JUDGMENT OF THE GENERAL COURT (Second Chamber)
22 May 2012 (*)
(Community trade mark – Opposition proceedings – Application for figurative Community trade mark O•LIVE – Earlier Community and Spanish figurative and word marks Olive line – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑273/10,
Olive Line International, SL, established in Madrid (Spain), represented by P. Koch Moreno, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Schäffner, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Umbria Olii International Srl, established in Rome (Italy), represented by E. Montelione, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 14 April 2010 (Case R 4/2009-4), relating to opposition proceedings between Olive Line International, SL and O. International Srl,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood, President, F. Dehousse and J. Schwarcz (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 18 June 2010,
having regard to the response of OHIM lodged at the Registry of the General Court on 28 September 2010,
having regard to the response of the intervener lodged at the Registry of the General Court on 16 September 2010,
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 give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 26 February 2007, the applicant, Olivella Srl. established in Campello sul Clitunno (Italy), filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark, combining the colours green and black, whose registration was applied for was the following figurative sign:
3 After the restriction made during the proceedings before OHIM, the goods and services in respect of which registration was sought are in Classes 3 and 44 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 3: ‘Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’;
– Class 44: ‘Medical services; veterinary services; hygiene and beauty care for humans and animals; agriculture, horticulture and forestry services’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 40/2007 of 6 August 2007.
5 On 18 October 2007, the applicant, Olive Line International SL, filed a notice of opposition to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based on the following earlier rights:
– Community figurative trade mark, reproduced below, registered on 14 May 2007 under number 5.086.657, for, inter alia, ‘Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cosmetic creams, all olive oil-based’ in Class 3:
– Spanish figurative mark, identical to the earlier Community trade mark cited above, registered on 21 May 2007 under number 2 741 533, for, inter alia, the same products as those covered by that Community trade mark in Class 3;
– Spanish word mark Olive line, registered on 22 July 2003 under number 2525564 for the following products in Class 3: ‘soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cosmetic creams, all olive oil‑based’.
7 The ground relied on in support of the opposition was the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 On 14 March 2008, the transfer of the application for a Community trade mark to O. International Srl was registered with OHIM.
9 On 31 October 2008, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion between the marks in question.
10 On 23 December 2008, the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
11 On 29 December 2009, the intervener, Umbria Olii International Srl, acquired O. International. On 12 February 2010 that acquisition was registered in the Italian register of companies. As the direct successor of the latter company, the intervener replaced it in exercising rights in connection with the application for a Community trade mark at issue. On 8 September 2010 the registers of OHIM were brought up to date in that regard.
12 By decision of 14 April 2010 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal and upheld the decision of the Opposition Division.
13 As regards the comparison of the goods and services it took the view, essentially, that some of those in respect of which registration had been applied for were identical to the goods protected by the earlier marks or were similar to them.
14 The Board of Appeal took the view, first, when comparing the trade mark applied for with the earlier Spanish word mark, that their only common element, the word, ‘olive’, described an important characteristic of the goods concerned, namely their ingredients. According to the Board of Appeal, the second element of that earlier mark, ‘line’, would be perceived by the relevant consumers as describing a line of products. Therefore the distinctive character of this mark lies only in the combination of the two words it comprises, or indeed, it has no distinctive character. The descriptive and, therefore, non-distinctive, character of the earlier mark and its weak degree of similarity to the trade mark applied for were sufficient, according to the Board of Appeal, to exclude any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 even for goods and services which have been held to be identical or similar.
15 The Board of Appeal took the view, second, as regards the comparison of the trade mark applied for with the earlier figurative marks, that the same considerations applied by analogy, as the differences were further accentuated by the particular graphic features of those marks. As regards the earlier Community trade mark, the Board of Appeal stated, inter alia, that the word ‘olive’ would be understood throughout the relevant territory, since it is an English word and because identical or similar words also exist in other languages of the European Union. Moreover, it was easier to understand because of the presence of the image of a stylised olive leaf and because it is well known that olive oil is a product which is good for health and is contained in beauty products. According to the Board of Appeal, the word ‘line’ is also easily understood throughout the Union, since it is a part of basic English vocabulary. Finally, the Board of Appeal took the view that, if some of the relevant consumers did not notice the reference to olives by the earlier figurative marks, they would read it as cllive line or celive line, which would rule out any risk of confusion.
Forms of order sought
16 The applicant claims that the Court should:
– declare that the contested decision is contrary to Regulation No 207/2009;
– order OHIM and, in so far as is necessary, the intervener to pay the costs.
17 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility
18 OHIM claims that the action is inadmissible since the applicant is asking the General Court to ‘declare’ that the contested decision does not comply with Regulation No 207/2009. It maintains that, under Article 65(3) of that regulation, the General Court has jurisdiction only to annul or to alter the contested decision, but not to declare that it is contrary to the regulation.
19 It must be observed, in that regard, first, that the General Court has no jurisdiction, in a review of legality based on Article 230 EC (now Article 263 TFEU), to make a declaratory judgment (see, to that effect, Order of the Court in Case C‑224/03 [2003] ECR I‑14751, paragraphs 20 to 22).
20 However, first, it must be observed that it is clear from the application that the applicant is relying on a plea of breach of Article 8(1)(b) of Regulation No 207/2009. In paragraph 27 of the application, in particular, it claims that ‘the application to [the trade mark applied for] of the prohibition established in Article 8(1)(b) of [Regulation No 207/2009] is appropriate’. Similarly, in paragraph 9 et seq. of the application, the applicant put forward specific reasons why, in its view, the contested decision infringes the above provision.
21 Second, it must be observed that the applicant’s claim that the Court should ‘declare that the [contested decision] does not comply with [Regulation No 207/2009]’ necessarily implies an application for annulment of the contested decision. Moreover, it must be pointed out that both OHIM and the intervener set out, in their submissions, arguments against the annulment of the contested decision.
22 Therefore, it must be considered that the present action seeks the annulment of the contested decision. In that regard, according to settled case-law, if, despite the wording of the form of order sought in the application, it is clear from the application that the applicant seeks, in substance, the annulment of the contested decision, the application must be considered to be admissible (Case T‑43/05 Camper v OHIM-JC (BROTHERS by CAMPER) [2006] ECR II‑95, paragraph 26 and the case-law cited).
23 Having regard to the foregoing observations, the General Court holds the action admissible.
Substance
24 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. It argues, essentially, that the Board of Appeal wrongly claims that there is no likelihood of confusion between the contested trade mark and the earlier marks.
25 The Commission challenges the arguments put forward by the applicant.
26 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 may 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
27 In accordance with settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and case-law cited).
28 For the purposes of that global assessment, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. Account should, however, be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. 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 GIORGIO BEVERLY HILLS, paragraph 27 above, paragraph 33 and case-law cited).
29 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 Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
30 Moreover, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 24), it is only one factor among others in that assessment. Accordingly, there may be a likelihood of confusion even where an earlier mark has a weak distinctive character, especially where the signs at issue, and the goods or services in question, are similar (see, to that effect, Case T‑112/03 L’Oréal v OHMI – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 61, and Case T‑72/08 Travel Service v OHMI – Eurowings Luftverkehrs (smartWings), not published in the ECR, paragraph 63).
31 The question whether the Board of Appeal was correct to hold that there was no likelihood of confusion between the earlier mark and the trade mark applied for must be examined in the light of those considerations.
Comparison of the goods and services at issue
32 First, as regards the ‘[b]leaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations’ in Class 3 covered by the trade mark application, the Board of Appeal took the view, in paragraph 19 of the contested decision, that those products had a ‘marginal’ similarity to the body care products protected by the earlier marks, especially to ‘soaps’. According to the Board of Appeal, although the above products covered by the trade mark application are chemical preparations and, as such, somewhat similar to the products protected by the earlier marks, they are not, on the other hand, intended to be applied to the human body. Similarly, according to the Board of Appeal, the distribution channels and producers of the products are usually different. Consumers, it argues, generally do not expect the conflicting products to be produced by the same undertakings.
33 Next, as regards the other products covered by the trade mark application in Class 3, namely, ‘soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’, the Board of Appeal found, in paragraph 21 of the contested decision, that those products were included in the list of products protected by the earlier marks.
34 Finally, as regards the services in Class 44, the Board of Appeal took the view, in paragraph 20 of the contested decision, with regard to ‘Medical services; veterinary services; agriculture, horticulture and forestry services’ that those services were different from the products protected by the earlier marks. In that connection, the Board of Appeal pointed out the differences relating to their nature, their destination, their method of use and their distribution channels.
35 As regards the other services in Class 44 covered by the trade mark application, namely ‘hygiene and beauty care for humans and animals’, the Board of Appeal found that they were similar to the goods in Class 3 protected by the earlier trade marks to the extent that they shared the purpose of beauty care and could be provided by the same undertakings.
36 In that regard, while the applicant, in referring in paragraph 21 of the application to all the products in Class 3 covered by the marks at issue as ‘in part identical and in part similar’, wished to dispute the assessment of the Board of Appeal, summarised in paragraph 32 above, that the products listed in that paragraph had only ‘marginal’ similarity with the products protected by the earlier marks, it must be observed that it did not adduce any specific argument or evidence in support of its allegation. Next, it must be considered that the Board of Appeal was right to assess the nature, the destination, the distribution channels and the producers of the products at issue. Moreover, it must be observed that, at paragraph 22 of the application, the applicant seems, rather, to have accepted that those assessments of the Board of Appeal were well founded. Accordingly, the above allegation by the applicant must be rejected as unfounded to the extent that it must be understood as suggesting that the products listed in paragraph 32 above had a more than ‘marginal’ similarity with the products protected by the earlier marks.
37 As regards the other goods and services at issue, in so far as the parties to the dispute cast no doubt on the views of the Board of Appeal, account should be taken of the above premises in the assessment of the legality of the contested decision, that is to say that the products covered by the trade mark application mentioned in paragraph 33 above are identical and that the services covered by the trade mark application mentioned in paragraph 35 above are similar to certain products protected by the earlier marks.
The relevant public and its attentiveness
38 It must be observed, first, that the Board of Appeal referred, in paragraph 22 of the contested decision, to the average consumer, who is reasonably well-informed, reasonably observant and circumspect. Then, as is apparent from paragraphs 38 and 42 of the contested decision, the Board of Appeal took account, first, of the perception of the marks at issue by such a consumer in Spain in relation to the two earlier Spanish marks, and, second, of their perception by that consumer in the whole of the Union, in relation to the earlier Community trade mark.
39 The applicant argues that the products in Class 3 covered by the conflicting marks are clearly intended for mass consumption and that, consequently, the relevant consumers show only a low level of attention when making their purchase. OHIM, however, maintains that the relevant consumer is ‘attentive’ when purchasing those products, since they are body care products. In particular, according to OHIM, that consumer pays attention to the ingredients of those products, takes account of his own personal preferences, sensitivity, allergies and type of the skin and hair, as well as the required effect. The intervener refers to an average consumer, who is reasonably well informed, reasonably observant and circumspect.
40 In that regard, it must be held that, contrary to the applicant’s allegation, consumers’ level of attention is not low for the products at issue, such as soaps, perfumery, essential oils, cosmetics, hair lotions or dentifrices. Although it is true that, as the applicant states, the products at issue are everyday consumer goods, and, in the case of such goods, the average consumer’s level of attention is less than that paid to durable goods or, simply, goods of a higher value or for more exceptional use (see, to that effect, Case T‑460/05 Bang & Olufsen v OHIM (Shape of a loudspeaker) [2007] ECR II‑4207, paragraph 33), the fact remains that the applicant has not adduced facts and evidence to support its allegation that the consumer’s level of attention is ‘low’ with regard to the products (see, by analogy, judgment of 23 September 2009 in Case T‑391/06 Arcandor v OHIM‑dm drogerie markt (S-HE), not published in the ECR, paragraph 29.
41 In particular, it must be pointed out that, contrary to the applicant’s submission, in its judgments in FLEXI AIR, paragraph 30 above, and of 13 April 2005 in Case T‑286/03 Gillette v OHIM – Wilkinson Sword (RIGHT GUARD XTREME sport), not published in the ECR, the General Court did not conclude that consumers’ level of attention was ‘low’ but that their level of attention was not particularly high (FLEXI AIR, paragraph 58, and RIGHT GUARD XTREME sport, paragraphs 19 to 22). The same applies as regards the judgment in Case T‑355/02 Mühlens v OHIM – Zirh International (ZIRH) [2004] ECR II‑791, cited by the applicant in support of its allegation. According to paragraph 37 of that judgment, the public buying everyday goods must be considered to be reasonably well‑informed and reasonably observant and circumspect. Having regard to the above considerations, OHIM’s argument seeking essentially to dispute the assessment of the Board of Appeal as to the level of attention of the relevant public should also be rejected as unfounded without it being necessary to analyse whether it has established an interest in making a claim for the amendment of the contested decision on that point so as to find a higher level of attention.
42 It follows that, in the present case, account must be taken, as the Board of Appeal rightly found, of an average consumer, who is reasonably well-informed and reasonably observant and circumspect.
Comparison of the marks
43 Two marks are similar, within the meaning of Article 8(1)(b) of Regulation No 207/2009, when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see Case T‑286/02 Oriental Kitchens v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 38 and the case‑law cited).
44 The global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression given by them, 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 proceed to analyse its various details (Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529 paragraph 35).
45 The 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. 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. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components of the mark are negligible in the overall impression created by it (see Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II‑3085, paragraph 40 and the case-law cited).
46 Furthermore, 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 Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II‑1515, paragraph 43 and the case-law cited).
47 In the present case, as regards the comparison of the trade mark applied for with the earlier Spanish mark, Olive line, the Board of Appeal, first, described the trade mark applied for in paragraph 28 of the contested decision. It stated that it consists of a rectangular label with a black background in which there is a white strip featuring a sign consisting of an uppercase letter ‘0’ that has an olive leaf resting on its left side, followed by a dot and by the word ‘LIVE’ in uppercase letters. According to the Board of Appeal, the colours claimed in the trade mark applied for, namely a particular shade of olive-green and black, and the various graphic elements fulfil only an ornamental or decorative function. According to the Board of Appeal, because of its simplicity, the leaf on the letter ‘0’ is not likely to dominate the mark. The Board of Appeal stated that, in the presence of a pronounceable word, in the case at hand, ‘olive’, such graphic elements of an ornamental nature constitute the weak parts of the mark and consumers are likely to refer to the mark by its word element.
48 Next, in paragraphs 29 to 31 of the contested decision, the Board of Appeal found, as regards the earlier word mark, that, since all the applicant’s products in Class 3 on which the opposition was based are expressly described as being ‘all olive-oil based’, the word ‘olive’ described one of their important characteristics, namely, one of their ingredients. The word ‘line’, because of its similarity with the Spanish word with the same meaning ‘linea’, would, in its view, be perceived by consumers as indicating the connection between certain products having the same manner of preparation or characteristics, namely a line of products. Therefore, according to the Board of Appeal, the combination of the words forming the earlier word mark lacks distinctiveness, and is being perceived by the Spanish consumer as an indication that the aforementioned cosmetic products are made from olives and are members of the same product line.
49 As regards the trade mark applied for, the Board of Appeal, having pointed out that the size of the letter ‘0’ and the clearly perceptible dot between the letter ‘0’ and the uppercase ‘LIVE’ create a further visual distance between the two elements, stated that the leaf on the letter ‘0’ will be easily perceived by the Spanish consumer as a leaf of an olive tree and associated with the olive as the fruit of such a tree. In those circumstances, the Board of Appeal took the view that the distinctiveness of the mark applied for is based only on its graphic elements.
50 The Board of Appeal took the view that, visually, the signs at issue coincide in the term ‘olive’ and differ in all their other elements. As it held, however, that the common term is descriptive and, on that account, not distinctive, the Board of Appeal took the view that it could not lead to any legally relevant similarity between them. As all the other elements of the marks are different, the overall impression for consumers will, in its view, be that the marks are visually similar only to a low degree.
51 Aurally, the Board of Appeal took the view in paragraph 33 of the contested decision, first, that only the verbal features would be pronounced. The marks coincide only in the pronunciation of the descriptive and, therefore, weak term ‘olive’, even though the further term of the earlier word mark is also pronounced as one or two syllables, ‘lain’ or ‘li/ne’, as the case may be. The Board of Appeal therefore concluded that the degree of aural similarity of the signs is below average.
52 The Board of Appeal took the view, in paragraph 34 of the contested decision, that, from a conceptual perspective the common word ‘olive’ and the further term of the earlier mark ‘line’ would be understood by the average Spanish end consumer as referring to products or product lines based on olives or olive oil. Thus, the marks at issue refer to a similar concept. However, according to the Board of Appeal, since the similar concept is descriptive as to certain characteristics of the goods concerned, they cannot contribute to any relevant conceptual similarity between the marks at issue.
53 The applicant disputes the assessments of the Board of Appeal as to the merely weak degree of visual, aural and conceptual similarity between the marks at issue because of the weak distinctiveness of their common element, namely the word ‘olive’. According to the applicant there is, on the contrary, a high degree of similarity between the marks at issue at each of the three levels of comparison, since the word part of the trade mark applied for is completely included in the earlier marks and, moreover, in their first part, which is the distinctive element of it.
54 OHIM maintains, on the one hand, that the graphical representation of the word ‘olive’ within the Community trade mark application as well as its figurative elements are visually striking, and, on the other hand, that the earlier mark comprises the additional word ‘line’ which is not negligible in the comparison of the marks at issue. OHIM stresses, in that regard, the importance of the consideration of any stylistic difference between the marks. According to OHIM, the Board of Appeal was right to take the view that the similarity of the marks at issue because of the common element ‘olive’ cannot be considered to be legally relevant in so far as it is a descriptive word which does not dominate the earlier word mark. The latter would be perceived as a whole, without the relevant public paying particular attention to the beginning, namely the word ‘olive’. Moreover, the various judgments cited by the applicant are, according to OHIM, irrelevant, since they concern marks which coincide in their distinctive elements and not, as in the present case, in their descriptive elements. As regards a phonetic comparison, OHIM refers, by analogy, to the same principles and maintains, inter alia, that the examination of similarity must take account of the overall impression of the marks at issue. Conceptually, OHIM points out that the applicant’s argument that the similarity of the marks at this level increases their overall similarity and is based on the erroneous presumption that the word ‘olive’ is more distinctive than the word ‘line’ in the earlier mark. According to OHIM, as those words are both descriptive, neither can be considered to be the distinctive and dominant element in the overall impression produced by that mark.
55 The intervener, essentially, supports the findings of the Board of Appeal. It points out, in particular, that, visually, the initial elements of the marks at issue are similar only to a limited extent, a relevant additional difference being created by the different graphic elements present in the trade mark applied for, such as the combination of the letter ‘o’ with a hyphen, the olive leaf resting on the left side of that letter and the rectangular black background with a white strip featuring a verbal element in upper case letters. The intervener argues that the graphic elements are particularly important when the word elements do not have a clearly distinctive character and also maintains that it is only in certain particular cases, in particular in the presence of very short word elements, that the principle that the first part of a sign is more important than the rest applies. The intervener maintains that, phonetically, the marks at issue do not have the same structure and do not have the same rhythm either, as the presence of the second element of the earlier mark, ‘line’, allows the relevant public to distinguish the marks at issue. The intervener argues that, where the marks are conceptually similar because of elements describing the products at issue, that similarity cannot be considered relevant.
56 First, it must be recalled that, according to the case-law, the weak distinctive character of an element of a complex mark does not necessarily mean that that element cannot constitute a dominant element where, owing, in particular, to its position in the sign or its size, it may make an impression on consumers and be remembered by them (judgment of 14 September 2011 in Case T‑485/07 Olive Line International v OHIM – Knopf (O-live), not published in the ECR, paragraph 84 and the case-law cited).
57 That case-law is not inconsistent with that in Case T‑202/04 Madaus v OHIM – Optima Healthcare (ECHINAID) [2006] ECR II‑1115, paragraph 54, relied on by OHIM, and according to which, the public will not generally consider a descriptive element forming part of a complex mark to be the distinctive and dominant element of the overall impression conveyed by that mark. That does not prevent it, in certain circumstances, because, in particular, of its position in the sign or its size, from making an impression on consumers and being remembered by them (O-live, paragraph 56 above, paragraph 85 and case-law cited).
58 In the present case, first, it must be held that, in the trade mark applied for, the word element ‘olive’ has characteristics which enable it to make an impression immediately on the perception of the relevant public, so that it is that element which the public will remember. Indeed, as the Board of Appeal rightly found, in paragraph 28 of the contested decision, and contrary to the argument of OHIM and the intervener, the colours and the background pattern fulfil only an ornamental or decorative function (see paragraph 47 above). In that regard, first, the small size and simple graphic features of the olive leaf and, second, the legibility of the word ‘olive’ in the trade mark applied for must be emphasised, notwithstanding the presence of a full stop of negligible size between the initial letter ‘o’ and the four following letters, ‘l’, ‘i’, ‘v’ and ‘e’, and regardless of a certain difference in the size of the letters used.
59 Moreover, having regard to the foregoing observations, it must be found that the statement by the Board of Appeal in paragraph 31 of the contested decision that the distinctive character of the mark lay only in its graphic features is inconsistent with its finding that the graphic elements of the trade mark applied for were purely decorative and weak. Such an assessment does not take account of the fact that where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (Case T‑312/03 Wassen International v OHIM-Stroschein Gesundkost (SELENIUM-ACE) [2005] ECR II‑2897, paragraph 37). That is particularly so where the figurative elements of the trade mark applied for do not have any particularly striking features which the relevant consumers might remember (see paragraph 58 above in fine).
60 Second, as regards the earlier word mark, it must be considered, first, that the Board of Appeal was right to state, in paragraph 29 of the contested decision, read in conjunction with paragraph 42 of that decision, that the word element ‘line’, a basic English word, would be understood in Spain because of its similarity with the Spanish word ‘linea’, as indicating the connection between certain products having the same manner of preparation or characteristics, namely a line of products. Moreover, it must be recalled that, according to case-law, when such a word, which is an element used frequently in trade to designate a collection or range of products, is placed at the end of a trade mark, it will attract the attention of the public less because of its position and its weak distinctive character in the mind of the average consumer of the products at issue (see, to that effect, O-live, paragraph 56 above, paragraph 87 and the case-law cited).
61 However, the conclusion drawn by the Board of Appeal in that paragraph of the contested decision, that because of the similarly descriptive character of the word ‘olive’ in the earlier word mark, that mark, overall, lacked distinctive character, which, moreover, had the consequence, as is apparent from paragraphs 32 to 34 of the contested decision, that the similarities between the marks owing to the common element ‘olive’ were without legal relevance, cannot be upheld.
62 It is true that the word ‘olive’, as the Board of Appeal found, may be considered to be descriptive with regard to the characteristics of the products referred to by the earlier word mark. However, given the place at the beginning of the mark of the word element ‘olive’ and given its length compared with the mark as a whole, that element cannot be ignored, particularly when the only other element present in that mark, ‘line’, is also descriptive. Accordingly, it must be held that neither of the two elements of the earlier word mark can be considered dominant or negligible. It is therefore the overall impression conveyed by the trade mark applied for which must be taken into account (see, by analogy, Case T‑61/09 Meica v OHIM – Bösinger Fleischwaren (Schinken King) [2011] ECR II‑0000, paragraph 47).
63 Next, as regards the comparison of the conflicting marks in visual terms, the Board of Appeal was right to take the view that the marks coincided only in their word element ‘olive’. However, since it is, on the one hand, as held in paragraphs 58 and 62 above, the element of the trade mark applied for which will be remembered by the relevant consumers, and, on the other hand, the first of the two elements with equivalent distinctive force in the earlier word mark, it must be considered that the visual similarity resulting from the presence of that common element cannot be described merely as weak but rather as average.
64 As regards the comparison of the marks in phonetic terms, it must be considered that, although the Board of Appeal was right to state that only their word elements were pronounced, its conclusion that the degree of similarity of the marks was merely below average because of the presence of the second word element ‘line’, in the earlier mark at issue, cannot be upheld.
65 The General Court takes the view that the phonetic similarity between the marks at issue, caused by the fact that the word element of the trade mark applied for is fully included in the earlier mark, is greater than the visual similarity, despite the difference caused by the second word element ‘line’ at the end of the earlier mark. Moreover, in the circumstances of this case, the descriptive character of the word ‘olive’ cannot be considered to allow such phonetic similarity to be disregarded, since it has not been argued, nor, a fortiori, demonstrated, that because of that character the relevant Spanish consumers would not pronounce that word or that they would particularly stress, in their pronunciation, the second word in the earlier word mark.
66 As regards the comparison of the marks at issue in conceptual terms, it must be held, first, that the Board of Appeal was right to take the view that they made reference to similar concepts which would be understood by the average Spanish consumer (see paragraph 52 above). It must be pointed out, first, that the word element, ‘olive’, which refers in English inter alia to the fruit of the olive tree, is fairly close to the Spanish term with the same meaning, ‘oliva’. Second, in the trade mark applied for, the presence of a figurative element in the shape of a leaf of an olive tree contributes to the understanding of that concept on the part of the relevant public. As regards the word ‘line’, it has already been held in paragraph 60 above that the assessments of the Board of Appeal as to its comprehension by the relevant public, which were, moreover, not disputed by the parties to the case, were correct.
67 However, it must be held that the Board of Appeal made an error in taking the view that, since those concepts were descriptive in relation to the products in question, they could not contribute to any relevant conceptual similarity between the marks at issue. The weak distinctive character of the word element ‘olive’ in relation to those products cannot call into question the conclusion that there are similar concepts creating a certain link between the marks at issue, given that, as pointed out in paragraphs 58 to 62 above, that element is the one remembered by the public faced with the trade mark applied for and constitutes one of the two elements of equivalent distinctive force in the earlier word mark. Moreover, in line with the finding of the Board of Appeal in paragraph 34 of the contested decision, it must be held that the second element present in the earlier mark does not bear an autonomous conceptual meaning differentiating it from the trade mark applied for.
68 It follows that, contrary to the assessment of the Board of Appeal, the marks in question are similar from a conceptual point of view.
The likelihood of confusion
69 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see O-live, paragraph 56 above, paragraph 100 and the case-law cited).
70 The Board of Appeal took the view, first, in paragraph 36 of the contested decision, as regards ‘medical services; veterinary services; agriculture, horticulture and forestry services’ that, since they were different from the products protected by the earlier marks, one of the conditions laid down by Article 8(1)(b) of Regulation No 207/2009 was not fulfilled. It therefore rejected the opposition in relation to those services.
71 In paragraph 37 of the contested decision, the Board of Appeal took the view, next, as regards ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations’ in Class 3 referred to in the trade mark application, that, since their similarity to the products protected by the earlier marks was only ‘marginal’, and taking into consideration the visual and aural differences between the marks, there could be no likelihood of confusion for those goods.
72 As regards the other goods and services at issue, the Board of Appeal held, in paragraphs 38 to 40 of the contested decision, essentially, that the earlier word mark was descriptive for the goods which were identical or similar to the goods and services referred to by the trade mark application. According to the Board of Appeal, its inherent distinctiveness is, therefore, nearly reduced to the combination of the two words or even non-existent. Whether or not the mark at issue had been registered by the Oficina Española de patentes y Marcas (Spanish patent and trade mark office) on account of its graphic or word elements was, in its view, irrelevant.
73 Consequently, the Board of Appeal took the view that it was possible to rule out any likelihood of confusion between the marks at issue because of the descriptive, and therefore non-distinctive, character of the earlier word mark and because of the low similarities between those marks. The Board of Appeal stated that, in legal terms, a non-distinctive element could not in itself give rise to a likelihood of confusion with a trade mark applied for. Moreover, according to the Board of Appeal, consumers to whom the descriptive character of the term ‘olive’ is readily apparent would not infer a common commercial origin of the goods simply because they encountered this descriptive expression as an element of another mark, in the absence of similarities of other non-descriptive elements. Similarly, according to the Board of Appeal, the applicant cannot rely on the sole fact of having registered the mark as the basis of its protection, unless the mark has been registered on the basis of market acceptance which the applicant has not alleged in the case at hand.
74 However, the applicant claims that there is a likelihood of confusion between the two conflicting marks, because, first, they display obvious similarities in visual, phonetic and conceptual terms and, second, they are intended to protect the same or similar goods and services and are thus present on the same markets.
75 OHIM supports the findings of the Board of Appeal. Its view is essentially that consumers who immediately perceive the descriptive character of the word ‘olive’ will not infer a common commercial origin of the goods and services at issue from the mere presence of that word in the two conflicting marks. Any likelihood of confusion is ruled out by the visual, phonetic and conceptual differences between the marks viewed as a whole, by the high degree of attention paid by the relevant public when buying the goods at issue and by the very low distinctiveness of the marks at issue. The intervener, essentially, shares the position of OHIM, pointing out, in particular, that the earlier marks have a weak distinctive character and therefore enjoy only very limited protection.
76 In the present case, examination of the marks at issue has shown that they are visually, phonetically and conceptually similar and thus, contrary to the conclusion of the Board of Appeal in paragraphs 32 to 34 and 40 of the contested decision, that they are similar overall.
77 It must, moreover, be borne in mind that, as established in paragraph 37 above, the goods and services listed in paragraphs 33 and 35 above are identical or similar to the goods protected by the earlier word mark. In the case of the goods mentioned in paragraph 32 above, it must be recalled that a similarity, although ‘marginal’ was established with the goods protected by the earlier marks.
78 Given the similarity between the conflicting marks and between the goods and services mentioned in the previous paragraph, the relevant public, which is reasonably attentive and circumspect, in the presence of those goods and services designated by the trade mark applied for, might either not notice the difference constituted by the absence of the term ‘line’ or the particular graphic features of that mark compared with the earlier word mark, or think that those goods and services came from the same firm which was marketing them under a similar trade mark to that earlier trade mark, inter alia to draw attention to different lines of goods or different types of services also based on olives or olive oil, or take the view that those goods and services at least came from economically linked undertakings.
79 Contrary to OHIM’s contention, the weak distinctive character of the earlier word mark cannot play a decisive role in the overall assessment of the likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among many involved in such assessment. Even in a case involving an earlier mark of 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, as in the present case. Conversely, to give priority to the weak distinctive character of a trade mark in the assessment of the likelihood of confusion would point to the conclusion that, where a mark has only weak distinctive character, there is a likelihood of confusion only where it is reproduced fully by the trade mark of which registration is sought, whatever the degree of similarity between the marks at issue. Such a result would not be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 207/2009 (see O-live, paragraph 56 above, paragraph 106 and the case-law cited).
80 Having regard to all the foregoing considerations, it must be concluded that the Board of Appeal erred in law in taking the view that there was no likelihood of confusion between the conflicting marks, within the meaning of Article 8(1)(b) of Regulation No 207/2009, for the goods and services covered by the trade mark application which are identical or similar to the goods designated by the earlier word mark. Accordingly, to that extent, the applicant’s complaint of the likelihood of confusion between the trade mark applied for and the earlier word mark must be upheld.
81 It follows that the contested decision must be annulled, first, in so far as it concerns the ‘soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’ in Class 3 covered by the trade mark application, which are the same as the goods protected by the earlier word mark.
82 Second, the contested decision must be annulled in relation to ‘hygiene and beauty care for humans and animals’ in Class 44 covered by the trade mark application, which are similar to the goods protected by the earlier word mark.
83 Third, the contested decision must also be annulled in so far as it concerns ‘[b]leaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations’ in Class 3 covered by the trade mark application. Even taking account of the merely ‘marginal’ similarity of those goods with the goods protected by the earlier marks, in particular, ‘soaps’, as found by the Board of Appeal in paragraph 19 of the contested decision, the fact remains that the degree of overall similarity between the marks at issue is such that a likelihood of confusion between them cannot be ruled out despite the weak similarity of the goods. In that regard, it must be recalled that, according to settled case-law, a lesser degree of similarity between the goods or services designated may be offset by a greater degree of similarity between the marks (see O-live, paragraph 56, paragraph 100 and the case-law cited).
84 Finally, in those circumstances and having regard to the case-law to the effect that it suffices, in order for registration of a trade mark to be refused, that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists only in part of the European Union, (see Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast‑Jägermeister v OHMI – Licorera Zacapaneca (VENADO with frame) and Others [2006] II‑5409, paragraph 76 and the case-law cited), it is not necessary to rule on the applicant’s other complaints concerning the existence of a likelihood of confusion between the trade mark applied for and the two earlier figurative marks.
Costs
85 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Article 87(3) of those regulations provides that where each party succeeds on some and fails on other heads, or where the circumstances are exceptional, the Court may order that the costs be shared or that each party bear its own costs.
86 In the present case, the contested decision has been annulled in respect of the majority of the categories of goods and services covered by the trade mark application and the applicant has applied for OHIM and the intervener to be ordered to pay the costs. In those circumstances, the Court considers it to be fair in the circumstances of the case to order OHIM and the intervener to bear three quarters of their own costs and to each pay three eighths of the costs of the applicant. The applicant should be ordered to bear, in addition to a quarter of its own costs, a quarter of the costs incurred by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Declares that the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (trade marks and designs) (OHIM) of 14 April 2010 (Case R 4/2009-4) is annulled in so far as it concerns, first, all the goods covered by the trade mark application in Class 3, namely ‘bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’, and, second, ‘hygiene and beauty care for humans and animals’ in Class 44 covered by the trade mark application.
2. Dismisses the action as to the remainder.
3. Orders OHIM and Umbria Olii International Srl to bear three quarters of their own costs and to each pay three eighths of the costs incurred by Olive Line International, SL.
4. Orders Olive Line International, SL to pay, in addition to one quarter of its own costs, one quarter of the costs incurred by OHIM and the intervener.
Forwood | Dehousse | Schwarcz |
Delivered in open court in Luxembourg on 22 May 2012.
[Signatures]