JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
9 October 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark ZEBEXIR – Earlier Community word mark ZEBINIX – Relative grounds for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑366/11,
Bial-Portela & Ca, SA, established in São Mamede do Coronado (Portugal), represented by B. Braga da Cruz and J.M. Conceição Pimenta, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Isdin, SA, established in Barcelona (Spain), represented by P. López Ronda, G. Macias Bonilla, G. Marín Raigal and H.L. Curtis-Oliver, lawyers,
ACTION brought against the decision of the First Board of Appeal of OHIM of 6 April 2011 (Case R 1212/2009‑1), concerning opposition proceedings between Bial-Portela & Ca, SA and Isdin, SA,
THE GENERAL COURT (Fourth Chamber),
composed of I. Pelikánová (Rapporteur), President, K. Jürimäe and M. van der Woude, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 6 July 2011,
having regard to the response of OHIM lodged at the Court Registry on 4 November 2011,
having regard to the response of the intervener lodged at the Court Registry on 26 October 2011,
having regard to the reply lodged at the Court Registry on 5 March 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the proceedings
1        On 4 April 2008 the intervener, Isdin, SA, filed an application for 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). The application related to the registration of the word sign ZEBEXIR.
2        The goods in respect of which registration was sought fall within Classes 3 and 5 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description:
–        Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
–        Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.’
3        The Community trade mark application was published in Community Trade Marks Bulletin No 24/2008 of 16 June 2008.
4        On 9 September 2008, the applicant, Bial-Portela & Ca, SA, filed a notice of opposition to the registration of the mark applied for on the basis of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
5        The opposition was based on the earlier Community word mark ZEBINIX, filed on 28 October 2003 and registered on 14 March 2005 for the goods and services in Classes 3, 5 and 42 corresponding, for each of those classes, to the following description:
–        Class 3: ‘Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’;
–        Class 5: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’;
–        Class 42: ‘Scientific and technological services and research and design relating thereto, industrial analysis and research services.’
6        The opposition was directed against all the goods in respect of which registration had been sought.
7        By decision of 3 September 2009, the Opposition Division rejected the opposition for all the goods, finding that there was no likelihood of confusion between the signs within the meaning of Article 8(1)(b) of Regulation No 207/2009.
8        On 13 October 2009, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
9        By decision of 6 April 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s opposition in its entirety. In particular, it found that the relevant public is composed of all European Union consumers and that the goods designated by the earlier mark and those designated by the mark applied for are identical. It was of the opinion that, notwithstanding the common elements, in particular the first syllable and the first three letters, the global phonetic and visual impressions produced by the signs at issue are different. The Board of Appeal considered that, as the conceptual comparison does not influence the assessment of the similarity of the signs, the visual and phonetic differences are sufficiently relevant to exclude a likelihood of confusion, even for identical goods.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to refuse registration of the mark applied for;
–        order the intervener to pay the costs.
11      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
12      The intervener contends that the Court should:
–        dismiss the action and affirm the contested decision;
–        order the applicant to pay the costs incurred in the proceedings before OHIM and the costs incurred before the Court.
Law
Admissibility of the applicant’s second head of claim
13      OHIM claims that the applicant’s second head of claim is inadmissible to the extent that it requests the Court to issue an order to OHIM.
14      It should be recalled in that regard that, in accordance with Article 65(6) of Regulation No 207/2009, OHIM is required to take the necessary measures to comply with the judgment of the Courts of the European Union. Accordingly, it is not for the Court to issue orders to OHIM (Case T‑129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II‑2251, paragraph 22). It is thus for the latter to draw the appropriate inferences from the operative part of the Court’s judgments and the grounds on which they are based. The applicant’s second head of claim, seeking an order that OHIM refuse registration of the mark applied for, must therefore be dismissed as inadmissible.
Substance
15      The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
16      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 cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and, because of 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.
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 concerned and account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
18      In the present case, in respect of the relevant public, the Board of Appeal found that it is composed of the average consumer in the European Union, who is reasonably well informed and reasonably observant and circumspect. It is appropriate to endorse that finding, which the parties do not dispute. All of the goods in Classes 3 and 5 designated by the marks at issue are directed at the general public, with the sole exception of ‘material for stopping teeth, dental wax’ in Class 5 and designated by the two marks, which are directed at a professional public. However, since the general public are considered to be less informed and observant than the professional public, it is the level of attention of the former which must be taken into account.
19      Concerning the similarity of the goods at issue, the Board of Appeal was correct in finding that all of the goods in Classes 3 and 5 designated by the mark applied for are also in the list of goods designated by the earlier mark (see paragraphs 2 and 5 above). The parties did not dispute that finding. Consequently, the Board of Appeal’s finding that the goods designated by the marks at issue are identical must be confirmed.
Comparison of the signs
20      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, their distinctive and dominant components, in particular, being borne in mind. The perception of the marks by the average consumer of the goods or services at issue 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 Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
–       Visual similarity
21      In the contested decision, the Board of Appeal found that, despite the first three letters of the signs at issue being identical and the presence of some common letters in the other parts of those signs, the overall visual impression is sufficiently different. In particular, it noted that not only is the element ‘bin’ in the middle of the earlier mark different from the element ‘bex’ in the middle of the mark applied for, but that, furthermore, the earlier mark ends with the letter ‘x’, which is visually striking, whereas the mark applied for ends with the letter ‘r’.
22      The applicant claims that the first part of a mark makes the most impression on the consumer. In the present case, the mark applied for reproduces the first part of the earlier mark, which dominates the visual impression of both marks. Furthermore, of the seven letters which form the marks at issue, five are identical.
23      OHIM, supported by the intervener, disputes those arguments, and endorses, in essence, the assessments of the Board of Appeal.
24      In that regard, it must be noted that, as the applicant correctly pointed out, the consumer normally attaches more importance to the first part of words (Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81, and Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65). As that rule ‘normally’ applies and therefore is subject to exceptions, it is not called into question by the fact, relied on by OHIM, that the Court has found in certain cases, in respect of relatively short word signs, that the central elements are as important as the elements at the beginning and end of the sign (see Case T‑273/02 Krüger v OHIM – Calpis (CALPICO) [2005] ECR II‑1271, paragraph 39 and the case-law cited).
25      It should therefore be examined whether, in the present case, the visual similarity created by the common first part of the signs at issue is cancelled out by the differences created by the other parts of those signs.
26      Contrary to what the Board of Appeal found, the visual differences created by the central and end parts of the signs at issue, namely the groups of letters ‘inix’ in the earlier mark and ‘exir’ in the mark applied for, are not sufficient to cancel out the impression of similarity created by the common first part ‘zeb’ of the signs at issue. It is certainly true, as OHIM claims, that those groups of letters are different as regards the order of the vowels as well as that of the consonants and as regards the final letter. However, the two groups of letters contain the letters ‘i’ and ‘x’. Furthermore, it must be stated that the common letter ‘x’, which is visually striking, reinforces the similarity created by the common first part of the two signs, notwithstanding the fact that it is not situated in the same position in each of the signs at issue.
27      It follows that, contrary to what the Board of Appeal found, the signs at issue, taken as a whole, are visually similar. Consequently, the applicant’s claim in that regard must be accepted.
–       Phonetic similarity
28      As regards the phonetic comparison, the Board of Appeal found that the overall sounds of the signs are different because only the first syllable ‘ze’ of the three syllables in each sign is the same in the two marks, whereas the other syllables are different.
29      The applicant claims that, when the signs at issue are pronounced, the stress is placed on their common first part and that the other parts of the signs easily go unnoticed because of their weak sound.
30      OHIM, supported by the intervener, disputes those arguments, stating in particular that in several European Union languages the stress will be placed on the last syllables of the signs at issue.
31      First of all, the Court considers that the question regarding which syllables the consumer will stress when they pronounce the signs at issue is not relevant for the resolution of this case, since the reply is likely to vary depending on the languages in which those signs are pronounced, as OHIM correctly argues.
32      Next, it must be stated, first, that the marks are each composed of three syllables, namely ‘ze-bi-nix’ for the earlier mark and ‘ze-be-xir’ for the mark applied for. Second, the first syllable is identical in the two marks at issue. Third, the second syllables ‘be’ and ‘bi’ of the marks at issue are different but close in their sound. Fourth, the third syllables ‘xir’ and ‘nix’ of the marks at issue are distinct but contain the common letters ‘i’ and ‘x’, the second of which has a clearly recognisable sound. Fifth, far from having a weak sound as the applicant claims, the sounds ‘eks’ in the middle of the mark applied for and ‘iks’ at the end of the earlier mark are capable of attracting consumers’ attention. However, since the phonetic impressions produced by those two sounds are very similar, they cannot contribute in a decisive manner to the creation of a phonetic difference between the signs at issue.
33      In conclusion, it must be stated that, assessed globally, the phonetic differences between the marks at issue do not preclude some similarity in that respect.
34      It follows that the signs at issue have a certain level of phonetic similarity. Consequently, the Board of Appeal erred in finding that there is no phonetic similarity between the signs. Therefore, the applicant’s claim in that regard must be upheld.
–       Conceptual similarity
35      As regards the conceptual similarity, the Board of Appeal was correct in finding that neither sign has a meaning in the relevant languages and that the conceptual comparison does not therefore influence the comparison of the signs. Indeed the parties do not dispute that finding.
36      In the light of the foregoing, it must be held that, as regards the examination of the visual and phonetic similarity between the mark applied for and the earlier mark, the Board of Appeal made errors which affect the degree of similarity found.
37      However, it is still necessary to verify whether those errors had an influence on the Board of Appeal’s global assessment of the existence of a likelihood of confusion. For the purposes of that verification, it must be noted that the marks at issue are visually similar to an average degree and that they have a certain level of phonetic similarity, which results in an average degree of global similarity.
Likelihood of confusion
38      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 marks and the similarity of the goods or services concerned. 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).
39      In the present case, the Board of Appeal found that, despite the common elements of the marks, their phonetic and visual differences were sufficiently relevant to exclude any likelihood of confusion, even for identical goods.
40      However, contrary to what the Board of Appeal found, the signs at issue have an average degree of similarity, particularly visually. In that respect, account must also be taken of the fact that the goods in Class 3 and a large proportion of the goods in Class 5 (namely food for babies, materials for dressings, disinfectants; preparations for destroying vermin; fungicides, herbicides), designated by the marks at issue, are normally marketed on display in supermarkets and therefore chosen by the consumers after a visual examination of their packaging, which means that the visual similarity of the signs is especially important. It must therefore be found that there is a likelihood of confusion between the mark applied for and the earlier mark.
41      Therefore, the applicant’s single plea in law must be accepted and the contested decision annulled.
Costs
42      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. Since OHIM has been unsuccessful, it must be ordered to bear its own costs and pay those of the applicant, in accordance with the form of order sought by the applicant. Since the intervener has been unsuccessful, it must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 April 2011 (Case R 1212/2009-1);
2.      Orders OHIM to bear its own costs and to pay those of Bial-Portela & Ca, SA;
3.      Orders Isdin, SA to bear its own costs.
Pelikánová
Jürimäe
Van der Woude
Delivered in open court in Luxembourg on 9 October 2012.
[Signatures]
* Language of the case: English.