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

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

30 January 2020 (*)

(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing a tree — Earlier EU and international figurative marks representing an ‘arbre magique’ (magic tree) — Relative grounds for refusal — No likelihood of confusion — No similarity between the signs — Article 8(1)(b) of Regulation (EU) 2017/1001 — No damage to reputation — Article 8(5) of Regulation 2017/1001)

In Case T‑559/19,

Julius Sämann Ltd, established in Thayngen (Switzerland), represented by D. Parrish, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by K. Kompari, acting as Agent,

defendant,

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

Maharishi Vedic University Ltd, established in Mgarr (Malta), represented by L. Prehn, lawyer,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 16 May 2019 (Case R 1743/2018‑1), relating to opposition proceedings between Julius Sämann and Maharishi Vedic University,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann, President, I.S. Forrester (Rapporteur) and O. Spineanu‑Matei, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 12 August 2019,

having regard to the response of EUIPO lodged at the Court Registry on 7 November 2019,

having regard to the response of the intervener lodged at the Court Registry on 21 October 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 18 July 2016, the intervener, Maharishi Vedic University Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought come within Classes 3 and 5 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.

4        The trade mark application was published in European Union Trade Marks Bulletin No 222/2016 of 23 November 2016.

5        On 22 February 2017, the applicant, Julius Sämann Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier rights:

–        the EU figurative mark, registered under No 91 991, as well as the international registration designating the European Union, registered under No 612 525, reproduced below, designating ‘air-fresheners’ and ‘air freshening preparations’, in Class 5:

–        the international registration designating the European Union, registered under No 328 915, reproduced below, and designating ‘produits cosmétiques, désinfectants’ (cosmetics, disinfectants) in Class 3, and ‘produits pour améliorer l'air, désinfectants’ (products for improving the air, disinfectants) in Class 5:

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).

8        On 27 July 2018, the Opposition Division rejected the opposition in its entirety.

9        On 5 September 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10      By decision of 16 May 2019 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In the first place, it found that the conditions for upholding the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 had not been satisfied. After carrying out a visual comparison of the signs at issue, the Board of Appeal stated that the graphical depictions of those signs were totally different. It added that, since those signs were associated with completely different types of tree, they were conceptually and phonetically different, with the result that there was no likelihood of confusion on the part of the relevant public. In the second place, the Board of Appeal found that, since the earlier marks were different to the mark applied for, the conditions for upholding the opposition on the basis of Article 8(5) of Regulation 2017/1001 had not been satisfied.

 Events subsequent to the bringing of the action

11      On 24 October 2019, the Board of Appeal adopted a corrigendum whereby it rectified the final sentence of paragraph 35 of the contested decision, which should read as follows: ‘following this approach, which has not been contested by the parties, the Board endorses the findings of the Opposition Division that because of the dissimilarity between the marks in conflict it is not likely to establish a link between them’.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

13      EUIPO and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

14      In support of the action, the applicant claims, in essence, that the Board of Appeal wrongly found that the signs at issue were different and that, consequently, it refused to uphold the opposition on the grounds referred to in Article 8(1)(b) of Regulation 2017/1001 and Article 8(5) of that regulation.

15      As a preliminary point, it should be observed that the Board of Appeal’s corrigendum to the contested decision (see paragraph 11 above) addresses the applicant’s argument that the Board of Appeal could not (i) find that the signs at issue were different and (ii) endorse, in paragraph 35 of the contested decision, ‘the findings of the Opposition Division that the low degree of similarity between the marks in conflict [was] not likely to establish a link between them’.

 Infringement of Article 8(1)(b) of Regulation 2017/1001

16      In accordance with Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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.

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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 33 and the case-law cited). 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 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 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 44 and the case-law cited).

18      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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 judgments of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited, and of 22 September 2019, SUN CALI, T‑512/15, EU:T:2016:527, paragraph 45).

19      As a preliminary point, it should be observed that the definition of the relevant public is not made explicitly clear in the contested decision. However, in paragraph 17 of that decision, the Board of Appeal found that the relevant territory was the European Union and, in paragraph 25 of the decision, it is stated that the ‘average consumer’ normally perceives a sign as a whole. Consequently, it must be found that the Board of Appeal intended to refer to the ‘average consumer’ of goods covered by the earlier mark, without that finding being disputed by the applicant.

 The comparison of the signs

20      It is settled case-law that two marks are similar when, 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, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43).

21      The global assessment of the likelihood of confusion must, in 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, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

22      It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right to hold that the signs at issue were not similar, with the result that there was no likelihood of confusion on the part of the relevant public.

23      In the present case, the Board of Appeal stated that the shared characteristics of the trees represented by the signs at issue were not sufficient for it to be found that those signs were similar. Since the figurative elements of those signs were associated with totally different types of tree, they presented no visual, phonetic or conceptual similarities.

24      The applicant claims that the Board of Appeal erred in its assessment of the visual, phonetic and conceptual similarities between the signs at issue. First, it argues that the distinctive and dominant elements of those signs, which will be kept in mind by the relevant public, consist in the unrealistic representation of a symmetrical tree in an upright position, the crown of which dominates the shape while the trunk is short and connected to the base of the tree, so that those signs are visually similar. Secondly, the applicant takes the view that purely figurative signs can be subject to a phonetic assessment and that, in the present case, the signs at issue are both associated with the word ‘tree’, with the result that they are phonetically similar. Lastly, the applicant claims that the signs at issue have an identical or analogous semantic content, since both represent a tree, with the effect that they are conceptually identical.

25      EUIPO and the intervener contest the arguments put forward by the applicant.

26      First of all, as regards visual similarity, it should be recalled first that the fact that a mark is registered in colour or, on the contrary, does not designate any specific colour cannot be regarded as a wholly negligible element in the eyes of consumers (judgments of 9 April 2014, Pico Food v OHIM — Sobieraj (MILANÓWEK CREAM FUDGE), T‑623/11, EU:T:2014:199, paragraph 38, and of 18 March 2015, Intermark v OHIM — Coca-Cola (RIENERGY Cola), T‑384/13, not published, EU:T:2015:158, paragraph 44). Thus it must be observed that the figurative element of the earlier marks, which represents the silhouette of a fir tree, is black whereas the figurative elements of the mark applied for, representing a deciduous tree depicted in broad lines and set in a circle, are white, brown, yellow and different shades of blue.

27      Secondly, it should be noted that the signs at issue present other differences. The mark applied for represents a deciduous tree, with a broad crown, a straight trunk, large roots and branches covered in leaves; four of those branches carry a round shape which appears to represent a fruit or a flower.

28      As for the earlier marks, these represent the silhouette of a fir tree with a short trunk, set on a rectangular base and, in respect of international registration No 328 915, bearing a white rectangle containing the word element ‘arbre magique’ (magic tree).

29      It should be borne in mind that the average consumer only rarely has the chance to make a direct comparison between the marks, but must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 25 June 2010, MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, EU:T:2010:256, paragraph 28 and the case-law cited).

30      Thus, even if the consumer does not memorise the details of the signs at issue, the mere fact that those signs both represent trees is not sufficient to find that they are visually similar, on account of the differences between them, relating — with regard to the mark applied for — to the broad lines depicting a tree with many deciduous leaves and broad roots in a blue circle and — with regard to the earlier mark — to the representation of the silhouette of a black fir tree on a rectangular base and, in respect of international registration No 328 915, accompanied by the word element ‘arbre magique’.

31      In the light of the foregoing, the Board of Appeal rightly found that there was no visual similarity between the signs at issue.

32      In the second place, as regards phonetic similarity, it is clear from the case-law that a phonetic comparison of the signs at issue is irrelevant in the examination of the similarity of a purely figurative mark with another mark. A figurative mark without word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. Such a description, however, necessarily coincides with either the visual perception or the conceptual perception of the mark in question. Consequently, it is not necessary to examine separately the phonetic perception of a figurative mark lacking word elements and to compare it with the phonetic perception of other marks (judgment of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 46).

33      In any event, if, as the applicant submits, when a purely figurative mark represents a shape which the relevant public is easily able to recognise and associate with a specific, concrete word, it will use that word to refer to the mark whereas, if a figurative mark also includes a word element, it will in general be by using that word element that the relevant public will refer to the mark (judgment of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 53). However, that implies that the semantic content of the purely figurative mark can immediately be associated with a specific, concrete word (see judgment of 3 May 2017, Environmental Manufacturing v EUIPO — Société Elmar Wolf (Representation of a wolf’s head), T‑681/15, not published, EU:T:2017:296, paragraph 53 and the case-law cited).

34      In the present case, the figurative elements of the mark applied for depict a deciduous tree, the branches of which are covered with leaves, with four branches bearing a fruit or flower; the tree has large roots and may be perceived as a reference to the symbol of ‘the tree of life’, placed in a circle. It is clear that no specific word can be attributed with certainty to the mark applied for.

35      On the other hand, it should be observed that the figurative element of the earlier marks represents the silhouette of a fir tree and, in respect of international registration No 328 915, accompanied by the word element ‘arbre magique’, it should be noted that the relevant public will refer orally to that mark by pronouncing its word element.

36      Consequently, even supposing that a phonetic comparison of the signs at issue could be made — which would involve pronouncing words — when the fact of recognising or associating a shape with a word does not necessarily mean that that word will be pronounced, the Board of Appeal rightly found that it was not possible to assert that those signs would both be referred to by the generic word ‘tree’, with the result that they are not phonetically similar.

37      Lastly, as regards conceptual similarity, it should be observed that, according to the case-law, conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (see judgment of 11 April 2019, Užstato sistemos administratorius v EUIPO — DPG Deutsche Pfandsystem(Representation of a bottle with an arrow), T‑477/18, not published, EU:T:2019:240, paragraph 45 and the case-law cited; see also, to that effect, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 20 September 2017, Jordi Nogues v EUIPO — Grupo Osborne (BADTORO), T‑386/15, not published, EU:T:2017:632, paragraph 76).

38      In the present case, it must be found — as the Board of Appeal did — that, conceptually, the signs at issue do not refer to the same concept. As regards the earlier marks, it should be observed that the figurative element evokes the concept of a fir tree. The word element of international registration No 328 915 refers the relevant public to the concept of a magic tree. As regards the mark applied for, it should be noted that the relevant public will perceive it as referring to the concept of a deciduous tree, or the symbol of ‘the tree of life’. Those signs are therefore made up of figurative elements — and also of a word element, in the case of international registration No 328 915 — which convey clear differences that the relevant public will easily perceive in their semantic content.

39      As the Board of Appeal rightly observes, the mere fact that there is a generic word ‘tree’ which serves to describe the semantic content of the signs at issue is not such as to establish conceptual similarity. In that connection, it should be noted that the conflicting marks evoke the concept of ‘tree’ only in an indirect manner. It follows from the findings set out in paragraph 38 above that those signs will not be perceived as representing an unidentifiable tree but rather as evoking (i) the silhouette of a fir tree, or an ‘arbre magique’ in the case of international registration No 328 915, and (ii) a deciduous tree, or the symbol of ‘the tree of life’.

40      It must be concluded, therefore, that the Board of Appeal was right in finding that the signs at issue were not similar.

 The likelihood of confusion

41      The Board of Appeal held that, as the similarity of the signs is a necessary condition for finding a likelihood of confusion, the opposition had to be rejected.

42      As noted in paragraph 18 above, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services which they cover are identical or similar. These requirements are cumulative.

43      In the present case, the first of those conditions is lacking.

44      If it is established that there is no similarity between the signs at issue, a likelihood of confusion between those signs may be excluded without there being any need to carry out a global assessment, taking into account all relevant factors, of the perception the relevant public has of the signs and of the goods or services at issue (see judgment of 25 November 2015, Sephora v OHIM — Mayfield Trading (Representation of two undulating vertical lines), T‑320/14, not published, EU:T:2015:882, paragraph 60 and the case-law cited).

45      Consequently, as the first of the three cumulative conditions for the application of Article 8(1) of Regulation 2017/1001 was not satisfied, the Board of Appeal rightly decided to reject the opposition filed by the applicant on the basis of that provision.

46      The decision of a Board of Appeal of EUIPO on which the applicant relies in support of its arguments cannot call that finding into question.

47      In accordance with settled case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered or annulled. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77 and the case-law cited).

48      In the present case, it is clear from paragraphs 26 to 40 above that the Board of Appeal rightly found that the signs at issue presented no similarity.

 The breach of Article 8(5) of Regulation 2017/1001

49      The applicant submits that it has duly substantiated its claims based on Article 8(5) of Regulation 2017/1001.

50      In that connection, it should be observed that, under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

51      It must be pointed out that the condition that the signs at issue must be identical or similar is common to Article 8(1)(b) and Article 8(5) of that regulation (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 38).

52      It follows that if, in examining the conditions for the application of Article 8(1)(b) of that regulation, the General Court concludes that there is no similarity between the signs at issue, paragraph 5 of Article 8 also necessarily does not apply to the case in point (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 39).

53      In the present case, it suffices to recall that it is clear from paragraphs 26 to 40 above that the Board of Appeal rightly found that there was no similarity between the signs at issue. Accordingly, it also rightly found that the first condition for the application of Article 8(5) of Regulation 2017/1001, relating to the existence of an identity or a similarity between the signs at issue, had not been satisfied in the present case.

54      It follows from all of the foregoing that the action must be dismissed in its entirety.

 Costs

55      Under Article 134(1) 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.

56      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and the intervener, as applied for by them.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Julius Sämann Ltd to pay the costs.

Delivered in open court in Luxembourg on 30 January 2020.

*      Language of the case: English.

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