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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

21 May 2015 (*)

(Community trade mark — Opposition proceedings — Application for the figurative Community trade mark GREEN’S — Earlier national word mark AMBAR GREEN — Ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑197/14,

La Zaragozana, SA, established in Zaragoza (Spain), represented by L. Broschat García, lawyer,

applicant,

v

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

defendant,

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

Charles Cooper Ltd, established in Leeds (United Kingdom), represented by M. Granado Carpenter and L. Polo Carreño, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 21 January 2014 (Case R 1284/2012-5), relating to opposition proceedings between La Zaragozana, S.A. and Charles Cooper Ltd,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 20 March 2014,

having regard to the response of OHIM lodged at the Court Registry on 29 August 2014,

having regard to the response of the intervener lodged at the Court Registry on 27 August 2014,

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 rule on the action 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 31 March 2009 the intervener in the present proceedings, Charles Cooper Ltd, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 fall within Class 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 to the following description: ‘Gluten free and wheat free beer, ale, lager, stout and porter’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 24/2009 of 29 June 2009.

5        On 29 September 2009 the applicant, La Zaragozana, S.A., 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 the earlier Spanish word mark AMBAR-GREEN filed on 20 December 1991 and registered on 6 March 1995 covering goods corresponding to Class 32, namely, beers.

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

8        By decision of 17 May 2012 the Opposition Division allowed the opposition.

9        On 12 July 2012 the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10      By decision of 21 January 2014 (‘the contested decision’) the Fifth Board of Appeal of OHIM upheld the appeal. It considered that, despite the identical nature of the goods at issue, there were sufficient differences between the marks at issue to exclude any likelihood of confusion. In particular, the Board of Appeal was of the opinion that there was a low degree of visual and phonetic similarity and an absence of conceptual similarity between the mark applied for and the earlier mark.

 Forms of order sought

11      The applicant claims that the Court should annul the contested decision.

12      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of the action the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

14      First, the applicant contends that when a trade mark consists of both word and figurative elements, it will be identified mainly on the basis of the verbal element. Therefore, the figurative element will be secondary in the overall impression that will be perceived by the average consumer. Next, it opposes the determination of the Board of Appeal as to the pronunciation of the word ‘green’s’ and takes the view that the apostrophe followed by the letter ‘s’, not existing in Spanish grammar, would not mean anything to the relevant public. The applicant considers the term ‘green’ to have a distinctive character in connection with beers, that is, ‘a beer without alcohol which it is recommended be consumed at a temperature of five degrees’ and which is used commercially by the applicant to sell the beer AMBAR followed by a sub-brand. Consequently, consumers will identify the goods under the earlier trade mark with the mark GREEN. The applicant is of the opinion that, taking into account all the relevant factors, the degree of similarity between AMBAR-GREEN and GREEN’S is sufficient to cause confusion in the minds of reasonably well-informed and reasonably observant and circumspect consumers.

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

16      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 must not 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. Furthermore, under 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.

17      According to settled case-law, the risk that the public may 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question and taking into account 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 judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

18      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 judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

19      According to the case-law, 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 judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

20      It is in the light of the principles set out in paragraphs 16 to 19 above that the determination of the Board of Appeal that there was no likelihood of confusion between the marks at issue must be examined.

 The relevant public

21      At paragraphs 15 to 21 of the contested decision the Board of Appeal took the view that the relevant territory was Spain and that, having regard to the goods at issue, the relevant public consisted of average consumers from the general public, normally informed and reasonably observant and circumspect whose level of attention is of a normal or even of a low degree.

22      The definition of the relevant public accepted by the Board of Appeal is to be endorsed and, besides, it has not been challenged by the parties to the litigation.

 The comparison of the goods

23      In paragraph 16 of the contested decision, the Board of Appeal indicated that the goods in question were identical in nature.

24      The Board of Appeal’s determination in this regard too is to be endorsed, this, moreover, not having been contested by the parties.

 The comparison of the signs

25      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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 this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

26       It also follows from the case-law that 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, namely the visual, aural and conceptual aspects (see judgment of 17 February 2011 in Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, ECR, EU:T:2011:49, paragraph 26 and the case-law cited).

27      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 judgment in OHIM v Shaker, cited in paragraph 25 above, EU:C:2007:333, paragraph 41 and the case-law cited).

28      It is by the yardstick of those considerations that it is necessary to examine whether the Board of Appeal was right to conclude that the signs at issue were sufficiently different to exclude any likelihood of confusion pursuant to Article 8(1)(b) of Regulation No 207/2009.

29      Regarding the visual similarity of the signs, the Board of Appeal took the view, at paragraph 19 of the contested decision, that the only element common to the marks was the sequence of letters ‘g’ ‘r’ ‘e’ ‘e’ ‘n’, and that all the other elements of the signs at issue were different. Moreover, it correctly stated that the appearance of the whole of the trade mark applied for was reminiscent of a traditional pub sign.

30      The applicant maintains that the figurative element of the mark applied for is less important than the verbal element which, in this case, is identical in the use of the word ‘green’ contained in the earlier mark. Accordingly, the two marks are visually identical.

31      In this regard, on the one hand, it is appropriate to recall that in a complex mark, the figurative element may occupy a position equivalent to the verbal element (see judgment of 16 January 2008, Inter-Ikea v OHIM — Waibel (idea), T‑112/06, EU:T:2008:10, paragraph 48 and the case-law cited).

32      On the other hand, according to the case-law, even where two trade marks at issue are composed of highly similar verbal elements, that fact does not, by itself, support the conclusion that there is a visual similarity between the signs. The presence, in one of the signs, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each sign is different (judgment of 11 December 2013, Eckes-Granini v OHIM-Panini (PANINI), T‑487/12, EU:T:2013:637, paragraph 44).

33      It is also to be noted that the earlier mark is constituted by a compound word ‘ambar green’ which, with the exception of the letter sequence ‘g’ ‘r’ ‘e’ ‘e’ ‘n’, has no visual similarity to the mark applied for.

34      Further, according to case-law the first part of a trade mark, in this case the word ‘ambar’, normally has a greater visual impact than the final part (see judgment in PANINI, paragraph 32 above, EU:T:2013:637, paragraph 41 and the case-law cited).

35      In those circumstances, taking into account all the elements making up the mark applied for, it must be found that there is a low degree of visual similarity between the two marks at issue.

36      Concerning the phonetic similarity of the two signs, the Board of Appeal observed, at paragraph 20 of the contested decision, that the two marks had only the monosyllabic word ‘green’ in common, the second element of the earlier mark, with the exception, however, of the final apostrophe followed by the letter ‘s’ which, in its view, could be pronounced by Spanish consumers.

37      On this basis it can be found, as OHIM found, that the earlier mark will be pronounced by Spanish consumers in three syllables (‘am’, ‘bar’ and ‘grin’), while the Community mark applied for will be pronounced as a single syllable (‘grins’) by the relevant public.

38      Therefore, contrary to what is claimed by the applicant, the fact that the apostrophe followed by the letter ‘s’ does not exist in Spanish grammar is not likely to make the two marks identical from a phonetic point of view because of the differences between them in the number of syllables, their rhythm and their intonation.

39      Further, it is important to add that the first part of a trade mark, in this case the word ‘ambar’, has not only visually but also phonetically a greater impact than the final part of the mark (see, to that effect, the judgments of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 51, and 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, ECR, EU:T:2010:347, paragraph 62).

40      Consequently, the Board of Appeal has not erred in holding that, phonetically, the degree of similarity between the two marks was low.

41      As regards the conceptual similarity of the signs the Board of Appeal concluded, at paragraph 21 of the contested decision, that the two marks were not similar.

42      First, the Board of Appeal stated that the word ‘ambar’ could be translated as ‘amber’, defined in Spanish as being a hard, translucent, yellowish, fossilised resin originating from extinct coniferous trees from the Tertiary Period. By contrast, the word ‘green’ relates, in the current language of the food market and marketing in general, to organic products.

43      The applicant asserts, however, that the word ‘ambar’ represents its house mark and that it frequently uses a sub-brand depending on the specific characteristics of each beer. Thus, the generic mark AMBAR also forms part of, inter alia, the various sub-brands AMBAR 1900, AMBAR ESPECIAL, AMBAR MANSANA, AMBAR LEMON and AMBAR PREMIUM. 

44      Such frequent use of a second verbal element qualifying the mark AMBAR supports the notion that the relevant public will understand the word ‘ambar’ as being the principal element permitting recognition of the mark and the word ‘green’ as a type of beer under the AMBAR mark.

45      Therefore, the Board of Appeal did not err in finding that the earlier mark AMBAR GREEN would be perceived by the relevant public as a line of organic beers under the AMBAR mark.

46      Second, the Board of Appeal took the view, at paragraph 21 of the contested decision, that the Spanish public would perceive the mark applied for, GREEN’S, as being the name of an undertaking belonging to someone called ‘Green’ because of the possessive meaning of the apostrophe followed by the letter ‘s’ in the English language.

47      It should be noted that part of the relevant public would not understand the mark GREEN’S in the sense given to it by the Board of Appeal. Some people are likely to have very little knowledge of the English language, preventing them from understanding the word ‘green’s’ in the Anglophone sense of the word.

48      However, it is likely that the average consumer will perceive the mark GREEN’S as a mark of ‘Anglo-Saxon’ origin without any particular meaning on the basis of, on the one hand, the presence of the apostrophe followed by the letter ‘s’ unknown in Spanish grammar, and on the other hand, the figurative element, such as the curved black ribbon, conveying the idea of a traditional public house. By contrast, it is unlikely that the Spanish public would attribute the same organic meaning to the verbal element ‘green’ accompanied by the apostrophe followed by the letter ‘s’ in the mark applied for.

49      It follows from the above-mentioned considerations that the Board of Appeal was right to hold that no conceptual similarity existed between the marks at issue despite the presence of the word ‘green’ in both marks.

 The likelihood of confusion

50      According to the case-law, the 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 that of the goods or services covered. 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 (judgments of 29 December 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

51      Further, the global assessment of the likelihood of confusion implies that conceptual differences between two signs can counteract phonetic and visual similarities between them, provided that at least one of those signs has a clear and specific meaning for the relevant public, so that the public is capable of grasping it immediately (judgment of 18 December 2008 in Éditions Albert René v OHIM C‑16/06 P, ECR, EU:C:2008:739, paragraph 98, and judgment of 14 October 2003 in Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, ECR, EU:T:2003:264, paragraph 54).

52      In the first place, the Board of Appeal considered, at paragraph 24 of the contested decision, that the word ‘ambar’, in addition to being the divergent element in the two trade marks, was also the word that makes up the first part of the earlier mark. In the second place, it found that, having regard to the average degree of attention of the relevant public, attention would focus mainly on the first part of the earlier mark, in this case, the word ‘ambar’. In the third place, the Board of Appeal stated that, unlike the word ‘ambar’, the word ‘green’ would not be viewed as an original and distinctive element but as indicating a description of the product’s characteristics, that is to say an organic beer. In the fourth place, it found that the mark applied for, GREEN’S, because of the apostrophe followed by the letter ‘s’ and the figurative element recalling a traditional pub sign, would not be perceived as clearly describing an organic product. Finally, taking into account the nature of the goods at issue, the relevant public and the differences between the signs, it concluded that any likelihood of confusion between the marks at issue must be excluded.

53      The applicant opposes the findings of the Board of Appeal concerning the global assessment of the likelihood of confusion and maintains that consumers will perceive the word ‘green’ in the earlier mark as indicating the trade mark for the product by virtue of its distinctive character in connection with beers, on the one hand, and on the other hand because the house mark AMBAR is at present followed by the sub-brand identifying the type of beer.

54      As is correctly stated by OHIM, the word ‘ambar’ is not a term widely used in Spain to describe beer, although it refers to a fossilised resin of a yellowish colour similar to that of beer. As to the word ‘green’, which is a word in current use indicating in the language of the food market and of marketing in general, organic products, it would be interpreted as a line of organic beer under the AMBAR mark.

55      Therefore, the Board of Appeal did not err in finding, at paragraph 24 of the contested decision, that the word ‘green’ would not be perceived as an original and distinctive element but rather as being descriptive of organic beer and that the word ‘ambar’ would attract more attention from consumers.

56      Consequently, it must be held, in the light of the foregoing and having regard to the lack of conceptual similarity, to the low degree of visual and phonetic similarity between the marks and to the fact that the relevant public is the average consumer with a normal, even low, level of attention, that the Board of Appeal was fully entitled to hold that there was no likelihood of confusion between the marks at issue in the mind of the relevant public despite the identical nature of the goods covered by these marks.

57      It follows from all the foregoing considerations that the single plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is unfounded.

58      Accordingly, the application must be dismissed.

 Costs

59      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.

60      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 (ninth chamber)

hereby:

1.      Dismisses the action;

2.      Orders La Zaragozana, S.A. to pay the costs.

Delivered in open court in Luxembourg on 21 May 2015.

[Signatures]

* Language of the case: English.

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