JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 December 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark KINDERPRAMS — Earlier national figurative marks Kinder — Relative ground for refusal — Likelihood of confusion — Identity or similarity of the goods and services — Similarity of the signs — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑115/18,
Tomasz Kawałko Trofeum, established in Gdynia (Poland), represented by P. Moksa, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervening before the General Court, being
Ferrero SpA, established in Alba (Italy), represented by F. Jacobacci and L. Ghedina, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 December 2017 (Case R 1112/2017-4), relating to opposition proceedings between Ferrero and Tomasz Kawałko Trofeum,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, S. Papasavvas (Rapporteur) and O. Spineanu-Matei, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 26 February 2018,
having regard to the response of EUIPO lodged at the Court Registry on 3 July 2018,
having regard to the response of the intervener lodged at the Court Registry on 12 July 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks of service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 28 May 2014, the applicant, Tomasz Kawałko Trofeum, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (UE) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign KINDERPRAMS.
3 The services in respect of which registration was applied for are in Classes 35 and 38 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 35: ‘Import-export agency services; Business brokerage, wholesaling and retailing of the following goods: pushchairs, vehicle safety seats for children, playthings, children’s clothing, children’s furniture, mattresses and bedding, baby bouncers and infant walkers, swings, sling bags for carrying infants, bicycles, breathing monitors, electronic baby monitors, safety gates; Marketing and presentation of goods via television, radio, the internet, computer networks and other means of communications with the option of mail order; Advertising agencies, advertising and business information, for others, arranging and conducting of advertising campaigns, promotional campaigns, demonstration and presentation of goods, auctioneering, verbal, audio, audiovisual and multimedia advertising for transmission via television, radio, the internet, computer networks and other means of communications; Dissemination, updating and rental of advertising matter, rental and rental brokerage of space (including virtual space) for advertising purposes, arranging of trade fairs and exhibitions for commercial and/or advertising purposes, arranging and conducting, for others, of trade fairs, exhibitions, demonstration and presentation of goods; Accepting orders for goods via means of telecommunication’;
– Class 38: ‘News agencies; radio and television broadcasting, communications and data transmission via the internet, computer networks and other means of communication, electronic mail, electronic mail accounts; Providing user access to information on computer networks, setting up and providing computer services relating to discussion lists and forums; Electronic advertising’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 2014/153 of 19 August 2014.
5 On 19 November 2014, the intervener, Ferrero SpA, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based on the following earlier national marks:
– Italian trade mark registration No 1 525 361 of the figurative mark reproduced below, registered on 10 January 2013 in respect, inter alia, of the following goods and services:
– Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus’;
– Class 12: ‘Vehicles; apparatus for locomotion by land, air or water’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’;
– Class 20: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’;
– Class 25: ‘Clothing, footwear, headgear’;
– Class 28: ‘Games, toys; gymnastic and sporting articles not found in other classes; decorations for Christmas trees’;
– Class 35: ‘Advertising; business management; business administration; office functions’;
– Class 38: ‘Telecommunications’.
– Italian trade mark registration No 1 338 020 of the figurative mark reproduced below, registered on 20 September 2010 in respect, inter alia, of the following goods and services:
– Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and electronic devices; fire-extinguishing apparatus; registered programs for electronic devices’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’;
– Class 25: ‘Clothing, footwear, headgear’;
– Class 28: ‘Games, toys; gymnastic and sporting articles not found in other classes; decorations for Christmas trees’;
– Class 38: ‘Telecommunications’.
– Italian trade mark registration No 1 446 680 of the figurative mark reproduced below, registered on 29 April 2011 in respect, inter alia, of the following goods and services:
– Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and electronic devices; fire-extinguishing apparatus; registered programs for electronic devices’;
– Class 12: ‘Vehicles; apparatus for locomotion by land, air or water’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’;
– Class 20: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’;
– Class 25: ‘Clothing, headgear, footwear’;
– Class 28: ‘Games, toys; gymnastic and sporting articles not found in other classes; decorations for Christmas trees’;
– Class 35: ‘Advertising; business management; business administration; office functions’;
– Class 38: ‘Telecommunications’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 On 27 March 2017, the Opposition Division upheld the opposition in respect of all the services covered by the mark applied for, with the exception of the services ‘business brokerage’ and ‘wholesaling and retailing vehicle safety seats for children’ in Class 35.
9 On 25 May 2017, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division in so far as it had upheld the opposition in respect of the services covered by the mark applied for other than the services of ‘business brokerage’ and ‘wholesaling and retailing vehicle safety seats for children’ in Class 35. On 28 September 2017, the intervener submitted observations in response and submitted that the decision of the Opposition Division should be annulled in so far as it had dismissed the opposition in respect of ‘business brokerage’ and ‘wholesaling and retailing vehicle safety seats for children’ in Class 35.
10 By decision of 14 December 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division in so far as it had upheld the opposition in respect of ‘auctioneering’ services in Class 35, rejected the opposition as to the remainder, and dismissed the intervener’s cross-appeal.
11 In particular, the Board of Appeal stated that, bearing in mind the cross-appeal brought by the intervener, it was necessary to examine the opposition with respect to all the services covered by the mark applied for. As to the remainder, the Board of Appeal found that, since the opposition was based on three earlier Italian trade marks, it was necessary to examine, first of all, the opposition based on the earlier Italian figurative trade mark Kinder No 1 525 361 registered on 10 January 2013 (‘earlier mark No 1 525 361’). It considered that the relevant territory for analysing the likelihood of confusion was Italy and that the relevant public included the public at large and the professional public. So far as concerns the overall likelihood of confusion, the Board of Appeal found — with regard to the services covered by the mark applied for, which were identical or similar to the goods and services covered by earlier mark No 1 525 361 — that, taking into account the average degree of visual and phonetic similarity between the marks at issue and the normal level of distinctiveness of the earlier mark, there existed a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of the relevant public, even taking into account a higher level of attentiveness. As regards the services ‘business brokerage’, ‘wholesaling and retailing vehicle safety seats for children’ and ‘auctioneering’ in Class 35 and covered by the mark applied for, the Board of Appeal found that, since those services differed from the goods and services covered by the earlier marks, the opposition had to be rejected.
Forms of order sought
12 The applicant claims that the Court should:
– amend the contested decision;
– order EUIPO to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the application for amendment;
– order the applicant to pay the costs.
14 The intervener contends that the Court should:
– uphold the contested decision;
– order the applicant to pay the costs that the intervener has incurred in the present proceedings.
Law
15 As a preliminary point, it should be noted, first, that, although the applicant’s first head of claim formally seeks the amendment of the contested decision, it is clear from the content of the application that, by its action, the applicant seeks, in essence, the annulment of the contested decision on the ground that the Board of Appeal wrongly found that there existed a likelihood of confusion in respect of all the services covered by the opposition, with the exception of the services ‘business brokerage’, ‘wholesaling and retailing vehicle safety seats for children’ and ‘auctioneering’ in Class 35.
16 Secondly, it should be noted that, in the absence of any legal interest in bringing proceedings, the applicant is not entitled to request the annulment of the contested decision in so far as the latter relates to the services ‘business brokerage’, ‘wholesaling and retailing vehicle safety seats for children’ and ‘auctioneering’ in Class 35 and covered by the mark applied for, in respect of which the opposition was rejected. By contrast, the action is admissible with regard to the other services covered by the mark applied for.
17 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
18 The applicant takes the view, in essence, that the Board of Appeal erred in finding that the mark applied for would create a likelihood of confusion with earlier mark No 1 525 361 on the part of the relevant public.
19 EUIPO and the intervener dispute the applicant’s arguments.
20 Under Article 8(1)(b) of Regulation 2017/1001, 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. Furthermore, pursuant to Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier marks’ is understood to mean trade marks registered in a Member State, with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
21 It is settled case-law that 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. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
22 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see, by analogy, judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
23 In the present case, it is appropriate to examine, as the Board of Appeal did, the single plea in law raised by the applicant, by comparing the mark applied for and earlier mark No 1 525 361.
The relevant public
24 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonable observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 21 October 2015, Petco Animal Supplies Stores v OHIM — Gutiérrez Ariza (PETCO), T‑664/13, EU:T:2015:791, paragraph 43 and the case-law cited).
25 First, as stated in paragraph 11 above, the Board of Appeal held that the relevant territory for analysing the likelihood of confusion was Italy. The Board added that the relevant public included the public at large and the professional public. Those assessments of the Board of Appeal, which are not disputed by the applicant, must be upheld in the light of the nature of the goods and services covered and the mark applied for.
26 Secondly, the Board of Appeal held that the level of attention of the relevant public varied from average to above average. The applicant objects that an average consumer of pushchairs or vehicle seats for children pays an above average level of attention to those types of goods given that the price of such goods is relatively high, they are intended to ensure child safety and are not frequently purchased. Furthermore, the applicant also states that the Board of Appeal refused to attach any relevance to the criterion relating to the variable level of attention that the relevant public is likely to pay according to the category of goods. On that point, it suffices to note that (i) as stated in paragraph 16 above, the opposition was rejected in respect of ‘wholesaling and retailing vehicle safety seats for children’ in Class 35 and covered by the mark applied for, so that the applicant does not have an interest in bringing proceedings in that regard; and (ii) the Board of Appeal found that the level of attention of the relevant public varied ‘from average to above average’. Bearing in mind the goods and services covered by marks at issue, the Board of Appeal’s assessment as to the level of attention of the relevant public is free from any error of assessment and must be upheld.
Comparison of the goods and services
27 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods and services concerned. Furthermore, the fact that the goods or services concerned are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production thereof (see judgment of 27 September 2016, Satkirit Holdings v EUIPO — Advanced Mailing Solutions (luvoworld), T‑450/15, not published, EU:T:2016:543, paragraph 36 and the case-law cited).
28 The applicant merely contends that the goods and services covered by the marks at issue are similar to a low degree.
Services in Class 35
29 In the first place, it should be borne in mind that, according to the case-law, where the goods or services covered by the earlier mark include the goods or services covered by the trade mark application, those goods and services are considered to be identical (see judgment of 19 May 2015, Granette & Starorežná Distilleries v EUIPO — Bacardi (42 VODKA JEMNÁ VODKA VYRÁBĚNÁ JEDINEČNOU TECHNOLOGIÍ 42%vol.), T‑607/13, not published, EU:T:2015:292, paragraph 36 and the case-law cited).
30 In the present case, it must be held that, as the Board of Appeal rightly found, the ‘advertising services’ in Class 35 and covered by earlier mark No 1 525 361 include ‘marketing and presentation of goods via television, radio, the internet, computer networks and other means of communication with the option of mail order; Advertising agencies, advertising and business information, for others, arranging and conducting of advertising campaigns, promotional campaigns, demonstration and presentation of goods, verbal, audio, audiovisual and multimedia advertising for transmission via television, radio, the internet, computer networks and other means of communications; Dissemination, updating and rental of advertising matter, rental and rental brokerage of space (including virtual space) for advertising purposes, arranging of trade fairs and exhibitions for commercial and/or advertising purposes, arranging and conducting, for others, of trade fairs, exhibitions, demonstration and presentation of goods’ covered by the mark applied for. Those services must therefore be considered identical.
31 In the second place, it must be observed that the Board of Appeal rightly found that the services ‘import-export agency services’ and ‘accepting orders for goods via means of telecommunication’ covered by the mark applied for were similar, at least to an average degree, to the services ‘business administration’ which are also included in Class 35 and covered by earlier mark No 1 525 361. The Board of Appeal stated, without any error of assessment, that business administration services designated business support services provided by specialised companies which study their clients’ needs and provide all the necessary information and advice in order to help them with the organisation and running of their businesses. Accordingly, the Board rightly found that all the services at issue served the same purpose, targeted the same professional clients and could be provided by the same service providers. Such an assessment is free of any error of assessment, so the services at issue must be considered to be similar to an average degree.
32 In the third place, as regards the services ‘wholesaling and retailing of playthings, children’s clothing, children’s furniture, mattresses and bedding, baby bouncers and infant walkers, swings, sling bags for carrying infants, bicycles, breathing monitors, electronic baby monitors, safety gates’ covered by the mark applied for, the Board of Appeal found that they were similar to an average degree to ‘vehicles’ in Class 12, ‘playthings, games’ in Class 28, ‘clothing’ in Class 25, ‘furniture’ in Class 20, ‘trunks and travelling bags’ in Class 18, and ‘apparatus for recording, transmission or reproduction of sound or images’ in Class 9, covered by earlier mark No 1 525 361. As regards those goods and services, the Board of Appeal stated that the goods which were the subject of the services covered by the mark applied for were identical to the goods protected by earlier mark No 1 525 361. It thereby inferred that those services could be offered in the same places as those in which the goods covered by earlier mark No 1 525 361 were sold. Furthermore, the Board found that there was a complementary nature between those services covered by the mark applied for and those goods covered by earlier mark No 1 525 361.
33 In that regard, it should be noted that, according to the case-law, complementary goods or services are those which have a close connection, in the sense that one is indispensable to, or important for, the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods and services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel,T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
34 In the present case, as the Board of Appeal rightly found, it must be considered that there is a strong link between certain services designated by the mark applied for and certain goods designated by earlier mark No 1 525 361, in the sense that those services consist in the sale of those goods. Certain goods designated by earlier mark No 1 525 361 are therefore essential to certain services designated by the mark applied for. Those goods and services are therefore complementary for the purposes of the case-law cited in paragraph 33 above.
35 The same applies to ‘wholesaling and retailing of pushchairs and bicycles [for children]’ covered by the mark applied for, which are complementary to the category of ‘vehicles’ in Class 12 and covered by earlier mark No 1 525 361. Furthermore, the ‘wholesaling and retailing of playthings, baby walkers and swings’, together with ‘children’s clothing’, covered by the mark applied for, are complementary to ‘games and playthings’ in Class 28 and ‘clothing’ in Class 25 respectively, covered by earlier mark No 1 525 361. Similarly, the ‘wholesaling and retailing of children’s furniture, mattresses and bedding, safety gates’ covered by the mark applied for are complementary to ‘furniture’ in Class 20, covered by earlier mark No 1 525 361. The same applies to ‘wholesaling and retailing of baby seats’ covered by the mark applied for, which are complementary to ‘furniture’ covered by earlier mark No 1 525 361, and not ‘games and playthings’ as the Board of Appeal wrongly found without, however, such an error having any influence whatsoever on the lawfulness of the contested decision. Lastly, the ‘wholesaling and retailing of sling bags for carrying infants’ and of ‘breathing monitors and electronic baby monitors’ covered by the mark applied are complementary to ‘trunks and travelling bags’ in Class 18 and ‘apparatus for recording, transmission or reproduction of sound or images’ in Class 9, respectively, and covered by earlier mark No 1 525 361.
36 The applicant has failed validly to challenge those assessments, and merely argues that the Board of Appeal rightly found that the goods covered by the mark applied for were similar to a low degree to the goods in Classes 9, 12, 20, 25 and 28 covered by earlier mark No 1 525 361. The applicant also stated that it cannot be considered that the goods covered by that earlier mark were similar to those in Classes 35 and 38 covered by the mark applied for.
37 First, it should be borne in mind that, as stated in paragraph 3 above, the mark applied for covers services only. Secondly, it must be noted that the Board of Appeal found that the services covered by the mark applied for and the goods covered by earlier mark No 1 525 361, referred to in paragraph 32 above, were similar to an average degree and not, as the applicant claims, to a low degree. Such an argument cannot, therefore, be accepted.
38 In those circumstances, it must be found that the Board of Appeal did not commit any error of assessment in finding that, taking account of their complementarity, the goods and services mentioned in paragraph 35 above were similar to an average degree.
Services in Class 38
39 The Board of Appeal rightly found that the services in Class 38 covered by the mark applied for, that is, ‘news agencies; radio and television broadcasting, communications and data transmission via the internet, computer networks and other means of communication, electronic mail, electronic mail accounts’ belonged to the broader category of ‘telecommunication services’ in Class 38, covered by earlier mark No 1 525 361. Furthermore, like the Opposition Division before it, the Board of Appeal did not commit any error of assessment in finding that the services ‘providing user access to information on computer networks, setting up and providing computer services relating to discussion lists and forums; electronic advertising’ were similar to ‘telecommunication services’ in Class 38 and covered by earlier mark No 1 525 361, on the ground in particular that those types of services were provided by the same undertakings and intended for the same users. The Board of Appeal also rightly affirmed that, for the same reasons, the services ‘electronic advertising’ in Class 38 covered by the mark applied for, were highly similar to the services ‘advertising’ in Class 35 covered by earlier mark No 1 525 361.
40 It follows from the foregoing that the services covered by the mark applied for, which are the subject matter of the present dispute, are either identical or similar to various degrees — that is, average or high — to the goods and services covered by earlier mark No 1 525 361.
Comparison of the signs
41 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
42 In that connection, it should be recalled that the signs to compare are, on the one hand, the word mark KINDERPRAMS and, on the other hand, the figurative mark Kinder No 1 525 361.
Visual similarity
43 As regards the comparison of the two marks at issue from a visual point of view, it should be recalled that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
44 The Board of Appeal found that there was an average degree of visual similarity between the signs at issue.
45 The applicant argues that EUIPO failed to conduct an exact and exhaustive analysis of the similar or different elements in the marks at issue. It states that EUIPO relied on the unfounded premiss that the marks at issue are similar to an average degree without stating what gives rise to such similarity. In the applicant’s view, EUIPO ought to have analysed the shared characteristics and the differences, as well as the dominant elements of the marks at issue. The applicant also states that EUIPO erred in finding that average consumers focused their attention solely on the first part of the mark whilst ignoring the remainder. The applicant further argues that although the word ‘kinder’ is common to the marks at issue, the addition of the component ‘prams’ in the mark applied for gives it a special, autonomous character.
46 EUIPO and the intervener dispute the applicant’s arguments.
47 In the present case, it must be noted that the mark applied for is a word mark comprising the word ‘kinderprams’, whereas earlier mark No 1 525 361 is a figurative mark comprising the word element ‘kinder’ written in bold characters using lower-case letters with the exception of the initial ‘k’, which is in upper case. The letters are black.
48 In that connection, it should be noted that, given that the element ‘kinder’, which is the sole component of earlier mark No 1 525 361, is included in its entirety within the mark applied for, the signs at issue are partially identical in such a manner as to create a certain impression of visual similarity in the mind of the relevant public (see, to that effect, judgment of 23 April 2015, Iglotex v OHIM — Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 65).
49 Furthermore, contrary to the applicant’s claim, the Board of Appeal rightly recalled that the consumer will generally pay greater attention to the beginning of a mark than to the end. According to the case-law, the first part of a trade mark tends normally to have a greater visual and phonetic impact than the final part, even if that argument does not hold in all cases (see judgment of 15 September 2016, JT International v EUIPO — Habanos (PUSH), T‑633/15, not published, EU:T:2016:492, paragraph 28 and the case-law cited).
50 The applicant argues that such an assertion is mistaken since it fails to take into account the fact that the word ‘kinder’ is widely used in the verbal designation of certain goods. The applicant takes the view, therefore, that there are numerous entities on the European market which promote their goods using the word ‘kinder’.
51 In that regard, it suffices to state that the fact that several undertakings use the word ‘kinder’ to designate their goods does not preclude the relevant public, when confronted with a sign, paying more attention to the first part thereof.
52 Accordingly, the Board of Appeal did not commit any error of assessment in finding, after conducting a sufficient analysis of the marks at issue, that they were visually similar to an average degree.
Phonetic similarity
53 The Board of Appeal found that there was an average degree of phonetic similarity between the marks at issue.
54 The applicant’s criticisms, as set out in paragraph 45 above, are also directed at the assessment of the phonetic similarity between the marks at issue.
55 In the present case, it must be noted that two out of three syllables are identical in the marks at issue and that only the syllable placed at the end of the mark applied for, that is, the suffix ‘prams’, is different. The presence of that extra suffix compared to earlier mark No 1 525 361 is not capable of counteracting the similarity arising from the series of letters common to both marks, namely ‘k’, ‘i’, ‘n’, ‘d’, ‘e’ and ‘r’.
56 Accordingly, the Board of Appeal rightly found, after conducting a sufficient analysis of the marks at issue, that there was an average phonetic similarity between them, in the light of the presence of the same series of letters in both signs, which are, moreover, placed at the beginning of those signs and therefore liable to attract the consumer’s attention more.
Conceptual similarity
57 The Board of Appeal found that, conceptually, neither mark conveyed a concept and that, accordingly, the comparison remained neutral.
58 The applicant disputes that the fact that the word ‘kinder’ is totally devoid of meaning for the average Italian consumer. It states that, in the light of the free movement of goods and services together with open borders, the knowledge of languages amongst inhabitants of the Member States is increasing, especially in the case of basic words and phrases. The applicant also states that it is natural to be confronted with goods designated by basic words in other languages, which it claims is the case for the word ‘kinder’, a word used by numerous undertakings. It asserts that the average Italian consumer will equate a good, the name of which comprises the word ‘kinder’, with a good intended for children, whereas earlier mark No 1 525 361 is identifiable in the confectionery sphere only. The applicant claims that weak knowledge of a language from which a given word or part of a word comes does not in itself allow it to be concluded that that word or that part of the word has no meaning and remains an abstract concept for the consumer. Furthermore, the applicant states that the addition of the word element ‘prams’ to the word ‘kinder’ has given rise to a new, abstract expression.
59 In that connection, it must be recalled that the word ‘kinder’ is a German word meaning ‘children’. Furthermore, the term ‘prams’ is an English word meaning ‘vehicle intended to take a child for a walk, perambulator’. The applicant stated before the Board of Appeal that the mark applied for was a literal translation of the Polish mark ‘BoboWózki’, the word ‘Bobo’ meaning ‘baby’ and the word ‘Wózki’ ‘prams’.
60 In the present case, the applicant has failed to provide any evidence of such a nature as to establish that the words at issue are part of the basic vocabulary in German and English and are, on that basis, understood by the Italian public. Furthermore, the General Court has already ruled that, for the public at large in Italy, the word ‘kinder’ had no meaning (judgment of 16 may 2012, Wohlfahrt v OHIM — Ferrero (Kindertraum), T‑580/10, not published, EU:T:2012:240, paragraph 48). As a consequence, it must be found that the marks at issue do not convey any concept for the relevant public.
61 Accordingly, in finding that, in the absence of any concept conveyed by the marks at issue, the conceptual comparison thereof remained neutral, the Board of Appeal did not commit an error of assessment.
The likelihood of confusion
62 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca(VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
63 As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous factors, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
64 The Board of Appeal found that, given that the level of attention on the part of the relevant public varied ‘from average to above average’, that the inherent distinctiveness of earlier mark No 1 525 361 was normal, and that the degree of visual and phonetic similarity between the signs at issue was average, there was — with regard to the services designated by the mark applied for which were identical or similar to the goods and services designated by earlier mark No 1 525 361 — a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of the relevant public.
65 The applicant argues that the relevant public will not confuse its goods with those offered by the intervener, given that that public will display a greater degree of attentiveness when buying goods that are relatively expensive and will have a direct bearing on the safety of the consumer’s child. The applicant goes on to add that, bearing in mind the exclusively descriptive nature of the intervener’s trade mark, it should be found that it has a low level of distinctiveness.
66 In the present case, it must be noted that, as stated in paragraph 60 above, for the relevant public, which is the public at large in Italy, the word ‘kinder’ has no meaning. Accordingly, the Board of Appeal did not commit an error of assessment in finding that earlier mark No 1 525 361 had an average level of distinctiveness.
67 In those circumstances, it must be found that, in the light of the identical nature of some of the services covered by the marks at issue, the similarities between the other goods and services covered by those marks, the visual and phonetic similarities between the signs, the average level of distinctiveness of earlier mark No 1 525 361 and notwithstanding the level of attentiveness on the part of the relevant public, which can, as stated in paragraph 26 above, vary from average to above average bearing in mind, in particular, the nature of the goods in question, there is a likelihood of confusion between the mark applied for and earlier mark No 1 525 361, within the meaning of Article 8(1)(b) of Regulation 2017/1001, as the Board of Appeal rightly considered.
68 The single plea in law must therefore be rejected, and the action dismissed in its entirety.
Costs
69 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they 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 the defendant.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Tomasz Kawałko Trofeum to pay the costs.
Berardis | Papasavvas | Spineanu-Matei |
Delivered in open court in Luxembourg on 6 December 2018.