JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
14 June 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark Lion’s Head — Earlier EU word mark LION CAPITAL — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑294/17,
Lion’s Head Global Partners LLP, established in London (United Kingdom), represented by R. Nöske, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Lion Capital LLP, established in London (United Kingdom), represented by D. Rose and J. Warner, Solicitors,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 28 February 2017 (Case R 1478/2016‑4), relating to opposition proceedings between Lion Capital and Lion’s Head Global Partners,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik‑Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 12 May 2017,
having regard to the response of EUIPO lodged at the Court Registry on 13 September 2017,
having regard to the response of the intervener lodged at the Court Registry on 29 September 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 23 December 2008, the applicant, Lion’s Head Global Partners LLP, designated the European Union for international registration No 997073 in respect of the word mark Lion’s Head. That registration was notified to the European Union Intellectual Property Office (EUIPO) on 9 April 2009, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The services in respect of which registration has been sought are in, inter alia, Class 36 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: ‘Insurance; financial affairs; monetary affairs; real estate affairs’.
3        The trade mark application was published in Community Trade Marks Bulletin No 19/2009 of 25 May 2009.
4        On 4 February 2010, the intervener, Lion Capital LLP, filed a notice of opposition to registration of the mark applied for in respect of all the services referred to in paragraph 2 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).
5        The opposition was based on, inter alia, the earlier EU word mark LION CAPITAL, registered on 16 March 2006 under number 4430096, covering, inter alia, the services in Class 36 referred to in paragraph 2 above.
6        The grounds relied on in support of the opposition were those laid down in Article 8(1)(b) and 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and 8(5) of Regulation 2017/1001).
7        By decision of 10 June 2016, the Opposition Division of EUIPO upheld the opposition for the services in question on the basis of Article 8(1)(b) of Regulation No 207/2009.
8        On 10 August 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
9        By decision of 28 February 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. More specifically, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, inter alia as a result of, first, the essentially high degree of similarity between the earlier mark and the mark applied for and, secondly, the identity of the services covered by those marks.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the opposition;
–        order EUIPO to pay the costs.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. More specifically, it criticises the Board of Appeal for finding that there is a likelihood of confusion, whereas, in its view, the marks at issue are not visually, phonetically or conceptually similar.
13      EUIPO and the intervener dispute the applicant’s arguments.
Preliminary observations
14      In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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 mark.
15      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 that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the marks and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the marks and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
16      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. 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 engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
17      For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to contribute to identifying the goods and services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods and services for which that mark has been registered (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).
Similarity of the marks at issue
18      In the present case, the Board of Appeal found, first of all, that the relevant public is the public in the European Union, which consists both of the general public and of professionals. Next, it found that there is a higher than average degree of visual and phonetic similarity between the marks at issue on the ground that the word ‘lion’ is both the first word of the mark applied for and the distinctive and dominant element of the earlier mark. Finally, as regards the conceptual aspect, it found that the marks make reference to a lion and thus have a high degree of similarity.
19      The applicant submits, in the first place, that the Board of Appeal should have made clear that no element of the mark applied for is dominant.
20      In that regard, suffice it to note that the Board of Appeal did not base its decision on the fact that one of the elements of the mark applied for is dominant, with the result that the omission alleged by the applicant cannot render that decision invalid.
21      In the second place, the applicant submits that the marks at issue are not visually, phonetically or conceptually similar.
Visual similarity
22      With regard to the earlier mark, the applicant submits in essence that, in so far as, on the one hand, the word ‘lion’ is dominant and, on the other, the word ‘capital’ is descriptive, the word ‘lion’ alone must be taken into account for the purpose of assessing visual similarity. By contrast, with regard to the mark applied for, it claims that, because of the word element ‘’s’, the word elements ‘lion’s head’ will be perceived by the relevant public as constituting a whole. Thus, the applicant submits that the whole consisting of the word elements ‘lion’s head’ in the mark applied for may be distinguished from the word ‘lion’ in the earlier mark by reason of, first, its greater length and, secondly, the fact that it consists of several words. In those circumstances, the applicant submits that the marks at issue are visually dissimilar.
23      In that regard, it should, in the first place, be noted, as observed by EUIPO, that the applicant’s suggestion that the word ‘capital’ in the earlier mark be omitted for the purpose of assessing visual similarity would merely make the marks at issue more similar. The earlier mark would then be wholly included in the mark applied for. According to the case-law, that fact alone is liable to create both a strong visual and phonetic similarity between the marks at issue (judgment of 12 December 2017, For Tune v EUIPO — Simplicity trade (opus AETERNATUM), T‑815/16, not published, EU:T:2017:888, paragraph 53; see also, to that effect, judgments of 8 March 2005, Leder & Schuh v OHIM — Schuhpark Fascies (JELLO SCHUHPARK), T‑32/03, not published, EU:T:2005:82, paragraph 39, and of 29 January 2013, Fon Wireless v OHIM — nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 48).
24      In the second place, it should be noted that, taken as a whole, the marks at issue consist merely of two words, the first of which, the word ‘lion’, is identical. Furthermore, as the Board of Appeal and the applicant correctly observed, that word is the sole distinctive element of the earlier mark, having regard to the descriptive character of the word ‘capital’, which may designate the services at issue or one of their characteristics in several languages, including English, Spanish, French and Portuguese.
25      Consequently, in the light of the foregoing and particularly taking into account the fact that consumers generally pay greater attention to the beginning of a mark than to the end and that the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign (see judgment of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 46 and the case-law cited; judgment of 15 July 2015, The Smiley Company v OHIM — The Swatch Group Management Services (HAPPY TIME), T‑352/14, not published, EU:T:2015:491, paragraph 36), it must be held that the Board of Appeal was fully entitled to conclude, on the basis of the overall impression created by the marks at issue, that they were visually similar.
26      That conclusion is not called into question by the applicant’s assertion that the emphasis in the pronunciation of the mark applied for is placed on the word ‘head’ and not on the word ‘lion’. First, as correctly observed by EUIPO, the applicant is inconsistent in this regard in so far as it also claims that all the words in the mark applied for are ‘equally important elements’ and that ‘they are elements of equal weight within a multi-word mark’. Secondly, the fact that the pronunciation of the word ‘head’ is emphasised, which, in any event, cannot be substantiated for the whole of the relevant public, is not capable of altering the assessment of visual similarity.
27      Likewise, the applicant’s argument that the case-law cited in paragraph 25 above is not applicable in the present case, in so far as the word elements ‘lion’s head’ will be perceived by the relevant public as constituting a whole, must be rejected.
28      First, it must, admittedly, be noted that the argument according to which consumers generally remember the beginning of a mark rather than the end cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of given marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not analyse its different aspects (see, to that effect, judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 38 and the case-law cited). In the present case, however, it has not been shown that the word elements ‘’s’ and ‘head’ in the mark applied for should be regarded as the more distinctive, or, consequently, that the relevant public will attach greater importance to them. This cannot therefore neutralise the existence of a certain degree of similarity caused by the identity of the first part of the marks in the overall impression created by them (see, to that effect, judgment of 30 April 2014, Beyond Retro v OHIM — S&K Garments (BEYOND VINTAGE), T‑170/12, not published, EU:T:2014:238, paragraph 57).
29      Secondly, only the English-speaking part of the relevant public will perceive the meaning of the word element ‘’s’ in the mark applied for, with the result that the applicant’s argument cannot, in any event, undermine the finding that the marks at issue are visually similar for a large part of the relevant public.
30      Lastly, as regards the applicant’s argument that the case-law cited in paragraph 25 above is not conclusive in the present case in so far as the marks at issue are too different, suffice it to note that that case-law defines one of the criteria for assessing the similarity of the marks at issue, with the result that it is not possible to conclude, initially, that those marks are not sufficiently similar, in order to assess, subsequently, whether or not it is appropriate to apply that case-law.
Phonetic similarity
31      The applicant submits that the marks at issue are not phonetically similar on the ground that the mark applied for consists of three syllables whereas, on the one hand, the dominant element of the earlier mark consists of two syllables and, on the other, the earlier mark as a whole consists of five syllables. The applicant also claims that the word elements ‘lion’s head’ will be perceived by the relevant public as constituting a whole and that the word elements ‘’s’ and ‘head’ are emphasised.
32      In that regard, it should, first, be recalled, as noted in paragraph 26 above, on the one hand, that the applicant itself undermines the argument that the word elements ‘’s’ and ‘head’ are emphasised and, on the other, that such an argument cannot, in any event, be accepted for the whole of the relevant public. Secondly, it should be noted that the fact that the marks at issue do not have exactly the same number of syllables does not in itself exclude the possibility that those marks may be phonetically similar.
33      In those circumstances, and in the light of the factors and case-law recalled respectively in paragraphs 24 and 25 above, it must be held that the Board of Appeal was fully entitled to find that the marks at issue are phonetically similar.
Conceptual similarity
34      The applicant submits that the marks at issue are not conceptually similar in so far as the earlier mark refers to qualities generally recognised in lions which could be attributed to the services described by the word ‘capital’, thereby conveying a laudatory message about the services marketed by the intervener, whereas the mark applied for will be perceived as referring only to a lion’s head.
35      In that regard, suffice it to note that the fact that the earlier mark refers to qualities generally recognised in lions permits the inference that the earlier mark refers to lions. In so far as the mark applied for refers to a lion’s head, it cannot be disputed that the marks at issue are conceptually similar.
36      That conclusion cannot be called into question by the applicant’s argument that the Board of Appeal incorrectly extended the protection conferred by the earlier mark to all body parts of a lion. It should be noted that the earlier mark refers to a lion in its entirety, in that it includes the head and the other body parts of the animal. It follows that the Board of Appeal did not confer on the intervener’s exclusive right a broader scope than that conferred by the earlier mark.
37      Consequently, it follows from the foregoing that the Board of Appeal was fully entitled to find that the marks at issue have, in essence, a high degree of similarity.
38      Therefore, in so far as the definition of the relevant public, the level of attention of that public, the comparison of the services at issue and the other relevant factors for the purpose of assessing the likelihood of confusion are not disputed and none of the information in the file makes it possible to cast doubt on them, it must be held that the applicant errs in submitting that the likelihood of confusion is not established in the present case.
39      Consequently, the single plea in law put forward by the applicant must be rejected as unfounded and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.
Costs
40      Under Article 134(1) 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 the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and by the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Lion’s Head Global Partners LLP to pay the costs.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 14 June 2018.
E. Coulon
A. M. Collins
Registrar
President
*      Language of the case: English.