JUDGMENT OF THE GENERAL COURT (Second Chamber)
10 December 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark 360° SONIC ENERGY – Earlier international word mark SONIC POWER – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑467/11,
Colgate-Palmolive Company, established in New York, New York (United States of America), represented by M. Zintler and G. Schindler, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
dm-drogerie markt GmbH & Co. KG, established in Karlsruhe (Germany),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 25 May 2011 (Case R 1094/2010‑2), concerning opposition proceedings between dm-drogerie markt GmbH & Co. KG and Colgate-Palmolive Company,
THE GENERAL COURT (Second Chamber),
Composed, at the time of the deliberation, of N.J. Forwood (Rapporteur), President, F. Dehousse and J. Schwarcz, Judges,
Registrar: T. Weiler, Administrator,
having regard to the application lodged at the Registry of the General Court on 29 August 2011,
having regard to the response lodged at the Court Registry on 14 December 2011,
having regard to the reply lodged at the Court Registry on 2 April 2012,
having regard to the rejoinder lodged at the Court Registry on 14 June 2012,
further to the hearing on 8 July 2013,
gives the following
Judgment
Background to the dispute
1 On 29 August 2007, the applicant, Colgate-Palmolive Company, filed a Community trade mark application 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 trade mark for which registration was sought is the word sign 360° SONIC ENERGY.
3 The goods in respect of which registration was sought fall within Class 21 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘toothbrushes’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 4/2008 of 28 January 2008.
5 On 4 April 2008 dm-drogerie markt GmbH & Co. KG filed a notice of opposition to registration of the trade mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the international registration of the earlier word mark SONIC POWER.
7 That trade mark, which is effective in the Czech Republic, Italy, Hungary, Austria, Slovenia and Slovakia, was filed on 27 April 2004 for goods in Classes 3 and 21 and corresponding, for each of those classes, to the following descriptions:
– Class 3: ‘dentifrices, products for oral care’;
– Class 21: ‘toothbrushes, electric toothbrushes, water apparatus for cleaning teeth and gums, dental floss, toothpicks’.
8 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
9 By decision of 20 April 2010, the Opposition Division upheld the opposition, in substance, on the ground that there was a likelihood of confusion on the part of the relevant public between the sign for which registration was sought and the earlier word mark on which the opposition was based.
10 On 16 June 2010 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 By decision of 25 May 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal found, first of all, that the goods covered by the earlier mark and by the application for registration were identical. It then observed, disagreeing with the Opposition Division, that the word ‘sonic’, together with the other terms constituting the conflicting signs, would be understood by the majority of consumers in the Czech Republic, Italy, Hungary, Austria, Slovenia and Slovakia. However, the Board of Appeal observed that the applicant was seeking to obtain registration of the sign 360° SONIC ENERGY not for a particular type of toothbrush but for the general category of goods corresponding to the description ‘toothbrushes’. In the words of the contested decision, the word ‘sonic’ is indeed distinctive with respect to ‘ordinary bristle’ toothbrushes, that is to say, those which do not operate with an electrical device generating ‘ultrasounds, causing the water on and between the teeth to vibrate at high speed’. The Board of Appeal also stated that the applicant had been unable to show that consumers were exposed to widespread use of trade marks including the word ‘sonic’ in connection with toothbrushes. Furthermore, the words ‘power’ and ‘energy’ and the element ‘360°’ also helped to reinforce the distinctive nature of a sign used in respect of simple toothbrushes. It was in reliance, in particular, on those elements that the Board of Appeal took the view that the conflicting signs, in spite of their phonetic dissimilarity, presented a high degree of conceptual similarity and also a low degree of visual similarity and that there was consequently a likelihood of confusion between the signs on the part of the relevant public.
Forms of order sought by the parties
12 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The subject-matter of the dispute
14 At the hearing, the applicant indicated that it had made a declaration to OHIM since the conclusion of the written procedure with a view to restricting the goods in respect of which registration was sought to electric toothbrushes alone.
15 OHIM has objected to the Court’s taking account of that restriction in the present case, on the ground that it would change the subject-matter of the dispute as brought before the Board of Appeal.
16 In that respect, the Court points out that a restriction, within the meaning of Article 43(1) of Regulation No 207/2009, to the list of goods or services contained in a Community trade mark application made after the adoption of the decision of the Board of Appeal challenged before the Court cannot affect the legality of that decision, which is the only decision being challenged before the Court (see Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 25 and the case-law cited, and judgment of 9 September 2010 in Case T‑505/08 Nadine Trautwein Rolf Trautwein v OHIM (Hunter), not published in the ECR, paragraph 15).
17 However, a statement made by a trade mark applicant, subsequent to the decision of the Board of Appeal, by which that applicant withdraws its application in respect of some of the goods initially covered, may be interpreted as a statement that the contested decision is being challenged only in so far as it covers the remainder of the goods concerned and does not change the subject-matter of the proceedings. Therefore, such a restriction must be taken into account by the Court, inasmuch as it is being asked to review the legality of the Board of Appeal’s decision not in so far as it relates to the goods or services withdrawn from the list but only in so far as it relates to the other goods or services remaining on that list (see, to that effect, Mozart, cited in paragraph 16 above, paragraphs 27 and 28, and Hunter, cited in paragraph 16 above, paragraph 16).
18 Where the restriction of the list of goods or services contained in a Community trade mark application has the object of changing, in whole or in part, the description of those goods or services, it cannot be ruled out that such an alteration might have had an effect on the examination of the trade mark in question carried out at various stages by OHIM in the course of the administrative procedure. Accordingly, to allow that alteration at the stage of the action before the Court would amount to changing the subject-matter of pending proceedings, which is prohibited by Article 135(4) of the Rules of Procedure of the General Court (Mozart, cited in paragraph 16 above, paragraph 29, and Hunter, cited in paragraph 16 above, paragraph 17).
19 In the present case, the General Court finds that the restriction of the goods in respect of which registration of the trade mark applied for is sought to electric toothbrushes alone may have a bearing on the assessment of the more or less descriptive character of the element ‘sonic’ in that trade mark as opposed to the goods concerned falling within Class 21, as is apparent from the analysis contained in paragraphs 22 to 24 of the contested decision. As such a restriction could have an effect on the comparison of the conflicting signs, and therefore on the assessment as to whether there is a likelihood of confusion between those signs, it must be held that that restriction changes the factual context to which the Board of Appeal’s examination related.
20 It follows that the restriction of the goods in respect of which registration is sought, which occurred after the written procedure had been concluded, amounts to an alteration of the subject-matter of the pending proceedings, with the result that it cannot be taken into account by the Court.
Substance
21 In support of its action, the applicant raises a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.
22 The applicant claims, first, that OHIM erred in disregarding the fact that the word ‘sonic’ lacks distinctiveness and that it can therefore be of only secondary importance when the conflicting signs are compared. Thus, that word designates a specific type of toothbrush which generates ultrasounds and enables the water used in brushing the teeth to vibrate at high speed, intensifying the cleaning process. The applicant maintains, however, that the word ‘sonic’ is used as a generic term in many Community or national trade marks to designate types of toothbrush, which significantly dilutes the distinctiveness of the earlier trade mark. In that regard, the applicant submits that the argument that the evidence which it produced is not sufficient to support the conclusion that the term ‘sonic’ is used in connection with toothbrushes is based on too narrow a reading of that evidence and also on too high a degree of requirement in respect of evidence. The applicant submits that it is necessary to take into account, in the present case, the small number of competitors on the toothbrush market and the fact that all of those competitors market certain types of toothbrush the name of which contains the term ‘sonic’. The applicant also observes that, contrary to OHIM’s argument, the significance given to that word by the relevant public and, consequently, its degree of distinctiveness cannot be assessed by reference to the scientific definition of the word given in a dictionary. As for the fact that a Google search for the term ‘sonic’ does not result in any immediate hits such as to show that it is used for toothbrushes, this is irrelevant in the present case, since it cannot call into question the documentary evidence supplied in that regard by the applicant.
23 Second, the applicant takes issue with the Board of Appeal for not having taken sufficient account of the word element ‘360°’, which is one of the elements of the mark applied for, for the purposes of assessing the distinctiveness of that mark. That element is of particular importance in so far as the intensive use which the applicant has made of it in many countries of the European Union has enabled that element to acquire increased distinctiveness for the goods in question. The applicant also pointed out, on the day of the hearing, that that element is placed at the beginning of the trade mark applied for. As for OHIM’s argument that that element would be seen as a mere technical specification for the goods concerned, not only does this derive from a mere assertion but, in addition, it is inconsistent with OHIM’s point of view that that term has, on the part of the relevant public, a laudatory connotation towards those goods. In any event, the word element ‘360°’ is fanciful, since it may evoke different meanings in the relevant public. That element does not in any case communicate any claim of superiority or quality.
24 Third, the applicant maintains that the conflicting signs are phonetically dissimilar. That dissimilarity results, first of all, from the difference in the number of words making up each of the signs. Next, the first element of the mark for which registration is sought, namely ‘360°’, is pronounced according to the phonetic rules applicable in the different countries concerned. The applicant cites in that regard English, in which that element would be pronounced ‘three hundred-and-sixty-degrees’. It must be emphasised that the number of syllables pronounced in English, in addition to those making up the expression ‘sonic energy’, accentuates the phonetic difference vis-à-vis the earlier mark. The fact that the word element ‘360°’ is liable to be pronounced very differently according to the language used further increases the phonetic difference between the conflicting signs. Finally, still from the phonetic viewpoint, the applicant emphasises the different impression given by the pronunciation of the final elements of the conflicting signs, namely the words ‘power’ and ‘energy’.
25 Fourth, in the applicant’s submission, the Board of Appeal erred in finding even a weak visual similarity between the conflicting signs. The applicant points out in this regard that the comparison of the signs must be carried out, in accordance with consistent case-law, on the basis of the overall impression given by them, while particular weight may be placed on the distinctive and dominant components of those signs. In the present case, the applicant claims that the Board of Appeal was wrong to downplay the importance of the element ‘360°’ in the mark applied for, on the ground that it would be understood by consumers as reflecting a technical specification of the product concerned. That element does indeed have a distinctive character. In addition, it is necessary to take account of the fact that the element ‘360°’ appears at the beginning of the mark applied for, which reinforces the visual difference vis-à-vis the earlier mark. Finally, the overall comparison of the conflicting signs, in visual terms, also assumes that the difference between the final elements of each of the signs, namely the words ‘energy’ and ‘power’, will be taken into account. In the light of those elements, the applicant submits that the Board of Appeal ought to have concluded that the conflicting signs were not visually similar.
26 The applicant further submits, in this regard, that reference cannot be made in the present case to the reasoning of the Court of Justice in Case C‑120/04 Medion [2005] ECR I‑8551, paragraph 37, in which it was held that, in a case where the goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, although it does not determine by itself the overall impression conveyed by the composite sign, has an independent distinctive role therein. Not only is the earlier mark, SONIC POWER, not contained in the mark applied for, 360° SONIC ENERGY, but, in addition, the latter mark does not consist of the combination of a company name or an earlier well-known mark with other elements.
27 Fifth, and last, the applicant maintains that the Board of Appeal was wrong to find that there was a high degree of conceptual similarity between the conflicting signs. As regards, first of all, the word ‘sonic’, the applicant maintains that this is descriptive for all kinds of toothbrushes and not just for electric toothbrushes, as the word is understood by consumers as implying a more intense and more effective dental cleaning than normal. The applicant emphasises, in this regard, that it is irrelevant that that meaning differs from the scientific definition of the term ‘sonic’. Thus, in everyday language, it is normal to associate the general idea conveyed by a word, without that idea necessarily corresponding to its scientific meaning, with other, technically unrelated words. In accordance with the case-law, the relevant public would not consider a descriptive element forming part of a composite mark to be the distinctive and dominant element of the overall impression conveyed by that mark. As regards, next, the words ‘energy’ and ‘power’, semantically they are fundamentally different. The word ‘energy’ designates a direct and physical force, the unit of measurement of which is the Joule, whereas the word ‘power’ evokes power in general and is measured in Watts or horsepower. In the light of those elements, and also of the intrinsic distinctiveness of the element ‘360°’, the applicant maintains that there is no conceptual similarity between the conflicting signs. Furthermore, the contested decision is, the applicant submits, contrary in that regard to OHIM’s decision-making practice. As for the expressions ‘sonic energy’ and ‘sonic power’, these are also conceptually dissimilar, since the term ‘sonic’ will be seen by the consumer as being descriptive of the words ‘energy’ and ‘power’ and those words will not be linked by the consumer.
28 As the conflicting signs are, in its view, overall dissimilar, the applicant submits that there is no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, in the present case. In view of that dissimilarity, the similarity of the goods is, it submits, irrelevant in the present case.
29 OHIM disputes the applicant’s arguments.
30 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 cannot be registered if, because of its identity with, or similarity to, the earlier trade mark, and because of 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 mark. Moreover, under Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009, the term ‘earlier trade marks’ is to be understood to mean trade marks registered in a Member State or trade marks registered under international arrangements which have effect 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.
31 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. 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 circumstances of 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 the case-law cited).
32 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks 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).
33 It should also be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 76 and the case-law cited).
34 In the present case, the applicant does not dispute that the relevant territory for the assessment of the likelihood of confusion is that of the various Member States in which the international registration referred to in paragraphs 6 and 7 above is effective and that, in addition, the relevant public consists of the general public, that is to say the average final consumer in those Member States, who is deemed to be reasonably well informed and reasonably observant and circumspect. Moreover, in view of the conclusion set out in paragraph 20 above, it must be held that the goods covered by the conflicting signs are partially identical or similar, as those signs concern ‘toothbrushes’ coming within Class 21. It is therefore necessary to examine whether the Board of Appeal was right to hold that, having regard to the similarity of the conflicting signs, a likelihood of confusion exists on the part of the relevant public.
Comparison of the signs
35 It should be recalled that, according to well-established case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the conflicting signs, must be based on the overall impression which those signs produce, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such a likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited). For the purposes of that global assessment, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but has to rely on the imperfect image of them that he has retained in his mind (see judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraph 36 and the case-law cited). It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26, and Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 28).
36 According to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 29 March 2012 in Case T‑547/10 Omya v OHIM – Alpha Calcit (CALCIMATT), not published in the ECR, paragraph 28 and the case-law cited, and judgment of 12 July 2012 in Case T‑61/11 Vermop Salmon v OHIM – Leifheit (Clean Twist), not published in the ECR, paragraph 26 and the case-law cited).
37 The assessment of the similarity between two marks means more than taking just one component of a composite 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 OHIM v Shaker, cited in paragraph 35 above, 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 (OHIM v Shaker, cited in paragraph 35 above, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42).
38 Finally, where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 17 October 2012 in Case T‑485/10 MIP Metro v OHIM – J.C. Ribeiro (MISS B), not published in the ECR, paragraph 27 and the case-law cited).
39 In the present case, the Board of Appeal essentially held that, while the element which is common to the conflicting signs, namely the word ‘sonic’, combined with the other elements of those signs, is indeed descriptive for the relevant public, that descriptive character relates only to electric toothbrushes. Taking account of the fact that the applicant sought registration of the trade mark applied not only for toothbrushes of that type but for toothbrushes in general, the Board of Appeal held that the word ‘sonic’ was distinctive with respect to simple toothbrushes, that is to say, those which are not electrically operated. The Board of Appeal also held that, although the evidence which was submitted to it by the applicant showed clearly that the word ‘sonic’ appears in a variety of Community and national trade marks, it did not, by contrast, prove that consumers were exposed, on the market, to widespread use of trade marks including the word ‘sonic’ in connection with toothbrushes.
40 Proceeding on the basis of those findings, the Board of Appeal went on to hold that, viewed as a whole, the conflicting signs were similar. Therefore, despite their phonetic dissimilarity, the Board of Appeal stated that those signs presented a certain visual similarity in view of their common element ‘sonic’. The Board of Appeal also found that there was a high degree of conceptual similarity between those signs, as the expressions ‘sonic energy’ and ‘sonic power’ are in its view understood by the relevant public as evoking the idea of a mechanical or electrical force. According to the Board of Appeal, the presence of the word element ‘360°’ in the mark applied for does not alter that conclusion, given that the consumer will perceive that element more as reflecting a technical characteristic of the product concerned than as a full element of the mark itself.
41 In that regard, the Court first points out that the reasoning of the Court of Justice in Medion, cited in paragraph 26 above, to which OHIM refers, cannot be decisive for the purpose of assessing the soundness of the single plea submitted in support of the action.
42 Admittedly, it is apparent from that judgment that, where the goods or services are identical, a likelihood of confusion within the meaning of Article 5(1)(b) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) may exist on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (Medion, cited in paragraph 26 above, paragraph 37).
43 In the present case, however, it need only be stated that the mark applied for does not contain the earlier mark, as the two conflicting signs have only the word ‘sonic’ in common.
44 Furthermore, and in any event, it has been held that that particular case-law cannot affect the obligation to carry out a global assessment of all the components of the marks at issue, in light of the principle that the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see, to that effect, order of the Court of Justice of 29 June 2011 in Case C‑532/10 P adp Gauselmann v OHIM, not published in the ECR, paragraph 43).
45 Secondly, the Court finds that the Board of Appeal acted correctly in taking the view that the term ‘sonic’, particularly when it is associated with the words ‘energy’ or ‘power’, could be considered to describe a characteristic of a specific electric toothbrush, namely the fact that it generates ultrasounds which cause the water to vibrate at high speed on and between the teeth, with a view to intensifying the cleaning process.
46 It is unequivocally clear from the explanations relating to the toothbrushes using ‘sonic’ technology provided by a competitor of the applicant, to which the applicant refers in its written pleadings, that the term ‘sonic’ refers to that characteristic of certain electric toothbrushes which is deemed to promote, thanks to ultrasounds producing a very high frequency vibration, more effective dental cleaning than that which results from the use of an ordinary toothbrush.
47 The document file submitted by the applicant during the administrative procedure, in particular certain advertisements or online offers for the sale of electric toothbrushes, tends to prove that the term ‘sonic’ has been used in relation to that type of products within the territory in which the earlier mark is protected, seeking to indicate that those products are equipped with the technology described in paragraphs 45 and 46 above. That descriptive character of the term ‘sonic’ with regard to certain electric toothbrushes is strengthened when that term is associated with the words ‘energy’ or ‘power’, the meaning of which is widely understood throughout the European Union since those words are commonly used in business and advertising and also form part of basic English vocabulary (see, by analogy, judgment of 21 January 2010 in Case T‑309/08 G-Star Raw Denim v OHIM – ESGW (G Stor), not published in the ECR, paragraph 32).
48 The Court cannot, by contrast, share the view of the Board of Appeal that the fact that the applicant sought registration of the sign 360° SONIC ENERGY for toothbrushes in general, and not solely for toothbrushes equipped with the technology described in paragraphs 45 and 46 above, has the consequence that the term ‘sonic’ cannot be considered to be descriptive for the purposes of comparing the conflicting signs in the present case.
49 Admittedly, the Board of Appeal did not err in finding that the term ‘sonic’ was not, with regard to the relevant public, descriptive of ‘ordinary bristle’ toothbrushes, that is to say, those which are not fitted with an electrical device generating ultrasounds.
50 That finding is, however, without prejudice to the fact that the term ‘sonic’, as is apparent from the analysis in paragraphs 45 to 47 above, is descriptive of one of the essential characteristics of certain electric toothbrushes, that characteristic allowing the relevant public to distinguish such toothbrushes, amongst toothbrushes in general, from ‘ordinary bristle’ toothbrushes and electric toothbrushes which do not use the technology described in paragraphs 45 and 46 above.
51 In those circumstances, it must therefore be held that the fact that the application for registration does not distinguish between the categories of toothbrushes in respect of which registration was sought cannot have the effect of altering the descriptive character of the term ‘sonic’ in the conflicting signs.
52 That said, it must be borne in mind, with regard to the earlier word mark SONIC POWER, that it follows from the coexistence of Community trade marks and national trade marks, and from the fact that the registration of the latter does not fall within the sphere of competence of OHIM, and that judicial review in respect of them does not fall within the jurisdiction of the General Court, that in proceedings opposing an application for registration of a Community trade mark, the validity of national trade marks cannot be called into question (Case C‑196/11 P Formula One Licensing v OHIM [2012] ECR I‑0000, paragraph 40). In the light of Article 8(2)(a)(iii) and (iv) of Regulation No 207/2009, that reasoning applies to trade marks which have previously been registered under international arrangements.
53 It follows that, during the comparison of the conflicting signs within the context of opposition proceedings based on the existence of an earlier international trade mark, OHIM and the Courts of the European Union may not reach a finding that a registered and protected earlier international trade mark lacks distinctive character, since such a finding would not be compatible with the coexistence of Community trade marks and international trade marks or with Article 8(1)(b) of Regulation No 207/2009, interpreted in conjunction with Article 8(2)(a)(iii) and (iv) thereof. Such a finding would be detrimental to the protection granted to such an earlier international trade mark since it would be capable of facilitating the registration of an identical or similar Community trade mark (see, by analogy, Formula One Licensing v OHIM, cited in paragraph 52 above, paragraphs 44 and 45).
54 Therefore, despite the findings made in paragraphs 45 to 47 and 51 above, a certain degree of distinctiveness of the earlier word mark must generally be acknowledged (see, to that effect and by analogy, judgment of 23 April 2013 in Case T‑109/11 Apollo Tyres v OHIM – Endurance Technologies (ENDURACE), not published in the ECR, paragraph 80).
55 Thirdly, the applicant’s assertion that considerable weight must be given in the present case to the ‘360°’ element in the trade mark applied for, because of its allegedly distinctive and dominant character in that trade mark, cannot be upheld.
56 In that regard, it is indeed apparent from the documents submitted by the applicant both within the context of the opposition proceedings and before the Court that the ‘360°’ element is used by the applicant in connection with the marketing of toothbrushes.
57 It none the less appears from those same documents that, in almost all of the commercial uses which they reflect, the ‘360°’ element is presented in conjunction with other elements, in particular the applicant’s trade name.
58 In addition, the Board of Appeal acted correctly in taking the view that the ‘360°’ element, which is a mathematical concept, will be perceived by the relevant public more as a technical specification for the goods concerned, evoking the idea of a complete and quality dental cleaning, than as a significant distinctive element in the mark applied for.
59 That conclusion cannot be called into question by the applicant’s argument that the beginning of the trade mark applied for is of importance in the global impression created by that sign (see, by analogy, Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-949, paragraphs 64 and 65, and judgment of 16 December 2008 in Case T‑357/07 Focus Magazin Verlag v OHIM – Editorial Planeta (FOCUS Radio), not published in the ECR, paragraph 36). It should be recalled, in that respect, that this consideration cannot apply in every case, and in any event cannot undermine the principle that the assessment of the similarity of the marks must take into account the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 16 May 2007 in Case T‑158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraph 70, and judgment of 8 September 2010 in Case T‑369/09 Quinta do Portal v OHIM – Vallegre (PORTO ALEGRE), not published in the ECR, paragraph 29). As is clear from the case-law cited in paragraph 38 above, the public will not, as a general rule, consider a descriptive element forming part of a composite mark to be the distinctive and dominant element in the overall impression conveyed by that mark.
60 It follows that the dissimilarity between the conflicting signs resulting from the presence of the ‘360°’ element in the trade mark applied for cannot be decisive for the purpose of counteracting the similarity existing between those signs, resulting in particular from their common element ‘sonic’.
61 In the light of those various findings, the General Court finds that the Board of Appeal acted correctly in deciding that the conflicting signs presented a certain visual similarity due to their common element ‘sonic’.
62 In addition, although the ‘360°’ and ‘energy’ elements featuring in the mark applied for admittedly contribute to distinguishing the conflicting signs at the phonetic level, those signs nevertheless have, from that point of view, a certain similarity by reason of the common element ‘sonic’, the pronunciation of which will in principle be identical in the different countries which make up the territory on which the earlier trade mark is protected.
63 As regards the comparison of the conflicting signs from a conceptual point of view, the Court notes, first, that, in view of the reasoning set out in paragraphs 55 to 58 above, the applicant’s assertion that the ‘360°’ element introduces a conceptual difference between those signs because of its allegedly high distinctiveness cannot be accepted. In particular, it must be noted, in this respect, that the ‘360°’ element will be perceived by the majority of consumers as a technical specification for the goods concerned.
64 Secondly, without it even being necessary to determine whether, according to the definition put forward by OHIM, the term ‘sonic’ is likely to be understood by the relevant public as qualifying what is specific to sound or involves sound, it is appropriate to recall the reasoning set out in paragraphs 45 and 46 above that the term ‘sonic’, associated with the words ‘energy’ or ‘power’, may be regarded as descriptive of an essential characteristic of certain electric toothbrushes.
65 It should also be noted, in this respect, that the Board of Appeal rightly held that the words ‘energy’ and ‘power’ both refer, from a conceptual point of view, to the idea of a mechanical or electrical force for consumers who have a basic knowledge of English. Contrary to the applicant’s submissions, that conclusion cannot be called into question by the fact that those words describe separate concepts in physics. The relevant public is made up of the general public at large, that is to say the average consumers of the Member States in which the earlier trade mark is effective. In accordance with the principle set out in paragraph 35 above, the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on the imperfect image of them that he has retained in his mind. Furthermore, having regard to the nature of the goods concerned, the consumer’s level of attention cannot be considered to be high in the present case. As a result, the Court holds that the fact that the words ‘energy’ and ‘power’ refer to different concepts from a scientific point of view does not introduce a conceptual difference between the conflicting signs in the mind of the relevant public.
66 It follows that the Board of Appeal acted correctly in finding that the relevant public would make a conceptual association between the conflicting signs.
67 It follows from all of the foregoing that the conflicting signs, each considered as a whole, display visual, phonetic and conceptual similarities. Those similarities override, as a whole, the visual and phonetic differences attributable to the presence of the ‘360°’ element preceding the word ‘sonic’ in the trade mark applied for and to the fact that the last element of that mark is ‘energy’ and not ‘power’ as in the earlier mark.
Likelihood of confusion
68 An 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 (FLEXI AIR, cited in paragraph 59 above, paragraph 61, and VENADO with frame and Others, cited in paragraph 33 above, paragraph 74). Furthermore, according to well‑established case‑law, noted in paragraph 35 above, the average consumer only rarely has the chance to make a direct comparison between the different marks but has to rely on the imperfect image of them that he has retained in his mind.
69 In the present case, it has been found that a certain visual and phonetic similarity exists between the conflicting signs, as well as a high degree of conceptual similarity. Furthermore, the goods in question are identical.
70 Since the element ‘sonic’, which is common to the conflicting signs, gives rise to similarity between them, strengthened conceptually by the ‘energy’ and ‘power’ elements, and also having regard to the interdependence of the various factors to be taken into consideration, the Court finds that the Board of Appeal acted correctly in concluding that there is a likelihood of confusion between the two conflicting signs.
71 That conclusion cannot be invalidated by the applicant’s argument that there are many other trade marks on the market which contain the word ‘sonic’ and are registered for goods coming within Class 21.
72 In that regard, it should be noted that, whereas the possibility cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market might reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (Case T‑31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR II‑1667, paragraph 86; Case T‑29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 72; judgment of 18 September 2012 in Case T‑460/11 Scandic Distilleries v OHIM – Bürgerbräu, Röhm & Söhne (BÜRGER), not published in the ECR, paragraph 60).
73 In the present case, it must first be noted that the trade marks to which the applicant refers are not identical to the conflicting signs.
74 Furthermore, while the information provided on those earlier trade marks in the course of the administrative procedure admittedly tends to prove, as mentioned in paragraph 47 above, that the word ‘sonic’ has been used in relation to electric toothbrushes functioning with the help of ultrasounds within the territory on which the opponent’s mark is protected, it does not, by contrast, show that the coexistence of those earlier trade marks with the trade mark on which the opposition is based was founded on an absence of any likelihood of confusion capable of reducing such a likelihood of confusion between the conflicting trade marks.
75 Finally, it should be noted that, 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 others involved in that assessment. Thus, 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 concerned (Case T‑130/03 Alcon v OHIM – Biofarma (TRAVATAN) [2005] ECR II‑3859, paragraph 78; judgment of 10 October 2012 in Case T‑333/11 Wessang v OHIM – Greinwald (star foods), not published in the ECR, paragraph 32).
76 As for the earlier decisions taken by OHIM and cited by the applicant, it should certainly be borne in mind that OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration. In the light of those two principles, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 73 and 74 and the case-law cited).
77 That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Therefore, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the present case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see Agencja Wydawnicza Technopol v OHIM, cited in paragraph 76 above, paragraphs 75 and 77 and the case-law cited).
78 In the present case, it has been established that, in view of the fact that the goods in question are identical but also by reason of the similarity of the conflicting signs, the application for registration came up against the relative ground for refusal set out in Article 8(1)(b) of Regulation No 207/2009. Furthermore, the sign in respect of which registration was sought and the signs in respect of which registration was contested in the cases cited by the applicant are neither identical nor similar.
79 It follows that the applicant cannot effectively rely on those decisions for the purpose of invalidating the conclusion reached by the Board of Appeal in the contested decision.
80 The action must therefore be dismissed, without there being any need to rule on the applicant’s second head of claim, which seeks to have the Court reject the opposition of dm-drogerie markt GmbH & Co. KG to registration of the trade mark applied for.
Costs
81 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Colgate-Palmolive Company to pay the costs.
Forwood | Dehousse | Schwarcz |
Delivered in open court in Luxembourg on 10 December 2013.
[Signatures]