Judgment — ECLI:EU:T:2009:85
Date: 2009-03-25
Language of the case: English
Court formation: Fifth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks applied for;Actions before the Community Courts;Interpretation of a judgment;General;Similarity between marks;Opposition proceedings
Procedure: Action for annulment - unfounded
Origin: Germany

summary of those observations is in fact contained in paragraph 6 of the 2002 decision. 57 Following the annulment of the 2002 decision by the Court of Justice, the case was reallocated to the Second Board of Appeal, which was called upon, after re-examination of the case, to rule on the appeal brought by the applicant against the decision of the Opposition Division, which had rejected the opposition. 58 As was pointed out during examination of the first plea in law, the Second Board of Appeal, by the contested decision, dismissed the applicant’s appeal on the ground that, contrary to what was claimed by the applicant, the mark applied for and the earlier mark were neither identical nor similar. 59 There is no indication at all in the contested decision that the Second Board of Appeal, when it adopted that decision, relied on matters of law or of fact different from those available to the Third Board of Appeal when it adopted the 2002 decision and on which the applicant had been able to submit observations. That is made all the more evident by the fact that the Second Board of Appeal largely reproduced the reasoning of the 2002 decision concerning the visual, phonetic and conceptual comparison of the signs at issue. 60 While it is, admittedly, correct that the Second Board of Appeal drew from the reasoning of the 2002 decision, reproduced in its own decision, a conclusion concerning the lack of similarity between the two marks at issue, which was not, as such, contained in the 2002 decision, the fact remains that, with regard to the final position that the Second Board of Appeal intended to adopt, the latter was not in any way bound, in the light of the case-law referred to in paragraph 55 above, to hear the applicant again before adopting its decision. 61 The applicant nevertheless claims, essentially, that the judgment in OHIM v Kaul, cited in paragraph 13 above, was a new legal issue on which it should have been heard, before the contested decision was adopted. 62 In that same context, the applicant maintains that there is a presumption that where a judgment annulling a measure such as the judgment in OHIM v Kaul, cited in paragraph 13 above, can be interpreted in a number of ways, the version most favourable to the applicant should be preferred. 63 In response to that argument, it must be pointed out that, under Article 43 of the Statute of the Court, if the meaning or scope of a judgment is in doubt, it is for the Court to construe it. Therefore, there is no presumption such as that claimed by the applicant and the Second Board of Appeal was not bound to hear it concerning the interpretation of OHIM v Kaul, cited in paragraph 13 above. If the applicant or OHIM, both parties to the proceedings before the Court of Justice, believed there to be a doubt as to the interpretation of that judgment, it was for them to bring the matter before the Court. 64 With regard to the question whether, before adoption of the contested decision, the Second Board of Appeal should have heard the applicant again concerning the application of Article 74(2) of Regulation No 40/94, following the clarification as to the interpretation and application of that provision given by the judgment in OHIM v Kaul, cited in paragraph 13 above, it suffices to recall that, even if the refusal of the Second Board of Appeal to take into consideration, in the exercise of its discretion deriving from Article 74(2) of Regulation No 40/94, the facts and evidence concerning the supposedly well-known character of the earlier mark was vitiated by an error of law, such an error would have no bearing on the solution adopted in the contested decision. 65 Since, according to the case-law referred to in paragraph 55 above, the right to be heard under Article 73 of Regulation No 40/94 extends, in particular, to the matters of law which form the basis of the decision, the Second Board of Appeal was not bound to hear the applicant on the application of Article 74(2) of Regulation No 40/94, since the facts and evidence concerning the well-known character of the earlier mark, relied on on the basis of that provision, were not part of the basis of the contested decision. 66 It follows from all the foregoing that the second plea in law must be rejected. The third plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94 67 The applicant claims that the Board of Appeal infringed Article 8(1)(b) of Regulation No 40/94. It maintains in that regard, first, that the Board of Appeal failed to examine the facts and arguments which it raised, including those put forward during the proceedings before the Court of First Instance and the Court of Justice. The Board of Appeal also failed to take into account the declaration by the OHIM representative, made at the hearings both before the Court of First Instance and the Court of Justice in the proceedings which led to OHIM v Kaul, cited in paragraph 13 above, that if the supposedly well-known character of the earlier mark was proved, the marks at issue would be sufficiently similar to demonstrate a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. 68 Second, the conclusion of the contested decision that the marks at issue were not visually or phonetically similar in any way, was mistaken and disregarded the case-law concerning the enhanced protection enjoyed by marks with a highly distinctive character. 69 Third, and finally, the Board of Appeal did not sufficiently take into account the ‘function of trademark protection’ and the interaction between the different criteria to be taken into consideration in the assessment of the likelihood of confusion. 70 OHIM contests the applicant’s arguments. 71 As a preliminary point, the complaints of the applicant alleging that the Board of Appeal disregarded, first, the case-law relating to the enhanced protection enjoyed by marks with a highly distinctive character and, second, the interdependence of the different criteria to be taken into consideration in the global assessment of the likelihood of confusion, must be rejected as irrelevant. 72 As noted in the examination of the first plea, the rejection of the opposition in this case was based on the absence of any similarity between the marks at issue and not on a global assessment of the likelihood of confusion. 73 Should, therefore, the reasons given in the contested decision, including those of the 2002 decision which were incorporated in paragraph 23 of the contested decision, reveal any error of law regarding the interdependence between the various criteria which have to be taken into account in the global assessment of the likelihood of confusion, such an error could not result in the annulment of the contested decision, which is properly based, in law, on the finding that the mark applied for and the earlier mark are neither identical nor similar. 74 With regard to the complaint alleging disregard by the Board of Appeal of the ‘function of trademark protection’, it should be pointed out that the applicant claims in that context that, apart from its function as an indicator of the commercial origin and of the quality of the goods or services and as an advertising tool, a trademark also fulfils a competitive function by securing a competitive advantage for the proprietor. 75 These arguments, even if correct, are not in any way capable of affecting the assessment as to whether the two marks are similar. That complaint is therefore also irrelevant. 76 With regard to the complaint alleging erroneous definition of the relevant public, to be taken into account in the assessment of the likelihood of confusion in the present case, the applicant does not contest the conclusion of the 2002 decision, reproduced in the contested decision, according to which that public is made up of producers of food and confectionery products. It challenges, rather, the assertions, made in paragraph 34 of the 2002 decision and reproduced in paragraph 23 of the contested decision, that the choice, by the specialised public concerned, of one or other of the types of goods covered by the marks at issue ‘will only minimally be affected or influenced by the marking accompanying the products and ingredients [it] uses in [its] manufacturing concerns’ and, ‘[i]n this type of situation, before a finding of a likelihood of confusion can be arrived at there must be a high degree of similarity between the marks’. 77 That is a complaint that is therefore also irrelevant. There is no need to determine what degree of similarity of the marks at issue would, in the present case, be enough to result in a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, it being sufficient to point out that the Board of Appeal concluded that those marks were not at all similar. 78 It suffices, therefore, in order to respond to this plea in law, to examine that latter conclusion in the contested decision, taking into account, first, the perception of the marks at issue by the public referred to above, which was correctly identified by the Board of Appeal in the contested decision, and second, the applicant’s argument regarding the alleged errors committed by the Board of Appeal in the visual and phonetic comparison of those marks. 79 In paragraph 27 of the 2002 decision, reproduced in paragraph 23 of the contested decision, the Board of Appeal first carried out a visual comparison of the two marks at issue. In that regard, the Board of Appeal pointed out that the fact that those marks both consisted of five letters was no more than a ‘likely coincidence’. In addition, it added that, although those marks shared the letter ‘a’ and the ending ‘ol’, they ‘clearly differ[ed]’ visually. 80 The applicant contests those considerations, which it regards as empty and meaningless. In its view, the Board of Appeal, disregarding the case-law, failed to explain why the fact that the marks at issue had the same number of letters had no influence on the assessment of their similarity. 81 That argument cannot be upheld. The fact that two word marks have the same number of letters is not, as such, of any particular significance for the public targeted by those marks, even for a specialised public such as that in the present case. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. 82 In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters. 83 What matters in the assessment of the visual similarity of two word marks is, rather, the presence, in each of them, of several letters in the same order. Thus, the Board of Appeal rightly did not attach particular importance to the presence, in the two marks at issue, of the letter ‘a’, that being the first letter in the mark applied for, followed by the letters ‘rc’, whereas it is the second letter in the earlier mark, situated between two different letters, namely ‘c’ and ‘p’. 84 By contrast, the ending ‘ol’ of the marks at issue constitutes, as the Board of Appeal accepted, a common element of the marks. However, since that group of letters comes at the end of those marks and is preceded, in each, by completely different groups of letters (respectively, ‘arc’ and ‘cap’), the Board of Appeal concluded, correctly, that that ending was not capable of calling into question the conclusion that those marks, considered as a whole, were not visually similar. 85 That is all the more true because, as the Court of First Instance has repeatedly held, the consumer generally pays greater attention to the beginning of a mark than to the end (see Case T-133/05 Meric v OHIM– Arbora & Ausonia (PAM‑PIM’S BABY-PROP) [2006] ECR II-2737, paragraph 51, and l’Altra Moda, cited in paragraph 44 above, at paragraph 43). 86 With regard, next, to the phonetic comparison between the two marks at issue, in paragraph 28 of the 2002 decision, reproduced in paragraph 23 of the contested decision, the Board of Appeal reviewed various likely pronunciations of the mark applied for, before concluding that the pronunciation of the marks at issue in the Member States would vary, even though those marks would each have two syllables. 87 Those considerations must be accepted. Contrary to what is claimed by the applicant, the Board of Appeal cannot be criticised for basing its decision on the ‘likely’ pronunciations of the mark applied for. Since it is an invented term which does not correspond to any existing word in a Community language, as long as it has not been registered and used to describe goods, it can only be a matter of its likely pronunciation by the public concerned. 88 Moreover, while the applicant criticises the competent OHIM bodies for not having examined the pronunciation of the two marks at issue in all the languages of the Member States of the Community, it did not specify the language or languages, supposedly ignored by the Board of Appeal, in which the two marks would be pronounced in such as way as to justify or prove a phonetic similarity between them. 89 The fact, also relied upon by the applicant, that the marks at issue both have the same number of syllables (two), is of no particular importance for the perception of the marks at issue by the public in general and, in particular, by the relevant specialised public and cannot, as such, lead to the conclusion that those marks are phonetically similar. 90 In those circumstances, and taking into account the fact that, whatever the exact pronunciation of the initial distinctive group of letters ‘arc’ in the mark applied for, it will in any case differ considerably from that of the initial group of letters ‘cap’ in the earlier mark, the presence, at the end of the two marks, of the group of letters ‘ol’, which is likely to be pronounced in the same way in both cases, does not suffice to make those marks, taken as a whole, phonetically similar. 91 Finally, as stated in paragraph 29 of the 2002 decision, reproduced in the contested decision, neither of the two marks has a meaning linking it to a particular concept and, consequently, they cannot be conceptually similar. That conclusion is not, moreover, contested by the applicant. 92 On the basis of the foregoing findings and arguments, it must be held that the Second Board of Appeal did not infringe Article 8(1)(b) of Regulation No 40/94 when it found, in paragraphs 26 to 28 of the contested decision, that the marks at issue were not in any way identical or similar and that, therefore, that provision was not applicable, even if the goods covered by the marks were identical. 93 With regard to the applicant’s complaint that the Board of Appeal failed to respond to its arguments, including those put forward before the Community Courts in the proceedings which led to the judgment in OHIM v Kaul, cited in paragraph 13 above, the applicant has completely failed to specify the arguments supposedly ignored by the Second Board of Appeal. 94 In that regard, it should be pointed out that, in any case, the Second Board of Appeal, when adopting the contested decision, had to take into account only the arguments contained in the observations submitted by the applicant before the various OHIM bodies. By contrast, the arguments put forward by the applicant during the proceedings before the Community Courts were not addressed to OHIM and the Board of Appeal was not obliged to take them into consideration or to respond specifically to them in its decision. 95 With regard to the arguments put forward by the applicant before the OHIM bodies, it is evident from reading the file relating to the proceedings before the Board of Appeal, forwarded to the Court of First Instance pursuant to Article 133(3) of the Rules of Procedure of the Court of First Instance, that, in the notice of opposition which it submitted, in its observations before the Opposition Division, and in the statement containing the grounds of its appeal to the Board of Appeal, the applicant put forward arguments concerning the relevant public, the identical or similar character of the goods covered by the marks at issue, the similar character of those marks and the supposedly highly distinctive character of the earlier mark. 96 Those questions and the arguments of the applicant pertaining to them were examined by the Board of Appeal in the contested decision. The applicant’s complaint must therefore be rejected as unfounded. 97 The applicant’s complaint relating to the disregard, by the Board of Appeal, of the position supposedly adopted by the OHIM representative during the proceedings before the Community Courts must also be rejected. 98 Decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community Courts, and not on the basis of a previous practice of OHIM (see Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑0000, paragraph 45 and the case-law cited). 99 Those considerations are all the more valid as regards a declaration supposedly made by the OHIM representative before the Community Courts, particularly because, in the light of the independence of the President and members of the Boards of Appeal of OHIM, laid down in Article 131(4) of Regulation No 40/94, they are not bound by the position adopted by OHIM in a dispute before the Community Courts. 100 Consequently, even if the OHIM representative did in fact make the declaration alleged by the applicant, the Board of Appeal was not bound by it and did not have to explain, in the contested decision, the grounds on which it disregarded it. 101 It follows from all the foregoing considerations that the present plea is not well founded and must be rejected and that, in consequence, the action must be dismissed in its entirety. Costs 102 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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 forms of order sought by OHIM. On those grounds, THE COURT OF FIRST INSTANCE (Fifth Chamber) hereby: 1. Dismisses the action; 2. Orders Kaul GmbH to pay the costs. Vilaras Prek Ciucǎ Delivered in open court in Luxembourg on 25 March 2009. [Signatures] * Language of the case: English.