JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
21 June 2012 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark Yakut – Earlier Community figurative mark Yakult – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑276/09,
Kavaklidere-Europe, established in Schoten (Belgium), represented initially by J. Vercraeye and I. Tytgat, and subsequently by J. Vercraeye and B. De Vuyst, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Yakult Honsha Kabushiki Kaisha, established in Tokyo (Japan), represented by M. Edenborough QC, P. Harris, Solicitor, and T. Elias, Barrister,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 8 May 2009 (Case R 1396/2008‑4) concerning opposition proceedings between Yakult Honsha Kabushiki Kaisha and Kavaklidere-Europe,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas, President, V. Vadapalas (Rapporteur) and K. O’Higgins, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 10 July 2009,
having regard to the response of OHIM lodged at the Court Registry on 25 November 2009,
having regard to the response of the intervener lodged at the Court Registry on 25 November 2009,
having regard to the reply lodged at the Court Registry on 20 April 2010,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the assignment of the case to a new Judge-Rapporteur,
further to the hearing on 29 March 2012, in which the applicant and OHIM did not participate,
gives the following
Judgment
Background to the dispute
1        On 10 January 2005, the applicant, Kavaklidere-Europe, filed an application for registration of a Community trade mark with 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 (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 trade mark for which registration was sought is the word sign Yakut.
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)’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 27/2006 of 3 July 2006.
5        On 16 August 2006, the intervener, Yakult Honsha Kabushiki Kaisha, filed a notice of opposition under Article 42 of Regulation No 40/94 (now 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, inter alia, the following Community figurative mark, registered under number 4126843:
7        The goods covered by the earlier mark forming the basis of the opposition fall within Classes 29 and 32 and correspond, for each of those classes, to the following description:
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats’;
–        Class 32: ‘Beers; mineral and aerated waters and other non‑alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
8        The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) and (5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009).
9        On 30 July 2008, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94. The Opposition Division found that the goods in question were similar, as were the signs at issue, from both a visual and phonetic point of view. It also found that the signs at issue did not convey any particular concept given that they had no meaning in the languages concerned.
10      On 26 September 2008, the applicant filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
11      By decision of 8 May 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It concluded that there was a likelihood of confusion, including a likelihood of association, between the marks at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009 and that an examination of the grounds of opposition under Article 8(4) and (5) of Regulation No 207/2009 could be dispensed with.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        declare that the trade mark Yakut should be allowed for registration as a Community trade mark;
–        order OHIM to pay the costs, including those incurred by the applicant before the Fourth Board of Appeal.
13      OHIM contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
14      The intervener claims that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs;
–        declare the second claim of the applicant to be inadmissible;
–        remit the case to the Opposition Division for it to examine the applicant’s arguments based on Article 8(4) and (5) of Regulation No 207/2009, if the General Court were to find in the applicant’s favour in respect of Article 8(1)(b) of Regulation No 207/2009.
15      In its reply, the applicant no longer seeks a declaration by the General Court that the trade mark Yakut should be allowed for registration as a Community trade mark.
Law
Admissibility of the applicant’s second head of claim
16      In its application, in its second claim, the applicant asks the Court to declare that the trade mark applied for should be allowed for registration. However, it makes no further mention of that head of claim in its reply. Since the applicant did not wish to take part in the hearing, the Court did not have the opportunity to question it on that matter. On the assumption that the applicant has not abandoned that head of claim, it must be interpreted as seeking an order requiring OHIM to register that mark.
17      It is, however, settled case-law that, in an action brought before the Courts of the European Union against the decision of a Board of Appeal of OHIM, OHIM is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with the judgments of those Courts. Accordingly, it is not for the General Court to issue directions to OHIM, which is required to draw the appropriate inferences from the operative part and grounds of the Court’s judgment (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 20 and the case-law cited). Therefore, the applicant’s second claim seeking to have the Court order OHIM to grant the application for registration of the mark Yakut is inadmissible.
Substance
18      In support of its action, the applicant raises, in essence, two pleas, alleging, first, infringement of Article 8(1)(b) and (4) of Regulation No 207/2009, and, secondly, infringement of Article 8(5) of that regulation.
19      By the first plea, the applicant claims, in essence, that the Board of Appeal erred in concluding that there was a likelihood of confusion between the marks at issue since, first, the relevant public considers the goods in question to be different and, secondly, Yakult is a figurative mark composed of an oval outline whereas Yakut is a word mark.
20      OHIM and the intervener contest the applicant’s arguments.
21      Under Article 8(1)(b) of Regulation No 207/2009, 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 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.
22      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. Under that 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 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 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).
23      It should be noted that none of the parties disputes the Board of Appeal’s analysis according to which the goods in question are intended for the average final consumer in the European Union, from whom a particularly high level of attention is neither required nor is usually present at the time when a purchase is made.
24      In the present action, it is therefore necessary to review the lawfulness of the assessment made by the Board of Appeal as regards the existence of a likelihood of confusion between the trade mark applied for and the earlier mark.
The similarity of the goods in question
25      According to settled case-law, in assessing the similarity of the goods in question, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, 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 PiraÑAM diseño original Juan Bolaños, paragraph 37 and the case‑law cited).
26      The Board of Appeal confirmed the Opposition Division’s conclusion that the goods in question had to be regarded as similar. The ‘alcoholic beverages (except beers)’ covered by the mark applied for, Yakut, which include cider, liqueurs and wines, and the ‘beers’ covered by the earlier mark Yakult are similar, given that the ‘alcoholic beverages (except beers)’ belong to the broader group of alcoholic drinks which are targeted at a wide public. Moreover, the goods covered by the mark applied for, Yakut, and the broad group of ‘non-alcoholic drinks, fruit drinks and fruit juices; syrups and other preparations for making beverages’ covered by the earlier mark Yakult should be regarded as similar. The Board of Appeal states in particular that ‘alcoholic beverages’ include drinks with a very low degree of alcohol, such as shandies, wines, sparkling wines or cider. They can be regarded as meeting the same need to ‘quench thirst’, even if they contain different ingredients. Furthermore, there is at least an average degree of similarity given that those goods are drinks or ingredients necessary to prepare drinks. Lastly, there is also similarity between wine, which is a sub-category of ‘alcoholic beverages’ covered by the mark applied for, Yakut, and the ‘fruit drinks and fruit juices’ covered by the earlier mark Yakult. There is a similarity between fruit juices which include grape juice and wine, since they are both produced from grapes.
27      The applicant submits that beer and wine are not considered by the relevant public to be similar goods. It contends that decisions of the Board of Appeal and the judgment in Case T‑175/06 Coca‑Cola v OHIM – San Polo (MEZZOPANE) [2008] ECR II‑1055, paragraph 70, have found that the degree of similarity between beer and wine is low. The applicant argues that, even if those goods are alcoholic drinks which are interchangeable to a certain extent, they represent distinct families of alcoholic beverages, wines coming from wine cellars whereas beers come from breweries, which apply different methods of production and use different basic ingredients. Moreover, the mark Yakult has not yet been used as a trade mark for beer for a period of nearly five years, after which time the mark will no longer be able to be used for those goods. The applicant also submits that it follows from a decision of the Board of Appeal of 10 July 2008 (Bodegas Maximo, S.L. v MIP Metro Group Intellectual Property GmbH & Co. KG, Case R 1646/2007-1) that the relevant public does not consider grape juice and wine to be similar goods. The production of wine requires several additional manufacturing steps to that of grape juice, and therefore those drinks are not complementary or interchangeable. Whereas grape juice merely functions as a thirst quencher, in the same way as any other fruit juice, wine belongs to the category of alcoholic beverages, which constitute a distinct category due to their potential intoxicating effects which exclude them from being consumed by children and teetotallers. The applicant adds that it follows from the judgment in Case T‑296/02 Lidl Stiftung v OHIM – REWE-Zentral (LINDENHOF) [2005] ECR II‑563 that non-alcoholic beverages and sparkling wines are not considered to be similar goods by the relevant public.
28      OHIM and the intervener contest the applicant’s arguments.
29      It must be stated that case‑law establishes that the term ‘alcoholic beverages’ includes cider, as well as ‘alcopops’, and that those beverages are very similar to beer. It also follows that, apart from wines and spirits, alcoholic drinks, including beer, are consumed for the same reason and have the same distribution outlets (order of 15 November 2006 in Case T‑366/05 Anheuser-Busch v OHIM – Budějovický Budvar (BUDWEISER), not published in the ECR, paragraph 45).
30      There is, therefore, a large degree of similarity between the ‘beers’ covered by the earlier mark and the ‘alcoholic beverages (except beers)’ covered by the mark applied for. This is because the latter category undoubtedly applies to cider (as the Board of Appeal noted in the contested decision – without being challenged on that point). It also applies to ‘alcopops’, which are based on a mixture of soda and alcoholic beverages.
31      That high degree of similarity is not called into question or lessened by the fact that there is only a low degree of similarity, or indeed none at all, between certain goods in the broad category of goods covered by the mark applied for, and also certain goods in one of the categories of goods covered by the earlier mark.
32      Therefore, the applicant’s arguments seeking to compare wine with beer or alcoholic beverages with sparkling wine are not relevant in the present case.
33      The same applies to the applicant’s argument that the mark Yakult has not yet been used for beer. This is because the goods to be compared are those set out in the respective lists of goods covered by the marks at issue, and not those which are or are not actually used (see, to that effect, judgment of 22 April 2008 in Case T‑233/06 Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), not published in the ECR, paragraph 30).
34      Consequently, it must be held that there is a high degree of similarity between the goods in question.
Similarity of the signs at issue
35      The global assessment of the likelihood of confusion, in relation to the visual, aural 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 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 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 case-law cited).
36      In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his imperfect recollection of them (see 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 68 and the case‑law cited).
37      The 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. Rather, the comparison must be made by examining each of the marks in question as a whole, which is not to say 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 OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are insignificant that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, especially, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are insignificant in the overall impression created by it (Nestlé v OHIM, paragraph 43).
38      Lastly, there is nothing to prevent an assessment as to whether there is any visual similarity between a word mark and a figurative mark, because the two types of mark have a graphic form capable of creating a visual impression (see Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II‑1515, paragraph 43 and the case-law cited).
39      The Board of Appeal found that there was a high degree of visual similarity between the signs at issue. From a phonetic point of view, it considered that there was also a high degree of similarity between those signs. Lastly, from a conceptual point of view, it held that no comparison of the signs in question was possible.
40      At the outset, it should be noted that no party disputes the Board of Appeal’s finding that a conceptual comparison of the signs at issue is not possible because they are devoid of meaning.
41      The applicant claims, in its application, that the earlier mark is a figurative mark composed of an oval outline, whereas the mark applied for is a word mark, which gives them a different overall visual impression. Furthermore, the earlier mark has not yet been used for beer and therefore the comparison of the signs at issue is purely hypothetical. In its reply, the applicant argues that the figurative component of the earlier mark, always accompanied by red brackets, figures centrally on its bottles of probiotic milk beverages. That figurative component can therefore be seen as the dominant element amounting to the distinctive character of the earlier mark. Thus, it argues, there is only a weak visual similarity between the signs at issue. As regards the degree of phonetic similarity, the fact that the number of letters making up two word marks is the same and the fact that they appear to be made up of the same letters is not, as such, of any particular significance.
42      OHIM and the intervener take issue with the applicant’s arguments. In addition, OHIM considers that the applicant has failed to advance precise arguments in support of its application concerning the comparison of the signs at issue and that, consequently, its related claim is entirely unsubstantiated.
43      First, OHIM’s argument to that effect must be rejected. Even if it was only at the reply stage that the applicant explained why it took the view that there was no likelihood of confusion between the signs at issue, it has disputed the Board of Appeal’s assessment in that regard from the time of its application.
44      With regard to the applicant’s argument that the comparison of the signs at issue is hypothetical, given that the earlier mark has not yet been used for beer, it should be recalled that the issue of use is not relevant in the present case (see paragraph 33 above).
45      From a visual point of view, it must be held that, in the two signs at issue, the letters ‘y’, ‘a’, ‘k’, ‘u’ and ‘t’ are reproduced in the same order, with the word element ‘yakult’ of the earlier sign containing only one additional letter, namely the letter ‘l’, placed second to last. First, the consumer generally pays greater attention to the beginning of a mark than to the end (Case T‑580/08 PJ Hungary v OHIM – Pepekillo (PEPEQUILLO) [2011] ECR II‑0000, paragraph 77 and the case‑law cited), and, secondly, the additional letter ‘l’ and the adjacent letter ‘t’ together form ‘lt’, that is to say, tall and narrow letters which do not go below the base line. The additional letter ‘l’ is thus barely visible and, ultimately, the difference between the two signs at issue is scarcely noticeable by the average consumer, who would not remember such a subtle difference, even assuming that he had noticed it.
46      As for the graphic element of the earlier figurative mark, the only element capable of being distinctive consists of shapes similar to brackets which merely surround the word element ‘yakult’. That element cannot be regarded as the dominant element in the overall impression produced by the sign Yakult. It is a sort of outline, in oval form, that is to say, a simple geometric form which will not evoke any particular concept for the average consumer.
47      In that regard, as the Board of Appeal noted in paragraph 23 of the contested decision, the Court has already held that an oval outline is clearly of secondary and accessory importance in comparison with the central element that it surrounds (see Case T‑364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraph 98).
48      Lastly, as regards the applicant’s argument concerning the figurative element of the earlier mark, that is to say, alleged red brackets surrounding the word element ‘yakult’ and the central position of that word element on bottles of probiotic milk beverages, the unavoidable conclusion is that that mark, as registered, does not claim any particular colour, does not state where the mark must be affixed to the goods and is in no way protected solely for the marketing of bottles of probiotic milk beverages.
49      Consequently, the signs at issue have a high degree of visual similarity.
50      From a phonetic point of view, as the Board of Appeal noted at paragraph 25 of the contested decision, the additional letter ‘l’ of the element ‘yakult’ of the earlier mark does not result, irrespective of which official language of the European Union serves as a reference point, in any noticeable difference in the pronunciation of that mark by the average consumer compared with that of the element ‘yakut’ of the mark applied for.
51      Therefore, there is also a high degree of phonetic similarity between the signs at issue.
The likelihood of confusion
52      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 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).
53      The Board of Appeal found that, because of the similarity between the goods in question, in Classes 32 and 33 respectively, as well as the high degree of phonetic and visual similarity between the signs at issue, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
54      In its reply the applicant argues that, because the signs at issue are visually similar only to a limited extent, there is not a likelihood of confusion in the mind of the average consumer. Moreover, it contends that the earlier mark is put exclusively on transparent plastic bottles of a specific shape. That specific condition under which the goods are marketed rules out any risk of confusion in the mind of the average consumer, who will see the mark applied for reproduced only on large glass bottles. The degree of phonetic similarity between the marks at issue is therefore of lesser importance, since the relevant public, when making a purchase, will perceive visually the mark designating those goods. Therefore, the differences between those goods cannot be offset by the partial similarity between the signs at issue, namely the phonetic similarity between two words which have no meaning in the languages concerned.
55      OHIM and the intervener dispute the applicant’s arguments.
56      As has been found above, there is a high degree of visual and phonetic similarity between the signs in question. Moreover, it should be recalled that there is a high degree of similarity between the goods at issue.
57      In those circumstances, and particularly in view of the fact that the relevant public retains only an imperfect image of the marks at issue (see, to that effect, judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraph 36), with the result that the differences, consisting, from a visual point of view, in the presence of a component in the shape of an oval outline and, from a visual and phonetic point of view, in the presence of the additional letter ‘l’ in the earlier mark, are not sufficient to reduce the high degree of visual and phonetic similarity, the Board of Appeal was correct to conclude that there is a likelihood of confusion between the signs at issue.
58      The applicant’s argument concerning the alleged marketing of the goods covered by the earlier mark in transparent plastic bottles of a specific shape is wholly unfounded, given that it does not at all follow from the registration of that mark that the goods that are marketed can be marketed only in that way (see paragraph 48 above).
59      Consequently, without it being necessary to examine the applicant’s arguments based, in the first plea, on Article 8(4) of Regulation No 207/2009, or, in the second plea, on Article 8(5) of that regulation, it must be held that the Board of Appeal acted correctly in concluding, in the contested decision, that there was a likelihood of confusion between the signs at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
60      Therefore, the action must be dismissed in its entirety.
Costs
61      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 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 (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Kavaklidere-Europe to pay the costs.
Papasavvas
Vadapalas
O’Higgins
Delivered in open court in Luxembourg on 21 June 2012.
[Signatures]
* Language of the case: English.