JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
27 September 2007 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark LA MER – Earlier national word mark LABORATOIRE DE LA MER – Relative ground of refusal – Genuine use of the mark – Article 43(1) and (2) of Regulation (EC) No 40/94 – No likelihood of confusion – Article 8(1)(b) of Regulation No 40/94)
In Case T‑418/03,
La Mer Technology, Inc., established in New York, New York (United States), represented initially by V. von Bomhard, A. Renck and A. Pohlmann, and subsequently by V. von Bomhard and A. Renck, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Laboratoires Goëmar, established in Saint-Malo (France), represented by E. Baud and S. Strittmatter, lawyers,
ACTION for annulment of the decision of the Second Board of Appeal of OHIM of 23 October 2003 (Case R 814/2000‑2) relating to opposition proceedings between Laboratoires Goëmar and La Mer Technology, Inc.,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President, E. Martins Ribeiro and K. Jürimäe, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 22 December 2003,
having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 16 April 2004,
having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 19 April 2004,
further to the hearing on 23 November 2006,
gives the following
Judgment
Background
1 On 1 April 1996 La Mer Technology, Inc., submitted an application for a Community trade mark to 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.
2 The mark for which registration was sought is the word sign LA MER for the following goods in Class 3 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: ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices; toiletries’.
3 That application was published in Community Trade Marks Bulletin 4/98 of 12 January 1998.
4 On 8 April 1998 Laboratoires Goëmar filed a notice of opposition to the trade mark applied for, pleading a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. That opposition was based on the existence of the following earlier registrations of the LABORATOIRE DE LA MER word mark:
– French registration No 1 443 841 of 7 January 1988 for goods in Classes 3, 5, 29 and 31;
– United Kingdom registration No 1 402 537 of 10 October 1989 for goods in Class 3;
– Greek registration No 88 624 of 17 July 1990 for goods in Classes 3, 5, 29 and 31;
– international registration No 523 982 of 24 June 1988, having effect in Italy and Portugal, claiming the priority of French registration No 1 443 841 for goods in Classes 3, 5, 29 and 31.
5 The intervener based its opposition on certain goods covered by its earlier registrations, namely the following goods in Class 3:
– French registration: ‘cosmetics of a marine products base’;
– United Kingdom registration: ‘cosmetics containing marine products’;
– Greek registration: ‘perfumes and cosmetics containing marine products’;
– international registration: ‘cosmetics of a marine base’.
6 The opposition was directed at certain goods covered by the Community trade mark application, namely, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices and toiletries.
7 In the course of the opposition proceedings, the list of goods in the applicant’s application for registration was restricted, for the purpose of Article 44 of Regulation No 40/94, to the following goods: ‘soaps for the care of the human skin and the human body; perfumery, essential oils, cosmetics, hair lotions; dentifrices, toiletries, including creams, gels and lotions’.
8 By letter of 29 April 1999 the applicant also requested proof of use of the earlier trade marks on which the opposition was based, so that, pursuant to Article 43(2) and (3) of Regulation No 40/94 and Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the Opposition Division asked the intervener to submit that proof within two months.
9 Within the prescribed time-limit, the intervener submitted various documents to show that the marks on which the opposition was based had been genuinely used in Greece, France, Italy, Portugal and the United Kingdom.
10 By decision of 31 May 2000, the Opposition Division upheld the opposition for all the goods concerned on the ground that there was a likelihood of confusion. For reasons of procedural economy, the Opposition Division based its decision on the French registration alone, considering it sufficient for the purpose of rejecting the application in relation to all the goods in question.
11 On 2 August 2000 the applicant lodged an appeal against the decision of the Opposition Division. By decision of 23 October 2003 (‘the contested decision’) the Board of Appeal dismissed the appeal. The Board of Appeal thus upheld the Opposition Division’s decision considering, in substance, first, that the evidence adduced by the intervener was sufficient to show genuine use of the earlier French trade mark and, secondly, that there was a likelihood of confusion between the earlier mark and the Community mark applied for.
Procedure and forms of order sought
12 In its application, the applicant claims that the Court of First Instance should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 The intervener submits that the Court should:
– dismiss the action;
– uphold the contested decision;
– order the applicant to pay the costs.
Law
15 The applicant puts forward two pleas in law alleging, first, infringement of Article 43(2) and (3) of Regulation No 40/94 and, secondly, infringement of Article 8(1)(b) of the same regulation.
First plea in law: infringement of Article 43(2) and (3) of Regulation No 40/94
Arguments of the parties
16 The applicant notes that the proof of use of the mark must, on the one hand, show that the mark was actually used during the reference period, namely 12 January 1993 to 11 January 1998 and, secondly, relate to the extent, duration, nature and place of use. In addition, that use must have been made in relation to the goods in question, namely ‘cosmetics with a marine products base’ and the mark must have been used as registered. The use must also have been genuine. However, the evidence submitted in the present case is, in the applicant’s view, insufficient to show genuine use of the earlier mark within the meaning of Article 43(2) of Regulation No 40/94.
17 In the first place, to prove use of the LABORATOIRE DE LA MER mark in France, the intervener submitted 20 copies of invoices made out to parties in France, but only 10 of those related to the reference period, three being dated 1995 and seven dated 1997. However, none of those invoices contained a reference to ‘laboratoire de la mer’. In addition, the further material submitted by the intervener was, without exception, undated or bore a date outside the reference period. At the hearing, the applicant suggested that it was not until the intervener changed its company name in December 1997, from then on calling itself Goëmar Le laboratoire de la mer and no longer Algues Goëmar, that the intervener’s products bore the LABORATOIRE DE LA MER trademark, that is, subsequent to the reference period.
18 In the second place, the applicant claims that the evidence relating to the products in the ‘Goëform’ range (invoices of 26 March, 22 April, 12 May and 20 October 1997), soaps and bath additives is not relevant because those products are not cosmetics.
19 ‘Goëform’ products are nutritional supplements which should be taken in daily doses, as is clear from the package insert, and therefore fall within Class 5 of the Nice Classification, whereas cosmetic products are applied externally.
20 In addition, the intervener has not proved use of the LABORATOIRE DE LA MER trade mark on any ‘Goëform’ product because, on the packaging insert submitted by the intervener, the words ‘le laboratoire de la mer’ appear in the explanatory leaflet as a description of the intervener’s company, which cannot be classified as a use of the words ‘laboratoire de la mer’ as a trade mark.
21 The applicant concludes from this that, in paragraphs 24 and 25 of the contested decision, the Board of Appeal made an incorrect assessment of the evidence relating to ‘Goëform’ products and of the quality of that evidence.
22 As regards soaps, the applicant claims that they are not cosmetics because cosmetics are one general heading and soaps are another. According to the applicant, the use of the trade mark for similar products is insufficient for maintaining the registration as the mark must be used for the very products shown in the registration.
23 As for bath additives, the applicant observes that they are not cosmetics applied to the human body for beautifying purposes but beauty products within the meaning of the Nice Classification. Therefore all products relating to bath additives, such as products in the ‘Le thalasso bain’ range, must be disregarded, and so must combs, sponges and all other products belonging to Class 21 of the Nice Classification.
24 Thirdly, the applicant disputes the evidence relating to products in the ‘Lipozone’ range. None of the eight invoices which might have been relevant as proof of use contains any reference to such products or has any connection whatever with the descriptions in the invoices for ‘Lipozone’ products. The applicant concludes that the three product packagings and one product brochure relating to the ‘Lipozone’ range, which are all undated, cannot be taken into account because they show nothing as to the time of the alleged use, which could have taken place at any time between 1974, when Laboratoires Goëmar was founded, and June 1999, when the intervener submitted the proof of use of the mark.
25 Fourthly, the applicant claims that the intervener has adduced no proof of use of the trade mark concerning ‘Le thalasso bain’ products or ‘Iodus’ products.
26 As regards, first, products in the ‘Le thalasso bain’ range, the applicant alleges that the six invoices in question (dated 4 May 1995 and 26 March, 12 May, 21 May, 9 June and 28 November 1997) and the copy of a product packaging make no reference to the LABORATOIRE DE LA MER trade mark. In view of the goods mentioned in the invoices and the fact that the copy of the only product packaging submitted by the intervener is not consistent with the invoices produced, the applicant claims that the intervener has not shown whether and, if so, how the LABORATOIRE DE LA MER mark pleaded was applied to products in the ‘Le thalasso bain’ range. It follows that there is no evidence of the nature or extent of the alleged trade mark use of LABORATOIRE DE LA MER in relation to ‘Le thalasso bain’ products during the reference period.
27 The applicant claims that, notwithstanding that inconsistency, the Board of Appeal assumed that the words ‘laboratoire de la mer’ appeared on the product packaging for ‘Le thalasso bain’ products when it found, at paragraph 24 of the contested decision, that although the invoices did not include the term ‘laboratoire de la mer’, it could be clearly established from the product packaging submitted by the intervener that ‘laboratoire de la mer’ was used on that packaging.
28 Secondly, with regard to products in the ‘Iodus’ range, the applicant observes that only three invoices, dated 3 January, 4 May and 10 May 1995, include a reference to what may have been ‘Iodus’ products. However, none of those invoices contains any reference to the words ‘laboratoire de la mer’.
29 In addition to that lack of reference to the mark, the applicant observes, first, that the invoice of 3 January 1995 refers to a make-up remover fluid, a day cream and a tonic spray. As regards the make-up remover fluid, even assuming that the packaging a copy of which was produced is actually that used at the beginning of 1995, which the intervener has not proved, the invoice represents the sale of three units for a total value of EUR 34.35. The applicant states that assuming, further, that the make-up remover fluid referred to on the invoice of 4 May 1995, which makes no mention of the Iodus name, was also an ‘Iodus’ product and that it was packaged in the manner alleged, this amounts to a total of six units of make-up remover sold in 1995 for a total value of EUR 52.18. Consequently, in four months, namely, from the date of the January 1995 invoice to that of May 1995, the price of the 100 ml make-up remover fluid fell from EUR 11.45 to EUR 5.95, which is a further indication that the two make-up removers can hardly be assumed to be one and the same product without further evidence to support this. With regard to the day cream and the tonic spray, no sample packaging was produced nor are the products shown elsewhere in the evidence relating to France. No proof of any use whatever of the LABORATOIRE DE LA MER mark appears on any product other than the make-up remover fluid under the Iodus name. Consequently there was no proven use of the earlier mark in respect of several ranges of products. In any event, the turnover that can be taken into account for day creams is insignificant and cannot prove genuine use.
30 Secondly, the invoice of 4 May 1995, which refers to a ‘Le thalasso bain’ product, does not even show that the products to which it refers form part of the ‘Iodus’ range.
31 Finally, the invoice of 10 May 1995 refers to promotional items for products in the ‘Iodus’ range the get-up of which is unclear and is not corroborated by any further evidence. There is no, or no visible, mention of the LABORATOIRE DE LA MER mark on the product display units or on the products themselves.
32 Fifthly, the applicant claims that, even assuming that it was used, the expression ‘laboratoire de la mer’ was not used as a trade mark. With regard to the nature of the possible use of the LABORATOIRE DE LA MER mark on ‘Le thalasso bain’ products, the applicant refers to the packaging and the product leaflet submitted by the intervener on which the words ‘Le laboratoire de la mer®’ appear once in normal print beneath the intervener’s logo.
33 The applicant asserts that, even if it were to be accepted that the get-up of the other products in that range resembled the abovementioned leaflet and it were assumed that the words ‘le laboratoire de la mer’ were shown in lower-case letters on the back or side of the product, beneath the intervener’s name in capital letters, followed by the intervener’s address, such use of ‘laboratoire de la mer’ does not amount to use of a trade mark, but rather to use of a trade name. The applicant points out that it submitted to the Board of Appeal evidence that, in December 1997, the intervener had registered the trade name Goëmar Le laboratoire de la mer in place of Algues Goëmar. According to the applicant, it cannot be denied that that trade name was already in use prior to registration because the expression ‘laboratoire de la mer’ appears on the packaging of the ‘Goëform’ product submitted by the intervener and consumers perceived it as such. That perception is, furthermore, consistent with Article 6(1)(a) of Council Directive 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products (OJ 1976 L 262, p. 169), as amended by Council Directive 93/35/EEC of 14 June 1993 (OJ 1993 L 151, p. 32), which requires the name or style and the business address of the manufacturer or person responsible for marketing the cosmetic products. That is borne out by the fact that the words ‘laboratoire de la mer’ are used in close conjunction with ‘goëmar’. In the trade name Goëmar Le laboratoire de la mer’, the last part of the term is only a more exact description of ‘goëmar’ and is perceived as such. Moreover, consumers are accustomed to finding the manufacturer’s name on the product as indicating only the name and not as an additional identifier of the product. If a trade name is used as such, addition of the symbol ‘®’ is not sufficient to convert it into a trade mark.
34 Consequently the applicant disputes the finding at paragraph 25 of the contested decision that there are examples of packaging where the LABORATOIRE DE LA MER sign is not used in close association with the term ‘goëmar’, as in some of the Goëform examples. The applicant observes that use of ‘laboratoire de la mer’ with ‘Goëform’ is irrelevant because that is a nutritional supplement. Furthermore, the single picture of ‘Goëform’ packaging showed the use of the Goëmar Le laboratoire de la mer name in a way which is not a trade mark use. Finally, regarding the Board of Appeal’s finding that, on some of the packagings, the term ‘laboratoire de la mer’ is followed by the use of the symbol ‘®’, as on the packaging of the Iodus products, the applicant expresses astonishment, to say the least, because only a single sample packaging was submitted to the Board as proof of use of the earlier mark in France and the symbol ‘®’, which appeared five times in respect of various terms, appeared only once next to the words ‘laboratoire de la mer’, but did not appear in respect of that term on the front of the packaging.
35 According to the applicant, although it is true that the packaging for the ‘Le thalasso bain’ product range showed the ‘®’ symbol after ‘goëmar le laboratoire de la mer’, that packaging must be disregarded in proving use of the earlier mark because it is undated and has no connection with the products referred to in the invoices made out between 1995 and 1997.
36 As stated at paragraph 29 above, the applicant takes the view that the use of the LABORATOIRE DE LA MER mark for the packaging of the make-up remover fluid in the ‘Iodus’ range is the only one that may be taken into account. However, it points out that only three (or, at most, six) units of the said fluid were sold in France during the reference period for a sum which cannot be more than EUR 50.
37 Sixthly, the applicant submits that the use, if use there were, was not use of the trade mark as registered. The expressions ‘laboratoire de la mer’ or ‘le laboratoire de la mer’ were always used together with ‘goëmar’, which creates a wholly different overall impression from that which would have been produced if the expression had been used on its own, so that it has a different distinctive character from the LABORATOIRE DE LA MER mark taken in isolation. In accordance with Article 10(2)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1988 L 40, p. 1), such altered use is not regarded as proper use of the registered trade mark.
38 Seventhly, the applicant submits that the extent of use, assuming it were proved, is not sufficient to be described as genuine within the meaning of Article 10(2) and (3) of Regulation No 40/94, which is confirmed by the judgment of the Court in Case C-40/01 Ansul [2003] ECR I-2439 (see, in particular, paragraphs 36 to 39 and point 1 of the operative part).
39 In that judgment, the Court did not merely define ‘genuine use’ as opposed to ‘token use’ but, on the other hand, set out in point 1 of the operative part the objective criteria to be used for deciding the cases where use was to be deemed genuine. That means therefore that genuine use is not defined solely by the exclusion of token use but may cover minimal use, namely where the proprietor of the trade mark can show that he wished to do business using the mark in question. According to the applicant, that view, which has not been submitted for assessment by the Court, was rejected by the Court of First Instance in the judgment in Case T‑156/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills(GIORGIO AIRE) [2003] ECR II-2789, in particular at paragraph 36.
40 The applicant observes that, in the present case, the Board of Appeal found the existence of genuine use on the basis of assumptions as to facts, rather than of evidence and, from those assumptions, drew conclusions which are not supported by any evidence. Referring to its previous arguments, which are summarised at paragraphs 17 to 39 above, the applicant submits that the body of material submitted to the Board of Appeal cannot serve to prove genuine use of the trade mark for the purposes of Regulation No 40/94.
41 According to the applicant, even if the intervener’s mark was used, it was used only as a tertiary mark, appearing after the mark of the product and the intervener’s name, Goëmar. Therefore the nature of the use must also be taken into account when assessing whether that use was genuine.
42 Finally, the applicant states that, if extremely sporadic use of two, three or more trade marks on one and the same product packaging is recognised as constituting trade mark use within the meaning of Article 43(2) of Regulation No 40/94, it may become impossible to use new marks without running serious risks.
43 OHIM observes, essentially, that the applicant’s method of analysing the evidence consists in breaking down the intervener’s material into different pieces in a systematic attempt to discard as much of it as possible on the ground that it is irrelevant, while focusing on various alleged deficiencies in each individual piece. Such a method is inconsistent with the statement of the Court in Ansul, cited at paragraph 38 above, where the Court held, on the contrary, that when assessing whether there has been genuine use of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real.
44 Furthermore while, according to OHIM, Rule 22 of Regulation No 2868/95 expressly refers to indications concerning the place, time, extent and nature of use, and gives examples of acceptable evidence such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing, it does not imply that each piece of evidence must necessarily give information about the place, time, extent and nature of use. That is confirmed by the fact that photographs of products cannot provide information on the extent and nature of the use of the mark. OHIM concludes from this that the evidence relating to the ‘Lipozone’ and ‘Le thalasso bain’ product ranges cannot be disregarded on the ground that the former appears only in brochures and the latter is referred to only in invoices. Invoices show the extent of use and brochures give information on the nature of use.
45 OHIM submits that the applicant’s argument that evidence which is undated or is dated outside the reference period is equally irrelevant must be dismissed for the same reasons. Even if that evidence on its own could not support a finding of genuine use, to dismiss it solely on the ground that it is irrelevant or inadmissible would not be appropriate either. The market life of a product usually extends over a certain period and continuity of use is one of the relevant factors in determining whether use was objectively intended to create or maintain a market share. Indeed this was confirmed by the Court in the order of 27 January 2004 in Case C-259/02 La Mer Technology [2004] ECR I-1159, which conceded the need to take into account circumstances subsequent to the application for revocation in determining whether there was genuine use of a mark. OHIM adds that, although in the contested decision the Board of Appeal makes no reference to the evidence dated outside the reference period, that is because it probably considered that the other evidence relating to the intervener’s French registration was amply sufficient to prove genuine use.
46 The intervener submits, first, that the LABORATOIRE DE LA MER trade mark is used on all the documents it provides and all the products it markets as a company having its registered office in France, and that that mark is affixed to every commercial document.
47 The intervener, citing various documents, observes that the LABORATOIRE DE LA MER trade mark is affixed to every presentation leaflet, brochure, display, packaging and product in the ‘Iodus’, ‘Le thalasso bain’ and ‘Algodentyl’ ranges and also on every brochure and packaging in the ‘Goëform’ range and on other products not belonging to any specific range.
48 Secondly, the intervener states that the packagings of the products bearing the LABORATOIRE DE LA MER trade mark which it submits bear dates within the reference period. In that connection, the intervener submits several press proofs, invoices and other material which prove that fact.
49 Thirdly, the intervener submits that the LABORATOIRE DE LA MER trade mark as it is used must be regarded as a use of the mark as registered. Contrary to the applicant’s submission, the intervener states that it did not use the expression ‘goëmar (le) laboratoire de la mer’ instead of ‘laboratoire de la mer’.
50 In conclusion, the intervener submits that it has made intensive use of its trade mark and that, in the case before the Court to which it and the applicant were parties, the Court ruled in the order in La Mer Technology, cited at paragraph 45 above, that when it serves a real commercial purpose, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use within the meaning of that directive. Therefore, according to the intervener, that finding is contrary to that cited by the applicant on the basis of the judgment of the Court of First Instance in GIORGIO AIRE, cited at paragraph 39 above, in which the Court held that genuine use excludes minimal or insufficient use for the purpose of determining that a mark is being put to real, effective use on a given market.
Findings of the Court
51 It should be noted that, according to the ninth recital in the preamble to Regulation No 40/94, the legislature considered that protection of earlier marks is not justified except where they are actually used. Consistently with that recital, Article 43(2) and (3) of Regulation No 40/94 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of publication of the trade mark application against which an opposition has been filed (Case T‑39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II‑5233, paragraph 34; Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 36, upheld on appeal by Case C-416/04 P Sunrider v OHIM [2006] ECR I‑4237, and Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 25).
52 Under Rule 22(2) of Regulation No 2868/95, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark (VITAFRUIT, cited above at paragraph 51, paragraph 37, and VITAKRAFT, cited above at paragraph 51, paragraph 27).
53 For the interpretation of the notion of genuine use, account must be taken of the fact that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a Community trade mark application is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from an actual function of the mark on the market (Case T‑174/01 Goulbourn v OHIM – Redcats (Silk Cocoon) [2003] ECR II‑789, paragraph 38). However, the purpose of that provision is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (VITAFRUIT, cited above at paragraph 51, paragraph 38, and Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 32).
54 As is apparent from paragraph 43 of the judgment in Ansul, cited above at paragraph 38, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and outwardly (Ansul, paragraph 37, and Sunrider v OHIM, cited above at paragraph 51, paragraph 70; Silk Cocoon, cited above at paragraph 53, paragraph 39; VITAFRUIT, cited above at paragraph 51, paragraph 39; HIPOVITON, cited above at paragraph 53, paragraph 33; and VITAKRAFT, cited above at paragraph 51, paragraph 26).
55 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (Ansul, cited above at paragraph 38, paragraph 43, and Sunrider v OHIM, cited above at paragraph 51, paragraph 71; VITAFRUIT, cited above at paragraph 51, paragraph 40, and HIPOVITON, cited above at paragraph 53, paragraph 34).
56 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, cited above at paragraph 51, paragraph 41, and HIPOVITON, cited above at paragraph 53, paragraph 35).
57 To examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. As a result, the Court has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark (Ansul, cited above at paragraph 38, paragraph 39, and the order in La Mer Technology, cited above at paragraph 45, paragraph 21; VITAFRUIT, cited above at paragraph 51, paragraph 42, and HIPOVITON, cited above at paragraph 53, paragraph 36).
58 The Court of Justice also added, in paragraph 72 of Sunrider v OHIM, cited above at paragraph 51, that it is not possible to determine a priori and in the abstract what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow OHIM or, on appeal, the Court of First Instance, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, the Court has held that, when it serves a real commercial purpose, even minimal use can be sufficient to establish genuine use.
59 The Court of First Instance has stated that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (HIWATT, cited above at paragraph 51, paragraph 47, and VITAKRAFT, cited above at paragraph 51, paragraph 28).
60 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was correct to take the view that the evidence submitted by the other party in the proceedings before OHIM showed genuine use of the earlier mark.
61 The application for a Community trade mark filed by the applicant having been published on 12 January 1998, the five-year reference period referred to in Article 43(2) of Regulation No 40/94 therefore ran from 12 January 1993 to 11 January 1998.
62 It should be noted that the evidence provided by the intervener before the Opposition Division regarding the use of the LABORATOIRE DE LA MER mark in France is, according to paragraph 21 of the contested decision, as follows:
– 10 invoices dated between 3 January 1995 and 28 November 1997 to customers in France. The invoices identify the specific product names of the products sold, such as ‘Iodus’ or ‘Le thalasso bain’. They do not contain any reference to the LABORATOIRE DE LA MER mark;
– an order form, undated, unsigned and without customer name or address which contains various product names as well as the term ‘le laboratoire de la mer’ next to the name Laboratoires Goëmar SA;
– a confirmation by a printing company dated 27 August 1992 concerning order forms printed for Laboratoires Goëmar SA Le laboratoire de la mer;
– a brochure, an information sheet, a packaging insert and two samples of packaging of a product in the ‘Lipozone’ range, containing the words ‘goëmar’ and ‘le laboratoire de la mer’ in a corner;
– two pictures of advertisements together with products and one sample of product packaging for the ‘Iodus’ product range. The sample of the packaging contains the Goëmar name and below it the words ‘laboratoire de la mer’ on one side of the packaging, followed by the sign ‘®’;
– a sample of product packaging in the ‘Le thalasso bain®’ range, containing the terms ‘goëmar®’ and ‘le laboratoire de la mer®’ as well as two samples of what appear to be either product inserts or advertising for the same product range, containing the terms ‘goëmar’ and ‘le laboratoire de la mer’;
– product information for ‘Goëform minceur’ and ‘Beauté’ which contains the term ‘le laboratoire de la mer’.
63 First, as regards the ground for complaint that the Board of Appeal took into account invoices which had been made out after the reference period, it suffices to state that that complaint has no factual basis. It is apparent from paragraphs 21 and 24 of the contested decision that the Board of Appeal took into account, for the purposes of its decision, only 10 invoices made out between 3 January 1995 and 28 November 1997, therefore during the reference period, while according to the case-file submitted to the Board of Appeal 24 documents were sent to it, including 11 invoices and two order forms made out after the reference period as well as an undated order form.
64 Secondly, as the applicant rightly noted and as taken into account by the Board of Appeal in paragraph 24 of the contested decision, none of the 10 invoices taken into account by the Board of Appeal contains the earlier mark.
65 However, the fact that the earlier mark is not referred to on those invoices cannot prove that the latter are irrelevant for the purposes of proving genuine use of that mark.
66 In this case, as the applicant conceded at the hearing, besides the mark applied for being a house brand, so that it is natural that it does not appear on the invoices which contain only the names of the products enabling them to be identified, it must be stated that the products referred to on those invoices are clearly identifiable, and the packaging which was supplied by the intervener, and was sold on the dates substantiated by those invoices, proves that they have either the reference ‘le laboratoire de la mer’ or ‘laboratoire de la mer’ (‘Iodus’ range). Accordingly, in respect of the ‘Iodus’ make-up remover fluid referred to on invoice No 22 214 of 3 January 1995, it must be stated that the packaging of the product contains the term ‘goëmar’ and, below it, ‘laboratoire de la mer®’. Likewise, in respect of the products listed in invoices No 24 085 of 4 May 1995, No 31 348 of 26 March 1997, No 32 096 of 12 May 1997, No 32 257 of 21 May 1997, No 32 574 of 9 June 1997 and No 34 365 of 28 November 1997 under the name Thalasso bain or Thala. bain, it is clear that their packaging includes ‘goëmar’ and, underneath, ‘le laboratoire de la mer’. Those terms also appear on the two packaging samples containing products in that range.
67 Although the applicant stated, in its written observations, that only the use of LABORATOIRE DE LA MER on the packaging of the make-up remover fluid in the ‘Iodus’ range could be taken into account, it suggested at the hearing, however, that since the packagings were undated, they could post-date the reference period, so that nothing confirms that the products marketed during that period bore the LABORATOIRE DE LA MER mark. According to the applicant, the products did not bear that mark until the intervener changed its company name in December 1997.
68 In that regard, it must be declared not only that the applicant’s claims are ambiguous, even inconsistent, but also that they are contradicted by the production certificate issued by the Porcher printing works on 21 November 1997, submitted to OHIM, in which it is stated that books of order forms were produced on 27 August 1992 for ‘Laboratoires Goëmar SA’, with the term ‘le laboratoire de la mer’ underneath, followed by ‘BP 55’ underneath that, then ‘35 413 Saint-Malo Cedex’.
69 That statement being made before the change of the trade name, it is therefore incorrect to claim that the LABORATOIRE DE LA MER mark was not used until 22 December 1997, the date on which the trade name was changed.
70 Moreover, according to the judgment of the regional court of Paris (France), in the file put before OHIM, an appeal was brought before that court on 11 August 1997, that is, precisely during the reference period, by the applicant itself, for a ruling that the intervener’s rights to the LABORATOIRE DE LA MER mark had lapsed, in which it also pleaded use of the Laboratoire de la mer name as a trade name rather than as a trade mark. That appeal was dismissed.
71 It is clear that, during the relevant period, and although the applicant could have claimed not only that there was no genuine use of the trade mark by the intervener, but above all that the latter did not use the LABORATOIRE DE LA MER mark despite its registration, the applicant has not filed any evidence to substantiate that claim, in particular by referring to products marketed by the intervener which do not bear that mark.
72 In those circumstances, the applicant’s statements that the products marketed by the intervener before its change of trade name in December 1997 did not bear that mark are not substantiated by any material in the file.
73 In respect of the applicant’s allegation that the intervener has not used the words ‘laboratoire de la mer’ as a trade mark but as a company name, it should be stated that the Board of Appeal was correct to take the view that the material does not support that assertion.
74 First, the fact that the term ‘laboratoire de la mer’ appears on certain packaging below ‘goëmar’ in smaller letters does not give support the conclusion that it is part of the company name. Secondly, on the packaging of products in the ‘Goëform’ range, ‘laboratoire de la mer’ does not appear below the company name. Thirdly, ‘laboratoire de la mer’ is followed by the ‘®’ symbol on the packaging of products in the ‘Iodus’ range. Fourthly, on invoices made out during the reference period, the company name is Laboratoires Goëmar SA, without the words ‘laboratoire de la mer’. Fifthly, the fact that the intervener registered Goëmar le laboratoire de la mer as a company name on 22 December 1997 cannot alter the finding that the evidence provided to OHIM shows that the words ‘laboratoire de la mer’ were used as a trade mark. If ‘laboratoire de la mer’ is also used as a trade name after the change of that name, such a use does not preclude the use of the parts which constitute it as a trade mark.
75 Moreover, it follows that the intervener has not changed the use of the mark as registered, since the words ‘laboratoire de la mer’ are not always placed next to the word ‘goëmar’ or, when they are, they are not joined up since one appears below the other. Nor is the fact that the intervener used the words ‘le laboratoire de la mer’ in some cases capable of altering the use of the trade mark as registered.
76 Concerning the argument regarding Directive 76/768, it suffices to state that the obligation to refer to the name of the manufacturer was fully complied with by merely including the words ‘goëmar’ or ‘laboratoires goëmar SA’ on the packaging. The inclusion of the words ‘laboratoire de la mer’ does not, therefore, reflect a requirement arising from that directive. In that respect, it is clear that, contrary to the applicant’s claims, the trade name Goëmar Le laboratoire de la mer does not seem to be have been used before its registration in December 1997, since according to the case-file submitted to OHIM the invoices made out up to 17 July 1998 (invoices No 35 491 of 31 March 1998, No 35 795 of 30 April 1998, No 36 065 of 26 May 1998, No 36 492 of 26 June 1998, and No 36 628 of 17 July 1998) refer only to the Laboratoires Goëmar SA name. It is only the invoice of 10 September 1998 and those issued subsequently which refer to the trade name attributable to the change made in December 1997, namely Goëmar Le laboratoire de la mer.
77 Thirdly, in respect of the evidence regarding soaps, bath additives and products in the ‘Goëform’ range which is irrelevant on the ground that those products are not cosmetics, so that they ought not to have been taken into account to determine genuine use, it should be noted that, contrary to the applicant’s claims, some products may have several functions and be covered by various categories.
78 However, it is clear that soaps may also be classified as cosmetics when, in particular, they are deemed to have cosmetic properties such as beautifying the skin or when they are perfumed. That same conclusion is arrived at so far as concerns bath additives which may be regarded as being cosmetics or soaps.
79 It should also be noted, as regards products in the ‘Goëform’ range which, according to the applicant, are nutritional additives for medical purposes within Class 5 of the Nice Agreement, that according to the brochures relating to the products concerned the latter are made up of small phials of which the contents should be ingested and which are designed to help lose weight (‘Minceur/ Drainage’), to regulate appetite (‘Minceur/Régulateur d’appétit’) and to beautify the skin (‘Beauté/Antiradicalaire’).
80 Contrary to the applicant’s claims, the fact that those products are taken orally is not sufficient to bring them within Class 5 of the Nice Agreement.
81 In that respect, as OHIM correctly noted, the current tendency, which is becoming increasingly widespread, is to market cosmetic products having, in particular, properties which are allegedly slimming or beautifying, and which are to be swallowed, without the method of use of those products permitting the inference that they are medical preparations under Class 5.
82 The examples provided by OHIM and taken from advertising which has appeared in Spanish newspapers show that products presented in the form of phials or individually sealed quantities are not for that reason medical preparations, which the applicant has not, moreover, pleaded.
83 In addition, contrary to what the applicant submits, it is incorrect to claim that the words ‘laboratoire de la mer’ appear only in the explanatory note for the products in the ‘Goëform’ range and not as a trade mark. A careful examination of those products submitted by the intervener for the Board of Appeal’s assessment makes it possible to state as a fact that the words ‘laboratoire de la mer’ appear underneath the graphic representation of the product. Although that inclusion is not easily visible to the naked eye, it is common ground that a minute inspection of that packaging makes it possible to read clearly the trade mark concerned.
84 It follows that it is necessary to reject the applicant’s argument that the evidence regarding the soaps, bath additives, and products in the ‘Goëform’ range must be dismissed.
85 Fourthly, as regards products in the ‘Lipozone’ range which do not prove, in the applicant’s view, genuine use of the trade mark on the ground that they appear only in undated brochures and are not included in invoices from the reference period, it is clear that, although the Board of Appeal stated in paragraph 21 of the contested decision that those brochures had been submitted by the intervener as evidence of the genuine use the trade mark in question, it is not apparent from the contested decision that the Board of Appeal relied on those brochures.
86 Lastly, as regards the volume of use, it is not correct to maintain, as the applicant does, that the 10 invoices which were submitted to OHIM do not make it possible to establish any significant use on account of the low figures referred to therein.
87 The 10 invoices, all made out to different persons, which show, in addition, that the trade mark was used publicly and outwardly and not solely within the undertaking which owned the earlier trade mark or within a distribution network owned or controlled by that undertaking (see VITAFRUIT, cited at paragraph 51 above, paragraph 50), were made out over a period running from 3 January 1995 to 20 October 1997, that is, over 33 months, regarding several product ranges of which the packaging bears the trade mark concerned and with numbers which are very far apart (22 214 for the invoice of 3 January 1995, 24 085 for that of 4 May 1995, 24 135 for that of 10 May 1995 and 31 348 for that of 26 March 1997), which permits the inference that they were submitted merely by way of illustration.
88 Since those invoices are illustrative, they cannot represent the amount of actual sales of products bearing the trade mark. As is apparent from the case-file submitted to the Board of Appeal, the invoices are numbered upwards in chronological order.
89 In that connection, it should be stated that the intervener has, under invoice No 31 348 of 26 March 1997, sold products for FRF 1 391.16 (or EUR 212.08), and under invoice No 31 786 of 22 April 1997, sold products for FRF 1 357.16 (EUR 206.90).
90 The sales effected, even though they are not considerable, constitute use which objectively is such as to create or preserve an outlet for the products concerned and which entails a volume of sales which, in relation to the period and frequency of use, is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (Ansul, cited at paragraph 38 above, paragraphs 35 and 36; see, to that effect, VITAFRUIT, cited above at paragraph 51, paragraph 49).
91 In those circumstances, the first plea must be rejected.
The second plea: infringement of Article 8(1)(b) of Regulation No 40/94
Arguments of the parties
92 The applicant complains that the Board of Appeal found that there was a likelihood of confusion between the LABORATOIRE DE LA MER and LA MER signs although those terms are visually, phonetically and conceptually sufficiently different to exclude any confusion.
93 First, regarding the product comparison, the applicant observes that use of the earlier mark was proved only for a make-up remover fluid and possibly for a therapeutic bath additive. Consequently the comparison ought to have been made between, on the one hand, ‘cosmetics, soaps, perfumery, essential oils, hair lotions, dentifrices and toiletries’ and, on the other, ‘make-up remover fluids and bath additives on a marine product base’. The applicant denies that perfumery, essential oils, hair lotions and dentifrices are strongly similar to make-up remover fluids and bath additives (assuming that the latter are to be taken into account). Those products are not normally manufactured by the same companies and it is not true that they are offered ‘side by side’ in the same sales outlets. Therefore the applicant maintains that further differentiation would have been necessary as the goods are partly identical (cosmetics), partly strongly similar (soaps, toiletries) and partly remotely similar (perfumery, essential oils, hair lotions, dentifrices).
94 Secondly, with regard to the comparison of the trade marks, the applicant submits that ‘la mer’ is not the dominant and distinctive element of the LABORATOIRE DE LA MER mark. It is commonly understood that in principle a complex word mark is distinguished by its beginning, which dominates the imperfect recollection of the consumer, particularly in the mass consumer products market. It is contradictory for the intervener to argue, on the one hand, that the word ‘laboratoire’ merely describes the place of production and, on the other, that ‘la mer’ is used and understood as a trade mark. The intervener uses the whole phrase as a description of its area of specialisation, namely marine products. According to the applicant, the intervener sometimes uses ‘goëmar le laboratoire de la mer’ in a descriptive text and sometimes in conjunction with its address and that is understood as a reference to the intervener’s field of business.
95 According to the applicant, there is no reason to deviate from the general rule that a consumer usually perceives a mark as a whole and does not proceed to analyse the different elements that constitute it. That is certainly the case with regard to the LABORATOIRE DE LA MER sign, where ‘laboratoire’ carries the conceptual weight and stands out both visually (length and position within the mark) and phonetically (length and being placed at the beginning). Consequently, ‘de la mer’ is understood as a particular specification of ‘laboratoire’ and not by itself as the distinctive and dominant element. In addition, the applicant cites examples of cosmetics which make very numerous references to the sea.
96 The descriptive nature of the LA MER mark is even more apparent in the context of thalassotherapy, based on the soothing effect of the sea to which the ‘Le thalasso bain’ product range alludes. In that connection, the applicant stresses that OHIM wrongly refused to register the BAUME DE LA MER sign on the ground that it was descriptive, which is totally inconsistent with the acceptance of the CREME DE LA MER, ÉMULSION DE LA MER and BRUME DE LA MER trade marks. According to the applicant, the phrase ‘de la mer’ is allusive, particularly when combined with the word ‘laboratoire’. Accordingly, there is no justification for shortening the earlier LABORATOIRE DE LA MER mark, which is registered for cosmetics of a marine products base, and reducing it to LA MER. The LA MER trade mark, on the contrary, is not perceived as describing the nature of the products and does not relate at all to products coming from the sea. The applicant concludes that the earlier mark and the LA MER sign are not visually, phonetically or conceptually similar. Visually and phonetically, the fact that ‘laboratoire de’ marks the beginning of the complex earlier mark and is also longer than ‘la mer’ is decisive. Conceptually, the LABORATOIRE DE LA MER sign means that Goëmar, the laboratory, is situated by the sea. The words ‘la mer’ mean nothing specific in relation to cosmetics and allude only to the fact that the products have some relationship with the sea.
97 OHIM, supported by the intervener, contends that the plea should be dismissed.
Findings of the Court
98 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered ‘if because of its identity with or similarity to the 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.’
99 In addition, under Article 8(2)(a)(ii) of Regulation No 40/94, ‘earlier trade marks’ means Community trade marks and marks registered in a Member State with a date of application for registration which is earlier than the date of the Community trade mark application.
100 According to the case-law of the Court of Justice on the interpretation of Article 4(1)(b) of Directive 89/104, the content of which is, essentially, identical to that of Article 8(1)(b) of Regulation No 40/94, and of the Court of First Instance concerning that regulation, 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 (Case C‑39/97 Canon [1998] ECR I-5507, paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17; Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 25; Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 34, and judgment of 15 March 2006 in Case T‑31/04 Eurodrive Services and Distribution v OHIM – Gómez Frías (euroMASTER), not published in the ECR, paragraph 28).
101 Further, it is common ground that the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 22; Canon, cited above at paragraph 100, paragraph 16; Lloyd Schuhfabrik Meyer, cited above at paragraph 100, paragraph 18; Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 40; Fifties, cited above at paragraph 100, paragraph 26; and DIESELIT, cited above at paragraph 100, paragraph 35).
102 That global assessment implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (CANON, cited above at paragraph 100, paragraph 17; Lloyd SchuhfabrikMeyer, cited above at paragraph 100, paragraph 19, and Marca Mode, cited above at paragraph 101, paragraph 40; Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 25, upheld on appeal by order of the Court of Justice in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657). The interdependence of those factors is expressly referred to in the seventh recital in the preamble to Regulation No 40/94, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (DIESELIT, cited above at paragraph 100, paragraph 36, and the case-law cited).
103 Furthermore, that global appreciation of the visual, aural or conceptual similarity of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 40/94 that ‘there exists a likelihood of confusion on the part of the public’ shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, SABEL, cited above at paragraph 101, paragraph 23, and Lloyd Schuhfabrik Meyer, cited above at paragraph 100, paragraph 25; order in Matratzen Concord v OHIM, cited above at paragraph 102, paragraph 29; Fifties, cited above at paragraph 100, paragraph 28, and Case T‑355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II-791, paragraph 41).
104 For the purposes of that global appreciation of the likelihood of confusion, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 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 (Lloyd Schuhfabrik Meyer, cited above at paragraph 100, paragraph 26; Fifties, cited above at paragraph 100, paragraph 28; and DIESELIT, cited above at paragraph 100, paragraph 38).
105 Finally, it follows from the unitary character of the Community trade mark laid down in Article 1(2) of Regulation No 40/94 that an earlier Community trade mark is protected in the same way in all Member States. Earlier Community trade marks may therefore be pleaded in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in relation to the perception of the consumers of part of the Community. It follows that the principle laid down in Article 7(2) of Regulation No 40/94, that it suffices, in refusing to register a trade mark, that an absolute ground for refusal exists only in part of the Community, also applies by analogy to a relative ground for refusal under Article 8(1)(b) of Regulation No 40/94 (MATRATZEN, cited above at paragraph 102, paragraph 59; ZIRH, cited above at paragraph 103, paragraph 36; Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS,NLACTIVE and NLCOLLECTION) [2004] ECR II-3471, paragraph 34; and Case T‑185/03 Fusco v OHIM– Fusco International (ENZO FUSCO) [2005] ECR II-715, paragraph 33).
106 In the present case, the trade marks on which the opposition was based are national trade marks registered in Greece, France and the United Kingdom, and an international registration having effect in Italy and Portugal claiming priority of the French registration (see paragraph 4 above). The contested decision was based only on the earlier French mark, which the parties do not dispute. Accordingly, the examination must be restricted to France.
107 Nor is it disputed that the relevant public is composed, as the Board of Appeal correctly stated in paragraph 35 of the contested decision, of average French consumers who, it is supposed, are reasonably well informed and reasonably observant and circumspect.
108 It is in the light of the foregoing considerations that it is necessary to examine the Board of Appeal’s assessment of the likelihood of confusion between the conflicting signs.
– Similarity of the goods
109 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors which characterise the relationship between the goods or services should be taken into account, including, inter alia, their nature, their intended use, their method of use and whether they are in competition with each other or are complementary (Sunrider v OHIM, cited at paragraph 51 above, paragraph 85; see Case T‑99/01 Mystery Drinks v OHIM – Karlsberg Brauerei (MYSTERY) [2003] ECR II-43, paragraph 39, and the case-law cited; Case T‑385/03 Miles International v OHIM – Biker Miles (Biker Miles) [2005] ECR II‑2665, paragraph 31; and euroMASTER, cited at paragraph 100 above, paragraph 31].
110 As regards the assessment of the similarity of the goods in question, it must be stated, as the Board of Appeal correctly noted in paragraph 33 of the contested decision, that ‘cosmetics’ in the Community trade mark application include ‘cosmetics of a marine product base’, so that they are identical.
111 So far as concerns ‘soaps, perfumery, essential oils, hair lotions, dentifrices, toiletries’ in the Community trade mark application, it should be stated that they share hygiene and cosmetic properties. The cosmetic products of the earlier mark may also be used for hygiene purposes. As was stated in paragraphs 77 to 84 above, soaps and bath additives are used not only for cleaning the skin but also for making the skin more beautiful and claim therefore to have cosmetic properties. On that point, in paragraph 33 of the contested decision the Board of Appeal correctly noted that beautification is not obtained only by the use of traditional means, such as make-up or other cosmetics, but also through the use of products which, although they may be hygienic, serve beauty purposes as well: for example, soap that is composed in a manner whereby there is only a minimum of skin dehydration, thus leading to a more beautiful skin or dentifrices that, in addition to cleaning teeth, also make them whiter.
112 Moreover, those products may be sold in the same sales outlets and be directed at an identical category of consumers. In addition, quite often the manufacturers of those products are the same.
113 Finally, the applicant itself concedes, in its complaint alleging that the Board of Appeal ought to have made an additional distinction between the goods, that besides the cosmetics which are identical, all the other products are, to differing degrees, similar to those bearing the earlier mark.
114 The Board of Appeal was therefore right to take the view, in paragraph 33 of the contested decision, that ‘soaps, perfumery, essential oils, hair lotions, dentifrices, toiletries’ under the Community trade mark and ‘cosmetics of a marine product base’ under the earlier mark are very similar.
– Similarity of the signs
115 As has already been stated in paragraph 103 above, the global assessment of a likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (see SABEL, cited at paragraph 101 above, paragraphs 22 to 24, and LloydSchuhfabrik Meyer, cited at paragraph 100 above, paragraph 25; Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel [2003] ECR II‑4335, paragraph 47, and Case T‑135/04 GfK v OHIM – BUS (Online Bus) [2005] ECR II‑4865, paragraph 57).
116 It is also apparent from the case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (MATRATZEN, cited at paragraph 102 above, paragraph 30; Case T‑34/04 Plus v OHIM – Bälz and Hiller (Turkish Power) [2005] ECR II‑2401, paragraph 43, and the judgment of 26 January 2006 in Case T‑317/03 Volkswagen v OHIM – Nacional Motor (Variant), not published in the ECR, paragraph 46).
117 The Board of Appeal was of the view, in paragraph 34 of the contested decision, that on an overall assessment the marks were similar because, although displaying some differences, they remained partly identical, namely with regard to the ‘la mer’ component.
118 In that respect, it is clear that one of the components of the conflicting signs, namely ‘la mer’, is identical in the two signs.
119 The signs to be compared are the following:
LA MER |
LABORATOIRE DE LA MER |
120 As regards, first, the visual comparison, the mark applied for is composed of two words, written in capital letters, which makes five letters. The earlier mark is made up of four words, also written in capital letters, adding up to 18 letters.
121 The mark applied for is therefore much shorter than the earlier mark. It should also be stated that the words ‘la mer’ are two of the constituents of the earlier mark and the only two words in the mark applied for.
122 The conflicting signs thus display some degree of visual similarity because they both contain ‘la mer’.
123 So far as concerns, secondly, the phonetic comparison, the mark applied for comprises two syllables and the earlier mark eight. The two signs are therefore pronounced differently. However, on account of the fact that the two last syllables of the earlier mark and the mark applied for are identical and are pronounced in the same way, there is some phonetic similarity between the two signs taken as a whole.
124 Thirdly, with regard to the conceptual comparison, as OHIM stated, in respect of cosmetic products, the word ‘laboratoire’ may easily be perceived by average consumers of that type of goods as referring to the place where they were designed, elaborated or manufactured or as according the goods concerned with a scientific nature and sophistication. The low distinctiveness of the word ‘laboratoire’ must be weighed up in the global assessment against the words ‘la mer’ which make it possible to distinguish the goods of one undertaking from those of another. Those words are the dominant and distinctive element of the earlier mark in that they refer to certain properties of the goods. Accordingly, as the Board of Appeal correctly noted in paragraph 34 of the contested decision, there is a strong conceptual similarity between the LABORATOIRE DE LA MER and LA MER signs.
125 Although, as the applicant states, consumers normally attach more importance to the beginning of words, it appears in the present case that the dissimilarity of the two conflicting signs regarding the first two words of the earlier mark is not sufficient to neutralise, in particular from a conceptual point of view, the similarity found between the most relevant part, in terms of meaning, of the earlier mark and the sole verbal element of the mark applied for (see, to that effect, Variant, cited at paragraph 116 above, paragraph 50; see also, to that effect, Case T‑22/04 Reemark v OHIM – Bluenet (Westlife) [2005] ECR II‑1559, paragraph 36).
126 As to the complaint regarding the rejection of the application of the BAUME DE LA MER sign, whereas marks such as CRÈME DE LA MER, ÉMULSION DE LA MER and BRUME DE LA MER, which nevertheless contain the words ‘la mer’, were registered, it suffices to point out that, according to settled case-law, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of the Boards of Appeal (Case C-37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 47; Case T‑36/01 Glaverbel v OHIM (Surface of a plate of glass) [2002] ECR II‑3887, paragraph 35; Joined Cases T‑79/01 and T‑86/01 Bosch v OHIM (Kit Pro and Kit Super Pro) [2002] ECR II‑4881, paragraph 32, and Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 71).
127 Consequently, the Board of Appeal was entitled to conclude that the conflicting signs, each considered as a whole, are similar by taking into account in particular the fact that the only element of the mark applied for and the distinctive element of the earlier mark are identical (see, to that effect, Biker Miles, cited at paragraph 109 above, paragraph 45, and Case T‑40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II‑2831, paragraph 76).
– Likelihood of confusion
128 It should be noted that there exists a likelihood of confusion if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, cited at paragraph 102 above, paragraph 45).
129 In the present case, it has already been found in paragraphs 109 to 144 above that the goods in question are partly identical and partly similar. Further, the overall impression given by the conflicting signs, taking into account their distinctive and dominant elements, is capable of creating sufficient similarity between them to give rise to the likelihood of confusion in consumers’ minds. Moreover, even if the relevant public is able to distinguish the signs at issue, as was noted by OHIM, it could nonetheless be led to believe that the marks come from the same undertaking or, as the case may be, economically-linked undertakings, identified by the words ‘la mer’.
130 It follows that, considered cumulatively, the degree of similarity of the marks in question and the degree of similarity of the goods covered by those marks are sufficiently high. For that reason, the Board of Appeal was entitled to take the view that there was a likelihood of confusion between the marks in question.
131 The second plea must therefore be rejected.
132 It follows from all of the foregoing that the action must be dismissed.
Costs
133 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs. Since the applicant has been unsuccessful, it must be ordered to pay the costs of OHIM and the intervener, as applied for by the latter.
On those grounds,
THE COURT OF FIRST INSTANCE (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders La Mer Technology, Inc., to pay its own costs and those of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Laboratoires Goëmar.
Vilaras | Martins Ribeiro | Jürimäe |
Delivered in open court in Luxembourg on 27 September 2007.