JUDGMENT OF THE GENERAL COURT (First Chamber)
20 September 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark Eico — Earlier EU word mark MAICO — Relative ground for refusal — No likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑668/17,
Maico Holding GmbH, established in Villingen-Schwenningen (Germany), represented by T. Krüger and D. Deckers, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Eico A/S, established in Brønderslev (Denmark), represented by A. Skov, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 July 2017 (Case R 2089/2016‑4), relating to opposition proceedings between Maico Holding and Eico,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 September 2017,
having regard to the response of EUIPO lodged at the Court Registry on 6 February 2018,
having regard to the response of the intervener lodged at the Court Registry on 20 February 2018,
having regard to the fact that no request for a hearing was submitted by the 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 4 February 2015, the intervener, Eico A/S, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign Eico.
3        The goods in respect of which registration was sought are in, inter alia, Class 11 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: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Extractor hoods for kitchens; Filters for air extractor hoods; Cooking hobs; Sinks; Fittings for sinks, bathroom installations, massage baths, shower drains, bathtub drains; Basin mixers [taps]; Waste fittings for basins; Air deodorising apparatus; Roasting devices’.
4        The trade mark application was published in Community Trade Marks Bulletin No 37/2015 of 24 February 2015.
5        On 21 May 2015, the applicant, Maico Holding GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of certain of the goods referred to in paragraph 3 above, namely, the goods corresponding to the following description: ‘Apparatus for heating, refrigerating, drying, and ventilating’.
6        The opposition was based on the earlier EU word mark MAICO, registered on 16 February 2004 under No 2783678, covering, inter alia, goods in Class 11 and corresponding to the following description: ‘Apparatus and equipment for lighting, heating, cooking, refrigerating, drying and ventilating, and parts therefor, in particular electrically-powered fans, extractor fans, air-conditioning apparatus, and installations consisting thereof, fan heaters, air heaters and air purifiers, fresh air apparatus, heat-recovery apparatus, ventilation flaps and valves, air-inlet elements, sound dampers for ventilation systems, fire protection flaps, air grates and protective grates, included in class 11, heat exchangers, in particular regenerative and recuperative heat exchangers, heat pumps, gas, oil and wood-fired heating apparatus, drinking water and service water storage tanks and heaters, solar thermal and photovoltaic installations and apparatus’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 26 October 2016, the Opposition Division rejected the opposition.
9        On 15 November 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10      By decision of 27 July 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, after taking the view that the goods in question were intended as much for the general public as for business customers and that, for that type of goods, the level of attention of the general public was deemed to be high, it concluded that the visual and phonetic differences between the signs at issue outweighed their similarities, with the result that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision and the decision of the Opposition Division;
–        alter the contested decision and the decision of the Opposition Division so as to uphold the opposition; and
–        order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      As a preliminary point, it should be noted that, although it is true that the applicant stated in its application that it requested a hearing, that statement is not equivalent to a request for a hearing within the meaning of Article 106 of the Rules of Procedure of the General Court, read in conjunction with Article 191 of those rules. As the request was submitted too early in the light of those provisions, it could not be taken into consideration (see, to that effect, judgment of 30 January 2015, Siemag Tecberg Group v OHIM (Winder Controls), T‑593/13, not published, EU:T:2015:58, paragraph 14 and the case-law cited). Therefore, in accordance with those provisions, and in the absence of a request to that effect properly made by the parties in question, the Court is entitled to rule on this case without a hearing (see, to that effect, judgment of 26 October 2017, Erdinger Weißbräu WernerBrombach v EUIPO (Shape of a large glass), T‑857/16, not published, EU:T:2017:754, paragraph 13).
Admissibility
14      It should be noted at the outset that the applicant, by certain of its heads of claim, seeks the annulment as well as the alteration of the decision of the Opposition Division by the Court. It follows, however, from Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001) that an action brought before the General Court seeks to have the lawfulness of decisions of the Boards of Appeal alone examined and to obtain, as the case may be, the annulment or alteration of those decisions (see, to that effect, judgment of 21 June 2012, Fruit of the Loom v OHIM — Blueshore Management (FRUIT), T‑514/10, not published, EU:T:2012:316, paragraph 12).
15      Accordingly, the applicant’s heads of claim seeking the annulment and alteration of the decision of the Opposition Division must be rejected as inadmissible.
Substance
16      In support of its action, the applicant raises a single plea in law, alleging, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009. It submits that the Board of Appeal erred in concluding that there was no likelihood of confusion, in so far as, according to the applicant, first, the level of attention of the relevant public is lower than that accepted in the contested decision and, second, the signs at issue are highly similar in visual and phonetic terms.
17      EUIPO and the intervener dispute the applicant’s arguments.
18      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 must not 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.
19      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 the same line of 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 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 covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
20      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, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
21      According to the case-law, 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, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
22      The Board of Appeal observed, in paragraph 11 of the contested decision, that the goods covered by the signs at issue are intended as much for business customers as for the general public in all the EU Member States; having regard to the nature of those goods and to the fact that they are not everyday consumer goods, the general public displays a high level of attention.
23      Whilst the applicant acknowledges that the relevant territory is the European Union as a whole, it argues that some of the goods covered by the signs at issue belong to a category of goods used daily by the general public, particularly in the Member States in southern Europe, with the result that the level of attention of that public in respect of those goods should be considered to be average.
24      In that regard, according to case-law, the relevant public’s level of attention is likely to vary according to the category of the goods and services in question, with the result that, as regards everyday consumer goods, the average consumer’s level of attention is lower than that paid to durable goods or, simply, goods of a higher value or intended for more exceptional use (see, to that effect, judgment of 10 October 2007, Bang & Olufsen v OHIM (Shape of a loudspeaker), T‑460/05, EU:T:2007:304, paragraph 33).
25      In the present case, it must be borne in mind that, in the light of the nature of the goods concerned — their durable, expensive and technical nature in particular — the average consumer will display a high level of attention when purchasing such goods. The objective characteristics of the goods in question, which are essentially apparatus for heating, air conditioning, ventilating and plumbing, mean that the average consumer will purchase them only after careful examination, irrespective of the fact that he will use those goods regularly following their purchase and subsequent installation.
26      Thus, the Board of Appeal did not err in finding that the relevant public’s level of attention in respect of the goods covered by the marks at issue is high.
The comparison of the goods
27      The Board of Appeal noted, without being contradicted by the parties, that the goods in question are identical.
The comparison of the signs
28      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, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
29      The Board of Appeal essentially took the view, after having observed that the signs at issue are partially identical, that, on account of the brevity of those signs, the visual and phonetic differences between them outweighed their similarities.
30      The applicant, which argues that the characteristics common to the signs at issue are of greater importance in the eyes of the relevant public than the differences between them, submits that the earlier mark — MAICO — and the mark applied for — Eico — have a phonetically identical sequence of vowels, the same rhythm and the same number of syllables. From this the applicant infers that they have an average degree of visual similarity and a high degree of phonetic similarity.
–       Visual similarity
31      It should be noted, as observed by the Board of Appeal, that the signs at issue share the sequence of letters ‘i’, ‘c’ and ‘o’, placed at the end of each sign, although it must be pointed out that, in respect of word marks which are relatively short, the elements at the end of the sign are as important as those at the beginning of the sign and, as the case may be, as the central elements (see, to that effect, judgment of 20 April 2005, Krüger v OHIM — Calpis (CALPICO), T‑273/02, EU:T:2005:134, paragraph 39 and the case-law cited).
32      In addition, the signs at issue are of different lengths. Whereas the earlier mark is made up of five letters, the mark applied for contains four letters only.
33      The signs at issue also differ visually due to the sequence of letters ‘m’ and ‘a’, situated at the beginning of the earlier mark, and the single letter ‘e’, also situated at the beginning of the sign, in the mark applied for.
34      Thus, the Court finds that those differences, albeit slight, are nevertheless sufficient for the signs at issue to convey different overall visual impressions.
35      In those circumstances, the Board of Appeal was fully entitled to find that the signs at issue are visually different.
–       Phonetic similarity
36      It should be noted, as observed by the Board of Appeal, that, at least in German, the manner in which the sequence of letters ‘a’, ‘i’, ‘c’ and ‘o’ in the earlier mark is pronounced is identical to that of the sequence of letters ‘e’, ‘i’, ‘c’ and ‘o’ in the mark applied for, which means that they are phonetically highly similar for the German-speaking public.
37      However, the presence of the letter ‘m’ at the beginning of the earlier mark MAICO, which is immediately followed by the letter ‘a’, creates the first syllable ‘mai’, which differs from the first syllable of the mark applied for — Eico — irrespective of the language considered.
38      Thus, the Court finds that that difference is sufficient for the signs at issue to convey a different phonetic overall impression.
39      In those circumstances, the Board of Appeal was fully entitled to find that the signs at issue are phonetically different.
–       Conceptual similarity
40      As regards the conceptual comparison, the Board of Appeal stated in paragraph 16 of the contested decision, without being contradicted by the parties, that the signs at issue have no meaning, with the result that no conceptual comparison could be carried out.
The likelihood of confusion
41      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 that of the goods or services covered. 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
42      The Board of Appeal found, in paragraph 19 of the contested decision, that, having regard to the relevant public’s enhanced level of attention and the brevity of the signs at issue, which allow their visual and phonetic differences to be noticed more easily, there is no likelihood of confusion.
43      The applicant submits that, by reason of the fact that the goods covered by the signs at issue are identical, the weak visual and phonetic similarity of the signs is sufficient to lead to a likelihood of confusion.
44      In the present case, it is apparent from the analysis carried out in paragraphs 31 to 40 above that, bearing in mind the relevant public’s high level of attention, the differences between the signs at issue are sufficient for those signs to convey different overall impressions, with the result that, notwithstanding the fact that the goods in question are identical, there is no risk that the relevant public may believe that the goods in question come from the same undertaking or from economically-linked undertakings.
45      Consequently, the Board of Appeal did not err in finding, in the context of a global assessment, that, in the light of the differences between the signs at issue and the relevant public’s level of attention, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Costs
46      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.
47      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Maico Holding GmbH to pay the costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 20 September 2018.
E. Coulon
I. Pelikánová
Registrar
President
*      Language of the case: English.