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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

23 March 2012 (*)

(Community trade mark - Opposition proceedings - Application for registration of the Community word mark ALIXIR - Earlier national word mark Elixeer - Relative ground for refusal - Likelihood of confusion - Similarity of the signs - Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T-157/10,

Barilla G. e R. Fratelli SpA, established in Parma (Italy), represented by A. Vanzetti, G. Sironi and A. Colmano, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by R. Pethke, acting as Agent,

defendant,

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

Brauerei Schlösser GmbH, established in Düsseldorf (Germany), represented by J. Flick, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 25 January 2010 (case R 820/2009-2), relating to opposition proceedings between Brauerei Schlösser GmbH and Barilla G. e R. Fratelli SpA,

THE GENERAL COURT (Second Chamber),

composed of N.J. Forwood (Rapporteur), President, F. Dehousse and J. Schwarcz, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 8 April 2010,

having regard to the response of OHIM lodged at the Court Registry on 19 July 2010,

having regard to the response of the intervener lodged at the Court Registry on 18 June 2010,

having regard to the fact that an application for a hearing was submitted by the applicant within the period of one month from notification of closure of the written procedure,

having regard to the letter by which the applicant withdrew its application for a hearing, 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 28 September 2006, the applicant - Barilla G. e R. Fratelli SpA - 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)).

2 The mark in respect of which registration was sought is the word mark ALIXIR.

3 The goods in respect of which registration was sought fall, in so far as they relate to the present case, within Class 32 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: 'Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.'

4 The Community trade mark application was published in Community Trade Marks Bulletin No 7/2007 of 19 February 2007.

5 On 16 May 2007, the intervener - Brauerei Schlösser GmbH - filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) in respect of the trade mark applied for, in relation to the goods referred to in paragraph 3 above.

6 The opposition was based on the national word mark Elixeer, which was the subject of German registration No 30228084 for goods in Class 32 of the Nice Agreement, namely non-alcoholic beverages, energy drinks and mixed beer drinks.

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

8 By decision of 8 June 2009, the Opposition Division upheld the opposition in respect of all the goods covered by the Community trade mark application.

9 On 23 July 2009, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009.

10 By decision of 25 January 2010 ('the contested decision'), the Second Board of Appeal dismissed the appeal.

11 In particular, as regards the relevant public, the Board of Appeal found that the goods at issue were intended for the average consumer in Germany. Regarding the comparison of the signs at issue, the Board of Appeal found, in essence, that there was a low degree of visual similarity and a high degree of phonetic similarity, which meant that it could not be excluded that consumers comparing the signs phonetically would attribute the same conceptual content to the mark applied for as to the earlier mark. The Board of Appeal found that the goods covered by the two signs were identical or highly similar. On those grounds, the Board of Appeal concluded, in the context of a global assessment of the facts of the case, and despite the weak distinctive character of the earlier mark, that the Opposition Division had not erred in finding that there was a likelihood of confusion between the signs at issue.

Procedure and forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- dismiss the opposition or remit the case to OHIM;

- order OHIM and the intervener to pay the costs.

13 OHIM and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

14 In support of its action, the applicant raises a single plea in law alleging breach of Article 8(1)(b) of Regulation No 207/2009.

15 As provided in Article 8(1)(b) of Regulation No 207/2009, 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, because of 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.

16 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, according to the relevant public's perception of the signs and goods or services concerned and account being taken of all the factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see 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).

17 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

18 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).

19 In the present case, the applicant states that it does not dispute the findings of the Board of Appeal as regards the definition of the relevant public, the identity or similarity of the goods or the weak distinctive character of the earlier mark.

20 By contrast, the applicant disputes the assessment made by the Board of Appeal, according to which the signs at issue have a high phonetic similarity, a low visual similarity and some conceptual similarity. The applicant adds that the conceptual difference arising from the fact that the mark applied for does not have a literal meaning, whereas the earlier mark is very like the German term 'Elixier', is likely to counteract potential phonetic and visual similarities. Furthermore, by not taking into account the fact that the distinctive character of the earlier mark is weak, if not non-existent, the Board of Appeal - wrongly - widened the protection of that mark.

21 In that connection, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30). The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, account being taken, in particular, of 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).

22 In the present case, it should be noted that the mark Elixeer differs from the German word 'Elixier', which means 'elixir', only by a single vowel, so that there is a significant possibility that the average consumer may pronounce its ending in the same way as he pronounces the ending of the German word, even if it is not usual in German to pronounce the double vowel 'ee' in that way. Furthermore, that way of pronouncing the double vowel would be consistent with the relevant rules of the English language, with which a part of the relevant public is familiar.

23 Moreover, as the Board of Appeal rightly found, the signs at issue are composed of a single word of three syllables and are distinguished, one from the other, by their respective first letters, the syllable 'lix' being common to both.

24 In those circumstances, the Board of Appeal did not err in finding that the signs at issue have a low degree of visual similarity and a high degree of phonetic similarity.

25 As regards the conceptual comparison of the signs, it should be noted that - as the Board of Appeal observed - the phonetic similarity between the mark applied for and the German word 'Elixier' may lead the average consumer to associate that mark with the German word, just as he may associate it with the earlier mark for the reasons outlined in paragraph 22 above. That assessment does not mean that greater weight has been attributed to the phonetic aspect than the conceptual aspect; rather, it comes about as a result of taking into account the possible pronunciation of a word in order to determine the way in which it will be conceptually perceived by the relevant public or by a part of that public.

26 Consequently, the finding made by the Board of Appeal regarding similarity between the signs was not vitiated by error.

27 As regards the global assessment of the likelihood of confusion, the applicant's argument, based on the weak distinctive character of the earlier mark, cannot be upheld. In that context, it should be noted that, although the distinctive character of the earlier mark must be taken into account for the purposes of assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 16 September 2009 in Case T-400/06 Zero Industry v OHIM - zero Germany (zerorh+), not published in the ECR, paragraph 74 and the case-law cited).

28 Granting excessive importance to the fact that the earlier mark has only a weak distinctive character would have the effect that the factor of the similarity of the marks at issue would be disregarded in favour of the factor based on the distinctive character of the earlier mark. The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the signs at issue. Such a result would not, however, be consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 (zerorh+, paragraph 75).

29 In the present case, it is appropriate to confirm the assessment made by the Board of Appeal to the effect that the earlier mark does have a weak distinctive character because it can be differentiated, albeit only slightly, from the German word 'Elixier', which has a laudatory connotation as regards drinks.

30 In those circumstances, the Board of Appeal was correct in finding that, given the fact that the goods covered by the signs at issue are identical or highly similar and in view of the similarity between those signs, it had to be found that there was a likelihood of confusion.

31 The single plea in law must therefore be rejected and, in consequence, the action must be dismissed in its entirety.

Costs

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

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1. Dismisses the action;

2. Orders Barilla G. e R. Fratelli SpA to pay the costs.

Delivered in open court in Luxembourg on 23 March 2012.

[Signatures]

* Language of the case: English.

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