JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
3 June 2015 (*) (1)
(Community trade mark — Opposition proceedings — Application for Community figurative mark GIOVANNI GALLI - Earlier Community word mark GIOVANNI - Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Distinctive character of a first name and a surname)
In Case T‑559/13,
Giovanni Cosmetics, Inc., established in Rancho Dominguez, California (United States), represented by J. van den Berg and M. Meddens-Bakker, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Rajh, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Vasconcelos & Gonçalves, SA, established in Lisbon (Portugal),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 August 2013 (Case R 1189/2012-2) concerning opposition proceedings between Giovanni Cosmetics, Inc. and Vasconcelos & Gonçalves, SA,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 25 October 2013,
having regard to the response lodged at the Court Registry on 26 February 2014,
further to the hearing on 12 November 2014,
gives the following
Judgment
Background to the dispute
1 On 8 July 2010, Mr José Fernando Esteves Gonçalves 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 in respect of which registration was sought is the following figurative sign:
3 The goods in respect of which registration was sought are in, inter alia, Class 3 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 to the following description: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 178/2010 of 22 September 2010.
5 On 17 November 2010, the applicant, Giovanni Cosmetics, Inc., filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for, in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the Community word mark GIOVANNI, registered on 19 December 2002 under No 2 404 283 and covering goods in Class 3 corresponding to the following description: ‘Soaps, shampoo and other haircare preparations, cosmetic preparations, perfumery’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.
8 On 21 June 2011, the Community trade mark application was transferred to Vasconcelos & Gonçalves, SA. That change was entered in OHIM’s database on 23 June 2011.
9 On 3 May 2012, the Opposition Division rejected the opposition.
10 On 27 June 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11 By decision of 13 August 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In particular, it found that the goods covered by the mark applied for and the earlier trade mark were partly identical and partly similar and that they were directed at the general public in the European Union. The Board of Appeal observed that the word element ‘giovanni galli’ of the mark applied for would be perceived by the relevant public as an Italian name consisting of the first name Giovanni and the surname Galli. According to the Board of Appeal, the element ‘galli’ of the mark applied for was more distinctive than the element ‘giovanni’. In that regard, it held, first, that surnames were, as a general rule, more distinctive than first names and, second, that the surname Galli was quite rare, even in Italy, whereas the first name Giovanni was fairly common. It also held that, from the point of view of the relevant public, the figurative element of the mark applied for did not have less relevance than the word element of that mark.
12 Regarding the comparison of the signs, the Board of Appeal found that there was a rather low degree of visual similarity between the marks at issue. In addition, it held that the marks were aurally similar. Concerning the conceptual comparison, the Board of Appeal found that the relevant public would associate the earlier trade mark with an Italian first name. It held that, while the earlier trade mark could not refer to a specific person, since that mark was common to all persons named Giovanni, the mark applied for could refer to and distinguish a specific person named Giovanni, namely a member of the Galli family. Thus, according to the Board of Appeal, the surname could render the marks sufficiently dissimilar to enable the relevant public to distinguish a person named Giovanni Galli from all other persons named Giovanni. The Board of Appeal also held that the conceptual differences between the marks at issue could counteract the aural similarity and found that the marks at issue, when considered as a whole, were dissimilar. It concluded that there was no likelihood of confusion.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– refuse the application for registration of the mark applied for in respect of all the goods against which the opposition is directed;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
15 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. According to the applicant, the Board of Appeal was wrong to conclude that there was no likelihood of confusion between the marks at issue for the goods in question. It submits in particular that OHIM incorrectly assessed the distinctive character of the earlier trade mark and of the elements making up the mark applied for and the degree of similarity between the marks at issue.
16 OHIM contests the applicant’s arguments.
17 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the 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 It is settled case-law that 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 line of authority, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of 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 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).
The relevant public and its level of attention
19 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 goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
20 In the present case, the Board of Appeal rightly found, without being contradicted on that subject by the parties, that the relevant public consisted of average consumers. It also correctly observed that, as the earlier trade mark was a Community trade mark, the likelihood of confusion had to be assessed in relation to the public throughout the European Union.
21 Concerning the relevant public’s degree of attention, the Board of Appeal merely stated that the relevant public was the average consumer, and was ‘reasonably well informed and reasonably observant and circumspect’. Thus, it simply repeated the general statement set out in the case-law cited in paragraph 19 above without taking a position on the average consumer’s level of attention when purchasing the goods in question in the present case. The Opposition Division had not taken a position on the relevant public’s degree of attention in its decision either.
22 In that regard, it should be noted that, on the one hand, the goods in question, that is to say, cosmetic preparations and cleaning preparations, are everyday consumer goods which are frequently purchased by the average consumer. In addition, they are generally inexpensive.
23 On the other hand, certain aesthetic considerations or considerations connected with consumers’ personal preferences or skin type may play a role when those consumers purchase cosmetic preparations. Concerning cleaning preparations, consumers must ensure they choose a product which is suited to the desired use.
24 Consequently, the average consumer’s level of attention when purchasing the goods in question cannot be described as low, despite the fact that cosmetic preparations and cleaning preparations are generally inexpensive everyday consumer goods.
25 It follows from the foregoing that the relevant public’s level of attention when purchasing cosmetic preparations and cleaning preparations must be described as average (see, to that effect, judgment of 23 October 2013 in Bode Chemie v OHIM — Laros (sterilina), T‑114/12, EU:T:2013:551, paragraphs 3 and 23).
26 Moreover, the parties, who were questioned on that issue during the hearing, have essentially confirmed that the relevant public’s level of attention when purchasing the goods in question should be described as average.
Comparison of the goods
27 The Board of Appeal rightly found, without being contradicted on that subject by the parties, that the goods in question were partly identical and partly similar.
Comparison of the signs
28 The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the 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).
29 In the present case, the mark applied for comprises two word elements ‘giovanni’ and ‘galli’ (written in thick capital letters) and a figurative element positioned above those word elements and consisting of a drawing representing a duck (seen in profile) surrounded by an oval. The earlier trade mark consists of the word ‘giovanni’.
The degree of distinctiveness and the relative weight of the elements of the mark applied for
30 In the present case, the Board of Appeal found that the element ‘galli’ of the mark applied for was more distinctive than the element ‘giovanni’. In that regard, it held that case-law showed that surnames were, as a general rule, more distinctive than first names. It also observed that, according to case-law, it was appropriate however to take account of factors specific to the case and, in particular, the fact that the surname concerned was either unusual or, on the contrary, very common, which was likely to have an effect on its distinctive character (judgment of 24 June 2010 in Becker v Harman International Industries, C‑51/09 P, ECR, EU:C:2010:368, paragraph 36). It also found that the surname Galli was quite rare, even in Italy, whereas the first name Giovanni was fairly common. In addition, it held that, from the point of view of the relevant public, the figurative element of the mark applied for did not have less relevance than the word element of that mark.
31 The applicant challenges that assessment. In its opinion, the element ‘giovanni’ is the most distinctive element of the mark applied for, or is at least as distinctive as the element ‘galli’ of that mark. It also considers that the word elements of the mark applied for are more distinctive than the figurative element.
32 It is first of all necessary to examine the distinctive character of the elements of the mark applied for, as the assessment of that distinctive character plays a role in the comparison of the signs.
– The word elements of the mark applied for
33 The applicant contests the Board of Appeal’s finding that the element ‘giovanni’ of the mark applied for will be perceived throughout the European Union as a common first name. In that regard, the applicant relies on the statistical data which it provided during the administrative procedure, from which it can be seen that the popularity of the first name Giovanni varies from 1.2% of the total population in Italy to 0.0003% of the total population in France, meaning that only three people out of a million bear that first name in the latter country.
34 In that regard, it should be noted that, as OHIM rightly emphasises, the relevant question is not how many people in a Member State bear the first name Giovanni, but whether the element ‘giovanni’ of the mark applied for will be perceived as a common Italian first name. It is common ground between the parties that the element ‘giovanni’ will be perceived by the public in the European Union as an Italian first name.
35 Thus, in its judgment of 1 March 2005 in Sergio Rossi v OHIM — Sissi Rossi (SISSI ROSSI) (T‑169/03, ECR, EU:T:2005:72, paragraphs 82 and 83), the General Court held that the applicant in that case had not challenged the finding that the surname Rossi was very common and constituted a typical Italian surname, not only in the eyes of Italian consumers but also in the eyes of French consumers, and therefore took into consideration the fact that that Italian surname was a common one for the public in France too.
36 In the present case, the applicant acknowledges that, in Italy, 1.2% of the population bears the first name Giovanni, which makes it a common first name in Italy.
37 However, it is still necessary to ascertain whether average consumers throughout the European Union perceive the first name Giovanni as a common Italian first name.
38 In that regard, the Board of Appeal observed in paragraph 31 of the contested decision that other European countries had equivalent versions of the Italian first name Giovanni in their respective languages (such as ‘John’ in English, ‘Jean’ in French, or ‘Juan’ in Spanish) and that most people were aware that that name owed its universal popularity to two New Testament characters, namely John the Baptist and John the apostle.
39 However, it cannot be held that average consumers throughout the European Union are in a position to establish a link between the Italian first name Giovanni and its equivalent in other EU languages. Thus, owing to the differences in the spelling and pronunciation of the Italian first name Giovanni and the English first name John, there is nothing permitting a finding that an English consumer who does not know any foreign languages — let alone Italian — will know that the first name John is the English equivalent of the Italian first name Giovanni: the English first name John consists of a single syllable, whereas the Italian first name Giovanni comprises three syllables and is twice as long as the English first name John (eight letters as opposed to four). Moreover, those two first names have only two letters in common. The same is true of the Spanish (Juan) and French (Jean) versions of Giovanni.
40 In addition, it should be noted that the General Court has already held that non-Italian speaking consumers have no reason to believe that the Italian first name Giuseppe is particularly common (see, to that effect, judgment of 9 April 2013 in Italiana Calzature v OHIM — Vicini (Giuseppe BY GIUSEPPE ZANOTTI), T‑337/11, EU:T:2013:157, paragraph 45). Like the first name Giovanni, the first name Giuseppe is common in Italy, refers to a famous Biblical character (Mary’s husband Joseph), and has equivalent versions in other EU languages which none the less differ significantly from the Italian version in terms of spelling and pronunciation.
41 The Board of Appeal was therefore wrong to find that the first name Giovanni would be perceived as a common Italian first name by the whole of the relevant public.
42 Nevertheless, the applicant is also wrong to argue that, in the majority of the Member States, the first name Giovanni will be perceived as a rare one. That assertion is based on the false premiss that what matters is the number of people who bear that name in each Member State.
43 The Italian public will perceive the first name Giovanni as a common first name and the surname Galli as a rare surname. So far as the public outside Italy is concerned, part of that public will have a certain level of awareness of Italian names and may therefore also perceive the first name Giovanni as a common first name and the surname Galli as a rare surname. However, the majority of the public outside Italy will have no opinion on the issue of whether, in Italy, the first name Giovanni and the surname Galli are common or not. That part of the public will not perceive either of those names as common or rare. For that part of the relevant public, the popularity of a name cannot play any role as a factor in the assessment of the distinctiveness of the names at issue in the present case, as that part of the public simply has no opinion on whether those names are common or rare.
44 The Board of Appeal also stated that, according to case-law, surnames were held, as a general rule, to be more distinctive than first names.
45 However, it must be found that, to date, the case-law has not established such a principle for the whole of the European Union.
46 So far as the two judgments cited by the Board of Appeal in paragraph 33 of the contested decision are concerned, it should be observed that the judgment of 1 March 2005 in Fusco v OHIM — Fusco International (ENZO FUSCO) (T‑185/03, ECR, EU:T:2005:73) concerned only the Italian public’s perception (see paragraph 54 of that judgment), and that the judgment of 13 July 2005 in Murúa Entrena v OHIM — Bodegas Murúa (Julián Murúa Entrena) (T‑40/03, ECR, EU:T:2005:285) concerned only the Spanish public’s perception (see paragraphs 40, 64, 65 and 69 of that judgment).
47 So far as the case-law cited by OHIM in its response is concerned, the following points should be noted. In its judgment of 20 February 2013 in Caventa v OHIM — Anson’s Herrenhaus (B BERG) (T‑631/11, EU:T:2013:85, paragraph 48), the General Court observed that ‘the perception of signs composed of a real or fictional person’s name and surname [could] vary from country to country within the European Union’ and that ‘it could not be excluded that, in certain Member States, consumers [would remember] the surname better than the first name when they [perceived] marks consisting of a combination of a first name and a surname’. The General Court thus established a principle which was valid in ‘certain’ Member States, not for the whole of the European Union.
48 In addition, in its judgment of 28 June 2012 in Basile and I Marchi Italiani v OHIM — Osra (B. Antonio Basile 1952) (T‑134/09, EU:T:2012:328, paragraph 44), the General Court merely found that ‘Italian consumers [generally attributed] greater distinctiveness to the surname than to the first name in the marks at issue’. In the order of 6 June 2013 in I Marchi Italiani v OHIM (C‑381/12 P, EU:C:2013:371, paragraphs 70 to 73) relied on by OHIM in its response, the Court of Justice merely found that the appellant’s ground of appeal alleging infringement of Article 8(1)(b) of Regulation No 207/2009 concerned questions of fact which, as a general rule, were not subject to review by the Court of Justice on appeal.
49 Concerning the order of 16 May 2013 in Arav v H.Eich and OHIM (C‑379/12 P, EU:C:2013:317), the Court of Justice simply held, in paragraph 44 of that order, that, ‘although it [was] possible that, in a part of the European Union, surnames [had], as a general rule, a more distinctive character than first names, it [was] none the less appropriate to take account of factors specific to the case and, in particular, the fact that the surname concerned [was] unusual or, on the contrary, very common, which [was] likely to have an effect on that distinctive character’. It thus established a principle which was valid in only ‘a part of the European Union’.
50 Other judgments, such as the judgments of 14 April 2011 in TTNB v OHIM — March Juan (Tila March) (T‑433/09, EU:T:2011:184, paragraphs 7, 12 and 30), 27 September 2012 in El Corte Inglés v OHIM — Pucci International (PUCCI) (T‑39/10, EU:T:2012:502, paragraphs 53 and 54), and 8 March 2013 in Mayer Naman v OHIM — Daniel e Mayer (David Mayer) (T‑498/10, EU:T:2013:117, paragraphs 7 and 111), concern only the Spanish or Italian public’s perception.
51 The Board of Appeal was therefore wrong to find in paragraph 33 of the contested decision that, ‘according to case-law’, surnames were more distinctive than first names. It must also be held that neither the Board of Appeal nor OHIM, in its response and in its answers to the questions put to it by the General Court in that regard at the hearing, has adduced specific evidence concerning the perception of the public in all the Member States permitting wider application of the rule — which, in the case-law of both the Court of Justice and the General Court, has been accepted for only a part of the European Union — that surnames are, in principle, more distinctive than first names.
52 In the absence of any specific evidence provided by OHIM relating to the perception of the public throughout the European Union, it is not appropriate to extend the case-law pursuant to which, in certain Member States, surnames have, as a general rule, a more distinctive character than first names so that it applies to the whole of the European Union.
53 In view of the fact that, for at least a part of the European Union, it is not established that surnames have, in principle, a more distinctive character than first names, and in view of the fact that the majority of the public located outside Italy will not perceive either of the names Giovanni and Galli as common or rare, there are no grounds for ascribing greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’ from the point of view of the whole of the relevant public. The Board of Appeal was therefore wrong to ascribe greater distinctiveness to the element ‘galli’ than to the element ‘giovanni’ for the whole of the relevant public.
54 It is true that a part of the relevant public — namely, the part of that public which knows that the element ‘giovanni’ is a common Italian first name and that the element ‘galli’ of that mark is a rare Italian surname or which generally ascribes greater distinctiveness to surnames than to first names — will ascribe greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’. However, it should be held that, for the other part of the relevant public, the inherent distinctiveness of the elements ‘giovanni’ and ‘galli’ is identical, and corresponds to an average distinctiveness.
55 Nor is it appropriate, contrary to what is suggested by the applicant, to find that the element ‘giovanni’ of the mark applied for is more distinctive than the element ‘galli’ of that mark for the goods concerned.
56 Indeed, concerning the applicant’s argument that the public generally pays greater attention to the beginning of a mark than to the end (judgment of 25 March 2009 in L’Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, ECR, EU:T:2009:81, paragraph 30), it should be observed that an argument of that kind has no impact on the assessment of the distinctive character of the elements of a composite trade mark, as the position of an element within a sign does not in any way influence that element’s capacity to identify the origin of a product or service. That argument of the applicant will be examined in paragraphs 73, 74 and 81 below in the context of the analysis of the similarities between the marks at issue.
57 In addition, at the hearing the applicant emphasised that, in everyday life, first names were more important than surnames for addressing or referring to people.
58 In that regard, it should be noted that it is true that it is normal, within a family, between friends and often between colleagues to address or refer to a person belonging to such a group by his first name alone. However, when a first name is used as a trade mark, that mark is not referring to a person belonging to a particular group. The use of a first name as a trade mark or as an element of a trade mark constitutes a general use of that first name. The applicant has not submitted any evidence permitting the conclusion that, during such general use, first names have greater distinctiveness than surnames.
– The figurative element of the mark applied for
59 Concerning the figurative element of the mark applied for, the Board of Appeal found that, in view of its large size in relation to the word element ‘giovanni galli’ and its central position in the mark applied for, that element could not be considered less relevant than the word element.
60 The applicant contests that assessment, citing the case-law pursuant to which, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the product in question by quoting its name than by describing the figurative element of the mark concerned (judgment of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 54).
61 In that regard, it should be noted that it does not follow from that case-law that the word elements of a trade mark must always be held to be more distinctive than the figurative elements. In the case of a composite mark, the figurative element may, owing to — inter alia — its shape, size, colour or position within the sign, rank equally with the word element (see, to that effect, judgment of 23 November 2010 in Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, ECR, EU:T:2010:476, paragraphs 37 and 39 and the case-law cited).
62 In the present case, the figurative element of the mark applied for is distinctive, as a duck has no connection with cosmetic preparations or cleaning preparations.
63 It should also be observed that the figurative element of the mark applied for is positioned above the word elements of that mark and occupies more space than both of those elements combined. In addition, the drawing of the duck is quite elaborate.
64 In those circumstances, the Board of Appeal was right to find that the figurative element of the mark applied for was as important as the combined word elements of that mark.
65 It is in the light of those findings that the marks at issue must be compared visually, aurally and conceptually.
Visual similarity
66 As regards the visual comparison, it should first of all be borne in mind that there is nothing precluding a determination of whether there is any visual similarity between a word mark and a figurative mark, since both 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).
67 In the present case, the marks at issue have the element ‘giovanni’ (the only element of the earlier trade mark) in common. They differ owing to the presence of the word element ‘galli’ and the figurative element in the mark applied for.
68 The Board of Appeal found that there was a low level of visual similarity between the marks at issue, citing (i) the impact of the figurative element on the visual impression given by the mark applied for and (ii) the fact that the element ‘galli’ of that mark had greater distinctiveness than the element ‘giovanni’.
69 To the extent that the applicant is complaining that the Board of Appeal ignored the principle that the word elements of a trade mark have greater distinctiveness than the figurative elements of that mark, it is sufficient to point out that it is still necessary to examine the circumstances of the case and that, in the present case, that examination shows that the figurative element of the mark applied for is as important as the combined word elements of that mark (see paragraphs 61 to 64 above).
70 It is true that the Board of Appeal erred in ascribing greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’ for the whole of the relevant public.
71 It is also true that, in the mark applied for, the element ‘giovanni’ is longer than the element ‘galli’ (eight letters as opposed to five).
72 Nevertheless, the Board of Appeal was right to describe the visual similarity between the marks at issue as low, particularly in view of the presence of the figurative element in the mark applied for, which has a significant impact on the overall visual impression given by that mark.
73 Concerning the applicant’s argument that the public generally pays greater attention to the beginning of a mark than to the end, the following points should be noted. As emphasised by OHIM, although, in principle, the beginning of a word mark is more likely to attract the consumer’s attention than the elements which follow it, that is not true in all situations and cannot, in any event, undermine the principle that an analysis of the similarity of two trade marks must take into account the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 10 December 2008 in Giorgio Beverly Hills v OHIM — WHG (GIORGIO BEVERLY HILLS), T‑228/06, EU:T:2008:558, paragraph 28 and the case-law cited).
74 In the present case, in view of the significant impact of the figurative element of the mark applied for on the overall impression given by that mark, the fact that the element ‘giovanni’ is placed before the element ‘galli’ in that mark cannot call in question the finding that there is only a low degree of visual similarity between the marks at issue.
Aural similarity
75 In paragraph 38 of the contested decision, the Board of Appeal found that the marks at issue were aurally similar in so far as they both contain the element ‘giovanni’.
76 The applicant claims that the degree of aural similarity between the marks at issue must be described as high, a claim which is contested by OHIM.
77 In that regard, it should be noted that the earlier trade mark comprises three syllables and the mark applied for comprises five syllables, the first three of which are identical to those forming the earlier trade mark.
78 To the extent that OHIM relies on the argument that the element ‘galli’ of the mark applied for is more distinctive than the element ‘giovanni’, it is sufficient to point out that it has not been established that the element ‘galli’ of that mark is more distinctive for the whole of the relevant public (see paragraph 53 above).
79 In the present case, the aural similarity must be described as only average, despite the fact that the first three syllables of the mark applied for are identical to the three syllables of the earlier trade mark.
80 The element ‘galli’ of the mark applied for significantly contributes to the overall aural impression given by that mark and, in the present case, the difference in the number of syllables of the marks at issue is an important factor in the comparison of the signs.
81 The fact — emphasised by the applicant — that the element ‘giovanni’, which constitutes the earlier trade mark, appears before the element ‘galli’ in the mark applied for is not very significant: it is normal, when giving the names of persons, to indicate the first name followed by the surname. If great significance were to be ascribed to the fact that the first name appears first, that would mean that too much importance would be ascribed to that first name. It cannot however be asserted that, in the case of a trade mark consisting of a first name followed by a surname (neither of which is perceived as either common or rare), the public will normally ascribe greater importance to the first name than to the surname.
82 It is true that, as the applicant emphasises, in its judgment of 5 October 2011 in Cooperativa Vitivinícola Arousana v OHIM — Sotelo Ares (ROSALIA DE CASTRO) (T‑421/10, EU:T:2011:565, paragraph 39), the General Court concluded that there was a strong aural similarity between the signs ROSALIA and ROSALIA DE CASTRO.
83 It should however be noted that the comparison between two signs must be carried out according to the particular circumstances of each case, with the result that a comparison with the specific degree of similarity found to exist between other signs in other cases is of only limited value. In addition, in the present case, the element ‘giovanni’ cannot be regarded as dominating the aural perception of the mark GIOVANNI GALLI, in contrast to the findings of the General Court in the judgment in ROSALIA DE CASTRO cited in paragraph 82 above (EU:T:2011:565, paragraph 39) concerning the element ‘rosalia’ which was common to the two signs at issue in that case.
84 The applicant also argues that, according to case-law, the fact that the sign comprising the earlier trade mark is wholly incorporated in the dominant element of the mark applied for justifies the conclusion that there is significant aural similarity (see judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 49 and the case-law cited). In that regard, it is sufficient to state that the element ‘giovanni’ of the mark applied for cannot be held to be dominant.
Conceptual similarity
85 From a conceptual point of view, the Board of Appeal rightly observed — without being contradicted on that subject by the parties — that the relevant public would associate the earlier trade mark with an Italian first name and the mark applied for with an Italian first name and surname.
86 The Board of Appeal was also right to find that that meaning made a conceptual comparison possible. The parties do not dispute that finding either.
87 The applicant submits that the marks at issue are conceptually similar in so far as they both contain the first name Giovanni.
88 In that regard, it should be noted that there is a certain degree of conceptual similarity between the marks at issue, as they both contain the Italian first name Giovanni (see, to that effect, judgment in ARTHUR ET FELICIE, paragraph 84 above, EU:T:2005:420, paragraph 51).
89 Nevertheless, the Board of Appeal held that the earlier trade mark could not refer to a specific person, since it would be common to all persons named Giovanni, whereas the mark applied for could refer to and distinguish a specific person named Giovanni, namely a member of the Galli family. Next, it considered that the conceptual differences between the marks at issue could counteract the aural similarity.
90 It is necessary to uphold the Board of Appeal’s finding that the mark applied for can refer to a specific person named Giovanni, whereas the earlier trade mark cannot refer to a specific person.
91 The applicant’s argument that (i) the present case is not about the capacity to distinguish persons, but instead concerns a trade mark relating to goods in Class 3 and (ii) the first name Giovanni is perfectly capable of distinguishing the goods in question is irrelevant: the Board of Appeal has in no way called in question the distinctive character of the earlier trade mark. So far as the conceptual comparison of the marks is concerned, the question whether one of the marks allows a specific person to be identified is entirely relevant.
92 In the present case, the degree of conceptual similarity between the signs at issue must be described as low because, although it is true that the marks at issue contain the same Italian first name, only one is capable of identifying a specific person by his full name.
93 In addition, the mark applied for contains a drawing of a duck, whereas the earlier trade mark does not even contain any reference to the concept of a duck.
94 Concerning the Board of Appeal’s assertion that the conceptual differences between the marks at issue are capable of counteracting the aural similarity, the following points should be noted.
95 According to case-law, in certain circumstances conceptual differences can counteract the visual and aural similarities between the signs concerned. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (judgment of 22 June 2004 in Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, ECR, EU:T:2004:189, paragraph 56).
96 However, in the present case, the element ‘giovanni galli’ of the mark applied for does not have a ‘clear and specific’ meaning for the purposes of the case-law cited in paragraph 95 above. It is true that that element, like any combination of a first name and a surname, is capable of referring to a person. However, the capacity to refer to any person (including unknown or fictional persons) cannot be termed a ‘clear and specific’ meaning. The relevant public may consider, when faced with the mark applied for, that the name Giovanni Galli corresponds to the name of a real, but unknown, person, or that it corresponds to a fictional person. In the perfume sector, the public may also think that Giovanni Galli is the real name or pseudonym of the creator of the perfume concerned. The meaning of that element of the mark applied for is therefore so vague that it cannot be termed a clear and specific meaning which can be grasped immediately by the relevant public.
97 It is true that conceptual differences can counteract visual and aural similarities where one of the marks corresponds to the name of a famous person. Thus, in the judgment in PICARO cited in paragraph 95 above (EU:T:2004:189, paragraphs 55 to 58), the General Court held that the conceptual differences between the signs PICARO and PICASSSO counteracted the visual and aural similarities between those signs, as the sign PICASSO would be immediately recognised by the relevant public as being the name of the famous painter Pablo Picasso and would therefore have a clear and specific semantic content. However, the name Giovanni Galli does not correspond to the name of a famous person.
98 The Board of Appeal was therefore wrong to find that the conceptual differences could counteract the aural similarity between the marks at issue. Consequently, it was also wrong to find in paragraph 43 of the contested decision that, when considered as a whole, the marks at issue were dissimilar.
99 It follows from all of the foregoing that, from the point of view of the part of the relevant public which ascribes the same distinctive character to the elements ‘giovanni’ and ‘galli’ of the mark applied for, the marks at issue have a low degree of visual similarity, an average degree of aural similarity and a low degree of conceptual similarity.
Likelihood of confusion
100 A global assessment of the likelihood of confusion 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 covered. 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 September 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).
101 Recital 8 in the preamble to Regulation No 207/2009 states that the assessment of the likelihood of confusion depends on numerous factors, including the recognition of the trade mark by the public on the market concerned. Since the more distinctive an earlier trade mark is, the greater the likelihood of confusion, marks with a highly distinctive character, either per se or because of the public’s recognition of them, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgment of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24; judgment in Canon, paragraph 100 above, EU:C:1998:442, paragraph 18; and judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20).
102 Concerning the distinctive character of the earlier trade mark, the Board of Appeal noted in paragraphs 44 and 45 of the contested decision that the applicant had not established that that mark had enhanced distinctiveness, as the results of an Internet search provided by the applicant cannot show how that mark is perceived by the relevant public and thus cannot establish the degree of public recognition of or the degree of distinctiveness acquired by that mark on the relevant market.
103 In that regard, the applicant submits that, although the results of Internet searches may not be able to show how the earlier trade mark is perceived by the relevant public and cannot therefore establish the degree of recognition of that mark by that public, they may none the less serve as indications of the degree of distinctiveness of that mark in relation to the goods in question. According to the applicant, if, as is the situation in the present case, practically all the search results for the word ‘giovanni’ are in fact connected with the applicant’s products, that is a strong indication of the fact that the sign is not usual for those products and that there is at least a strong possibility that the relevant public will perceive the sign as a trade mark indicating the origin of the goods.
104 In that regard, it should be noted that the inherent distinctiveness of the trade mark GIOVANNI must be regarded as average for the goods in question. It is therefore true that, as the applicant emphasised, the relevant public perceives the earlier trade mark as a mark indicating the origin of the goods.
105 It should also be stated that, as emphasised by OHIM, at no point in the contested decision did the Board of Appeal find that the inherent distinctiveness of the earlier trade mark was low or non-existent.
106 The applicant’s argument as regards the inherent distinctiveness of the earlier trade mark is therefore correct, but cannot establish that the Board of Appeal committed any error in that regard.
107 Even assuming that the applicant’s argument is to be understood as meaning that the applicant wishes to claim that the Board of Appeal was wrong to find that it had not established that the earlier trade mark had enhanced distinctiveness through use, it must be found that, in any event, such an argument is unfounded.
108 The existence of a higher than average level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 8 May 2014 in Pedro Group v OHIM — Cortefiel (PEDRO), T‑38/13, EU:T:2014:241, paragraph 76 and the case-law cited).
109 In the present case, the applicant emphasised during the administrative procedure that, when a search is made for the word ‘giovanni’ using the search engine Google, a reference to the applicant’s website is among the first results. It also emphasised that, when a search is made for word combinations such as ‘giovanni soap’, ‘giovanni savon’, ‘giovanni jabón’ (giovanni soap), or ‘giovanni hair care’, almost all the results refer to the applicant’s products.
110 In that regard, the Board of Appeal was right to find that the results of Internet searches provided by the applicant did not establish that the earlier trade mark had enhanced distinctiveness through use.
111 The results of searches carried out using the search engine Google which have been submitted by the applicant are not such as to demonstrate that at least a significant part of the relevant public (consumers in the European Union) is familiar with the earlier trade mark. Those results provide no indication of ‘the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; [or] the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking’ as referred to in the case-law cited in paragraph 108 above.
112 It should be added that a trade mark which is well known outside the European Union, for example in the United States, may for that reason appear in a prominent position among the results of a search carried out using the search engine Google, regardless of whether a significant part of the public in the European Union is also familiar with that mark. The mere reference to Google search results cannot therefore establish that a Community trade mark has enhanced distinctiveness through use.
113 Next, the Board of Appeal found in paragraph 46 of the contested decision that, in a sector — such as the perfume sector — in which signs consisting of surnames are often used, it may be assumed that in the course of trade, as a general rule, a very common name will appear more frequently than a rare one. Thus, consumers will not believe that there is an economic link between all the proprietors of trade marks containing the first name Giovanni. The Board of Appeal concluded that, in those circumstances, consumers would not believe that undertakings marketing goods covered by the mark applied for under the trade mark GIOVANNI GALLI were economically linked or identical to those marketing identical or similar goods under the trade mark GIOVANNI.
114 The applicant argues in that regard that the Board of Appeal was wrong to find that the first name Giovanni was very common.
115 It is true that, in the present case, the Board of Appeal has not established that the first name Giovanni will be perceived as a common Italian first name by the whole of the relevant public. Nevertheless, consumers who are unaware that the first name Giovanni is common in Italy will not perceive that first name as rare either: they will simply have no opinion on whether that first name is common or rare in Italy (see paragraph 43 above).
116 In the judgment in GIORGIO BEVERLY HILLS cited in paragraph 18 above (EU:T:2003:199, paragraph 50), the General Court held that, in view of the prevalence of real or assumed Italian names in the perfume sector and the fact that consumers are used to trade marks which contain those names, they will not assume every time a particular Italian name occurs in a trade mark in conjunction with other word or figurative elements that it is an indication that the goods in respect of which it is used all emanate from the same source.
117 It should be noted that the presence of the same Italian first name, which is not perceived as either common or rare, in trade marks covering cosmetic preparations and perfumery does not always permit a conclusion that there is a likelihood of confusion: in a situation involving a first name which the relevant public does not regard as rare, that public will not expect only one producer to use that name as an element of a trade mark.
118 The applicant emphasises that it has argued and established before OHIM that, in the field of beauty treatments and personal care, it is quite common for products to be marketed under either a combination of a first name and a surname or only one of those names.
119 On page 6 of its statement of 15 April 2011, submitted during the administrative procedure, the applicant provided several examples relating to the practice in the beauty products sector of marketing products under either a combination of a first name and a surname or only one of those names.
120 It can be seen from Annex 3 to that statement that, for some of those examples, the packaging of the products (mostly perfumes) indicates not only a trade mark which consists of a first name, but also the full name of the creator.
121 In any event, even assuming that it is established that consumers are accustomed to a practice in the beauty products sector of marketing goods not only under a combination of a first name and a surname, but also under that surname or that first name alone, that does not mean that the public always ascribes the same commercial origin to all beauty products marketed under trade marks containing the same first name.
122 The applicant also emphasises that not all the goods at issue in the present case fall within the perfume sector.
123 It is true that, in paragraph 46 of the contested decision, the Board of Appeal referred only to customs in the perfume sector, whereas the mark applied for also covers ‘dentifrices’ and cleaning preparations, namely ‘[b]leaching preparations and other substances for laundry use’ and ‘cleaning, polishing, scouring and abrasive preparations’.
124 However, it can be seen from case-law that, even in situations involving goods for which the use of trade marks consisting of names is not regarded as common by the relevant public, it cannot be accepted that any surname which constitutes an earlier trade mark could be effectively relied on to oppose registration of a mark composed of a first name and that surname (see, to that effect, judgment in Becker v Harman International Industries, paragraph 30 above, EU:C:2010:368, paragraph 39). The goods at issue in that case were in Class 9 and the Court of Justice did not find in that judgment that, for goods in that class, the public concerned was accustomed to the use of trade marks consisting of first names and/or surnames.
125 It follows from the judgment in Becker v Harman International Industries cited in paragraph 30 above (EU:C:2010:368) that there is no automatic mechanism permitting a conclusion that there is a likelihood of confusion when an earlier trade mark consisting of a surname is reproduced in another trade mark with a first name added. That finding is equally valid when the earlier trade mark consists of a first name and the mark applied for consists of a combination of that first name and a surname.
126 Instead, it is necessary to assess the circumstances of each case. As emphasised by the applicant, it is not sufficient to state that the relevant public will not establish a link between all the proprietors of trade marks containing the first name Giovanni; it is necessary to carry out a specific assessment in the present case. In that context, it should be noted that the Board of Appeal not only made the general finding that the relevant public will not establish a link between all the proprietors of trade marks containing the first name Giovanni (penultimate sentence of paragraph 46 of the contested decision), but also found that there was no likelihood of confusion between the marks at issue for the goods involved in the case (last sentence of paragraph 46 of the contested decision).
127 In the present case, it has been found that, from the point of view of the part of the relevant public which ascribes the same distinctive character to the elements ‘giovanni’ and ‘galli’ of the mark applied for, the marks at issue have a low degree of visual and conceptual similarity and an average degree of aural similarity (see paragraph 99 above). It has also been found that the relevant public’s degree of attention is average and that the goods in question are partly identical and partly similar (see paragraphs 22 to 27 above).
128 It should also be borne in mind that the mark applied for contains a figurative element which has a considerable impact on the overall visual impression given by that mark.
129 As a general rule, cleaning preparations are sold in self-service stores, with the result that visual similarity plays a very important role in the global assessment of the likelihood of confusion. Concerning cosmetic preparations and perfumery, these are generally sold in either self-service stores or perfumeries. In perfumeries, consumers normally have the opportunity either to select for themselves the products they desire, or to seek assistance from a salesperson. Concerning, more specifically, the ‘hair lotions’ covered by the mark applied for and the ‘shampoo and other haircare preparations’ covered by the earlier trade mark, these can also be sold in hairdressing salons, where consumers are normally assisted by salespeople.
130 In any event, even if a consumer seeks assistance from a salesperson, he will have the opportunity to see the cosmetic preparations and perfumery before purchasing them. The presence of the striking drawing of a duck in the mark applied for will not therefore escape his attention.
131 In the present case, in view of the fact that the element ‘giovanni’ which is common to the marks at issue is only one of three elements of the mark applied for, and in view of the significance of the other elements present in the mark applied for, the Board of Appeal was right to conclude that there is no likelihood of confusion, even for those of the goods in question which are identical.
132 It is true that, by virtue of the principle of interdependence, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa (see paragraph 100 above). However, there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where identical goods are involved and there is a certain degree of similarity between the marks at issue (see, to that effect, judgments of 12 July 2006 in Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, ECR, EU:T:2006:202, paragraphs 67 and 68, and 17 February 2011 in Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, ECR, EU:T:2011:49, paragraphs 44 and 48).
133 In the present case, it should be borne in mind that the degree of visual similarity between the marks at issue must be described as low, and that consumers will have the opportunity to see the goods in question before they purchase them (see paragraphs 127 to 130 above). The significant differences between the marks at issue, particularly the visual differences, mean it is impossible for consumers to believe that the goods in question come from the same undertaking or from economically linked undertakings when they are sold under the marks at issue.
134 For the part of the relevant public that ascribes greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’ (see paragraph 54 above), there is, a fortiori, no likelihood of confusion: that part of the relevant public will give less importance to the element ‘giovanni’ which is common to the marks at issue than to the element ‘galli’ which is present only in the mark applied for.
135 It is true that the Board of Appeal made several errors in the contested decision in considering that (i) the first name Giovanni is perceived as a common Italian first name throughout the European Union, (ii) surnames are, in principle, more distinctive than first names throughout the European Union, and (iii) the marks at issue, taken as a whole, are dissimilar. However, those errors cannot entail the annulment of the contested decision, because they have had no effect on its outcome (see, to that effect, judgment of 15 January 2003 in Mystery Drinks v OHIM — Karlsberg Brauerei (MYSTERY), T‑99/01, ECR, EU:T:2003:7, paragraph 36).
136 Since the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 put forward by the applicant in support of its heads of claim is unfounded, the action must be dismissed in its entirety, without there being any need for a ruling on the admissibility of the applicant’s second head of claim.
Costs
137 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 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 (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Giovanni Cosmetics, Inc. to pay the costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 3 June 2015.
[Signatures]