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Cite as: [2011] EUECJ T-437/09, [2011] EUECJ T-437/9

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JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

2 February 2011 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark Oyster cosmetics – Earlier Community figurative mark Kadus oystra AUTO STOP PROTECTION – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T-�437/09,

Oyster Cosmetics SpA, established in Castiglione delle Stiviere (Italy), represented by A. Perani and P. Pozzi, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Kadabell GmbH & Co. KG, established in Darmstadt (Germany), represented by K. Sandberg, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 5 August 2009 (Case R 1367/2008-�1) concerning opposition proceedings between Kadabell GmbH & Co. KG and Oyster Cosmetics SpA,

THE GENERAL COURT (Fourth Chamber),

composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and M. van der Woude, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 19 October 2009,

having regard to the response of OHIM lodged at the Registry of the Court on 11 February 2010,

having regard to the response of the intervener lodged at the Registry of the Court on 15 February 2010,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 23 April 2004, the applicant, Oyster Cosmetics SpA., filed a Community trade mark application 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)).

2 The trade mark in respect of which registration was sought is the following figurative sign:

3 The goods in respect of which registration was sought are in Class 3 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: ‘Bleaching preparations and other substances, all for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; hair colorants; dentifrices’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 6/2005 of 7 February 2005.

5 On 2 May 2005, the intervener, Kadabell GmbH & Co. KG, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier Community figurative mark, registered on 25 August 2005 under number 3366515, reproduced below:

7 The earlier trade mark was registered for goods in Class 3, corresponding to the following description: ‘Soaps, perfumeries, essential oils, preparations for body and beauty care, hair lotions, dentifrices’.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).

9 On 24 July 2008, the Opposition Division upheld the opposition in part. The opposition was rejected only in respect of the goods ‘preparations for cleaning waste pipes’. Those goods were not in the list of goods provided with the registration application. They were, however, in the English translation of that list, on which the Opposition Division based its decision.

10 On 22 September 2008, the applicant filed a notice of 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.

11 By decision of 5 August 2009 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. Specifically, the Board of Appeal considered, firstly, that the relevant public was the general public who is deemed to be reasonably well informed and reasonably observant and circumspect. It stated, secondly, that the goods covered by the trade mark applied for and those protected by the earlier trade mark were identical or similar. Thirdly, it found, on the basis of a comparison of the word elements ‘oyster’ and ‘oystra’, that the marks at issue were visually and aurally similar. Conceptually, the Board considered that the English-speaking public could find that there was some degree of similarity, since the word ‘oystra’ calls to mind the word ‘oyster’. Fourthly, the Board assumed that the word ‘oyster’ was distinctive in relation to the goods in question and concluded that there was a likelihood of confusion on the part of the relevant public in the European Union.

Forms of order sought by the parties

12 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

13 OHIM, supported by the intervener, contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs..

Law

14 The applicant relies on a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.

Arguments of the parties

15 The applicant claims that the Board of Appeal did not take into proper consideration the significant visual, phonetic and conceptual differences between the signs at issue.

16 In the first place, from a visual point of view, the applicant argues, firstly, that whilst the first letters, namely ‘o’, ‘y’, ‘s’ and ‘t’, of the word elements are identical, the last letters of the words ‘oyster’ and ‘oystra’ are different. Secondly, the word ‘cosmetics’ in the mark applied for and the words ‘kadus auto stop protection’ in the earlier mark create very different visual impressions. Thirdly, the applicant submits that the graphic structure of the words and figurative elements is different in each of the marks. Fourthly, the figurative elements, namely the representation of an oyster and the underlining, in the mark applied for, and the three black dots, in the earlier mark, play a very important role in the visual impression produced by the signs at issue and should have been taken into account by the Board of Appeal.

17 In the second place, from a phonetic point of view, the applicant claims, firstly, that the partial similarity of the words ‘oyster’ and ‘oystra’ is not sufficient to make the signs at issue similar. The phonetic analysis should have taken into account the pronunciation of the word elements ‘cosmetics’ and ‘kadus auto stop protection’. The signs thus differ, phonetically, in all their word elements other than the syllable ‘oyst’ and in their length. Secondly, the word ‘kadus’ has a very distinctive role in the earlier mark. Thirdly, the Board of Appeal’s statement that it is unlikely that the marks would be pronounced in their entirety is a mere assumption that is without basis.

18 In the third place, from a conceptual point of view, the applicant disputes the Board of Appeal’s finding that ‘oystra’ calls to mind the word ‘oyster’ for the English-speaking public. According to the applicant, ‘oystra’ will be perceived by the consumers concerned to be an invented and meaningless word and the consumers who understand the meaning of the word ‘oyster’ will in no way associate that word with the term ‘oystra’. Therefore, a conceptual comparison will not increase but will, rather, reduce the similarity between the marks at issue.

19 In the fourth place, in an overall assessment of the signs’ similarity, the applicant submits, on the basis of OHIM’s previous decision-making practice, that the partial similarity of the word elements ‘oyster’ and ‘oystra’ is not enough to lead to the conclusion that ‘Oyster cosmetics’ and ‘Kadus oystra AUTO STOP PROTECTION’ are similar to the point of creating a likelihood of confusion.

20 OHIM and the intervener dispute the applicant’s arguments.

Findings of the Court

21 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 is not to 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.

22 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 the same line of case-law, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and 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 the similarity 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).

23 In the present case, the Board of Appeal correctly found, and was not challenged by the applicant on this point, that the relevant public was the general public who is deemed to be reasonably well informed and reasonably observant and circumspect, that the European Union was the relevant territory for the purposes of the application of Article 8(1)(b) of Regulation No 207/2009 and that the goods covered by the mark applied for and those protected by the earlier mark were identical or similar. The applicant’s submissions focus exclusively on the Board of Appeal’s analysis of the similarity of the marks at issue.

24 In that regard, it should be recalled that 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 they produce, 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 assessment of that likelihood of confusion. In that 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).

25 Accordingly, 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, but that 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 24 above, 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, paragraph 24 above, paragraph 42, and judgment of 20 September 2007 in Case C-�193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (Nestlé v OHIM, paragraph 43).

26 In the present case, in the first place, in respect of the visual similarity between the marks at issue, the Board of Appeal found, at paragraph 28 of the contested decision, that the Opposition Division had correctly concluded that those marks were visually similar, since although those marks included different word and figurative elements, the most prominent elements were the words ‘oystra’ and ‘oyster’, both of which are written in bold black letters in the centre of the marks.

27 The applicant challenges that finding, claiming, in essence, that the word elements other than the words ‘oystra’ and ‘oyster’ as well as the figurative elements are not at all negligible but, on the contrary, create a different visual impression. The applicant further points out that the last two letters of the words ‘oystra’ and ‘oyster’ are different.

28 First, as regards the applicant’s argument that the word and figurative elements other than the words ‘oystra’ and ‘oyster’ are not negligible, it should be noted that the earlier mark consists of a combination of the word ‘oystra’, written vertically in bold in a standard font, the words ‘auto stop protection’ written in very small characters under the word ‘oystra’, and the word ‘kadus’ written horizontally in smaller characters than those used for the word ‘oystra’, and positioned at the top of that mark, away from the other word and figurative elements. In addition, the letter ‘y’ of the word ‘oystra’ is underlined by three dots.

29 Having regard to those elements, it should be noted that the word element ‘oystra’ is in the centre of the earlier mark, and written in characters which are black, in bold and larger than those used for the other word elements in that mark.

30 By contrast, first of all, the word element ‘auto stop protection’ is written in characters that are so small that, as OHIM stated, it is barely legible. That element will therefore have no effect on the relevant public’s visual perception of the earlier mark (judgment of 11 November 2009 in Case T-�162/08 Frag Comercio Internacional v OHIM – TinkerbellModas (GREEN by missako), not published in the ECR, paragraph 43).

31 Furthermore, it should be noted that the word element ‘kadus’ is notable for its small size. In addition, it is positioned at a clear distance from the other elements of the earlier mark, such that it must be regarded, on the part of the relevant public, as negligible compared with the word element ‘oystra’.

32 Lastly, the graphic element of three dots plays a negligible role in the overall visual impression produced by the sign because of its smaller size and its lack of inherent distinctiveness.

33 Therefore, the Board of Appeal did not err in finding that the word ‘oystra’ dominated the overall impression produced, in the memory of the relevant public, by the earlier mark, since the other word and figurative elements of that mark were negligible for that public.

34 On the other hand, the mark applied for consists of a stylised oyster containing a pearl, next to the word ‘oyster’. That word is written in bold in a standard font. It is positioned in the centre of the mark. Under the word ‘oyster’ is the word ‘cosmetics’, in a smaller font.

35 Bearing in mind those elements, the word element ‘cosmetics’ is less likely to hold the attention of the relevant public than the word element ‘oyster’. Whilst ‘oyster’ is written horizontally in bold black letters in the middle of the mark applied for, ‘cosmetics’ is in much smaller type and, furthermore, is underneath the word ‘oyster’, such that it must be regarded, on the part of that public, as negligible compared with ‘oyster’. In addition, the word element ‘cosmetics’ describes some of the goods in question. According to the case-law, owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark will not generally be regarded by the relevant public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on the public and to be remembered by it (see, to that effect, Case T-�7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-�3085, paragraph 44 and the case-law cited). It has been found, in the present case, that because of its position and size, the word element ‘cosmetics’ does not hold the attention of the relevant public, given the position and size of the word element ‘oyster’.

36 As regards the figurative elements of the mark applied for, although the stylised oyster is the same size as the first letter of the word element, it still cannot dominate the overall impression produced by the mark applied for in the memory of the relevant public. When a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 15 December 2009 in Case T-412/08 Trubion Pharmaceuticals v OHIM – Merck (TRUBION), not published in the ECR, paragraph 45 and the case-law cited). That is so a fortiori in the present case, since the stylised oyster alludes to the same thing as the word element ‘oyster’. Lastly, the line at the bottom of the mark applied for plays a negligible role in the overall impression conveyed by that mark.

37 Therefore, the Board of Appeal did not err in finding that the word ‘oyster’ dominated the overall impression produced by the mark applied for in the memory of the relevant public, since the other word and figurative elements were negligible to that public. Accordingly, having regard to the case-law cited at paragraph 25 above, the Board of Appeal was entitled to undertake a visual comparison of the marks at issue solely on the basis of the word elements ‘oystra’ and ‘oyster’ and the applicants cannot criticise the Board for failing to take account of the other word and figurative elements and the graphic structure of those elements.

38 Second, as regards the applicant’s argument relating to the difference between the last two letters of the word elements ‘oystra’ and ‘oyster’, whilst it is true that the letters ‘r’ and ‘a’ and the letters ‘e’ and ‘r’ of those word elements are different in nature or position, according to the case-law the consumer normally attaches more importance to the first part of words (see, to that effect, Joined Cases T-�183/02 and T-�184/02 El Corte Inglés v OHIM – Gonzáles CabelloandIberia Líneas Aéras de España (MUNDICOR) [2004] ECR II-�965, paragraph 81). In the present case, the two trade marks share the first four letters, namely ‘o’, ‘y’, ‘s’ and ‘t’.

39 Moreover, as stated in paragraphs 29 and 35 above, the word elements ‘oystra’ and ‘oyster’ are both in bold black letters in the centre of the mark in question. Moreover, those elements contain the same number of letters, five of which are the same, including the letter ‘r’ which is one of the last two letters in each of those elements.

40 It follows that the word elements ‘oystra’ and ‘oyster’ are visually similar. Therefore, it must be concluded that the applicant has failed to show that the Board of Appeal erred in finding that the marks at issue were visually similar.

41 In the second place, regarding the phonetic similarity between the marks at issue, the Board of Appeal considered, in essence, at paragraph 29 of the contested decision, first, that it was unlikely that the earlier mark would be referred to in its entirety and, second, that the identical nature of the first syllables ‘oys’ of the word elements ‘oystra’ and ‘oyster’ and the similarity of the second syllables ‘tra’ and ‘ter’ of those word elements were sufficient to lead to a finding that those signs are phonetically similar.

42 The applicant disputes that finding and claims, in essence, that in its phonetic analysis, the Board of Appeal should have taken into account the pronunciation of the words ‘cosmetics’ and ‘kadus’ and the words ‘auto stop protection’.

43 In that connection, in respect of the earlier mark, it was established, at paragraphs 30 and 31 above, that the word elements ‘kadus’ and ‘auto stop protection’ are not likely to hold the attention of the relevant public. First, if the word element ‘auto stop protection’ is not likely to affect the relevant public’s visual perception because of the very small font size used, nor, for the same reason, will it be pronounced by the relevant public. Second, the word element ‘kadus’ will be perceived by the relevant public to be a secondary element because of its size and position. In this case, the consumer will not therefore pronounce ‘kadus’ but will merely refer to the word element ‘oystra’.

44 In respect of the mark applied for, it was established at paragraph 35 above that the word element ‘cosmetics’ was unlikely to hold the attention of the relevant public because of its size and position within that mark. For the same reason it is unlikely that that element would be pronounced by the consumer when referring to the mark applied for.

45 Furthermore, according to the case-law, a trade mark which includes several words will generally be abbreviated orally to something easier to pronounce (judgment of 30 November 2006 in Case T-�43/05 Camper v OHIM – JC (BROTHERS by CAMPER), not published in the ECR, paragraph 75). It will be easier to refer to the earlier mark as ‘oystra’ and the mark applied for as ‘oyster’.

46 It follows from the foregoing that it is likely that the relevant public will refer to the marks at issue by using the word elements ‘oystra’ and ‘oyster’. Accordingly, the applicant cannot claim that the Board of Appeal erred in undertaking a phonetic comparison solely on the basis of the word elements ‘oystra’ and ‘oyster’ and in failing to take into account both the phonetic differences between all of the word elements other than ‘oyst’, and the importance of the word element ‘kadus’.

47 Inasmuch as the applicant does not dispute that the first syllable ‘oys’ of the word elements ‘oystra’ and ‘oyster’ is identical and that the second syllables ‘tra’ and ‘ter’ of those word elements are similar, it must be concluded that it has not been shown that the Board of Appeal erred in finding a degree of phonetic similarity between the marks at issue.

48 In the third place, regarding the conceptual similarity between the marks at issue, first, the Board of Appeal considered, at paragraph 30 of the contested decision, that although the word elements ‘oyster’, ‘auto stop protection’ and ‘cosmetics’ have a meaning in English, it cannot be assumed that the average consumer in all the other territories of the European Union will understand their meaning, that the word elements ‘oystra’ and ‘kadus’ do not mean anything in any of the languages of the European Union and that, therefore, the conceptual comparison has no effect on the assessment of the similarity of the signs. Second, the Board of Appeal held that, inasmuch as the word element ‘oystra’ will remind the English-speaking public of the word ‘oyster’, the marks at issue are, for that public, conceptually similar.

49 The applicant claims, on the contrary, that the word element ‘oystra’ will be perceived by the relevant public to be an invented and meaningless word and consumers who understand the meaning of the word ‘oyster’ will in no way associate that word with the term ‘oystra’.

50 In that regard, it should be noted that the first four letters of the word ‘oystra’ are identical to the first four letters of the word ‘oyster’. Since the word ‘oyster’ is the only word in the English language which starts with the letters ‘o’, ‘y’, ‘s’ and ‘t’, it must be considered, as did the Board of Appeal, that the word element ‘oystra’ will, for the English-speaking public, call to mind that word.

51 Therefore, the applicant’s argument relating to the conceptual comparison of the marks at issue cannot be accepted. Accordingly, having regard to all of the foregoing, the Court does not find that the Board of Appeal erred in concluding that the marks at issue were visually and phonetically similar and that the English-speaking public might find those marks conceptually similar.

52 That conclusion is not affected by the applicant’s argument, based on OHIM’s previous decision-making practice, that the partial similarity of the word elements ‘oystra’ and ‘oyster’ is not sufficient to lead to a finding that the marks at issue are similar.

53 First, it was established, in paragraphs 28 to 51 above, that the Board of Appeal was entitled to undertake visual and phonetic comparisons of the marks at issue on the basis of the word elements ‘oystra’ and ‘oyster’ and that it had not erred in finding that the English-speaking public might find those marks conceptually similar.

54 Second, according to settled case-law, the decisions which the Boards of Appeal of OHIM are led to take under Regulation No 207/2009, concerning registration of a sign as a Community trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of the Regulation, as interpreted by the Courts of the European Union, and not on the basis of an alleged previous decision-making practice (Case T-�112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-�949, paragraph 68, and Case T-�109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II-�675, paragraph 27).

55 Having regard to all the foregoing, the sole plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, cannot be accepted and the action must be dismissed.

Costs

56 Under Article 87(2) 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. As 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

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1. Dismisses the action;

2. Orders Oyster Cosmetics SpA to pay the costs.

Pelikánová Jürimäe Van der Woude

Delivered in open court in Luxembourg on 2 February 2011.

[Signatures]

* Language of the case: English.