JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
15 September 2016 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark PUSH — Earlier Benelux and national word and figurative marks PUNCH — Relative ground for refusal — Likelihood of confusion — Identity of the goods — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑633/15,
JT International SA, established in Geneva (Switzerland), represented by S. Malynicz QC and K.E. Gilbert and J. Gilbert, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
the other party before the Board of Appeal of EUIPO, intervener before the General Court, being
Corporación Habanos, SA, established in Havana (Cuba), represented by M. Escudero Pérez, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 10 August 2015 (Case R 3046/2014-5), relating to opposition proceedings between Corporación Habanos and JT International,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 12 November 2015,
having regard to the response of EUIPO lodged at the Court Registry on 16 February 2016,
having regard to the response of the intervener lodged at the Court Registry on 25 February 2016,
having regard to the fact that no request for a hearing was submitted by the main 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 8 March 2013, the applicant, JT International SA, a company governed by Swiss law, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the word sign PUSH.
3        The goods in respect of which registration was sought are in Class 34 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: ‘Tobacco, whether manufactured or unmanufactured; smoking tobacco, pipe tobacco, hand rolling tobacco, chewing tobacco, snus tobacco; cigarettes, cigars, cigarillos; substances for smoking sold separately or blended with tobacco, none being for medicinal or curative purposes; snuff; smokers’ articles included in Class 34; cigarette papers, cigarette tubes and matches’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 68/2013 of 10 April 2013.
5        On 29 May 2013, the intervener, Corporación Habanos, SA, a company governed by Cuban law, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier Benelux and national marks:
–        the Benelux word mark PUNCH, which was registered on 12 May 1971 under the number 32387 and covers goods in Class 34 corresponding to the following description: ‘Cigars’;
–        the national word mark PUNCH, which was registered in the United Kingdom on 30 September 1927 under the number 484463 and covers goods in Class 34 corresponding to the following description: ‘Cigars’;
–        the Czech and Polish word marks PUNCH, which were registered on 12 May 1970 under the number 161540 and 11 June 1970 under the number 54469 respectively and cover goods in Class 34 corresponding to the following description: ‘Cigars; cigarettes’;
–        the Bulgarian word mark PUNCH, which was registered on 30 May 1970 under the number 7519 and covers goods in Class 34 corresponding to the following description: ‘Tobacco; manufactured tobacco; smoking, chewing or snuff tobacco; cigarettes’;
–        the German word mark PUNCH, which was registered on 24 June 1983 under the number 1089272 and covers goods in Class 34 corresponding to the following description: ‘Tobacco products, namely cigars, cigarillos, raw tobacco; matches; lighters’;
–        the Spanish word mark PUNCH (‘the earlier mark’), which was registered on 4 May 1989 under the number 1321048 and covers goods in Class 34 corresponding to the following description: ‘Tobacco; articles for smokers; matches’;
–        the Slovenian word mark PUNCH, which was registered on 16 February 1999 under the number 9871006 and covers goods in Class 34 corresponding to the following description: ‘Unmanufactured tobacco; cigars; cigarettes; raw tobacco; strong tobacco for snuff (“rappe”); all types of manufactured tobacco; matches; pipes; pipe holders; ashtrays; matches boxes; cigar boxes; storage containers for keeping the humidity of the tobacco; other products for smokers’;
–        the French word and figurative mark, reproduced below, which was registered on 14 October 1988 under the number 1493938 and covers goods in Class 34 corresponding to the following description: ‘Cigars’:
–        the Italian figurative mark, reproduced below, which was registered on 14 August 1992 under the number 992946 and covers goods in Class 34 corresponding to the following description: ‘Tobacco; smoker’s articles; matches’:
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8        On 1 October 2014, the Opposition Division rejected the opposition in respect of all the goods at issue and ordered the intervener to pay the costs, taking the view that, inter alia, although those goods were identical or similar and there were certain visual and phonetic similarities between the signs at issue, the level of attention of that public was high, with the result that that public would pay great attention to the differences characterising those signs, like the additional letters in the earlier Benelux and national word marks, which precluded any likelihood of confusion.
9        On 28 November 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 10 August 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division in so far as it had rejected the opposition, upheld the opposition and ordered the applicant to pay the sum of EUR 2 000 to the intervener in respect of the costs incurred in the opposition and appeal proceedings. In particular, it took the view that, for reasons of procedural economy, the likelihood of confusion had to be assessed in relation to the earlier mark and found that, in view of the identity of the goods at issue (paragraphs 27 and 40 of the contested decision) and the visual and phonetic similarity of the signs at issue and their lack of meaning for the Spanish-speaking public, the Opposition Division had erred in ruling out any likelihood of confusion, above all if the means by which the goods at issue were distributed in Spain, namely vending machines, which generally stand in pubs, and authorised shops — places which are busy, noisy and, as regards pubs, often dark — were taken into consideration.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        uphold the contested decision;
–        order the applicant to pay the costs.
Law
13      By its single plea in law, the applicant alleges infringement of Article 8(1)(b) of Regulation No 207/2009. According to the applicant, the Board of Appeal erred in finding that there was a likelihood of confusion between the mark applied for and the earlier mark. It states that, contrary to what the Board of Appeal maintained, the signs at issue cannot be regarded as visually and phonetically similar because, as far as short marks are concerned, every difference is perceived by the relevant public. It also disputes the Board of Appeal’s analysis that the relevant Spanish-speaking public is not capable of grasping the meaning of the mark applied for and takes the view that the Board of Appeal erred, first, as regards the inferences which had to be drawn from the high level of attention of the relevant public and, secondly, in its assessment of the way in which that relevant public came into contact with the goods at issue.
14      It is apparent both from the wording of the contested decision and from that of the plea that whether the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 must be examined in the light solely of the comparison of the mark applied for and the earlier mark.
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 must not 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.
16      According to settled case-law, the risk that the public may 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs 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 signs 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).
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, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, 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 level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
19      In paragraph 21 of the contested decision, the Board of Appeal stated that the goods at issue were aimed at the general public and that, because smokers feel some attachment to a specific brand of cigarettes, their level of attention would be relatively high. It is necessary to confirm that assertion, which also applies to cigars, the higher price of which, by comparison with that of cigarettes, only heightens the consumer’s level of attention.
20      Lastly, as is apparent from paragraphs 10 and 14 above, since it is the mark applied for and the earlier mark, which is registered in Spain, which must be compared, the relevant public is Spanish speaking.
The comparison of the goods
21      As the Board of Appeal rightly pointed out in paragraphs 27 and 40 of the contested decision, the goods covered by the marks at issue are identical, a finding which has not, moreover, been disputed by the parties to the dispute.
The comparison of the signs
22      The signs at issue are word marks, the earlier mark consisting of the word ‘punch’, while the mark applied for consists of the word ‘push’.
23      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 26 January 2006, Volkswagen v OHIM — Nacional Motor (Variant), T‑317/03, not published, EU:T:2006:27, paragraph 46, and 9 September 2011, Ergo Versicherungsgruppe v OHIM — DeguDent (ERGO), T‑382/09, not published, EU:T:2011:454, paragraph 42).
24      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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).
–       The visual comparison
25      The applicant disputes the Board of Appeal’s finding that the two signs are similar from a visual point of view. It takes the view that the Board of Appeal’s assessment of the visual similarity of the signs at issue does not comply with the case-law, as EUIPO did not take account of the fact that, in respect of signs which are short, the central elements are as important as the elements at the beginning and end of the signs. It submits, still according to the case-law, that, in signs which are short, each letter is important and the consumer therefore pays attention to each difference between those signs. The applicant maintains that, in the present case, the presence of the two consecutive letters ‘n’ and ‘c’ in the earlier mark, which do not appear in the mark applied for, which contains, in their place, only the letter ‘s’, is sufficient to conclude that there is no visual similarity.
26      EUIPO and the intervener dispute the applicant’s arguments.
27      In the present case, it must be stated that both of the signs at issue consist of one word, which comprises five letters in the case of the earlier mark and four letters in that of the mark applied for. Those words contain three identical letters, namely ‘p’, ‘u’ and ‘h’, the first two of which constitute the beginning of the words and the third of which constitutes the ending of the words.
28      The consumer will generally pay greater attention to the beginning of a word sign than to the end. The first part of a trade mark tends normally to have a greater visual and phonetic impact than the final part, even if that argument does not hold in all cases (see judgment of 5 February 2015, Red Bull v OHIM — Sun Mark (BULLDOG), T‑78/13, not published, EU:T:2015:72, paragraph 31 and the case-law cited).
29      In the present case, it must be stated that the presence of the first two letters, ‘p’ and ‘u’, in both of the signs at issue attracts greater attention than the differences in their endings (namely, the letter sequences ‘nch’ as regards the earlier mark and ‘sh’ as regards the mark applied for).
30      It is true that the applicant is right in stating that, in the case of word signs which are short, each difference is noteworthy. Consequently, a difference consisting of a single letter can sometimes preclude the finding that there is a high degree of visual similarity between two relatively short word signs (see, to that effect, judgments of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 54, and 16 January 2008, Inter-Ikea v OHIM — Waibel (idea), T‑112/06, not published, EU:T:2008:10, paragraph 54).
31      However, it is important to bear in mind that the degree of similarity between signs which are at issue may be high or low. The case-law cited in paragraph 30 above states that a difference of one letter may, as regards signs which are short, preclude the finding that there is a high degree of visual similarity between them, but that difference does not, for the purposes of the case-law set out in paragraph 23 above, preclude the finding that those signs are merely similar, or, to put it another way, that there is an average degree of similarity between them. Consequently, although, in the present case, the difference in the third and fourth letters of the signs at issue prevents the signs at issue from being regarded as having a high degree of visual similarity (judgment of 5 February 2015, BULLDOG, T‑78/13, not published, EU:T:2015:72, paragraph 33), it in no way, however, prevents them from being regarded as similar. The fact remains that the Board of Appeal merely pointed out that the signs at issue were ‘visually similar’, which, in the light of the findings set out in paragraphs 27 to 29 above, is correct.
32      It must therefore be held that the signs at issue are visually similar.
–       The phonetic comparison
33      The applicant submits, in the context of the phonetic comparison of the signs at issue, that the Board of Appeal repeated its error of placing too great an emphasis on the beginnings and ends of those signs, namely the pronunciation of the letter sequences ‘pu’, on the one hand, and ‘ch’ and ‘sh’, on the other hand, without considering the impact on each of those letter sequences of the presence in the earlier mark and the absence in the mark applied for of the letter ‘n’, which creates a genuine difference between the earlier mark and the mark applied for so far as concerns the phonetic aspect. The applicant admits, however, that that phonetic comparison is of less importance than the visual comparison in the light of the means by which the goods at issue are distributed.
34      EUIPO and the intervener dispute the applicant’s arguments.
35      It must, in the circumstances of the present case, be held that the relevant Spanish-speaking public will attribute greater importance to the similarity produced by the first part of the signs at issue, which those signs have in common, namely the explosive labial ‘p’ followed by the rounded vowel ‘u’, in conjunction with the final part of those signs, namely the palato-alveolar fricative sound produced by the letter sequences ‘ch’ and ‘sh’. Those findings also apply if the pronunciation used is that of English, from which the words ‘punch’ and ‘push’ come, but the letter ‘n’ has a more noticeable impact on the sound produced, which alters the pronunciation of the vowel ‘u’. The Board of Appeal was therefore right in stating that the phonetic difference between the signs at issue did not amount to more than the single letter ‘n’ in the middle of the earlier mark (paragraph 33 of the contested decision) and that the comparison of two words of one syllable, with one and the same vowel, ‘u’, and the same sounds at the beginning and end produced by the letter sequences ‘pu’ and ‘ch’ or ‘sh’, led to the conclusion that the signs at issue are similar.
36      Any changes in the way in which the pronunciation of the signs at issue is heard, due to the allegedly noisy nature of the places in which the goods at issue are distributed, could, in any event, only increase the similarity thus established.
–       The conceptual comparison
37      The applicant submits that the Board of Appeal’s reasoning as regards the conceptual comparison of the signs at issue, namely that neither of the two signs has a meaning for the Spanish-speaking public (paragraph 34 of the contested decision), is erroneous, because the word ‘push’, which forms part of basic English and appears on many doors, is understood perfectly by the relevant Spanish-speaking public, particularly in the context of the ever-closer union between the peoples of which the European Union consists.
38      EUIPO and the intervener dispute the applicant’s arguments.
39      It should be noted, at the outset that, in view of the definition of the relevant public correctly adopted by the Board of Appeal and referred to in paragraph 20 above, that public is not English-speaking, but Spanish-speaking. It is therefore necessary to determine whether the signs at issue, PUNCH and PUSH, are nevertheless likely to be understood by the Spanish-speaking general public, failing which, according to the case-law, the Court must conclude that the conceptual comparison can have no influence on the assessment of the similarity of the signs at issue (see judgment of 16 September 2013, Gitana v OHIM — Teddy (GITANA), T‑569/11, not published, EU:T:2013:462, paragraph 67 and the case-law cited; judgments of 27 February 2014, Advance Magazine Publishers v OHIM — Nanso Group (TEEN VOGUE), T‑509/12, ECR, EU:T:2014:89, paragraph 45, and 5 February 2015, BULLDOG, T‑78/13, not published, EU:T:2015:72, paragraph 43).
40      It must be held, as maintained by the applicant, that the word ‘push’ is one of the words which can, like, for example, the word ‘water’, be regarded as being part of basic English vocabulary and which will therefore be understood by a large part of even the non-English-speaking general public, who have a sufficient knowledge of English (see judgment of 28 November 2013, Vitaminaqua v OHIM — Energy Brands (vitaminaqua), T‑410/12, not published, EU:T:2013:615, paragraph 58 and the case-law cited).
41      However, that is not sufficient to establish that there is a conceptual dissimilarity, since it is not certain that the other term, ‘punch’, evokes, for the Spanish-speaking public, ‘a blow with the fist’ or, by way of an image, ‘a drink containing fruit juice and, usually, alcoholic liquor, generally hot and spiced’, according to the definitions in the Collins English Dictionary cited by the Board of Appeal (paragraph 6 of the contested decision). It is clear from the case-law cited in paragraph 39 above, as it is, moreover, from a simple logical analysis, that a comparison is possible only if the two elements of that comparison are known to the person who is to make it. As has been pointed out, the non-English-speaking public will have knowledge of only one of those two terms, which precludes the conceptual comparison from having any effect for the relevant public (judgment of 5 February 2015, BULLDOG, T‑78/13, not published, EU:T:2015:72, paragraph 48).
42      Consequently, even though the Board of Appeal erred in finding that the signs at issue would not be understood by the relevant public, seeing that one of them must be regarded as being familiar to that public, it was nevertheless right in finding that no conceptual comparison was possible in the present case.
–       The overall comparison
43      It is apparent from the overall comparison of the signs at issue that the Board of Appeal was right in finding that those signs were similar in view of their visual and phonetic similarities and the irrelevance of their conceptual comparison.
The likelihood of confusion
44      A 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 that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, 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, EU:T:2006:397, paragraph 74).
45      It must be noted that the Board of Appeal made a point of stating that, owing to the identity of the goods and the similarity of the signs at issue, the relevant public’s high level of attention was not sufficient to exclude a likelihood of confusion. Without it being necessary, in that regard, to dwell at length on the means by which the goods at issue are distributed in Spain, it is sufficient to point out that, even for the consumer of those goods who goes to a specialist shop at a time when it is not very busy, that is to say to a place which is sufficiently lit and not noisy, the display, on shelves or in the window, of identical goods (for example cigars or cigar boxes) bearing trade marks which are visually similar (in particular on account of the fact that three out of the four or five letters of which they consist are common to both of them, including those at the beginning and the end of the marks at issue) is sufficient to give rise to the likelihood of confusion which is prohibited by Article 8(1)(b) of Regulation No 207/2009.
46      It follows that the Board of Appeal was right in annulling the decision of the Opposition Division on the ground that it had infringed Article 8(1)(b) of Regulation No 207/2009.
47      In the light of all of the foregoing, the single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
48      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.
49      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders JT International SA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Corporación Habanos, SA.
Gratsias
Kancheva
Wetter
Delivered in open court in Luxembourg on 15 September 2016.
[Signatures]
* Language of the case: English.