J & F Participacoes v OHMI - Plusfood Wrexham (Friboi) (Intellectual property) [2011] EUECJ T-324/09 (17 February 2011)

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(Community trade mark – Opposition proceedings – Application for the Community figurative mark Friboi – Earlier national word mark FRIBO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Genuine use of the earlier mark – Article 42(2) and (3) of Regulation No 207/2009)

J & F Participações SA, established in Sorocaba (Brazil), represented by A. Fernández Fernández-Pacheco, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J.F. Crespo Carrillo, acting as Agent,

Plusfood Wrexham Ltd, established in Llay, Wrexham (United Kingdom), represented by G. van Roeyen, lawyer,

1 On 19 November 2004, the applicant, Agropecuaria Friboi, Ltda, now J & F Participações SA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p.1)).

3 The goods in respect of which registration was sought are in Class 29 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 26/2005 of 27 June 2005.

5 On 27 September 2005, Fribo Foods Ltd, now Plusfood Wrexham Ltd, the intervener, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

7 The ground relied on in support of the opposition was the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8 In the course of the proceedings, the applicant disputed that there was a likelihood of confusion and requested that the intervener furnish proof of genuine use of its earlier marks, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009). OHIM conveyed that request to the intervener, which provided the documentation to furnish that proof within the time-limit.

9 By decision of 28 March 2008, the Opposition Division upheld the opposition, in respect of all the goods concerned, on the basis of the earlier United Kingdom word mark FRIBO alone (‘the earlier mark’).

10 On 27 May 2008, the applicant filed an appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division. It submitted, first, that proof of genuine use of the earlier mark had not been furnished and, secondly, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on account of the differences between the signs at issue as well as between the goods concerned.

11 By decision of 22 April 2009 (‘the contested decision’), the First Board of Appeal of OHIM allowed the appeal in part, rejected the Community trade mark application in respect of the goods ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces’ and allowed the application in respect of ‘eggs, milk and milk products; edible oils and fats’.

12 In essence, the Board of Appeal found, first, that the documentation provided by the intervener, considered as a whole, constituted proof of genuine use of the earlier mark in the United Kingdom in respect only of ‘meat, poultry (except game), none being live; preserved and cooked vegetables’, with the result that that mark was deemed to be registered, for the purposes of examining the opposition, only in respect of those goods.

13 Secondly, the Board of Appeal found that, on account of the high degree of visual and phonetic similarity between the signs at issue, the fact that they have no meaning in English conceptually, and the partial identity or similarity of the goods at issue, there was a likelihood of confusion as regards ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces’. By contrast, as regards ‘eggs, milk and milk products; edible oils and fats’, the Board of Appeal found that there was no likelihood of confusion on account of their differences in relation to the goods in respect of which the earlier mark was deemed to be registered, as defined in paragraph 12 above.

16 In support of its action, the applicant relies on two pleas in law, alleging, respectively, infringement of Article 42(2) and (3) of Regulation No 207/2009 and infringement of Article 8(1)(b) thereof.

The first plea: infringement of Article 42(2) and (3) of Regulation No 207/2009

17 The applicant disputes the proof of genuine use of the earlier mark. It maintains that the only relevant proof of that use provided by the intervener is invoices issued by the intervener to Plusfood UK Ltd, stating that the intervener is a company which is part of the group Plusfood Nederland.

18 As the intervener and Plusfood UK are related companies, invoices issued by one to the other cannot, according to the applicant, constitute proof that the goods have been placed on the market or indicate public use. The invoices submitted all refer to internal operations between companies belonging to the same group and are not therefore relevant in respect of furnishing proof of genuine use.

19 As to the remainder, the documents submitted by the intervener, which are often undated, do not show genuine use of the earlier mark. As regards more specifically Plusfood UK’s brochures, the applicant submits that they cannot be regarded as proof of use of the earlier mark since that mark is registered in the name of the intervener. Furthermore, there is no date on those brochures and some of them do not show that the earlier mark is linked to a product.

20 Furthermore, the applicant complains that the Board of Appeal, in paragraph 30 of the contested decision, based its assessment of the similarity of the signs at issue on the earlier German and French figurative marks. It submits that, when assessing the similarity of the signs at issue, they have to be compared in the form in which they were registered. The signs at issue in the present case are the earlier mark and the mark applied for.

21 The applicant also sets out a line of argument seeking to show that, in terms of an overall assessment, taking into account the distinctive and dominant elements of the signs at issue, those earlier German and French figurative marks are in no way similar to the mark applied for.

23 It does not appear to be necessary to establish whether the provisions applicable in the present case, ratione temporis, are those of Article 42(2) and (3) of Regulation No 207/2009, infringement of which is formally alleged, or those of Article 43(2) and (3) of Regulation No 40/94, since their content is identical. In the present judgment reference will subsequently be made without distinction to both of those articles.

25 Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides:

26 According to settled case-law, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C-40/01 Ansul [2003] ECR I-2439, paragraph 43). Furthermore, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (Case T-203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II-2811, paragraph 39; see also, to that effect and by analogy, Ansul, paragraph 37).

27 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 40; see also, by analogy, Ansul, paragraph 43). To examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case (VITAFRUIT, paragraph 42).

28 In the present case, it must first of all be stated that the Board of Appeal’s finding, in paragraph 33 of the contested decision, that no genuine use of the earlier mark has been proved in relation to ‘fish, game, none being live; meat extracts; preserved, dried or cooked fruits; dried vegetables; milk and dairy products for food; edible oils and edible fats’ is not called into question by any of the parties.

29 It therefore remains to be determined whether the Board of Appeal was right in finding that proof of genuine use had been furnished in respect of ‘meat, poultry (except game), none being live; preserved and cooked vegetables’.

30 In that regard, the Board of Appeal more specifically stated the following in paragraph 31 of the contested decision:

31 The arguments submitted by the applicant for the purpose of disputing that assessment are the result of a separate assessment of the various relevant factors, each considered in isolation, contrary to the case-law cited in paragraph 27 above. They must therefore be rejected.

32 First, the invoices submitted by the intervener, which were addressed by it to Plusfood UK, appear to be authentic and honest. Secondly, the brochures show that the goods at issue, which are produced by the intervener and invoiced by it to the distribution company which is part of the same group, are sold by that company on the market. That is a method of business organisation which is common in the course of trade, implying use of the mark which cannot be regarded as purely internal use by a group of companies, since the mark is also used outwardly and publicly. It must be added that the use of the mark of a production company by a distribution company which is economically linked to it is presumed to be use of that mark with the consent of the proprietor and is therefore to be deemed to constitute use by the proprietor, in accordance with Article 15(2) of Regulation No 207/2009 (see, to that effect, VITAFRUIT, paragraphs 24 to 26).

33 It is true that the brochures in question are not dated, unlike the invoices, but, in the context of a global assessment, they may still be taken into consideration in conjunction with other pieces of evidence which are dated, such as invoices and price lists of wholesalers, in order to prove that the goods are indeed produced by the intervener and then distributed by Plusfood UK.

34 Furthermore, the applicant does not call into question the Board of Appeal’s finding, in paragraph 32 of the contested decision, that, in view of the large quantities of FRIBO products mentioned on those invoices (between 500 and 19 000 kg per invoice), there is no question of token use in the present case.

35 As regards the applicant’s line of argument summarised in paragraph 20 above, it must be noted that, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 in conjunction with Article 42(2) and (3) of Regulation No 207/2009, proof of genuine use of an earlier national or Community trade mark which forms the basis of an opposition against a Community trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (see Case T-29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II-�5309, paragraph 30 and the case-law cited).

36 The Board of Appeal was therefore properly entitled to take into account, in paragraph 30 of the contested decision, the use of the earlier mark in a figurative form which is identical to the figurative trade marks No 39 719 930 registered in Germany and No 97 676 401 registered in France, since it took the view that the word element ‘fribo’ remained the dominant and distinctive element of the sign used and that the other elements would not be regarded by consumers as fulfilling the function of distinguishing the goods concerned from those of other undertakings, but as a mere ribbon or tag.

37 As to the remainder, the applicant’s line of argument summarised in paragraph 21 above is irrelevant since paragraph 30 of the contested decision does not concern the issue of likelihood of confusion, but that of proof of use.

38 It follows from all of the foregoing that the Board of Appeal did not err in finding, in its global assessment of the documentation provided by the intervener, that proof of genuine use of the earlier mark had been furnished in respect of the goods at issue, as specified in paragraph 33 of the contested decision (see paragraph 29 above).

40 The applicant contends, in essence, that the Board of Appeal was wrong in concluding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

41 In that regard, it does not appear to be necessary to establish whether the provisions applicable in the present case, ratione temporis, are those of Article 8(1)(b) of Regulation No 207/2009, infringement of which is formally alleged, or those of Article 8(1)(b) of Regulation No 40/94, since their content is identical. In the present judgment reference will subsequently be made without distinction to both of those articles.

42 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

43 According to established case-law, the risk that the public might 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 line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, 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 designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

44 Furthermore, 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 Case T-�256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-�449, paragraph 42 and the case-law cited).

45 The Board of Appeal found, in paragraph 39 of the contested decision, that the goods covered by the signs at issue encompassed foodstuffs intended for the general public. It added that the United Kingdom constituted the relevant territory for the purposes of applying Article 8(1)(b) of Regulation No 207/2009. That finding is not called into question by any of the parties.

46 The Board of Appeal found, in paragraphs 45 and 46 of the contested decision, that ‘eggs, milk and milk products’ and ‘edible oils and fats’ were different from the goods covered by the earlier mark, as specified in paragraph 12 above, with the result that there is no likelihood of confusion as regards them. That finding is not called into question by any of the parties.

47 As regards the other goods covered by the trade mark application, the Board of Appeal was fully entitled to find, in paragraphs 40 to 44 of the contested decision, that they were either identical or similar to the goods covered by the earlier mark, as specified in paragraph 12 above.

48 While acknowledging that those goods are at the very least similar, the applicant maintains that their nature is an essential element which must be taken into account when analysing the likelihood of confusion. The applicant submits that, according to the documents provided as proof of genuine use, the goods designated by the earlier mark are precooked or manufactured goods, whereas the goods designated by the mark applied for constitute a special line of fresh beef.

49 However, that argument is irrelevant, as OHIM observes, since ‘meat, poultry (except game)’ are covered both by the earlier mark and by the mark applied for. Furthermore, even if use of the earlier mark had been proved only in respect of ‘precooked or manufactured [meat] goods’, quod non, such goods would still be highly similar to fresh meat. In any event, OHIM is right to point out that the invoices submitted by the intervener mention pieces of fresh meat such as ‘range ribs bbq’, ‘lamb cutlette’, ‘chopsteaks’ (beef hamburgers) and ‘chicken cutlettes’, identified with the earlier mark.

50 In the present case, the applicant concedes that the signs at issue are, on the one hand, the earlier word mark FRIBO and, on the other, the figurative mark applied for, composed of the word element ‘friboi’ and a figurative element made up of a black font against a white background.

51 According to settled case-law, the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components (Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35, and Case C-498/07 P Aceites del Sur-Coosur v Koipe and OHIM [2009] ECR I-7371, paragraph 60).

52 In visual terms, the Board of Appeal found, in paragraph 48 of the contested decision, that there was a strong similarity between the signs at issue. It stated that the mark applied for reproduces all the letters of the earlier mark, in identical order, but comprises an additional letter ‘i’ at the end and a figurative element made up of a very common black font against a white background. Five of the six letters are identical. The Board of Appeal found that the signs were therefore highly similar visually.

53 The applicant acknowledges that the overall visual impression produced by word or predominantly word signs depends to a great extent on the number of letters and the structure of the words. In the present case, it concedes that the signs at issue coincide as regards the letters ‘f’, ‘r’, ‘i’, ‘b’ and ‘o’, which are in the same order, and that five out of six letters are identical, the signs differing only in the additional letter ‘i’ of the mark applied for.

54 It adds, however, that the length of the signs may influence the effect of differences between the signs. The shorter a sign, the more easily the public is able to perceive all its individual elements. Thus, small differences between short words may frequently lead to a different overall impression. That is the case here.

55 Furthermore, in many markets, such as the relevant market in the present case, it is common to use a short trade mark name which may be an abbreviation of the name of a company or refer to the relevant goods. The public is aware of that practice and is used to distinguishing between many abbreviations without being easily confused.

56 That line of argument must be rejected, as suggested by OHIM and the intervener, since the word elements of the signs at issue, which have 5 and 6 letters respectively, are sufficiently long for the difference of a single letter at the end not to create a different overall impression, and that is so irrespective of the alleged exposure of the relevant public to the practice of short trade marks in the relevant market.

57 In aural terms, the Board of Appeal found, in paragraph 49 of the contested decision, that there was a strong similarity between the signs at issue. It pointed out, in particular, that they are both bi-syllabic, that they share the same first syllable ‘fri’ and that their second syllable ‘bo’ or ‘boi’ is similar.

58 The applicant submits that, although the signs at issue both have two syllables, the additional letter ‘i’ makes the pronunciation of them ‘completely different’.

59 That argument must be rejected as lacking any factual basis since the General Court finds, as OHIM and the intervener submit, that the pronunciation of the signs at issue creates a similar aural impression in English.

60 In conceptual terms, the Board of Appeal found, in paragraph 50 of the contested decision, that neither of the two signs at issue had any meaning in English, with the result that a conceptual comparison did not influence the assessment of the similarity of the signs.

61 The applicant states that, historically, the mark applied for is a contraction of the Portuguese words ‘frigorífico’, meaning industrial refrigerator, and ‘boi’, meaning ox. Such a sign, which means, in Portuguese, ‘frigoríficos de boi’ (ox refrigerators), has a very high degree of creativity and originality. There are therefore conceptual differences between the signs at issue as the earlier mark has no meaning.

62 That argument must be rejected as irrelevant, as suggested by OHIM and the intervener, since, even if the explanations put forward by the applicant prove to be correct, the relevant public is that of the United Kingdom and not that of Portugal. The general public in the United Kingdom will not be aware of the fact that ‘fri’ is an abbreviation of a Portuguese word or that ‘boi’ is the Portuguese word for ox. It is appropriate, on the contrary, to endorse the finding that the word ‘friboi’ has no clear and given meaning in English, whether as a whole or when broken down into its two elements ‘fri’ and ‘boi’.

63 It is apparent from the foregoing considerations that the signs at issue are highly similar.

64 It should be borne in mind that, according to settled case-law, the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular the recognition of the trade mark on the market, the association which the public may make between the two marks, and the degree of similarity between the signs at issue and between the goods or services identified (see, to that effect, OHIM v Shaker, paragraph 34, and Aceites del Sur-�Coosur v Koipe and OHIM, paragraph 59).

65 In the present case, taking into account, as has been stated above, the partial identity or the similarity of the goods concerned and the strong similarity between the signs, the Board of Appeal concluded that there is a likelihood of confusion on the part of the relevant public in respect of ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces’.

66 As the Board of Appeal suggested in paragraph 47 of the contested decision, that conclusion, which is based on a global assessment taking into account all the relevant factors identified by the case-law, cannot be called into question by the applicant's purely subjective and not otherwise substantiated assessment that the two marks at issue can be easily distinguished and coexist peacefully in the market in respect of all the goods they designate.

67 As regards the applicant’s argument that a comparison between signs cannot be confined to analysing the only element they have in common, it is sufficient to point out that, in the present case, the Board of Appeal did carry out an overall assessment as is apparent, inter alia, from paragraphs 37, 38 and 52 of the contested decision.

68 The applicant also submits that, in terms of the overall impression, the mark applied for, which enjoys high credibility and is easy to recall, has a very distinctive character. By contrast, the earlier mark does not have a highly distinctive character. As OHIM points out, however, the very distinctive character of the mark applied for, if proved, does not explain in what way that factor would influence the average United Kingdom consumer’s perception of the signs.

69 In view of the above, taking into account the overall impression, the principle of interdependence, the partial identity and the similarity of the goods concerned as well as the strong similarity of the signs, the Board of Appeal did not err in finding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in respect of the goods referred to in paragraph 13 above.

70 Therefore, the second plea must be rejected and the action in its entirety dismissed.

71 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> J & F Participacoes v OHMI - Plusfood Wrexham (Friboi) (Intellectual property) [2011] EUECJ T-324/09 (17 February 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T32409.html Cite as: [2011] EUECJ T-324/9, [2011] EUECJ T-324/09

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