Schneider v EUIPO - Frutaria Innovation (frutania) (EU trade mark - Judgment) [2023] EUECJ T-109/22 (26 July 2023)

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(EU trade mark – Opposition proceedings – Application for the EU figurative mark frutania – Earlier EU figurative mark Frutaria – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

Markus Schneider, residing in Bonn (Germany), represented by M. Bergermann and D. Graetsch, lawyers,

European Union Intellectual Property Office (EUIPO), represented by D. Gája 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

Frutaria Innovation, SL, formerly Frutaria Comercial de Frutas y Hortalizas, SL, established in Saragossa (Spain), represented by J. Learte Álvarez and C. Anadón Giménez, lawyers,

composed of D. Spielmann (Rapporteur), President, R. Mastroianni and I. Gâlea, Judges,

1 By his action under Article 263 TFEU, the applicant, Mr Markus Schneider, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 December 2021 (Case R 1058/2017-1) (‘the contested decision’).

2 On 16 July 2013, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:

3 The mark applied for covered goods and services in Classes 29, 31, 35 and 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:

– Class 29: ‘Preserved vegetables; dried vegetables; frozen vegetables; preserved fruit; desiccated fruits; jams and vegetable jams’;

– Class 31: ‘Fresh vegetables; fresh fruit, in particular fresh pomes, in particular fresh apples and pears, fresh; fresh herbs; fresh nuts; foodstuffs for animals; living plants; seeds; flowers, natural’;

– Class 35: ‘Retailing and wholesaling, namely of vegetables, fruits, herbs, nuts, foodstuffs for animals, natural plants, seeds and natural flowers’;

– Class 39: ‘Transportation and storage; packaging of goods, in particular packaging of fruits, vegetables, herbs; nuts (fruits); foodstuffs for animals, natural plants, seeds and natural flowers’.

4 On 28 November 2013, the intervener, Frutaria Innovation, SL, formerly Frutaria Comercial de Frutas y Hortalizas, SL, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

5 The opposition was based on, inter alia, the EU figurative mark reproduced below, which was registered on 27 April 2010 under the number 5922885 and covered ‘preserved, dried and cooked fruits, vegetables and pulses; meat, fish, poultry and game; meat extracts; jams and jellies; fruit sauces; eggs, milk and milk products; edible oils and fats’ in Class 29; ‘agricultural, horticultural and forestry products and grains; fresh fruits, pulses and garden produce; seeds, natural plants and flowers’ in Class 31; ‘commercial retailing, import, export, and sales promotion of agri-food products in general, in particular fresh or preserved fruits and vegetables; advertising; advertising material services (brochures, prospectuses, printed sheets, samples); commercial management assistance in relation to franchising; business management; commercial management assistance and consultancy and commercial and industrial management assistance and consultancy’ in Class 35 and ‘warehousing, loading and unloading, packing and packaging, transport, delivery, distribution of agri-food products in general, and in particular, fresh or preserved fruit and vegetables’ in Class 39:

6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

7 Following a request made by the applicant, EUIPO invited the intervener to furnish proof of genuine use of the earlier mark which had been relied on in support of the opposition. The intervener complied with that request within the time limit set.

8 On 5 May 2015, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion for part of the public in the European Union.

9 On 9 September 2016, the Board of Appeal annulled the Opposition Division’s decision of 5 May 2005, after finding that the Opposition Division had failed to examine the proof of use of the earlier mark and the applicant’s ‘respective arguments’, and remitted the case to the Opposition Division.

10 On 21 March 2017, the Opposition Division upheld the opposition based on the earlier mark and rejected the application for registration in its entirety on the ground that there was a likelihood of confusion for part of the public in the European Union. As regards the issue of proof of use, the Opposition Division pointed out that, since the earlier mark had been registered on 27 April 2010, it could not be subject to the proof of use requirement.

11 At the same time, following an application to EUIPO for revocation of the earlier mark in respect of all the goods and services covered by that mark, on the basis of Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), the Board of Appeal, in a decision of 8 October 2019, maintained the registration of the earlier mark only in respect of dried fruits in Class 29, fresh fruits and fresh vegetables in Class 31 and the export of fresh fruits in Class 35. The Board of Appeal’s decision of 8 October 2019 was the subject of an action for annulment before the Court (judgment of 13 October 2021, Schneider v EUIPO – Frutaria Comercial de Frutas y Hortalizas (Frutaria), T‑12/20, not published, EU:T:2021:702), which was dismissed in its entirety.

12 By the contested decision, the Board of Appeal dismissed the applicant’s appeal against the Opposition Division’s decision of 21 March 2017. The Board of Appeal stated, inter alia, that, following the revocation proceedings which have been referred to in paragraph 11 above, the contested decision related only to the goods and services which have been referred to in that paragraph. The Board of Appeal found that the marks at issue were visually similar and highly similar phonetically and that neither of the marks as a whole had any meaning for the relevant public. It also stated that the identity and similarity of the goods and services covered by the marks at issue and the degree of similarity between the mark applied for and the earlier mark were sufficient to make it possible to conclude that there was a likelihood of confusion for part of the public in the European Union, in particular, the Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish public, for which the word element in the earlier mark had no meaning and therefore had an average degree of inherent distinctiveness.

– order EUIPO to pay the costs, including those incurred before the Board of Appeal.

15 Given the date on which the application for registration at issue was filed, namely 16 July 2013, which is decisive for the purposes of identifying 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).

16 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and the parties in their written pleadings to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.

17 In support of his action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 207/2009 in that the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public.

19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

20 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

21 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 (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).

22 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

23 It is in the light of those principles that the present action must be examined.

24 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).

25 The Board of Appeal found that, as regards the goods in Classes 29 and 31 and the retail services in Class 35, account had to be taken of the average consumer of the category of goods and services concerned, who was reasonably well informed and reasonably observant and circumspect. It added that the relevant public with regard to the wholesale services in Class 35 and the services of transportation and packaging in Class 39 consisted of well-informed and attentive professionals in the trade. It also found that its examination would focus on the Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish public.

26 The applicant does not dispute the Board of Appeal’s assessments as regards the level of attention of the relevant public. By contrast, as regards the definition of that public, he submits that the Portuguese- and Spanish-speaking public should also have been taken into consideration by the Board of Appeal. Thus, according to the applicant, the Board of Appeal’s perception of the relevant public as consisting of the Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish public is incorrect.

28 It is apparent from the case-law that, where the earlier mark relied on in support of opposition proceedings is an EU trade mark, it is not a requirement of Article 8(1)(b) of Regulation No 207/2009 that, for the mark applied for to be refused registration, the likelihood of confusion must exist in all the Member States and in all the language areas of the European Union. The unitary character of the EU trade mark means that such an earlier trade mark can be relied on against any application for registration of a later trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 19 January 2022, Construcciones Electromecánicas Sabero v EUIPO – Magdalenas de las Heras (Heras Bareche), T‑99/21, not published, EU:T:2022:14, paragraph 28).

29 In the present case, when assessing the inherent distinctiveness of the earlier mark, the Board of Appeal considered the meaning that the word element in the earlier mark could have for the Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish part of the relevant public. Consequently, and in accordance with the case-law cited in paragraph 28 above, the Board of Appeal did not make any error of assessment in confining its examination of the likelihood of confusion to the abovementioned part of the relevant public.

30 In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

31 Furthermore, it is apparent from the case-law that, where the goods in respect of which an earlier mark is protected include the goods covered by an application for registration, those goods are considered to be identical (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).

32 The applicant submits that the dried vegetables in Class 29 covered by the mark applied for are fundamentally different from the dried fruits in the same class covered by the earlier mark. He also submits that the Board of Appeal’s assumption that the frozen vegetables, jams and vegetable jams in Class 29 covered by the mark applied for and the dried fruits covered by the earlier mark are similar is incorrect, since the goods covered by the mark applied for are processed foodstuffs which are not produced or sold by a fruit producer or distributor. As regards the goods in Class 31 covered by the mark applied for, the applicant disputes the existence of any similarity between foodstuffs for animals, seeds, nuts and living plants and the fresh fruits and fresh vegetables in Class 31 covered by the earlier mark. As for the services of transportation and storage and of packaging of goods in Class 39 covered by the mark applied for, the applicant submits that those services are different from the services of export of fresh fruits in Class 35 covered by the earlier mark.

33 First, as regards the goods in Class 29 covered by the mark applied for, it must, to begin with, be stated that the applicant’s argument that fruits and vegetables are ‘fundamentally different’ is vague. In any event, as has been pointed out by EUIPO, fruits and vegetables are goods which are similar in their nature, purpose, methods of use, sales outlets and interchangeability and that is a well-known fact, namely a fact which arises from generally acquired practical experience and is likely to be known by anyone, including the relevant public (see, to that effect, judgment of 30 April 2013, ABC-One v OHIM (SLIM BELLY), T‑61/12, not published, EU:T:2013:226, paragraph 28 and the case-law cited). In particular, the preserved fruit and desiccated fruits covered by the mark applied for are identical to the dried fruits in Class 29 covered by the earlier mark, since they are, in principle, fruits which lack moisture. Furthermore, since the methods applied in order to dry fruits are also used for preserving vegetables, the Board of Appeal was right in finding that dried fruits are similar to preserved vegetables and dried vegetables. As regards the frozen vegetables, jams and vegetable jams covered by the mark applied for, it must be stated that, since the freezing of vegetables and the manufacture of jams are methods of preserving vegetables and fruit, there is a relationship of interchangeability with the dried fruits covered by the earlier mark. As the Board of Appeal correctly acknowledged, there is some similarity between those goods, since an undertaking supplying dried fruits could also supply frozen vegetables, jams and vegetable jams to the same consumers in the same shops.

34 Secondly, as regards the goods in Class 31 covered by the mark applied for, the fresh fruits and fresh vegetables covered by the earlier mark include the fresh vegetables, fresh fruit, in particular fresh pomes, in particular fresh apples and fresh pears, fresh herbs and fresh nuts covered by the mark applied for. In accordance with the case-law cited in paragraph 31 above, they may therefore be considered to be identical. Furthermore, the applicant’s argument that foodstuffs for animals, seeds and living plants are different from the fresh fruits and fresh vegetables covered by the earlier mark must be rejected. Foodstuffs for animals include fruit and vegetables which can be used to feed pets. As for seeds and living plants, they may include goods such as soya beans or bamboo shoots for use in the preparation of salads or ready-made meals, with the result that they are, at the very least, similar to the fresh fruits and fresh vegetables covered by the earlier mark. Generally speaking, since the goods in Class 31 covered by the marks at issue have the same nature and intended purpose, share the same distribution channels and are aimed at the same public, the Board of Appeal was fully entitled to find that they were identical.

35 Thirdly, as regards the services in Class 35 covered by the mark applied for, the applicant merely claims that the explanations which the Board of Appeal provided in paragraphs 49 and 50 of the contested decision, relating to the low degree of similarity between those services and the goods in Class 31 covered by the earlier mark, ‘are also incorrect’. Moreover, it must be borne in mind that, according to the case-law, there is a similarity between goods and retail services which relate to those goods (judgment of 20 January 2021, Apologistics v EUIPO – Peikert (discount-apotheke.de), T‑844/19, not published, EU:T:2021:25, paragraph 39). In the present case, as has already been pointed out in paragraph 34 above, the Board of Appeal was fully entitled to find that the goods in Class 31 covered by the mark applied for were identical to the goods in that class covered by the earlier mark. Consequently, it must be held that there is, at the very least, a low degree of similarity between the retail and wholesale services in Class 35 covered by the mark applied for and the goods in Class 31 covered by the earlier mark.

36 Fourthly, as regards the services in Class 39 covered by the mark applied for, the Board of Appeal was fully entitled to find that those services were similar to the services of export of fresh fruits in Class 35 covered by the earlier mark. The arranging of the cross-border transportation, packaging and storage of goods, in particular in containers for transport by land, air or sea, is an integral part of the export of goods, with the result that an undertaking organising the transport of the goods concerned to the country of destination assumes responsibility for the whole of the export process and all the export formalities.

37 Lastly, it is necessary to reject the applicant’s argument alleging that the services of export of fresh fruits covered by the earlier mark were registered in Class 35 and not in Class 39, in which the services covered by the mark applied for were registered. The classification of goods and services under the Nice Agreement is to serve exclusively administrative purposes. Consequently, goods and services may not be regarded as being dissimilar on the ground that they appear in different classes (see, to that effect, judgment of 6 June 2018, Uponor Innovation v EUIPO – Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 26).

38 In the light of all of the foregoing, it must be held that the Board of Appeal’s comparison of the goods and services concerned by the marks at issue did not contain any error of assessment and that the Board of Appeal was fully entitled to find that the goods and services at issue were identical or similar or that they were similar to a low degree as regards the services in Class 35 covered by the mark applied for and the goods in Class 31 covered by the earlier mark.

39 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).

40 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. 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 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 (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43, and of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco), T‑498/18, EU:T:2019:763, paragraph 71).

41 The greater or lesser degree of distinctiveness of the elements that are common to a mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited). The descriptive, non-distinctive or weakly distinctive elements of a composite trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by that mark (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited).

42 In the present case, the Board of Appeal stated that it could not be assumed that consumers in the Slavic-speaking countries and in Hungary, Estonia and Finland had a sufficient knowledge of Spanish to understand that the term ‘frutaria’ was close to the term ‘frutería’, which designated a fruit shop. It then found that there was insufficient proof to establish that the public in the relevant territories understood the term ‘frutaria’ in its descriptive sense. According to the Board of Appeal, the word element ‘frutaria’ in the earlier mark had more of an impact on consumers than the other elements of which it also consisted. Since that word element, which was, in the Board of Appeal’s view, the most striking and distinctive dominant element of the earlier mark, had no meaning for the relevant Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish public, the inherent distinctiveness of the earlier mark was found to be average. Lastly, as has already been stated in paragraph 12 above, the Board of Appeal found that the marks at issue were visually similar, highly similar phonetically and could not be found to be conceptually dissimilar.

43 The applicant criticises the Board of Appeal for finding that the signs at issue were similar. He disputes the Board of Appeal’s assessment as regards the distinctive and dominant elements in the earlier mark and, in particular, he submits that, in the light of the lack of distinctive character of the word element ‘frutaria’ in the earlier mark, the relevant public attaches greater importance to the graphic representation of that sign. In that regard, he submits that the font, the typography, all the graphic elements and the colours of the font differ from those of the sign applied for.

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

45 When assessing whether one or more given components of a composite trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).

46 Furthermore, for the purposes of assessing the distinctive character of a mark or of a constituent element of a mark, an assessment must be made of the greater or lesser capacity of that mark or 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 mark or 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 (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).

47 Lastly, it must be pointed out that, where a trade mark consists of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing the name of the mark than by describing the figurative element of that mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).

48 In the present case, contrary to what the applicant claims, the earlier mark cannot be confined to the figurative elements of that mark and furthermore the word element ‘frutaria’ has more of an impact on consumers than the other elements of which that mark consists. First, as was explained in detail by the Board of Appeal in paragraphs 63 to 70 of the contested decision, the Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish public does not understand the term ‘frutaria’ in its descriptive sense. In particular, even if, as the applicant claims, the Spanish- and Portuguese-speaking public were to deduce from the word ‘frutaria’ a reference to a grocer’s shop selling fruit, the Board of Appeal stated that a basic understanding of Spanish in the Slavic-speaking countries and in Hungary, Estonia and Finland was not a well-known fact, since it could not be assumed that consumers in those territories could have a sufficient knowledge of Spanish to understand that the word ‘frutaria’ was close to the correct term ‘frutería’, which designated a fruit shop.

49 It must be pointed out that, in response to a question put to him by the Court at the hearing, the applicant stated that the inhabitants of the Slavic-speaking countries, Hungary, Estonia and Finland had a basic understanding of Spanish and that therefore the relevant public was in a position to attribute a meaning to the term ‘fruta’. However, according to the case-law, an understanding of a foreign language may not, in general, be presumed (judgments of 24 May 2011, Space Beach Club v OHIM – Flores Gómez (SpS space of sound), T‑144/10, not published, EU:T:2011:243, paragraph 63, 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). In the present case, the applicant has not adduced any evidence which makes it possible to presume that the average consumer in the Slavic-speaking countries and in Hungary, Estonia and Finland understands the Spanish term ‘fruta’. Furthermore, the Board of Appeal has established sufficiently that the words which are, in the Slavic languages and in Hungarian, Estonian and Finnish, equivalent to the word ‘fruit’ and to the word ‘frutería’, which means a grocer’s shop selling fruit in Spanish, are very different.

50 Lastly, the applicant’s references to websites and to addresses of restaurants and cafeterias using words such as ‘pizzeria’, ‘spagheteria’ and ‘gelateria’ in Finland, Bulgaria and Croatia are neither relevant nor sufficient to prove that, in the relevant territories, the suffix ‘ria’ is indeed understood as referring to a place in which the goods and services in question are purchased or consumed. Besides the fact that the applicant has submitted only examples concerning Finland, Bulgaria and Croatia, there is nothing which permits the inference that, on the basis of those examples, which come from Italian and designate establishments serving food, the public from the relevant territories is capable of concluding that the suffix ‘ria’ is associated with shops in which the goods or services in question are offered.

51 Secondly, it is necessary to uphold the Board of Appeal’s finding that, on account of its length and position, the word element ‘frutaria’ stands out from the figurative elements and colours of the earlier mark, which are secondary, and thus constitutes the dominant element in the overall impression created by that mark. In particular, the basic geometric shape, namely a small square, the semi-circular line and the curved lines in the earlier mark are characterised by their simple, ordinary and not very stylised representation, with the result that they cannot convey any message that is capable of being remembered by the relevant public.

52 Thirdly, in so far as the applicant relies on the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009 and, in essence, on the lack of any inherent distinctive character of the earlier mark under Article 7(1)(b) of that regulation, it must be pointed out that the fact that a mark has been registered means that that mark has a minimum degree of inherent distinctiveness, because Article 7(1)(b) of Regulation No 207/2009 precludes the registration of a mark which is devoid of any distinctive character. Consequently, the registration of the earlier mark means that that mark has a minimum degree of distinctive character. A dispute as to the earlier mark’s minimum degree of distinctive character cannot, however, come within the subject matter of the present case, which only concerns an opposition to the registration of an EU trade mark (see, to that effect, judgment of 9 September 2020, Gothe and Kunz v EUIPO – Aldi Einkauf (FAIR ZONE), T‑589/19, not published, EU:T:2020:397, paragraph 72). As is apparent from Articles 41 and 42 of Regulation No 207/2009, there is no need to examine the absolute grounds for refusal set out in Article 7 of that regulation in the context of opposition proceedings. The grounds on which an opposition may be based, as set out in Article 41(1) of Regulation No 207/2009, are solely the relative grounds for refusal, which are set out in Article 8 of that regulation.

53 In conclusion, the Board of Appeal was right in finding that the word element ‘frutaria’ was the dominant element in the earlier mark.

54 From a visual standpoint, it must be stated that the mark applied for is a figurative mark consisting of the word ‘frutania’, which is represented in blue letters in a bold handwritten style of font, whereas the earlier mark consists of the word ‘frutaria’, which is represented in a bold green font. The graphic differences between the signs at issue, their colours and the difference in the sixth letter, namely the letters ‘r’ and ‘n’, cannot offset the overall similarity based on the fact that seven out of the eight letters comprising the two signs coincide, and that is so in spite of the difference between the colours used.

55 Consequently, since the signs at issue are visually similar, the conclusion which the Board of Appeal reached in paragraph 77 of the contested decision is not vitiated by any error of assessment.

56 From a phonetic standpoint, it must be observed that the signs at issue each consist of eight letters, seven of which are identical and are placed in the same position, which suggests that they are pronounced in the same way, without any marked difference in stress or intonation. It must be pointed out that those signs coincide, except for the fact that the mark applied for consists, inter alia, of the syllables ‘nia’, whereas the earlier mark ends in the syllables ‘ria’.

57 The Board of Appeal was therefore right in finding, in paragraph 78 of the contested decision, that the marks at issue are highly similar phonetically.

58 Furthermore, from a conceptual standpoint, the Board of Appeal’s finding that neither of the marks at issue has any meaning for the Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish part of the relevant public must be upheld. Consequently, it must be held that, as regards that part of the relevant public, a conceptual comparison is not possible (judgment of 21 December 2021, Bustos v EUIPO – Bicicletas Monty (motwi), T‑159/21, not published, EU:T:2021:924, paragraph 83).

59 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).

62 In the present case, in the light of all of the foregoing assessments, the goods and services at issue are either identical or similar and the marks at issue are visually similar and highly similar phonetically. Furthermore, given that, from a conceptual standpoint, the dominant element ‘frutaria’ has no meaning for the relevant Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish public, the Board of Appeal was right in finding, in paragraph 76 of the contested decision, that the inherent distinctiveness of the earlier mark was average.

63 Consequently, the Board of Appeal did not make any error of assessment in finding that there was a likelihood of confusion between the marks at issue on the part of some of the consumers in the territory of the European Union, namely the Bulgarian, Croatian, Slovak, Czech, Polish, Slovenian, Hungarian, Estonian and Finnish public, in spite of the high level of attention which that public could display with regard to some of the services at issue.

64 It follows from all of the foregoing that the single plea in law put forward by the applicant must be rejected and that the action must therefore be dismissed in its entirety.

65 Under Article 134(1) of the Rules of Procedure, 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, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Schneider v EUIPO - Frutaria Innovation (frutania) (EU trade mark - Judgment) [2023] EUECJ T-109/22 (26 July 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T10922.html Cite as: [2023] EUECJ T-109/22, ECLI:EU:T:2023:423, EU:T:2023:423

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