JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
21 February 2013 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark KMIX – Earlier Community word mark BAMIX – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑444/10,
Esge AG, established in Bussnang (Switzerland), represented by J. Klink, lawyer,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
intervener before the General Court, formerly Kenwood Appliances Luxembourg SA, the other party in the proceedings before the Board of Appeal of OHIM being
De’Longhi Benelux SA, established in Luxembourg (Luxembourg), represented by P. Strickland, Solicitor, and L. St. Ville, Barrister,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 14 July 2010 (Case R 1249/2009-2), concerning opposition proceedings between Esge AG and Kenwood Appliances Luxembourg SA,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich, President, I. Wiszniewska-Białecka (Rapporteur) and M. Prek, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 28 September 2010,
having regard to the response of OHIM lodged at the Court Registry on 14 February 2011,
having regard to the response of the intervener lodged at the Court Registry on 8 February 2011,
having regard to the reply lodged at the Court Registry on 9 June 2011,
having regard to the rejoinder of the intervener lodged at the Court Registry on 20 September 2011,
further to the hearing on 24 October 2012,
gives the following
Background to the dispute
1 On 14 March 2007, the intervener, De’Longhi Benelux SA, formerly Kenwood Appliances Luxembourg SA, filed an application for registration of a Community trade mark with 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 trade mark for which registration was sought is the word mark KMIX.
3 The goods in respect of which registration was sought, inter alia, are in Classes 7 and 11 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 7: ‘Machines for mixing, kneading, pulping, grinding, mincing, chopping, blending, beating and shredding foodstuffs; machines for peeling vegetables; machines for making, mixing or dispensing beverages; machines for making ice cream or sorbets (non refrigerating); liquidisers; blenders; food processors; food slicers, electric can openers, carving knives, knife/scissor sharpeners; juice extractors; coffee grinders; parts and fittings included in Class 7 for all the aforesaid goods; all of the aforesaid goods being domestic appliances’;
– Class 11: ‘… Tea makers; rice cookers; coffee makers, espresso coffee machines, coffee percolators and coffee filter machines; apparatus for heating liquids and fluid mixtures; toasters; electrical saucepans, pancake, hot-dog, sandwich and waffle makers; … apparatus for steaming foodstuffs; bread-making apparatus; electric woks; sandwich makers; parts and fittings included in Class 11 for all the aforesaid goods; all of the aforesaid goods being domestic appliances’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 48/2007 of 3 September 2007.
5 On 3 December 2007, the applicant, Esge AG, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark BAMIX, which was lodged on 17 January 2007 and registered on 6 February 2008 under number 5648217, covering goods in Class 7 and services in Class 40 and corresponding, for each of those classes, to the following description:
– Class 7: ‘Electric kitchen machines; hand blender; electric mixer, in particular electromotive powered small apparatus for households, restaurants and for use in the pharmaceutical industry’;
– Class 40: ‘Information about material processing; preparation of materials for third parties; metal processing’.
7 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).
8 By decision of 21 August 2009, the Opposition Division rejected the opposition. It took the view that the goods at issue were identical or similar and that the signs at issue had a medium degree of visual similarity, a high degree of phonetic similarity (as the earlier mark is pronounced ‘bamix’ or ‘baymix’ and the mark applied for is pronounced ‘kamix’ or ‘kaymix’) and a certain degree of conceptual similarity inasmuch as they both contain the element ‘mix’. However, the Opposition Division took the view that, as the element ‘mix’, common to the signs at issue, had a very limited distinctive character and the other elements of those signs – ‘ba’ and ‘k’ – were different, there was no likelihood of confusion.
9 On 22 October 2009 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 14 July 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It took the view that the signs at issue were fanciful signs which would not be broken down by the relevant public – consisting of the general public in the European Union and deemed to be at least reasonably well-informed and reasonably observant and circumspect – into word elements which have a concrete meaning and that those signs would, therefore, be perceived as a whole. Considering that the signs at issue were not visually similar and taking into account the fact that, phonetically, the mark applied for was composed of one syllable (‘kmix’) and that the earlier mark was composed of two syllables (‘ba’ and ‘mix’), and that, conceptually, neither of the signs at issue has a meaning, the Board of Appeal concluded that the signs at issue were not similar overall. Therefore, although the earlier mark had a normal distinctive character and there was an identity or similarity of the goods at issue, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought by the parties
11 Esge AG claims that the General Court should:
– annul the contested decision;
– amend the contested decision by annulling the decision of the Opposition Division of 21 August 2009;
– order OHIM to pay the costs, including those incurred in the appeal proceedings.
12 OHIM and De’Longhi Benelux SA contend that the General Court should:
– dismiss the action;
– order Esge AG to pay the costs.
13 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, claiming that the Board of Appeal erred in finding that there was no similarity between the signs at issue and, therefore, that there was no likelihood of confusion.
14 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) of Regulation No 207/2009, earlier trade marks means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
15 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 line of case‑law, likelihood of confusion must be assessed globally, according to the perception the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the case, in particular, the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS)  ECR II‑2821, paragraphs 30 to 33 and case-law cited, and judgment of 16 December 2008 in Case T‑357/07 Focus Magazin Verlag v OHIM – Editorial Planeta (FOCUS Radio), not published in the ECR, paragraphs 24 and 25).
16 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well‑informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR)  ECR II‑449, paragraph 42 and case-law cited).
17 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists only in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others)  ECR II‑5409, paragraph 76 and the case-law cited).
18 In the present case, the goods covered by the earlier mark and the goods at issue covered by the mark applied for are domestic and electrical appliances used for cooking and are in Class 7 and Class 11.
19 As such goods are aimed at both the professional public, for example cooks, and the general public, the relevant public will have either an above average or a reasonable level of attention and circumspection.
20 Given that, as regards the assessment of the likelihood of confusion, the section of the public having the lower level of attention must be taken into consideration (see, to that effect, judgment of 8 September 2010 in Case T‑152/08 Kido v OHIM – Amberes (SCORPIONEXO), not published in the ECR, paragraph 40), it is the reasonably observant and circumspect general public which must be taken into consideration in the present case.
21 As regards the comparison of the goods, it is undisputed that the goods covered by the earlier mark and the goods covered by the mark applied for are identical or similar.
22 As regards the comparison of the signs, the General Court has held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (Case T‑6/01 Matrazen Concord v OHIM – Hukla Germany (MATRAZEN)  ECR II‑4335, paragraph 30, and judgment of 10 December 2008 in Case T‑290/07 MIP Metro v OHIM – Metronia (METRONIA), not published in the ECR, paragraph 41).
23 Furthermore, the global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services at issue plays a decisive role in the global assessment of that likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker  ECR I‑4529, paragraph 35 and judgment of 4 March 2009 in Case T‑168/07 Professional Tennis Registry v OHIM – Registro Profesional de Tenis (PTR PROFESSIONAL TENNIS REGISTRY), not published in the ECR, paragraph 28).
24 The present case concerns the earlier word mark BAMIX and the word mark applied for KMIX.
25 With regard to the visual aspect, it must be noted, as a preliminary point, that, even though the applicant merely stated, in its application, that the Board of Appeal had wrongly held that there was no similarity between the signs at issue, it specified in its reply that the signs at issue were partially identical in so far as they had three out of just four or five letters in common. Therefore, OHIM cannot claim that the applicant’s general statement that the Board of Appeal wrongly held that there was no visual similarity between the signs at issue must be rejected because the applicant has put forward no argument in support of that statement.
26 It is true that the sign BAMIX and the sign KMIX end in the same three letters, namely ‘m’, ‘i’and ‘x’. However, they differ in their number of letters, the mark applied for having four letters and the earlier mark having five. They also differ in the fact that they have different initial letters, the mark applied for commencing with the letter ‘k’ and the earlier mark with the letters ‘b’ and ‘a’.
27 According to established case-law, the consumer generally pays greater attention to the beginning of a mark than to the end (see judgment of 11 May 2010 in Case T‑492/08 Wessang v OHIM – Greinwald (star foods), not published in the ECR, paragraph 46 and the case-law cited). Furthermore, the brevity of the marks at issue enables consumers to better grasp the variations in their spelling (see judgment of 13 February 2007 in Case T‑353/04 Ontex v OHIM – Curon Medical (CURON), not published in the ECR, paragraph 70).
28 Thus, even if, as the applicant claims, the signs at issue have three letters in common, the differences between those signs – resulting, firstly, from the letters situated at their beginning and, secondly, from the difference between the number of letters constituting those signs – outweigh their common characteristics. Therefore, the Board of Appeal did not err in concluding that the signs at issue were not visually similar.
29 With regard to the phonetic aspect, the parties agree that the earlier mark is pronounced as two syllables, namely ‘ba’ and ‘mix’.
30 As regards the mark applied for, the Board of Appeal took the view that it is pronounced as only one syllable, namely ‘kmix’.
31 The applicant claims that the mark applied for will most likely, or only, be pronounced as two syllables, namely ‘ka’ and ‘mix’ and that, phonetically, ‘bamix’ and ‘kamix’ are highly similar.
32 In that regard, it must be noted that as the word element ‘kmix’ does not correspond to any existing word in the European Union, it may be pronounced by part of the relevant public as it is written, as a single syllable. However, the pronunciation of the mark applied for as a two syllable word, namely ‘ka’ and ‘mix’, is also possible. In certain languages of the European Union (in particular French and German), the letter ‘k’ is pronounced as ‘ka’ and the pronunciation ‘km’ is not usual. Therefore, the Board of Appeal erred by not taking that fact into account.
33 When the mark applied for is pronounced ‘kamix’, the signs at issue have the same number of syllables (two) and have the sound resulting from the pronunciation ‘amix’ in common. They differ only by the sounds resulting from the pronunciation of the letters ‘k’ and ‘b’.
34 Consequently, for the part of the relevant public which pronounces the mark applied for as ‘kamix’, the signs at issue are of average similarity.
35 The applicant claims that the purchase of the goods at issue is often made on oral recommendation, which, in essence, gives greater importance to the phonetic similarity of the signs at issue.
36 In that regard, it must be noted that the visual, phonetic and conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market (Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection)  ECR II‑3471, paragraph 49, and judgment of 23 January 2008 in Case T‑106/06 Demp v OHIM – Bau How (BAUHOW), not published in the ECR, paragraph 44). The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed. If the goods covered by the mark in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, the visual similarity between the signs will as a general rule be more important. If, on the other hand, the goods covered are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 49, and BAUHOW, paragraph 44).
37 In addition, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS)  ECR II‑4335, paragraph 55, and Case T‑301/03 Canali Ireland v OHIM – Canal Jean (CANAL JEAN CO. NEW YORK)  ECR II‑2479, paragraph 55).
38 In the present case, the goods covered by the signs at issue are intended, in particular, for the general public and can be bought in department stores and specialty shops. These shops often operate on a self-service basis, even though they employ personnel to assist customers in their choices. Therefore, even though the purchase of the goods at issue may be made on the basis of an oral recommendation, the marks at issue will generally be perceived visually prior to purchase. Furthermore, oral communication will take place, where necessary, with qualified sales personnel who are capable of informing customers about the various brands.
39 It follows that, contrary to what is claimed by the applicant, the visual similarity between the signs at issue has more weight than the phonetic similarity in the assessment of the overall similarity.
40 Consequently, the fact that the Board of Appeal did not take into account the pronunciation ‘kamix’ of the mark applied for in the assessment of the phonetic similarity of the signs at issue is not liable to affect the assessment of the overall similarity of those signs.
41 Finally, since the signs at issue are meaningless, a conceptual comparison of the signs is not possible.
42 Given the visual differences between the signs at issue, the reduced importance of their medium degree of phonetic similarity and the fact that they cannot be compared conceptually, it is clear that the Board of Appeal did not err in finding that the signs at issue were not similar overall. Therefore, the Board of Appeal could also conclude, without error, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, even though the goods covered by the signs at issue were identical or similar.
43 Therefore, the single plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected.
44 It follows from the foregoing that the action must be dismissed in its entirety.
45 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. Since Esge AG has been unsuccessful, it must be ordered to pay the costs, in accordance with forms of order sought by OHIM and De’Longhi Benelux SA.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
1. Dismisses the action;
2. Orders Esge AG to pay the costs.
Delivered in open court in Luxembourg on 21 February 2013.