2), relating to opposition proceedings between Allmax Nutrition and SFD,

composed of G. De Baere, President, V. Kreuschitz (Rapporteur) and K. Kecsmár, Judges,

having regard to the application lodged at the Court Registry on 22 January 2021,

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 On 27 October 2016, the applicant, SFD S.A., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods and services in respect of which registration was sought are in, inter alia, Classes 5, 30, 32 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, and correspond, in respect of each of those classes, to the following description:

– Class 5: ‘Vitamin and mineral supplements; Albumin dietary supplements; Mineral dietary supplements for humans; Nutritional supplements; Dietary and nutritional supplements; Protein dietary supplements; Glucose dietary supplements; Casein dietary supplements; Dietary supplemental drinks; Appetite stimulant preparations; Vitamin preparations in the nature of food supplements; Meal replacement powders; Health food supplements made principally of minerals; Health food supplements made principally of vitamins; Soy protein dietary supplements; Medicated isotonic drinks; Vitamin drinks’;

– Class 30: ‘Cocoa; Cocoa-based beverages; Cocoa mixes; Cocoa powder; Cocoa products; Candy with cocoa; Prepared cocoa and cocoa-based beverages; Preparations based on cocoa; Foods with a cocoa base; Instant cocoa powder; Ice beverages with a cocoa base; Drinking cocoa paste; Coffee, teas and cocoa and substitutes therefor; Cocoa-based ingredients for confectionery products; Aerated beverages [with coffee, cocoa or chocolate base]; Extracts of cocoa for use as flavours in beverages; Extracts of cocoa for use as flavours in foodstuffs’;

– Class 32: ‘Sports drinks; energy drinks containing caffeine; energy drinks; isotonic beverages’;

– Class 35: ‘Retail services relating to food; retail services in relation to dietetic preparations; retail services in relation to dietary supplements; wholesale services in relation to dietetic preparations; wholesale services in relation to dietary supplements; wholesale services in relation to non-alcoholic beverages; wholesale services in relation to foodstuffs; wholesale services in relation to chocolate; retail services in relation to chocolate’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 215/2016 of 14 November 2016.

5 On 14 February 2017, Allmax Nutrition Inc. filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the trade mark applied for in respect of, inter alia, the goods and services referred to in paragraph 3 above.

– EU word mark ALLMAX NUTRITION, registered under No 9570623 (‘the first earlier mark’), covering services in Classes 35 and 44 and corresponding, for each of those classes, to the following description:

– Class 35: ‘Retail services in the field of dietary supplements, body building preparations, sports performance enhancement preparations, energy drinks, protein supplements and food supplements, provided by way of online sales, mail order sales and retail outlets’;

– Class 44: ‘Information and advice services in the field of dietary supplements, body building preparations and performance enhancement preparations, including the provision of such services via wide-area communications networks’;

– EU word mark ALLMAX NUTRITION, registered under No 11977601 (‘the second earlier mark’), covering goods in Classes 29, 30 and 32 and corresponding, for each of those classes, to the following description:

– Class 29: ‘Milk protein products; protein containing foods for human consumption based on meat, fish, poultry, game, eggs or milk; proteinaceous preparations in the form of bars for human consumption wherein the protein content is derived from meat, fish, poultry, game, eggs or milk’;

– Class 30: ‘Powdered drink mixes containing preparations made from cereals, sugar, honey, treacle or spices; drink mixes containing proteins, carbohydrates and fats where the carbohydrate is derived from cereal or yeast; mixed protein carbohydrate and fat-containing foods for human consumption in the form of drinks mixes where the carbohydrate content is derived from cereal or yeast’;

– Class 32: ‘Powdered drink mixes containing milk or protein derived from milk; drink mixes containing proteins, carbohydrates and fats wherein the protein is derived from milk and the fats from edible oils and fats; mixed protein, carbohydrate and fat-containing foods for human consumption in the form of drinks mixes where the carbohydrate content is derived from cereal or yeast’.

7 The grounds relied on in support of the opposition include, inter alia, that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 10 January 2020, the Opposition Division upheld the opposition in part, taking the view that there was a likelihood of confusion between the marks at issue in respect of all the goods and services referred to in paragraph 3 above.

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

10 By decision of 28 October 2020 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, having regard, first, to the distinctive character of the earlier marks, which must be considered to be lower than average, second, to the fact that the goods and services in question were at least similar, third, to the similarity of the signs at issue, which must be categorised as visually and phonetically similar to an average degree and conceptually similar to a high degree, and, fourth, to the level of attention of the relevant public, which varies from average to higher than average, it concluded that there was a likelihood of confusion on the part of the relevant English-speaking public.

13 Having regard to the date on which the application for registration at issue was filed, namely 27 October 2016 (see paragraph 1 above), which is decisive for the purpose of determining the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

14 Consequently, in the present case, as regards the substantive rules, the references made to the provisions of Regulation 2017/1001 by the Board of Appeal in the contested decision and by the parties should be understood as referring to the identical provisions of Regulation No 207/2009.

15 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It claims that the Board of Appeal was wrong to find that there was a likelihood of confusion between the marks at issue.

16 EUIPO disputes the applicant’s arguments and submits that the Board of Appeal was justified in finding there to be such a likelihood of confusion.

17 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may 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 two 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.

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 purpose of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

20 Where the protection of the earlier trade mark extends to the whole 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, as the Board of Appeal did in paragraph 42 of the contested decision, 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 No 207/2009 exists in a 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).

21 In the present case, it is apparent from paragraphs 85 and 124 of the contested decision that the Board of Appeal found that there was a likelihood of confusion on the part of the English-speaking part of the relevant public.

22 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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).

23 In the present case, the Board of Appeal held, in paragraphs 45 and 46 of the contested decision, that the goods and services in question were directed at both the general public and professionals in the field of health and nutrition – with the exception of the wholesale services in Class 35 covered by the mark applied for, which were in principle intended solely for a professional public – and that the level of attention of the relevant public varied from average to higher than average. In particular, the Board of Appeal found that, first, the level of attention of the general public was higher than average as regards the goods covered by the mark applied for in Class 5, since those goods were goods in the field of health (paragraph 47 of the contested decision), second, as regards the services covered by the first earlier mark, the level of attention of the relevant public varied from average (as regards ‘retail services in the field’ of everyday consumption, for example ‘energy drinks’), higher than average (for example in relation to ‘retail services in the field of … body building preparations [and] sports performance enhancement preparations’ aimed at people who take their sports activities very seriously) (paragraph 48 of the contested decision), third, the other goods and retail services in question were everyday consumption goods or services aimed at a broad public whose level of attention was average (paragraph 49 of the contested decision) and, fourth, the professional public to which the wholesale services covered by the mark applied for were addressed had a higher level of attention than the general public (paragraph 50 of the contested decision).

24 The applicant claims that the level of attention of the relevant public is higher as regards, at the very least, ‘retail services in relation to dietetic preparations’ and ‘retail services in relation to dietary supplements’ in Class 35, in respect of which it sought registration of the mark applied for, since those services concern goods in the field of health.

25 Moreover, the applicant submits that the Board of Appeal confirmed that the level of attention of the relevant public was higher than average for ‘retail services in the field of dietary supplements, body building preparations, sports performance enhancement preparations, energy drinks, protein supplements provided by way of online sales, mail order sales and retail outlets’ in Class 35 and covered by the first earlier mark. In that regard, it should be noted from the outset that, in paragraph 48 of the contested decision, the Board of Appeal expressly found that this was the case only in relation to ‘retail services in the field of … body building preparations [and] sports performance enhancement preparations’ (see paragraph 23 above) and not also in relation to ‘retail services in the field of dietary supplements [and] protein supplements’. It follows that the applicant must be understood as claiming a higher than average level of attention for those latter services.

26 EUIPO does not dispute the applicant’s arguments alleging a higher than average level of attention in respect of the services referred to in paragraphs 24 and 25 above but merely submits, as the Board of Appeal did (see paragraphs 51, 122 and 123 of the contested decision), that, in the present case, there is a likelihood of confusion even on the part of a very attentive relevant public.

27 Given that the Board of Appeal found, in paragraph 47 of the contested decision, that the level of attention was higher than average for the general public as regards the goods covered by the mark applied for in Class 5, since those goods came within the field of health, it must be held that the services in respect of which the applicant also claims such a level of attention, namely, first, as regards the mark applied for, ‘retail services in relation to dietetic preparations’ and ‘retail services in relation to dietary supplements’ in Class 35 (see paragraph 24 above) and, second, as regards the first earlier mark, ‘retail services in the field of dietary supplements [and] protein supplements … provided by means of online sales, mail order and retail outlets’ in Class 35 (see paragraph 25 above), relate to goods which also come within that field.

28 Consequently, it must be recognised that the level of attention of the relevant public is higher than average also as regards the services referred to in the preceding paragraph.

29 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

30 In the present case, first, the Board of Appeal found that the goods in Class 5 in respect of which the applicant had sought registration of the mark applied for were similar to an average degree to ‘retail services in the field of dietary supplements, body building preparations, sports performance enhancement preparations, energy drinks, protein supplements and food supplements, provided by way of online sales, mail order sales and retail outlets’, in Class 35, in respect of which the first earlier mark is registered (paragraphs 58 to 68 of the contested decision).

31 Second, the Board of Appeal found that the goods in Class 30 in respect of which the applicant had sought registration of the mark applied for were similar, to varying degrees, to the goods in Classes 29 and 30 in respect of which the second earlier mark is registered (paragraph 69 of the contested decision).

32 Third, according to the Board of Appeal, the goods in Class 32 in respect of which the applicant sought registration of the mark applied for had at least an average degree of similarity with the goods in Class 32 in respect of which the second earlier mark is registered, and with the retail services in Class 35 in respect of which the first earlier mark is registered (paragraphs 70 to 73 of the contested decision).

33 Fourth, the Board of Appeal found that the services in Class 35 in respect of which the applicant had sought registration of the mark applied for were identical or similar to the services in that class in respect of which the first earlier mark is registered (paragraph 74 of the contested decision).

35 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must 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 proceed to analyse 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).

36 In the present case, as is apparent from paragraphs 77 to 84 of the contested decision, the Board of Appeal carried out an assessment of the distinctive and dominant elements of the signs at issue before carrying out an analysis of their visual, phonetic and conceptual similarity.

37 Assessment of the similarity between two marks cannot merely consist in taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

38 As regards the earlier sign, which is common to both earlier marks, the Board of Appeal noted that it was a word sign composed of the word elements ‘allmax’ and ‘nutrition’ (paragraph 86 of the contested decision). According to the Board of Appeal, the word element ‘allmax’ has no clear unequivocal meaning for the English-speaking part of the relevant public. That public would, however, break it down into two word elements, ‘all’ and ‘max’, since they are basic English words (paragraphs 87 and 88 of the contested decision). Whereas the word ‘all’ has no directly descriptive or otherwise non-distinctive meaning in relation to the goods and services covered by the earlier marks, the word ‘max’ will be understood as referring to ‘maximum’, meaning ‘as great, high, or intense as possible or permitted’. That latter word will be perceived as a quality and a laudatory indication and is therefore, as such, of limited distinctiveness for those goods and services (paragraph 89 of the contested decision). According to the Board of Appeal, the word ‘nutrition’ could be defined as the process of providing or obtaining the food necessary for health and growth. That word will be perceived by the English-speaking part of the relevant public as an indication of the purpose of the goods or the field of services covered by the earlier marks (paragraph 90 of the contested decision). Furthermore, given that the consumer’s attention is generally focused on the beginning of a word, more weight should be given, in the overall impression, to the word element ‘allmax’ than to the word element ‘nutrition’. That latter word element cannot, however, be disregarded in the overall impression (paragraphs 91 and 92 of the contested decision).

39 The applicant claims that the word element ‘nutrition’ of the earlier sign is descriptive and devoid of distinctive character. It should not have any effect on the comparison of the signs at issue or on its result. It has not been demonstrated that that word element is capable of constituting an indication of the commercial origin of the goods and services in question. According to the applicant, the earlier sign is dominated by a single component, namely the word element ‘allmax’. In addition, that element is at the beginning of the earlier sign. Consequently, the Board of Appeal should have taken account of only that word element in assessing the similarity of the signs.

41 In the first place, it should be borne in mind that it follows from the case-law that, despite the fact that the similarity of the signs at issue should as a matter of course be assessed on the basis of the overall impression given by those signs without engaging in an analysis of their various details (see paragraph 35 above), the relevant public will break a word sign down into word elements which, for it, suggest a specific meaning or which resemble words known to it (see judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57 and the case-law cited). As the Board of Appeal noted in paragraphs 87 and 88 of the contested decision, the word elements ‘all’ and ‘max’ correspond to basic English words, with the result that the English-speaking part of the relevant public will indeed break down the word element ‘allmax’ into those two elements. The applicant is therefore wrong to claim that the word element ‘allmax’ will be perceived by that part of the relevant public as a fanciful neologism.

42 In the second place, as the Board of Appeal noted, in essence, in paragraph 89 of the contested decision, a term considered to be laudatory has, in principle, only weak distinctive character (see judgment of 24 September 2015, Primagaz v OHIM – Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 42 and the case-law cited). In that regard, first, the Board of Appeal was right to find, in the same paragraph of the contested decision, that the word element ‘max’ would be understood by the English-speaking part of the relevant public as referring to ‘maximum’, meaning ‘as great, high, or intense as possible or permitted’. Second, as regards the word element ‘all’, EUIPO rightly considers that it will be understood by that part of the relevant public as referring to the whole quantity or extent of something. Thus, contrary to what the Board of Appeal appears to have found in paragraph 89 of the contested decision, not only the word element ‘max’, but also the word element ‘all’ has a definite laudatory connotation. As regards, in the present case, in essence, nutritional goods and services relating to nutritional goods, both the word element ‘all’ and the word element ‘max’ will be understood by the English-speaking part of the relevant public as alluding to the total or greatest possible capacity of those goods to satisfy specific nutritional needs. Since the word elements ‘all’ and ‘max’ therefore have a definite laudatory connotation, it must be concluded that they are only weakly distinctive in the present case.

43 In the third place, as is correctly noted by the applicant and by EUIPO in paragraph 90 of the contested decision, the Board of Appeal found that the word element ‘nutrition’, which could be defined as the process of providing or obtaining food necessary for health and growth, would be perceived by the English-speaking part of the relevant public as an indication of the purpose of the goods or the field of services covered by the earlier marks. EUIPO acknowledges that, consequently, that element has only a weak distinctive character in respect of the goods and services in question.

44 As the applicant rightly submits, it is settled case-law that, as a general rule, the public will not consider a descriptive element forming part of a composite mark to be the distinctive and dominant element in the overall impression conveyed by that mark (judgments of 27 November 2007, Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media Gateway), T‑434/05, not published, EU:T:2007:359, paragraph 47; of 24 January 2017, Rath v EUIPO – Portela cream Ca. (Diacor), T‑258/08, not published, EU:T:2017:22, paragraph 57; and of 26 November 2019, Wyld v EUIPO – Kaufland Warenhandel (wyld), T‑711/18, not published, EU:T:2019:812, paragraph 63).

45 Furthermore, it is apparent from the case-law that the consumer normally attaches more importance to the first part of signs (see judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 88 and the case-law cited).

46 However, as the Board of Appeal correctly concluded in paragraph 92 of the contested decision, the word element ‘nutrition’ cannot be disregarded in the overall impression created by the earlier sign.

47 First, EUIPO is correct to point out that it is apparent from the case-law that the weak distinctive character of an element of a sign, owing in particular to its descriptive character, does not necessarily imply that that element will not be taken into consideration by the relevant public. Thus, it cannot be ruled out that by reason in particular of its position in the sign or its length, such an element holds an autonomous position in the overall impression conveyed by the sign in question in the perception of the relevant public. Likewise, despite its weak distinctive character, an element of a sign which is descriptive is likely to attract the attention of the relevant public because of its length and position at the beginning of that sign (judgments of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 47; of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraph 26; and of 22 November 2018, Endoceutics v EUIPO – Merck (FEMIVIA), T‑59/18, not published, EU:T:2018:821, paragraph 33).

48 Second, EUIPO rightly submits that the word element ‘nutrition’ is noticeably longer than the other two word elements ‘all’ and ‘max’, even taken together.

49 Third, in the present case, although the word element ‘nutrition’ at the end of the earlier sign is descriptive of the goods and services in question and is therefore only weakly distinctive (see paragraph 43 above), the fact remains that the word elements ‘all’ and ‘max’ at the beginning of the earlier sign do not have a greater distinctive character (see paragraph 42 above).

50 Consequently, it must be concluded that, in actual fact, none of the word elements of the earlier sign can be regarded as having a considerably higher distinctive character than the others. As a result, none of the word elements of the earlier sign dominates the overall impression created by that sign, contrary to what the applicant claims.

51 In the fourth place, in so far as the applicant states that Allmax Nutrition focuses its promotional and marketing activities on the element ‘allmax’, it is sufficient to point out, as the Board of Appeal did in paragraph 75 of the contested decision, that it is settled case-law that the comparison must be made between the signs as they were registered or as they appear in the application for registration (judgments of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 57; of 9 April 2014, Pico Food v OHIM – Sobieraj (MILANÓWEK CREAM FUDGE), T‑623/11, EU:T:2014:199, paragraph 38; and of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraph 66).

52 It follows that the applicant’s arguments that the earlier sign is dominated by the word element ‘allmax’ and that, consequently, the Board of Appeal should have taken into account only that word element in assessing the similarity of the signs must be rejected.

53 As regards the sign applied for, the Board of Appeal noted that it was a figurative sign containing the word element ‘all’ immediately followed, without a space, by the word element ‘nutrition’ in ordinary upper-case letters. On account of the use of two different shades of blue, those two elements will be immediately identified. To the left of those elements appears a smaller figurative abstract element containing the same two shades of blue. Below the word element ‘allnutrition’, in a much smaller font, is the word element ‘designed for motivation’ (paragraph 93 of the contested decision). The word elements ‘all’ and ‘nutrition’ are basic English words which would be understood by the English-speaking part of the relevant public in the same way as the identical word elements of the earlier sign. Taken as a whole, the word element ‘allnutrition’ alludes to the goods covered by the mark applied for or to the services relating to those goods in so far as it covers goods containing only substances necessary for health and growth. Taking the view that the stylisation of that word element, including the two shades of blue, was banal, the Board of Appeal concluded that the distinctive character of the two individual word elements forming the word element ‘allnutrition’ as a whole was rather weak (paragraph 94 of the contested decision). According to the Board of Appeal, the word element ‘designed for motivation’ would be perceived as a laudatory slogan. In view also of its much smaller size compared with that of the word element ‘allnutrition’, it plays only a secondary role in the overall impression (paragraph 95 of the contested decision) to the point that it has hardly any impact on the overall impression (paragraph 99 of the contested decision). Where a sign is composed of word elements and figurative elements, the former are, in principle, more distinctive than the latter. On account of the two shades of blue of which it is composed, a significant part of the English-speaking part of the relevant public, in particular a more attentive public, would be likely to perceive the figurative element to the left of the word elements as the stylised acronym ‘an’ of the two word elements ‘all’ and ‘nutrition’. Consequently, that figurative element cannot be considered to be particularly distinctive in itself, notwithstanding its position at the beginning of the sign applied for. However, according to the Board of Appeal, it is not negligible within the overall impression (paragraphs 96 to 99 of the contested decision). The Board of Appeal concluded that the English-speaking part of the relevant public would retain, above all, the word element ‘allnutrition’, which would be the focus of its attention (paragraph 98 of the contested decision).

54 The applicant is of the view that all the word elements of the sign applied for, namely ‘an’, ‘allnutrition’, ‘designed’, ‘for’ and ‘motivation’, take a figurative and eye-catching form. In its view, all those factors should be taken into consideration in the overall assessment. According to the applicant, the figurative element should be considered to be the dominant element of the sign applied for or, at the very least, an important element of that sign. That is all the more true given that it is the element placed at the beginning of the sign applied for, to which the relevant public would spontaneously pay more attention. The fact that the English-speaking part of the relevant public is likely to perceive that figurative element as the stylised acronym ‘an’ of the two word elements ‘all’ and ‘nutrition’ confirms the important role that it plays in the sign applied for. As regards the word element ‘allnutrition’, the applicant claims that it consists of a single fanciful word and that it is not made up of two words. According to the applicant, the English-speaking part of the relevant public will refer to that element as a whole. In the light of the descriptive character of the word element ‘nutrition’ forming part of the neologism ‘allnutrition’, that part of the relevant public will pay much attention to the two different colours, to the figurative elements and to the other word elements of the sign applied for. As regards the word element ‘designed for motivation’, the applicant claims that the Board of Appeal was wrong not to take it into account when comparing the signs. According to the applicant that element is not descriptive of the goods and services at issue and plays a decisive role when comparing the sign applied for with the earlier sign.

56 In the first place, it is necessary to reject the applicant’s argument that the word element ‘allnutrition’ of the sign applied for is a single fanciful word which will not be divided by the English-speaking part of the relevant public. It is apparent mutatis mutandis from the considerations set out in paragraphs 41 and 42 above as regards the elements of the earlier sign that the English-speaking part of the relevant public will indeed divide the word element ‘allnutrition’ of the sign applied for into the two words ‘all’ and ‘nutrition’. As the Board of Appeal correctly pointed out in paragraphs 93 and 94 of the contested decision, and as EUIPO rightly submits, the difference in colour of those two words, which have a clear meaning in English, enables that part of the relevant public easily to break down the word element ‘allnutrition’.

57 In the second place, as regards the applicant’s argument that the figurative element should be regarded as the dominant element of the sign applied for or, at the very least, as an important element of that sign, it is true that that element is at the beginning of the sign applied for. However, as the Board of Appeal correctly stated in paragraph 98 of the contested decision, although the consumer normally attaches more importance to the first part of signs (see paragraph 45 above), that consideration cannot apply in all cases, nor can it invalidate the principle that the assessment of the similarity of marks must take account of the overall impression given by them (see judgment of 20 January 2021, 12seasons v EUIPO – Société immobilière et mobilière de Montagny (BE EDGY BERLIN), T‑329/19, not published, EU:T:2021:22, paragraph 36 and the case-law cited).

58 In the present case, as the Board of Appeal also correctly pointed out in paragraph 96 of the contested decision, it is apparent from the case-law that, where a mark is composed of word elements and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by quoting the name rather than describing the figurative element of the mark (see judgment of 22 May 2008, NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited).

59 Furthermore, it is common ground that a significant part of the English-speaking part of the relevant public is likely to perceive that figurative element as the stylised acronym ‘an’ of the two word elements ‘all’ and ‘nutrition’, in particular on account of the fact that the two shades of blue in which those two word elements are represented are reproduced in that figurative element. It must therefore be found that, for that part of the relevant public, there is a semantic link between, on the one hand, that figurative element, which the public will perceive as the acronym ‘an’ of the two word elements ‘all’ and ‘nutrition’ which immediately follow, and, on the other hand, those two word elements, since those elements are likely to clarify each other (see, by analogy, judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 32). In view of that link between those elements of the sign applied for, it cannot be stated, as the applicant claims, that the figurative element has greater weight than the two word elements, or even that it dominates the earlier sign. On the contrary, the acronym reproducing the initial letter of each of those word elements occupies only an ancillary position in relation to those word elements (see, by analogy, judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 38).

60 Lastly, the Board of Appeal was also right to find, in paragraphs 93 and 99 of the contested decision, that the figurative element was smaller than the word elements ‘all’ and ‘nutrition’, which is also an argument against that element having a more significant role than the word elements ‘all’ and ‘nutrition’.

61 Overall, the Board of Appeal did not therefore err in finding, in paragraphs 98 and 99 of the contested decision, that the figurative element could not be regarded as being particularly distinctive in itself, but that it was not negligible in the overall impression produced by the sign applied for.

62 In the third place, the Board of Appeal was right to find, in paragraph 95 of the contested decision, that the word element ‘allnutrition’ was clearly bigger in size than the word element ‘designed for motivation’. It follows from that fact alone that the word element ‘designed for motivation’ plays a much less important role than the word element ‘allnutrition’ in the overall impression created by the sign applied for.

63 Furthermore, although it is true that it is apparent from settled case-law that it is not appropriate to apply criteria that are stricter than those applicable to other types of sign when assessing the distinctive character of signs which are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by the mark in question (judgments of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraphs 32 and 44, and of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36) and that it therefore cannot be required that an advertising slogan is fanciful in order for it to have the minimal distinctive character required by Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) for registration as an EU trade mark (see, to that effect, judgments of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraphs 31 and 32, and of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 39), the fact remains that an advertising slogan normally has only a weak distinctive character, which is the case here as regards the word element ‘designed for motivation’.

64 Overall, the Board of Appeal did not therefore err in finding, in paragraphs 95 and 99 of the contested decision, that the word element ‘designed for motivation’ played only a secondary role in the sign applied for and that it had hardly any impact on the overall impression produced by that sign.

65 In the fourth place, in the light of the considerations set out in paragraphs 41, 42 and 56 above, the Board of Appeal also cannot be criticised for having found, in paragraph 94 of the contested decision, that the distinctive character of the two word elements ‘all’ and ‘nutrition’, which form the word element ‘allnutrition’ as a whole, was rather weak, having regard also to the fact that the stylisation of that word element and the two shades of blue in which it is represented are commonplace.

66 It follows that the Board of Appeal did not err in its assessment of the distinctive character of the various elements of the sign applied for. Despite the fact that the word element ‘allnutrition’ has only a weak distinctive character, it is indeed the element of the sign applied for that the English-speaking part of the relevant public will remember above all, given that the distinctive character of the other elements of the sign applied for is even weaker.

67 In the light of its findings concerning the elements of the signs (see paragraphs 38 and 53 above), the Board of Appeal held, in paragraphs 102 to 106 of the contested decision, that the signs at issue were visually and phonetically similar to an average degree and that they were conceptually very similar.

68 As regards the visual similarity of the signs, the Board of Appeal noted that the signs at issue coincided in the word elements ‘all’ and ‘nutrition’, whereas they differed in the additional word element ‘max’ of the earlier sign and in the figurative element, the stylisation and the word element ‘designed for motivation’ of the sign applied for. Nevertheless, according to the Board of Appeal, those differences do not outweigh the similarities linked to the elements ‘all’ and ‘nutrition’, with the result that there is an average degree of visual similarity (paragraphs 102 and 105 of the contested decision).

69 The applicant is of the view that the signs at issue must be regarded as visually dissimilar or, at most, similar to a very low degree. The relevant public will compare the only distinctive element of the earlier sign ‘allmax’ to all the distinctive and fanciful elements of the sign applied for and will find them different.

71 As regards the earlier sign, it is apparent from paragraphs 41 to 52 above that none of the three word elements ‘all’, ‘max’ and ‘nutrition’ dominate the overall impression of that sign. As regards the sign applied for, it is apparent from paragraphs 56 to 66 above that the English-speaking part of the relevant public will focus above all on the word elements ‘all’ and ‘nutrition’. Consequently, the Board of Appeal was right to find, in paragraphs 102 and 105 of the contested decision, that the differences between the signs at issue, linked to the word element ‘max’, which is only in the earlier sign, on the one hand, and to the figurative element, stylisation and word element ‘designed for motivation’ of the sign applied for, on the other hand, did not offset the similarities linked to the elements ‘all’ and ‘nutrition’, which are common to the signs at issue. Accordingly, it must be held that the Board of Appeal did not err in finding that there was an average degree of visual similarity.

72 As regards the phonetic similarity of the signs at issue, the Board of Appeal found that, even if the word element ‘designed for motivation’ and the figurative element of the sign applied for were pronounced by the English-speaking part of the relevant public, the resulting phonetic differences would not offset the similarities linked to the common elements ‘all’ and ‘nutrition’, which will be pronounced identically by the English-speaking part of the relevant public, with the result that there is an average degree of phonetic similarity (paragraphs 103 to 105 of the contested decision).

73 The applicant is of the view that the English-speaking part of the relevant public will pronounce only the element ‘allmax’ of the earlier sign, whereas it does indeed pronounce the whole of the sign applied for, ‘an allnutrition designed for motivation’. There is, therefore, a phonetic difference.

75 As regards the earlier sign, it is apparent from paragraphs 41 to 52 above that none of the three word elements ‘all’, ‘max’ and ‘nutrition’ dominate the overall impression of that sign. As regards the sign applied for, it is apparent from paragraphs 56 to 66 above that the English-speaking part of the relevant public will focus above all on the word elements ‘all’ and ‘nutrition’. As regards, in particular, the word element ‘designed for motivation’, EUIPO is also correct in considering, as the Board of Appeal found in paragraph 103 of the contested decision, that, because of its size and position, the English-speaking part of the relevant public will not pronounce the advertising slogan ‘designed for motivation’. Furthermore, as the Board of Appeal also correctly stated in paragraph 103 of the contested decision, it is unlikely that that part of the relevant public will pronounce the figurative element. Overall, having regard to the identical pronunciation of the elements ‘all’ and ‘nutrition’, the Board of Appeal did not err in concluding that the difference in pronunciation, resulting from the additional word element ‘max’ of the earlier sign, did not preclude a finding that there was an average degree of phonetic similarity, even if the figurative element and the word element ‘designed for motivation’ were to be pronounced.

76 The Board of Appeal held, in paragraph 106 of the contested decision, that the signs at issue were conceptually very similar. With a slight difference resulting from the reference by the earlier sign to ‘maximum’, the two signs refer to the same semantic content, namely ‘nutrition’, as an objective or the field in which the goods and services in question are marketed, and ‘all’, as an unclear and polysemous allusion to, inter alia, completeness, entirety, wholeness.

77 The applicant is of the view that, on account of its descriptive character and lack of distinctive character, the word element ‘nutrition’ of the earlier sign is not relevant for the purposes of the conceptual comparison. According to the applicant, the logo at the beginning of the sign applied for, the combination of the two word elements ‘all’ and ‘nutrition’ and the addition of the original slogan ‘designed for motivation’ create a significant difference between the signs at issue. In the light of that difference, the similarity associated with the descriptive word element ‘nutrition’ and the word element ‘all’, which has only weak distinctive character, is not sufficient to conclude that the signs at issue are conceptually similar to more than weak degree.

79 As regards the earlier sign, it is apparent from paragraphs 41 to 52 above that none of the three word elements ‘all’, ‘max’ and ‘nutrition’ dominates the overall impression of that sign. As regards the sign applied for, it is apparent from paragraphs 56 to 66 above that the English-speaking part of the relevant public will focus above all on the word elements ‘all’ and ‘nutrition’. It follows that the word element ‘nutrition’ is relevant for the purposes of the conceptual comparison. In so far as the applicant appears to be of the opinion that the figurative element is likely to lead to a conceptual difference between the signs at issue, it is sufficient to note, as EUIPO has done, that that element does not convey any clear concept, with the result that it cannot have an impact on the conceptual comparison of the signs at issue. As the Board of Appeal correctly found in paragraph 106 of the contested decision, the signs at issue coincide conceptually on account of the word elements ‘all’ and ‘nutrition’. As regards the additional word element ‘max’ of the earlier sign, it has been found in paragraph 42 above that, like the word element ‘all’, it will be understood by the English-speaking part of the relevant public as alluding to the total or as large as possible capacity of those goods to satisfy specific nutritional needs. Consequently, the additional word element ‘max’ of the earlier sign does not in fact give rise to any conceptual difference between the signs at issue. The word element ‘designed for motivation’ plays only a secondary role (see paragraph 64 above). Overall, the Board of Appeal cannot be criticised for having found that the signs at issue are conceptually very similar.

80 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

81 In the present case, the Board of Appeal found, to begin with, in paragraphs 109 to 113 of the contested decision, that the distinctive character of the earlier sign was lower than average. It then found, in paragraphs 118 to 124 of the contested decision, that, first, the goods and services in question were at least similar to varying degrees, second, the signs at issue had an average degree of visual and phonetic similarity and a high degree of conceptual similarity, third, the lower than average degree of distinctiveness of the earlier sign did not preclude a finding that there was a likelihood of confusion in the present case, fourth, a part of the relevant public’s level of attention being higher than average was not likely to prevent that public from retaining in their minds above all the word elements ‘all’ and ‘nutrition’, which play an important role in the marks at issue and, fifth and consequently, that relevant public may legitimately assume that the contested sign constitutes a sub-brand or a variation of the earlier mark. Lastly, according to the Board of Appeal, it follows that there is a likelihood of confusion between the marks at issue.

82 The applicant claims that the word element ‘nutrition’ is devoid of any distinctive character as regards the goods and services in question. According to the applicant, the distinctive elements to be compared are the word element ‘allmax’ of the earlier marks, on the one hand, and all the figurative elements and word elements of the mark applied for, on the other. Since the distinctive character of the earlier marks is weak, they enjoy more restricted protection. Where the elements of similarity between two signs arise from the fact that they share a component which has a weak distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low. The impact of the word element ‘nutrition’ on the global assessment of the likelihood of confusion is non-existent or very slight at most. There are substantial visual and phonetic differences between the signs at issue. The Board of Appeal should have found that the figurative aspects of the sign applied for play a decisive role in the overall impression. It is also wrong to consider, as the Board of Appeal did, that the relevant public might assume that the mark applied for constitutes a sub-brand of the earlier marks.

84 In the present case, it follows from the foregoing considerations that the English-speaking part of the relevant public will divide the earlier sign into the three elements ‘all’, ‘max’ and ‘nutrition’ (see paragraph 41 above) and that those elements taken together have only weak distinctive character (see points 42, 43 and 49 above). It has also been found that the English-speaking part of the relevant public will indeed take into account the word element ‘nutrition’ and will not ignore it as the applicant claims (see paragraphs 46 to 49 above).

85 Although the earlier marks therefore have only weak distinctive character, it must nevertheless be borne in mind, as the Board of Appeal also did, in essence, in paragraph 121 of the contested decision, that the finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

86 In that respect, it is indeed apparent from the case-law that where the elements of similarity between two signs result from the fact that they share a component with weak distinctive character, the impact of those elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 30 May 2018, L’Oréal v EUIPO, C‑519/17 P and C‑522/17 P to C‑525/17 P, not published, EU:C:2018:348, paragraph 73 and the case-law cited).

87 In the present case, the signs at issue have in common the components ‘all’ and ‘nutrition’, which have only weak distinctive character, both in the earlier sign (see paragraphs 42, 43, 49 and 84 above) and in the sign applied for (see points 56 and 65 above). However, if, as in the present case, the other components of the signs at issue which are not common to them have even weaker distinctive character, the impact of shared elements with a weak distinctive character on the global assessment of the likelihood of confusion is not, in fact, reduced.

88 Given that the goods and services in question are in part identical and in part similar (see paragraphs 30 to 33 above) and that the signs at issue are visually similar to an average degree (see paragraph 71 above), phonetically similar to an average degree (see paragraph 75 above) and conceptually highly similar (see paragraph 80 above), the Board of Appeal was fully entitled to find that, overall, there was a likelihood of confusion between the marks at issue on the part of the English-speaking part of the relevant public, even though that public has, in part, a higher than average level of attention (see paragraphs 23 to 28 above). Consequently, contrary to what the applicant claims, the Board of Appeal was right to find, in essence, in paragraphs 51, 122 and 123 of the contested decision, that the level of attention of the relevant public was not a decisive factor in the present case.

89 Since the Board of Appeal thus correctly established the existence of such a likelihood of confusion, its additional findings on the perception of the English-speaking part of the relevant public as regards the relationship between the marks at issue are not decisive. The applicant’s arguments as regards those findings are, therefore, ineffective.

90 Since a likelihood of confusion on the part of the English-speaking part of the relevant public is sufficient to uphold the opposition based on Article 8(1)(b) of Regulation No 207/2009 (see paragraphs 20 and 21 above), the single plea in law must be rejected and, accordingly, the action must be dismissed in its entirety, without it being necessary to examine the admissibility of the applicant’s second head of claim by which it requests that the Court reject the opposition.

91 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. 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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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> SFD v EUIPO - Allmax Nutrition (ALLNUTRITION DESIGNED FOR MOTIVATION) (EU trade mark - Judgment) [2022] EUECJ T-35/21 (30 March 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T3521.html Cite as: ECLI:EU:T:2022:173, EU:T:2022:173, [2022] EUECJ T-35/21

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