JUDGMENT OF THE GENERAL COURT (First Chamber)
18 February 2016 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark HARRY’S NEW YORK BAR — Earlier national figurative mark PUB CASINO Harrys RESTAURANG — Partial refusal of registration — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Joined Cases T‑84/14 and T‑97/14,
Harrys Pubar AB, established in Gothenburg (Sweden), represented by L.-E. Ström, lawyer,
applicant in Case T‑84/14,
Harry’s New York Bar SA, established in Paris (France), represented by S. Arnaud, lawyer,
applicant in Case T‑97/14,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being, as regards Case T‑84/14,
Harry’s New York Bar SA,
and
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court in Case T‑97/14, being
Harrys Pubar AB, established in Gothenburg, represented by L.-E. Ström,
TWO ACTIONS brought against the decision of the First Board of Appeal of OHIM of 14 November 2013 (joined Cases R 1038/2012-1 and R 1045/2012-1), relating to opposition proceedings between Harrys Pubar AB and Harry’s New York Bar SA,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,
Registrar: E. Coulon,
having regard to the applications lodged at the Court Registry on 6 February 2014 (Case T‑84/14) and 13 February 2014 (Case T‑97/14),
having regard to the responses of OHIM lodged at the Court Registry on 4 June 2014 (Case T‑84/14) and 6 June 2014 (Case T‑97/14),
having regard to the response of the intervener in Case T‑94/14, lodged at the Court Registry on 28 May 2014,
having regard to the order of 22 July 2014 joining Cases T‑84/14 and T‑97/14 for the purposes of the written procedure, of any oral procedure and of the judgment,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to 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 2 October 2003, the applicant in Case T‑97/14, Harry’s New York Bar SA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the word mark HARRY’S NEW YORK BAR.
3 The goods and services in respect of which registration was sought are in Classes 25, 30, 32, and 43 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, to the following description:
– Class 25: ‘Articles for clothing; underwear, lingerie, layette, dresses, shirts, suits, jackets, skirts, neckties, T-shirts, caps, trousers, sportswear, swim suits; shoes, boots, trainers; headgear; gloves, hosiery’;
– Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; honey, treacles; salt, mustard; vinegar, sauces (condiments); relish; ice; coffee, tea or cocoa-based preparations for making beverages’;
– Class 32: ‘Non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa-based beverages and milk beverages); beers; mineral and aerated waters; fruit drinks and fruit juices; syrups’;
– Class 43: ‘Establishments selling beverages, namely cafés, cafeterias, bars, restaurants, self-service restaurants, snack-bars’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 39/2004 of 27 September 2004.
5 On 27 December 2004, the applicant in Case T‑84/14 and intervener in Case T‑97/14, Harrys Pubar AB, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier rights (collectively, ‘the signs cited in opposition’):
– the Swedish figurative mark, reproduced below, which was filed on 8 March 1999 and registered on 7 June 2002 under the number 356 009 to cover goods in Class 25 and services in Class 42 (now Class 43 of the Nice Agreement) corresponding respectively to the following description: ‘clothing, footwear, headgear’ and ‘serving of food and drink through restaurant, pub and café services’:
– the Swedish figurative mark, reproduced below, which was filed on 21 December 1993 and registered on 6 December 1996 under the number 320 026 to cover goods in Class 25 and services in Class 42 (now Class 43) corresponding respectively to the following description: ‘clothing, footwear, headgear’ and ‘pubs, cafés, bars and restaurants; serving of food and drink’:
– the Swedish figurative mark, reproduced below, which was filed on 15 October 1993 and registered on 26 July 1996 under the number 315 142 to cover services in Class 42 (now Class 43) corresponding to the following description: ‘supplying of food and drink through restaurant, pub and café services’:
– the Swedish trade name Harrys Pubar Aktiebolag, registered on 15 May 1995 under the number 55 6513-1066 to designate the business activity ‘catering business and thereto related business’, used in the course of trade of more than mere local significance and conferring on the proprietor thereof the right, under Articles 1, 2, 3, 14.4 and 14.6 of the Swedish Law on trade marks, to prohibit the use of the mark applied for.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (4) of Regulation No 40/94 (now Article 8(1)(b) and (4) of Regulation No 207/2009).
8 On 25 March 2011, Harry’s New York Bar requested proof of use of the signs cited in opposition that had been registered more than five years before the date of publication of the application. Harrys Pubar responded to that by submitting articles which had appeared in the Swedish press, extracts from its website and information on its business and franchise activities.
9 By decision of 30 March 2012, the Opposition Division rejected the opposition in respect of the goods in Class 30 corresponding to the following description: ‘sugar, rice, tapioca, sago, honey, treacles; salt, mustard; vinegar, sauces (condiments); relish; ice’. By contrast it upheld the opposition in respect of the rest of the goods and services referred to in paragraph 3 above on the ground that there was a likelihood of confusion with the Swedish figurative mark registered under the number 356 009 (‘the earlier mark’).
10 On 29 May 2012, Harry’s New York Bar 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, in so far as that decision had upheld the opposition in respect of the rest of the goods and services, as stated in paragraph 9 above.
11 On 30 May 2012, Harrys Pubar 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, to the extent that that decision had rejected the opposition in respect of the goods in Class 30 referred to in paragraph 9 above.
12 The appeal by Harrys Pubar was registered under the number R 1045/2012-1 and the appeal by Harry’s New York Bar was registered under the number R 1038/2012-1.
13 Since both of those appeals were directed against the same decision, they were examined jointly.
14 By decision of 14 November 2013 (‘the contested decision’), the First Board of Appeal of OHIM, in point 1 of the operative part, relating to Case R 1038/2012-1, partially upheld the appeal by Harry’s New York Bar and also allowed the registration of the mark applied in respect of the goods in Classes 30 and 32 corresponding respectively to the following description: ‘coffee, tea, cocoa; artificial coffee; coffee, tea or cocoa-based preparations for making beverages’ and ‘non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa-based beverages and milk beverages); mineral and aerated waters; fruit drinks and fruit juices; syrups’. In point 2 of the operative part, relating to Case R 1038/2012-1, the appeal by Harry’s New York Bar was dismissed as to the remainder. In point 1 of the operative part, relating to Case R 1045/2012-1, the appeal by Harrys Pubar was dismissed in its entirety.
15 The Board of Appeal of OHIM followed the Opposition Division’s approach by examining the opposition on the basis of the earlier mark. In the first place, the Board of Appeal found that the relevant public was the average Swedish consumer, who is reasonably well informed and reasonably observant and circumspect.
16 In the second place, the Board of Appeal concluded, first, that the mark applied for and the earlier mark were visually and conceptually similar, in particular in so far as they corresponded to the common first name Harry. Furthermore, it concluded that they were phonetically identical. The Board of Appeal added that the marks at issue were similar in their overall impressions.
17 In the third place, the Board of Appeal observed that it was not disputed that the goods in Class 25 and the services in Class 43 covered by the mark applied for were identical to the goods and services in Classes 25 and 42 covered by the earlier mark. As regards the goods in Class 30 corresponding to ‘coffee, tea, cocoa; artificial coffee; coffee, tea or cocoa-based preparations for making beverages’, the Board of Appeal did not find that there was a remote degree of similarity between those goods and the services covered by the earlier mark. It took the view that consumers would ask for those goods by their generic name, unlike, for example, wines or beers, which would typically be asked for by their brand name. The Board of Appeal found that that reasoning also applied to the goods in Class 32 covered by the mark applied for corresponding to ‘non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa-based beverages and milk beverages); mineral and aerated waters; fruit drinks and fruit juices; syrups’. It took the view that they were not similar to the services covered by the earlier mark, contrary to what the Opposition Division had decided. As for the remainder of the goods in Class 32, namely ‘beers’, covered by the mark applied for, the Board of Appeal confirmed the Opposition Division’s decision by finding that there was a remote degree of similarity between those goods and the services covered by the earlier mark.
18 In the fourth place, as regards the assessment of the likelihood of confusion, the Board of Appeal found, first, that, since the goods in Class 30, as well as those in Class 32 corresponding to ‘non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa-based beverages and milk beverages); mineral and aerated waters; fruit drinks and fruit juices; syrups’ were dissimilar to the services covered by the earlier mark, there could be no likelihood of confusion between the earlier mark and the mark applied for in relation to those goods. Furthermore, according to the Board of Appeal, it was conceivable that the relevant public might regard, on the one hand, ‘beers’ in Class 32, the goods in Class 25 and the services in Class 43 covered by the mark applied for and, on the other hand, the goods and services covered by the earlier mark as coming from the same undertakings. The Board of Appeal found that there was a likelihood of confusion with regard to all of those goods and services covered by the mark applied for.
19 In the fifth place, as regards the claim under Article 8(4) of Regulation No 207/2009, which was put forward by Harrys Pubar, the Board of Appeal, first, observed that Harrys Pubar had not challenged the overall assessment of the Opposition Division, namely that there was no infringement of a trade name under Swedish law where the goods and services were dissimilar. Furthermore, the Board of Appeal found that, since the goods in Class 30 and the goods in Class 32 corresponding to ‘non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa-based beverages and milk beverages); mineral and aerated waters; fruit drinks and fruit juices; syrups’ were dissimilar to the services covered by the earlier trade name, there could be no infringement of a trade name under Swedish law.
Forms of order sought
Case T‑84/14
20 Harrys Pubar claims that the Court should:
– annul the contested decision and
– order OHIM to pay the costs which Harrys Pubar has incurred in the course of the proceedings before the Court and order OHIM and Harry’s New York Bar to each bear their own costs.
21 OHIM contends that the Court should:
– dismiss the action and
– order Harrys Pubar to pay the costs incurred by OHIM.
Case T‑97/14
22 Harry’s New York Bar claims that the Court should:
– declare the action admissible;
– annul the contested decision and
– order OHIM and Harrys Pubar to each bear the costs which they have incurred in the course of the proceedings before the Court.
23 OHIM contends that the Court should:
– dismiss the action and
– order Harry’s New York Bar to pay the costs incurred by OHIM.
24 Harrys Pubar contends that the Court should:
– dismiss the action and
– order Harry’s New York Bar to pay the costs incurred in the present proceedings as well as the costs of the proceedings before the Board of Appeal and the Opposition Division.
Law
Admissibility
The argument alleging infringement of Article 8(4) of Regulation No 207/2009 in Case T‑84/14
25 In support of the action in Case T‑84/14, Harrys Pubar alleged infringement of Article 8(1)(b) of Regulation No 207/2009 and infringement of Article 8(4) of that regulation.
26 However, as OHIM rightly maintains in its response, Harrys Pubar has not substantiated the plea alleging infringement of Article 8(4) of Regulation No 207/2009. It has not put forward any explanation in support of that plea. Harrys Pubar has only stated that the correct application of Article 8(4) of Regulation No 207/2009 should have led to the rejection of the application for registration in its entirety since it is very likely that the relevant consumers will confuse the mark applied for with the signs cited in opposition.
27 In that regard, it must be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and to Article 44(1)(c) of the Rules of Procedure of the General Court of 2 May 1991, which are applicable as regards the admissibility of the present action (see order of 7 September 2010 in Norilsk Nickel Harjavalta and Umicore v Commission, T 532/08, ECR, EU:T:2010:353, paragraph 70 and the case-law cited), an application must contain a brief statement of the pleas in law on which the application is based. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the action, if necessary without any other supporting information (judgment of 27 September 2005 in Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, ECR, EU:T:2005:340, paragraph 27, and judgment of 3 December 2014 in Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, EU:T:2014:1020, paragraphs 17 and 18).
28 It must also be added that Harrys Pubar requested permission to lodge a reply in order, inter alia, to respond to OHIM’s observation relating to Article 8(4) of Regulation No 207/2009. That permission was granted, but Harrys Pubar did not lodge a reply within the prescribed period.
29 It is apparent from the foregoing that the plea alleging infringement of Article 8(4) of Regulation No 207/2009 put forward by Harrys Pubar in Case T‑84/14 is inadmissible. Consequently, the Court will examine as to its substance only the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 put forward by that applicant.
The claim submitted for the first time before the Court in Case T‑97/14
30 In Case T‑97/14, Harry’s New York Bar maintains, in the context of the plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009, that the requirements of clarity and precision for describing the goods and services covered by the earlier mark and, consequently, for determining the scope of the protection conferred by that mark are not fulfilled.
31 It is apparent from the case-file that that claim was submitted for the first time before the Court. It constitutes a new argument which Harry’s New York Bar did not submit in its appeal before OHIM. That claim relates to the existence and the scope of the earlier right and therefore to an issue which was part of the subject-matter of the proceedings as from the time of the proceedings before the Opposition Division.
32 In that regard, it must be borne in mind, first, that 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 OHIM — Nabeiro Silveria (Galáxia), T‑66/03, ECR, EU:T:2004:190, paragraph 45 and the case-law cited) and, secondly, that the applicant does not have the power to alter before the Court the terms of the dispute as delimited in the respective claims and allegations submitted by itself and by the party which filed the opposition before OHIM (see judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 43 and the case-law cited).
33 In those circumstances, OHIM rightly submits, in its response, that that claim cannot be taken into consideration inasmuch as it was put forward for the first time by Harry’s New York Bar before the Court. That claim is therefore inadmissible.
Substance
34 It must be stated at the outset that, by the contested decision, registration of the mark applied for was refused in respect of all the goods and services in Classes 25 and 43 covered by the mark applied for and was allowed in respect of all the goods in Classes 30 and 32 covered by that mark, with the exception of ‘beers’ in Class 32. By their respective actions, Harrys Pubar seeks to have the application for registration rejected in its entirety and Harry’s New York Bar seeks to have that application allowed in its entirety.
35 In support of the action in Case T‑84/14, Harrys Pubar submits, first, in essence, that the Board of Appeal incorrectly applied Article 8(1)(b) of Regulation No 207/2009 inasmuch as it did not find that the goods and services were similar. Secondly, it maintains that the Board of Appeal should have come to the conclusion that there was an even higher degree of similarity between the signs at issue than that acknowledged in the contested decision. Thirdly, Harrys Pubar disputes the Board of Appeal’s assessment of the likelihood of confusion.
36 In Case T‑97/14, Harry’s New York Bar puts forward two pleas in law alleging, first, infringement of recital 10 and Article 42(2) and (3) of Regulation No 207/2009 and, secondly, infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea consists of three parts, the third of which has been declared inadmissible in paragraphs 30 to 33 above. As regards the other two parts, the first relates to the error which the Board of Appeal allegedly made in its assessment of the dominant character of one or more elements of the marks at issue. The second part relates to the error which the Board of Appeal allegedly made in its assessment of the visual, phonetic and conceptual similarity between the mark applied for and the signs cited in opposition.
37 OHIM disputes the arguments of both applicants and maintains that the Board of Appeal correctly assessed whether there was a likelihood of confusion.
38 In Case T‑97/14, Harrys Pubar, in its capacity as intervener, states, first of all, in essence, that there was no need to examine the genuine use of the earlier mark pursuant to Article 42 of Regulation No 207/2009, contrary to what Harry’s New York Bar maintains. Next, Harrys Pubar submits, first, that the mark applied for, assessed globally, is highly similar to the signs cited in opposition, secondly, that it covers goods and services which are identical or highly similar to those covered by the signs cited in opposition and, thirdly, that it is aimed at the same relevant group of Swedish consumers, with the result that there is a high likelihood of confusion between that mark and the signs cited in opposition.
39 It must be borne in mind that, in the present case, the opposition was based on the signs cited in opposition, as has been stated in paragraph 6 above. The Board of Appeal examined the opposition solely in the light of the earlier mark for the reason which is stated in paragraph 25 of the contested decision and which has not been disputed by the parties. It is on the basis of that premiss that the Court will carry out its review of the legality of the contested decision.
The first plea in Case T‑97/14, alleging infringement of recital 10 and Article 42(2) and (3) of Regulation No 207/2009
40 It must be borne in mind that the opposition was based on a number of signs cited in opposition, as has been stated in paragraph 6 above. As stated in paragraph 39 above, in the contested decision, the Board of Appeal examined the opposition solely in the light of the earlier mark, stating that it was not subject to the obligation of use and that the goods and services covered by that mark were the same as those covered by the other signs cited in opposition.
41 Harry’s New York Bar submits that, by not examining the evidence of use of the earlier mark and of Swedish trade marks No 315 142 and No 320 026, which were put forward in support of the opposition, the Board of Appeal infringed recital 10 of Regulation No 207/2009 and infringed Article 42(2) and (3) of Regulation No 207/2009.
42 OHIM and Harrys Pubar dispute the merits of the arguments of Harry’s New York Bar.
43 According to Article 42(2) and (3) of Regulation No 207/2009, an applicant for registration of a Community trade mark may request the proprietor of an earlier national trade mark who has given notice of opposition to furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the national trade mark has been put to genuine use, provided that that trade mark has at that date been registered for not less than five years.
44 In the present case, first, the earlier mark was registered on 7 June 2002, that is to say less than five years before the date of publication of the Community trade mark application, which took place on 27 September 2004. Consequently, the earlier mark could not be the subject of a request for proof of genuine use, which means that the Board of Appeal did not err in not examining that proof.
45 Secondly, it must be borne in mind that, like the Opposition Division’s decision, the contested decision is based solely on the examination of whether there is a likelihood of confusion between the mark applied for and the earlier mark and that, in the contested decision, it was found that there was such a likelihood of confusion in respect of the goods and services which had been found to be identical or similar, as referred to in paragraph 18 above. Accordingly, the evidence of genuine use of the other marks which were relied on by Harrys Pubar in support of its opposition, namely the Swedish marks registered under the numbers 320 026 and 315 142, is irrelevant with regard to the reasoning applied by the Board of Appeal in the contested decision, which means that the arguments submitted by Harry’s New York Bar, alleging that that evidence was not examined by the Board of Appeal, are of no consequence.
46 In the light of the foregoing, the first plea in Case T‑97/14 must be rejected as, in part, unfounded and, in part, ineffective.
The first plea in Case T‑84/14 and the second plea in Case T‑97/14, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
47 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 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.
48 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see 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).
49 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).
50 It is in the light of those considerations that it must, in the present case, be assessed whether the Board of Appeal was right in finding, first, that there was, in respect of some of the goods and in respect of the services covered by the mark applied for, a likelihood of confusion with the earlier mark and, secondly, that there was no likelihood of confusion with regard to the other goods covered by the mark applied for.
The relevant public
51 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 products 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).
52 Moreover, it should be noted that the relevant public consists of consumers who are likely to use both the goods and services covered by the earlier mark and those covered by the mark at issue (see, to that effect, judgment of 1 July 2008 in Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, EU:T:2008:238, paragraph 23, and judgment of 30 September 2010 in PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, EU:T:2010:419, paragraph 28).
53 In the first place, it must be stated that, as the earlier mark is a Swedish mark, the relevant territory to be taken into account in assessing the likelihood of confusion in the present case is that of Sweden.
54 In the second place, given that the goods covered by the earlier mark and the goods covered by the mark applied for are everyday consumer goods, namely not intended for a specialist public, the Board of Appeal was right to observe, in paragraph 27 of the contested decision, that the relevant public is the average Swedish consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 3 September 2010 in Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, ECR, EU:T:2010:347, paragraph 39). The parties do not, moreover, dispute that definition.
The comparison of the goods and services
55 Harrys Pubar submits, in Case T‑84/14, first of all, that the goods in respect of which the registration of the mark applied for was allowed are highly similar to its services in the eyes of the relevant consumers. It states, in that regard, that the Board of Appeal did not take into account the fact that, in relation to its services, those goods had the same use and purpose (namely the consumption of food and beverages) and were at least complementary or the fact that both those goods and its services use the same or similar sales and distribution channels. Next, it submits, first, that it is common for cafés, bars, pubs and restaurants to have their own food and beverages, which are served on the premises or sold for consumption outwith the premises. Secondly, it submits that consumers are used to the fact that the provision of certain goods in restaurants or similar establishments may be linked economically and from an organisational point of view to a particular establishment. Lastly, it maintains that the question whether the customers of a restaurant or a similar establishment order their beverages by using the brand which they prefer or the fact of whether they choose the ingredients of the food and beverages of which their orders consist directly or not cannot be decisive in relation to whether the goods and services are similar.
56 Harry’s New York Bar submits, in Case T‑97/14, that the Board of Appeal made a methodological error. It maintains that a likelihood of confusion may be admitted only in respect of identical or similar goods and services when they are registered in the same classes. It takes the view that the First Board of Appeal compared the goods in Class 25 (of Harry’s New York Bar and Harrys Pubar) with the services in Class 43 (which only concern Harry’s New York Bar) and considered them to be identical to Harrys Pubar’s goods and services. Harry’s New York Bar concludes from that that the Board of Appeal should not have compared goods and services which are not registered in the same classes, such as Class 43, because only goods or services registered in the classes for which protection is claimed must be protected, protection being excluded in respect of goods or services which are not registered in the same classes. Furthermore, it submits that the Board of Appeal did not examine the question whether the goods and services in the classes involved are in the same place of manufacture and distribution. It maintains that the fact that the goods are distributed in non-specialised stores (drinks establishments) excludes any similarity between the goods and services registered under Classes 25 and 43.
57 OHIM disputes the applicants’ arguments and maintains that the Board of Appeal did not make any error in its assessment of the similarity between the goods and services covered by the signs at issue.
58 In Case T‑97/14, Harrys Pubar, in its capacity as intervener, disputes, first of all, the claim that there is a different place of manufacture and distribution for the provision of food and beverages and for the serving of food and drink. Next, as regards Harry’s New York Bar’s claim that the existence of a likelihood of confusion should be ruled out merely due to the fact that the goods and services covered by the earlier mark do not belong to the same classes as those covered by the mark applied for, Harrys Pubar submits that the Nice Classification is simply an administrative tool and is by no means decisive in the assessment of a likelihood of confusion. Lastly, according to Harrys Pubar, the goods in Class 25 covered by the mark applied for are identical to the goods in the same class covered by the earlier mark. It maintains that the food and beverages in Classes 30 and 32 and the services in Class 43 are very similar or identical to the goods and services covered by the earlier mark.
59 First, it must be borne in mind that, in the light of the fact that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes, goods and services may not be regarded as being dissimilar on the sole ground that, like the goods in Class 25 and the services in Class 43 in the present case, they appear in different classes under that classification (judgment of 10 September 2014 in DTM Ricambi v OHIM — STAR (STAR), T‑199/13, EU:T:2014:761, paragraph 39 and the case-law cited).
60 Consequently, Harry’s New York Bar’s argument that the existence of a likelihood of confusion is precluded merely due to the fact that the goods and services covered by Harrys Pubar’s rights do not belong to the same classes as those covered by the mark applied for must be rejected.
61 Next, it must be borne in mind that, according to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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).
62 Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods intended for different publics cannot be complementary (judgment in easyHotel, cited in paragraph 49 above, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
– The goods and services in Classes 25 and 43 covered by the mark applied for
63 As regards the goods in Class 25 and the services in Class 43 covered by the mark applied for, which correspond to ‘articles for clothing; underwear, lingerie, layettes, dresses, shirts, suits, jackets, skirts, neckties, T-shirts, caps, trousers, sportswear, swim suits; shoes, boots, trainers; headgear; gloves, hosiery’ and ‘establishments selling beverages, namely cafés, cafeterias, bars, restaurants, self-service restaurants, snack bars’ respectively, it must be borne in mind that the Board of Appeal found that the parties had not disputed the Opposition Division’s finding that those goods and services were, respectively, identical to the goods in Class 25 and to the services in Class 42 (now Class 43) covered by the earlier mark, which correspond to ‘clothing, footwear, headgear’ and ‘serving of food and drink through restaurant, pub and café services’ respectively. It must be held that that part of the comparison of the goods and services is not at issue and that it is, in addition, correct.
– The goods in Class 30 covered by the mark applied for
64 As regards the goods in Class 30 covered by the mark applied for, it must be borne in mind that the Board of Appeal concurred with the Opposition Division’s conclusion by finding that the ‘sugar, rice, tapioca, sago, honey, treacles; salt, mustard; vinegar, sauces (condiments); relish; ice’ which were among those goods were not similar to the services in Class 42 (now Class 43) covered by the earlier mark, namely the ‘serving of food and drink through restaurant, pub and café services’. It added, however, that the same conclusion also applied to ‘coffee, tea, cocoa; artificial coffee; coffee, tea or cocoa-based preparations for making beverages’.
65 Harrys Pubar disputes the Board of Appeal’s assessments. Relying on the case-law of the General Court (judgment of 13 April 2011 in Bodegas y Viñedos Puerta de Labastida v OHIM — Unión de Cosecheros de Labastida (PUERTA DE LABASTIDA), T‑345/09, EU:T:2011:173), it submits, inter alia, that the goods referred to in the preceding paragraph are complementary to the services covered by the earlier mark and that the sales and distribution channels are the same or similar. In addition, it relies on the practice in Sweden that it is common for restaurants and similar establishments to sell food and beverages under the same trade mark as is used for serving them.
66 OHIM, although it admits the existence of the case-law of the General Court referred to by Harrys Pubar, takes the view that the position adopted by the Board of Appeal is correct.
67 As regards the comparison between, on the one hand, the goods ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; honey, treacles; salt, mustard; vinegar, sauces (condiments); relish; ice; coffee, tea or cocoa-based preparations for making beverages’ in Class 30 covered by the mark applied for and, on the other hand, the services ‘serving of food and drink through restaurant, pub and café services’ in Class 42 (now Class 43) covered by the earlier mark, it is indisputable that, in the light of the factors relating to their nature, their intended purpose or their method of use, they are not similar (see, to that effect, judgment in PUERTA DE LABASTIDA, cited in paragraph 65 above, EU:T:2011:173, paragraph 51).
68 However, it must be stated that those goods are necessarily used in the serving of food and drink, with the result that those goods and those services are complementary. Furthermore, food may be offered for sale in places in which food and drink are served. Such goods are therefore used and offered through restaurant, pub and café services. Those goods are consequently closely connected with those services (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 46, and judgment in PUERTA DE LABASTIDA, cited in paragraph 65 above, EU:T:2011:173, paragraph 52).
69 In the light of the foregoing, it must be held, contrary to what the Board of Appeal found, that there is a certain degree of similarity between the goods referred to in paragraph 67 above and the serving of food and drink covered by the earlier mark.
– The goods in Class 32 covered by the mark applied for
70 As regards the goods in Class 32 covered by the mark applied for, the Board of Appeal found that ‘non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa-based beverages and milk beverages); mineral and aerated waters; fruit drinks and fruit juices; syrups’ were dissimilar to the services covered by the earlier mark. By contrast, it found that there was a remote degree of similarity between ‘beers’ and those services.
71 Harrys Pubar submits that all the goods in Class 32 covered by the mark applied for are similar to the services covered by the earlier mark.
72 OHIM agrees with the Board of Appeal’s findings and states that there is a difference between ‘beers’ and alcoholic beverages and the other beverages in Class 32. In relation to those other beverages, OHIM maintains that consumers will make a spontaneous, impulsive choice from a selection of beverages proposed to them. It submits that the fact that in some restaurants it is possible to request a specific brand of water or juice does not make those goods similar to the serving of food and drink. By contrast, OHIM takes the view, as did the Board of Appeal, that there is a remote degree of similarity between ‘beers’ and the services covered by the earlier mark despite the fact that the nature and purpose of that product are entirely different from those of those services.
73 It must be observed that the reasoning set out in paragraphs 67 and 68 above must also be applied to the beverages and other goods in Class 32 covered by the mark applied for. Those beverages and goods are complementary to the serving of food and drink in Class 42 (now Class 43) covered by the earlier mark when they are used and offered through restaurant, pub and café services (see, to that effect, judgment in YORMA’S, cited in paragraph 68 above, EU:T:2011:37, paragraph 46).
74 It must therefore be held, contrary to what the Board of Appeal found, that there is a certain degree of similarity between all the goods in Class 32 covered by the mark applied for and the services in Class 42 (now Class 43) covered by the earlier mark.
75 It is apparent from the foregoing that all the goods in Classes 30 and 32 covered by the mark applied for are similar to the services in Class 42 (now Class 43) covered by the earlier mark and that, consequently, the contested decision is, in that regard, partially vitiated by an error of assessment.
The comparison of the signs
76 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, in particular, 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 this 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, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
77 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, cited in paragraph 76 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment in OHIM v Shaker, cited in paragraph 76 above, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 43).
78 In the present case, the mark applied for consists of the word elements ‘harry’s’, ‘new york’ and ‘bar’. The earlier mark is a figurative mark which consists of an old-fashioned pub sign containing the word ‘harrys’ in the centre and the words ‘pub’, ‘casino’ and ‘restaurang’ around that word. The word element ‘harrys’ in the earlier mark is in stylised, italic letters with a capital ‘H’ and the remaining letters in lower case, whereas the other words are written in bold, upper case letters in a smaller-sized font.
79 The Board of Appeal found that, in the earlier mark as well as in the mark applied for, the elements ‘harrys’ and ‘harry’s’ would be understood as a reference to the first name Harry in the possessive genitive. More specifically, the Board of Appeal found that the earlier mark would be understood as meaning that the goods had been produced by Harry. It took the view that both marks are therefore visually similar, in so far as they correspond to the common first name Harry. It found that the reference to the city of New York (United States) designates the image and style of bar operated by that person and is, for that reason, not particularly distinctive. In its view, the additional word elements in the earlier mark lack distinctive character since they designate the type of establishment operated by the person named Harry. It found that the device element is merely decorative and enhances the word ‘harrys’ which is positioned in the centre. It took the view that both marks are phonetically identical. It found that those marks are conceptually similar to the extent that the words ‘pub’ and ‘bar’ designate the same type of establishment serving drinks. According to the Board of Appeal, both marks are similar.
80 Harrys Pubar submits that the mark applied for and the signs cited in opposition are highly similar visually and are phonetically and conceptually identical. It maintains that the Board of Appeal failed to assess the mark applied for and the signs cited in opposition in their entirety by taking no account of the similar nature of the word elements ‘bar’, ‘pub’, ‘café’ and ‘restaurang’. In its view, the degree of similarity between the signs is even higher than that acknowledged by the Board of Appeal. It maintains that the element ‘new york’ in the mark applied for is perceived by the relevant consumers merely as an indication of the style of the bar and not as an element which is, in itself, characteristic of a trade mark. According to Harrys Pubar, the earlier mark and the mark applied for are dominated by the elements ‘harrys’ and ‘harry’s’ and the figurative elements and words other than ‘harrys’ and ‘harry’s’ do not outweigh the high degree of similarity existing between the two marks.
81 Harry’s New York Bar submits that the Board of Appeal erred in its assessment of the dominant character of the first name Harry, which, on the contrary, has limited distinctive character as a component. Harry’s New York Bar also maintains that the Board of Appeal erred in its assessment of the visual, phonetic and conceptual similarity between the mark applied for and the earlier mark.
82 OHIM agrees with the findings of the Board of Appeal. It submits that both marks are visually similar, in so far as they correspond to the first name Harry. From a phonetic standpoint, it maintains that the marks at issue are highly similar, if not identical. It takes the view that the marks at issue are conceptually identical as they refer to the possessive genitive of the word ‘harry’.
83 It must therefore be ascertained whether the Board of Appeal correctly assessed the similarities between the signs at issue.
84 As regards the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 19 June 2012 in H.Eich v OHIM — Arav (H.EICH), T‑557/10, EU:T:2012:309, paragraph 30 and the case-law cited).
85 Furthermore, as pointed out in paragraph 77 above, it is only if the dominant element is capable on its own of dominating the image of the mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark, that the assessment of the similarity can be carried out solely on the basis of the dominant element (see judgment of 31 January 2012 in Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 37 and the case-law cited).
86 As OHIM correctly states, when a mark is composed of word and figurative elements, as is the case with the earlier mark, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the mark (see judgment in LA VICTORIA DE MEXICO, cited in paragraph 85 above, EU:T:2012:36, paragraph 38 and the case-law cited).
87 In the present case, the element ‘harrys’ in the earlier mark, which is written in a very legible font, is, having regard to its size, stylised nature and central position, immediately perceptible and very easily recognizable.
88 In view of those considerations, the Board of Appeal rightly found that the word element ‘harrys’ was dominant in the earlier mark, whereas the additional word elements had no distinctive character. It took the view that the difference in style of the word elements was not of importance and that the device element would be perceived as merely decorative by the relevant public. It found that the element ‘Harrys’ would provide an objective indication of the type of establishment operated by the person named Harry, without, however, identifying the origin of the goods or services in question.
89 Next, as regards, first, the visual comparison of the signs at issue, it must be pointed out 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).
90 It must also be pointed out that, although the average consumer of the goods and services in question normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when he perceives a word element within a figurative sign, he will break that word element down into elements which, for him, suggest a specific meaning or which resemble words known to him (see judgment of 6 September 2013 in Eurocool Logistik v OHIM — Lenger (EUROCOOL), T‑599/10, EU:T:2013:399, paragraph 104 and the case-law cited).
91 In the present case, it is necessary, at the outset, to reject the arguments of Harry’s New York Bar relating to the errors which the Board of Appeal allegedly made in its assessment of the visual, phonetic and conceptual similarity between the signs at issue. Harry’s New York Bar refers solely to the contested Community trade mark HARRY’S BAR in Joined Cases T‑711/13 and T‑716/13 and does not set out any specific arguments in connection with the Community trade mark application HARRY’S NEW YORK BAR. Those arguments must therefore be rejected as irrelevant.
92 As regards the assessment of the similarity between the mark applied for and the earlier mark, the Board of Appeal’s finding that the signs at issue are visually similar on the ground of the presence of the word ‘harry’, which ends in an ‘s’ in the earlier mark and in an apostrophe and an ‘s’ in the mark applied for, must be upheld. In both the earlier mark and the mark applied for, the elements ‘harrys’ and ‘harry’s’ will be understood as a reference to the English first name Harry in the possessive case as a final ‘s’ is, in Swedish, the sign of the genitive case and is equivalent to an ‘s’ preceded by an apostrophe in English. That finding is not called into question by the argument of Harry’s New York Bar that the word ‘harrys’ in the earlier mark in actual fact represents a plural form. Although the plural of first names ending in ‘y’ is generally ‘ys’ in English, by contrast with any other word with the same ending, the plural of which is generally ‘ies’, the Swedish public will as a matter of course perceive the final ‘s’ in the word ‘harrys’ as a possessive reference.
93 The other word elements in the earlier mark, namely ‘pub’, ‘casino’ and ‘restaurang’, and the element ‘bar’ in the mark applied for are likely to be perceived by the consumer as essentially decorative, if not descriptive, and as designating the place in which the sale of food and beverages or the consumption of those goods or of goods which are generally associated with them occurs. Those additional word elements are thus negligible in the overall impression created by the marks at issue.
94 The graphic element is also not capable of establishing a substantial difference between the mark applied for and the earlier mark from a visual point of view. The earlier mark emphasises the word ‘harrys’, which is in the central and most eye-catching position, whereas the other word elements contained in the upper or lower parts of that mark are visually ancillary in nature.
95 The general impression created by the mark applied for is similar to that created by the earlier mark in spite of the presence of the element ‘new york’. That designation is of only limited importance, since it will, in combination with the words ‘harry’s’ and ‘bar’, be perceived by the relevant public as evoking a certain style of bar operated by the person named Harry.
96 Secondly, from a phonetic standpoint, on account of the natural tendency of consumers to abbreviate long signs and on account of the descriptiveness of the terms ‘pub’, ‘casino’ and ‘restaurang’, which was referred to in paragraph 93 above, not all of the word elements in the earlier mark will be pronounced (judgment of 9 April 2013 in Italiana Calzature v OHIM — Vicini (Giuseppe GIUSEPPE ZANOTTI DESIGN), T‑336/11, EU:T:2013:156, paragraph 40). It follows that, in the earlier mark, only the term ‘harrys’ will be pronounced by the relevant public. Although the mark applied for will, by contrast, in all likelihood, be pronounced in its entirety, a certain degree of phonetic similarity deriving from the word ‘harry’s’ continues to exist, particularly because the word ‘bar’ is descriptive with regard to the goods and services concerned.
97 Harry’s New York Bar refers to two of the other signs cited in opposition, in which the word ‘casino’ in the earlier mark is replaced by the word ‘café’, in order to submit that all the words in the signs cited in opposition are equally important and should be pronounced. However, that claim is irrelevant, since the contested decision is based solely on the examination of whether there is a likelihood of confusion between the mark applied for and the earlier mark.
98 Thirdly, from a conceptual standpoint, the similarity of the marks at issue must be assessed, first, in relation to the understanding of those marks by the relevant public and, secondly, in relation to the goods or services concerned (see judgment of 9 July 2008 in Coffee Store v OHIM (THE COFFEE STORE), T‑323/05, EU:T:2008:265, paragraph 33 and the case-law cited).
99 As OHIM rightly points out, Harry is a common English first name which the Swedish public will be able to identify as a male first name because it is familiar with that name and also because it is the name of a number of famous characters. Although the use of a person’s name as a trade name is a relatively common practice in the catering sector, the marks at issue are conceptually similar inasmuch as the relevant public may of course think that the goods and services concerned have been produced or are being offered by an undertaking bearing that name. In spite of the fact that the first name Harry in the marks at issue does not convey any exact information regarding the identity of the manufacturer of the goods or the supplier of the services, it enables the public concerned to distinguish the goods or services covered by the marks containing that first name from those which have a different commercial origin and to conclude that all the goods or services covered by those marks have been manufactured, marketed or supplied under the control of the proprietors of those marks and that those proprietors are responsible for their quality (see judgment of 21 May 2014 in Bateaux mouches v OHIM (BATEAUX-MOUCHES), T‑553/12, EU:T:2014:264, paragraph 34 and the case-law cited).
100 Furthermore, there is also a high degree of conceptual similarity between the word ‘bar’, on the one hand, and the words ‘pub’ and ‘restaurang’, on the other hand, as those words all refer to places in which food and beverages and services relating thereto are sold or consumed. By contrast, the word ‘casino’ refers to games for entertainment and to recreational and betting activities and may thus have a different meaning, as is stated by Harry’s New York Bar. However, as the earlier mark is registered in respect of the serving of food and drink and not in respect of entertainment activities, the above-mentioned conceptual similarity between the marks at issue will not be affected.
101 In the light of the foregoing considerations, it must be held that the marks at issue are conceptually similar.
102 Consequently, it must be held that the marks at issue are similar.
The likelihood of confusion
103 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 those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 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 74).
104 Furthermore, as is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (judgment of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24; judgment in Canon, cited in paragraph 103 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).
105 The Board of Appeal found that there could be no likelihood of confusion between the earlier mark and the mark applied for in relation to the goods in Class 30 and in relation to the goods in Class 32 corresponding to ‘non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa-based beverages and milk beverages); mineral and aerated waters; fruit drinks and fruit juices; syrups’ since it had ruled out any similarity between those goods and the services covered by the earlier mark. By contrast, it maintained that the relevant public might regard the goods in Class 25, the ‘beers’ in Class 32 and the services in Class 43 designated by the mark applied for as coming from the same undertakings. The Board of Appeal added, first, that, although the first name Harry is a common name, it is not devoid of any distinctive character and, secondly, that the stylisation and the integration of the first name within the device element of the earlier mark, as well as the designation of the city of New York in the mark applied for, are not sufficient to avoid a likelihood of confusion.
106 Harrys Pubar maintains that there is a likelihood of confusion between the marks at issue in relation to all the goods and services covered by the mark applied for.
107 Harry’s New York Bar submits that the Board of Appeal made a methodological error and disregarded the requirement of a global assessment of the likelihood of confusion, which takes into account all factors relevant to the circumstances of the case and the overall impression created by the marks at issue.
108 In the present case, since it has been pointed out that all the goods and services covered by the mark applied for are identical or similar to those covered by the earlier mark and that the marks at issue are similar, it must be held that there is a likelihood of confusion on the part of the relevant public in respect of all the goods and services for which registration has been sought.
109 The foregoing finding is not called into question by the observations of Harry’s New York Bar which refer solely to the contested Community trade mark HARRY’S BAR in Joined Cases T‑711/13 and T‑716/13. Those arguments are irrelevant and must therefore be rejected.
110 The argument of Harry’s New York Bar alleging that the first name Harry has limited distinctive character as a component of the earlier mark must also be rejected. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70 and the case-law cited). That is the case here. Even if the earlier mark had a weak distinctive character, which is not established, it would, in any event, in the light of the factors referred to in paragraph 108 above, have to be held that there is a likelihood of confusion between the two marks at issue.
111 It follows from the foregoing that, in Case T‑84/14, Harrys Pubar’s plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be upheld. Consequently, points 1 of the operative part of the contested decision relating to Cases R 1038/2012-1 and R 1045/2012-1 must be annulled.
112 It also follows from the foregoing that, in Case T‑97/14, the plea in law of Harry’s New York Bar alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected. Since that plea and the plea alleging infringement of recital 10 and Article 42(2) and (3) of Regulation No 207/2009 have been rejected, the action in that case is consequently dismissed.
Costs
113 Under Article 134(1) 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.
114 In the circumstances of the present case, since the action brought by Harrys Pubar is well-founded and the action brought by Harry’s New York Bar is dismissed, OHIM must be ordered to bear its own costs and to pay one third of the costs incurred by Harrys Pubar and Harry’s New York Bar must be ordered to bear its own costs and to pay two thirds of the costs incurred by Harrys Pubar.
115 Furthermore, Harrys Pubar, as intervener in Case T‑97/14, claimed that Harry’s New York Bar should be ordered to pay the costs that Harrys Pubar had incurred in the administrative proceedings before OHIM. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the request by Harrys Pubar that Harry’s New York Bar, having been unsuccessful, be ordered to pay the costs of the proceedings before the Board of Appeal and the Opposition Division can be allowed only as regards the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see to that effect, judgment of 12 January 2006 in Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, ECR, EU:T:2006:10, paragraph 115).
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Annuls, in Case T‑84/14 points 1 of the operative part of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 November 2013 (joined Cases R 1038/2012-1 and R 1045/2012-1), relating to opposition proceedings between Harrys Pubar AB and Harry’s New York Bar SA;
2. Dismisses, in Case T‑97/14, the action brought by Harry’s New York Bar;
3. Orders Harry’s New York Bar to bear its own costs, to pay two thirds of the costs incurred by Harrys Pubar in the proceedings before the General Court and to pay the costs incurred by Harrys Pubar in the course of the proceedings before the Board of Appeal of OHIM. OHIM is ordered to bear its own costs and to pay one third of the costs incurred by Harrys Pubar in the proceedings before the General Court.
Kanninen | Pelikánová | Buttigieg |
Delivered in open court in Luxembourg on 18 February 2016.
[Signatures]