JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
8 October 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark dodie — Earlier national word marks DODOT — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Cases T‑122/13 and T‑123/13,
Laboratoires Polive, established in Levallois-Perret (France), represented by A. Sion, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Arbora & Ausonia, SLU, established in Barcelona (Spain), represented by R. Guerras Mazón, lawyer,
TWO ACTIONS brought against two decisions of the Second Board of Appeal of OHIM of 28 November 2012 (Cases R 2324/2011-2 and R 2325/2011-2, respectively) relating to two sets of opposition proceedings between Arbora & Ausonia, SLU and Laboratoires Polive,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: E. Coulon,
having regard to the applications lodged at the Court Registry on 21 February 2013,
having regard to the responses of OHIM lodged at the Court Registry on 29 May 2013,
having regard to the responses of the intervener lodged at the Court Registry on 10 June 2013,
having regard to the observations lodged by the parties at the Court Registry on 19 and 26 June and 2 July 2013 regarding the joinder of Cases T‑122/13 and T‑123/13 for the purposes of the final decision,
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 19 April 2010, the applicant, Laboratoires Polive, filed two applications for registration of Community trade marks at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        In Cases T‑122/13 and T‑123/13, respectively, the marks in respect of which registrations were sought are the following figurative signs:
3        Those signs can be distinguished only by their colour, the first being white and blue and the second being white and black.
4        The goods in respect of which the two registrations were sought are in, amongst others, Classes 3, 5, 8, 10, 11, 16, 18, 21, 25 and 28 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, for each of those classes, inter alia, to the following description:
–        Class 3: ‘Shampoos, foamable preparations for the bath and other bath products, eaux de toilette, perfumery’;
–        Class 5: ‘Sterilising preparations, physiological serum; napkins and wipes impregnated with physiological serum, pomades for medical purposes in gel or non-gel form, breastfeeding pads’;
–        Class 8: ‘Scissors, tongs for baby bottles, cutlery (knives, forks and spoons), not of precious metal’;
–        Class 10: ‘Baby bottles, bottle grips, feeding bottle teats, physiological dummies; teething rings; breast pumps, milk collectors, nipple shields’;
–        Class 11: ‘Sterilisers, electric heaters for feeding bottles’;
–        Class 16: ‘Bibs of paper’;
–        Class 18: ‘Cases and bags for transporting beauty care products and for transporting accessories for babies’;
–        Class 21: ‘Table plates, not of precious metal; brushes for baby bottles, sterilisers, toilet sets, combs, brushes, soapboxes, sponges; perfume sprayers’;
–        Class 25: ‘Bibs, not of paper’;
–        Class 28: ‘Rattles, play handles’.
5        The two Community trade mark applications were published in Community Trade Marks Bulletin No 117/2010 of 29 June 2010.
6        On 28 September 2010, the intervener, Arbora & Ausonia, SLU, filed notices of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the trade marks applied for in respect of the goods referred to in paragraph 4 above.
7        The oppositions were based, inter alia, on the following earlier rights: the earlier Spanish word mark DODOT, registered under number 2601120 on 30 August 2005, and the earlier Portuguese word mark DODOT, registered under number 382292 on 5 July 2005 (‘the Spanish mark’ and ‘the Portuguese mark’, respectively, or, taken together, ‘the earlier marks’). Those trade marks cover the goods in Classes 3, 5, 10, 12, 16, 18, 20, 21, 24, 25, 28 and 44 corresponding, for each of those classes, to the following description:
–        Class 3: ‘Perfumery and cosmetics, essential oils, shampoos, soaps and dentifrices, creams and lotions for the care of the skin and hair, cleansing wipes, wipes impregnated with liquid soap with or without perfume and wipes impregnated with cleansing products, moisturisers and cosmetics; cosmetic kits’;
–        Class 5: ‘Medical sanitary products, plasters, materials for dressings, dressings, disinfectants for hygiene purposes (excluding disinfectant soaps), sanitary towels, compresses, panty-liners (sanitary products), tampons for menstruation, sterilised gauzes, incontinence pants, sanitary pants, absorbent pants for incontinents; food for babies, portable cases for medicines, tissues impregnated with pharmaceutical lotions’;
–        Class 10: ‘Sheets for incontinents, baby bottles, teats and closings of baby bottles’;
–        Class 12: ‘Vehicle safety seats for children, prams for babies’;
–        Class 16: ‘Nappies and nappy pants of paper and cellulose; tissues, napkins, toilet tissues and tablecloths of paper and cellulose; bibs of paper, toilet paper; paper and articles of paper, cardboard and articles of cardboard, forms; printed matter; books, printed publications in general, pencils, ball-point pens and other writing implements, calendars, instructional and educational material’;
–        Class 18: ‘Rucksacks, bags, leather bags for carrying children, shopping bags, parasols’;
–        Class 20: ‘Child furniture, pillows, playpen, non-metallic boxes and baskets, cots, mirrors, exhibitor, frames (to frame), hangers, baby walkers’;
–        Class 21:‘Baby bath tubs, non-electric heaters for feeding bottles, brushes, chamber pots, plates and glass plastics; pliers for suspending sheets, toothbrushes, soap dispensers, money boxes not of metal, combs for babies, utensils for toilet (brushes, sponges, cases)’;
–        Class 24: ‘Fabrics and cloths including for clothing for diapers, elastic woven material, bed clothes and table and sheets, bed covers, bed covers of paper, covers for mattresses and pillows, bedspreads, textile towels, make up removing towels and dressing table in textiles’;
–        Class 25: ‘Nappies and babies’ pants of textile materials, clothing, footwear, headgear, bibs (not of paper), handkerchief of cloths’;
–        Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes; decoration for Christmas trees, dolls, rattles’;
–        Class 44: ‘Medical consultancy services’.
8        The grounds relied on in support of the oppositions were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
9        By two decisions of 30 September and 7 October 2011, the Opposition Division partially upheld the oppositions on the basis that there was a likelihood of confusion between the marks at issue in respect of the goods ‘sanitary and toiletry products, milks and lotions for toilet use, toilet soaps, liquid or non-liquid, oils, creams, cosmetics, impregnated toilet napkins and wipes of cellulose, wipes of paper for cosmetic use or of non-woven textile for toilet use’ and ‘cases and bags for transporting accessories for babies’ in Classes 3 and 18, respectively, and authorised the registration of the trade marks applied for in respect of the other goods referred to in paragraph 4 above.
10      On 11 November 2011, the intervener filed two notices of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decisions of the Opposition Division.
11      By two decisions of 28 November 2012 (‘the contested decisions’), the Second Board of Appeal of OHIM annulled the decisions of the Opposition Division and partially upheld the oppositions on the basis that there was a likelihood of confusion between the marks at issue as regards the following goods:
–        Class 3: ‘Shampoos, foamable preparations for the bath and other bath products, eaux de toilette, perfumery’;
–        Class 5: ‘Sterilising preparations, physiological serum; napkins and wipes impregnated with physiological serum, pomades for medical purposes in gel or non-gel form, breastfeeding pads’;
–        Class 8: ‘Scissors, tongs for baby bottles’;
–        Class 10: ‘Baby bottles, bottle grips, feeding bottle teats, physiological dummies; teething rings; breast pumps, milk collectors, nipple shields’;
–        Class 11: ‘Sterilisers, electric heaters for feeding bottles’;
–        Class 16: ‘Bibs of paper’;
–        Class 18: ‘Cases and bags for transporting beauty care products’;
–        Class 21: ‘Table plates, not of precious metal; brushes for baby bottles, sterilisers, toilet sets, combs, brushes, soapboxes, sponges; perfume sprayers’;
–        Class 25: ‘Bibs, not of paper’;
–        Class 28: ‘Rattles, play handles’.
12      It dismissed the appeals as to the remainder.
13      For the purposes of its examination of the likelihood of confusion, the Board of Appeal compared the trade marks applied for with the earlier Spanish mark and the earlier Portuguese mark referred to in paragraph 7 above. It found, inter alia, in essence, as follows:
–        the relevant public was the general public in Spain and Portugal, except in the case of certain goods related to health in Classes 5 and 10, which were aimed at a more attentive public of those countries;
–        the earlier marks had a normal degree of inherent distinctiveness and could enjoy enhanced distinctiveness through the use made of them in relation to ‘nappies and nappy pants’ only;
–        the comparison of the goods covered by the marks at issue carried out by the Opposition Division had not been disputed by the parties;
–        the dominant element of the marks applied for was the word element ‘dodie’;
–        visually, the signs were similar notwithstanding the differences in the final parts of their word elements and the presence of figurative elements in the trade marks applied for;
–        the phonetic similarity between the signs was ‘somewhat lower than average’, in view of their different endings, in particular;
–        the signs at issue were not conceptually similar;
–        there was a likelihood of confusion between the marks applied for and the earlier marks as regards the goods in Classes 3, 5, 8, 10, 11, 16, 18, 21, 25 and 28 covered by the trade marks applied for that were identical to the goods covered by the earlier marks or had an average or high degree of similarity to them.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decisions;
–        order OHIM to pay the costs.
15      OHIM and the intervener contend that the Court should:
–        dismiss the actions for annulment in their entirety;
–        order the applicant to pay the costs.
Law
16      In support of its actions, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
17      The applicant disputes, inter alia, the Board of Appeal’s conclusion that the marks’ different endings and the presence of the figurative element in the contested signs were not sufficient to exclude any likelihood of confusion.
18      OHIM and the intervener reply, in essence, that the Board of Appeal was fully entitled to conclude that there was a likelihood of confusion between the signs at issue.
19      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 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. Moreover, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means 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.
20      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, 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 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 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 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and case-law cited).
22      In the present case, the Board of Appeal held, in paragraphs 19 and 20 of the contested decisions, first, that since the earlier rights to be compared to the marks applied for were the Spanish mark and the Portuguese mark, Spain and Portugal were the territories with regard to which the perception of the marks at issue by the consumer had to be taken into account. Secondly, in paragraphs 26 of the decisions, it observed that the goods covered by the marks applied for were aimed at the general public, consisting of consumers deemed to be reasonably well informed and reasonably observant and circumspect, except in the case of certain goods related to health in Classes 5 and 10, which were aimed at a public with a higher level of attention.
23      The applicant disputes the Board of Appeal’s assessment that the relevant public’s level of attention is average for most of the goods in question. According to the applicant, in the case of personal care products and, in particular, baby care products, the level of attention of consumers is higher.
24      As regards the relevant territory, the Board of Appeal’s conclusions as to the Member States of the relevant public must be upheld since the Board of Appeal examined the likelihood of confusion on the basis of the Spanish mark and the Portuguese mark.
25      As regards the level of attention of the relevant public, the applicant’s argument that that public’s level of attention is higher cannot be accepted. Although, as the applicant claims, parents pay a higher degree of attention when purchasing products for babies and young children because of the importance they attach to the nutrition and health of babies, it must nevertheless be held, in view of the wide range of the goods in question, that while the group of average consumers for that category of goods will also include careful parents, it will not in any way consist exclusively of such consumers (judgment of 16 September 2009 in Hipp & Co v OHIM — Laboratorios Ordesa (Bebimil), T‑221/06, EU:T:2009:330, paragraph 40).
26      An exception may be made in the case of certain goods covered by the marks at issue related to health, in Classes 5 and 10.
27      Indeed, according to the case-law, both health professionals and end consumers of goods and services related to the state of their health display a high level of attention (see, to that effect, judgments of 21 October 2008 in Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, EU:T:2008:455, paragraph 29; 8 July 2009 in Procter & Gamble v OHIM — Laboratorios Alcala Farma (oli), T‑240/08, EU:T:2009:258, paragraph 50; and 15 December 2009 in Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, EU:T:2009:507, paragraph 28).
28      Therefore, it must be held that the Board of Appeal was right in taking the view that the relevant public’s level of attention was average for most of the goods in question and higher for goods related to health.
Comparison of the goods
29      The Board of Appeal confirmed, in paragraph 33 of the contested decisions, the Opposition Division’s assessment that the goods covered by the marks applied for were in part identical, in part similar and in part dissimilar to those covered by the earlier marks.
30      The Opposition Division’s assessment, which the Board of Appeal endorsed and the parties do not contest, must be confirmed.
Comparison of the signs
31      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 produced 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 overall assessment of that likelihood of confusion. In this 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 case-law cited).
32      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. 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, cited in paragraph 31 above, EU:C:2007:333, paragraph 41 and 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, cited in paragraph 31 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 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which the relevant public retains, so that all the other components are negligible in the overall impression produced by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
33      In the present case, the Board of Appeal held, in paragraphs 45 to 48 of the contested decisions, that, in view of the fact that consumers more readily refer to the goods in question by citing the name than by describing the figurative element of a trade mark, and that they generally pay greater attention to the beginning of a mark than to its ending, the dominant element in the overall impression produced by the signs at issue was the word element ‘dodie’, since it formed the first part of the marks applied for, the graphic element depicting a rabbit was decorative and the blue- or black-coloured background was banal and negligible in the overall impression.
34      The applicant argues that none of the elements of the marks applied for is negligible because the word element ‘dodie’ and the graphic element depicting a rabbit are incorporated in the blue- or black-coloured rectangles. In particular, it claims that the size of the rabbit is sufficient for it to be taken into account.
35      In this connection, it must be pointed out that, as OHIM rightly observes, the figurative element depicting a rabbit is not a negligible element and will be perceived by consumers even though it is smaller in size than the word element ‘dodie’. The Board of Appeal did not err on that point, since it did not in any way state that that figurative element was negligible.
36      Accordingly, it is appropriate to compare the trade marks applied for, taken as a whole, to the earlier marks, while bearing in mind the fact that the word element of the marks applied for is dominant.
Visual similarity
37      As regards the visual aspect, the Board of Appeal held, in paragraphs 52 to 54 of the contested decisions, attaching greater weight to the word element ‘dodie’, that in view of the fact that consumers generally pay greater attention to the beginning of a mark than to its ending, the marks at issue were similar in that their first three letters, placed at the beginning of the signs, were the same. In addition, it stated that the fact that the marks applied for were written in lower case letters whereas the earlier marks were written in capital letters did not affect the visual comparison. Similarly, neither the differences stemming from the final two letters of the marks, nor the figurative elements characterising the trade marks applied for only, were capable of altering the overall impression produced by the signs.
38      The applicant claims that the signs at issue are visually very different given that the marks applied for are figurative signs not all of whose characteristics were taken into account by the Board of Appeal. In addition, it takes the view that the final parts of the two word elements, consisting of the letters ‘ot’ and the letters ‘ie’, respectively, are very different and cannot be confused by the relevant public, particularly in view of the fact that the signs at issue consist of five letters and are therefore short.
39      In this connection, although, as OHIM and the intervener contend, the consumer normally attaches more importance to the first part of words, it should nevertheless be noted that that does not apply in all cases nor call into question the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them (judgments of 9 September 2008 in Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, ECR, EU:T:2008:319, paragraph 38, and of 23 September 2011 in NEC Display Solutions Europe v OHIM — C More Entertainment (see more), T‑501/08, EU:T:2011:527, paragraph 38).
40      As regards the comparison of the word elements of the marks at issue, it must be observed that the final part of the trade marks applied for, where the diphthong ‘ie’ appears, is very unusual in both Spanish and Portuguese and will attract more attention from the relevant public. Similar considerations apply to the final part ‘ot’ of the Spanish and Portuguese marks, which is likewise not common in those languages.
41      It follows that, if only for those reasons, the Board of Appeal was wrong to hold that the signs at issue were similar visually.
42      Moreover, it must be pointed out that, at the very least, the figurative element of the marks applied for depicting a rabbit is not negligible, so that it must be taken into account in the visual comparison, which further weakens the similarity of the marks at issue from that point of view (see, to that effect, judgment of 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 32).
Phonetic comparison
43      The Board of Appeal held, in paragraphs 57 and 58 of the contested decisions, that phonetically, irrespective of the rules of pronunciation in the different parts of the relevant territory, the signs at issue displayed a ‘somewhat lower than average’ similarity, which must be understood as meaning that, in the Board of Appeal’s view, they are similar to some extent.
44      The applicant argues that the pronunciation of the final parts of the marks at issue is very different, in the light, in particular, of the rules of pronunciation of Spanish and Portuguese.
45      OHIM and the intervener contend that the Board of Appeal’s reasoning as to phonetic similarity is correct.
46      In this connection, it must be observed that the marks at issue both consist of a single word made up of two syllables, namely, ‘do’ and ‘dot’ in the case of the earlier marks and ‘do’ and ‘die’ in the case of the marks applied for. Accordingly, the applicant is incorrect in claiming, in essence, that the marks applied for are made up of the three syllables ‘do’, ‘di’ and ‘ie’.
47      However, the applicant is justified in claiming that the rules of pronunciation of Spanish and Portuguese should be applied when comparing the marks at issue phonetically. According to the rules of Spanish, when pronouncing the word ‘dodot’, the tonic stress falls on the vowel of the second syllable, that is, on the second letter ‘o’, since there is no graphic accent and the word in question ends with a consonant other than ‘n’ or ‘s’, which will be pronounced in a more or less marked manner depending on the region of Spain concerned. By contrast, following those same rules, when pronouncing the word ‘dodie’, the tonic stress falls on the first syllable, that is, on the letter ‘o’, since there is no graphic accent and the word ends with a diphthong. Should the Spanish consumer, when confronted with the word ‘dodie’, which he does not recognise as belonging to his language, break up the diphthong ‘ie’, the tonic stress would not fall on the last vowel, ‘e’, but on the penultimate one, ‘i’. Similarly, even if the consumer attempts to pronounce the word ‘dodie’ as if it were a word in one of the main foreign languages known by him and, in so doing, places the tonic stress on a vowel other than the letter ‘o’, the intonation would fall on the part of the trade marks applied for that differs from the earlier marks.
48      Those considerations are also valid for Portuguese. Thus, the Portuguese consumer will pronounce the Portuguese mark by placing the tonic stress on the second letter ‘o’ and will pronounce the final letter ‘t’ softly. In the case of the marks applied for, the Portuguese consumer will find himself in one of the three situations referred to above concerning the Spanish consumer.
49      It follows that, notwithstanding the same initial sequence of letters ‘d’, ‘o’ and ‘d’ in the marks at issue, the rhythm of pronunciation of each of the marks is different, or at least, the intonation falls on the parts of the marks at issue that are different. Those factors reduce very significantly the similarity created by the initial sequence of letters. Moreover, account must also be taken of the fact that, when pronouncing the word ‘dodie’, Spanish and Portuguese consumers will have particular difficulty with the, very unusual, presence of a diphthong at the end of the word, whereas that is not the case with the word ‘dodot’.
50      Consequently, contrary to what the Board of Appeal found, it must be held that the marks at issue are similar to a low degree, if not to a very low degree, phonetically.
Conceptual comparison
51      In paragraphs 61 and 62 of the contested decisions, the Board of Appeal held that neither of the word elements of the signs at issue had a meaning from the perspective of the public in the relevant territory and that, even though the trade marks applied for contained the figurative element depicting a rabbit, the signs at issue had no concept in common.
52      The Board of Appeal’s conclusions in that regard, which, moreover, the parties do not call in question, must be upheld.
Conclusion as to the similarity of the signs
53      In the light of the foregoing considerations, it must be concluded that the signs at issue are similar to only a very low degree, without it being necessary to rule on the questions, which are the subject of disagreement between the parties, whether those signs are particularly short and whether the fact that the marks are written in different character fonts is relevant, which, according to the applicant, would result in their differences being of greater significance, nor on the relevance of the decisions of OHIM and the decision of a Spanish court, relied on by the applicant.
Likelihood of confusion
54      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 concerned. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater 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 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 74).
55      In the present case, the Board of Appeal held that, in view of the similarity of the signs, there was a likelihood of confusion as regards the goods covered by the marks applied for that are identical or similar to a high or average degree to those covered by the earlier marks.
56      The applicant argues that there is no likelihood of confusion since the signs are sufficiently different.
57      In this connection, it must be held that the low degree of similarity of the signs does not support the conclusion that there is a likelihood of confusion in the present case, notwithstanding the similarity, if not the identity of the goods, and even having regard to the public, which does not display a particularly high degree of attention.
58      That conclusion is not called in question by the intervener’s other arguments.
59      In this connection, the intervener contends, in the first place, that the inherent distinctiveness of the mark DODOT is high, that it submitted additional evidence at the time of its appeal against the Opposition Division’s decision in order to demonstrate the enhanced distinctiveness of the earlier marks because of the public’s recognition of them and that those marks ought to enjoy broader protection.
60      It should be recalled that, according to the case-law, as is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous factors, and in particular on 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 high 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, judgment of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24; judgment in Canon, cited in paragraph 54 above, EU:C:1998:442, paragraph 18; and judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20).
61      However, in the present case, first, the Board of Appeal’s conclusion, set out in paragraph 28 of the contested decisions, that the earlier marks have a normal degree of inherent distinctiveness since they are devoid of meaning in relation to the goods covered by them, must be confirmed. Indeed, the intervener does not raise any specific argument to call in question the Board of Appeal’s conclusion in that regard.
62      Secondly, it must be pointed out that, in paragraphs 29 and 30 of the contested decisions, the Board of Appeal accepted that, based on the evidence produced by the intervener, the earlier marks could be regarded as enjoying enhanced distinctiveness through the use made of them, but it stated that such distinctiveness existed for ‘nappies and nappy pants made of paper and cellulose and of textile materials’ only. It must be pointed out that those goods were not taken into account in the comparison of the goods carried out by the Opposition Division, which the Board of Appeal confirmed and which the intervener did not call into question.
63      Thirdly, and in any event, even if the earlier marks have enhanced distinctiveness, that cannot compensate for the fact that there is no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009, in view of the visual and phonetic differences (see, to that effect, judgment of 5 December 2012 in Consorzio vino Chianti Classico v OHIM — FFR (F.F.R.), T‑143/11, EU:T:2012:645, paragraph 59). Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70).
64      The intervener contends, in the second place, that companies such as the applicant may advertise their trade marks in the same manner in all of the countries in which they use those marks. Therefore, since the applicant’s country of origin is France, some Spanish and Portuguese consumers may, because of the advertising of the marks applied for, pronounce those marks in the French fashion, which would support a finding of a higher degree of phonetic similarity.
65      Assuming that such an argument were admissible, notwithstanding the fact that, first, the intervener did not put it forward before the Board of Appeal and, secondly, it did not produce any evidence that such an advertising campaign took place in Spain or Portugal, it must be pointed out that the situation in which the relevant public might pronounce the marks applied for as if they were foreign words has already been taken into account in paragraphs 47 and 48 above.
66      In any event, that argument, dependent upon the applicant’s commercial strategy, is entirely hypothetical.
67      Consequently, the intervener’s argument on that point must be rejected also.
68      In the light of all the foregoing considerations, the contested decisions must be annulled.
Costs
69      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.
70      Since OHIM has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. The intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Joins Cases T‑122/13 and T‑123/13 for the purposes of the judgment;
2.      Annuls the decisions of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 28 November 2012 (Cases R 2324/2011-2 and R 2325/2011-2);
3.      Orders OHIM to bear its own costs and to pay those incurred by Laboratoires Polive;
4.      Orders Arbora & Ausonia, SLU to bear its own costs.
Berardis
Czúcz
Popescu
Delivered in open court in Luxembourg on 8 October 2014.
[Signatures]
* Language of the case: English.