JUDGMENT OF THE GENERAL COURT (Third Chamber)
11 February 2015 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark Solidfloor The professional’s choice — Earlier national figurative mark SOLID floor, earlier trade name and domain name Solid Floor Ltd — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Similarity of the goods and services — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑395/12,
Fetim BV, established in Amsterdam (Netherlands), represented by L. Bakers, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Solid Floor Ltd, established in London (United Kingdom), represented by S. Malynicz, Barrister,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 15 June 2012 (Case R 884/2011-2), relating to opposition proceedings between Solid Floor Ltd and Fetim BV,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas (Rapporteur), President, N.J. Forwood and E. Bieliūnas, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 September 2012,
having regard to the response of OHIM lodged at the Court Registry on 19 December 2012,
having regard to the response of the intervener lodged at the Court Registry on 20 December 2012,
having regard to the reply lodged at the Court Registry on 29 April 2013,
having regard to the reassignment of the case to the Third Chamber and to a new Judge-Rapporteur,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 6 February 2007, the applicant, Fetim BV, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The mark in respect of which registration was sought is the figurative sign reproduced below:
3        The goods in respect of which registration was sought are in Class 19 under the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Building materials, not of metal, parquet flooring of plastic and wood, flooring of wood, cork and laminate; subfloors; transportable floors, not of metal’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 56/2007, of 1 October 2007.
5        On 31 December 2007, the intervener, Solid Floor Ltd, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), against 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 rights:
–        the earlier figurative mark registered on 13 October 2006 in the United Kingdom for ‘solid wood flooring; wooden parquet flooring’ in Class 19 and ‘installation of wood flooring’ in Class 37, reproduced below:
–        the trade name Solid Floor Ltd and the domain name ‘Solid Floor Ltd’, used in the course of trade in the United Kingdom for the following goods and services: ‘Non-metallic building materials; building components; wood; wood products for use in building; non-metallic flooring; floorboards; floor coverings; parquet flooring; plywood boards for flooring; floor panels; decking; floor tiles; slate flooring; stone flooring, parts and fittings for all the aforesaid goods; carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile); retail services in respect of the foregoing; floor construction and installation services; flooring installation services; carpentry services; maintenance and repair services all relating to floor coverings’.
7        The ground relied on in support of the opposition was inter alia that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8        On 28 February 2011, the Opposition Division rejected the opposition.
9        On 25 April 2011, the intervener filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 15 June 2012 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the Opposition Division’s decision, upheld the opposition in its entirety and refused the Community trade mark application. In particular, it held that the goods in question were partially identical and partially similar. It added that the trade mark applied for and the earlier trade mark were highly similar from a visual and phonetic point of view and from a conceptual point of view in respect of their common word element. It concluded that, given the overall impression created by the signs at issue, the level of similarity of the goods and the imperfect recollection and interdependence principles, there was a likelihood of confusion between those signs on the part of the relevant public, which consisted, in the present case, of the public at large and professionals in the field at issue.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14      The applicant claims, in essence, that the signs at issue are completely different if the word element ‘solid floor’, which is purely descriptive, is excluded from the comparison. The applicant concludes that there is no likelihood of confusion between the two signs and that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009.
15      OHIM and the intervener dispute those arguments.
16      In that respect, it should be noted that 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 the earlier trade mark and the identity or similarity of the goods or services covered by the two 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. Furthermore, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks’ means Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
17      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to 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. That global assessment 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 designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
18      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, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
19      The Board of Appeal held that the goods and services at issue were intended for all consumers, both the public at large and professionals in the field, within the territory of the United Kingdom, given that the earlier right relied on was a trade mark registered in the United Kingdom.
20      The applicant does not dispute that assessment, which must, moreover, having regard to the nature of the goods and services at issue, be endorsed.
21      As for the level of attention of the relevant public, the Board of Appeal held that it is average. Although not disputed by the applicant, that assessment cannot be endorsed. As the Opposition Division correctly stated, first, the level of attention of professionals will be, in essence, higher than the average and, secondly, the level of attention of the public at large will, in the present case, also be high, since the goods and services at issue are relatively expensive and are not bought, in the case of the goods, or sought, in the case of the services, on a frequent basis. The level of attention of the relevant public will therefore be higher than the average.
The comparison of the goods and services
22      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, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
23      In the present case, the Board of Appeal confirmed the Opposition Division’s assessment that the goods and services at issue were partially identical and partially similar. That assessment, which is untainted by error, must be upheld.
Comparison of the signs
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 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
25      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, paragraph 24 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment in OHIM v Shaker, paragraph 24 above, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, cited above, EU:C:2007:539, paragraph 43).
26      The Board of Appeal held that the signs at issue were visually and phonetically highly similar. From a conceptual point of view, it took the view that the signs at issue were similar to the extent that they shared the concept of a solid floor as a strong ground or surface. The Board of Appeal added that, so far as concerns the word element ‘the professional’s choice’ of the mark applied for, the signs at issue were not conceptually similar, since that element had no counterpart in the earlier mark.
27      In that regard, it should be remembered that the signs to be compared are the following:
Earlier mark
Mark applied for
28      As a preliminary point, it should be noted that, as regards the mark applied for, the Board of Appeal held that, having regard to its size and position in the sign, the word element ‘solidfloor’ constituted the dominant element. As regards the earlier mark, the Board of Appeal also held that figurative elements were lacking in specificity and originality and that, consequently, the distinctiveness of the word elements was higher than that of the figurative elements.
29      The applicant disputes that assessment and maintains, in essence, that, in view of its weak distinctive character, the Board of Appeal could not take into account the word element ‘solid floor’ of the signs at issue in order to compare those signs.
30      More specifically, the applicant complains that the Board of Appeal did not take into account the fact that when the United Kingdom Intellectual Property Office (‘the IPO’) registered the earlier mark, it stated that the distinctiveness of that mark had been acquired through use. The applicant adds that it is apparent from the registration dossier of that mark that the IPO considered that the distinctiveness of that mark stemmed more from its figurative elements than from the word element ‘solid floor’. The applicant claims that the Board of Appeal should also have taken into consideration the decision of 29 January 2010, by which the IPO upheld the opposition which it had brought against the application for the registration of the word mark ‘solid floor’ filed by the intervener, on the basis of the lack of distinctiveness of that sign. The applicant submits that, if the Board of Appeal had taken into account those two decisions, it would rightly have limited its analysis of the comparison of the signs at issue to their figurative elements, accordingly disregarding the word element ‘solid floor’ that lacked distinctiveness.
31      On the latter point it is sufficient to note that, although, in the interpretation of EU law, neither the parties nor the Court can be prevented from drawing on elements taken from national case-law, that case-law does not bind the Court, since the Community trade mark system is an autonomous system whose application is independent of all national systems (judgment of 9 March 2012 in Ella Valley Vineyards v OHIM — HFP (ELLA VALLEY VINEYARDS), T‑32/10, ECR, EU:T:2012:118, paragraph 54). Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. In those circumstances, when it made the comparison of the signs at issue, the Board of Appeal was bound neither by the analysis carried out by the IPO when registering the earlier mark nor by the IPO’s decision of 29 January 2010, which, moreover, did not concern the earlier mark.
32      In any event, the fact that the word element ‘solid floor’ of the earlier mark is only of weak distinctive character does not necessarily imply that that element cannot constitute a dominant element provided that, because, in particular, of its position in the sign or its size, it is capable of making an impression on consumers and of being remembered by them (see judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 54 and the case-law cited). In the present case, the word element ‘solid floor’ constitutes the dominant element both of the mark applied for and of the earlier mark. In the two marks at issue, the word element ‘solid floor’, by virtue of its position and size, and by virtue of the secondary nature of the other, both word and figurative, elements of those signs, will be considered by the relevant public to be dominant in the overall impression produced by those signs. This has all the more resonance in the earlier mark where that word element is repeated. In addition, it must be noted that, contrary to what the applicant claims, the Board of Appeal analysed, in paragraph 28 of the contested decision, the way in which the relevant public will perceive the elements which make up the earlier mark and, in particular, the two word elements ‘solid floor’ making up that mark. The Board of Appeal also explained, giving proper reasons for its decision in that regard, that, in the mark applied for, the distinctiveness of the word elements ‘solid floor’ was higher than that of the figurative elements, given the fact that the word elements of a mark are, in principle, more distinctive than its figurative elements because the average consumer will more readily refer to the goods in question by quoting the name of the mark than by describing the figurative element.
33      It follows from the foregoing that the Board of Appeal rightly took into account the word element ‘solid floor’ when it compared the signs at issue and did not confine itself, as the applicant suggests, solely to the figurative elements.
34      For the rest, it should be noted, as regards the mark applied for, that the Board of Appeal held that the word element ‘the professional’s choice’ was not, due to its size and position at the end of the mark applied for, particularly striking. The Board of Appeal added that that element would be perceived by the relevant public as a clearly laudatory and banal slogan with no trade mark connotations that would allow them to perceive it as a badge of origin. Although that assessment is without error, it should however be stated that the word element ‘the professional’s choice’ cannot, however, be considered to be negligible, having regard in particular to its size. Therefore, the assessment of the similarity between the signs at issue cannot be carried out solely on the basis of the dominant element (see, to that effect, judgments in OHIM v Shaker, paragraph 24 above, EU:C:2007:333, paragraph 42, and in Nestlé v OHIM, paragraph 25 above, EU:C:2007:539, paragraph 43).
35      From a visual point of view, it should be noted that the signs at issue have the word element ‘solid floor’ in common and that the mark applied for possesses another word element, namely ‘the professional’s choice’. In that regard, it should, first, be observed that that word element is composed of two words in the earlier mark whereas it is formed only of one word in the mark applied for, and it should, secondly, be remembered that that element appears twice in the earlier mark. As regards the fonts of the signs at issue, it should be noted that they are very similar. Furthermore, it should be noted that each of the two word elements of the earlier mark is composed of the word ‘solid’ placed above the word ‘floor’. One of those word elements is in black and white and the other is in mauve and white and they are depicted in part in italics, so far as concerns the lower part, and in part in capital letters, so far as concerns the upper part, whereas the word element ‘solidfloor’ of the mark applied for is depicted in lower case, with the exception of its first letter, in bold and in a colour which is similar to brown. Lastly, the figurative elements of the signs at issue are limited. One of the word elements ‘floor’ of the earlier mark is surrounded by a black rectangle and the other by a mauve rectangle and, in the background of the word elements of the mark applied for, there is a capital ‘s’ depicted with arabesques. However, despite those differences, the fact that the word element ‘solidfloor’ constitutes the dominant element both of the mark applied for and of the earlier mark means that a certain degree of visual similarity between the marks at issue cannot be denied (see, to that effect, judgment of 11 May 2010 in Wessang v OHIM — Greinwald (star foods), T‑492/08, EU:T:2010:186, paragraph 47).
36      In those circumstances, it must be concluded that, according to an overall impression, the signs at issue may be considered to be visually similar.
37      From a phonetic point of view, it must be stated that the common element ‘solid floor’ of the signs at issue — whether it is written as one or two words — will be pronounced identically by the relevant public. It is true that the word element ‘the professional’s choice’ of the mark applied for has no equivalent in the earlier mark. None the less, it should be stated that the word element ‘solidfloor’ is placed at the beginning of the sign applied for and that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and phonetically, than the final part (see judgment of 22 May 2012 in Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, EU:T:2012:254, paragraph 36 and the case-law cited). Furthermore, the fact that the figurative elements are left out of account when comparing the phonetic aspects of the signs at issue makes the similarities between the signs stand out more clearly than in the visual comparison (see judgment in SEVEN SUMMITS, cited above, EU:T:2012:254, paragraph 37 and the case-law cited).
38      Consequently, it must be concluded that, according to an overall impression and as the Board of Appeal rightly found, the signs at issue may be considered to be highly similar from a phonetic point of view.
39      From a conceptual point of view, the Board of Appeal was correct in finding that, in the mark applied for, consumers will perceive two terms, namely ‘solid’ and ‘floor’, which are contained in the earlier mark. The Board of Appeal added that the relevant public will understand the word ‘solid’ as meaning ‘strong or firm, keeping a clear shape’ in English and the word ‘floor’ as referring above all to the flat surface of a room on which you walk or to the level of a building. Accordingly, the word element ‘solid floor’ confers on the two signs at issue an identical semantic content and those signs therefore refer to the same concept, namely that of a solid floor or a strong surface. By contrast, as the Board of Appeal correctly observed, the expression ‘the professional’s choice’ in the mark applied for will be perceived by the relevant public as ‘selection done by experts’. None the less, that element will not alter the concept resulting from the word element ‘solid floor’, but, by virtue of its laudatory nature, will serve, on the contrary, to emphasise it.
40      In those circumstances, it must be held that, according to an overall impression and taking into account, first, the conceptual similarity of the signs at issue conferred by their common word element and, secondly, the other word element of the mark applied for, which has no equivalent in the earlier mark, those signs may be considered to be highly similar from a conceptual point of view.
The likelihood of confusion
41      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between the 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, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
42      The Board of Appeal held that the signs at issue shared identical or similar elements from a visual, phonetic and conceptual point of view. The Board of Appeal also noted that the earlier sign had been registered as a trade mark in the United Kingdom on the basis of acquired distinctiveness, and held that it was therefore necessary to acknowledge a certain degree of distinctiveness for it. The Board of Appeal concluded that, given the overall impression created by the signs at issue, the degree of similarity of the goods in question and the imperfect recollection and interdependence principles, there was a likelihood of confusion between those signs on the part of the relevant public.
43      The applicant submits that, taking account of the descriptive character of the words ‘solid floor’ and also the low degree of distinctiveness of the figurative elements of the earlier mark, there is no likelihood of confusion between the signs at issue.
44      In that regard, it should be observed that, as is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular, the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24, and 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20).
45      None the less, a finding that the earlier mark has weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment in PAGESJAUNES.COM, paragraph 32 above, EU:T:2007:387, paragraph 70 and the case-law cited).
46      Thus, in the present case, taking into account, first, the partial identity and partial similarity of the goods and services in question and, secondly, the similarity of the signs at issue, it must be held that the Board of Appeal was correct to find that there was a likelihood of confusion between the mark applied for and the earlier mark. In those circumstances, the fact that the earlier mark may be considered, like its component elements, to possess only a weak distinctive character is not capable, in the circumstances of the present case, of calling that conclusion into question.
47      It follows from all of the foregoing that the action must be dismissed.
Costs
48      Under Article 87(2) 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 OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Fetim BV to pay the costs.
Papasavvas
Forwood
Bieliūnas
Delivered in open court in Luxembourg on 11 February 2015.
[Signatures]
* Language of the case: English.