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URL: http://www.bailii.org/eu/cases/EUECJ/2010/T36607.html
Cite as: [2010] EUECJ T-366/07, [2010] EUECJ T-366/7
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JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
13 September 2010 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark P&G PRESTIGE BEAUTE – Earlier national figurative marks Prestige – Partial refusal to register – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T-‘366/07,
The Procter & Gamble Company, established in Cincinnati, Ohio (United States), represented by K. Sandberg and B. Klingberg, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Laporta Insa, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being
Prestige Cosmetics SpA, established in Anzola Emilia (Italy), represented by A. Mugnoz, M. Andreolini and A. Parini, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 July 2007 (Case R 681/2006-2) relating to opposition proceedings between Prestige Cosmetics Srl and The Procter & Gamble Company,
THE GENERAL COURT (Sixth Chamber),
composed of A.W.H. Meij, President, V. Vadapalas (Rapporteur) and L. Truchot, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court on 24 September 2007,
having regard to the response of OHIM lodged at the Registry of the Court on 4 February 2008,
having regard to the response of the intervener lodged at the Registry of the Court on 21 January 2008,
having regard to the responses of the parties to the Court’s written question of 19 March 2009,
further to the hearing on 29 April 2009,
gives the following
Judgment
Background to the dispute
1 On 6 September 1999, the applicant, The Procter & Gamble Company, filed a Community trade mark application with 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).
2 The mark in respect of which registration was sought is the word sign P&G PRESTIGE BEAUTE.
3 The goods in respect of which registration was sought are inter alia in Class 3 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘washing and bleaching preparations, cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, preparations for body and beauty care, hair lotions; dentifrices’.
4 The application for registration was published in Community Trade Marks Bulletin No 52/2000 of 3 July 2000.
5 On 2 October 2000, the intervener, Prestige Cosmetics SpA, formerly Prestige Cosmetics Srl, 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 trade mark applied for. The grounds put forward in support of the opposition were inter alia those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
6 The opposition was based on the following earlier marks:
– the Italian registration No 792 090 of the figurative mark shown below, designating goods in Class 3 and corresponding to the following description: ‘soaps, perfumes, cosmetic creams, lotions, bath foam, eyes and lips coloured pencils, lipsticks and rouges, face powder, cosmetic face colours, mascara, nail varnishes; false nails, eyeshadows’:
– 
– the Italian registration No 651 896 of the figurative mark shown below, designating goods in Class 3 and corresponding to the following description: ‘eye and lip colour pencils, lipsticks and rouges, face powders, foundation creams, eyeshadows, mascaras, nail varnishes’:
– 
7 The intervener based its opposition on all the goods covered by those earlier marks and directed the opposition solely against the goods mentioned in paragraph 3 above.
8 On 21 March 2006, the Opposition Division partially upheld the opposition in so far as it was directed against ‘washing preparations, cleaning preparations; soaps; perfumery, essential oils, preparations for body and beauty care, hair lotions; dentifrices’ in Class 3, and refused registration of the mark applied for with respect to those goods. According to the Opposition Division, there is, on the part of the Italian public, a likelihood of confusion between the earlier marks and the mark applied for. The application for registration was granted with respect to the other goods referred to, namely, ‘bleaching preparations’ and ‘polishing, scouring and abrasive preparations’.
9 On 19 May 2006, the applicant filed a notice of appeal with 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.
10 By decision of 19 July 2007 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In particular, it upheld the findings of the Opposition Division, holding, in essence, that in so far as the signs at issue have in common the word ‘prestige’, which constitutes the only relevant element of the earlier marks, they have a certain visual, phonetic and conceptual similarity. The relevant public could think that the identical or similar goods at issue come from the same undertaking or, as the case may be, from economically-linked undertakings. There is, accordingly, a likelihood of confusion between the trade marks at issue.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition;
– order OHIM to pay the costs;
– order the intervener to pay the costs incurred in the proceedings before OHIM.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– uphold the contested decision and dismiss the action;
– confirm the Opposition Division’s decision of 21 March 2006;
– order the applicant to pay the costs of the present proceedings and the proceedings before OHIM.
Law
Arguments of the parties
14 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94.
15 The applicant claims that there is no likelihood of confusion between the mark applied for and the earlier marks, since there is no ‘relevant similarity’ either between the designated goods or between the signs at issue.
16 First, concerning the similarity between the designated goods, the applicant claims that the Board of Appeal did not take account of the fact that the goods concerned, namely ‘washing preparations’, ‘cleaning preparations’ and ‘soaps’, referred to in the trade mark application, include laundry detergents, household cleaners and other ‘washing preparations’ and ‘cleaning preparations’ not for personal use. Those goods are not similar and differ in their nature, their intended purpose and their method of use from the ‘make-up products’ covered by the earlier marks.
17 The same reasoning applies to ‘perfumery, essential oils, preparations for body and beauty care, hair lotions; dentifrices’, which the Board of Appeal incorrectly held to be similar to ‘make-up products’, since all those goods belong to the broader category of ‘cosmetic products’.
18 In that regard, the applicant claims that the Board of Appeal tried to establish a similarity between, on the one hand, ‘perfumery, essential oils, preparations for body and beauty care, hair lotions; dentifrices’ and, on the other hand, ‘make-up products’, by subsuming them under the general term of ‘cosmetic products’ within the meaning of Council Directive 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products (OJ 1976 L 262, p. 169), as amended by Council Directive 93/35/EEC of 14 June 1993 (OJ 1993 L 151, p. 32), a directive which is by no means concerned with the question of similarity of goods for the purposes of Regulation No 40/94.
19 According to the applicant, in contrast to the view taken by the Board of Appeal, the fact that a long list of goods which are actually completely different in their nature, their intended purpose and their method of use and which are neither complementary nor in competition with one another can theoretically be subsumed under a generic term like ‘cosmetic products’ cannot create a similarity between them for the purposes of Article 8(1)(b) of Regulation No 40/94.
20 The applicant observes that the goods at issue are not designed to alter a person’s appearance and cannot therefore be included in the category of ‘cosmetic products’. Essential oils are not used in make-up products because they could cause irritations. They are used in fragrance dispensers for purposes of aromatherapy and as air fresheners. Dentifrices are used for oral hygiene and the prevention of diseases of the mouth and dental problems. Hair lotions are used to treat the scalp.
21 The applicant claims that the contested decision is based on an incorrect assessment of the distinctive character of the earlier marks, because the word ‘prestige’, part of basic English vocabulary, which means respect and admiration and is understood by the relevant Italian public as a laudatory commercial message in view of the fact that it is almost identical to the Italian word ‘prestigio’, is completely devoid of any inherent distinctive character.
22 The applicant disputes the findings of the Board of Appeal relating to brand awareness acquired through the use, in Italy, of the earlier marks for make-up products. Those findings are based on an erroneous evaluation of the evidence provided by the intervener, namely, in particular, the television spots broadcast on Italian television channels.
23 The applicant claims that the intervener did not submit sufficient evidence for the assessment of enhanced distinctiveness acquired through use. The only evidence presented was dated after the filing of the trade mark application, on 6 September 1999, and cannot therefore be considered relevant.
24 The intervener did not submit any evidence as regards the market share held by its goods and the amount of investments made in promoting them, any market surveys, or any documents from independent sources concerning consumer awareness of its trade marks. The intervener also did not describe the goods sold in Italy under its trade marks or establish their diversity.
25 Furthermore, the applicant disputes the Board of Appeal’s statement in paragraph 37 of the contested decision, that the existence of a certain brand awareness of the earlier marks among Italian consumers could be based on the television spots broadcast on important Italian television channels. In actual fact, it remains unclear from the material submitted by the intervener what those spots were about, given that it failed to submit ‘relevant samples’ concerning those spots.
26 Thus, the word ‘prestige’ completely lacks inherent distinctiveness and the evidence submitted by the intervener cannot show that the earlier marks have acquired any or more than a negligible amount of distinctiveness through use.
27 Secondly, concerning the similarity between the signs at issue, the applicant claims that the Board of Appeal erred in law in finding that within the mark applied for the components ‘p&g’ and ‘beaute’ were insignificant and that the presence of the common word ‘prestige’ alone could establish a sufficient degree of similarity between the marks at issue to create a likelihood of confusion.
28 According to the applicant, the Board of Appeal incorrectly assessed the importance of the different elements which compose the mark applied for, since the element ‘prestige’ cannot be considered its dominant element.
29 As regards the first component of the mark applied for, namely the element ‘p&g’, even though the relevant public could understand it as an abbreviation, it would not associate it with the company name Procter & Gamble. The term ‘p&g’ will rather be perceived as a fanciful and arbitrary designation, with normal average distinctiveness.
30 The distinctive character of the mark applied for lies in the combination of all of its components in their entirety, and none of those components can be considered dominant. In contrast to the Board of Appeal’s findings, none of the components of the mark applied for will be overlooked or ignored, but rather will be ‘perceived as a whole’. Consequently, the applicant claims that no component of the mark applied for can be considered its dominant element.
31 OHIM considers that there is a likelihood of confusion in Italy between the mark applied for and the two earlier marks.
32 OHIM disputes the applicant’s arguments concerning the similarity of the goods and considers that the Board of Appeal was correct to hold that the goods at issue are similar. OHIM contends that the fact that the very broad categories such as ‘preparations for body and beauty care’, as defined by the applicant, may include goods which are different does not mean that they cannot also include similar goods. As it has not defined more specifically its list of goods, the applicant must accept all the goods that may be covered by those broad definitions. OHIM cannot, ex officio, limit or modify the list of goods filed by the applicant.
33 With regard to the similarity of the signs, OHIM notes that, visually and phonetically, the signs at issue ‘share’ the word ‘prestige’, since the earlier sign is ‘entirely included in’ the trade mark applied for.
34 OHIM contends that, conceptually, the element ‘p&g’ has no meaning. The word ‘prestige’ will be perceived by the Italian consumer, either directly or by association with the equivalent Italian word ‘prestigio’, as meaning the ‘widespread respect and admiration felt for someone or something on the basis of a perception of their achievements or quality’. The word ‘beaute’, although not similar to the equivalent Italian word ‘belleza’, will be associated with the French word ‘beauté’ or the word ‘beauty’, which is a basic English word, especially in the field of cosmetics.
35 Consequently, the Board of Appeal was correct to conclude that the signs at issue are similar since they share the word ‘prestige’, which is phonetically, visually and conceptually identical from the point of view of the relevant public.
36 As regards the inherent distinctiveness of the word ‘prestige’, OHIM disputes the applicant’s argument that the Italian public immediately understands the meaning of that word. OHIM contends that the relevant public is the average Italian consumer of cosmetics, consisting of a very wide group of consumers of a very wide age range, regardless of gender.
37 According to OHIM, it is unlikely that such a wide group has a sufficient knowledge of English to grasp immediately the meaning of the word ‘prestige’. Even accepting that some Italian consumers understand that word, it is equally likely that a significant part of that public would not be able to understand it. The Board of Appeal was therefore correct to hold that the inherent distinctive character of the word ‘prestige’ is not very high.
38 OHIM states that the evidence submitted proves that there is a certain brand awareness of the earlier marks, even if it does not suffice to prove their reputation.
39 OHIM contends that the signs are similar, since they include the word ‘prestige’, which is identical from a phonetic, visual and conceptual point of view. Its distinctive character is neither low nor high with regard to the relevant public, the average Italian consumer. Some of the goods are identical and some are similar. OHIM concludes that it is more than likely that the relevant public will believe that the goods at issue come from the same undertaking or, as the case may be, from undertakings that are economically linked. Consequently, there is a likelihood of confusion between the marks at issue on the part of the public concerned in Italy.
40 The intervener also disputes the applicant’s arguments relating to the similarity of the goods, by contending that the very wide definition of ‘washing preparations’, ‘cleaning preparations’ and ‘soaps’ does not rule out the possibility that those goods are for personal use, but does not contain any indication which would lead to the presumption that they are intended for house cleaning, given that the terms used can refer to soaps and products for washing and cleaning the face, body, hands and hair.
41 As regards the similarity of the signs, the intervener contends that the Board of Appeal was entitled to find that the marks at issue share the word ‘prestige’, which is the only constituent element of the earlier marks.
42 The intervener contends that the word ‘prestige’ in the earlier marks is a noun and not an adjective. The components ‘prestige’ and ‘beaute’ of the mark applied for do not form any structural connection such as to nullify or influence the distinctive character of the name ‘prestige’.
43 Furthermore, according to the intervener, the differences created by the presence of the elements ‘p&g’ and ‘beaute’ in the mark applied for are not such as to rule out the visual, phonetic and conceptual similarities of the marks at issue. Even if those elements were in fact perceived, they would be understood by the relevant public as referring to licensing agreements or links between the undertakings concerned, so that there is certainly a likelihood of confusion.
44 The intervener also points out that the applicant is wrong to claim that the Board of Appeal erred by holding that the word ‘prestige’ was neither generic nor descriptive for Italian consumers. According to the intervener, it is obvious that the word ‘prestige’ is not equivalent to the word ‘prestigio’. Similarly, the name ‘prestige’ has nothing to do with the generic name of the goods or with their composition or intended use, but is merely evocative of an ‘atmosphere’ which no other competitor, prior to the intervener, had used for the goods in question.
45 The intervener contends that the evidence submitted substantiates not only the Board of Appeal’s conclusion that the earlier marks had acquired a certain enhanced distinctiveness through use for make-up products, but also that they are marks with a reputation, in the light of the volume of turnover achieved by the company’s activity.
46 According to the intervener, the only distinguishing term is the word ‘prestige’, reproduced identically in the trade mark applied for, whereas the word ‘beaute’ is unquestionably generic and does not allow the marks at issue to be distinguished, the same considerations applying to the element ‘p&g’.
47 Finally, the intervener contends that the applicant’s arguments that the elements situated in the middle of the distinctive signs are of little importance, since the first part ‘p&g’ attracts the attention of the consumer, are not relevant. The consumer, faced with a string of words beginning with an unknown symbol and ending with a generic word, concentrates on the only distinctive and distinguishing word, rather than identifying the applicant’s goods by focusing on the elements ‘p&g’ or ‘beaute’ while ignoring precisely the element ‘prestige’ which, alone, possesses distinctive character. Descriptive and generic terms cannot be of any importance in the assessment of the likelihood of confusion, given that they are neutral names which, therefore, are not relevant to the assessment of the likelihood of confusion with regard to complex trade marks.
Findings of the Court
48 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 40/94 (now 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.
49 According to settled 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 case-law, the likelihood of confusion must be assessed globally, in accordance with the perception that the relevant public has of the signs and goods or services in question, and taking account of all the factors relevant to the case, in particular the interdependence of 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).
50 It is in the light of the foregoing considerations that the Board of Appeal’s assessment as to the likelihood of confusion between the signs at issue must be examined.
51 In the present case, the relevant public consists of average Italian consumers, since the earlier marks were registered in Italy. The definition of the relevant public adopted by the Board of Appeal in paragraph 24 of the contested decision, according to which that public consists of average Italian consumers who are reasonably well informed and reasonably observant and circumspect, is not disputed by the parties.
– The similarity of the goods
52 According to settled case-law, in order to assess the similarity between goods or services, all the relevant features of the relationship between them should be taken into account. Those features include, inter alia, 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 Case T-‘443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-‘2579, paragraph 37 and the case-law cited).
53 With regard to ‘preparations for body and beauty care’, the Board of Appeal held, in paragraph 40 of the contested decision, that the wording used to designate those goods was very broad and also included the make-up products covered by the earlier marks, so that those goods could be considered identical. The applicant does not put forward any argument which can undermine that finding. The fact that the Board of Appeal also referred to Directive 76/768 does not alter the validity of the finding.
54 It should also be noted that ‘soaps’ and ‘perfumery/perfumes’ are covered both by the mark applied for and by the earlier mark No 792 090. Likewise, whilst the mark applied for covers ‘hair lotions’, that earlier mark refers also more generally to ‘lotions’. It must therefore be held that the Board of Appeal was correct to conclude that those goods were identical.
55 The applicant disputes that the ‘washing preparations’ and cleaning preparations referred to in the trade mark application can be considered to be similar to the goods covered by the earlier marks. It should however be noted that, in so far as those preparations can be used for body care, the Board of Appeal was correct to hold that they were similar to soaps.
56 As regards the Board of Appeal’s finding in paragraphs 43 and 44 of the contested decision that all the goods covered by the marks at issue fall under the definition ‘cosmetic product’ in Article 1 of Directive 76/768, it should be noted that that fact could constitute a relevant factor for the purposes of assessing the similarity of those goods within the meaning of Article 8(1)(b) of Regulation No 40/94 in so far as falling under the same definition would tend to indicate, in particular, that those goods share similar natures, intended purposes or methods of use, or indeed that those goods are in competition with each other or are complementary.
57 In that regard, the Board of Appeal in particular held, in the present case, that all the goods at issue, including dentifrices, had a beautifying purpose (paragraph 44 of the contested decision) and were generally sold in the same sections of shops (paragraph 45 of that decision). Furthermore, it should be noted, in particular, that the dentifrices referred to in the trade mark application can be considered to be complementary to the soaps, bath foam and other lotions referred to in the earlier registration No 792 090, since all those goods are used for daily body care. Likewise, contrary to what is alleged by the applicant, essential oils can also be considered complementary to various other goods covered by the earlier registrations, of which they are sometimes even a component, namely soaps, perfumes, cosmetic creams, lotions and bath foam.
58 Although the applicant is justified in asserting that the fact that the same consumer can buy the goods at issue is of no relevance, it must be considered that the other grounds on which the contested decision is based allow the finding that the Board of Appeal was correct to conclude that the goods covered by the marks at issue are similar.
59 It follows from all of the foregoing that the Board of Appeal’s conclusion in paragraph 48 of the contested decision, that the contested goods covered by the marks at issue are similar within the meaning of Article 8(1)(b) of Regulation No 40/94, is not vitiated by error.
– The similarity of the signs
60 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-‘334/05 P OHIM v Shaker [2007] ECR I-‘4529, paragraph 35 and the case-law cited).
61 In the context of consideration of the likelihood of confusion, 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 OHIM v Shaker, 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 (OHIM v Shaker, paragraphs 41 and 42; and judgment of 20 September 2007 in Case C-‘193/06 P Nestlé v OHIM, not published in the ECR, paragraphs 42 and 43).
62 In the present case, the Board of Appeal, in essence, pointed out, in paragraph 60 of the contested decision, that it concurred with the assessment of the Opposition Division that the signs at issue have a certain visual, phonetic and conceptual similarity, in view of their shared element ‘prestige’.
63 Visually, it should be noted that the mark applied for is a word mark consisting of the expression ‘p&g prestige beaute’, which is longer than the earlier marks, made up of seven syllables, 16 letters and the ‘&’ sign, and represented in a standard font.
64 The word ‘prestige’ is placed at the centre of the mark applied for. It should be noted in that regard that the consumer normally attaches more importance to the beginning of a trade mark (see, to that effect, Joined Cases T-‘183/02 and T-‘184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-‘965, paragraph 81). Thus, it cannot be held that the relevant public would attach particular importance to the central component ‘prestige’ of the mark applied for, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details (see, to that effect, Case C-‘251/95 SABEL [1997] ECR I-‘6191, paragraph 23; and Case C-‘342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-‘3819, paragraph 25).
65 Given that the elements ‘prestige’ and ‘beaute’ of the mark applied for are laudatory in nature, they are to a certain extent descriptive of the claimed characteristics and intended use of the goods at issue. Those two elements have the same attractiveness for the public concerned and, since they together form the expression ‘prestige beaute’, will be perceived by the public as being of equal importance, but secondary to the element ‘p&g’.
66 The ‘p&g’ element is in a more important position in the mark applied for, because it is placed at the beginning of that mark and will be perceived as an arbitrary and fanciful word, with average distinctiveness.
67 The two earlier marks, on the other hand, are figurative marks composed solely of the word ‘prestige’, which is represented in a special font, without any other figurative element.
68 Although the visual comparison of the signs at issue reveals, indeed, that they share the element ‘prestige’, it must be held, in contrast to the Board of Appeal’s finding, that the signs at issue each produce a different visual impression. The visual similarity resulting from that shared element ‘prestige’ is offset, in particular, by the different length and configuration of the signs overall.
69 Phonetically, although the ‘p&g’ and ‘beaute’ elements are not present in the earlier marks, the fact none the less remains that the signs at issue present a certain phonetic similarity as a result of the presence in all of them of the word ‘prestige’, which is limited to that shared element.
70 Conceptually, the ‘p&g’ element in the mark applied for has no inherent meaning. The applicant does not dispute that, as the Board of Appeal correctly held, it is unlikely that the relevant public will associate that element with its name, namely Procter & Gamble. Furthermore, as was stated by the applicant at the hearing, the ‘p&g’ element was not known in 1999 in Italy as being associated with the beauty industry, but was known specifically in the past for detergents and household products.
71 As the Board of Appeal stated in paragraph 26 of the contested decision, the English word ‘prestige’, as defined in The New Oxford Dictionary of English of 1998, means ‘widespread respect and admiration felt for someone or something on the basis of a perception of their achievements or quality’. It is a term of praise common in particular in the cosmetics industry, which will be perceived as such by the relevant public, either directly because it understands its meaning in English or by associating it with the Italian equivalent ‘prestigio’. As regards the word ‘beaute’, the Board of Appeal considered, in paragraph 51 of the contested decision, that it was likely that that word, although not similar to the Italian equivalent ‘belleza’, would be associated by the relevant public with the French word ‘beauté’ or the word ‘beauty’, which is a basic English word, especially in the field of cosmetics. The Court endorses that analysis, which the applicant does not contest.
72 It follows that the signs at issue present a certain conceptual similarity as regards solely the presence of the element ‘prestige’ in each of them.
73 It follows from the foregoing that, each assessed as a whole, the signs at issue are not visually similar and they present a certain phonetic and conceptual similarity, limited to their shared element ‘prestige’.
– The likelihood of confusion
74 The global assessment of 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 designated. 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 (Case C-‘39/97 Canon [1998] ECR I-‘5507, paragraph 17; and Joined Cases T-‘81/03, T-‘82/03 and T-‘103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II-‘5409, paragraph 74).
75 The applicant challenges the Board of Appeal’s finding in paragraph 26 of the contested decision, that the component ‘prestige’, which makes up the earlier marks, is neither generic nor descriptive in Italian and that Italian consumers perceive it as a trade mark in the light of its foreign origin, rather than as a generic or descriptive term in relation to the goods at issue.
76 As the applicant correctly points out, it must be considered that the element ‘prestige’ of the earlier marks, which is laudatory and descriptive of the goods at issue, lacks inherent distinctiveness.
77 In that regard, the fact that the earlier marks enjoy in Italy a certain brand awareness, but not a particular reputation, in relation to make-up products, in particular as a result of the advertising on Italian television channels, does not suffice to make the element ‘prestige’ distinctive or dominant. The evidence submitted by the intervener does not prove distinctiveness acquired through use, as no relevant information was supplied concerning those advertisements.
78 In the Opposition Division’s decision, with which the Board of Appeal concurs, it is stated that the intervener did not submit any evidence relating to the market share of its trade marks and the amount of investment made to promote that share, any market surveys or any document from independent sources on the brand awareness of its marks. It also did not describe the goods sold in Italy under its trade marks, or establish their variety.
79 Moreover, much of the evidence relating to the use of the earlier marks submitted by the intervener is dated later, or may easily be dated later, than the application for registration of the trade mark, namely on 6 September 1999. This concerns, in particular, the copy of the advertisement in a magazine of November 1999, the brochure on an advertising campaign, the list, dated March 2000, of outlets where goods are sold under the earlier mark, the Christmas letter for the year 2000 sent to the intervener’s customers, the advertising brochure of November 1999 for silver pencils, the programmes for television spots for winter 2000/01, and the invoices, dated later than 6 September 1999, issued in the name of a company.
80 That evidence clearly cannot prove the knowledge that the consumers concerned would have had of those marks over a period prior to the date of application for registration. However, according to settled case-law, it must be shown that the distinctive character of the earlier marks was acquired through use prior to the date of the filing of the application for registration (see, to that effect, Case T-‘344/03 Saiwa v OHIM – Barilla Alimentare (SELEZIONE ORO Barilla) [2006] ECR II-‘1097, paragraphs 33 and 34).
81 The Board of Appeal held that the presence of the word ‘prestige’ in all the marks at issue was of itself able to establish the existence of a degree of similarity between those marks sufficient to create a likelihood of confusion. However, the Board of Appeal did not show that the word ‘prestige’, which is devoid of inherent distinctiveness and is probably translated by the relevant public by the Italian word ‘prestigio’, constitutes the dominant element.
82 It should also be noted that the Board of Appeal incorrectly applied, in paragraphs 56 to 58 of the contested decision, the judgment in Case C-‘120/04 Medion [2005] ECR I-‘8551. The Board of Appeal incorrectly transposed to the present case the case of a trade mark composed of the name of the undertaking having an independent distinctive role and incorrectly applied the assumption that the overall impression produced by the composite sign may lead to the belief that the goods at issue come from economically-linked undertakings, in which case a likelihood of confusion must be held to be established. However, the word ‘prestige’ is not the name of an undertaking and does not retain an independent distinctive role in the sign.
83 It does not suffice, for a similarity between marks to be established, that a single element dominates in the conceptual impression of a complex sign and that it is at the same time the sole element of the other sign. By contrast, it should be held that there is a similarity where, considered as a whole, the impression produced by a complex mark is dominated by one of its elements so that the other components of that mark seem negligible in the image of the earlier mark which the relevant public remembers, having regard to the goods or services designated. However, the element ‘prestige’, for the abovementioned reasons, does not play such a role in the present case.
84 Furthermore, in the context of the global assessment of the likelihood of confusion, the degree of phonetic similarity is of limited importance due to the way in which the goods at issue are marketed, which normally involves the relevant public, when purchasing, perceiving visually the trade marks designating those goods. The goods at issue are often displayed in such a way that consumers are able to examine them visually (see, to that effect, judgment of 8 July 2009 in Case T-‘240/08 Procter & Gamble v OHIM – Laboratorios Alcala Farma (oli), not published in the ECR).
85 In the present case, in the light of the overall impression produced by the signs at issue, it must be held that, despite the existence of a similarity between the goods at issue and a certain phonetic and conceptual similarity, limited to the shared element ‘prestige’, the clear differences, in particular visual, between the signs at issue constitute, in particular in the light of the abovementioned findings, sufficient grounds to rule out the existence of a likelihood of confusion on the part of the relevant public (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 52).
86 It must therefore be held that the Board of Appeal incorrectly applied Article 8(1)(b) of Regulation No 40/94.
87 The single plea must therefore be accepted and the contested decision annulled. Furthermore, with regard to the applicant’s second head of claim, it must be held that the applicant’s interests are, in the circumstances of the present case, sufficiently protected by annulment of the contested decision, without it being necessary in the context of this decision to reject the opposition.
Costs
88 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. In this case, the applicant claimed that OHIM should be ordered to pay the costs of these proceedings. Since OHIM has been unsuccessful, the form of order sought by the applicant must therefore be granted and OHIM ordered to pay the costs incurred by the applicant in the proceedings before the Court.
89 The applicant also claimed that the intervener should be ordered to pay the costs incurred by it in the administrative proceedings before OHIM. In that regard, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the applicant’s request that the intervener, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before OHIM can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 19 July 2007 (Case R 681/2006-2);
2. Orders OHIM to pay, in addition to its own costs, the costs incurred by The Procter & Gamble Company in the proceedings before the Court;
3. Orders Prestige Cosmetics SpA to pay, in addition to its own costs, the costs incurred by The Procter & Gamble Company in the proceedings before the Board of Appeal;
4. Dismisses the action as to the remainder.
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Meij |
Vadapalas |
Truchot |
Delivered in open court in Luxembourg on 13 September 2010.
[Signatures]
* Language of the case: English.