JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
27 January 2010 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark Solfrutta – Earlier Community word mark FRUTISOL – Relative grounds for refusal – Likelihood of confusion – Partial refusal of registration – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑331/08,
REWE-Zentral AG, established in Cologne (Germany), represented by M. Kinkeldey and A. Bognár, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Grupo Corporativo Teype, SL, established in Madrid (Spain),
ACTION against the decision of the Second Board of Appeal of OHIM of 21 May 2008 (Case R 1679/2007-2) relating to opposition proceedings between Grupo Corporativo Teype, SL and REWE-Zentral AG,
THE GENERAL COURT (Seventh Chamber),
composed of N.J. Forwood (Rapporteur), President, E. Moavero Milanesi and J. Schwarcz, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 11 August 2008,
having regard to the response lodged at the Registry on 1 December 2008,
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
Background to the case
1        On 2 November 2004, the applicant, REWE-Zentral AG, filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The trade mark in respect of which registration was sought is the word mark Solfrutta. The goods in respect of which registration of the trade mark was applied for are in 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 to the following description:
–        Class 29: Milk and milk products, namely drinking milk, sour milk, buttermilk, non-alcoholic mixed drinks containing milk, chocolate drinks, kefir, cream, desserts, predominantly consisting of milk and flavourings with gelatine and/or starch being a binding agent.
–        Class 30: Sauces, including salad dressings, fruit sauces, ketchup, horseradish, capers; coffee, tea, cocoa, chocolate, chocolate goods, cocoa-based powders for making beverages; chocolate-based beverages, marzipan, nougat, marzipan and nougat products; spreads, made primarily using sugar, cocoa and/or nougat; pralines, including filled pralines; sugar, confectionery, sweetmeats (candy), in particular boiled, peppermint and fruit sweets, chews, lollipops, chewing gum; rice, tapioca, artificial coffee; flour and preparations made from cereals, wholemeal cereals, namely rice, wheat, oats, barley, rye, millet, maize and buckwheat, the aforesaid goods also in the form of mixtures and other preparations; wheat bran, wheat germ, cornflour, maize semolina, linseed; muesli and muesli bars (mainly consisting of cereal flakes with added dried fruit, nuts), cereals, popcorn; pizzas; blancmanges; bread, bread rolls, pastry and confectionery; pasta and wholemeal pasta, in particular noodles; ices and ice-cream; honey, treacle, yeast, baking powder; salt; mustard; vinegar; spices, mixed spices, pepper corns; savoury biscuits, crisps made from cereals, and other snacks, included in Class 30: dry and liquid ready-to-serve meals, mainly consisting of pasta or rice; all the aforesaid goods (where possible) also frozen or preserved, sterilised or homogenised.
–        Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, vegetable juices; syrups and other preparations for making beverages; whey beverages; instant powdered drinks.
3        The application was published in Community Trade Marks Bulletin No 26/2005 of 27 June 2005.
4        On 27 September 2005, Tomás Pascal Sanz (‘the original opponent’) filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against the registration of the published trade mark. In support of its opposition, the original opponent alleged a likelihood of confusion within the meaning of Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009). The opposition was based on the earlier Community trade mark registration No 1687722 for the word mark FRUTISOL, registered on 3 August 2001 in respect of ‘aerated drinks and other non-alcoholic drinks; syrups for making beverages; fruit juices; syrups’ in Class 32, and also on Spanish trademark registration No 2018327, also for the word mark FRUTISOL, in respect of goods in Class 32.
5        The original opponent based its opposition on all the goods that are covered by its earlier Community trade mark and the Spanish mark and directed its opposition against all the goods covered by the applicant’s trade mark application. Upon checking the validity of the earlier rights, OHIM ascertained that the earlier Community mark had undergone a change of ownership and that the successor in title of the original opponent, Grupo Corporativo Teype, SL (‘the other party’), was now the opponent.
6        By decision of 29 August 2007, based solely on the earlier Community trade mark (‘the earlier mark’), in the absence of any evidence of transfer to the other party of the Spanish mark, the Opposition Division upheld the opposition in part and concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, in respect of the following goods: ‘coffee, tea, cocoa, chocolate, cocoa-based powders for making beverages; chocolate-based beverages’ in Class 30 and ‘fruit juices and syrups for making beverages, aerated drinks and other non-alcoholic drinks, vegetable juices, instant powdered drinks, whey beverages’ in Class 32. The Opposition Division dismissed the opposition as to the remainder.
7        On 31 October 2007, the applicant filed an appeal with OHIM against the decision of the Opposition Division pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
8        By decision of 21 May 2008 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal and gave the following reasons:
–        the assessment of the similarity between the goods as carried out by the Opposition Division was not challenged by the parties;
–        the signs are visually, phonetically and conceptually ‘highly similar’, as the Opposition Division concluded;
–        the fact that the elements ‘sol’ and ‘frut’ are common to both marks, though placed in inverse order, does not obviate the finding that the signs are similar overall;
–        an assessment of all the relevant factors present leads to the conclusion that there is a likelihood of confusion in the Community, whether or not the earlier mark has only a limited scope of protection.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
10      OHIM contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
Arguments of the parties
11      The applicant puts forward a single plea in law in support of its action, alleging infringement of Article 8(1)(b) of Regulation No 40/94. According to the applicant, the two signs at issue are not similar because although they consist of similar elements, those elements are presented in a different order. Moreover, ‘FRUTI’ and ‘SOL’ are both descriptive elements, at least as far as fruit juices and other fruit-based beverages are concerned, and the earlier mark’s distinctive character is therefore limited. The Board of Appeal reached an incorrect conclusion regarding likelihood of confusion because it failed to draw the consequences from that limited degree of distinctive character. In support of its arguments, the applicant lists a large number of existing Community trade marks containing the elements ‘fruti/frutta’ and ‘sol’. It also cites both previous OHIM decisions and decisions of the German courts in similar cases, where oppositions based on marks containing descriptive elements were dismissed.
12      OHIM notes that the applicant does not challenge the Board of Appeal’s assessment of the similarity of the goods at issue. It disputes the applicant’s arguments concerning the similarity of the signs and the likelihood of confusion and argues that the earlier mark has a normal degree of distinctiveness, at least in certain Member States. In that connection it notes, in particular, that the relevant public is made up of consumers throughout the European Union and that in certain Member States the elements making up the two signs have no meaning in the national language.
Findings of the Court
13      Under Article 8(1)(b) of Regulation No 40/94, 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.
14      According to settled case-law, the likelihood of confusion on the part of the public, defined as the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, must be assessed globally, 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraphs 16 and 17, and Case T‑162/01 Laboratorios RTB v OHIM– Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 32).
15      In the present case, the applicant does not contest the finding made by the Board of Appeal in the contested decision that the goods at issue covered by the Community mark applied for are similar to goods covered by the other party’s earlier mark. In fact it is apparent from those parts of the contested decision that summarise the decision of the Opposition Division and the appeal against it that some of the goods covered by the Community mark applied for were in fact found to be identical to goods covered by the earlier mark and that the applicant did not contest that finding before the Board of Appeal. Nor does the applicant call into question, before the Court, the Board of Appeal’s view that the relevant public is made up of average consumers throughout the European Union who are deemed to be informed, observant and circumspect.
The comparison of the signs
16      It should first be observed that a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (Case T‑211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II‑1297, paragraph 33). Thus, when a word mark is registered it is the word itself that is protected as a trade mark, regardless of any graphic form used (judgment of 22 May 2008 in Case T‑254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 43). The case in which word marks are written is not therefore an element of differentiation and in the present proceedings the fact that the earlier mark is written in lower case whereas the mark applied for is written in upper case is thus irrelevant.
17      In respect of visual similarity, it is not appropriate to state, as did the Board of Appeal in the contested decision, that simple inversion of two identical elements is generally insufficient to make marks different. On the contrary, in certain circumstances and in certain languages, inversion of a composite word’s two constituent elements can significantly change the overall visual perception of that word. In the present case, the two signs at issue are visually similar to some extent since they both contain the elements ‘frut’ and ‘sol’. However, the fact that those elements are presented in a different order means that the two marks are significantly different, since each mark begins with a completely different set of letters. That inversion, together with the fact that the letter ‘t’ is doubled in the mark ‘Solfrutta’, and the fact that the letter ‘a’ is placed after the ‘frut’ element in ‘Solfrutta’ whereas the letter ‘i’ is placed after it in the mark ‘FRUTISOL’, make the signs sufficiently different to undermine the Board of Appeal’s conclusion that the two marks are highly similar in visual terms. In fact the two marks are visually only very weakly similar.
18      As regards phonetic similarity it should first be observed that, in its own 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.