JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
22 October 2015
(Community trade mark — Opposition proceedings — International registration designating the European Community — Word mark ELMA — Earlier Community word mark ELMEX — Refusal to register — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑309/13,
Enosi Mastichoparagogon Chiou, established in Chios (Greece), represented by A.-E. Malami, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos and J. Crespo Carrillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being,
Gaba International Holding GmbH, established in Therwil (Switzerland), represented by G. Schindler, M. Zintler and P. Nagel, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 26 March 2013 (Case R 1539/2012-4) relating to opposition proceedings between Gaba International Holding GmbH and Enosi Mastichoparagogon Chiou,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: J. Weychert, Administrator
having regard to the application lodged at the Court Registry on 7 June 2013,
having regard to the response of OHIM lodged at the Court Registry on 13 September 2013,
having regard to the response of the intervener lodged at the Court Registry on 13 September 2013,
having regard to the reply lodged at the Court Registry on 28 February 2014,
having regard to the decision of 8 July 2014 refusing leave to lodge a rejoinder,
further to the hearing on 10 June 2015,
gives the following
Judgment
Background to the dispute
1 On 7 December 2005, the applicant, Enosi Mastichoparagogon Chiou, filed an application for international registration designating the European Community, notification of which was given to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 9 November 2006, 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 ELMA.
3 The goods in respect of which registration was sought are in Class 5 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:
‘Chewing-gums for medical and dental purposes containing Chios mastic, dental mastic and dental materials containing Chios mastic, mouth solution for medical, dental and hygienic purposes containing Chios mastic’.
4 The application for international registration designating the European Community was published in Community Trade Marks Bulletin No 2006/046 of 13 November 2006.
5 On 10 August 2007, the intervener, Gaba International Holding GmbH, filed a notice of opposition pursuant to Article 156 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 earlier Community word mark ELMEX, filed on 12 December 1997 and registered on 22 July 1999 under no 000703546, covering, inter alia, the goods in Classes 3 and 5 corresponding, for each of those classes, to the following description:
– Class 3: ‘Cosmetic products and preparations; products and preparations for buccal and dental care’;
– Class 5: ‘Pharmaceutical and hygienical products and preparations; pharmaceutical products and preparations for buccal and dental care’;
– Class 21: ‘Tooth brushes’.
7 On 22 June 2012, the Opposition Division upheld the opposition, on the basis of Article 8(1)(b) of Regulation No 207/2009, and accordingly considered that it was not necessary to examine the opposition on the basis of Article 8(1)(a) of that regulation.
8 On 17 August 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
9 By decision of 26 March 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal.
10 As regards the relevant public, the Board of Appeal found that it consisted of average consumers within the European Union with an average level of attention. Then, after comparing the goods covered by the mark applied for in Class 5 and the goods covered by the earlier mark in Class 3, the Board of Appeal found that those goods were highly similar and that the signs displayed an average degree of visual and phonetic similarity, but that it was not possible to carry out a conceptual comparison because the signs lacked any meaning.
11 Consequently, in the light of those considerations, the Board of Appeal upheld the Opposition Division’s decision to the effect that there was a likelihood of confusion between the marks at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and the intervener to bear, individually, their own costs, and to pay, jointly and severally, those incurred by the applicant.
13 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The admissibility of new arguments and new evidence
14 In the reply, the applicant relied for the first time before the General Court on the reputation of the mark applied for and, with reference to Article 48 of the Rules of Procedure of the General Court of 2 May 1991, submitted ten documents for the purpose of proving that reputation.
15 Under Article 135(4) of the Rules of Procedure of 2 May 1991, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. It is for the General Court, in the present case, to review the legality of decisions taken by the Boards of Appeal. Therefore the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 22 June 2004 in ‘Drie Mollen sinds 1818’ v OHMI - Nabeiro Silveria (Galáxia), T‑66/03, ECR, EU:T:2004:190, paragraph 45 and the case-law cited). Likewise, the applicant does not have the power to alter before the General Court the terms of the dispute as delimited in the respective claims and allegations it and the intervener have submitted (judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 43). In the present case, it is clear from the file, as the applicant itself acknowledges, that the reputation of the mark applied for was not relied on before the bodies of OHIM. The subject-matter of the proceedings before the Board of Appeal did not therefore concern the reputation of the mark applied for. Accordingly, the applicant’s arguments concerning the reputation of its trade mark change the subject-matter and the terms of the proceedings as presented before the Board of Appeal, with the result that they must be rejected as inadmissible.
16 The same reasoning applies in so far as the new evidence is concerned. In proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. It is thus not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (see judgment of 27 October 2005 in Éditions Albert René v OHMI - Orange (MOBILIX), T‑336/03, ECR, EU:T:2005:379, paragraph 16 and the case-law cited).
17 Consequently, the Court must find that the new evidence is inadmissible, since otherwise it would be required to review the case on the basis of a factual context different from that presented before the Board of Appeal.
18 In the present case, there is no special circumstance to justify the submission before the Court of documents which could have been presented during the proceedings before OHIM, since the admission of such documents would be contrary to Article 135(4) of the Rules of Procedure of 2 May 1991, which provides that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.
19 In the light of the above considerations, the ten contested documents submitted for the first time before the General Court must be rejected as inadmissible.
The plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009
20 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. The applicant claims, in essence, that the goods and signs in question are similar and criticises the Board of Appeal for failing to take into consideration all the relevant factors in its global assessment of the likelihood of confusion.
21 OHIM and the intervener contend that that plea should be rejected.
22 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, 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.
23 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or economically linked undertakings constitutes a likelihood of confusion.
24 According to the same line of case-law, a likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and the similarity 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).
25 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
26 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists only in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).
The relevant public and its level of attention
27 The applicant claims that the consumer of the goods covered by the mark applied for is more prudent and informed than the average consumer. The applicant states that the goods at issue are intended for a consumer who, since he has a medical problem or wishes to protect his teeth, chooses a product with therapeutic properties.
28 As regards the definition of the relevant public, it should be noted that, where the application for registration concerns goods and services which are intended for all consumers, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect (see judgment of 24 January 2013 in Yordanov v OHIM — Distribuidora comercial del frio (DISCO DESIGNER), T‑189/11, ECR, EU:T:2013:34, paragraph 24 and the case-law cited). 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 judgments 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, and 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 62 and the case-law cited).
29 Furthermore, the rights conferred or capable of being conferred by the marks at issue extend to each category of goods or services in respect of which those marks are protected or to each category of goods covered by the application for registration. The commercial choices made or which may be made by the proprietors of the marks at issue are factors which must be distinguished from the rights derived from those marks and may change, since they depend solely on the will of the proprietors of those marks. So long as the list of the goods covered by the marks at issue has not been amended, such factors cannot affect the relevant public to be taken into account when assessing whether there is a likelihood of confusion (see judgment in DISCO DESIGNER, cited in paragraph 28 above, EU:T:2013:34, paragraph 25 and the case-law cited).
30 As regards the degree of attention paid by the relevant public, it is necessary to determine the level of attention of the average consumer when purchasing goods such as those in question. Thus, as regards the assessment of the likelihood of confusion, the public with the lowest attention level must be taken into consideration (see judgment in DISCO DESIGNER, cited in paragraph 28 above, EU:T:2013:34, paragraph 31 and the case-law cited).
31 In the present case, even if it were accepted, as the applicant contends, that the goods covered by the mark applied for are also purchased by certain consumers who select them with particular care, for medical reasons, that does not alter the fact that they are intended for all consumers, the great majority of whom display only an average level of attention when purchasing such goods.
32 In fact, the file shows that the goods covered by the mark applied for, while ‘mainly’ sold via specialist shops known as ‘mastihashops’, may also be sold in other shops, such as supermarkets, drugstores or pharmacies, as the applicant itself acknowledges.
33 In the light of the above, the Board of Appeal’s conclusion that the goods covered by the mark applied for are intended for the general public with an average level of attention must be upheld.
34 Accordingly, the applicant’s argument that the consumer of the goods covered by the mark applied for is more prudent and informed than the average consumer must be rejected.
The comparison of the goods
35 At the outset, it should be noted that, in paragraph 16 of the contested decision, the Board of Appeal notes that it made the same comparison as the Opposition Division and adds that that comparison concerned the goods at issue and those of the earlier mark in Class 5. However, it is apparent from reading the whole of the contested decision, in particular paragraphs 5 and 16 thereof, that this is a typographical error.
36 The Board of Appeal in fact compared the goods at issue with those of the mark applied for in Classes 3 and 21, in the same way as the Opposition Division.
37 Accordingly, it must be found that, since it does not affect the conclusions of the Board of Appeal on the comparison of the goods at issue, the clerical error in question does not affect the legality of the contested decision.
38 As regards, at this stage, the comparison of the goods, the applicant criticises the Board of Appeal in essence, for not having taken into consideration the different nature of the goods in question. The applicant claims, in particular, that, unlike the goods covered by the earlier mark, the goods covered by the mark applied for contain ‘Chios mastic’ and that the Board of Appeal did not take into consideration that ingredient or its reputation. The applicant states that that ingredient is a resin produced by the mastic tree that grows on the Greek island of Chios, is known for its medicinal properties and has a Protected Designation of Origin (PDO) status. In that regard, the applicant maintains that the Board of Appeal should have taken into consideration the fact that it had restricted its application concerning goods in Class 5 by specifying ‘containing Chios mastic’. In addition, the applicant complains that the Board of Appeal did not make a direct comparison between the chewing gum covered by the mark applied for and the goods covered by the earlier mark in Class 3. Accordingly, the applicant criticises the Board of Appeal for concluding that the goods compared had the same intended purpose, the same distribution channels and the same end user.
39 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to 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 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).
40 Moreover, it is clear from Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, that services or goods may not be regarded as dissimilar from each other on the sole ground that they appear in different classes for the purposes of the Nice Classification. It follows from case-law that goods or services do not necessarily have to fall within the same class, or even in the same category within a given class, in order reasonably to be the subject of a comparison and give rise to a finding of similarity or of lack of similarity between those goods or services (see judgment of 14 December 2006 in Gagliardi v OHIM — Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), T‑392/04, EU:T:2006:400, paragraph 77 and the case-law cited).
41 First, it should be noted that the applicant does not dispute the Board of Appeal’s comparison, for reasons of procedural economy, of the goods covered by the mark applied for in Class 5 with those covered by the earlier mark in Classes 3 and 21, in respect of which it did not require proof of use.
42 Secondly, it must be observed that the similarity between the goods in question must be assessed in relation to the finished goods, namely, chewing gum, dental mastic, dental materials and mouth wash respectively, all of which are intended for medical and dental use and contain Chios mastic, in so far as the applicant’s goods are concerned, and cosmetic products and preparations and products for oral and dental care, in so far as the intervener’s goods are concerned.
43 That being established, it should be noted that the goods covered by the mark applied for contain Chios mastic, a resin produced by the mastic tree which grows on the island of Chios and possesses properties suitable for oral and dental hygiene. It is also in the light of those properties that some consumers choose the goods covered by the mark applied for.
44 Moreover, as regards their intended use, it should be noted that, notwithstanding their medicinal properties, the goods covered by the mark applied for contribute, to the same degree as those covered by the earlier mark, to dental and oral hygiene and care.
45 As regards distribution channels, as stated in paragraph 32 above, although the goods covered by the mark applied for are, according to the applicant, sold mainly in specialist shops known as ‘mastihashops’, they may also be sold alongside other goods which do not contain Chios mastic, in particular in supermarkets, drugstores and pharmacies, and do not require a prescription. Accordingly, it must be concluded that the goods in question are likely to share the same distribution channels.
46 It follows that Chios mastic must be considered a basic ingredient of the contested goods, which does not change their intended purpose, use or distribution channels and which, therefore, has no effect on the assessment of the similarity between those goods compared and those covered by the earlier mark.
47 The same applies, in particular, to the chewing gum covered by the mark applied for. The medicinal properties of Chios mastic, while they make it a specific product, cannot, in the light of the reasoning set out above (see paragraph 46), lead to a different conclusion as regards its similarity with the goods covered by the earlier mark.
48 Moreover, the fact that that chewing gum has PDO status cannot affect the assessment of its similarity to the goods covered by the earlier mark. PDO merely designates the geographical origin of a product and must therefore be considered irrelevant to the assessment of similarity between the goods in question.
49 In the light of the above considerations, the Board of Appeal’s finding in paragraph 16 of the contested decision to the effect that the different composition of the goods covered by the mark applied for cannot alter the fact that they are similar to the goods covered by the earlier mark, must be endorsed.
50 Accordingly, it must be held that the Board of Appeal was right to conclude that the goods in question are highly similar.
The comparison of the signs
51 As regards the comparison of the signs, the applicant claims that the marks at issue differ visually, phonetically and conceptually.
52 OHIM and the intervener dispute the applicant’s arguments.
53 It should be noted that it is, in general, accepted that the consumer attaches greater importance to the beginnings of words, so that resemblance or difference in the beginnings of words is an important factor for the purposes of assessment (judgment of 13 February 2008 in Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, EU:T:2008:33, paragraph 49).
54 In the case of relatively short word marks, the central elements are as important as the elements at the beginning and end of the sign (judgment of 21 October 2008 in Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, EU:T:2008:455, paragraph 43).
55 Moreover, 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 and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26).
56 In particular, the assessment of visual similarity may take into account, in particular, in respect of word marks, their lengths, the letters they contain and the order of those letters (judgment of 29 February 2012 in Azienda Agricola Colsaliz di Faganello Antonio v OHIM — Weinkellerei Lenz Moser (SERVO SUO), T‑525/10, EU:T:2012:96).
57 Furthermore, what matters in the assessment of the visual similarity of two word marks is rather the presence, in each of them, of several letters appearing in the same order (judgment of 25 March 2009 in Kaul v OHIM — Bayer (ARCOL), T‑402/07, ECR, EU:T:2009:85, paragraph 83).
– The visual comparison
58 In the present case, the mark ELMA has four letters and the mark ELMEX has five. Those marks begin with the same letters, namely ‘e’, ‘l’ and ‘m’, and differ only in terms of their end letters, namely ‘a’ for ELMA and ‘e’ and ‘x’ for ELMEX. They are, therefore, relatively short word signs, the first parts of which are identical, and the difference between the end letters is not sufficient to counterbalance that identity.
59 Accordingly, the Board of Appeal’s conclusion that the signs at issue display an average degree of similarity must be upheld.
– The phonetic comparison
60 As regards the phonetic comparison, it should be noted that the marks at issue are similar in so far as they have two syllables, ‘el’ and ‘ma’ and ‘el’ and ‘mex’ respectively, and share the same first syllable, ‘el’. Furthermore, the second syllable of each mark starts with the letter ‘m’, which is pronounced in the same way for both marks. The fact that the common syllable, ‘el’, appears at the start of the words increases the phonetic similarity of the signs, while the difference in the endings of the words is not sufficient to outweigh that similarity.
61 In addition, even though it is common ground that the word ‘elma’, which constitutes the mark applied for, is likely to be pronounced ‘él-ma’, it is not possible to establish how the relevant public will pronounce the word ‘elmex’, which constitutes the earlier mark.
62 It follows that, from a phonetic perspective, the Board of Appeal’s conclusion that the marks at issue display an average degree of similarity must be upheld.
– The conceptual comparison
63 It is necessary to endorse the Board of Appeal’s findings that the word ‘elma’ is an unusual female first name and is also the name of four small towns in the United States, and that the word ‘elmex’ is devoid of any meaning.
64 In that regard, the Court observes that, given that the word ‘elmex’ has no meaning in any of the languages of the European Union, which is common ground, it is not possible to make a conceptual comparison of the signs (see, to that effect, judgments of 16 September 2013 in Gitana v OHIM — Teddy (GITANA), T‑569/11, EU:T:2013:462, paragraph 67 and the case-law cited, and 27 February 2014 in Advance Magazine Publishers v OHIM — Nanso Group (TEEN VOGUE), T‑509/12, ECR, EU:T:2014:89, paragraph 45).
65 The fact that the word ‘elma’ corresponds to the Greek abbreviation ‘EΛMA’, which derives from the expression ‘Ελληνική μαστίχα’ meaning ‘Greek mastic’, as the applicant submits, cannot lead to a different conclusion. That line of argument presupposes that the relevant public not only knows the Greek alphabet but also recognises that abbreviation. Since that alphabet is known outside Greece and Cyprus only by a more erudite category of consumers, most European consumers will not be in a position to establish such a connection (judgment of 10 June 2009 in Vivartia v OHIM — Kraft Foods Schweiz (milko ΔΕΛΤΑ), T‑204/06, EU:T:2009:185, paragraph 43).
66 In the light of the above considerations, it is necessary to uphold the Board of Appeal’s conclusion that a conceptual comparison of the marks is not possible.
The likelihood of confusion
67 As regards the overall assessment of the likelihood of confusion, the applicant criticises the Board of Appeal for comparing the goods and signs at issue without considering, inter alia, the properties of Chios mastic and its reputation.
68 According to case-law, 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 that of the goods or services covered. Accordingly, a low degree of similarity between the 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 VENADO with frame and others, paragraph 26 above, EU:T:2006:397, paragraph 74).
69 In the present case, the goods at issue are similar in so far as they have the same intended purpose, namely oral and mouth hygiene, use the same distribution channels and target the same consumers. Furthermore, the Board of Appeal was right to conclude that Chios mastic, notwithstanding any medicinal properties it may have, was only one of the ingredients of the goods covered by the mark applied for and that those goods displayed a high degree of similarity to the goods covered by the earlier mark.
70 As regards the signs at issue, the words ‘elma’ and ‘elmex’ display an average degree of visual and phonetic similarity (see paragraphs 59 and 62 above), while a conceptual comparison is not possible (see paragraph 66 above).
71 In the light of the above, it must be held that the Board of Appeal did not err in law in finding that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.
72 It follows that the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is unfounded. Consequently, the action must be dismissed.
Costs
73 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 were applied for in the successful party’s pleadings.
74 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1) Dismisses the action;
2) Orders Enosi Mastichoparagogon Chiou to pay the costs.
Delivered in open court in Luxembourg on 22 October 2015.
[Signatures]