JUDGMENT OF THE GENERAL COURT (Third Chamber)
4 June 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark YOO — Earlier national and international word marks YO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑562/14,
Yoo Holdings Ltd, established in London (United Kingdom), represented by D. Farnsworth, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Bonne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Eckes-Granini Group GmbH, established in Nieder-Olm (Germany), represented by W. Berlit, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 April 2014 (Case R 762/2013-2) concerning opposition proceedings between Eckes-Granini Group GmbH and Yoo Holdings Ltd,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas, President, N.J. Forwood and E. Bieliūnas (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 July 2014,
having regard to the response of OHIM lodged at the Court Registry on 18 November 2014,
having regard to the response of the intervener lodged at the Court Registry on 25 September 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 and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 13 December 2011, the applicant, Yoo Holdings Ltd, filed an application for the registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The mark for which registration was sought is the word sign YOO.
3        The services in respect of which registration was sought fall, inter alia, within Class 43 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, inter alia, to the following description: ‘Restaurant services; bar services; café, cafeteria, canteen, snack bar and catering services; lounge and bar services; services for providing food and drink’.
4        The Community trade mark application was published in the Community Trade Marks Bulletin No 23/2012 of 2 February 2012.
5        On 23 April 2012, the intervener, Eckes-Granini Group GmbH, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for. That opposition concerned, inter alia, the services referred to in paragraph 3 above.
6        The opposition was based, first, on the earlier German word mark YO registered on 27 March 2009 under number 302008076806 and, second, on the international registration No 1006185 of the word mark YO designating the European Community and registered on 20 May 2009 (together ‘the earlier marks’). The goods referred to by the intervener in support of its opposition and covered by those marks are in Classes 29, 30 and 32. They correspond to the following description:
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; frozen, preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces (compotes); eggs, milk and milk products; edible oils and fats’;
–        Class 30: ‘Sugar, rice, tapioca, sago, flour and preparations made from cereals including cereal bars; bread, pastry and confectionery, filled and unfilled chocolates and all other chocolate products’;
–        Class 32: ‘Beers; mineral waters and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009.
8        On 19 April 2013, the Opposition Division rejected the opposition.
9        On 24 April 2013, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10      By decision of 29 April 2014 (‘the contested decision’), the Second Board of Appeal of OHIM annulled in part the Opposition Division’s decision and refused to register the mark applied for for the services referred to in paragraph 3 above.
11      First, the Board of Appeal found that the services covered by the mark applied for and the goods covered by the earlier marks concerned the public at large whose level of attention was not higher than average. It added that the relevant territories were, (i), the European Union as regards the international registration of the word mark YO and, (ii), Germany as regards the earlier German word mark YO. Secondly, it found that there was a certain degree of similarity between, on the one hand, the ‘restaurant services; bar services; café, cafeteria, canteen, snack bar and catering services; lounge and bar services; services for providing food and drink’ covered by the mark applied for and, on the other, at least, the ‘preparations made from cereals, pastry and confectionery, filled and unfilled chocolates and all other chocolate products, ices [understood as “ice creams”]’ in Class 30 and ‘fruit drinks and fruit juices’ (in particular fresh juices which are included therein) in Class 32 covered by the earlier marks. Thirdly, the Board of Appeal carried out the comparison of the signs and found that they were highly similar visually and identical or very similar phonetically. Fourthly, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the marks at issue, with regard to the services covered by the mark applied for and referred to in paragraph 3 above.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
13      OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15      The applicant claims that the Board of Appeal made an error of assessment when it found that there was a certain degree of similarity between, on the one hand, the services covered by the mark applied for and referred to in paragraph 3 above and, on the other, the goods covered by the earlier marks. In the alternative, it submits that the Board of Appeal was wrong to conclude that there was a likelihood of confusion.
16      As provided in Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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 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.
17      According to settled 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 that same 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 at issue, 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 identified (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
18      In the present case, it is appropriate to state that it is not disputed by the parties that the relevant territories are, (i), the European Union as regards the international registration of the word mark YO and, (ii), Germany as regards the earlier German word mark YO. It is also undisputed that the services covered by the mark applied for and referred to in paragraph 3 above, like the goods covered by the earlier marks, are aimed at the general public whose level of attention is no higher than the average. With regard to the marks at issue, as well as the goods and services concerned, those assessments must, at all events, be endorsed.
19      However, the applicant disputes the assessments made by the Board of Appeal, first, as regards the comparison of the goods and services at issue, secondly, as regards the comparison of the signs at issue and, thirdly, as regards the existence of a likelihood of confusion.
Comparison of the goods and services
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      Complementary goods or services are those which are closely connected in the sense that one is indispensable or important for the use of the other, in such a way that consumers may think that the same company is responsible for manufacturing those goods or supplying those services. By definition, goods intended for different publics cannot be complementary (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
22      The applicant, which submits that the services and goods at issue are different, claims that the Board of Appeal erred when it found that there was a certain degree of similarity between, on the one hand, the services covered by the mark applied for and referred to in paragraph 3 above and, on the other, the goods covered by the earlier marks. First, the applicant quotes OHIM’s Examination Guidelines and claims that the mere fact that food and drinks are consumed in a restaurant is not reason enough to establish the existence of similarity between those goods and the services for providing food and drink. Indeed, in the applicant’s view, the existence of complementarity between goods and services is not sufficient to establish the existence of similarity between such goods and services. Secondly, the applicant submits that the practice for food and/or drink manufacturers of also providing restaurant services under their trade mark is not an established trade custom. In that regard, the Board of Appeal did not provide any evidence, or any explanation, in support of its assessment of current market conditions.
23      The applicant submits, in the alternative, that the degree of similarity between the goods and services in question is very small and that the Board of Appeal has overestimated the degree of similarity. Even if, owing to changing market conditions, it is no longer possible to start from the premiss that the consumer assumes that the goods and services at issue do not have the same commercial origin, it should, however, be considered that the consumer knows that the goods and services at issue very often have a different commercial origin because of the gradual nature of the changes to those market conditions.
24      In that regard, it must be noted that, having regard to the factors relating to their nature, their intended purpose and their method of use, the services covered by the mark applied for and referred to in paragraph 3 above are not similar to ‘preparations made from cereals, pastry and confectionery, filled and unfilled chocolates and all other chocolate products’ in Class 30 or to ‘fruit drinks and fruit juices’ in Class 32 and covered by the earlier marks (see, to that effect, judgment of 15 February 2011 in Yorma’s v OHIM – Norma Lebensmittelfilialbetrieb (YORMA’S), T‑213/09, EU:T:2011:37, paragraphs 34 and 35).
25      However, first, the Board of Appeal was right to find that ‘[the] preparations made from cereals, [the] pastry and [the] confectionery, filled and unfilled chocolates and all other chocolate products’ in Class 30 and that ‘[the] fruit drinks and [the] fruit juices’ (in particular fresh juices which are included therein) in Class 32 and covered by the earlier marks were complementary to services in Class 43 referred to in paragraph 3 above. Indeed, such goods are used and offered in the context of restaurant, catering, bar, café, cafeteria, canteen and snack bar services. Those goods are therefore closely related to those services.
26      Secondly, the services in Class 43 referred to in paragraph 3 above can be offered in the same places as those in which the goods in question are sold. Accordingly, for example, establishments which provide restaurant, catering or bar services offer non-alcoholic drinks to their customers. In the same way, it commonly happens that pastries are offered for sale in places which provide food and drink.
27      Thirdly, it is common knowledge that providers of restaurant or catering services often make their own pastries or chocolate products. Conversely, bakers or pastry chefs have developed catering services and snacks, which include, in particular, pastries and chocolate products. It is also clear that providers of fast food or tea and coffee shops sell pastries, chocolate products and non-alcoholic beverages under their own trade mark. Accordingly, the goods and services at issue may come from the same undertakings or from economically-linked undertakings. Therefore, it cannot be maintained, as the applicant argues, that the consumer of one of the goods referred to in paragraph 25 above, in particular of a pastry, a chocolate product or a fresh fruit juice, considers that it was manufactured by an undertaking different from that which supplies the restaurant or catering service and has a different commercial origin. On the contrary, in the light of the above, consumers may think that the responsibility for the manufacture of those goods and the provision of those services lies with the same undertaking.
28      Having regard to the foregoing, the Board of Appeal was right to find that the goods and services at issue were similar to a certain degree (see, to that effect, judgment of 12 December 2014 in Comptoir d’Épicure v OHIM — A-Rosa Akademie (da rosa), T‑405/13, EU:T:2014:1072, paragraphs 97 and 98 and the case-law cited).
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 that 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      The applicant submits that the Board of Appeal has overestimated the similarity of the signs at issue. In particular, it claims that, as regards the visual comparison of the signs, the Board of Appeal gave disproportionate weight to the fact that the first two letters of the signs at issue were identical and has not paid enough attention the global impression produced by those signs.
31      In that regard, the trade mark applied for entirely reproduces the earlier marks YO.
32      Admittedly, the two signs are differentiated by the presence, in the mark applied for, of an additional letter ‘o’. Moreover, it is true that the signs at issue are both short, since they are composed of words of two and three letters respectively.
33      However, first, visually, the difference observed between the signs is not sufficient to counteract the similarity resulting from the complete reproduction of the earlier marks in the mark applied for. The words which make up the signs at issue have two letters in common which are placed in the same order. Moreover, the additional letter, which appears in the mark applied for, is placed at the end of the sign and is identical to the last letter of the earlier sign.
34      Consequently, as a result of an overall assessment, it must be held that the elements of similarity between the signs at issue prevail over the elements of dissimilarity and that the Board of Appeal was right in finding that, visually, the marks at issue were highly similar.
35      Secondly, phonetically, the Board of Appeal correctly noted that, with the exception of English speakers who pronounce ‘oo’ and ‘o’ differently, the relevant public will pronounce the marks at issue identically as ‘yo’ or very similarly as ‘yo-o’ with the repetition of the vowel ‘o’.
36      Accordingly, it must be held that, following an overall phonetic assessment, the elements of similarity between the signs at issue prevail over the elements of dissimilarity and that the Board of Appeal was right in finding that, phonetically, the marks at issue were identical or very similar.
37      Thirdly, it is not in dispute that, except for Spanish-speaking consumers for whom the signs are conceptually different, the conception comparison of the signs at issue is irrelevant.
38      In that regard, it must be considered that the signs are also conceptually different for English-speaking consumers in so far as the word ‘yo’ is an interjection which can be used to greet someone or get his attention. However, that assessment cannot alter the overall impression produced by the signs at issue.
The likelihood of confusion
39      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 trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 December 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in 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).
40      The applicant claims that the Board of Appeal was wrong to conclude that a likelihood of confusion exists between the mark applied for and the earlier marks. In that regard, first, it alleges an overestimation of the degree of similarity between the goods and services at issue. Secondly, it claims that the Board of Appeal has overestimated the degree of similarity between the signs at issue. It adds that the Board of Appeal overlooked the fact that, for the services covered by the mark applied for, the phonetic similarity is of only limited significance in the assessment of the likelihood of confusion. Thirdly, it argues that the Board of Appeal ought to have concluded that the word ‘yo’ has a less than average distinctive character inasmuch as it concerns a slang interjection and is commonly used in English.
41      In the first place, it should be borne in mind that the Board of Appeal did not commit an error of assessment in concluding that there was a certain degree of similarity between the goods and services at issue (see paragraph 28 above). Furthermore, the Board of Appeal was justified in considering, first, that the signs at issue were highly similar visually and, secondly, that they were identical or very similar from a phonetic point of view (see paragraphs 31 to 36 above). Finally, it should be recalled that, with the exception of Spanish- and English-speaking consumers for whom the signs at issue are conceptually different, the comparison of the signs at issue is irrelevant from a conceptual point of view (see paragraphs 37 and 38 above).
42      In the second place, it must be stated that, according to settled case-law, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market (judgments of 3 July 2003 in Alejandro v OHIM — Anheuser-Busch (BUDMEN), T‑129/01, ECR, EU:T:2003:184, paragraph 57, and 6 October 2004 in New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293, paragraph 49).
43      However, in so far as the Board of Appeal found, correctly, that the signs at issue were highly similar from a visual point of view, the global assessment of the likelihood of confusion in the present case cannot be altered by the fact, relied on by the applicant, that the phonetic similarity is only of limited significance in assessing the likelihood of confusion.
44      Indeed, even if, as claimed by the applicant, the phonetic aspect is of limited importance in the global assessment of the likelihood of confusion, the assessment of that likelihood of confusion cannot be altered inasmuch as, in the present case, there is a strong similarity between the signs at issue from the visual point of view.
45      Therefore, given the similarity of the goods covered by the marks at issue, the strong similarity between the signs at issue and the normal level of attention of the relevant public, the Board of Appeal was correct in finding that there was a likelihood of confusion between the mark applied for and the earlier marks.
46      That conclusion is not undermined by the argument, put forward by the applicant, that the earlier marks have a less than average distinctive character. The finding of such a degree of distinctive character of the earlier marks does not preclude a finding that there is a likelihood of confusion.
47      In that regard, it should be noted that, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70 and the case-law cited). That is so in the present case.
48      Having regard to all the foregoing, the single plea in law put forward by the applicant must be rejected and, therefore, the action must be dismissed in its entirety.
Costs
49      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.
50      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Yoo Holdings Ltd to pay the costs.
Papasavvas
Forwood
Bieliūnas
Delivered in open court in Luxembourg on 4 June 2015.
[Signatures]
* Language of the case: English.