Judgment — ECLI:EU:T:2010:23
Date: 2010-01-27
Language of the case: English
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: Germany

summary in the contested decision, the Board of Appeal correctly reflected the Opposition Division’s finding that the signs are merely ‘similar’, whereas in the context of its own assessment it stated that, according to the Opposition Division’s decision, they are ‘highly’ similar. 19 The Court notes that the signs are phonetically similar to a certain degree because they both contain the syllables ‘frut’ and ‘sol’. However, the inversion of these elements between the two marks will affect the aural perception of them by consumers. As the applicant points out, the two marks have different first syllables, ‘sol’ as compared with ‘fru’, different last syllables, ‘ta’ as compared with ‘sol’, and a different sequence of vowels, namely ‘u‑i‑o’ as compared with ‘o‑u‑a’. Moreover, as noted in the previous paragraph, they do not contain identical, but only similar elements, since one vowel is completely different in each mark and the ‘t’ is doubled in ‘Solfrutta’, leading to a difference of pronunciation in some Community languages, notably Italian. Thus, contrary to the findings of the Board of Appeal, the two marks display significant phonetic differences and the residual similarity between them is therefore weak. 20 As far as conceptual similarity is concerned, the Court again notes that the Board of Appeal mistakenly asserted that the Opposition Division had found conceptual similarity between the signs to be high whereas in fact it appears from the contested decision itself that the Opposition Division did not qualify in that way the conceptual similarity it found. 21 Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 25), the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 51). That being so, it is necessary to distinguish between the perception by the public in those Member States, such as Italy and Spain, where the elements ‘sol’ and ‘frut’ are generally recognisable and can be understood as alluding to ‘sun’ and ‘fruit’ respectively, and the perception by the public in those Member States, such as Hungary, Finland and Lithuania, where those elements have no such close equivalent in their national languages. 22 In the first category of Member States, consumers are liable to associate both marks with the notions of ‘fruit’ and ‘sunshine’. Contrary to the applicant’s argument that ‘FRUTISOL’ evokes the idea of the sun shining on fruits whereas ‘Solfrutta’ evokes a fruit ripened under the sun, both marks are liable to be perceived by the public in such Member States as evoking, in a general and unspecific way, the ripening of fruits in the sun. There will consequently be a certain level of conceptual similarity between them. However, since neither sign consists exclusively of two actual words in any Community language, joined together as one without any modification in their spelling, this conceptual similarity will not be high, contrary to the Board of Appeal’s conclusion. 23 In Member States of the second category, consumers will not perceive any conceptual similarity between the signs since they will not attach any particular meaning to the constituent parts of either sign. 24 In the light of the above analysis, the Court concludes that, taken overall, the two signs are only weakly similar in those Member States where the elements ‘sol’ and ‘frut’ are recognisable and can be understood as referring to ‘sun’ and ‘fruit’ respectively, and even more weakly similar in those Member States where those elements have no such close equivalent in their national languages. The likelihood of confusion 25 In challenging the Board of Appeal’s overall assessment of the likelihood of confusion, the applicant relies on the argument that since ‘FRUTI’ and ‘SOL’ are both descriptive elements, at least as far as fruit juices and other fruit-based beverages are concerned, the earlier mark’s distinctive character per se is limited. It must be observed, however, that those elements are, as the applicant implicitly concedes, in no way descriptive of some of the goods at issue, in particular those such as tea and coffee in Class 30. Moreover, as has been noted at paragraphs 21 and 23 above, in certain Member States, such as Hungary, Finland and Lithuania, those elements do not suggest any concrete meaning or resemble particular words in the national language and cannot therefore be regarded as descriptive, even of fruit juices and other fruit-based beverages, in those parts of the European Union. 26 Since it is not therefore possible to consider, on the basis of those arguments of the applicant, that the earlier mark was only weakly distinctive for all of the goods at issue throughout the European Union, the Court will first examine whether there was a likelihood of confusion regardless of that contention. 27 It is recalled that, for the reasons stated at paragraphs 17 to 24 above, the two signs are not highly similar, as the Board of Appeal found, but are only weakly similar, both in those Member States where there is a certain degree of conceptual similarity, and, a fortiori, in those Member States where the signs are similar only visually and phonetically. 28 OHIM argues that the two signs are fanciful by virtue of the fact that they consist of two words joined together, but although this might possibly strengthen the distinctiveness of the earlier mark to a certain extent in some Member States, it in fact reinforces the applicant’s argument that there is no likelihood of confusion between the two marks at issue. To the extent that a new word made up of two separate elements that have a meaning, at least in some Member States, is fanciful, that novelty emphasises the unusual nature of each sign. Consumers are therefore more likely to perceive each mark as being separately devised by a commercial undertaking wishing to combine those word elements. 29 In evaluating the Board of Appeal’s assessment of the likelihood of confusion in the present case, the Court considers that, although it is not disputed that the goods covered by the two trade marks include goods that are identical or similar, the Board of Appeal made a significant error in finding that the two signs at issue are highly similar. That error undermines the Board of Appeal’s assessment of the likelihood of confusion. 30 In the light of the above analysis, the contested decision must be annulled. Since the Court has taken no account of the applicant’s evidence, the admissibility of which is contested by OHIM, concerning the alleged existence of other Community marks containing similar elements to the two marks at issue, it is not necessary to rule on that admissibility question in the present judgment. Costs 31 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. Since OHIM has been unsuccessful it must be ordered to pay the costs, in accordance with the form of order sought by the applicant. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 21 May 2008 (Case R 1679/2007-2); 2. Orders OHIM to pay the costs. Forwood Moavero Milanesi Schwarcz Delivered in open court in Luxembourg on 27 January 2010. [Signatures] * Language of the case: English.