JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
27 February 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark LIDL — Earlier national figurative mark LÍDL MUSIC — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Genuine use of the earlier mark — Article 15(1) and Article 42(2) and (3) of Regulation No 207/2009)
In Case T‑226/12,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented initially by M. Schaeffer, M. Wolter and A. Marx, and subsequently by M. Wolter, A. Marx and M. Kefferpütz, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Lídl Music spol. s r.o., established in Brno (Czech Republic),
ACTION for annulment of the decision of the First Board of Appeal of OHIM of 21 March 2012 (Case R 2380/2010-1) relating to opposition proceedings between Lídl Music spol. s r.o. and Lidl Stiftung & Co. KG,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: J. Weychert, administrator,
having regard to the application lodged at the Registry of the General Court on 29 May 2012,
having regard to the response lodged at the Court Registry on 6 September 2012,
further to the hearing on 11 December 2013,
gives the following
Judgment
Background to the dispute
1 On 14 April 2008, the applicant, Lidl Stiftung & Co. KG, 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought are, in particular, in Class 15 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Musical instruments’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 28/2008 of 14 July 2008.
5 On 23 September 2008, Lídl Music spol. s r.o. gave notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of goods referred to in paragraph 3 above.
6 The opposition was based in particular on the earlier Czech figurative mark reproduced below, registered on 26 July 1994 under No 178 496, in respect of ‘Musical instruments’ in Class 15:
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 Following the applicant’s request, the opponent produced a number of documents to prove genuine use of the earlier national mark within the meaning of Article 42(2) and (3) of Regulation No 207/2009.
9 The applicant claimed that those documents were not sufficient to prove genuine use of the earlier national mark on which the opposition is based. It also claimed that the opposition infringed a coexistence agreement between the parties and was, therefore, ‘inadmissible’.
10 By decision of 12 November 2010, the Opposition Division upheld the opposition for all the contested goods, on the basis of the earlier national mark. Even though it considered that the documents submitted by the opponent were ‘not particularly exhaustive’, it accepted that they were sufficient to prove use of the earlier national trademark for flutes and harmonicas.
11 The Opposition Division then compared the goods and found them identical. It compared the trademarks and found them similar because they both contained the word element ‘lidl’. From this it concluded that there was a likelihood of confusion between the marks at issue. Finally, it refused to consider the agreement between the parties on the ground that the contents thereof were disputed.
12 On 30 November 2010, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
13 By decision of 21 March 2012 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal. In essence, it confirmed the conclusions of the Opposition Division and concluded that the opponent had proved genuine use of the earlier national trademark and that there was a likelihood of confusion between the marks at issue as far as the Czech public was concerned.
14 First, with regard to genuine use of the earlier trademark, within the meaning of Article 42 of Regulation No 207/2009, the Board of Appeal considered that the use satisfied the criteria laid down in Article 10(2)(a) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) and that the evidence produced, considered together, confirmed that the mark had been the subject of genuine use during the period under review for musical instruments in the relevant territory.
15 Second, with regard to the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal took the view that the goods were identical and that the contested trademarks were similar from the visual and aural points of view, on the ground that they shared the same distinctive and dominant element constituted by the word ‘lidl’. The differences in the way that the marks are represented are not therefore of such a nature as to outweigh the striking identity of the word element ‘lidl’, according to the Board of Appeal. Moreover, a conceptual comparison is not possible, given that the conceptual content of the words ‘lidl’ or ‘lídl’ for a Czech-speaking consumer does not seem open to explanation.
Forms of order sought by the parties
16 By application lodged at the Registry of the General Court on 29 May 2012, the applicant brought the present action.
17 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
18 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
19 The opponent did not take part in the present proceedings.
Pleas in law
20 In support of its application, the applicant puts forward three pleas in law, alleging, in essence, first, infringement of the combined provisions of Article 15(1) and Article 42(2) and (3) of Regulation No 207/2009 and of Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1); secondly, infringement of Article 15(1)(a) of Regulation No 207/2009, read in conjunction with Article 42(2) and (3) of that regulation; and, thirdly, infringement of Article 8(1)(b) of Regulation No 207/2009.
21 In view of the fact that the first and second pleas largely overlap, the Court considers it appropriate to examine them together.
The first and second pleas in law, alleging, in essence, a combined infringement of Article 15(1) and Article 42(2) and (3) of Regulation No 207/2009
22 By its first plea, the applicant claims that the Board of Appeal of OHIM was wrong to take the view that the documents produced by the opponent were sufficient to prove genuine use of the earlier mark in the Czech Republic during the relevant period, namely from 14 July 2003 to 13 July 2008. The few photos and invoices submitted were not sufficient, in themselves, to prove effective and genuine use of the earlier national mark within the meaning of Regulation No 207/2009.
23 OHIM disputes the applicant’s arguments.
24 It is apparent from Article 42(2) of Regulation No 207/2009 that, if the applicant so requests, the proprietor of an earlier Community trade mark or also, under Article 42(3), of an earlier national trade mark, who has given notice of opposition, must furnish proof that, during the five-year period preceding the date of publication of the Community trade mark application, the earlier trade mark has been put to genuine use in the European Union or in the Member State where it is protected, in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided that, on that date, the earlier trade mark has been registered for not less than five years. In the absence of proof to that effect, the opposition shall be rejected. If the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
25 According to settled case-law, the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a Community trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from active functioning of the mark on the market (see, to that effect, Case T‑203/02 Sunrider v OHIM — Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraphs 36 to 38, and judgment of 30 November 2009 in Case T‑353/07 Esber v OHIM — Coloris Global Coloring Concept (COLORIS), not published in the ECR, paragraph 20).
26 Furthermore, pursuant to Rule 22(3) of Regulation No 2868/95, proof of use must concern ‘the place, time, extent and nature of use of the earlier trade mark’.
27 Accordingly, to examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case, which implies some interdependence between the factors taken into account (Case T‑334/01 MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 36).
28 Genuine use of a trade mark, it is true, cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (COLORIS, paragraph 24). However, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see, to that effect, judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraph 36).
29 When assessing whether use of the earlier trade mark is genuine, regard must be had, therefore, to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by that mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 40; see also, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43).
30 There is genuine use of a trade mark in the case where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Ansul, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 39; see also, to that effect and by analogy, Ansul, paragraph 37).
31 Although the concept of genuine use therefore excludes all minimal and insufficient use as the basis for a finding that a mark is being put to real and effective use on a given market, nevertheless the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (Case T‑194/03 Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II‑445, paragraph 32; see also, to that effect, Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 72).
32 It is in the light of those considerations that the Court must examine whether OHIM erred in law by acknowledging the existence of a genuine use of the earlier national mark.
33 It should be noted, first, as OHIM correctly points out, that as the applicant does not contest the findings of the Board of Appeal as regards the place, time and extent of use, it must be held that, in fact, the applicant only disputes the nature of the use.
34 It should be noted, in that regard, that the Board of Appeal found, in paragraph 20 of the contested decision, that the earlier national mark was displayed clearly and legibly on the flute and the harmonicas shown in the photos submitted by the opponent, which is also apparent from the documents before the Court. It therefore held that the sign was used in a manner which is consistent with its distinctive function, namely to inform consumers about the industrial and/or trade origin of the goods.
35 Furthermore, the Board of Appeal found, at paragraph 24 of the contested decision, that it was not necessary to determine whether flutes and harmonicas — for which use was shown — form a subcategory of musical instruments, since that would not affect the content of the decision, which is not contested by the parties.
36 Although it is true that the photographs are not dated, the fact nevertheless remains that, in the context of a global assessment, they may be taken into consideration in conjunction with other pieces of evidence which are dated, such as invoices, in order to prove that the goods are indeed produced and marketed by the opponent, as OHIM rightly submits (see, by analogy, judgment of 17 February 2011 in Case T‑324/09 J & F Participações v OHIM — Plusfood Wrexham (Friboi), not published in the ECR, paragraph 33).
37 With regard to the invoices, however, the applicant claims that they can give an indication of the place, time and extent of the use of a mark, but not of the nature of such use.
38 It suffices to note, in that regard, that the Board of Appeal relied on those invoices only to demonstrate the place, time and extent of the use of the mark, and not the nature of that use, as is clearly apparent from paragraph 23 of the contested decision.
39 Therefore, taking the view that, considered together, the invoices and photographs confirmed that genuine use of the earlier national mark had been made for musical instruments in the relevant territory, OHIM did not err in law. In the present case, the national brand of the opponent, first, is limited to the territory of the Czech Republic and, secondly, concerns goods, musical instruments, which cannot be considered as everyday consumer goods. In those circumstances, it cannot be required of the opponent to furnish evidence of large-scale commercial use within the meaning of the case-law cited in paragraph 31 above.
40 So far as concerns the second plea in law, the applicant submits that the Board of Appeal was wrong to consider that the manner in which the earlier national mark was shown in the photos produced did not alter the distinctive character of the mark within the meaning of Article 15(1)(a) of Regulation No 207/2009 and that those photos therefore constituted proof of genuine use within the meaning of Article 15(1) of that regulation.
41 As demonstrated by the evidence produced by the opponent, the earlier national mark was used in the following form:
42 The applicant considers that, in so far as the registered mark contains figurative elements which are not present in the mark as shown in the photos produced, the latter has the effect of changing the distinctive character of the earlier national mark. That character, it submits, derives exclusively from the word ‘lidl’ in the mark as used, whereas the mark, as registered, also contained figurative elements such as a circle with an ornate letter ‘l’ and an enhanced ‘m’ which had two points above its peaks, which cannot be considered as negligible.
43 According to the applicant, as far as complex marks are concerned, namely marks with both word and figurative elements, an obvious difference in a figurative element that influences the distinctiveness of the mark as registered leads to an alteration of its overall distinctive character, even if the word element remains unchanged in the mark as used. To accept only use of the word components of a complex registered trademark with figurative elements that influence distinctiveness as genuine use in accordance with Article 15(1) of Regulation No 207/2009 would lead, in its view, to protection of an earlier trademark with a broader scope of protection than the mark as it is used.
44 OHIM disputes the applicant’s arguments.
45 It is therefore necessary to examine whether the Board of Appeal of OHIM committed an error of assessment by acknowledging the existence of a genuine use of the earlier national mark in the present case.
46 It should be noted, first, that the Board of Appeal of OHIM examined the arguments of the applicant in paragraph 19 of the contested decision and concluded that the manner in which the mark was used did not alter the distinctive character of the mark as registered, given that that distinctiveness was largely dominated by the word element ‘lidl music’ and was only marginally influenced by the figurative elements described above.
47 Furthermore, it must be concluded, in line with OHIM, that, under Article 15(1)(a) of Regulation No 207/2009, use of the Community mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (see, to that effect, Case T‑156/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO AIRE) [2003] ECR II‑2789, paragraph 44).
48 Although those provisions refer only to the use of the Community trade mark, they must be applied by analogy to the use of a national mark, insofar as Article 42(3) of the regulation provides that Article 42(2) applies to earlier national trade marks referred to in Article 8(2)(a), ‘by substituting use in the Member State in which the earlier national trade mark is protected for use in the [European Union]’. Moreover, Article 10(2) of Directive 2008/95, which the Board of Appeal of OHIM also relied on in the contested decision, defines the concept of use in the same way as provided in Article 15(2) of Regulation No 207/2009. Those two provisions specify that use of the (Community or national) trade mark in a form differing in elements which do not alter the distinctive character of the mark also constitutes ‘use’ (see, to that effect, Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraphs 81 to 83).
49 The purpose of Article 15(1)(a) of Regulation No 207/2009, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (BAINBRIDGE, paragraph 50).
50 It is necessary to examine, therefore, whether the Board of Appeal was right to find that the figurative elements of the earlier national mark could be considered as secondary and that the distinctive character of that mark was largely dominated by the word element ‘lidl music’.
51 According to the case-law, when a mark is composed of word elements and figurative elements, the word element of the mark is, as a rule, more distinctive than the figurative element, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see, to that effect and by analogy, judgment of 6 September 2013 in Case T‑349/12 Leiner v OHIM — Recaro (REVARO), not published in the ECR, paragraph 23 and the case-law cited).
52 Moreover, as OHIM points out, the figurative elements of the earlier mark, as registered, are limited to the stylistic presentation of the two word elements. Those decorative elements do not play any significant role in the overall impression of the sign and have no inherent semantic content of their own which would lend the mark distinctive character or designate the goods concerned (see, to that effect and by analogy, REVARO, paragraph 25).
53 It follows that the Board of Appeal did not commit any error of assessment in holding that the figurative elements of the mark as registered were negligible, so that the use of the mark as demonstrated by the opponent was not likely to alter the distinctive character of the mark and met, therefore, the requirements of Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009.
54 That conclusion is not undermined by the fact that, in two decisions submitted by the applicant, dated 17 February 2011 and between the same parties, the Opposition Division held that proof of genuine use had not been established by the opponent regarding musical instruments.
55 It should be recalled in this respect that the decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the lawfulness of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the European Union judicature and not on the basis of a previous decision-making practice (see, to that effect, Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraph 65 and the case-law cited).
56 Of course, OHIM must, when examining an application for registration of a Community trade mark, 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. That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality (Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 74 and 75).
57 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. 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 (Agencja Wydawnicza Technopol v OHIM, paragraph 77). It suffices to note that, in the decisions cited by the applicant, the evidence provided by the opponent was not the same as in the present case, so that the principle of equal treatment was not infringed.
58 The applicant’s first and second pleas must, therefore, be rejected.
The third plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
59 The applicant claims, in the third plea, that the Board of Appeal was wrong to conclude that there was a likelihood of confusion between the marks at issue.
60 It considers that the likelihood of confusion of a complex trademark must be assessed globally, given that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Admittedly, that does not mean that the overall impression conveyed to the relevant public may not, in certain circumstances, be dominated by one or more of its components, but 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. In that regard, it has to be taken into account that the fact that an element is not negligible does not mean that it is dominant, and vice versa.
61 The applicant therefore considers that the Board of Appeal erred in law by relying solely on the word elements of the two marks in order to establish similarity and the likelihood of confusion between them, since the figurative elements cannot be regarded as being entirely negligible. It also emphasises the importance of the word element ‘music’ contained in the earlier mark, in so far as it influences both the visual and aural aspects of that mark.
62 OHIM disputes those arguments.
63 As set out in Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two trade marks, there is 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. Furthermore, 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.
64 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. 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, taking into account all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods and services covered (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33, and judgment of 16 September 2013 in Case T‑284/12 Oro Clean Chemie v OHIM — Merz Pharma (PROSEPT), not yet published in the ECR, paragraph 35 and the case-law cited).
65 It should be noted, moreover, that 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 being cumulative (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
The relevant public
66 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42, and PROSEPT, paragraph 36 and the case-law cited).
67 In the present case, having regard to the goods concerned and the fact that the earlier mark is protected in the Czech Republic only, the finding of the Board of Appeal in paragraph 25 of the contested decision should be confirmed, according to which the likelihood of confusion must be analysed from the perspective of the average Czech buyer of musical instruments, which, moreover, the applicant does not contest. Under the case-law, the degree of attention of the relevant public at the time of purchasing musical instruments must be taken to be higher than usual and therefore, quite high (see, to that effect, judgment of 8 September 2010 in Case T‑458/08 Wilfer v OHIM (Representation of the head of a guitar), not published in the ECR, paragraphs 48 to 51).
Comparison of the goods
68 Given that the parties do not dispute the finding of the Board of Appeal in paragraph 26 of the contested decision, that the goods covered by the two marks are identical, that finding must be upheld.
69 In any event, even assuming that the goods covered by the opposition may form a sub-category of musical instruments (see, to that effect, Case T‑126/03 Reckitt Benckiser (España) v OHIM — Aladin (ALADIN) [2005] ECR II‑2861, paragraph 45), the goods covered by the two marks are in part identical and in part similar.
Comparison of the signs
70 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, their distinctive and dominant components, in particular, being borne in mind. 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 such a 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, to that effect, Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
71 The assessment of the similarity between two trade marks means more than taking just one component of a complex 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 complex trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
72 First, as regards the visual comparison, it should be noted that the two marks have the word element ‘lidl’, which is also at the beginning of each of them.
73 According to the case-law, the consumer normally attaches more importance to the first part of trade marks (see judgment of 6 June 2013 in Case T‑580/11 McNeil v OHIM — Alkalon (NICORONO), not published in the ECR, paragraph 60 and the case-law cited). It is only when the element placed in the initial part has a weak distinctive character in relation to the goods covered by the marks at issue that the relevant public will attach more importance to their final part, which is the most distinctive (see NICORONO, paragraph 61 and the case-law cited).
74 In the present case, it should be noted that the word element ‘lidl’ is highly distinctive. Moreover, the Board of Appeal was right to find that the word element ‘music’ after the word ‘lidl’ in the earlier mark had only a weak distinctive character, since it simply designated the purpose or use of the goods.
75 Furthermore, as regards the figurative elements of the mark applied for, the Board of Appeal rightly held that they will be perceived as a decorative frame in which the word ‘lidl’ is placed, and that they will not significantly reduce the visual similarity. Accordingly, consumers will be more affected by the word ‘lidl’ and will have to rely on that rather than the word ‘music’ or the abovementioned decorative framework in order to identify the commercial or industrial origin of the goods in question.
76 The figurative elements of the earlier national mark are limited, for their part, to a stylised letter ‘l’, surrounded by a circle, and an enhanced letter ‘m’ with points above its peaks, so that they do not influence the truly distinctive elements of the mark, as the Board of Appeal held at paragraph 19 of the contested decision.
77 Those considerations also confirm, as OHIM argued at the hearing, that those figurative elements were indeed taken into account by the Board of Appeal, contrary to what the applicant claims, but that they were attributed secondary importance compared to the dominant distinctive character of the word element ‘lidl’ present in both marks.
78 The Board of Appeal did not therefore make any error of assessment in finding, in paragraph 29 of the contested decision, that, visually, even if there were differences in the way the marks at issue were represented, those differences did not offset the striking identity of the word element ‘lidl’.
79 Secondly, from an aural point of view, the Board of Appeal also rightly held in paragraph 30 of the contested decision that the marks were similar in so far as their distinctive element — which consumers were more likely to keep in their memory — was the same. The earlier national mark could therefore easily be considered by the average consumer to be a ‘sub-brand’ or variant of the mark applied for.
80 Thirdly, as regards the conceptual comparison between the two marks, the Board of Appeal did not make any error of assessment in finding that such a comparison could not be made, since the word ‘lidl’ had no meaning for a Czech-speaking consumer. The fact that the word ‘music’ also appears in the earlier mark is not of great relevance having regard to the likelihood of confusion, since, as the Board of Appeal found, this is a notion that, in the present context, consumers will not really pay much attention to, since the category of goods to which the two marks refer is that of musical instruments.
81 The Board of Appeal rightly held, therefore, in paragraph 27 of the contested decision that there was a similarity between the marks because the dominant element in both of them was the word ‘lidl’, and that word is inherently distinctive in the field of music. The word ‘lidl’ is accompanied by the word ‘music’ in the earlier mark, but that word is so commonplace that it will be understood by most average consumers as a reference to the purpose of the goods.
82 Having regard to all those considerations, it should be noted that the Board of Appeal did not err in law when it found that the signs at issue were similar.
The likelihood of confusion
83 The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (see OHIM v Shaker, paragraphs 34 and 35, and Case C‑498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I‑7371, paragraphs 59 and 60 and the case-law cited). Furthermore, it implies some interdependence of the factors taken into account, so that a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraphs 44 and 45).
84 Therefore, since the goods covered by the marks at issue are identical — which the applicant does not dispute — and those marks are similar, the Board of Appeal was entitled to conclude that there was a likelihood of confusion within the meaning Article 8(1)(b) of Regulation No 207/2009.
85 The third plea in law must therefore be rejected and the action must be dismissed in its entirety.
Costs
86 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.
87 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Lidl Stiftung & Co. KG to pay the costs.
Delivered in open court in Luxembourg on 27 February 2014.
[Signatures]