JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
13 June 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark MESILETTE – Earlier national and international word marks MEDINETTE – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑342/10,
Paul Hartmann AG, established in Heidenheim an der Brenz (Germany), represented by N. Aicher, lawyer,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
the other party to the proceedings before the Board of Appeal of OHIM being
Mölnlycke Health Care AB, established in Göteborg (Sweden),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 20 May 2010 (Case R 1222/2009-2), concerning opposition proceedings between Paul Hartmann AG and Mölnlycke Health Care AB,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen (Rapporteur), President, N. Wahl and S. Soldevila Fragoso, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 August 2010,
having regard to the response lodged at the Court Registry on 16 November 2010,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Background to the proceedings
1 On 7 November 2007, Mölnlycke Health Care AB filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 word sign MESILETTE.
3 The goods in respect of which registration was sought are in Class 5 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Medical and surgical plasters; compresses; material for dressings; articles for bandaging; swabs, sponges and abdominal towels for medical and surgical use; lotions and ointments for pharmaceutical purposes; materials for keeping dressings in place’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 13/2008 of 31 March 2008.
5 On 27 June 2008, the applicant, Paul Hartmann AG, filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to the registration of the mark applied for.
6 The opposition was based on the following earlier rights:
– German word mark MEDINETTE, filed on 21 October 1981 and registered on 19 May 1982 under No 1033551 for goods in Class 25 corresponding to the following description: ‘Clothing for professional use and protective clothing for staff and patients in hospitals, as included in Class 25, with the exception of hosiery’;
– international word mark MEDINETTE, registered on 4 July 1984 under No 486204 for goods in Class 25 corresponding to the following description: ‘Clothing for professional use and protective clothing for staff and patients in hospitals, not included in other Classes (except for knitwear)’, and having effect in the Benelux, France, Italy, Austria, the Czech Republic, Slovakia, Bulgaria, Poland, Hungary, Romania and Slovenia.
7 The opposition was based on all of the goods covered by the earlier rights and was directed against all of the goods covered by the trade mark applied for.
8 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
9 By decision of 15 September 2009, the Opposition Division rejected the opposition. It found that the goods covered by the mark applied for were different from those covered by the earlier marks in so far as they did not have the same nature or purpose and their manufacturers were different. The Opposition Division found that the mere fact that the goods at issue could be used in the same place by the same people did not make them similar. Since similarity of goods is a condition for a finding of likelihood of confusion it found that there was no such likelihood.
10 On 16 October 2009, the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision.
11 By decision of 20 May 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It held that the goods at issue showed a ‘certain degree of similarity’ in that, in essence, first, they can be used simultaneously and, second, their manufacturers and distribution channels can overlap. The Board of Appeal found next that the earlier marks MEDINETTE and the mark applied for MESILETTE were ‘dissimilar overall’. It stated in that regard that, in the light of the medical nature of the goods at issue and the professional public which they are aimed at, the prefix ‘medi’ of the earlier marks is immediately perceived by the relevant public as referring to the medical sector. Therefore, according to the Board of Appeal, the relevant public will give its attention to the other part of the earlier marks, namely the suffix ‘nette’. As for the mark applied for, the Board of Appeal states that it does not have meaning in any of the relevant languages either considered as a whole or in its different word elements. Since the relevant public will turn their attention to the term ‘nette’ of the earlier marks, the Board of Appeal found that, from a visual aspect, the signs at issue create a somewhat different overall impression even if they share the diminutive ending ‘ette’ and each have nine letters. Phonetically the Board of Appeal found that, even though the signs at issue share the same diminutive ending ‘ette’, begin with ‘me’ and are the same length, they create a somewhat different phonetic impression overall, since the first part of the earlier marks ‘medi’ are pronounced differently from ‘mesil’. Taking account of all of the abovementioned considerations and the level of attention of the relevant public, the Board of Appeal found that a likelihood of confusion cannot be inferred from the fact that the goods have a ‘certain degree of similarity’.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 In support of its application, the applicant puts forward a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15 The applicant criticises the part of the contested decision comparing the signs at issue in so far as it finds no similarity between them. It considers that, taking into account the similarity of the goods at issue and of the signs at issue, there is a likelihood of confusion on the part of the relevant public.
16 OHIM claims that the signs at issue have an average degree of similarity and therefore concludes that, taking into account the ‘very low degree of similarity of the goods’ and the ‘highly attentive public’, the Board of Appeal rightly found that there is no likelihood of confusion.
17 As provided 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, 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.
18 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 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 goods or services at issue and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS)  ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel)  ECR II‑43, paragraph 42 and the case-law cited).
20 In the present case, the relevant territories for the purposes of the examination are Germany, the Benelux, France, Italy, Austria, the Czech Republic, Slovakia, Bulgaria, Poland, Hungary, Romania and Slovenia.
21 It must be noted that the finding in the contested decision that the goods at issue are aimed only at professionals with a high level of attention is not disputed by the applicant.
22 Nor is it disputed by the applicant that there is a ‘certain degree of similarity between the goods at issue’, as the Board of Appeal rightly found. It must be noted in this respect, as OHIM pointed out in its pleadings, that by the expression ‘certain degree of similarity’ the Board of Appeal intended to stress the low degree of similarity between the goods at issue. That conclusion is not refuted by the applicant who indicates, in the application, that the goods at issue ‘are similar to a certain degree’.
23 Only the assessment of the Board of Appeal as regards the similarity of the signs at issue is disputed. It is therefore necessary to examine whether the Board of Appeal rightly found the signs at issue to be dissimilar overall.
24 In that regard, it should be borne in mind that, in relation to the visual, phonetic or conceptual similarity of the signs at issue, the global assessment of the likelihood of confusion must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (Case C‑334/05 P OHIM v Shaker  ECR I‑4529, paragraph 35 and the case-law cited).
25 In the present case, as already explained at paragraph 11 above, the Board of Appeal found that overall the signs at issue were visually and phonetically somewhat different and conceptually different.
26 The applicant claims, first, that taken as a whole the signs at issue are highly similar both visually and phonetically. The applicant claims, second, that, although according to the case-law visual and phonetic similarities may be counteracted by conceptual differences, one of the signs at issue must have a clear and specific meaning for the relevant public. However, in the present case, the word ‘medinette’ has no clear meaning which could be immediately understood by the public. The applicant adds that, even if there were a conceptual difference between the signs at issue because of the word element ‘medi’ in the earlier marks which alludes to the medical sector, it would not be strong enough to counteract the important visual and phonetic similarities. The applicant therefore claims that, taking account of the similarity of the goods at issue and that of the signs at issue, there is a likelihood of confusion.
27 OHIM claims that the signs at issue have a certain degree of visual and phonetic similarity and that they are conceptually different. It therefore concludes that, as a whole, the degree of similarity of the signs at issue is at best average.
28 Concerning, first, the visual comparison of the signs at issue, it must be noted that the earlier marks MEDINETTE and the mark applied for MESILETTE consist of a single word with four syllables. They have the same number of letters, of which seven are identical, and their vowels are placed in the same order (‘e’, ‘i’, ‘e’ and ‘e’). They begin with the same two letters ‘me’ and finish with the same suffix ‘ette’. As for the visual differences between the signs at issue, the presence of the letters ‘s’ and ‘l’ in the centre of the mark applied for and of the letters ‘d’ and ‘n’ in the centre of the earlier marks is noteworthy.
29 As regards, second, the phonetic comparison of the signs at issue, apart from the fact that they have the same number of syllables, as stated at paragraph 28 above, the signs have the same first two letters ‘me’, fourth letter ‘i’ and ending ‘ette’, which makes their pronunciation similar despite the fact that the third letter ‘s’ and the fifth letter ‘l’ of the mark applied for are different from the third letter ‘d’ and the fifth letter ‘n’ of the earlier marks. It must be noted also that the sequence of vowels ‘e’, ‘i’, ‘e’ and ‘e’ creates a similar sound, even if they are in a different sequence of consonants.
30 Therefore, whereas the Board of Appeal found that the signs at issue were visually and phonetically somewhat different overall, it must be held, as is evident from the considerations at paragraph 28 and 29 above, that they have an average degree of similarity both visually and phonetically. That is indeed the view of OHIM which claims that the signs at issue have ‘some degree of visual and aural similarity’.
31 The conclusion that there is an average degree of visual and phonetic similarity between the signs at issue cannot be weakened by the finding of the Board of Appeal that, because of the element ‘medi’ in the earlier marks which alludes to the medical sector, less importance must be accorded to it in the context of the assessment of similarities since the relevant public will focus most of its attention on the suffix ‘nette’. Even if the element ‘medi’ refers to the medical sector, that fact could only have an effect in the context of the assessment of conceptual similarity. The descriptive character of a word element can have no relevance to the assessment of visual and phonetic similarities, where the only factors which must be taken into consideration are those capable of having a specific effect on visual and phonetic impressions (see, to that effect, judgment of 13 September 2010 in Case T‑149/08 Abbott Laboratories v OHIM – aRigen (Sorvir), not published in the ECR, paragraph 37).
32 As regards the conceptual comparison of the signs at issue, it must be noted that conceptual differences may, to a large degree, counteract phonetic and visual similarities between the marks at issue, provided that at least one of those marks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see, to that effect, Case C‑16/06 P Éditions Albert René v OHIM  ECR I‑10053, paragraph 98, and judgment of 11 November 2009 in Case T‑277/08 Bayer Healthcare v OHIM – Uriach-Aquilea OTC (CITRACAL), not published in the ECR, paragraph 53).
33 It should also be noted that, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C‑342/97 Lloyd Schuhfabrik Meyer  ECR I‑3819, paragraph 25), 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, to that effect, Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR)  ECR II‑449, paragraph 57, and CITRACAL, paragraph 55).
34 In the present case, the relevant public, because of its knowledge and experience, will generally be able to establish a conceptual link between the element ‘medi’ in the earlier marks and the medical sector (judgment of 6 October 2011 in Case T‑247/10 medi v OHIM – Deutsche Medien Center (deutschemedi.de), not published in the ECR, paragraphs 41 and 42). As the Board of Appeal rightly found, the element ‘medi’ corresponds, for all the relevant languages, to the root of words clearly alluding to the medical sector: ‘Medikamente’ and ‘Medizin’ in German, ‘medicina’ in Hungarian, ‘medicína’ in Czech and Slovak, ‘medycyne’ in Polish, ‘medicina’ in Italian, ‘médicine’ in French, ‘medicinski’ and ‘medicina’ in Bulgarian; ‘medisch’ in Dutch and ‘medicament’ in Romanian.
35 Indeed, the applicant does not dispute that the element ‘medi’ could allude to links to the medical sector. It merely submits that the earlier marks MEDINETTE considered in their entirety, and not in their distinct word elements ‘medi’ and ‘nette’, have no clear meaning.
36 The Court therefore finds that there is a certain conceptual difference between the earlier marks MEDINETTE and the mark applied for MESILETTE, since the latter has no meaning. However, that is not such as to counteract the average degree of visual and phonetic similarity of the signs at issue.
37 Finally, it should in addition be noted, as is apparent from paragraphs 27 to 29 above, that, even if, as the applicant claims, the signs at issue had no clear meaning, so that a conceptual difference between them could not be found, they are nevertheless visually and phonetically similar to an average degree.
38 It follows that, taken as a whole, the signs at issue have an average degree of similarity.
39 In the light of the above considerations, the Board of Appeal wrongly found that the earlier marks MEDINETTE and the mark applied for MESILETTE are ‘dissimilar overall’, as OHIM admits.
40 However, it is apparent from the contested decision that it was, in particular, on the basis of the overall dissimilarity of the signs at issue that the Board of Appeal found that there was no likelihood of confusion. That finding of the Board of Appeal was therefore based on an incorrect assessment of one of the factors to be taken into account.
41 Under those circumstances, the single plea in law must be upheld and, consequently, the contested decision annulled.
42 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful, it must be ordered to pay the costs, as applied for by the applicant.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), of 20 May 2010 (Case R 1222/2009-2);
2. Orders OHIM to pay the costs.
Delivered in open court in Luxembourg on 13 June 2012.