JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
15 July 2015 (*)
(Community trade mark — Opposition proceedings — International registration designating the European Community — Figurative mark ECOSE TECHNOLOGY — Earlier national word mark ECOSEC FACHADAS — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑324/12,
Knauf Insulation Technology, established in Visé (Belgium), represented by K. Manhaeve, 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
Saint Gobain Cristalería, SL, established in Madrid (Spain), represented by M. Montañá, S Sebé and I. Carulla, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 4 May 2012 (Cases R 1193/2011-5 and R 1426/2011-5) relating to opposition proceedings between Saint Gobain Cristalería, SL and Knauf Insulation Technologies,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Registry of the General Court on 19 July 2012,
having regard to the response of OHIM lodged at the Registry on 23 October 2012,
having regard to the response of the intervener lodged at the Registry of the Court on 2 November 2012,
having regard to the change in the composition of the Chambers of the General Court,
further to the hearing on 11 February 2015,
gives the following
Judgment
Background to the dispute
1 On 30 April 2009, the applicant, Knauf Insulation Technology, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark for which registration was sought is the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 1, 2, 3, 16, 17, 19, 20 and 40 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 inter alia, for Classes 2, 17 and 19, to the following description:
– Class 2: ‘Paints …’;
– Class 17: ‘Rubber, gutta-percha, gum, mica and goods made from these materials not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials, including glass wool, rock wool, expanded polystyrene, extruded polystyrene and products made of these materials for insulating purposes (included in this class); adhesive bands and tapes (other than stationery and not for medical or household purposes); flexible pipes, not of metal; pipe muffs (not of metal)’;
– Class 19: ‘Non-metallic building materials, including building panels, binding agents for making briquettes, binding material for road repair; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 18/2009 of 18 May 2009.
5 On 17 February 2010, the intervener, Saint Gobain Cristalería, SL, filed a notice of opposition pursuant to Article 156 of Regulation No 207/2009, read in conjunction with Article 41 thereof, to registration of the mark applied for, in respect of all the goods and services designated by it.
6 The opposition was based on the earlier Spanish word mark ECOSEC FACHADAS, registered under No 2 556 409, designating goods in Classes 17 and 19 and corresponding, for each of those classes, to the following description:
– Class 17: ‘Thermal and acoustic insulating materials and products’;
– Class 19: ‘Non-metallic building materials; non-metallic rigid pipes for building; asphalt, pitch and bitumen, non-metallic transportable buildings; non-metallic monuments’.
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 16 May 2011, the Opposition Division partly upheld the opposition in respect of ‘paints’ in Class 2 and in respect of the goods in Classes 17 (apart from ‘rubber, gutta-percha, gum, mica; flexible pipes, not of metal; pipe muffs (not of metal)’, in respect of which it rejected the opposition) and 19 referred to in paragraph 3 above. It found, in particular, that ‘paints’ in Class 2 and covered by the mark sought had a low degree of similarity to ‘thermal and acoustic insulating materials and products’ in Class 17 and covered by the mark sought; and that, apart from ‘rubber, gutta-percha, gum and mica’ and ‘flexible pipes, not of metal; pipe muffs (not of metal)’, which were different, the goods in Class 17 covered by the mark sought were identical or similar to those covered by the earlier mark in that same class and that the goods in Class 19 covered by the mark sought were identical to those covered by the earlier mark in that same class. Secondly, it found that the conflicting signs were visually and phonetically similar but not conceptually similar. Thirdly, it found that, given the low distinctiveness of the elements ‘technology’ and ‘fachadas’ contained in the conflicting signs and the fact that the figurative elements of the sign sought are perceived as purely decorative elements, the impact of those word and figurative elements in the assessment of the likelihood of confusion between the conflicting marks was limited and that there was therefore a likelihood of confusion between those marks.
9 On 6 June 2011, the applicant filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision, in so far as it had dismissed the application for registration (Case R 1193/2011-5).
10 On 13 July 2011, the intervener brought the same type of action against the Opposition Division’s decision in so far as it had dismissed the opposition in respect of the goods ‘rubber, gutta-percha, gum, mica; flexible pipes, not of metal; pipe muffs (not of metal)’ in Class 17 (Case R 1426/2011-5).
11 By decision of 4 May 2012 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the applicant’s action and upheld, whilst dismissing it as to the remainder, the intervener’s action in so far as it sought annulment of the Opposition Division’s decision dismissing the opposition in respect of ‘flexible pipes, not of metal; pipe muffs (not of metal)’ in Class 17. It found, in particular, first of all, that the relevant public in the present case consisted of both do-it-yourself enthusiasts as well as professionals in the building sector in Spain with a high level of attention at the time of purchase (paragraphs 17 and 18 of the contested decision); secondly, that ‘paints’ in Class 2 designated by the mark sought were similar to ‘thermal and acoustic insulating materials and products’ in Class 17 covered by the earlier mark (paragraphs 27 and 28 of the contested decision); thirdly, that ‘flexible pipes, not of metal’ and ‘pipe muffs (not of metal)’ in Class 17 covered by the mark sought were similar to the ‘non-metallic rigid pipes for building’ in Class 19 and the ‘thermal and acoustic insulating materials and products’ in Class 17 designated by the earlier mark (paragraphs 41 and 42 of the contested decision); fourthly, that the ‘rubber, gutta-percha, gum, and mica’ in Class 17 designated by the mark sought were distinct from the goods covered by the earlier mark (paragraph 40 of the contested decision); fifthly, that the conflicting signs were visually similar to a lesser-than-average degree and phonetically similar, but that there was no direct conceptual similarity between them (paragraphs 24 to 26 of the contested decision); and, sixthly, given the degree of similarity between the goods at issue and the conflicting signs, and also the distinctiveness of the components of the conflicting signs, that there was, except as regards the goods ‘rubber, gutta-percha, gum, and mica’ in Class 17, a likelihood of confusion between the conflicting marks (paragraphs 30 to 32 of the contested decision).
Forms of order sought by the parties
12 The applicant claims that the Court should:
– annul the contested decision in so far as it upheld the opposition;
– order OHIM and, if applicable, the intervener jointly and severally to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by OHIM.
14 The intervener contends that the Court should:
– dismiss the action;
– uphold the contested decision;
– order the applicant to pay the costs.
Law
15 The applicant relies on a single plea in law in support of its action, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
16 The applicant disputes the Board of Appeal’s assessment that there is a likelihood of confusion between the conflicting marks, inter alia, on the basis of an allegedly incorrect assessment of the similarity between the conflicting signs and the similarity of the goods designated by them.
17 OHIM and the intervener dispute the applicant’s arguments and take the view that the Board of Appeal was correct in finding that there was a likelihood of confusion between the conflicting marks.
18 Under Article 8(1)(b) of Regulation No 207/2009, applicable in the present case pursuant to Article 156(1) thereof, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, Article 8(2)(a)(ii) of Regulation No 207/2009 provides that ‘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.
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 case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, 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 two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM –– easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
21 The applicant does not dispute the Board of Appeal’s assessment that the relevant public is inter alia made up of professionals in the building sector in Spain and that that public has a high level of attention (paragraphs 17 and 18 of the contested decision). Since the goods designated by the marks at issue are used in construction, the conclusion is that its assessment is not vitiated by any error of assessment and must accordingly be endorsed.
22 So must the Board of Appeal’s finding that the relevant public also includes part of the general public, namely do-it-yourself enthusiasts who, just like construction professionals, have a high level of attention (paragraph 18 of the contested decision).
23 In that regard the applicant’s argument that the goods designated by the conflicting marks are not aimed at do-it-yourself enthusiasts must be rejected. The applicant affirms that the goods covered by the earlier mark consist of highly-specialised construction materials purchased by professionals having the relevant technical expertise. They do not include typical do-it-yourself goods which would be bought by ordinary customers, such as paints.
24 Yet the applicant has not put forward any specific arguments in support of its assertion that the goods covered by the earlier mark, including ‘thermal and acoustic insulating materials and products’ in Class 17 and ‘non-metallic building materials; non-metallic rigid pipes for building’ in Class 19 generally call for in-depth technical expertise on the part of the user, so that they cannot be used by a do-it-yourself enthusiast. Those types of products are, moreover, usually sold in do-it-yourself sales outlets which target the general public.
The comparison of the goods
25 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors of the relationship between those goods or services 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 judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
26 As a preliminary point, under the first sentence of Article 75 of Regulation No 207/2009, OHIM’s decisions must contain a statement of reasons, the obligation to state reasons has the same scope as that enshrined in Article 296 TFEU and its purpose is to allow interested parties to know the reasons for the measure so as to enable them to protect their rights and to enable the European Union judicature to exercise its power of review (judgments of 30 June 2010 in Matratzen Concord v OHIM — Barranco Schnitzler (MATRATZEN CONCORD), T‑351/08, EU:T:2010:263, paragraphs 16 and 17, and 27 March 2014 in Intesa Sanpaolo v OHIM — equinet Bank (EQUITER), T‑47/12, ECR, EU:T:2014:159, paragraph 24).
27 It has been held in that regard that an absence of or inadequate statement of reasons constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is a plea involving a matter of public policy which may, and even must, be raised by the European Union judicature of its own motion (judgments of 2 December 2009 in Commission v Ireland and Others, C‑89/08 P, ECR, EU:C:2009:742, paragraph 34; MATRATZEN CONCORD, cited in paragraph 26 above, EU:T:2010:263, paragraph 17; and EQUITER, cited in paragraph 26 above, EU:T:2014:159, paragraph 22).
28 It is clear from the case-law, however, that when the Board of Appeal endorses the decision of the lower instance of OHIM, and given the continuity in terms of functions between the Opposition Divisions and Boards of Appeal as demonstrated by Article 64(1) of Regulation No 207/2009 (see, to that effect, judgments of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 30, and 10 July 2006 in La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, ECR, EU:T:2006:197, paragraphs 57 and 58), that decision and its statement of reasons form part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and which allows the court fully to conduct its review of the lawfulness of the merits of the Board of Appeal’s findings (see judgment in MATRATZEN CONCORD, cited in paragraph 26 above, EU:T:2010:263, paragraph 25 and the case-law cited).
29 In the present case, it should be noted that, as pointed out by the applicant in response to a question put by the Court to the parties in that regard at the hearing, as regards the comparison of the goods, the contested decision contains a reasoned explanation only for ‘paints’ in Class 2 (paragraphs 27 and 28 of the contested decision), for ‘rubber, gutta-percha, gum, and mica’ in Class 17 (paragraph 40 of the contested decision), for ‘flexible pipes, not of metal’ in Class 17 (paragraph 41 of the contested decision) and for ‘pipe muffs (not of metal)’ in Class 17 (paragraph 42 of the contested decision). Yet it is clear from a combined reading of paragraphs 19 and 32 of the contested decision that the Board of Appeal endorsed the Opposition Division’s decision also in respect of the other goods concerned. The Board of Appeal endorsed the Opposition Division’s findings, referred to in paragraph 5, second and third indents, of the contested decision, as to the similarity of those goods and those covered by the earlier mark. Therefore, as the Opposition Division’s decision is part of the context in which the contested decision was adopted, it contains a sufficient statement of reasons and must be taken into account in the review of the merits of the Board of Appeal’s findings on the comparison of the goods.
30 In the first place it should be noted that the applicant has not put forward any argument disputing the Board of Appeal’s findings that:
– ‘plastics in extruded form for use in manufacture’ in Class 17 and covered by the mark sought include plastic-based mixtures which are used for thermal insulation and are, therefore, similar to ‘thermal and acoustic insulating materials and products’ in Class 17 and covered by the earlier mark (paragraph 5, second indent, of the contested decision and page 6 of the Opposition Division’s decision);
– ‘packing, stopping and insulating materials, including glass wool, rock wool, expanded polystyrene, extruded polystyrene and products made of these materials for insulating purposes (included in this class)’ in Class 17 and covered by the mark sought are goods which are included in the category of ‘thermal and acoustic insulating materials and products’ in Class 17 and covered by the earlier mark and are, therefore, identical (paragraph 5, second indent, of the contested decision and page 6 of the Opposition Division’s decision);
– ‘pipe muffs (not of metal)’ in Class 17 and covered by the mark sought constitute a type of good which may be adapted on pipes for the purpose of thermal or acoustic insulation and are, therefore, identical to ‘thermal and acoustic insulating materials and products’ in Class 17 and covered by the earlier mark (paragraph 42 of the contested decision); and
– the earlier mark is registered for the class heading in Class 19 and is therefore deemed to cover all goods that are to be categorised in that class, including all those included in Class 19 and covered by the mark sought, which are accordingly identical to those covered by the earlier mark in that class (paragraph 5, third indent, of the contested decision and page 7 of the Opposition Division’s decision).
31 The Board of Appeal’s findings, which are not vitiated by any error, must therefore be endorsed.
32 In the second place, concerning first of all ‘paints’ in Class 2, the Board of Appeal considered that it was a broad category encompassing also paints used for insulating purposes. Although there were substantial differences between ordinary paints and insulating paints, both types of paint share a common purpose, which is to change the colour of a surface and provide a protective layer to it, even though that may be seen as a secondary purpose for insulating paints. They are manufactured by the same companies, sold in the same sales outlets specialising in do-it-yourself materials and tools. Thus, ‘paints’ in Class 2 are similar to ‘thermal and acoustic insulating materials and products’ in Class 17 (paragraphs 27 and 28 of the contested decision).
33 Concerning, secondly, ‘rubber, gutta-percha, gum, mica and goods made from these materials not included in other classes’ in Class 17, the Board of Appeal found that they were identical to ‘thermal and acoustic insulating materials and products’ in Class 17, since the latter can be made from any of those raw materials, namely rubber, gutta-percha, gum and mica. Rubber- and gum-based products can be used for insulating doors and windows, whilst gutta-percha- and mica-based products are used for thermal insulation and gum-based products are used for roof insulation (paragraph 5, second indent, of the contested decision and pages 5 and 6 of the Opposition Division’s decision).
34 Concerning, thirdly, ‘adhesive bands and tapes (other than stationery and not for medical or household purposes)’ in Class 17, the Board of Appeal considered that it was a broad category which also encompasses thermal insulation tape, which has the same purpose as ‘thermal and acoustic insulating materials and products’ in Class 17. It inferred that the goods were similar (paragraph 5, second indent, of the contested decision and page 6 of the Opposition Division’s decision).
35 Concerning, fourthly, ‘flexible pipes, not of metal’ in Class 17, the Board of Appeal considered that they were similar to ‘non-metallic rigid pipes for building’ in Class 19. Although they are different in nature, with the former being flexible and the latter rigid, both types of goods are used in the same building and construction context, and in the same manner. They are distributed through the same channels, sold at the same sales outlets and are aimed at the same consumers, namely construction professionals and do-it-yourself enthusiasts (paragraph 41 of the contested decision).
36 The arguments put forward by the applicant disputing those assessments by the Board of Appeal cannot be upheld. It merely affirms, in an unsubstantiated manner, that the ‘goods made from these (rubber, gutta-percha, gum, mica) materials and not included in other classes’ in Class 17 are intended solely for use in electrical insulation, that the ‘adhesive bands and tapes (other than stationery and not for medical or household purposes)’ in Class 17 are not intended for insulation, and that the ‘non-metallic rigid pipes for building’ in Class 19 are used solely by construction professionals in the building sector and not by do-it-yourself enthusiasts.
37 In putting forward such unsubstantiated assertions, the applicant has failed to establish to the requisite legal standard that the goods at issue are not actually intended for the uses described by the Board of Appeal.
38 More specifically, on the one hand, as regards ‘paints’ in Class 2, the applicant does not dispute the Board of Appeal’s finding that there are products in the ‘paints’ category, namely ‘insulating paints’, which are used for thermal insulation. In so far as the applicant alleges that a normal, usual reading of the terms ‘thermal insulating materials and products’ does not include ‘paints’, suffice it to observe, as rightly pointed out by the Board of Appeal in paragraphs 27 and 28 of the contested decision, that the terms ‘thermal insulating materials and products’ refer to a broad category of products, including all materials and products which may be used for thermal insulation. Since there are actually paints which may be used for insulation, the conclusion is that at least one category of ‘paints’, namely insulating paints, are used for thermal insulation. The Board of Appeal was therefore correct in finding that ‘paints’ in Class 2 and covered by the mark sought were similar to ‘thermal insulating materials and products’ in Class 17 and covered by the earlier mark. Accordingly, it is no longer necessary to rule on the question, raised by OHIM, of the admissibility of the applicant’s argument relating to the natural, usual meaning of the words ‘thermal and acoustic insulating materials and products’.
39 On the other hand, although, in respect of non-metallic rigid pipes for building, it is possible to distinguish flexible pipes from rigid pipes, it is nevertheless clear that the Board of Appeal did not find that flexible pipes were identical to rigid pipes, but merely similar.
40 In the light of the foregoing, the Board of Appeal’s assessment that the goods at issue are partly identical and partly similar must be upheld.
The comparison of the signs
41 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 (judgment of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and judgment in easyHotel, cited in paragraph 20 above, EU:T:2009:14, paragraph 42).
42 The Board of Appeal found that the conflicting signs were visually and phonetically similar but that they were not directly conceptually similar.
43 As regards the visual comparison, it must be recalled, first of all, that there is nothing to prevent an assessment of the visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005 in Chum v OHIM — Star TV (STAR TV), T‑359/02, ECR, EU:T:2005:156, paragraph 43 and the case-law cited).
44 In that regard the Board of Appeal observed that the conflicting signs differed in their additional word elements, namely ‘fachadas’ for the earlier mark and ‘technology’ for the mark sought, the additional letter ‘c’ at the end of the first word element ‘ecosec’ of the earlier mark and by the three green spots on the sign sought. It found that consumers would attach greater visual importance to the first part of the earlier mark, namely the word ‘ecosec’, and would consider the second word contained in the earlier mark, namely ‘fachadas’, as being of secondary importance, inter alia due to its descriptive character. As the Spanish word ‘fachadas’ means ‘facades’, it would be perceived by the relevant Spanish public as presenting a direct link with the goods in question, which are used in the context of external walls. Taking into account the descriptive nature of the additional verbal elements in both marks, and the fact that the abstract figurative elements are not striking enough to be viewed as anything more than merely decorative, the signs are visually similar, albeit to a lower than average degree (paragraph 24 of the contested decision).
45 It is true that the word elements ‘ecose’ and ‘ecosec’ do bear a certain similarity. Nevertheless, contrary to what the Board of Appeal found in paragraph 24 of the contested decision, that similarity is not decisive for the overall visual impression that the relevant public will retain from those marks, including the mark sought.
46 It cannot be asserted, as did the Board of Appeal in paragraph 24 of the contested decision and as OHIM and the intervener assert, that the figurative elements contained in the mark sought are not striking enough to be viewed as being anything more than merely decorative.
47 As observed, correctly, by the applicant, the mark sought contains a device representing an abstract shape made up of three figures, with the whole vaguely resembling a three-leafed clover. Given that the mark sought is represented entirely in green, the visual impression that the public will retain is that of a plant, specifically a cloverleaf, in stylised form. The abstract character of the cloverleaf is further reinforced by the fact that the elements of the mark sought are slightly inclined towards the right, which conveys an overall aspect of a certain degree of dynamism to the mark sought.
48 It follows that the figurative elements contained in the mark sought must be regarded as being fairly original and more than simply decorative. As the earlier mark is a word mark, it does not contain — not even vaguely — any element resembling the figurative elements of the mark sought. Thus, the Board of Appeal ought to have found that the conflicting marks were clearly distinguishable from the figurative elements of the mark sought.
49 However, in so far as the applicant argues that the Board of Appeal was incorrect in finding that the words ‘fachadas’ and ‘technology’ were negligible for the purpose of conducting a visual comparison of the conflicting signs, it should be noted that, in the visual comparison of the conflicting signs, the Board of Appeal did take account of them in its assessment. It is clear from paragraph 24 of the contested decision that the Board of Appeal recognised, correctly, that the conflicting marks ‘differ[ed] in their additional word elements’, namely ‘fachadas’ and ‘technology’, that it attached ‘secondary importance’ to the word element ‘fachadas’ and that the word element ‘technology’ was ‘depicted in very small characters’.
50 In the light of the foregoing, given that, firstly, the conflicting signs are similar in terms of the word elements ‘ecose’ and ‘ecosec’; secondly, they differ with respect to the figurative elements, including the green colour and the slight inclination towards the right of the mark sought; and thirdly, the word elements ‘technology’ and ‘fachadas’ are different but of secondary importance due to, inter alia, their descriptive character, the conclusion must be that, contrary to the Board of Appeal’s findings, there is only a low degree of visual similarity between the conflicting signs and that the Board of Appeal’s finding that the signs are visually similar, albeit to a lower-than-average degree, is therefore incorrect.
51 Regarding the phonetic similarity, the Board of Appeal found that the pronunciation of made-up or fanciful words which do not exist in Spanish, such as the word ‘ecose’ constituting the mark sought and the word ‘ecosec’ contained in the earlier mark, was difficult to establish with certainty. The first two syllables of those two words, namely ‘e’ and ‘co’, are identical, whereas there is a difference in the third syllable, namely ‘se’ for the mark sought and ‘sec’ for the earlier mark. Given that the similarity is to be found in the first parts of the conflicting signs and the relevant Spanish public will perceive the words ‘technology’ and ‘fachadas’ as being descriptive and therefore easier to overlook, the Board of Appeal concluded that the signs should be considered to be phonetically similar (paragraph 25 of the contested decision).
52 As pointed out by the Board of Appeal in paragraph 25 of the contested decision, there would be a difference in how the words ‘ecose’ and ‘ecosec’ would be stressed if they were pronounced according to Spanish pronunciation rules. The stress would then be put on the syllables ‘co’ and ‘sec’. However, the Board of Appeal was also correct in stating that the words ‘ecose’ and ‘ecosec’ were not part of the Spanish vocabulary. It is therefore not possible to determine their rhythm or intonation with absolute certainty.
53 In that regard it should be observed, first of all, that the first two syllables ‘e’ and ‘co’ are at the start of both of the conflicting signs. As rightly pointed out by OHIM, it is therefore highly likely that the first two syllables will be pronounced in an identical manner.
54 Therefore, as the applicant has argued that the word ‘ecosec’ contained in the earlier mark will be perceived by the relevant public as an abbreviation of other Spanish words, such as ‘ecológico’ (ecological), ‘económico’ (economical) or ‘seco’ (dry), and that it will thus be pronounced by the relevant public in accordance with Spanish rules of pronunciation, it is clear that the first two syllables ‘e’ and ‘co’ of the mark sought will also tend to be construed as an abbreviation of the same Spanish words identified by the applicant. It will thus be logical to stress the words ‘ecose’ and ‘ecosec’ in an identical manner, especially since the words ‘ecológico’ and ‘económico’ are always stressed on the third syllable, that is to say, the syllable following the ‘e’ and the ‘co’.
55 Lastly, the applicant criticises the Board of Appeal for having failed to take account, in its assessment of the phonetic similarity of the conflicting signs, of the words ‘technology’ in the mark sought and ‘fachadas’ in the earlier mark, on which two observations can be made. Firstly, the Board of Appeal was correct in finding, in paragraph 25 of the contested decision, that in the present case the similarity was to be found in the first part of the marks at issue. It thus did take account of the presence of the words ‘technology’ in the mark sought and ‘fachadas’ in the earlier mark and merely relegated them to a secondary position due to their descriptive nature. The fact that there was no reference to the word ‘fachadas’ in the phonetic comparison of the signs may be understood, in the light of the general scheme of the reasons given in the contested decision, as implying that that term was taken into account in the analysis of the earlier mark but was relegated to a secondary position.
56 It follows that, given the similarity in the first part of the word elements of the conflicting signs, in particular the first two syllables ‘e’ and ‘co’, which are identical in the conflicting signs and will therefore probably be pronounced in the same manner by the relevant public, the Board of Appeal was correct in finding that the conflicting signs were phonetically similar.
57 As regards the conceptual similarity, the Board of Appeal’s finding that there is no direct conceptual similarity between the conflicting signs (paragraph 26 of the contested decision) must be endorsed.
58 The applicant also argues that the first two syllables ‘e’ and ‘co’ of the earlier mark should be understood as referring to the concepts ‘ecológico’ (ecological) or ‘económico’ (economical) it is clear that the same reasoning should then apply to the first two syllables of the word element of the mark sought, which are identical. In such a case, as rightly found by the Board of Appeal in paragraph 26 of the contested decision, there exists a vague conceptual similarity between the conflicting signs in that they could be linked to the rather allusive concepts of ‘ecological’ or ‘economical’.
59 The applicant further argues that the syllable ‘sec’ should be understood as referring to the concept of ‘dry’ or ‘dryness’ and that the Board of Appeal ought to have taken into consideration the meaning of the word ‘technology’, which will be understood by the Spanish-speaking public as referring to technology. Suffice it to note that that argument does not cast any doubt on the Board of Appeal’s finding that there is no direct conceptual similarity between the conflicting signs.
The likelihood of confusion
60 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
61 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 60 above, EU:C:2007:333, paragraph 41 and the 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 60 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).
62 The global assessment 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 lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 December 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 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).
63 In the present case, it should be noted that, as stated by the applicant in response to a question put by the Court to the parties on the point at the hearing, as regards the overall assessment of the likelihood of confusion, the contested decision does not state explicitly the reasons why the Board of Appeal found that there was a likelihood of confusion for the goods ‘flexible pipes, not of metal; pipe muffs (not of metal)’ in Class 17 which were at issue in the action brought by the intervener against the Opposition Division’s decision (Case R 1426/2011-5; see paragraph 10 above).
64 Yet it is still clear from paragraphs 41 and 42 of the contested decision that the Board of Appeal considered that ‘flexible pipes, not of metal’ in Class 17 were similar to ‘non-metallic rigid pipes for building’ in Class 19 and covered by the earlier mark and that ‘pipe muffs (not of metal)’ in Class 17 were identical to ‘thermal and acoustic insulating materials and products’ in Class 17 and covered by the earlier mark and that, therefore, the Board of Appeal found that, just like the other goods at issue (see paragraph 32 of the contested decision), ‘flexible pipes, not of metal; [and] pipe muffs (not of metal)’ were partly identical and partly similar to the goods covered by the earlier mark.
65 In such circumstances, the Board of Appeal’s overall assessment of the likelihood of confusion in respect of the other goods at issue, contained in paragraphs 29 to 32 of the contested decision, also applies in respect of ‘flexible pipes, not of metal; [and] pipe muffs (not of metal)’ in Class 17.
66 The Board of Appeal considered that the earlier mark contained the descriptive element ‘fachadas’, meaning ‘facades’, which is perceived by the relevant Spanish public as giving an indication of the types of walls on which the goods in question, in particular insulation materials, construction materials, pipes, transportable buildings and non-metallic monuments, are intended to be used, rather than as a distinctive expression. The element ‘ecosec’ has no clear meaning, with the result that, as a whole, the earlier mark possesses normal distinctiveness (paragraph 30 of the contested decision). The distinctive element of the earlier mark is the first word, ‘ecosec’. In the mark sought, the second word element, ‘technology’, also lacks distinctiveness in relation to the goods at issue. The public will concentrate on the distinctive elements, namely the word element ‘ecose’ and, to a lesser extent, the green abstract figure. The distinctive elements of the conflicting marks are very similar because the word element ‘ecose’ is contained entirely within the word element ‘ecosec’. Despite the somewhat reduced degree of visual similarity due to the figurative and colour elements and the lack of clear conceptual similarity, overall the signs are still similar (paragraph 31 of the contested decision). Thus there is a likelihood of confusion between the conflicting signs (paragraph 32 of the contested decision).
67 Thus the Board of Appeal was right in finding that, having regard to the goods covered by the earlier mark, the Spanish word ‘fachadas’ (facades) contained in the earlier mark would be perceived by the relevant public as being descriptive and therefore not very distinctive.
68 The Board of Appeal was also right in finding that the first element of the earlier mark, namely ‘ecosec’, had no clear meaning in Spanish.
69 It is true, as argued by the applicant, that the elements ‘eco’ and ‘sec’ of the earlier mark could potentially be understood as referring to the concepts of ‘ecological’ (‘ecológico’ in Spanish) or ‘economical’ (‘económico’ in Spanish) and ‘dry’ (‘seco’ in Spanish). The first of those elements, ‘eco’, is moreover the reason why the Board of Appeal found, correctly, that in so far as that element can be construed thusly, there is a vague conceptual similarity between the conflicting signs (see paragraph 58 above).
70 However, the applicant has not demonstrated that the relevant public does actually so perceive the element ‘ecosec’. The applicant itself puts forward two possible interpretations of the element ‘eco’, namely ‘ecological’ and ‘economical’, to which must be added that of ‘echo’ (‘eco’ in Spanish), concepts which are not identical or even similar. While it is true that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see OHIM v Shaker, cited in paragraph 60 above, EU:C:2007:333, paragraph 35 and the case-law cited), the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 10 July 2012 in Clorox v OHIM — Industrias Alen (CLORALEX), T‑135/11, EU:T:2012:356, paragraph 27 and the case-law cited). In the present case, given that the applicant itself puts forward two possible interpretations of the element ‘eco’, the conclusion must be that that element does not suggest a concrete meaning and does not resemble words known to the average consumer. It is accordingly highly unlikely that the relevant public will examine the earlier mark by breaking it down into two parts, as suggested by the applicant.
71 Since the element ‘ecosec’ thus has normal distinctiveness, it follows that the Board of Appeal’s finding that the earlier mark as a whole has normal distinctiveness is not vitiated by any error.
72 It must be borne in mind, however, as pointed out in paragraph 50 above, that due to, inter alia, the figurative elements contained in the mark sought, including the green colour and the slight inclination towards the right, for which there is no counterpart in the earlier mark, there is, overall, only a very low degree of visual similarity between the conflicting signs.
73 Thus, the conclusion is that there is only a very low degree of visual similarity between the conflicting signs, that they are phonetically similar, although that similarity is limited to the word elements, that there is no direct conceptual similarity between the conflicting signs and that, therefore, the relevant public, who will have a high level of attention, will perceive the conflicting signs as having only a low degree of similarity.
74 In the light of the foregoing, given that, inter alia, the conflicting signs have only a low degree of similarity, that the earlier mark possesses normal distinctiveness and that the relevant public will have a high level of attention, the conclusion is that, overall, despite the fact that the goods covered by the mark sought are partly identical and partly similar to those designated by the earlier mark, there will not be a likelihood of confusion between the conflicting marks in the minds of the relevant public.
75 As to the national decisions relied on by the parties, it should be borne in mind that it is settled case-law that registrations already made in the Member States are merely a factor which, without being given decisive weight, may be taken into consideration for the purposes of registering a Community trade mark (judgments of 16 February 2000 in Procter & Gamble v OHIM (Soap bar shape), T‑122/99, ECR, EU:T:2000:39, paragraph 61, and 19 September 2001 in Henkel v OHIM (Red and white round tablet), T‑337/99, ECR, EU:T:2001:221, paragraph 58).
76 Regarding OHIM’s earlier decision-making practice, relied on by the parties, it is settled case-law that the legality of the decisions of Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of OHIM’s previous decision-making practice, which, in any event, cannot bind the Courts of the European Union (judgments of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 47; 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 48; and 30 April 2013 in Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, EU:T:2013:225, paragraph 33).
77 Although, given the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. As a result, there can be no equality in illegality and a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 76). Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments in Agencja Wydawnicza Technopol v OHIM, EU:C:2011:139, paragraph 77, and RELY-ABLE, cited in paragraph 76 above, EU:T:2013:225, paragraph 34).
78 In the present case, it is clear from the foregoing examination that the Board of Appeal found, incorrectly, that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009. It follows that, in accordance with the case-law referred to in paragraphs 76 and 77 above, that assessment cannot be called into question on the sole ground that it does not follow OHIM’s decision-making practice.
79 Therefore, the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be upheld and the contested decision must be annulled in so far as the Board of Appeal refused registration.
Costs
80 Under Article 134(2) of the Rules of Procedure of the General Court, where there are several unsuccessful parties the Court is to decide how the costs are to be shared.
81 Since OHIM and the intervener have been unsuccessful, they must be ordered to pay, in addition to their own costs, the costs incurred by the applicant.
82 As regards how the costs incurred by the applicant are to be shared, it is appropriate to order OHIM and the intervener each to pay half of those costs.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Annuls the decision of the Fifth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 May 2012 (Cases R 1193/2011-5 and R 1426/2011-5) in so far as the Board of Appeal dismissed the action brought by Knauf Insulation Technology and annulled the decision of the Opposition Division;
2. Orders OHIM to bear its own costs and to pay half of the costs incurred by Knauf Insulation Technology;
3. Orders Saint Gobain Cristalería, SL to bear its own costs and to pay half of the costs incurred by Knauf Insulation Technology.
Delivered in open court in Luxembourg on 15 July 2015.
[Signatures]