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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

24 June 2014 (*)

(Community trade mark - Opposition proceedings - Application for Community figurative mark Sani - Earlier Community figurative marks Hani or llani and RANI - Relative ground for refusal - Likelihood of confusion - Similarity of the signs - Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T-523/12,

Rani Refreshments FZCO, established in Jebel Ali (United Arab Emirates), represented by M. Chapple, Barrister,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Global-Invest Bartosz Turek, established in Poczesna (Poland),

ACTION against the decision of the Fourth Board of Appeal of OHIM of 27 September 2012 (Case R 236/2012-4), concerning opposition proceedings between Aujan Industries Co. (S J C) and Global-Invest Bartosz Turek,

THE GENERAL COURT (Third Chamber),

composed of S. Papasavvas, President, N.J. Forwood (Rapporteur) and E. Bieliūnas, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 30 November 2012,

having regard to the response lodged at the Court Registry on 15 February 2013,

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

1        On 7 May 2010, Global-Invest Bartosz Turek 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 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 following figurative sign:

3        The goods in respect of which registration was sought are in - inter alia - Classes 29, 30 and 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

-        Class 29: ‘Cheeses, butter, vegetable fats, margarine, milk, milk products, cream, yoghurts, kephir, tripe, croquettes, potato chips, potato crisps, charcuterie, concentrated fruits and vegetables, tinned meat and fish, pâtés, potato cakes, meat, meat extracts, edible oils, olive oil, fats, fruits and vegetables, preserved, fruits and vegetables, dried, fruit and vegetable purées, nuts and dried fruit, foods prepared from fish, delicatessen products made from meat and fish, preserves, jams, jellies, kissels, marmalade, fruit salads, vegetable salads, fruits and vegetables processed as deep frozen and tinned products, frozen foods included in this class, ready meals’;

-        Class 30: ‘Pasta, spaghetti, flour, groats, rice, breakfast cereals, farinaceous foods, sugar, salt, aromatic preparations for food, bread, frozen bread, chips (cereal products), candy, cakes, chocolate products, chocolate, waffles, sandwiches, popcorn, ices, ice-cream desserts, pizzas, pastry, cakes, cereal preparations, French bread pizzas, frozen foods included in this class, coffee, tea, cocoa, ketchup, crackers, mayonnaise, honey, mustard, spices, puddings, salad dressings, pasties, rusks, sorbets and granitas’;

-        Class 32: ‘Carbonated water, table waters, mineral water, non-alcoholic beverages, nectars, juices, beer, essences for making beverages’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 158/2010 of 25 August 2010.

5        On 25 November 2010, Aujan Industries Co. (S J C), the predecessor in title to the applicant Rani Refreshments FZCO, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on, inter alia, Community figurative mark No 2 587 244 (‘the first earlier mark’) designating goods in Class 32 and corresponding to the following description: ‘Non-alcoholic beverages; preparations for making non-alcoholic beverages; low alcohol beer; preparations for making low alcohol beer; shandy; preparations for making shandy’. That mark is reproduced below:

7        The opposition was also based on Community figurative mark No 4 005 211 (‘the second earlier mark’), reproduced below:

8        The goods covered by the second earlier mark are in Classes 29 and 30 and correspond, for each of those classes, to the following description:

-        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;

-        Class 30: ‘Rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’.

9        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

10      On 29 November 2011, the Opposition Division rejected the opposition.

11      On 30 January 2012, Aujan Industries filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

12      By decision of 27 September 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It made that decision having first of all found, in essence, that the mark applied for and the first and second earlier marks were not visually or conceptually similar and that the marks had a lower than average degree of aural similarity owing to the differences between their first syllables. The Board of Appeal then held that, in view of the relevant public’s average degree of attention and the visual, aural and conceptual differences between the signs in question, there was no likelihood of confusion between those signs for the purposes of Article 8(1)(b) of Regulation No 207/2009.

 Forms of order sought

13      The applicant claims that the Court should:

-        annul the contested decision;

-        order OHIM to pay the costs of the proceedings before the Board of Appeal and the General Court.

14      OHIM contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

 Law

15      In support of the action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, in that the Board of Appeal erred in its assessment of the aural similarities between the marks at issue by concluding that the degree of aural similarity between those marks was below average. As a result of that error of assessment, the Board of Appeal wrongly concluded that there was no likelihood of confusion between the marks at issue.

16      OHIM contests the applicant’s arguments.

17      In that regard, it should be borne in mind that 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, 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.

18      It is settled law that 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 line of authority, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of 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 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).

19      In the present case, it should be noted as a preliminary point that, in paragraph 15 of the contested decision, the Board of Appeal found, inter alia, that the relevant public consisted of the public at large in all the Member States of the European Union.

20      That approach must be approved, not only because that finding is not being challenged in the present action but also because there is nothing in the case-file to cast doubt on the Board of Appeal’s assessment in that regard.

21      It must also be noted that it is common ground between the parties that the goods in question are, as the Board of Appeal rightly found in paragraph 16 of the contested decision, partly identical and partly similar.

22      It is in the light of those considerations that the Court must determine whether the present plea is well founded.

 Comparison of the signs

23      The global assessment of the likelihood of confusion, in relation to the visual, aural 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 the 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).

24      In the present case, it should first of all be noted that the applicant is only criticising the reasoning by which the Board of Appeal reached the conclusion that the mark applied for and the earlier trade marks had a lower than average degree of aural similarity and complaining of the error made in the global assessment of the likelihood of confusion as a result of that conclusion.

25      The reasoning set out in the contested decision concerning the visual and conceptual comparison of the signs at issue not having been challenged in the present action, and nothing in the case-file suggesting that the Board of Appeal erred in that regard, it must be assumed that the signs at issue are not visually or conceptually similar.

26      Next, it should be noted that the Board of Appeal, while observing that the word elements of the signs at issue ended with the same letter combination ‘ani’, found - in essence - that the degree of aural similarity between those signs was below average. It substantiated that finding by pointing out that the signs consisted of a very limited number of letters and that they would be pronounced differently, since the mark applied for began with the syllable ‘sa’, whereas the first earlier mark began with a syllable pronounced ‘lla’, ‘ja’, ‘ha’ or ‘a’, depending on the pronunciation rules applicable in the relevant territory, and the second earlier mark began with a syllable pronounced - again, depending on the pronunciation rules applicable - ‘ra’ or ‘rä’.

27      According to the applicant, that reasoning is vitiated by an error: the degree of aural similarity between the signs at issue is above average since, in essence, the Arabic word elements of the two earlier trade marks are not, as a general rule, pronounced in the relevant territory, the word elements of the signs at issue end with the same letter combination ‘ani’, and the first letter of the mark applied for (the letter ‘s’) is not a strong consonant.

28      OHIM contests the applicant’s arguments.

29      In that regard, the General Court finds that the aural comparison of the signs at issue carried out by the Board of Appeal must be upheld.

30      First, it should be borne in mind that, according to case-law, consumers tend to focus on the beginnings of marks or words (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; Case T-133/05 Meric v OHIM - Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II-2737, paragraph 51; and judgment of 16 October 2013 in Case T-328/12 Mundipharma v OHIM - AFT Pharmaceuticals (Maxigesic), not published in the ECR, paragraph 51).

31      Accordingly, the Board of Appeal’s conclusion that, in essence, the relevant public will focus on the first syllable of each of the signs at issue, each of which begins with a different letter, so that, aurally, the relevant public will be able to distinguish the beginning of the signs at issue from their shared ending (the letter combination ‘ani’), must be upheld.

32      Secondly, since the open syllable ‘sa’ in the mark applied for begins with the sibilant consonant ‘s’, the relevant public’s aural perception of that syllable is very different from the impression given throughout the relevant territory by the pronunciation - in the case of the first earlier mark - of the open syllable ‘lla’ or ‘ha’ or - in the case of the second earlier mark - of the open syllable ‘ra’.

33      It follows that, although there is a certain degree of aural similarity between the signs at issue as a result of the shared letter combination ‘ani’, the similarity is weak because of the difference between the beginning of the mark applied for and the beginning of the earlier trade marks.

 Likelihood of confusion

34      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).

35      The Board of Appeal found that the relevant public’s level of attention was average and that, since the earlier trade marks had no meaning in relation to the goods they covered, those marks had normal inherent distinctiveness. Bearing in mind, moreover, that the signs at issue were not visually or conceptually similar and that their aural similarity was below average, the Board of Appeal concluded that there was no likelihood of confusion between those signs.

36      The applicant argues that, given the higher than average level of aural similarity between the signs at issue, the Board of Appeal was wrong to conclude that there was no likelihood of confusion between those signs.

37      In that regard, it should be noted that the applicant does not dispute that the relevant public’s level of attention is average in the present case or that the earlier trade marks have normal inherent distinctiveness. Since there is nothing in the case-file to cast doubt on the Board of Appeal’s reasoning in that regard, those findings must be upheld.

38      Moreover, it is clear from the reasoning set out in paragraphs 23 to 33 above that the Board of Appeal did not err in considering that the signs at issue were not visually or conceptually similar and that the degree of aural similarity between them could be regarded as weak in so far as it was below average.

39      The mere fact that there is a certain degree of aural similarity is not sufficient justification, in itself, for a finding that there is a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009 (see Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 35 and the case-law cited). Indeed, the overall assessment of the likelihood of confusion means that conceptual and visual differences between signs are capable of cancelling out aural similarities between them (see, to that effect, Case T-390/03 CM Capital Markets v OHIM - Caja de Ahorros de Murcia (CM) [2005] ECR II-1699, paragraph 65).

40      That is the situation in the present case: the fact that the signs at issue are not visually or conceptually similar and, what is more, have only a weak degree of aural similarity makes it possible to rule out any likelihood of confusion between the mark applied for and the earlier trade marks on the part of the relevant public.

41      That conclusion cannot be called in question by the applicant’s argument that the aural differences between the signs at issue will not, as a general rule, be noticed in the course of a conversation where drinks are being ordered in a busy and noisy bar or restaurant.

42      In that regard, it should be borne in mind that, in the global assessment of the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009, the respective weight to be given to the visual, aural or conceptual aspects of the signs at issue may vary on the basis of the objective circumstances in which the marks may be present on the market (see, to that effect, Case T-129/01 Alejandro v OHIM - Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraphs 57 to 59). However, in that context, the circumstances in which it is usual to expect the category of goods covered by the marks to be marketed must be taken as a benchmark (Case T-147/03 Devinlec v OHIM - TIME ART (QUANTUM) [2006] ECR II-11, paragraph 103).

43      In the present case, although it is naturally not inconceivable that the perception of the aural differences between the signs at issue may not be clear in particularly noisy environments, such as in a bar or a nightclub during very busy periods, that cannot be used as a basis for assessing whether there is a potential likelihood of confusion between the signs in question. An assessment of that kind must of necessity, as can in essence be seen from the case-law referred to in the previous paragraph, be carried out while keeping in mind the perception which the relevant public will have of those signs under normal marketing conditions. As OHIM rightly points out, there is no evidence allowing it to consider that, as a general rule, consumers of the goods in question - whether drinks or other food products - will buy such goods in the circumstances described by the applicant and mentioned in paragraph 41 above.

44      It follows that the single plea in law is unfounded and the action must therefore be dismissed.

 Costs

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

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

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action.

2.      Orders Rani Refreshments FZCO to pay the costs.

Delivered in open court in Luxembourg on 24 June 2014.

[Signatures]

* Language of the case: English.