Krasnyj Octyabr v EUIPO - Pokoj (KROWKA MLECZNA Milk FUDGE) (EU trade mark - Judgment) [2022] EUECJ T-363/20 (01 June 2022)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

(EU trade mark – Invalidity proceedings – EU figurative mark KRÓWKA MLECZNA Milk FUDGE – Earlier international figurative mark KOPOBKA KOROVKA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001 – Right to be heard – Article 94(1) of Regulation 2017/1001)

PAO Moscow Confectionery Factory ‘Krasnyj Octyabr’, established in Moscow (Russia), represented by M. Geitz and J. Stock, lawyers,

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

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

Spółdzielnia ‘Pokój’, established in Bielsko-Biała (Poland), represented by E. Pijewska and M. Mazurek, lawyers,

composed of M.J. Costeira, President, M. Kancheva and P. Zilgalvis (Rapporteur), Judges,

having regard to the reassignment of the case to the Ninth Chamber and to a new Judge-Rapporteur,

1 By its action based on Article 263 TFEU, the applicant, PAO Moscow Confectionery Factory ‘Krasnyj Octyabr’, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 April 2020 (Case R 1532/2019‑1) (‘the contested decision’).

2 On 25 April 2016, the intervener, Spółdzielnia ‘Pokój’, filed an application for registration of an EU trade mark with 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 Registration as a mark was sought for the following figurative sign, for which the colours orange, brown and white were claimed:

4 The goods in respect of which registration was sought are in Class 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Confectionery; candy; fudge’.

5 The trade mark application was published in European Union Trade Marks Bulletin No 2016/115 of 22 June 2016. That mark was registered on 29 September 2016 under number 15371255.

6 On 26 March 2018, the applicant filed an application with EUIPO for a declaration that the mark at issue was invalid in respect of all the goods referred to in paragraph 4 above.

7 The application for a declaration of invalidity was based on the earlier international registration No 844698 of the figurative mark reproduced below, having effect in, inter alia, Germany, Greece and Spain, filed and registered on 26 November 2004, and duly renewed, covering goods in, inter alia, Class 30 and corresponding, inter alia, to the following description: ‘Confectionery; sweetmeats; chocolate; pralines; waffles; pastries; cakes’:

8 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

9 By decision of 5 July 2019, the Cancellation Division dismissed the application for a declaration of invalidity.

10 On 17 July 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

11 By the contested decision, the Board of Appeal dismissed the appeal and upheld the decision of the Cancellation Division. In essence, it concluded that there was no likelihood of confusion or association on the part of the relevant public.

12 In particular, the Board of Appeal found that the goods covered by the marks at issue were directed at the general public in Germany, Greece and Spain displaying an average level of attention. Similarly, it upheld the Cancellation Division’s assessment that the goods at issue were identical.

13 As regards the assessment of the signs at issue, the Board of Appeal found, first, that neither the earlier mark nor the contested mark contained elements which could be considered more eye-catching than others or negligible. Second, it found that the elements ‘kopobka’, ‘korovka’, ‘krówka’ and ‘mleczna’ had no meaning for the relevant public and that, consequently, their distinctive character for the goods at issue was normal. As regards the element ‘milk’ and the depiction of a cow’s head, the Board of Appeal found that those elements were rather weak in view of the nature of the goods at issue, all of which have milk as their main ingredient. By contrast, it found that the distinctive character of the element ‘fudge’ was normal in the present case since it would be perceived as meaningless by the vast majority of the relevant public.

14 Third, the Board of Appeal found that, irrespective of whether or not the relevant public were to discern and identify the element ‘krówka’, written upside down in the contested mark, the signs at issue were visually dissimilar overall. Their only similarity was due to the coincidence between some letters of the earlier mark and one of the word elements of the contested mark. Fourth, according to the Board of Appeal, the signs at issue are pronounced differently, namely ‘kopobka korovka’ and ‘milk fudge’. It is only in the least likely scenario that the element ‘krówka’ of the contested mark would be pronounced. Consequently, in its view, the signs had at best a low degree of phonetic similarity. Fifth, the Board of Appeal found that the signs at issue were not conceptually similar.

17 Having regard to the date on which the application for registration at issue was filed, namely 25 April 2016, 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, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.

18 Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and those made by the applicant, EUIPO and the intervener in their written pleadings to the provisions of Regulation 2017/1001, in particular Article 8(1)(b) and Article 60(1)(a) of that regulation, must be understood as referring to the provisions of Regulation No 207/2009 which are identical in content, in particular Article 8(1)(b) and (5) and Article 53(1)(a) of that regulation.

19 The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, and, second, infringement of the second sentence of Article 94(1) of Regulation 2017/1001. It is appropriate to begin by examining the second plea.

The second plea in law, alleging infringement of the second sentence of Article 94(1) of Regulation 2017/1001

20 By the second plea in law, the applicant, in essence, criticises the Board of Appeal for failing to take into account, in the global assessment of the likelihood of confusion, its argument that the relevant public will take into consideration the element ‘krówka’ in the contested mark even though it is represented upside down. More specifically, it refers to the two scientific reviews which it had submitted during the proceedings before the Board of Appeal.

21 In that regard, the applicant submits that the Board of Appeal infringed the second sentence of Article 94(1) of Regulation 2017/1001 and its right to be heard by failing to take into account, in the global assessment of the likelihood of confusion, certain arguments which it had put forward concerning the perception of the marks at issue by the relevant public.

23 The second sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision sets out the right to be heard in proceedings before EUIPO.

24 In that regard, it must be held that, as is apparent in particular from paragraph 32 of the contested decision, the Board of Appeal duly examined the argument in question and the evidence submitted in support thereof. In particular, the Board of Appeal stated that none of the reviews in question referred to the circumstances of the case, namely that the word written upside down was preceded by another word which is also written upside down, both perceived by the relevant public as invented terms, potentially of Slavic origin, which was not common for the relevant public, and followed by the easily legible expression, namely ‘milk fudge’. In those circumstances, the applicant cannot validly claim that the Board of Appeal infringed its right to be heard, enshrined in particular in the second sentence of Article 94(1) of Regulation 2017/1001.

25 Furthermore, when identifying the various elements of the contested mark (see paragraph 33 of the contested decision), when comparing the marks at issue (see paragraphs 47 and 51 of the contested decision) and when carrying out the global assessment of the likelihood of confusion (see paragraph 62 of the contested decision), the Board of Appeal took into account the assumption that the element ‘krówka’ would be discerned and identified by the relevant public.

26 In the light of the foregoing considerations, the applicant’s claims are wholly unfounded. Consequently, the second plea in law must be rejected.

The first plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof

27 By the first plea, the applicant complains, in essence, that the Board of Appeal, first, erred in the assessment of the level of attention of the relevant public and in the comparison of the marks at issue, second, erred in the global assessment of the likelihood of confusion and, third, failed to take into consideration the existence of an ‘indirect’ likelihood of confusion.

28 According to a combined reading of Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, upon application of the proprietor of an earlier trade mark, the registered EU trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(iii) of Regulation No 207/2009, ‘earlier trade marks’ means, inter alia, trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

29 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that 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).

30 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47, and of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42).

31 It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was right to find that there was, in the present case, no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

32 Under Article 8(1)(b) of Regulation No 207/2009, the existence of a likelihood of confusion resulting from the similarity, on the one hand, between the trade mark in the application for registration and an earlier trade mark and, on the other hand, between the goods or services covered by those trade marks must be assessed on the part of the public in the territory in which the earlier trade mark is protected (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 51, and of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 59).

33 Furthermore, in accordance with 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).

34 In the present case, the Board of Appeal found, first, in paragraph 21 of the contested decision, that, since the earlier mark is an international registration having effect, in particular, in Germany, Greece and Spain, the relevant territory was that of those Member States and, second, in paragraph 20 of that decision, that the goods at issue were directed at the general public displaying an average level of attention.

35 The applicant calls into question the assessment of the level of attention of the relevant public and claims that it varies from low to average.

36 In that regard, EUIPO maintains that the case-law is ambiguous on that point in so far as, as regards the goods at issue, some judgments confirm an average level of attention, while others have found a ‘rather’ low level of attention.

37 First, it must be stated that, in accordance with the case-law referred to in paragraphs 32 and 33 above, the Board of Appeal’s assessment that the relevant public for the goods at issue was the German, Greek and Spanish general public, which, moreover, is not disputed by the parties, must be upheld.

38 Second, as regards the level of attention of the relevant public, it has already been held, in respect of goods in Class 30, similar or identical to those covered by the marks at issue, that the level of attention of the relevant public is at most average, if not relatively low, since those goods are mostly inexpensive foodstuffs intended for mass consumption (see order of 10 July 2020, Katjes Fassin v EUIPO – Haribo The Netherlands & Belgium (WONDERLAND), T‑616/19, not published, EU:T:2020:334, paragraph 29 and the case-law cited).

39 In that regard, it must be pointed out that the Board of Appeal’s findings that the level of attention of the relevant public is average are not inconsistent with the case-law cited in paragraph 38 above, which accepts that the level of attention of the public in respect of the goods in Class 30, similar to the goods at issue, may vary from low to average, as the applicant also claims. The fact remains that any effect of a lower level of attention on the part of the relevant public than that found by the Board of Appeal on the existence of a likelihood of confusion will be examined below (see paragraph 115 below).

40 In the present case, the Board of Appeal found, in paragraph 54 of the contested decision, that the goods at issue were identical.

41 It must be held, in the light of the description of the goods covered by the marks at issue, in paragraphs 4 and 7 above, that that assessment by the Board of Appeal, which, moreover, is not disputed by the parties, must be upheld.

42 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

43 In the present case, the earlier mark corresponds to a figurative sign, comprising two word elements, ‘kopobka’ being placed above ‘korovka’. Those elements are written in bold black and rather standard uppercase letters.

44 As regards the element ‘kopobka’, admittedly written in Cyrillic characters and corresponding to the Latin transliteration of the element ‘korovka’, the Board of Appeal rightly found, without it being challenged by the parties, that the letters used in that element corresponded to the Latin alphabet. Thus, since the Spanish, German and Greek alphabets do not contain Cyrillic characters, the Board of Appeal was justified in assuming that those two elements will be perceived as two different words in Latin characters, at least by a large majority of the relevant public, which is not familiar with Cyrillic characters.

45 The contested mark, for its part, is a figurative sign representing an orange rectangle composed, in essence, of three separate rectangles. The middle rectangle itself consists of three rectangles, of which the central one contains a realistic representation of a cow’s head on a white background. The top and bottom rectangles contain word elements, namely ‘mleczna krówka’ and ‘milk fudge’ respectively. Those word elements are in orange and white fonts on a brown background. In addition, the word elements ‘mleczna’ and ‘krówka’ are represented upside down.

46 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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. 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 (see judgment of 19 September 2018, Eddy’s Snack Company v EUIPO – Chocoladefabriken Lindt & Sprüngli (Eddy’s Snackcompany), T‑652/17, not published, EU:T:2018:564, paragraph 39 and the case-law cited).

47 In order to assess the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. Accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM – Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).

48 For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).

49 As regards, in the first place, the dominant elements of the signs at issue, the Board of Appeal found that, in the earlier mark, the two word elements were identical in size and, therefore, concluded that that mark did not contain any element that could be considered to be more dominant than the other (paragraph 28 of the contested decision).

50 As regards the contested mark, it endorsed the Cancellation Division’s finding that that mark contained no element which could be considered to be more visually eye-catching than others (paragraph 34 of the contested decision). In particular, it rejected the applicant’s claim that the element ‘krówka’, represented upside down in the contested mark, was clearly perceived by the relevant public and was dominant in that mark (paragraphs 30 to 33 of the contested decision).

51 The applicant submits that the Board of Appeal erred in finding that the contested mark did not contain any element which was more visually eye-catching than others. In that regard, first, it criticises the Board of Appeal for finding that the element ‘krówka’, contained in the contested mark, will not be perceived, since it is positioned upside down in that mark. According to the applicant, the relevant public will also perceive that mark as having to be viewed upside down, namely with the elements ‘krówka’ and ‘mleczna’ at the bottom. According to the applicant, it is scientifically proven that the human brain can easily read a text that has been rotated to 180 degrees. It adds that, in EUIPO’s register, mention is made of the element ‘krówka’ and not of an inverted version of that element, ‘akwórk’.

52 Second, the applicant submits that the attention of the relevant public will be drawn to the elements ‘milk’ and ‘krówka’. However, according to the applicant, the element ‘krówka’ is the dominant element of that mark, given its size and the fact that the element ‘milk’ is descriptive.

54 As regards the identification of any dominant elements of the marks at issue, first, it is necessary to uphold the Board of Appeal’s assessment that neither of the two identically sized word elements in the earlier mark is more dominant than the other.

55 Second, it must be held that the Board of Appeal did not make an error of assessment in finding that the contested mark did not contain any element which was more visually eye-catching than others. More specifically, it was justified in finding that, contrary to the applicant’s contentions, the element ‘krówka’, positioned upside down in the rectangle situated in the upper part of that mark, did not constitute a dominant element of that mark.

56 In that regard, first of all, it should be noted that the applicant misinterprets the contested decision in so far as it submits that the Board of Appeal found that the element ‘krówka’ will not be perceived by the relevant public, whereas the Board of Appeal merely noted, in paragraph 31 of the contested decision, that that public will have difficulty in perceiving and reading that element, without, however, taking the view that it was negligible.

57 In any event, that finding of the Board of Appeal can only be upheld. As the Board of Appeal correctly stated in paragraph 31 of the contested decision, consumers in the European Union usually read from left to right, and not from right to left, reversing the letters. It cannot therefore be disputed that, in the light of the way in which it is represented in the contested mark, the element ‘krówka’, even if it cannot be described as illegible, will not be immediately identified by the relevant public, that is to say, without a certain mental effort on its part. That public will have even greater difficulty reading that element because it does not proceed to analyse the various details of the mark when making a purchase (see, to that effect, judgment of 11 November 2009, Frag Comercio Internacional v OHIM – Tinkerbell Modas (GREEN by missako), T‑162/08, not published, EU:T:2009:432, paragraph 43). As EUIPO correctly observes, that would be all the more true in the situation, defended by the applicant, where the relevant public has only a low level of attention.

58 The two reviews produced by the applicant during the proceedings before the Board of Appeal, which establish that consumers are able to recognise words written upside down, are not such as to call into question the considerations set out in paragraphs 55 to 57 above. As the Board of Appeal correctly pointed out in paragraph 32 of the contested decision, the hypotheses covered by those reviews can be distinguished from the circumstances of the present case, in which the element ‘krówka’, represented upside down, is preceded by another word, also represented upside down, and those two elements will be perceived by the relevant public as being invented words and in which they are followed by the expression ‘milk fudge’ written upright, which, for its part, is easily legible.

59 In short, the element ‘krówka’ is only one of the non-negligible elements which make up the contested mark. Even if the attention of the relevant public were to be drawn more by the word elements of that mark, this would be more by the expression ‘milk fudge’ than by the element ‘krówka’, if only because the two elements making up that expression are not upside down. In addition, the element ‘krówka’ is not isolated, but is preceded by the element ‘mleczna’, which is also represented upside down.

60 Next, it is to no avail that the applicant relies on the fact that the contested mark could also be viewed when turned upside down. In that regard, it should be borne in mind that, when assessing whether they are identical or similar, signs must be compared in the form in which they are protected, that is to say, as they were registered or as they appear in the application for registration. The actual or potential use of registered marks in another form is irrelevant when comparing signs (judgment of 21 April 2021, Chanel v EUIPO – Huawei Technologies (Representation of a circle containing two interlaced curves), T‑44/20, not published, EU:T:2021:207, paragraph 25).

61 The orientation of signs, as set out in the application for registration, may have an impact on the scope of their protection and, consequently, in order to avoid any uncertainty and doubt, the comparison between the signs can be carried out only on the basis of the shapes and orientations in which those signs are registered or applied for (judgment of 21 April 2021, Representation of a circle containing two interlaced curves, T‑44/20, not published, EU:T:2021:207, paragraph 26).

62 Lastly, as EUIPO correctly submits, it is irrelevant that, in EUIPO’s register, the contested mark is described as containing the element ‘krówka’, given that that register will not be consulted by the relevant public.

63 In the second place, the Board of Appeal assessed the distinctive character of the elements making up the marks at issue. In that regard, first of all, it found that the elements ‘kopobka’, ‘korovka’ and ‘krówka’ will be considered by the German-, Greek- and Spanish-speaking public as words, probably of Slavic origin, with no immediately perceptible meaning as regards the goods at issue and, therefore, that they have a normal distinctive character (paragraph 36 of the contested decision). Similarly, it found that the Polish word ‘mleczna’ in the contested mark was also devoid of meaning for the relevant public and therefore had a normal distinctive character (paragraph 37 of the contested decision).

64 Next, while rejecting the applicant’s claim that average Spanish, German and Greek consumers were familiar with the expression ‘milk fudge’ in the contested mark, and that they will perceive it as a reference to the goods at issue (paragraph 38 of the contested decision), the Board of Appeal stated that the element ‘milk’, reinforced by the representation of a cow’s head, will be understood by the vast majority of the relevant public, unlike the element ‘fudge’ (paragraph 39 of the contested decision). It concluded that, bearing in mind the goods at issue, the element ‘milk’ and the representation of a cow’s head had a weak distinctive character, whereas the element ‘fudge’ had a normal distinctive character (paragraph 40 of the contested decision).

65 Lastly, the Board of Appeal found that the other figurative elements in the contested mark, namely the rectangles which served as a background or frames, had a mere ornamental value with no particular distinctive impact (paragraph 41 of the contested decision).

66 The applicant submits that the Board of Appeal did not correctly assess the distinctive elements of the marks at issue. More specifically, it claims that the relevant German, Greek and Spanish public will easily understand the English word ‘fudge’ as referring to caramels, that is to say, sweets made with milk. This, it argues, is demonstrated by the fact that, in EUIPO’s register, the list of goods covered by the contested mark, drawn up in Greek, refers to that English word. According to the applicant, since the elements ‘fudge’ and ‘milk’ are purely descriptive and the element ‘mleczna’ is small in size and written in white characters, the relevant public will perceive the element ‘krówka’ as an indicator of the commercial origin of the goods covered by the contested mark.

68 As regards the distinctive character of the elements making up the marks at issue, first, it is necessary to uphold the Board of Appeal’s assessment that the distinctive character of the elements ‘kopobka’, ‘korovka’, ‘krówka’ and ‘mleczna’ is normal. Those elements will not be understood by the relevant public in Germany, Greece and Spain.

69 Second, the applicant’s claim that the relevant public in Germany, Greece and Spain will understand the meaning of the English word ‘fudge’, which would therefore be purely descriptive, cannot be accepted. As EUIPO points out, the fact that that word appears in the list, drawn up in Greek, of the goods covered by the contested mark does not demonstrate anything about how it is understood by the relevant public in Germany and Spain. Furthermore, although that word was added to the end of that list, it was solely in order to show that the corresponding Greek words constitute a translation.

70 Furthermore, it must be pointed out that, according to settled case-law, an understanding of a foreign language may not, in general, be presumed (judgments of 25 June 2008, Zipcar v OHIM – Canary Islands Car (ZIPCAR), T‑36/07, not published, EU:T:2008:223, paragraph 45, and of 21 May 2015, Nutrexpa v OHIM – Kraft Foods Italia Intellectual Property (Cuétara MARĺA ORO), T‑271/13, not published, EU:T:2015:308, paragraph 35). More specifically, with the exception of certain terms forming part of basic English vocabulary, it cannot be assumed that English terms are widely known in the European Union (judgment of 29 April 2020, Kerry Luxembourg v EUIPO – Döhler (TasteSense), T‑109/19, not published, EU:T:2020:162, paragraph 65). The word ‘fudge’ cannot be regarded as forming part of such basic vocabulary. Nor is it a word in everyday language, in particular in Germany, Greece and Spain. The applicant has not adduced any evidence capable of invalidating those findings.

71 It follows that the Board of Appeal was right to find that the word element ‘fudge’ had normal distinctive character.

72 Third, and without those findings being disputed by the parties, the Board of Appeal was justified in finding that the element ‘milk’ and the representation of a cow’s head have a weak distinctive character having regard to the nature of the goods at issue, which have milk as an ingredient. Similarly, it did not make an error of assessment in finding that the other figurative elements, namely the rectangles which serve as a background or frames in that mark, have a mere ornamental value with no particular distinctive impact.

73 In the light of the foregoing, it must be concluded that the Board of Appeal did not make an error of assessment in finding, first, that, in the earlier mark, none of the word elements was dominant and that both ‘kopobka’ and ‘korovka’ had a normal degree of distinctiveness and, second, that, as regards the contested mark, none of the elements of which it consists was dominant and that the word elements ‘krówka’, ‘mleczna’ and ‘fudge’ had a normal degree of distinctiveness.

74 The Board of Appeal found, in paragraphs 43 to 49 of the contested decision, that the marks at issue were visually dissimilar overall in so far as the obvious differences between them outweighed their ‘less relevant’ points of similarity resulting from the coincidence between some letters of the earlier mark and one of the word elements written upside down in the contested mark.

75 The applicant submits that there is a high degree of visual similarity between the marks at issue. First of all, it claims that the element ‘krówka’ is the ‘main element’ of the contested mark and observes that that element, on the one hand, and the elements ‘korovka’ and ‘kopobka’, on the other, begin with the letter ‘k’, have the letter ‘o’ in the middle and end with the group of letters ‘ka’. The element ‘krówka’, it argues, does no more than omit the first letter ‘o’ from the elements ‘korovka’ and ‘kopobka’ and replace, respectively, the letter ‘v’ and the letter ‘b’ of those elements with the letter ‘w’. Next, the applicant relies on the fact that the contested mark, in which the element ‘krówka’ is arranged ‘above’ the element ‘mleczna’, is structured in the same way as the earlier mark, in which ‘korovka’ is placed under ‘kopobka’. Lastly, the applicant claims that the relevant public will focus on the elements ‘krówka’ and ‘korovka’ of the marks at issue since it can easily pronounce them, even if that public does not understand Russian.

77 In the present case, it must be pointed out, as observed by the Board of Appeal (paragraph 43 of the contested decision), that the only point of visual similarity between the marks at issue is the coincidence between some of the letters in the word elements ‘krówka’, ‘kopobka’ and ‘korovka’. Those elements share the letters ‘k’, ‘o’ and ‘a’, as well as the letter ‘r’ for two of them, each beginning with the letter ‘k’ and ending with the letters ‘k’ and ‘a’. The letters ‘r’ and ‘o’, by contrast, are placed in a different order.

78 However, the mere presence of common letters does not in itself support the conclusion that the marks at issue are visually similar. As is apparent from the case-law, since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar (see, to that effect, judgments of 13 June 2019, Pet King Brands v EUIPO – Virbac (SUIMOX), T‑366/18, not published, EU:T:2019:410, paragraph 96 and the case-law cited, and of 26 March 2020, Conlance v EUIPO – LG Electronics (SONANCE), T‑343/19, not published, EU:T:2020:124, paragraph 41).

79 Similarly, it must be borne in mind that, contrary to the position argued, in essence, by the applicant in the present case, the visual comparison between the marks at issue cannot be limited, as regards the contested mark, solely to the element ‘krówka’.

80 As has been stated in paragraphs 55 to 59 above, that element, although not negligible, does not constitute a dominant element of that mark and will not be identified by the relevant public without a certain mental effort on its part. That mark, which is a composite sign in colour clearly representing the complete front side of packaging, whereas the earlier mark is simply composed of two word elements written in a bold, slightly stylised black font, contains several other word and figurative elements which are also not dominant, but which are, nevertheless, not negligible in the overall impression created by the contested mark.

81 Furthermore, the additional elements of the contested mark, namely the easily perceptible and legible expression ‘milk fudge’, the word element ‘mleczna’, the representation of a cow’s head and the figurative representation of those elements placed against rectangular orange, brown and white backgrounds, have no equivalent in the earlier mark and significantly diminish, in the context of an overall impression, the impact produced by the single point of similarity between those marks found in paragraph 77 above.

82 The applicant’s argument that the contested mark is allegedly structured in the same way as the earlier mark cannot be accepted, since it is based on an artificial fragmentation of the contested mark and disregards the other significant components of that mark (see paragraph 80 above). For the same reasons, it is necessary to reject the applicant’s argument that the relevant public will focus on the elements ‘krówka’ and ‘korovka’ of the marks at issue, which it can easily pronounce. Moreover, that argument does not take account of the fact that the earlier mark also contains the element ‘kopobka’, which, because of its positioning above the element ‘korovka’, will be perceived and pronounced before the latter.

83 In the light of the foregoing, it must be held that the Board of Appeal was justified in finding that, overall, the marks at issue were visually dissimilar.

84 In the present case, the Board of Appeal found, in paragraphs 50 and 51 of the contested decision, that the marks at issue had at best a low degree of phonetic similarity.

85 The applicant submits that there is a high degree of phonetic similarity between the marks at issue. In that regard, it submits that the final parts of the elements ‘krówka’ and ‘korovka’, namely ‘ówka’ and ‘ovka’, will be pronounced identically or almost identically by the relevant public. It adds that the initial parts of those elements, namely ‘kró’ and ‘koro’, will be pronounced in a similar way by that public since, first, in the contested mark, the sound of the letter ‘r’ is silent, dominated by that of the next letter, namely ‘o’, and, second, in the earlier mark, the first letter ‘o’ will not be ‘articulated’, since it is placed in the first syllable of the word elements of which that mark consists. Furthermore, it disputes that the rhythm and intonation of the marks at issue are different.

87 It must be held, as the Board of Appeal has done (paragraph 50 of the contested decision), that, irrespective of the different rules of pronunciation in the relevant territories, the earlier mark will be pronounced ‘kopobka korovka’, whereas the contested mark will be pronounced ‘milk fudge’. That latter expression, unlike the expression ‘mleczna krówka’, is easily recognisable and legible in the contested mark. In that case, the marks are therefore completely dissimilar phonetically.

88 The opposing argument put forward by the applicant, which is based on the premiss that the relevant public will pronounce only the element ‘krówka’ of the contested mark and the element ‘korovka’ of the earlier mark, cannot be accepted.

89 That argument is based on an artificial fragmentation of the contested mark and disregards the expression ‘milk fudge’ in that mark and the element ‘mleczna’ which precedes the element ‘krówka’. Furthermore, the applicant fails to take account of the fact that the earlier mark also includes the element ‘kopobka’ and that that element, being placed above the element ‘korovka’, will be perceived and pronounced first in that mark. In that regard, as EUIPO correctly submits, it cannot be ruled out that the relevant public may even confine itself to pronouncing the element ‘kopobka’ when faced with the earlier mark. Lastly, as regards the contested mark, it is unlikely that it will be pronounced as ‘krówka’ by the relevant public, given that that element is positioned upside down in that mark and its perception will require some effort on the part of the public (see paragraph 57 above). Even if the relevant public were to perceive and pronounce those elements placed upside down, that public would first pronounce the element ‘mleczna’, which, although also positioned upside down, precedes the element ‘krówka’.

90 In any event, even if the phonetic comparison had to be limited solely to the elements ‘korovka’ and ‘krówka’, as the applicant wrongly does, it would necessarily have to be held that those elements differ in terms of their intonation, the first containing a syllable and a vowel more than the latter and being longer than the latter. The pronunciation of those marks coincides only in the sound of their first letter ‘k’ and of their last two letters ‘k’ and ‘a’, their other common letters, namely ‘o’ and ‘r’, being placed in a different order. The applicant’s claims that the sound of the letter ‘r’ in the contested mark is silent and that the first letter ‘o’ of the two word elements of the earlier mark will not be ‘articulated’ are in no way substantiated.

91 In the light of the foregoing, the Board of Appeal was justified in finding that there was, at best, a low degree of phonetic similarity between the marks at issue and only in the unlikely event that the element ‘krówka’ of the contested mark were to be pronounced.

92 The Board of Appeal concluded, in paragraph 52 of the contested decision, that there was no conceptual similarity between the marks at issue.

93 The applicant claims that, due to the visual and phonetic similarities between the marks at issue, even the ‘trade circles addressed’ who do not understand the meaning of those marks will assume that there is also a conceptual similarity between them. In support of that claim, it submits, in essence, that the Board of Appeal incorrectly took account of the figurative elements of the contested mark in the conceptual comparison of the marks at issue. According to the applicant, the relevant public will not attribute any function of an indication of origin to those figurative elements and will not consider that they have any particular meaning in the contested mark.

94 In addition, the applicant criticises the Board of Appeal for failing to take account of the fact that there is a fairly large group of Russian speakers in Germany, Spain and Greece. The latter, it submits, clearly perceive the word elements ‘krówka’, ‘kopobka’ and ‘korovka’ in the marks at issue. In response to a question put by the Court at the hearing, the applicant stated that this was an additional argument relating to the existence of conceptual similarity. Similarly, it stated that the trade circles will understand the three terms referred to above on account of their similarity.

96 It must be stated that, in the present case, the Board of Appeal correctly carried out a conceptual comparison of the marks at issue by concluding that they were not similar.

97 Thus, it must be borne in mind that the word elements making up the earlier mark are devoid of any meaning for the relevant public (see paragraph 68 above). By contrast, as regards the contested mark, the element ‘milk’ and the representation of a cow’s head will be understood by that public as meaning that the goods covered by that mark have milk as their main ingredient. The fact, also relied on by the applicant, that those elements have a weak distinctive character, in the absence of other elements conveying a conceptual message, does not alter that assessment in any way.

98 Similarly, as the intervener rightly submits, the applicant’s argument, set out in paragraph 93 above, is inherently contradictory. If, as the applicant states, the marks at issue did not convey any meaning for the relevant public, they could not, by definition, present the slightest conceptual similarity. In such a case, the comparison of the marks at issue would, at most, have to be regarded as being conceptually neutral and would have no effect on the assessment of the similarity between those marks. In addition, that argument is based on premisses relating to the visual and phonetic similarity of those marks, which, in the light of the considerations set out in paragraphs 83 and 91 above, must be rejected as erroneous.

99 As regards the applicant’s claim that the Board of Appeal did not take account of the fact that a fairly large number of people speak Russian in Germany, Spain and Greece, the following must be noted.

100 First of all, it must be stated that the applicant has not established the accuracy of that claim. In that regard, it should be noted, as observed by EUIPO, that the judgments cited by the applicant in support of its claim do not confirm that a significant proportion of German, Spanish or Greek nationals understand Russian. Thus, in the judgment of 19 July 2017, Lackmann Fleisch- und Feinkostfabrik v EUIPO (медведь) (T‑432/16, not published, EU:T:2017:527, paragraphs 23, 29 and 31), the Court did not recognise that German, Spanish or Greek nationals know that language. Similarly, in its judgment of 18 June 2020, Dovgan v EUIPO (C‑142/19 P, not published, EU:C:2020:487, paragraphs 38 to 43), delivered on appeal against the judgment of 13 December 2018, Monolith Frost v EUIPO – Dovgan (PLOMBIR) (T‑830/16, EU:T:2018:941), relied on by the applicant, the Court of Justice held that there was no need for it to rule on a possible error on the part of the General Court in its judgment regarding German nationals’ knowledge of Russian, since the General Court’s finding that it was well known that a significant proportion of nationals of the Baltic States understood that language was sufficient to justify its conclusion.

101 As regards the judgment of 28 October 2015, Rot Front v OHIM – Rakhat (Маска) (T‑96/13, EU:T:2015:813), it is irrelevant in so far as, first, it relates to the question of the definition of the relevant public in the light of the criteria laid down by the applicable national law, in that case German law, including national case-law and academic writings, and not in the light of the case-law of the General Court concerning the application of Regulation No 207/2009, and, second, it finds at most that there are Russian-speaking consumers in Germany, but without giving any indication as to what proportion they represent in relation to all relevant consumers in that country.

102 Next, it must be noted that the word ‘krówka’, unlike ‘kopobka’ and ‘korovka’, is a Polish word. Therefore, it cannot be assumed that it will be understood by the Russian-speaking public. In that regard, it must be noted that the applicant’s claims that the elements ‘krówka’, ‘kopobka’ and ‘korovka’ will all be understood by trade circles are not substantiated in any way. Furthermore, it should be recalled that the relevant public in this case is the general public and not the professional public (see paragraph 37 above), with the result that the perception of the marks in question by a professional public is irrelevant.

103 Lastly, even if part of the relevant public were to understand, in an analogous manner, the elements ‘krówka’, ‘kopobka’ and ‘korovka’ as equivalent and meaning ‘small cow’, it would then be necessary to take account of the reduced distinctive character of those elements, since, at the very least, the Polish word ‘krówka’ is descriptive of the goods at issue, as the intervener established during the administrative procedure (see paragraph 7 of the contested decision). Moreover, given that the representation of a cow’s head in the contested mark had a weak distinctive character for the goods covered by that mark (see paragraph 72 above), that is necessarily the case for the word elements meaning ‘small cow’. In such circumstances, its impact on the conceptual comparison is, in any event, limited. It is apparent from the case-law that, where signs share only a descriptive word, the conceptual similarity must be regarded as low (judgments of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 51, and of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE), T‑2/20, not published, EU:T:2020:493, paragraph 67).

104 It follows from the foregoing considerations that the Board of Appeal was right to conclude that, overall, the marks at issue were visually and conceptually dissimilar and had, at best, only a low degree of phonetic similarity.

105 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

106 The Board of Appeal concluded that there was no likelihood of confusion or association on the part of the relevant public, despite the identity of the goods at issue, taking into account, in essence, the fact that the marks at issue, taken as a whole, were visually and conceptually dissimilar, that they had at best a low degree of phonetic similarity, that the earlier mark had a normal degree of inherent distinctiveness and that the relevant public’s level of attention was average (paragraphs 55 to 63 of the contested decision).

107 The applicant disputes that finding. It submits that there is a ‘direct’ likelihood of confusion having regard to the identity of the goods at issue, the at-least-average degree of similarity between the marks, the normal inherent distinctiveness of the earlier mark, the low to average level of attention of the relevant public and the fact that the goods at issue are generally bought on sight by that public.

108 The applicant also claims that, in the contested decision, no account was taken of the existence of an ‘indirect’ likelihood of confusion. According to the applicant, given the identity of the goods at issue, the normal inherent distinctiveness of the earlier mark and the at-least-average degree of visual, phonetic and conceptual similarity between those marks, the relevant public will automatically assume that there are legal or economic links between the applicant and the intervener. It adds that that public, even if it were to see the differences between the marks at issue noted in the contested decision, will assume that the contested mark is a playful variation of the earlier mark. At the hearing, in response to a question from the Court, the applicant confirmed that by ‘indirect’ likelihood of confusion it alluded to the likelihood of association.

110 In the present case, as has been confirmed in paragraph 41 above, the goods at issue are identical. The marks at issue are not visually and conceptually similar and have, at best, a low degree of phonetic similarity (see paragraphs 83, 91 and 96 above).

111 Similarly, as the Board of Appeal has found (see paragraph 58 of the contested decision), and without that finding being challenged by the applicant, it must be held that the inherent distinctive character of the earlier mark is normal.

112 It should be added that, in view of the nature of the goods at issue, the Board of Appeal was right to point out, in paragraph 60 of the contested decision, that, in the present case, the visual aspect played a more important role in the global assessment of the likelihood of confusion. Those goods are everyday consumer goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives the mark which designates them visually.

113 In that regard, it should be borne in mind that the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives the mark designating those goods visually (judgment of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 68).

114 Consequently, the potential low degree of phonetic similarity between the marks at issue cannot therefore offset the obvious visual and conceptual differences between those marks. Even for the part of the relevant public which may discern and identify the element ‘krówka’ in the contested mark, those differences lead to a different visual impression of the marks at issue.

115 In the light of the considerations set out in paragraphs 110 to 112 above and in view of the principle of interdependence referred to in paragraph 105 above, it must be held that the Board of Appeal did not commit an error of assessment in finding that there was no likelihood of confusion on the part of the relevant public. The circumstance, relied on by the applicant, that the level of attention of that public may vary from low to average, rather than being average, as found by the Board of Appeal, cannot affect that conclusion. On the contrary, as has been noted in paragraph 57 above, if, as the applicant claims, the relevant public were to display only a low level of attention, that public would have even more difficulty in discerning and identifying the element ‘krówka’ in the contested mark and would therefore be even less likely to confuse the marks at issue.

116 Furthermore, the applicant’s assertion that the relevant public, faced with the contested mark, will assume that there are legal or economic links between the applicant and the intervener must be rejected. Since the marks at issue differ visually and conceptually and are at best only slightly similar phonetically, such a likelihood of association must be ruled out. Furthermore, in the light of those differences, it cannot be accepted that the relevant public might perceive the contested mark as a playful variation of the earlier mark.

117 It follows from all of the foregoing considerations that the first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected.

119 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.

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

2. Orders PAO Moscow Confectionery Factory ‘Krasnyj Octyabr’ to pay the costs.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Krasnyj Octyabr v EUIPO - Pokoj (KROWKA MLECZNA Milk FUDGE) (EU trade mark - Judgment) [2022] EUECJ T-363/20 (01 June 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T36320.html Cite as: [2022] EUECJ T-363/20, EU:T:2022:321, ECLI:EU:T:2022:321

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