JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
19 April 2013 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark Snickers – Earlier national word mark KICKERS – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑537/11,
Hultafors Group AB, established in Bollebygd (Sweden), represented by A. Rasmussen and T. Swanstrøm, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Società Italiana Calzature SpA, established in Milan (Italy), represented by G. Cantaluppi, A. Rapisardi and C. Ginevra, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 9 August 2011 (Case R 2519/2010-4) relating to opposition proceedings between Società Italiana Calzature SpA and Hultafors Group AB,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich, President, I. Wiszniewska-Białecka and M. Prek (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Registry of the Court on 10 October 2011,
having regard to the response of OHIM lodged at the Registry of the Court on 25 January 2012,
having regard to the response of the intervener lodged at the Registry of the Court on 23 January 2012,
further to the hearing on 13 December 2012,
gives the following
Judgment
Background to the dispute
1 On 31 March 2004, the applicant, Hultafors Group AB (formerly Snickers Workwear AB) filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought fall within Classes 8, 9 and 25 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 8: ‘Tool holders, tool belts, tool vests, tool pouches, tool holsters’;
– Class 9: ‘Clothing and gloves for protection against accidents, irradiation and fire; high visibility clothing; protective masks, protective helmets, knee‑pads for workers and craftsmen, cellphone pouches’;
– Class 25: ‘Clothing, footwear, headgear; workwear, coveralls, vests, braces for clothing (suspenders), belts (clothing)’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 4/2005 of 24 January 2005.
5 On 21 April 2005 the intervener, Società Italiana Calzature SpA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for, in respect of some of the goods referred to at paragraph 3 above, namely ‘clothing, footwear, headgear; workwear, coveralls, vests, braces for clothing (suspenders), belts (clothing)’ in Class 25.
6 The opposition was based on Italian word mark No 348 149 KICKERS, registered on 28 March 1985 and renewed on 9 April 2010, which covers in particular goods in Class 25 corresponding to the following description: ‘clothing items, shoes, headgear.’
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).
8 By decision of 19 October 2010, the Opposition Division upheld the opposition for all of the contested goods and allowed the trade mark to be registered for the other goods.
9 On 17 December 2010 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 9 August 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. In particular, it found that, since the earlier mark is an Italian mark, the relevant territory for the purposes of analysing the likelihood of confusion is Italy, and that the average consumer concerned is a member of the public at large and has a normal level of attentiveness. It found that the goods covered by the signs at issue are identical. It took the view that the signs have an average degree of visual and phonetic similarity, that they are conceptually neutral and that the inherent distinctive character of the earlier mark must be regarded as normal, since the word ‘kickers’ does not have meaning for the goods concerned in Class 25.
11 Furthermore, the Board of Appeal found that the likelihood of confusion could be confirmed, even on the basis of the average distinctiveness of the earlier mark. It also found that it was not necessary to examine the argument relating to the enhanced distinctiveness of the earlier mark and the one based on Article 8(5) of Regulation No 207/2009.
Forms of order sought by the parties
12 The applicant claims that the Court should:
– annul the contested decision;
– annul the decision of the Opposition Division;
– order OHIM to bear its own costs and to pay those of the other party to the proceedings, including those incurred during the appeal and opposition proceedings.
13 OHIM contends that the Court should:
– dismiss the application in its entirety;
– order the applicant to pay the costs incurred by OHIM.
14 The intervener contends that the Court should:
– dismiss the application and confirm the decision of the Board of Appeal and that of the Opposition Division;
– order the applicant to pay the costs incurred in the present proceedings as well as the costs of the proceedings before the Board of Appeal and the Opposition Division.
Law
15 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It argues essentially that the signs at issue are not visually, phonetically or conceptually similar, that the mark applied for has a high distinctive character and that there is therefore no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
16 OHIM and the intervener dispute the applicant’s arguments.
17 In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and because of the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
18 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
20 The question whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks at issue must be examined in the light of those considerations.
The relevant public
21 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
22 The targeted public in relation to which the analysis of the likelihood of confusion must be carried out consists, for all the goods in question, of the average consumers of the Member State in which the earlier trade mark is protected (Case T‑194/03 Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II‑445, paragraph 78). In this case, as the earlier trade mark is an Italian mark and the goods concerned are in Class 25, the relevant public is made up of average Italian consumers of goods in Class 25. That definition of the relevant public, which moreover is not disputed by the parties, must be approved.
23 Furthermore, it is accepted in the case-law that, as regards goods such as those in Class 25, the relevant public is made up of average consumers with an average level of attention when purchasing those goods (see, to that effect, the judgment of 10 November 2011 in Case T‑22/10 Esprit International v OHIM – Marc O’Polo International (Representation of a letter on a pocket) not published in the ECR, paragraphs 45 to 47).
24 In that regard, the applicant maintains that, since the goods in Class 25 covered by the marks at issue are sold mainly on the basis of their visual appearance and that the consumers pay particular attention both to the mark and to the product, they will be able to remember every minor difference between the two similar marks for identical products. The applicant thereby argues, in essence, that the consumers concerned have a higher level of attention and, in that regard, relies on the judgment in Case T‑211/03 Faber Chimica v OHIM – Industrias Quimicas Naber (Faber) [2005] ECR II‑1297.
25 However, as the intervener maintains, the above judgment cited in support of the applicant’s arguments is not relevant to this case as the relevant public concerned was made up of specialised and professional consumers whose level of attention is higher than average when choosing goods.
26 Furthermore, even if part of the relevant public made up of average Italian consumers shows a higher level of attention when buying the goods referred to in paragraph 5 above, the fact remains that the applicant has not demonstrated that this concerns all of the relevant public and that the part of the relevant public whose level of attention is normal is insignificant.
27 Thus, as regards the assessment of the likelihood of confusion, the public with the lowest attention level must be taken into consideration (see, to that effect, the judgment of 8 September 2010 in Case T‑152/08 Kido v OHIM – Amberes (SCORPIONEXO) not published in the ECR, paragraph 40).
Comparison of the goods
28 As regards the goods covered by the signs at issue, it is clear, as indeed the parties accept, that the goods are identical. It should be pointed, as the Board of Appeal states, that the goods ‘workwear, coveralls, vests, braces for clothing (suspenders), belts (clothing)’ covered by the mark applied for are included in the category of ‘clothing items’ covered by the earlier mark.
Comparison of the signs
29 So far as comparison of the signs is concerned, it should be noted that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of such a likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
30 The Board of Appeal held, first, that the word element of the mark for which registration is sought was its dominant element and that the relevant public would attach greater importance to that word element than to the mark’s figurative elements, which, moreover, had a low degree of distinctiveness. It found that, bearing in mind that the signs coincided in their letters ‘ickers’, that is to say, six letters out of seven and eight respectively, the signs displayed an average degree of visual similarity. Next, it found that there was an average degree of phonetic similarity as the signs in question had the same number of syllables, the first syllables were similar by reason of the same vowel, ‘i’, and the second syllables were identical. Finally, from the conceptual point of view, the Board pointed out that the signs did not have any particular meaning in Italian.
31 The applicant maintains, first, that the signs at issue are visually dissimilar. In this respect, it relies on the considerations that words ending in ‘ickers’ are not uncommon in English, that the consumer’s attention is directed more towards the beginning of the words than their end, and that the figurative mark applied for conveys a solid and massive impression by reason of its design and the form of the letters. Next, it takes the view that the signs at issue do not create a similar phonetic impression. It considers that the intonation and stress of the earlier mark are different from those of the mark being applied for, the latter being pronounced with a distinctly voiced ‘s’ and clear stress on the initial letter of the first syllable. Furthermore, it contends that the meaning of the mark applied for is not known by the average Italian consumer. On the other hand, as regards the earlier mark, it points out that, as the verb ‘to kick’ is a term commonly known by the average consumer, the same applies to the word ‘kicker’ and its plural form, and therefore the average Italian consumer will know the word ‘kickers’ or will be able to deduce instantly the conceptual meaning. Finally, it refers to the high distinctive character of the mark applied for and concludes that the relevant public will not perceive the marks as being similar or as having the same origin.
32 OHIM and the intervener dispute the applicant’s arguments.
33 It must first be noted that the figurative mark applied for is in white italic letters, with the first in upper case and the rest in lower case, set against a black oval background and surrounded by a white line which itself is framed by a thin black line.
Visual comparison
34 As regards the visual comparison, it must 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 Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II‑1515, paragraph 43 and the case-law cited).
35 It must also be noted that when a mark is composed of word elements and figurative elements, the former should, as a rule, be considered more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name than by describing the figurative element of the mark (see, to that effect, Case T‑312/03 Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE) [2005] ECR II‑2897, paragraph 37).
36 The Board of Appeal rightly held that this general reasoning can be applied to this case. Indeed, the word element ‘snickers’ is the dominant element of the mark applied for and the figurative element, given its commonplace form, has a low degree of distinctiveness and will be perceived as a decorative element.
37 In that regard, it must be noted that the signs KICKERS and Snickers contain seven and eight letters respectively, corresponding to the joining of two elements, namely, ‘ki’ and ‘ckers’ in the earlier sign, and ‘sni’ ‘ckers’ in the sign for which registration is sought. The signs at issue therefore share the same number of syllables and their last six letters are identical. The signs also share the same vowels, ‘i’ and ‘e’. The word elements of the signs at issue have several common characteristics and are differentiated only by their initial letters, ‘k’ and ‘sn’ respectively.
38 Therefore, the Board of Appeal rightly held that there was an average degree of visual similarity between the signs.
39 None of the arguments put forward by the applicant can call into question the above consideration.
40 The applicant relies on the fact that the attention of the consumer is drawn more towards the beginning of the words than towards their end.
41 However, it should be recalled that this consideration cannot apply in every case, and in any event cannot undermine the principle that the examination of the similarity of the marks must take into account the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, judgment of 18 September 2008 in Case C‑514/06 P Armacell v OHIM not published in the ECR, paragraph 20; see also, to that effect, judgments of the General Court of 12 January 2012 in Case T‑462/09 Storck v OHIM – RAI (Ragolizia), not published in the ECR, paragraph 25, and of 27 June 2012 in Case T‑344/09 Hearst Communications v OHIM – Vida Estética (COSMOBELLEZA), not published in the ECR, paragraph 52). Although it is settled case-law that the consumer generally pays greater attention to the beginning of a mark than to the end (Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 51, and Case T‑109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II‑675, paragraph 30), it cannot be inferred from this, however, that in the present case the difference between the letters ‘sn’ and ‘k’ can prevent the signs at issue from being similar, since consonants are involved in both instances and the consumer will not stop at the first letter, but will consider at least the first syllable. The following letter of the respective syllables of the signs at issue is identical. Thus, the differences between the two marks cannot counteract the similarities, and therefore are not capable of calling into question the finding that there is an average degree of visual similarity (see, to that effect, judgment of 16 December 2010 in Case T‑363/09 Longevity Health Products v OHIM – Gruppo Lepetit (RESVEROL), not published in the ECR, paragraph 27).
42 Similarly, the applicant unsuccessfully argues, in essence, that words ending in ‘ickers’ are not uncommon in English, and that, therefore, the beginning of the signs at issue is all the more important.
43 OHIM rightly emphasises that, although many consumers have a sufficiently good knowledge of English, the fact remains that the ending ‘ickers’ does not exist in Italian and that it will appear unusual to the majority of the relevant consumers.
Phonetic comparison
44 It is pointed out in paragraph 15 of the contested decision that the signs at issue contain the same number of syllables, the first of which are similar because of the presence of the vowel ‘i’, and the second of which are identical, that the signs share the same vowel order, that is to say, ‘i’, then ‘e’, that the consonants ‘k’ and ‘sn’ are not significant in the overall pronunciation, and that, therefore, there is an average degree of similarity between the signs at issue. That analysis by the Board of Appeal must be endorsed. Indeed, the signs at issue have no less than six letters that are identical and that they clearly have a similar sound.
45 In that regard, the Court rejects the applicant’s argument that the signs at issue have a different rhythm and intonation because of the pronunciation of the initial letters of the first syllables. As OHIM points out, it is a fact that in Italian the words ‘snickers’ and ‘kickers’ are pronounced with two syllables and that in both cases the stress falls on the first syllable.
46 As regards the applicant’s argument that the beginning of a sign is more important than the end in the overall impression the sign produces, this cannot apply in every case, as was pointed out in paragraph 41 above, nor in any event can it undermine the principle that the examination of the similarity of the marks must take into account the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
47 Consequently, the Court holds, as did the Board of Appeal, that there is an average degree of phonetic similarity between the signs at issue.
Conceptual comparison
48 The Board of Appeal rightly held at paragraph 16 of the contested decision that the signs at issue do not have any meaning for the Italian consumers concerned.
49 In that regard, it is common ground between the parties that the term ‘snickers’ is not known by the relevant public and will thus have no conceptual meaning for that public.
50 Next, the applicant maintains, but does not demonstrate, that all of the Italian consumers concerned understand the meaning of the word ‘kickers’, which is the plural form of the word ‘kicker’, meaning ‘someone who kicks something’. However, this English term is not a basic English-language word that is internationally recognised, unlike, for example, the terms ‘shoes’, ‘outlet’, ‘unisex’ or ‘girl’. Therefore, as the Board of Appeal points out in essence at paragraph 16 of the contested decision, although one part of the relevant public understands the meaning of the term ‘kickers’, the fact remains that it is also necessary to take account of the other part of the relevant public, for which the term has no meaning.
51 Finally, the applicant unsuccessfully maintains that the intervener itself indicated on its website that the relevant consumers have a sufficient command of English to understand the meaning of the term ‘kickers’. In the absence of convincing evidence, that single reference to the content of the intervener’s website is not sufficient to establish that all of the relevant Italian public understands the meaning of the term ‘kickers’.
52 On that basis, the Court endorses the finding that, for the limited part of the relevant public which understands the word ‘kickers’, the signs at issue are not conceptually similar, while for the other part of that public the conceptual comparison is not possible.
The global assessment of the likelihood of confusion
53 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 the similarity of the goods or services concerned. 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74).
54 In this case, as was established at paragraph 28 above, the goods covered by the signs at issue are identical. As for the signs, they show an average degree of similarity from a visual and phonetic perspective (see paragraphs 38 and 47 above). In those circumstances, the Board of Appeal was correct to conclude, at paragraph 21 of the contested decision, that there was a likelihood of confusion between the marks at issue.
55 This conclusion cannot be invalidated by the argument concerning the high distinctive character of the mark applied for, since it is not a relevant factor to be taken into account in the assessment of the likelihood of confusion. It is only the distinctive character of the earlier mark which must be taken into account in the global assessment of the likelihood of confusion, because its distinctiveness determines the scope of the protection of the earlier mark (see, to that effect, Case C‑498/07 Aceites del Sur-Coosur v Koipe [2009] ECR I‑7371, paragraph 84).
56 It follows from all the foregoing that the single plea of infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected. Accordingly, without there being any need to examine the admissibility of the applicant’s second head of claim, seeking annulment of the decision of the Opposition Division, the application must be dismissed in its entirety.
Costs
57 It must be noted at the outset that at the hearing the intervener stated that its second head of claim must be seen as an application seeking an order that the applicant pay the costs incurred in the proceedings before the Court and those incurred solely before the Board of Appeal, formal note of which was taken in the minutes of the hearing.
58 Under Article 87(2) 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 incurred by OHIM and the intervener in the proceedings before the Court, and those incurred by the intervener for the purposes of the proceedings before the Board of Appeal, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Hultafors Group AB to pay the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Società Italiana Calzature SpA in the proceedings before the General Court, and the costs incurred by Società Italiana Calzature SpA for the purposes of the proceedings before the Board of Appeal.
Dittrich | Wiszniewska-Białecka | Prek |
Delivered in open court in Luxembourg on 19 April 2013.
[Signatures]