JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
16 December 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark Kerashot — Earlier national figurative mark K KERASOL — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Partial refusal of registration by the Board of Appeal)
In Case T‑356/14,
CareAbout GmbH, established in Düsseldorf (Germany), represented by P. Mes, C. Graf von der Groeben, G. Rother, J. Bühling, A. Verhauwen, J. Künzel, D. Jestaedt, M. Bergermann, J. Vogtmeier and A. Kramer, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Palmero Cabezas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
José Luis Florido Rodríguez, residing in Seville (Spain),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 24 March 2014 (Case R 1569/2013-4), relating to opposition proceedings between José Luis Florido Rodriguez and CareAbout GmbH,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 May 2014,
having regard to the response lodged at the Court Registry on 26 September 2014,
having regard to the reply lodged at the Court Registry on 11 December 2014,
having regard to the withdrawal, by the applicant, of its application for a hearing and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1 On 23 February 2012, the applicant, CareAbout GmbH, formerly Hairdoctors GmbH, filed an application for registration of a Community trade mark with 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 Registration as a mark was sought for the word sign Kerashot.
3 The goods in respect of which registration was applied for are in Classes 1, 3 and 21 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 for each of those classes, in particular, to the following description:
– Class 1: ‘Raw materials for the preparation of cosmetics, body care products and hair care products, in particular hair care preparations, hair colours, shampoos, hair lotions, hair mousse, hair-straightening preparations, hair-setting preparations, skin care preparations (not for medical purposes), hair-waving preparations and hair-volumising preparations’;
– Class 3: ‘Hair preparations, in particular containing or based on protein hydrolysates; Skin care preparations (not for medical purposes), in particular containing or based on protein hydrolysates; Hair dyes, in particular containing or based on protein hydrolysates; Hair wash, in particular containing or based on protein hydrolysates; Hair setting preparations, in particular containing or based on protein hydrolysates; Hair lotions, in particular products containing or based on protein hydrolysates; Hair-straightening preparations, in particular products containing or based on protein hydrolysates; Hair-waving preparations, in particular of products containing or based on protein hydrolysates; Shampoos, in particular products containing or based on protein hydrolysates; Hair thickeners, in particular hair mousse, in particular of products containing or based on protein hydrolysates’;
– Class 21: ‘Applicators for cosmetic products and Body care products, in particular applicators for hair care preparations, hair colours, shampoos, hair lotions, hair mousse, hair-straightening preparations, hair-setting preparations, skin care preparations (not for medical purposes), hair-waving preparations and hair-volumising preparations’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 72/2012 of 16 April 2012.
5 On 13 July 2012, José Luis Florido Rodríguez filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Spanish figurative mark No 2955253 in black and white, lodged on 12 November 2010 and registered on 19 April 2011, for the goods in Class 3 corresponding to the following description: ‘hair lotions’, reproduced below:
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 14 June 2013, the Opposition Division rejected the opposition on the grounds that as regards the goods covered by the mark applied for and falling within Classes 3 and 21 of the Nice Agreement, the signs at issue were not sufficiently similar for it to be concluded that there was a likelihood of confusion between them, and that that was so even for identical goods. As regards the goods at issue in Class 1 of the Nice Agreement, it held that there was no similarity between those goods and the goods designated by the earlier mark, so that, for those goods, any likelihood of confusion would, a priori, be excluded.
9 On 13 August 2013, Mr Florido Rodríguez filed a notice of appeal against the Opposition Division’s decision.
10 By decision of 24 March 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM first, annulled the decision of the Opposition Division in so far as the opposition was rejected for the goods concerned in Classes 3 and 21 of the Nice Agreement (Article 1); second, upheld the opposition and rejected the application for a Community trade mark for those goods (Article 2); third, dismissed the remainder of the appeal (Article 3) and, fourth, ordered each party to bear its own costs incurred in the opposition and appeal proceedings. The Board of Appeal held that for the goods concerned in Classes 3 and 21 of the Nice Agreement, which were in part identical, in part very similar and in part similar as regards the goods covered by the earlier mark, there was a likelihood of confusion between the earlier mark and the mark applied for within the meaning of Article 8(1)(b) of Regulation No 207/2009. According to the Board of Appeal, the signs at issue each had an average distinctive character and a degree of visual and phonetic similarity that was above average. The conceptual comparison remained neutral because the signs have no meaning in Spanish, and the signs at issue are aimed at the general public, whose level of attention would be average. On the other hand, the Board of Appeal held, agreeing with the Opposition Division, that the goods covered by the mark applied for and in Class 1 of the Nice Agreement were not similar and on that basis dismissed the appeal in so far as it concerned those goods.
Forms of order sought
11 The applicant claims that the Court should:
– annul Articles 1, 2 and 4 of the contested decision;
– order OHIM to pay the costs, including those relating to the appeal proceedings.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
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. In the context of that plea, the applicant submits, in particular, that the signs at issue are not phonetically similar because of the different pronunciation, by the Spanish public, of the syllables ‘sol’ and ‘shot’, the element ‘kera’, owing to extensive use of that element in other marks, is devoid of distinctive character and, visually, the signs at issue are, at most, weakly similar given that the earlier mark is composed of the separate letter ‘k’, placed at the start, and the element ‘sol’ at the end. Therefore, according to the applicant, the degree of similarity between the signs at issue is not sufficient for it to be held that there is a likelihood of confusion.
14 As a preliminary point, it must be noted that this action seeks the annulment of the contested decision only to the extent that the Board of Appeal did not dismiss the appeal brought before it. Since the appeal was not upheld in respect of goods covered by the mark applied for that are in Class 1 of the Nice Agreement, the object of the present action before the Court is limited to the goods covered by the mark applied for that are in Classes 3 and 21.
15 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
16 According to established 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, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (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
17 According to the 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).
18 In the present case, the Board of Appeal held that, as regards the goods at issue in Classes 3 and 21 of the Nice Agreement, the relevant public was the Spanish general public.
19 The applicant submits that the goods covered by the mark applied for that are in Class 21 of the Nice Agreement are aimed only at manufacturers of specific goods and are not purchased by the general public.
20 As regards the goods in Class 3, it must be held that they are everyday consumer goods aimed at the general public, but also at professionals in the sector, namely, hairdressers, in particular. Furthermore, the earlier mark being a Spanish mark, it is in relation to the Spanish public that the question whether there is a likelihood of confusion must be examined.
21 As regards the goods in Class 21, contrary to the applicant’s submissions, it must be held that the applicators for various goods covered by the mark applied for are aimed at manufacturers of hair care or skin care goods, the professionals of the sector concerned such as hairdressers or beauticians, and end consumers who can buy those applicators in, inter alia, supermarkets, chemists’ or at hairdressers.
22 As regards the level of attention of the relevant public, the Board of Appeal found, without being challenged on this point, that it would be average.
23 In that regard, it must be held that while it is true that the average consumer, as a general rule, pays less attention to everyday consumer goods, that level of attention would not however be less than average when faced with the goods that this case concerns, namely hair care and skin care goods, because certain aesthetic considerations or consumers’ personal preferences, their sensitivities or their hair or skin type may play a role in the purchase of those goods. Therefore, the Board of Appeal was correct to hold that the level of attention of the relevant public would be average.
24 As regards professionals and manufacturers, who also form part of the relevant public, it must however be noted that their level of attention would as a general rule be higher than average.
25 It follows from the foregoing that the definition provided by Board of Appeal of the relevant public and its level of attention was imprecise. Nevertheless, it was open to the Board of Appeal to base its decision upon the Spanish general public with an average level of attention only, since, as regards the assessment of the likelihood of confusion, the part of the relevant public with the lowest level of attention must be taken into account unless that part of the public must be regarded as insignificant (see, to that effect, judgment of 15 February 2011 in Yorma’s v OHIM — Norma Lebensmittelfilialbetrieb (YORMA’S), T‑213/09, EU:T:2011:37, paragraph 25), which is not so in the present case and has not been argued by the applicant.
26 Therefore, in the present case, it is necessary to take into consideration for the purposes of assessing the likelihood of confusion the Spanish general public with a level of attention that is average.
The comparison of the goods
27 The Board of Appeal held that the goods in Class 3 of the Nice Agreement covered by the mark applied for were identical to the goods covered by the earlier mark in so far as those goods designate ‘hair lotions’ and ‘hair preparations’. As regards the goods in Class 3 of the Nice Agreement, included in the description ‘hair dyes; hair wash, hair setting preparations; hair-straightening preparations; hair-waving preparations; shampoos; hair thickeners’, the Board of Appeal held that they showed a high degree of similarity to ‘hair lotions’ covered by the earlier mark.
28 Lastly, the Board of Appeal held that ‘skin care preparations (not for medical purposes)’ in Class 3 and the goods in Class 21 of the Nice Agreement, such as those covered by the mark applied for, were similar to ‘hair lotions’ covered by the earlier mark.
29 The applicant disputes those findings. In its view, the goods falling within the description ‘hair dyes; hair-straightening preparations; hair thickening preparations; hair preparations’ and the ‘hair lotions’ covered by the earlier mark are not strongly similar. The applications of those products are different. ‘Skin care preparations (not for medical purposes)’ and ‘hair lotions’ are not similar, because no one would use them as a hair lotion or shampoo respectively. Nor, finally, are the goods at issue in Class 21 and the ‘hair lotions’ covered by the earlier mark similar, because they target manufacturers of specific goods and not the end consumer.
30 OHIM concurs, in essence, with the Board of Appeal’s reasoning. It states, in particular, that the applicant has not submitted any argument on ‘hair lotions, hair wash, hair setting preparations; shampoos’, goods which are either identical or strongly similar to the ‘hair lotions’ covered by the earlier mark.
31 According to settled case-law, in order for the similarity of the goods or services at issue to be assessed, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).
32 Complementary goods or services are those which are closely connected in the sense that one is indispensable or important for the use of the other, in such a way that consumers may think that the same company is responsible for manufacturing those goods or supplying those services. By definition, goods intended for different publics cannot be complementary (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
33 It is in the light of those principles that the goods covered by the mark applied for and the ‘hair lotions’ covered by the earlier mark must be compared.
34 In the first place, as OHIM correctly stated, the applicant does not challenge the Board of Appeal’s finding that the two marks in question cover identical goods in so far as they cover ‘hair lotions’ and ‘hair preparations’, a finding that must be confirmed.
35 In the second place, the Board of Appeal’s finding that ‘hair dyes; hair wash, hair setting preparations; hair-straightening preparations; hair-waving preparations; shampoos; hair thickeners’, had a high degree of similarity to ‘hair lotions’ covered by the earlier mark must also be confirmed. As OHIM correctly pointed out, those goods share the same method of use in that they are all applied to hair. They can also take the same form, since often those goods are marketed in the form of a lotion. Their distribution channels are the same, as they are normally marketed in supermarkets, chemists or hairdressers. They both target the same end consumers and are, in their purpose, at the very least complementary, in that they may be applied or used at different stages of hair care. Finally they are all likely to be produced by the same manufacturer and in general form part of a range of goods produced by large manufacturers in the hair care and skin care goods sector.
36 In the third place, as regards ‘skin care preparations (not for medical purposes)’ it must be held that those goods are, as the Board of Appeal correctly held, similar to the ‘hair lotions’ covered by the earlier mark. Those goods form part of the same category of goods the purpose of which is body care; they can take the same form in that they exist as lotions, they target the same end consumers, they have the same distribution channels referred to in paragraph 35 above, and, in general, form part of a range of goods produced by large manufacturers in the sector of hair and body care goods. Finally, it is possible that skin care goods may also be applied to the scalp, as OHIM rightly observed.
37 Finally, the goods covered by the mark applied for in Class 21 are also similar to the ‘hair lotions’ covered by the earlier mark. Those goods are applicators for the goods covered by the application for registration included in Class 3, namely objects through which dyes, preparations and lotions can be applied to the hair or to the body. Those applicators have a complementary function to those goods in that they cannot be used without applicators. Contrary to the submissions made by the applicant, it is well known that applicators and the goods covered by the mark applied for in Class 3 can be purchased in the same places. Thus, applicators are, inter alia, often used to apply lotions to the hair. They target the same relevant public and can be produced by the same manufacturers as those that also produce the other goods at issue.
38 Having regard to the foregoing, it must be held that, as regards the comparison of the goods at issue, the contested decision is not vitiated by error. The goods at issue are, at the very least, similar, some of those goods being, however, identical or highly similar to the ‘hair lotions’ claimed by the mark applied for.
The comparison of the signs
39 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, Case C‑334/05 P, ECR, EU:C:2007:333 paragraph 35 and the case-law cited).
40 In the present case, the mark applied for consists of the word element ‘kerashot’. The earlier mark is a figurative mark which, nevertheless, is composed of two word elements, ‘k’ and ‘kerasol’, written in capital letters in a standard typeface font, with the ‘k’ element positioned in the centre above the ‘kerasol’ element.
The degree of distinctive character and the relative weight of the elements of which the earlier mark is composed
41 According to the Board of Appeal, the element ‘kerasol’ is the dominant element of the earlier mark and the separate letter ‘k’ at the beginning, positioned above that mark, is merely a replication of the initial letter of the word ‘kerasol’. That separate letter has weak distinctive character and plays a secondary role in that mark.
42 The applicant considers that the separate letter ‘k’ is placed as a separate element above the word ‘kerasol’ and will be recognised by the relevant public as a specific element that has no equivalent in the mark applied for. Therefore, that element does not play a secondary role in the overall impression created by the earlier mark.
43 OHIM concurs, in essence, with the Board of Appeal’s reasoning.
44 First of all, it must be noted that the applicant does not dispute the Board of Appeal’s finding that the distinctive character of the element ‘k’ must be regarded as weak. That finding must be confirmed, in particular in the light of the case-law relating to the distinctive character of a single letter. Even though it has been held in that case-law that a single letter is capable of having a minimum distinctive character (see, to that effect, judgment of 29 April 2009 in BORCO-Marken-Import Matthiesen v OHIM (α), T‑23/07, ECR, EU:T:2009:126, paragraph 45) the distinctive character that a single letter possesses is only weak, or even very weak (see, to that effect, judgment of 13 June 2007 in Immobilien v OHIM (I), T‑441/05, ECR, EU:T:2007:178, paragraph 25). In the present case, it must be held that the distinctive character of the separate element ‘k’ in the earlier mark is very weak, because that letter appears in a standard typeface font and, moreover, is identical in size to the element ‘kerasol’.
45 Furthermore, it must be held that the element ‘kerasol’, which is a fanciful word composed of seven letters, will be perceived by the relevant public, in relation to the separate letter ‘k’ which precedes it, as the principal part and the only significant element of the earlier mark, an impression that is reinforced by the fact that the initial letter of the element ‘kerasol’ corresponds to the separate element ‘k’ which is, therefore, a mere duplication of the letter ‘k’ found at the beginning of the element ‘kerasol’.
46 It follows that it must be held that the relevant public will retain, above all, the word ‘kerasol’, which will be the focus of its attention. The fact that the separate letter ‘k’ appears first in the mark applied for does not alter that assessment. While it is correct that the average consumer generally gives greater attention to the elements placed at the beginning of a mark, the facts specific to certain marks may create an exception to that rule (see, to that effect, judgment of 20 November 2007 in Castellani v OHIM — Markant Handels und Service (CASTELLANI), T‑149/06, ECR, EU:T:2007:350, paragraph 54). In the present case, the mere fact that the separate letter ‘k’ is placed at the beginning of the mark applied for is insufficient, for the reasons set out in paragraphs 44 and 45 above, to give it significant weight in the overall impression created by that mark.
47 As regards the elements ‘kera’ and ‘sol’, which make up the element ‘kerasol’, it must be noted that the word ‘kera’ has no meaning in Spanish and that the word ‘sol’ means ‘sun’ in that language. It is also possible, as OHIM contends, that the word ‘kerasol’ will be perceived, as a whole, as a fanciful term given that the group of letters ‘ol’ can also be perceived by the relevant public as a mere ending which exists in several Spanish words. However, even if it were the case that the relevant public would perceive the element ‘sol’ as a reference to sun, it must be held that there is no link between the goods at issue and that word, given that the latter cannot be regarded as descriptive or evocative of a product or of one of its characteristics. Therefore, whatever the perception the public will have, the distinctive character of the whole of the element ‘kerasol’ must be considered to be normal. It must, however, be recalled that the element ‘kera’, given its position at the start of the word ‘kerasol’, would attract the greater part of consumers’ attention (judgment of 17 March 2004 in El Corte Inglés v OHIM –González Cabello (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79 paragraph 81).
48 That finding is not affected by the applicant’s argument that the element ‘kera’ does not possess any distinctive character because the marks that use it are relatively common in the shampoo and hair lotions sector.
49 On the one hand, it should be borne in mind that the purpose of actions before the Court under Article 65(2) of Regulation No 207/2009 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 76 thereof requires that review to be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005 in SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, ECR, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter the decision against which an action has been brought on grounds which came into existence subsequent to its adoption (judgments of 11 May 2006 in Sunrider v OHIM, C‑416/04 P, ECR, EU:C:2006:310, paragraph 55, and of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 53).
50 Since the question of the existence of other marks containing the element ‘kera’ was not put before the Board of Appeal, which did not therefore give a ruling on that matter, that argument must, as OHIM has correctly contended, be declared inadmissible (see, to that effect, judgment of 7 November 2007 in NV Marly v OHIM — Erdal (Top iX), T‑57/06, EU:T:2007:333, paragraph 18).
51 On the other hand, and in any case, that argument is unfounded too. First, the applicant has not proved that goods intended for hair care were marketed under the name ‘kera’ in Spain, given that the document provided by the applicant in that regard is an extract from a French webpage. The fact that the Carrefour group possesses hypermarkets in Spain does not show that, in those hypermarkets, hair lotions or shampoos are marketed under that name. Second, the mere fact that there are, on the Spanish market, goods marketed under the mark Kérastase does not in itself lead to the conclusion that the word ‘kera’ has become a term that is so intensively used on the market concerned that it has lost its distinctive character or that its distinctiveness has been weakened.
52 It follows from the foregoing that the element ‘k’ possesses weak distinctive character and plays a secondary role in the earlier mark, the dominant element of which is the word ‘kerasol’, which has average distinctive character. The element to which the consumer would pay the most attention is the element ‘kera’.
The conceptual similarity
53 As regards the conceptual comparison, the Board of Appeal made the finding, with which OHIM agrees and which the applicant does not contest, that taken as a whole the signs in question had no meaning in Spanish and so the conceptual comparison remained neutral.
54 It must be noted that the Spanish general public is made up of a significant proportion of consumers who do not understand English. Likewise there are Spanish consumers, who also constitute a significant proportion of the relevant public who understand English (see, to that effect, judgment of 10 October 2012 in Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, EU:T:2012:535, paragraph 65) and will therefore understand the word ‘shot’, meaning ‘coup’ in French and which is a basic English word. To the extent that consumers deconstruct the word ‘kerashot’ into its elements ‘kera’ and ‘shot’, which is not however necessarily the case, they will associate the element ‘shot’ with the concept of ‘shot’.
55 Next, it must be observed that the Spanish general public could understand the word ‘sol’ to be a reference to the sun. By contrast, the word ‘kera’ has no meaning for Spanish consumers. That term must be considered, from the point of view of the relevant public, to be purely fanciful. Nor does the separate letter ‘k’ at the start of the earlier mark refer to any concept.
56 It follows that, for consumers who understand English, the earlier mark makes reference to the sun, while the mark applied for can be perceived as a reference to the concept of ‘shot’. In so far as consumers deconstruct the word ‘kerashot’ into its elements ‘kera’ and ‘shot’, the two signs in question will therefore be conceptually different. However, to the extent that consumers do not deconstruct the word ‘kerashot’, the conceptual comparison will remain neutral.
57 For the consumers who do not understand the word ‘shot’, the earlier mark could refer to the sun, while the mark applied for is, as a whole, fanciful. In such circumstances, those consumers will not see, in the sign applied for, any reference to a particular concept, which excludes any possibility of a conceptual similarity between that mark and the mark applied for (see, to that effect, judgment of 24 September 2008 in Anvil Knitwear v OHIM — Aprile e Aprile (Aprile), T‑179/07, EU:T:2008:401, paragraph 60).
The phonetic similarity
58 As regards the phonetic comparison, the Board of Appeal considered, as regards the earlier mark, that the separate letter ‘k’ would most likely not be pronounced and the element ‘shot’ would be pronounced as ‘sott’, for the letter ‘h’ would be silent in Spanish. The Board of Appeal thus held that the degree of phonetic similarity between the mark applied for, pronounced ‘kerasot’, and the earlier sign, pronounced ‘kerasol’, was above average.
59 The applicant disputes that finding. It submits that the phonetic similarity is, at most, below average. The applicant submits in particular that the element ‘shot’ is pronounced by the Spanish public as ‘shot’ would be by English-speaking consumers or ‘chott’ by French-speaking consumers and it refers to several words in which the element ‘sh’ is pronounced ‘sh’ by the Spanish consumer, which is the case for the words sharia, shona, shunt, shock and shiitake. Furthermore, the presence of the letter ‘h’ after the letter ‘c’ could well have a different pronunciation and would not always be omitted in the pronunciation of a Spanish word.
60 OHIM concurs, in essence, with the Board of Appeal’s reasoning. Moreover, it contends that the words cited by the applicant are not Spanish words and that the applicant has not proved that those words, even if they exist, are pronounced in the way alleged. Furthermore, even supposing that the words exist in Spanish and that they are pronounced in the way suggested by the applicant, the degree of phonetic similarity would still be above average.
61 First, it must be held that, as the Board of Appeal correctly stated, the separate letter ‘k’ will not be pronounced in the earlier mark, because it will be considered to be a mere duplication of the initial letter of that mark.
62 Second, Spanish consumers who speak English will pronounce the word ‘shot’ as ‘shot’. For those consumers, there will be a certain similarity between the pronunciation of the element ‘sol’ and the element ‘shot’, the sounds ‘s’ and ‘sh’ having a certain degree of phonetic similarity. However, the identity of the element ‘kera’ must also be taken into account and that element, positioned at the start of the word ‘kerasol’, will retain consumers’ attention more. Therefore, it must be concluded that, for the category of Spanish consumers who speak English, there is an above average degree of phonetic similarity.
63 For Spanish consumers who do not speak English, the degree of phonetic similarity will, a fortiori, be even higher if those consumers pronounce the group of letters ‘sh’ in the same way that they pronounce the letter ‘s’. Furthermore, even if it were the case that there is a significant proportion of the Spanish public who, without speaking English, will pronounce that group of letters ‘sh’, the degree of phonetic similarity would however remain above average, as it is for those consumers who speak English. Therefore, it is not necessary to determine how Spanish consumers who do not speak English will pronounce the group of letters ‘sh’ in their mother tongue.
64 It follows from the foregoing that the Board of Appeal was correct to rely, for the purposes of the assessment of the risk of confusion, on an above average degree of phonetic similarity.
The visual similarity
65 As regards the visual comparison, it must be recalled at the outset that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have 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).
66 The Board of Appeal found that there was an above average degree of similarity between the marks in question, on the basis, in essence, of the impact of the letters ‘k’, ‘e’, ‘r’, ‘a’, ‘s’ and ‘o’ that are common to those marks.
67 The applicant disputes that finding. According to the applicant, the signs at issue have, at most, a weak degree of similarity, in particular due to the difference between the words ‘sol’ and ‘shot’ and the presence of the separate letter ‘k’ at the start of the earlier mark.
68 OHIM concurs, in essence, with the reasoning of the Board of Appeal.
69 First, it must be held that, in principle, the relevant public will perceive the earlier sign in two elements, namely the separate letter ‘k’ and the element ‘kerasol’. However, in so far as the relevant public will understand the element ‘sol’ to be a reference to the sun, it could also make a distinction between the sub-elements ‘kera’ and ‘sol’.
70 Second, for Spanish consumers with knowledge of English, the mark applied for will be perceived as two distinct elements, namely, ‘kera’ and ‘shot’. Owing to the presence of the element ‘k’ at the start of the earlier mark, even though it has only weak distinctive character, it must be held that, for those consumers, the visual similarity will be no more than average.
71 Third, for Spanish consumers who will not understand the word ‘shot’, the mark applied for will be perceived as a fanciful term, which, as the Board of Appeal found, resembles the sign applied for. For those consumers, the difference between the marks in question rests on the fact that the sign applied for ends with the letter ‘t’ and contains the letter ‘h’ after the letter ‘s’, whilst the earlier sign ends with the letter ‘l’ and the letter ‘h’ is absent after the letter ‘s’. The separate letter ‘k’ having only weak distinctive character will, as a secondary element, be unlikely to reduce the relatively high degree of similarity between the elements ‘kerasol’ and ‘kerashot’. What is more, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but has to place his trust in the imperfect image of them that he has retained in his mind (see judgment in MUNDICOR, cited in paragraph 47 above, EU:T:2004:79, paragraph 68 and the case-law cited). Therefore, for Spanish consumers who do not understand the word ‘shot’, the degree of visual similarity must be held to be above average.
The likelihood of confusion
72 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high 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 of 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).
73 As is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, and in particular the public’s recognition of the trade mark on the market in question.
74 The goods at issue are in part identical (see paragraph 34 above), in part highly similar (see paragraph 35 above) and in part similar to an average degree (see paragraphs 36 to 37 above).
75 The intrinsic distinctive character of the earlier mark must be found to be average, as the Board of Appeal held without being challenged on that point by the applicant. The latter has not claimed enhanced distinctive character due to use.
76 The distinctive character of the mark applied for must also be held to be average, as the Board of Appeal found without being challenged on that point by the applicant.
77 As regards the similarity of the marks, it has been stated that, in the perception of that part of the relevant public that does not speak English, the marks in question will possess a degree of similarity both visually (see paragraph 71 above) and phonetically (see paragraph 63 above) above average, whilst they will be conceptually neutral (see paragraph 57 above).
78 For Spanish consumers who speak English, the degree of similarity between the signs in question will be average visually (see paragraph 70 above) and above average phonetically (see paragraph 62 above). Conceptually, the comparison will remain neutral to the extent that consumers do not deconstruct the word ‘kerashot’ into its elements ‘kera’ and ‘shot’, whilst, for the others, the signs in question will have no degree of conceptual similarity (see paragraph 56 above).
79 It has, in addition, been found that, for the purposes of the assessment of the likelihood of confusion, the part of the relevant public whose level of attention is lowest must be taken into account and that that part of the relevant public is composed of the Spanish general public and the level of attention of that public is average (see paragraphs 21 to 26 above).
80 The goods at issue are generally sold in self-service stores, so that visual similarity plays a very important part in the global assessment of the likelihood of confusion. They are also marketed in chemist shops that offer consumers the possibility of either choosing the products that they want for themselves or being assisted by a salesperson. As regards, more specifically, the ‘hair lotions’ covered by the earlier mark and the ‘shampoos and other hair preparations’, covered by the mark applied for, it must be held that they can also be sold in hairdressers in which the consumer is normally assisted by a hairdresser. In any event, even if the consumer is assisted by a salesperson or a hairdresser, he will be able to see the goods at issue before making a purchase.
81 In the present case, given that: first, the element ‘kera’, which is common to the marks in question, is the most important element in both the marks in question; second, those marks have a high degree of similarity visually and phonetically for consumers who do not speak English, which is true even if it were the case that those consumers pronounce the word ‘shot’ as in English, and, third, the separate letter ‘k’ at the start of the earlier mark, which has weak distinctive character, plays merely a secondary role in the overall impression created by that mark, the Board of Appeal was correct to hold that there was a likelihood of confusion even as regards those of the goods at issue that are merely similar.
82 It must be clarified, in that regard, that the fact that the Board of Appeal did not distinguish Spanish consumers who understand English from those who do not understand it is not capable of leading to annulment of the contested decision since it suffices, in order for an application for registration to be refused under Article 8(1)(b) of Regulation No 207/2009, that the likelihood of confusion can be established for a significant part of the relevant public (see, to that effect, judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 38). Given that Spanish consumers who do not speak English are a significant part of the relevant public, it is not necessary to carry out an assessment of the likelihood of confusion as regards consumers who do speak English.
83 In the light of the foregoing, the plea alleging a breach of Article 8(1)(b) of Regulation No 207/2009, advanced by the applicant in support of its claim, is unfounded.
84 The present action must therefore be dismissed.
Costs
85 Under Article 134(1) 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 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. CareAbout GmbH is ordered to pay the costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 16 December 2015.
[Signatures]