JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
21 May 2015 (*)
(Community trade mark — Opposition proceedings — Application for a Community figurative mark representing a wiggly line — Earlier national and international word and figurative marks DURU — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑56/14,
Evyap Sabun Yağ Gliserin Sanayi ve Ticaret A.Ş., established in Istanbul (Turkey), represented by J. Güell Serra, 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 being
Megusta Trading GmbH, established in Zurich (Switzerland),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 6 November 2013 (Case R 1861/2012-4) concerning opposition proceedings between Evyap Sabun Yağ Gliserin Sanayi ve Ticaret A.Ş. and Megusta Trading GmbH,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 24 January 2014,
having regard to the response of OHIM lodged at the Court Registry on 5 May 2014,
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 rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 9 August 2011, DVD1.CH GmbH 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). The mark applied for was at a later stage transferred to Megusta Trading GmbH.
2        Registration as a trade mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought fall within Class 3 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: ‘Articles for body and beauty-care’.
4        The application for a Community trade mark was published in Community Trade Marks Bulletin No 2011/161 of 26 August 2011.
5        On 23 November 2011, the applicant, Evyap Sabun Yağ Gliserin Sanayi ve Ticaret A.Ş., filed a notice of opposition under Article 41 of Regulation No 207/2009 to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        earlier Czech word mark DURU, registered under No 225 515 on 21 July 2000 and renewed until 8 February 2019, covering, inter alia, goods in Class 3 and corresponding to the following description: ‘Body care and beautification preparations’;
–        earlier Slovak word mark DURU, registered under No 192 722 on 19 October 2000 and renewed until 12 February 2019, covering, inter alia, goods in Class 3 and corresponding to the following description: ‘Body care and beauty preparations’;
–        earlier international figurative mark, reproduced below, registered under No 802 256 on 7 November 2002, covering various goods in Class 3:
–        earlier Bulgarian figurative mark, reproduced below, registered under No 29 149 on 24 October 1996 and renewed until 18 December 2015, covering various goods in Class 3:
–        earlier Romanian figurative mark, reproduced below, registered under No 31 665 on 31 May 1999 and renewed until 6 February 2016, covering various goods and services in, inter alia, Class 3:
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 7 August 2012, the Opposition Division rejected the opposition in its entirety.
9        On 8 October 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision. Megusta Trading GmbH requested that the goods covered by the application for registration be limited to ‘articles for body and beauty-care, namely gels for sexual purposes’. The applicant agreed to withdraw its opposition if that amendment were to be accepted by the Board of Appeal.
10      By decision of 6 November 2013 (‘the contested decision’), the Fourth Board of Appeal dismissed Megusta Trading’s request for a limitation of the goods and dismissed the action. Next, it held that the goods at issue targeted average end consumers, whose level of attentiveness was, in the light of the goods, rather low. The Board of Appeal started with an analysis of the earlier Czech and Slovak marks (‘the earlier marks’) and therefore took into account the relevant public in those territories.
11      The Board of Appeal held that the marks at issue, viewed as a whole, were dissimilar. It held that they were visually dissimilar, given that the mark applied for would be perceived by the relevant public as a figure forming a wiggly line and not as a sequence of letters forming a word. The Board of Appeal considered, however, that there was a slight visual similarity because of the figurative elements of the mark applied for, comparable to the letter ‘u’ present in the earlier marks. Taking into consideration the fact that the relevant public would not perceive the mark applied for as a word and that the mark DURU had no meaning for that public, the Board of Appeal concluded that it was not possible to make an aural and conceptual comparison of the marks at issue. It therefore held that the marks at issue were dissimilar overall and that, consequently, there was no likelihood of confusion.
12      Moreover, the Board of Appeal concluded that, even if the view were taken that there was a slight similarity between the marks at issue, there was no likelihood of confusion in the perception of the relevant public. In that regard, it held that the marks at issue had an average inherent distinctiveness and that, even though the letter ‘u’ of the earlier marks was identifiable in the sign applied for, the stylisation of the latter was such that the visual similarity would be negligible. The Board of Appeal took into consideration the low level of attentiveness of the relevant public in order to arrive at that conclusion. It also concluded that, from an aural point of view, the coincidence of the ‘u’ was not sufficient to call that into question. Finally, it concluded that the identity between the goods did not offset the differences between the marks at issue and that there was therefore no likelihood of confusion on the part of the relevant public. The Board of Appeal reached the same conclusion with regard to the other earlier marks relied on by the applicant, stating that they were even less similar than the marks which it had already analysed.
Procedure and forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
14      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
15      The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In this plea, the applicant raises two complaints, the first alleging that the Board of Appeal exceeded its discretion and the second alleging an error of assessment of the likelihood of confusion between the marks at issue.
16      OHIM contends that this plea should be rejected.
The first complaint, alleging that the Board of Appeal exceeded its discretion
17      The applicant claims that the Board of Appeal exceeded its discretion by considering, ultra petita, that the mark applied for was a figurative mark and not the mark ‘nuru’ in stylised letters. It submits that Megusta Trading and its predecessor in law never put forward arguments which would support the conclusions of the Board of Appeal. According to the applicant, those conclusions are therefore inconsistent with what is apparent from the file and the parties’ arguments. The applicant also claims that that conclusion is contrary to the designation of the mark applied for in OHIM’s databases and in other documents, such as the application for registration and the form for acknowledgment of receipt of the opposition where the mark is designated by the sequence of letters ‘nuru’.
18      OHIM disputes the applicant’s arguments.
19      It is apparent from the case-law that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (judgments of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 57, and 24 May 2011 in ancotel v OHIM — Acotel (ancotel.), T‑408/09, ECR, EU:T:2011:241, paragraph 20).
20      It is clear, in that regard, that, where it is based on Article 8(1)(b) of Regulation No 207/2009, opposition to the registration of a Community trade mark requires OHIM to adjudicate on whether the conflicting marks and the goods and services covered by them are identical or similar (see, to that effect, judgment in ancotel, paragraph 19 above, EU:T:2011:241, paragraph 21 and the case-law cited).
21      Consequently, the fact that the party which sought registration of the mark at issue did not put forward arguments before the Board of Appeal cannot in any way divest OHIM of the power to adjudicate on whether the signs at issue and the services and goods covered by them were identical or similar. In that regard, it must be stated that, where it determines the relevant public’s perception of a mark applied for, the Board of Appeal is by no means bound by the explanations given by the parties. On the contrary, as OHIM correctly submits, it is for the Board of Appeal to make its own interpretation of the marks at issue (see, to that effect, judgment of 15 March 2012 in Mustang v OHIM — Decathlon (Wavy line), T‑379/08, ECR, EU:T:2012:125, paragraph 35).
22      Similarly, there is no relevance in the argument that the mark applied for was designated by the sequence of letters ‘nuru’ in OHIM’s databases, in the application for registration and in the form for acknowledgment of receipt of the opposition. That fact has no bearing on the lawfulness of the contested decision, since that designation of the mark applied for has exclusively administrative purposes (judgment of 30 May 2013 in Brauerei Beck v OHIM — Aldi (Be Light), T‑172/12, ECR, EU:T:2013:286, paragraph 29).
23      It follows that the applicant’s first complaint must be rejected.
Comparison of the signs
24      As regards the likelihood of confusion, the applicant submits, in essence, that the Board of Appeal erred in finding that the mark applied for ‘[was] composed as a wiggly line divided into four stylised elements’, which would not be perceived by the public as the sequence of letters ‘n-u-r-u’ written in a stylised font. The applicant claims, in that regard, that the reasoning that ‘the overall impression is not that the contested sign constitutes a word as the elements are not placed on the same line’ is incorrect. On the contrary, according to the applicant, the mark applied for will be perceived by the relevant public as a stylised version of the letters ‘n’, ‘u’, ‘r’ and ‘u’.
25      Consequently, the applicant relies on a similarity between the marks at issue in the light of their length, structure, number of letters, colour and last three letters, namely ‘u’, ‘r’ and ‘u’, which are identical.
26      The applicant also contests the Board of Appeal’s finding that the marks are dissimilar because of the degree of stylisation of the mark applied for and the claim that ‘the identification [of the letter “u”] in the contested sign is not sufficient’ to offset the differences between the marks at issue.
27      According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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 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.
28      According to settled case-law, the risk that the public may 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 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 designated (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).
29      In the present case, the Board of Appeal held that the relevant territory consisted of that of the Czech Republic and Slovakia for the earlier word marks, with which it started its analysis. That assessment, which is moreover not contested by the parties, is correct and must be upheld.
30      Concerning the level of attention of the relevant public, it is settled case-law that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
31      In paragraph 20 of the contested decision, the Board of Appeal concluded that the goods targeted the average end consumers, whose level of attentiveness was, in the light of the goods, ‘rather low’.
32      In view of the nature of the goods concerned, namely, for the mark applied for, ‘articles for body and beauty-care’, it must be found that the relevant public consists of average consumers who are reasonably well informed and reasonably observant and circumspect, with the result that the relevant public’s attention cannot be regarded as low, even when the goods are goods of mass consumption (see, to that effect, judgments of 14 April 2011 in Lancôme v OHIM — Focus Magazin Verlag (ACNO FOCUS), T‑466/08, ECR, EU:T:2011:182, paragraph 49 and the case-law cited, and 22 May 2012 in Olive Line International v OHIM — Umbria Olii International (O·LIVE), T‑273/10, ECR, EU:T:2012:246, paragraph 41 and the case-law cited).
33      It follows that, in the present case, account should be taken of a reasonably well informed and reasonably observant and circumspect average consumer. When reviewing the legality of the contested decision with regard to the relevant public’s level of attention, the Court therefore rules that the Board of Appeal was wrong to hold that the relevant public’s level of attention was ‘rather low’.
34      The Board of Appeal concluded that the goods at issue were identical (paragraph 21 of the contested decision). That conclusion, which is moreover not called into question by the parties, must be upheld. The ‘articles for body and beauty care’ designated by the mark applied for are identical to the ‘body care and beautification preparations’ covered by the Czech and Slovak earlier marks.
35      As for the visual comparison of the signs, it must first be held that the mark applied for will be generally perceived as a whole as a mark composed of four figurative elements devoid of meaning, as the Board of Appeal correctly found. The mark applied for will be perceived by the relevant public as a figure forming a wiggly line and not as a sequence of letters forming a word.
36      However, it is conceivable that part of the relevant public will seek to give meaning to the mark applied for. In such a situation, that part of the relevant public will perceive the four figurative elements which make up the mark applied for as symbols and will most probably interpret them by comparing them to letters of the Latin alphabet. For that part of the relevant public, the mark applied for will therefore be perceived as a sequence of highly stylised letters most probably resembling ‘n-u-r-u’ or ‘n-u-p-u’, since the third figurative element may be perceived as the letter ‘r’ or the letter ‘p’. Even if some consumers were to interpret the figurative elements as a sequence of letters, the fact remains that the distinctive character of the mark applied for is the result of its high stylisation and not the possible similarities which that stylisation presents with letters of the Latin alphabet or a sequence of letters forming, for the majority of the relevant public, a word devoid of meaning (see paragraph 42 below). The letters in respect of which part of the relevant public will transpose the figurative elements of the mark applied for have only a low degree of inherent distinctiveness, thus occupying a secondary position within the mark applied for. By contrast, the high stylisation of the figurative elements of the mark applied for has a distinctive and dominant character in the overall view of the mark applied for.
37      The earlier marks are composed of a single word, ‘duru’, which is not divided into several elements.
38      In the light of the foregoing, it must be held that the marks at issue present similarities in the sense that the second and last figurative elements of the mark applied for resemble the letter ‘u’ present in the earlier marks. The marks at issue coincide so far as concerns the last three letters for the relevant public, which will interpret the figurative elements of the mark applied for as a sequence of letters ‘n-u-r-u’. However, those similarities cannot offset the overall visual differences in the marks at issue.
39      It follows that those marks have a low degree of visual similarity even in a situation where the relevant public perceives the mark applied for as a sequence of letters.
40      As regards the aural comparison and having regard to the above considerations, it should be noted that, for the part of the relevant public which will seek to interpret the mark applied for, there will be some similarity with the earlier marks DURU, in particular for those of the relevant public which will pronounce the mark applied for with the letters ‘n’, ‘u’, ‘r’ and ‘u’. The aural similarity will be lower for the part of the relevant public which will pronounce the mark applied for with the letters ‘n’, ‘u’, ‘p’ and ‘u’.
41      Consequently, the signs at issue have a low degree of aural similarity.
42      So far as concerns the conceptual comparison, it should be observed that there is nothing in the case-file to call into question the Board of Appeal’s conclusion that the mark applied for is devoid of meaning for the relevant public which perceives it as a mark composed of several figurative elements (paragraphs 22 and 23 of the contested decision). The same is true of the sequence of letters ‘n-u-r-u’ and also the sequence of letters ‘n-u-p-u’. Nor can the matters relied upon by the parties call into question the Board of Appeal’s conclusion that the word element ‘duru’ is devoid of meaning in the languages of the relevant public (paragraph 23 of the contested decision). Therefore, owing to the lack of meaning of the marks at issue, a conceptual comparison of those marks is not possible (see, to that effect, judgment of 16 September 2013 in Gitana v OHIM — Teddy (GITANA), T‑569/11, EU:T:2013:462, paragraph 67).
43      It is in the light of the above considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue should be examined.
44      In the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market (judgments of 3 July 2003 in Alejandro v OHIM — Anheuser-Busch (BUDMEN), T‑129/01, ECR, EU:T:2003:184, paragraph 57, and 6 October 2004 in New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293, paragraph 49).
45      The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed. If the goods covered by the mark in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important. If on the other hand the product covered is primarily sold orally, greater weight will usually be attributed to any aural similarity between the signs (judgment in NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 44 above, EU:T:2004:293, paragraph 49).
46      Generally, the goods at issue are sold over the counter in supermarkets and customers can choose them themselves. It is also possible that some of the goods at issue may be bought in shops where consumers can be assisted by the sales staff. However, whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the product is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (see, to that effect, judgment in NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 44 above, EU:T:2004:293, paragraph 50).
47      In view of the importance of the visual aspect of the marks at issue, the fact that the relevant public has a normal degree of attentiveness and the fact that the distinctive and dominant element of the mark applied for lies in the high stylisation of the letters, even for the part of the relevant public which will perceive the mark applied for as a sequence of stylised letters, it must be held that the Board of Appeal was right to conclude that there was no likelihood of confusion, even if the goods at issue are identical. The low visual and aural similarities of the marks at issue are not sufficient to offset the differences between those marks.
48      The Board of Appeal’s conclusion as to the other earlier marks mentioned in paragraph 6 above must also be upheld. Since those marks are figurative marks containing the word element ‘duru’ in slightly stylised forms, they present the same similarities and differences, or even more differences in relation to the mark applied for than the Czech and Slovak earlier marks examined above. Therefore, there is no likelihood of confusion between those earlier marks and the mark applied for.
49      It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, is unfounded. Consequently, the action must be dismissed.
Costs
50      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 bear its own costs and to pay those incurred by OHIM in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Evyap Sabun Yağ Gliserin Sanayi ve Ticaret A.Ş. to pay the costs.
Gratsias
Kancheva
Wetter
Delivered in open court in Luxembourg on 21 May 2015.
[Signatures]
* Language of the case: English.