The EU General Court has annulled an earlier decision of the Board of Appeal and declared invalid the figurative EUTM for “Tropical” (above left) based on an earlier Portuguese national mark for the word TROPICAL.

The contested mark was registered on 7 September 2007 for the goods shown above. However, on 21 November 2011, Aviario Tropical, SA filed an invalidity application with EUIPO asking that the contested mark be declared invalid in respect of all the goods for which it had been registered. The application was based on Aviaro’s earlier Portuguese national mark for the word mark TROPICAL, registered for “Food for fish, live fish and live plants” in Class 31.

The trade mark owner requested Aviaro file proof of use of its mark given it had been registered for over 5 years. The Cancellation Division rejected the application for a declaration of invalidity, finding that Aviario had not proved genuine use. This decision was overturned by the Fourth Board of Appeal, who found that Aviario had in fact proved genuine use, at least in relation to food for fish in Class 31. It held that the respective goods in Class 31 were identical, and the goods in Class 5 covered by the contested mark and those in Class 31 covered by the earlier mark were similar to an average degree. It also decided that the marks were similar and that there was a likelihood of confusion.

General Court’s decision

Class 31 goods

The proprietor of the contested mark, Mr Andrzej Ogrodnik, acknowledged that “food for fish” covered by the earlier mark was included in the “Food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals” and in the “food for fauna containing nutritives” covered by the contested mark.

One question which the General Court had to address was what the term “especially” in the specification of the contested mark related to (i.e. whether it concerned all the goods mentioned thereafter, as EUIPO argued, or only the first of them, as Mr Ogrodnik claimed, namely “fish, ornamental fish, birds, reptiles, amphibians and breeded small animals”).

The General Court sided with Mr Ogrodnik and found that the term “especially” in no way related to “products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals”. Therefore, “products and preparations for the cultivation of plants and aquarium plants” covered by the contested mark could not be regarded as examples of the food for fauna mentioned before the term “especially”. This meant that they did not fall within “food for fish” covered by the earlier mark, and the goods were therefore not identical.

Also, “products and preparations for the breeding of birds, reptiles and amphibians” did not constitute examples of food for fauna mentioned before the term “especially”, so did not fall within “food for fish” and were not, therefore, identical.

Class 5 / Class 31 goods

In respect of the Class 5 goods of the contested mark, the General Court also said that the Board of Appeal could not have concluded that the goods were of average similarity by comparing them only on the basis of three factors: distribution channels, points of sale and target end-consumers. The contested decision was thus annulled in this regard.

Failure to state reasons

Mr Ogrodnik also argued that the coexistence of the marks should have been taken into consideration by the Board of Appeal in its assessment of the likelihood of confusion. The General Court agreed, and said that the Board of Appeal did not examine that question of the coexistence of the marks at issue or respond to Mr Ogrodnik’s arguments. As such, the Board of Appeal’s decision had to be vitiated by a failure to state reasons and thus had to be annulled in this respect.

Conclusion

Therefore, it was irrelevant that the marks were deemed to be similar; the contested decision had to be annulled on the grounds that:

i) the Board of Appeal wrongly concluded that certain goods in Class 31 covered by the marks at issue were identical and that the goods in Class 5 covered by the contested mark and those in Class 31 in the earlier mark were similar to an average degree, and

ii) with regard to the goods in Class 31 covered by the marks at issue, the contested decision was vitiated as the Board of Appeal failed to rule on the applicant’s argument relating to the coexistence of the marks at issue.

Case T – 804/14