JUDGMENT OF THE GENERAL COURT (Third Chamber)
16 December 2015 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark RED RIDING HOOD — Earlier national and international word marks ROTKÄPPCHEN — Relative ground for refusal — No likelihood of confusion — No similarity between the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑128/15,
Rotkäppchen-Mumm Sektkellereien GmbH, established in Freyburg (Germany), represented by W. Berlit, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Lewis and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Alberto Ruiz Moncayo, residing in Entrena (Spain), represented by E. Valentín Prades, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 28 January 2015 (Case R 1012/2014-4) relating to opposition proceedings between Rotkäppchen-Mumm Sektkellereien GmbH and Alberto Ruiz Moncayo,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas (Rapporteur), President, E. Bieliūnas and I.S. Forrester, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 March 2015,
having regard to the response of OHIM lodged at the Court Registry on 2 June 2015,
having regard to the response of the intervener lodged at the Court Registry on 25 June 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 28 October 2012, the intervener, Alberto Ruiz Moncayo, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the word sign RED RIDING HOOD.
3        The goods in respect of which registration was sought are in Class 33 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: ‘Alcoholic beverages (except beers); Hydromel [mead]; Piquette: Rice alcohol; Bitters; Anise [liqueur]; Anisette [liqueur]; Aperitifs; Arak [arrack]; Alcoholic beverages, except beer; Pre-mixed alcoholic beverages, other than beer-based; Alcoholic beverages containing fruit; Distilled beverages; Spirits [beverages]; Brandy; Cocktails; Curacao; Digesters [liqueurs and spirits]; Alcoholic essences; Alcoholic extracts; Fruit extracts, alcoholic: Gin; Kirsch; Liqueurs; Peppermint liqueurs; Perry; Rum; Sake; Cider; Wine; Vodka; Whisky’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 2013/029 of 11 February 2013.
5        On 8 May 2013, the applicant, Rotkäppchen-Mumm Sektkellereien GmbH, 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 German mark No 30 2008 011 188 and international registration No 976 731 ROTKÄPPCHEN, covering goods in Class 33 corresponding to the following description: ‘Alcoholic beverages (except beers)’.
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 27 March 2014, the Opposition Division rejected the opposition and ordered the applicant to pay the costs.
9        On 11 April 2014, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 28 January 2015 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal and ordered the applicant to pay the costs. In particular, the Board of Appeal considered that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, in so far as the signs at issue were different.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the Opposition Division’s decision of 27 March 2014 and the contested decision;
–        refuse the application for registration of the mark applied for;
–        order OHIM to pay the costs.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
13      The intervener contends that the Court should:
–        confirm the contested decision and the decision of the Opposition Division of 27 March 2014;
–        allow the application for registration of the sign for which registration is sought;
–        order the applicant to pay the costs.
Law
14      The applicant puts forward a single plea in law in support of its application, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15      The applicant claims, in essence, that there is a likelihood of confusion between the signs at issue, given that, first, the goods are identical and, secondly, the signs in question are conceptually similar.
16      OHIM and the intervener dispute that line of argument.
17      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. Moreover, under Article 8(2)(a)(ii) and (iv) of Regulation No 207/2009, the term ‘earlier trade marks’ is to be understood as meaning trade marks registered in a Member State and trade marks registered under international arrangements which have effect in the European Union, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
18      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, as the case may be, economically linked undertakings constitutes a likelihood of confusion. According to that same line of 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, 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 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
19      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).
20      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 at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, in order for registration of a Community 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, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).
21      As regards the relevant public, the Board of Appeal took the view that, since the goods in question were alcoholic beverages, the relevant public consisted of the end consumer forming part of the general public of legal drinking age. The Board of Appeal added, in respect of the earlier German mark, that the assessment of similarity between the signs must be based on the perception of the German public and that, in respect of the earlier international registration, the relevant public consisted of end consumers forming part of the general public of the European Union.
22      The applicant does not dispute that assessment, which is, moreover, correct and must be confirmed.
23      As regards the comparison of the signs, it should be noted that 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, 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
24      In the present case, the Board of Appeal considered, in essence, that the signs at issue were visually and phonetically different and that no conceptual comparison was possible, to the extent that, first, those signs did not allude to any concept that could allow such a comparison and, secondly, German, German-speaking or English-speaking consumers of the European Union would not perceive that those signs referred to the same character.
25      The applicant submits, in essence, that the signs at issue are conceptually similar in a substantial part of the relevant territory, in so far as they both refer to the fairy tale ‘Little Red Riding Hood’.
26      OHIM and the intervener dispute that argument.
27      In the first place, it must be noted that the Board of Appeal did not err in considering that the signs at issue were visually and phonetically different, which the applicant, moreover, does not dispute.
28      In the second place, as regards the conceptual comparison, it should be noted that the signs at issue are made up of the title of the fairy tale ‘Little Red Riding Hood’, in English, in respect of the mark applied for, and in German, in respect of the earlier marks. Such a linguistic distinction, in so far as it requires prior translation on the part of the consumer, is capable — depending, inter alia, on the linguistic knowledge of the relevant public, the degree of closeness of the languages concerned and the words used by the signs in question — of preventing the relevant public, to a greater or lesser extent, from making an immediate conceptual comparison. In that regard, it should be noted that knowledge of a foreign language cannot in general be assumed (see, to that effect, judgment of 26 September 2012 in Serrano Aranda v OHIM — Burg Groep (LE LANCIER), T‑265/09, EU:T:2012:472, paragraphs 65 and 66 and the case-law cited).
29      In those circumstances, contrary to the applicant’s claim, it must be noted that it has not been established that the meaning of the mark applied for, consisting of the words ‘red’, ‘riding’ and ‘hood’ will immediately be understood by the relevant public, namely the general public in the European Union, in particular the German-speaking public, which understands the word ‘rotkäppchen’ which constitutes the earlier marks.
30      Moreover, as OHIM correctly states, the words used in the signs at issue are very different. Accordingly, the lack of a root common to the German word ‘käppchen’ and the English word ‘hood’ does not allow the relevant public to perceive immediately that those two words have the same meaning. In addition, the German word ‘käppchen’ appears in a diminutive form which has no equivalent in the English expression ‘riding hood’, which suggest a hood worn while riding a horse. Furthermore, the earlier marks do not contain the concept corresponding to the word ‘riding’. Finally, the sign for which registration is sought includes three words while the earlier marks contain a single word only. It should be noted that such differences between the German and English versions of the title of the fairy tale ‘Little Red Riding Hood’ are capable of preventing a consumer with an average level of attention from perceiving immediately that the meaning of the signs at issue is similar.
31      Furthermore, while it is not disputed that the German public has a good knowledge of English in terms of everyday language, it has not been established that the words ‘red’, ‘riding’ and ‘hood’ of the mark applied for are part of basic English vocabulary. In the same way, the documents in the file do not show either that the English-speaking public has good knowledge of the German language or, in any event, that it will understand the word ‘rotkäppchen’.
32      Finally, even supposing that the words ‘red’, ‘riding’ and ‘hood’ form part of basic English vocabulary and that, accordingly, as such, they may be understood by the average consumer, including the average German-speaking consumer, that does not mean that that consumer, when purchasing everyday consumer goods, will immediately understand those words in the specific combination ‘red riding hood’ as being the English translation of the earlier marks.
33      In those circumstances, it must be considered that there are considerable differences between the two signs at issue, which prevent the relevant public from making an immediate conceptual comparison.
34      The applicant’s arguments cannot cast doubt on that finding.
35      First, the applicant claims that while the word ‘rotkäppchen’ is only used in Germany and Austria, it is translated into all the other EU languages. The applicant adds that the fact that the fairy tale ‘Little Red Riding Hood’ is known in every language spoken in the European Union and appears in different wording facilitates the relevant public’s recognition of that fairy tale in the two signs at issue, independently of the wording of those signs.
36      In that respect, it cannot be considered that the average consumer necessarily knows the title of the fairy tale ‘Little Red Riding Hood’ in a language other than his own, nor, as was stated in paragraphs 29 and 32 above, that the average consumer will immediately grasp the meaning of the sign for which registration is sought as being the English translation of the earlier marks. Furthermore, the significant differences between the signs at issue referred to in paragraph 30 above suffice to prevent the relevant public from making an immediate conceptual comparison and do not, as the applicant claims, facilitate such a comparison.
37      The applicant’s arguments seeking to establish that the signs at issue are conceptually similar, to the effect that, first, those signs will be understood as referring to the same fairy tale in a substantial part of the relevant territory and, secondly, that that reference will be understood, despite the fact that the English expression ‘red riding hood’ and the German word ‘rotkäppchen’ are spelt differently, must also be rejected for the same reasons.
38      Finally, the applicant submits that the fact that the fairy tale ‘Little Red Riding Hood’ was adapted for the cinema in 2011 and distributed around the world shows that the relevant public will make a link between the two signs at issue.
39      In that regard, it is sufficient to note, first, that the applicant adduces no evidence in support of its claims and, secondly, that such a fact is not sufficient to cast doubt on the findings made in paragraph 30 above.
40      Consequently, it should be considered that the relevant public will not, as a general rule, attribute any semantic content to the signs at issue, which implies that it will not, as a general rule, be in a position to make a conceptual comparison of the signs at issue (see judgment in LE LANCIER, cited in paragraph 28 above, EU:T:2012:472, paragraph 68 and the case-law cited). Consequently, the Board of Appeal was correct in considering that no conceptual comparison could be made between the signs at issue, on the ground that German, German-speaking and English-speaking consumers of the European Union would not perceive that the signs at issue both referred to the fairy tale ‘Little Red Riding Hood’.
41      In those circumstances, and without its being necessary to rule on the legality of the second ground relied on by the Board of Appeal, which, moreover, was not disputed by the applicant, to the effect that a name as such did not convey any concept which would allow for a conceptual comparison, the Board of Appeal did not err in considering that the signs at issue were different.
42      It follows from the above that the Board of Appeal was correct in rejecting the application of Article 8(1)(b) of Regulation No 207/2009 on the ground that one of the conditions provided for in that Article had not been fulfilled. Accordingly, the applicant’s arguments seeking to demonstrate the particularly distinctive character of the earlier marks are irrelevant.
43      Consequently, the present action must be dismissed, without it being necessary to rule on the admissibility of the claim seeking annulment of the Opposition Division’s decision and refusal of the application for registration of the mark applied for.
Costs
44      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.
45      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Rotkäppchen-Mumm Sektkellereien GmbH to pay the costs.
Papasavvas
Bieliūnas
Forrester
Delivered in open court in Luxembourg on 16 December 2015.
[Signatures]
*Language of the case: English.