JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
13 May 2016 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark MITOCHRON — Earlier EU figurative mark mito — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009)
In Case T‑62/15,
Market Watch Franchise & Consulting, Inc., established in Freeport (Bahamas), represented by J. Korab, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO having been
El Corte Inglés, SA, established in Madrid (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 19 November 2014 (Case R 508/2014-2), relating to opposition proceedings between El Corte Inglés, SA, and Market Watch Franchise & Consulting, Inc.,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 February 2015,
having regard to the response lodged at the Court Registry on 22 July 2015,
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 4 September 2012, the applicant, Market Watch Franchise & Consulting, Inc., 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 MITOCHRON.
3        The goods and services in respect of which registration was sought fall within Classes 3, 5 and 35 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 3: ‘Bleaching preparations and other substances for laundry use, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices’;
–        Class 5: ‘Pharmaceutical and veterinary preparations, sanitary preparations, dietetic preparations for medical use, preparations of trace elements for human and animal use, food supplements for medical use, mineral food supplements, vitamin preparations’;
–        Class 35: ‘Advertising’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 7/2013 of 10 January 2013.
5        On 8 April 2013, El Corte Inglés, SA 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 and services referred to in paragraph 3 above.
6        The opposition was based on the EU figurative mark reproduced below, covering, inter alia, goods and services in Classes 3 and 35 corresponding, for each of those classes, to ‘soaps, perfumery, cosmetics’ in Class 3 and ‘commercial retailing or retailing via global computer networks’ in Class 35.
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 17 December 2013, the Opposition Division partially upheld the opposition and rejected the application for registration in respect of all the goods in Class 3 and for ‘pharmaceutical and veterinary preparations, sanitary preparations’ in Class 5, taking the view that there was a likelihood of confusion between the marks at issue.
9        On 13 February 2014, the applicant filed an appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 19 November 2014 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, first, it considered that (i) regarding ‘pharmaceutical and veterinary preparations, sanitary preparations’ in Class 5, the relevant public was composed of patients and animal owners assisted by doctors or veterinarians and pharmacists and who were generally well informed and particularly attentive and circumspect (paragraph 19 of the contested decision) and (ii) the goods in Class 3 covered by the marks at issue were addressed at the general public deemed to be reasonably well informed and reasonably observant and circumspect (paragraph 20 of the contested decision). Second, (i) the goods covered by the signs at issue in Class 3 were partly identical and partly similar and (ii) the ‘pharmaceutical and veterinary preparations, sanitary preparations’ in Class 5 were of a low degree of similarity to the ‘cosmetics’ and ‘soaps’ covered by the earlier mark in Class 3 (paragraphs 22 to 26 of the contested decision). Third, the signs at issue were similar from a visual and phonetic perspective, particularly on account of the presence of their shared word element ‘mito’ (paragraphs 27 and 28 of the contested decision). Fourth, the signs at issue were highly similar from a conceptual perspective, given that they both referred to the Italian word ‘mito’, which means ‘myth’ (paragraph 29 of the contested decision). Fifth, (i) it was impossible to conclude that the word element of the earlier mark was a non-distinctive term in relation to the goods in Classes 3 and 5 and (ii) the word element ‘chron’ of the mark applied for was not particularly distinctive (paragraphs 30 and 31 of the contested decision). Sixth and, thus, on the whole, in view of the identity and similarity of the goods covered by the signs at issue, as well as their visual, phonetic and conceptual similarity, there was a likelihood of confusion on the part of the relevant public, even if that public was particularly attentive (paragraph 32 of the contested decision).
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision and reject the opposition;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs it incurred.
Law
13      In support of its action, the applicant relies, essentially, on a single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and argues that the Board of Appeal was wrong to find a likelihood of confusion between the marks at issue.
14      EUIPO disputes the applicant’s arguments and argues that the Board of Appeal was right to conclude that there was a likelihood of confusion between the marks at issue.
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.
16      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 the 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 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 designated (see judgment of 9 July 2003 in 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 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
18      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods and services in question in that territory. However, it should be borne in mind that, in order for registration of an EU trade mark to be refused, it is sufficient that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 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, EU:T:2006:397, paragraph 76 and the case-law cited). Therefore, the Board of Appeal cannot be criticised for having endorsed, in paragraph 21 of the contested decision, the Opposition Division’s approach of limiting its assessment to the Italian-speaking public.
Relevant public
19      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 products 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, EU:T:2007:46, paragraph 42 and the case-law cited).
20      In view of the goods at issue, the Court considers that the Board of Appeal was right to consider, for the reasons it set out in paragraph 19 of the contested decision, that, in relation to the ‘pharmaceutical and veterinary preparations, sanitary preparations’ in Class 5, the relevant public was composed of patients and animal owners assisted by doctors or veterinarians and pharmacists and who were generally well informed and particularly attentive and circumspect.
21      The ‘pharmaceutical and veterinary preparations, sanitary preparations’ in Class 5 share the core trait of being marketed on the recommendation of or through a health professional, prescribing doctor, pharmacist or veterinarian. In such circumstances, the relevant public is made up of both end consumers and professionals in the healthcare sectors concerned. Even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for consumers since they are likely to be faced with those products, albeit during separate purchasing transactions taking place, for each of those individual products, at different times (see judgment of 11 June 2014 in Golam v OHIM — meta Fackler Arzneimittel (METABIOMAX), T‑281/13, not published, EU:T:2014:440, paragraph 31 and the case-law cited).
22      To the extent that the applicant argues that the goods in Class 3 are also connected to human health in the broadest sense, so that an increased level of attention may be expected of the public concerned, it is sufficient to point out that, as EUIPO observed, even if some of those goods, including perfumery or cosmetics, are intended to be applied to the human body, the goods in Class 3 covered by the mark applied for are not used for the treatment of diseases and thus constitute everyday products addressed to the average consumer, who is reasonably well informed and reasonably observant and circumspect (see judgment of 14 April 2011 in Lancôme v OHIM — Focus Magazin Verlag (ACNO FOCUS), T‑466/08, EU:T:2011:182, paragraph 49 and the case-law cited).
23      Nor can the Court accept the applicant’s argument that consumers were aware that, in relation to trade mark names derived from or based on chemical nomenclature, the slightest differences could be decisive and produce particularly disagreeable consequences. As has been pointed out in paragraph 22 above, the goods at issue included in Class 3 constitute everyday products addressed to the average consumer, who is reasonably well informed and reasonably observant and circumspect. The fact that a certain producer has chosen a denomination from the field of chemistry to name them is not capable of affecting the level of attention generally demonstrated by that consumer towards such everyday products.
24      Moreover, the case-law states that the assessment of the likelihood of confusion must be carried out objectively and cannot be influenced by considerations not connected with the commercial origin of the product. It follows that that assessment must concern the likelihood of confusion as to the commercial origin of the goods and not the likelihood of confusion between those goods. The possibly harmful consequences alleged by the applicant result from the potential confusion, on the part of the relevant public, as to the identity or characteristics of the product in question, not its commercial origin (see, to that effect, judgment of 13 February 2008 in Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33, paragraphs 70 and 71 and the case-law cited).
25      The Board of Appeal was therefore right to find, in paragraph 20 of the contested decision, that the goods at issue included in Class 3 were addressed at the general public, which is deemed to be reasonably well informed and reasonably observant and circumspect.
Comparison of the goods
26      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to 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 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, EU:T:2007:219, paragraph 37 and the case-law cited).
27      In the present case, first, the Board of Appeal was right — and was not challenged by the parties in that regard — to find that the goods covered by the marks at issue included in Class 3 were partly identical and partly similar (paragraph 22 of the contested decision). Second, it took the view that the ‘pharmaceutical preparations’ in Class 5 covered by the earlier mark were similar to a low degree to the ‘cosmetics’ in Class 3 covered by the earlier mark, since (i) the purpose of certain pharmaceuticals, such as skin or hair care preparations with medical properties, medicated dentifrices and medicated soaps, coincide in part with the purpose of cosmetic creams or lotions, dentifrices and soaps not for medical use and (ii) both of those types of products were sold in pharmacies (paragraph 24 of the contested decision). Third, with regard to the ‘veterinary preparations’ in Class 5 covered by the mark applied for, the Board of Appeal found that they were similar to a low degree to the ‘soaps’ in Class 3 covered by the earlier mark, given that there are veterinary preparations used for cleaning and disinfecting which are thus similar to soaps (paragraph 25 of the contested decision). Fourth, it found that the ‘sanitary preparations’ in Class 5 covered by the mark applied for were similar to a low degree to the ‘soaps’ in Class 3 covered by the earlier mark, since (i) those products may be manufactured by the same companies and have the same distribution channels and end users and (ii) certain sanitary preparations for medical use, such as antiseptics or antibacterial lotions, have, just like soaps, a cleaning purpose (paragraph 26 of the contested decision).
Comparison of the signs
28      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 created by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. 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 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
29      In relation to the visual comparison of the signs, the Board of Appeal considered, in paragraph 27 of the contested decision, that the signs at issue shared the word element ‘mito’, which are the first letters of the sign applied for and the only letters of the word element of the earlier mark. The word element of the earlier sign remains clearly visible even though it is displayed diagonally and written in a stylised blue typeface. The additional word element ‘chron’ in the sign applied for does not result in a different, overall, visual impression. On the whole, even though the sign applied for is longer, given the similar elements they contain and the fact that the word element ‘mito’ is placed at the beginning of the signs at issue, the signs at issue are visually similar.
30      It should be recalled, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005 in Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
31      Moreover, according to the case-law, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited).
32      In the present case, the Board of Appeal therefore cannot be criticised for having considered that the letters making up the earlier sign, although displayed diagonally and written in a stylised blue typeface, remained clearly visible. It follows that the typographical representation of the earlier sign does not, as the applicant claims, serve to distinguish clearly the signs at issue from each other visually.
33      With regard to the applicant’s claim that the signs at issue differ significantly in length, it is indeed true that the word element of the earlier sign is made up of four letters, whereas the sign applied for is made up of nine. However, it must be pointed out that, as the Board of Appeal observed, the signs at issue share their first letters, namely the word element ‘mito’, which are the only letters of the word element and the first letters of the sign applied for. It follows that, at least from this perspective, the signs at issue are similar.
34      Overall, in view of the fact that the word elements of the signs at issue share their first letters, ‘mito’, and given that the typographical elements of the earlier sign do not constitute a specific and original configuration, the Board of Appeal was justified in finding that the signs at issue were visually similar.
35      With regard to the phonetic comparison of the signs at issue, the Board of Appeal noted, in paragraph 28 of the contested decision, that those signs shared the two syllables ‘mi’ and ‘to’ at their beginning. Although the sign applied for is longer than the word element of the earlier sign, the signs at issue are phonetically similar, since the sign applied for contains the additional syllable ‘chron’.
36      In so far as the applicant argues that the signs at issue demonstrate clear phonetic differences that may be observed by anyone, it is sufficient to note that it fails to indicate what precisely those differences are and thus confines itself to unsupported claims. In any event, it is appropriate to hold that the Board of Appeal did not err in stating that, since the signs at issue shared the two syllables ‘mi’ and ‘to’ at their beginning, they were at least phonetically similar.
37      In relation to the conceptual comparison, the Board of Appeal found, in paragraphs 29 to 31 of the contested decision, that the signs at issue were highly similar since they both referred to the Italian word ‘mito’, which means ‘myth’, even though that association was not straightforward in relation to the goods at issue. As regards the meaning of the prefix ‘mito’ in the field of medicine, in particular to the extent that it relates to mitochondrial disorders, the Board of Appeal took the view that only part of the relevant public, namely specialised doctors and pharmacists, would know it. The word element ‘chron’ relates to time and is used in the construction of many words. According to the Board of Appeal, it can be understood by the Italian public.
38      The applicant advances no specific argument to challenge the finding of the Board of Appeal in that regard. The word element ‘mito’ is contained in the two signs at issue and means ‘myth’ in Italian. Only part of the relevant public, namely doctors and pharmacists, will know the meaning of that word element in the field of medicine, particularly in relation to mitochondrial disorders. In that regard, the signs at issue refer to the same concepts. The additional word element ‘chron’ in the sign applied for has no counterpart in the word element of the earlier sign. That additional word element is frequently used in the construction of words as a prefix or suffix to refer to the concept of ‘time’ and is thus understood by the Italian public. Therefore, on the whole, the Board of Appeal did not err in taking the view that, in making reference to the abovementioned concepts through the use of the word element ‘mito’, the signs at issue were highly similar on the conceptual level.
Likelihood of confusion
39      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 in Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 14 December 2006 in VENADO with frame and Others, T‑103/03, EU:T:2006:397, paragraph 74).
40      In paragraph 32 of the contested decision, the Board of Appeal considered that, in view of the fact that the goods covered by the signs at issue were partly identical and partly similar and having regard to the visual, phonetic and conceptual similarity between the signs, on the whole, there was a likelihood of confusion on the part of the relevant public, even if that public was particularly attentive.
41      In the first place, to the extent that the applicant argues that, in the present case, the phonetic impression is more important than the visual impression, it is sufficient to recall that, contrary to what it claims, the signs at issue resemble each other not only visually, but also phonetically and conceptually, with the result that that argument is ineffective.
42      In the second place, in relation to the applicant’s argument that the consumer has only a limited and more or less vague memory of a trade mark and will not encounter the marks at issue next to one another, it must be held, first, that that argument is inconsistent with its assertion that the relevant public has an increased level of attention overall, and, second, that, if that were taken as true, it would actually be an argument supporting a likelihood of confusion.
43      In the third place, the applicant argues that the distinctive character of the earlier mark is extremely weak. It argues that the word element of the earlier mark has a meaning in Romance languages and that a search carried out on the internet produced 24 million results for that word element.
44      As the Board of Appeal correctly found in paragraph 30 of the contested decision, the distinctive character of a trade mark must be assessed in relation to the goods or services for which it is registered (see, to that effect, judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 22). However, the applicant merely stresses the meaning of the word element ‘mito’ in Romance languages and the substantial number of internet search results, while neglecting to specify the extent to which the meaning of that element has only an extremely weak distinctive character specifically in relation to the goods for which the earlier mark is registered.
45      It is to be recalled that the word element ‘mito’ of the earlier mark means ‘myth’ in Italian. However, it is quite unusual to use that concept to refer to the ‘soaps, perfumery, cosmetics’ in Class 3, for which, inter alia, the earlier mark is registered. It follows that the distinctive character of the earlier mark must be seen as normal.
46      In the present case, it was found that the goods covered by the signs at issue were partly identical and partly similar, albeit to a low degree in relation to the ‘pharmaceutical and veterinary preparations, sanitary preparations’ in Class 5, for which the applicant requested registration of the mark applied for. It was also found that the signs at issue were visually and phonetically similar and highly similar on the conceptual level.
47      In that context, the existence of the earlier mark’s distinctive character is particularly relevant in circumstances such as those of the present case, where there is only a low degree of similarity between some of the goods at issue, namely the ‘pharmaceutical and veterinary preparations, sanitary preparations’ in Class 5, for which the applicant requested registration of the mark applied for, and where, in accordance with the case-law cited in paragraph 39 above, it is necessary to verify whether that low degree may be offset by a high degree of similarity between the signs at issue (see, to that effect, judgments of 22 September 2011 in ara v OHIM — Allrounder (A with two triangular motifs), T‑174/10, not published, EU:T:2011:519, paragraph 34; 11 June 2014 in METABIOMAX, T‑281/13, not published, EU:T:2014:440, paragraph 57; and 13 May 2015 in Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, not published, EU:T:2015:279, paragraph 57).
48      Therefore, in so far as it was found that the earlier mark did not have a weak distinctive character, but rather a normal distinctive character, it is appropriate to consider, in the circumstances of the present case, that the similarity between the signs at issue, which must be regarded as high on the conceptual level, is capable of offsetting the lower degree of similarity between the goods relating to ‘pharmaceutical and veterinary preparations, sanitary preparations’ in Class 5, for which the applicant requested registration of the mark applied for (see, by analogy, judgment of 11 June 2014 in METABIOMAX, T‑281/13, not published, EU:T:2014:440, paragraph 59).
49      In view also of the fact that the level of attention of the relevant public is partly high and partly average, the Board of Appeal was therefore right to conclude that, overall, there was a likelihood of confusion between the marks at issue on the part of the Italian-speaking relevant public.
50      As the single plea relied on by the applicant is unfounded, the action must be dismissed in its entirety without it being necessary to examine the admissibility of the applicant’s first head of claim in so far as it seeks to have the opposition rejected by the Court.
Costs
51      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 EUIPO.
On those grounds,
THE GENERAL COURT (Fourth Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Market Watch Franchise & Consulting, Inc. to pay the costs.
Prek
Labucka
Kreuschitz
Delivered in open court in Luxembourg on 13 May 2016.
[Signatures]
* Language of the case: English.