JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
25 November 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark masafi — Earlier national word mark masafi — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑249/14,
Masafi Co. LLC, established in Dubai (United Arab Emirates), represented by G. Hinarejos Mulliez, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Hd1 Ltd, established in Huddersfield (United Kingdom),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 17 February 2014 (Case R 1131/2013-4), concerning opposition proceedings between Hd1 Limited and Masafi Co. LLC,
THE GENERAL COURT (Sixth Chamber),
composed of S. Frimodt Nielsen, President, F. Dehousse (Rapporteur) and A.M. Collins, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 16 April 2014,
having regard to the response lodged at the Court Registry on 28 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 give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1        On 11 October 2011 the applicant, Masafi Co. LLC, 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 for which registration was sought 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, for each of those classes, to the following description:
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;
–        Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 216/2011 of 15 November 2011.
5        On 8 December 2011 Hd1 Ltd filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier United Kingdom word mark masafi, filed on 29 June 2010 and registered on 25 March 2011 under number 2551560.
7        The earlier mark was registered for goods in Classes 29, 30 and 32 corresponding, for each of those classes, to the following description:
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked vegetables; eggs, milk and milk products; edible oils and fats; prepared frozen meals for human consumption; prepared meals consisting principally of meat, fish, poultry and game; foodstuffs prepared in the form of meals; prepared food products containing meat or poultry being fillings for pastry cases; ready meals; foodstuffs prepared in the form of snacks’;
–        Class 30: ‘Flour and preparations made from cereals, bread, pastry and confectionery; sauces (condiments); spices; frozen dough, pastry, bread, confectionery; frozen pastry stuffed with meat; frozen pastry stuffed with meat and vegetables; frozen pastry stuffed with vegetables; pastry stuffed with meat; pastry stuffed with meat and vegetables; pastry stuffed with vegetables; ready meals; foodstuffs prepared in the form of snacks’;
–        Class 32: ‘Low alcoholic beverages containing not more than 1.2% by volume of alcohol; soft drink colas; energy drinks, sports drinks, isotonic beverages; beers, ales, porters, lager, shandies; cider [non-alcoholic]; beer for use as dieting or slimming aids; beers enriched with minerals; beers containing fruit and/or vegetable juices and/or milk; vegetable drinks and vegetable juices; beverages consisting principally of vegetable juices or nectar; syrups, essences for making beverages; ginger beer and ginger ale; lemonades; malt beer; drinks flavoured with vegetable paste or herbs or spices; sherbets, being beverages and sorbets, being beverages; low-alcoholic aperitifs and cocktails containing not more than 1.2% by volume of alcohol; preparations for making any of the aforesaid goods; preparations for making liqueurs’.
8        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009. The opposition was based on all the goods covered by the earlier mark and was directed against all the goods referred to in the trade mark application.
9        On 22 April 2013 the Opposition Division upheld the opposition in part. After considering, pursuant to Point V of Communication No 2/12 of the President of OHIM of 20 June 2012, that the trade mark application covered all the goods in Classes 29 and 32, the Opposition Division upheld the opposition in respect of all the goods referred to in paragraph 3 above and authorised registration for the goods in Class 29 corresponding to the following description: ‘Alginates for food; edible birds’ nests; pectin for food; pollen prepared as foodstuff; protein for human consumption; rennet; weed extracts for food’.
10      On 19 June 2013 the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11      By decision of 17 February 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It essentially took the view that, taking into account the identity or similarity of the goods, the higher than average visual similarity of the signs at issue, their phonetic identity and the normal distinctiveness of the earlier mark, there was a likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009, even if the level of similarity between the goods was low.
Forms of order sought by the parties
12      The applicant claims that the Court should:
–        uphold the action;
–        annul the contested decision;
–        grant the trade mark application;
–        reject the decision of the Opposition Division;
–        order the other party to the proceedings to pay the costs.
13      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      As regards, at the outset, the general reference made by the applicant to the arguments put forward during the proceedings before OHIM, it should be noted that, under Article 76 of the Rules of Procedure of the General Court, which applies to intellectual property matters by virtue of Articles 171 and 177(1) of those rules, an application lodged in an action brought against OHIM must include a brief statement of the grounds relied on. Although, in that regard, specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself. It follows that the application, in so far as it refers to pleadings submitted to OHIM, is inadmissible to the extent that the general references in it cannot be linked to the pleas and arguments put forward in that application itself (see, to that effect, judgment of 19 October 2006 in Bitburger Brauerei v OHIM — Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud), T‑350/04 to T‑352/04, ECR, EU:T:2006:330, paragraphs 33 and 35 and the case-law cited).
15      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 is not to 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 earlier than the date of application for registration of the Community trade mark.
16      According to established case-law, the risk that the public might 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 line of 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 account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17      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).
The relevant public
18      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 degree 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).
19      The Board of Appeal regarded the relevant public as consisting of the general public of the United Kingdom. That finding, which is undisputed, is correct, having regard to the fact that the earlier mark is registered in the United Kingdom and that the goods at issue are everyday food items. The Board of Appeal was also correct to find that the level of attention of the relevant public was not higher than average.
Comparison of the goods
20      According to settled case-law, in order for the similarity of the goods or services at issue to be assessed, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
21      The Board of Appeal upheld the finding of the Opposition Division that the ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked vegetables; eggs, milk and milk products; edible oils and fats’ referred to in the trade mark application were identical to the goods covered by the earlier mark.
22      The Board of Appeal endorsed the finding that the ‘frozen vegetables’ covered by the mark applied were identical to the ‘preserved vegetables’ covered by the earlier mark; the finding of a high degree of similarity between the ‘preserved, cooked fruits; jams, compotes’ covered by the mark applied for and the ‘sauces (condiments)’ covered by the earlier mark; the finding of a low degree of similarity between the ‘frozen, dried fruits’ covered by the mark applied for and the ‘preserved, dried vegetables’ covered by the earlier mark, and between the ‘jellies’ covered by the mark applied for and the ‘sauces (condiments)’ covered by the earlier mark.
23      Last, the Board of Appeal endorsed the finding that the ‘beers; non-alcoholic drinks; syrups and other preparations for making beverages’ covered by the mark applied for were identical to the ‘beers; soft drink colas; lemonades; syrups, essences for making beverages’ covered by the earlier mark in the same class, as well as the finding of a high degree of similarity between the ‘fruit drinks and fruit juices’ covered by the mark at issue and the ‘vegetable drinks and vegetable juices’ covered by the earlier mark and, last, the finding of similarity to at least an average degree between the ‘mineral and aerated waters’ and the ‘soft drink colas; lemonades’ covered by the earlier mark.
24      Before the Court, the applicant argues that OHIM incorrectly assessed the similarity between some of the goods concerned by the mark applied for and goods covered by the earlier mark. The Opposition Division’s assessments of the similarity between the ‘preserved, cooked fruits; jams, compotes’ covered by the mark applied for and the ‘sauces (condiments)’ covered by the earlier mark were wrongly endorsed. The ‘mineral waters’ covered by the mark applied for were wrongly considered similar to the ‘soft drink colas’ covered by the earlier mark, and the ‘fruit drinks and fruit juices’ covered by the mark applied for were also wrongly considered similar to the ‘vegetable drinks and vegetable juices’ covered by the earlier mark.
25      Those criticisms are unfounded.
26      With regard to the comparison of the ‘preserved, cooked fruits; jams, compotes’ covered by the mark applied for with the ‘sauces (condiments)’ covered by the earlier mark, while it is true, as the applicant illustrates by means of an example (soya sauce and cooked fruits), that there may well be sauces (condiments) that differ in purpose and in their use of certain ‘preserved, cooked fruits; jams, compotes’, the fact remains that the descriptions in question are, because of their general nature, quite capable of designating similar — or identical — goods with the same purposes and uses. OHIM also provides, without being challenged, an example to that effect, namely chutney. The Board of Appeal therefore made no error in finding there to be a high degree of similarity.
27      So far as concerns the ‘mineral waters’ covered by the mark applied for and the ‘soft drink colas’ covered by the earlier mark, while it is true that those goods are not identical, they are still of at least average similarity. What those goods have in common is that they are everyday non-alcoholic drinks, marketed in the same channels and under the same arrangements to consumers, and substitutable for one another to a large extent with regard to their purposes and uses.
28      Those claims are valid as regards the ‘fruit drinks and fruit juices’ covered by the mark applied for and the ‘vegetable drinks and vegetable juices’ covered by the earlier mark. The fact that the first goods are sweet in flavour whereas the second goods are more often savoury is not such as to eliminate all similarity between those goods.
Comparison of the signs
29      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 proceed to analyse 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).
30      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 29 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments in OHIM v Shaker, cited in paragraph 29 above, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (judgment in Nestlé v OHIM, paragraph 43).
31      Essentially, the Board of Appeal, after taking into consideration the various elements of the mark applied for and finding it to be dominated by a term — ‘masafi’ — devoid of meaning for the relevant public and identical to the earlier word mark, concluded that there was a similarity between the signs on the visual and phonetic levels and that the conceptual comparison was neutral.
32      In the applicant’s view, OHIM incorrectly assessed the similarity of the signs. The high stylisation of the term ‘masafi’ in the mark applied for was not taken into account.
33      Additionally, the Board of Appeal wrongly considered that the dominant element of the mark applied for was the term ‘masafi’ and that that term was without meaning for the relevant public of the United Kingdom and was thus distinctive.
34      In reality, the dominant elements of the mark applied for are, in the applicant’s view, the term ‘masafi’ and the representation thereof in Arabic letters, which would be descriptive for the large Arabic-speaking minority of the United Kingdom, namely 5% of the population of that country. The term ‘masafi’ is the name of a village located on the edge of the Hajar Mountains, in the United Arab Emirates, famous for its natural water sources, the only ones in the Hajar Mountains.
35      For those reasons, the Board of Appeal should therefore have concluded that the term ‘masafi’ had a low distinctive character, at least for the Arabic-speaking section of the relevant public.
36      The Board of Appeal did not take into account the fact that the similarity did not lie solely in the term ‘masafi’ being present in both marks.
37      In the first place, in relation to the argument that the high stylisation of the term ‘masafi’ in the mark applied for was not taken into account, it should, first, be pointed out that the stylisation of that term is not particularly high and, second, that the Board of Appeal expressly remarked on that stylisation in the contested decision. The argument must therefore be rejected.
38      The Board of Appeal was also right to consider that the elements in characters indecipherable for the relevant public would not specifically draw that public’s attention and that the other figurative elements, namely the leaves, would be perceived as secondary figurative elements.
39      In the second place, with regard to the dominant character of the term ‘masafi’ found by the Board of Appeal, it should be noted that the applicant’s arguments, far from disproving such a character, actually support it. If, as the applicant claims, 5% of the relevant public is Arabic-speaking and understands the term ‘masafi’, it means that 95% of the relevant public will not attach any meaning to that term (thus making it distinctive) or accord particular attention to the indecipherable signs on the lower part of the mark applied for, reproduced in an alphabet unknown to it.
40      On that premise, the applicant cannot call into question the Board of Appeal’s conclusion that the distinctive term ‘masafi’ does constitute the dominant element of the mark applied for.
41      In those circumstances, the applicant has not proved that the Board of Appeal erred in concluding that there were high visual and phonetic similarities between the mark applied for and the earlier mark and that the result of the conceptual comparison was neutral.
Global assessment of the likelihood of confusion
42      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 marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 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).
43      It should be stated that the Board of Appeal was correct in finding, essentially, that, taking into account the identity or similarity of the goods, the high degree of visual and phonetic similarity, the average distinctiveness of the earlier mark and the presence in the signs at issue of the element ‘masafi’, there was a likelihood of confusion.
44      The applicant has failed to call that finding into question.
45      With regard to the applicant’s final consideration, that national trade mark offices ought not to permit economic operators to monopolise generic trade marks, that consideration, besides the fact that it is implicitly based on the manifestly erroneous premise that ‘masafi’ is a generic term because 5% of the relevant public understand it in a descriptive sense, bears no connection to the assessment of the likelihood of confusion. Furthermore, the applicant has not filed invalidity proceedings against the earlier mark.
46      It follows from all the foregoing considerations that the single plea for annulment, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, is unfounded.
47      The action must therefore be dismissed.
Costs
48      Under Article 134(1) of the Rules of Procedure, 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 form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Masafi Co. LLC to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Frimodt Nielsen
Dehousse
Collins
Delivered in open court in Luxembourg on 25 November 2015.
[Signatures]
* Language of the case: English.