JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
5 May 2011 (*)
(Community trade mark – Invalidity proceedings – Community word mark OLYMP – Earlier national figurative mark OLIMPO – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) and Article 52(1)(a) of Regulation (EC) No 40/94 (now Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009))
In Case T‑203/09,
Olymp Bezner GmbH & Co. KG, established in Bietigheim-Bissingen (Germany), represented by M. Eck and J. Dönch, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Miguel Bellido, SA, established in Manzanares (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 March 2009 (Case R 531/2008-2) relating to invalidity proceedings between Miguel Bellido SA and Olymp Bezner GmbH & Co. KG,
THE GENERAL COURT (Eighth Chamber),
composed of L. Truchot (Rapporteur), President, M.E. Martins Ribeiro and H. Kanninen, Judges,
Registrar: K. Pocheć, Administrator,
having regard to the application lodged at the Registry of the General Court on 25 May 2009,
having regard to the response lodged at the Registry of the General Court on 3 September 2009,
having regard to the reply lodged at the Registry of the General Court on 1 December 2009,
further to the hearing on 2 December 2010,
gives the following
Judgment
Background to the dispute
1 On 30 April 1999, the applicant, Olymp Bezner GmbH & Co. KG, 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 mark for which registration was sought is the word sign Olymp.
3 The goods for which registration was sought are in Class 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Shirts, blouses, shoulder wraps, pyjamas, night shirts, neckties, knitwear, in particular pullovers, knitted jackets; polo shirts, T-shirts, socks, belts’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 14/2000 of 21 February 2000. The mark was registered on 18 January 2002.
5 On 6 October 2006, Miguel Bellido SA filed at OHIM an application for a declaration of invalidity against that mark, pursuant to Article 55 of Regulation No 40/94 (now Article 56 of Regulation No 207/2009), in respect of the goods referred to in paragraph 3 above.
6 The application for a declaration of invalidity was based on the following earlier national figurative mark, registered in Spain on 20 June 1994 under number 1804052:
7 That mark designates goods in Class 25 corresponding to the following description: ‘Confectioned ladies, men’s and children’s wear; footwear (with the exception of orthopaedic shoes); headgear’.
8 The application for a declaration of invalidity was based on all of the goods covered by the earlier mark and was directed against all of the goods covered by the contested mark.
9 The ground put forward in support of the application for a declaration of invalidity was that referred to in Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009), in conjunction with Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).
10 On 5 March 2008, the Cancellation Division upheld the application for a declaration of invalidity filed by the proprietor of the earlier mark on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, between the contested mark and the earlier mark.
11 On 26 March 2008, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Cancellation Division.
12 By decision of 11 March 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. After finding that the goods covered by the marks at issue were identical and that the relevant public was composed of Spanish consumers, the Board of Appeal held that, as regards the comparison of the marks at issue, the word ‘olimpo’ was the element which would dominate the overall impression that the relevant public would retain of the earlier mark and that the signs at issue displayed visual and phonetic similarities which no conceptual difference could counteract. It concluded that there was a likelihood of confusion between the contested mark and the earlier mark.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
15 The applicant relies on a single plea in law, alleging infringement of Article 52(1)(a) of Regulation No 40/94, read in conjunction with Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
16 The applicant submits that the word element of the earlier mark is not dominant compared with that mark’s figurative element, which the Board of Appeal acknowledged as occupying a significant place. The two elements are thus of equal importance in the overall impression produced by the mark. Therefore, the Board of Appeal erred in finding that the word element of the earlier mark was its dominant element on the basis, first, that the word element of the earlier mark has no clear meaning and, second, that the word element of that mark is distinctive.
17 The applicant submits that the signs at issue display visual, phonetic and conceptual differences which are sufficiently great to exclude all likelihood of confusion in the mind of the relevant public.
18 Visually, the applicant points out that the contested mark and the word element of the earlier mark contain five and six letters respectively, and that their third letters are different. They are therefore different in length, and the totally different appearance of the letters ‘i’ and ‘y’ will be noticed by the relevant public. In addition, since the figurative element of the earlier mark is centred above the word element of that mark, this gives rise to a difference between the marks at issue.
19 The applicant further submits that it is irrelevant whether or not that figurative element has a clear meaning for the relevant public, since the likelihood that the marks at issue will be confused visually depends only on whether or not they are similar visually.
20 Phonetically, the applicant submits that the contested mark consists of two syllables, ‘o’ and ‘lymp’, whereas the word element of the earlier mark is composed of three syllables, ‘o’, ‘lim’ and ‘po’. Moreover, the linguistic rules of the Spanish language result in the stress falling on the final syllable of that word element. Lastly, since, in the applicant’s submission, a section of the relevant public is familiar with the pronunciation of the letter ‘y’ in German, the relevant public will not automatically pronounce the letter ‘y’ and the letter ‘i’ the same way, contrary to what the Board of Appeal stated. There is therefore a difference in the number and pronunciation of the syllables comprising the contested mark and the word element of the earlier mark, a fact which gives rise to significant phonetic differences between the signs.
21 Conceptually, the applicant submits that in Spanish ‘olimpo’ is a word that refers to Mount Olympus, the highest mountain in Greece, believed to be the dwelling place of the gods in Greek mythology. It adds that the word could also be a reference to the Olympic Games. The word ‘olymp’, by contrast, does not exist in Spanish. Thus, it is impossible that a word which has several meanings, such as ‘olimpo’, and another word which does not exist in Spanish, such as ‘olymp’, could have the same clear meaning for the relevant public.
22 The applicant also submits that the word ‘olymp’ is not generally known by the relevant public, which will perceive it as a fanciful element and will not necessarily associate it with Mount Olympus. Thus, even if one section of the relevant public may perceive the contested mark as being derived from the word ‘olimpo’, this is not sufficient to justify the conclusion that the marks at issue are conceptually identical. In that connection, the applicant submits that, according to the case-law of the General Court, the fact that words have the same root does not necessarily mean that they will be associated with the same idea.
23 At the hearing, the applicant submitted that the figurative element of the earlier mark was very similar to a Calatrava cross, which, as a symbol of a Spanish order of knighthood, would be easily recognised as such or at least identified as an ornamental cross by Spanish consumers.
24 Therefore, in the applicant’s submission, the Board of Appeal erred in finding that the marks at issue were conceptually similar.
25 OHIM disputes the applicant’s arguments.
Findings of the General Court
26 Under Article 52(1)(a) of Regulation No 40/94, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark as referred to in Article 8(2) of that regulation (now Article 8(2) of Regulation No 207/2009) and where, in particular, the conditions set out in Article 8(1)(b) of the regulation are fulfilled.
27 Under Article 8(2)(a)(i) and (ii) of Regulation No 40/94 (now Article 8(2)(a)(i) and (ii) of Regulation No 207/2009), to which Article 52(1)(a) expressly refers, the term ‘earlier trade mark’ covers, in particular, Community trade marks and trade marks registered in a Member State, provided that the date of application for their registration is earlier than the date of application for registration of the Community trade mark which is contested (judgment of 15 April 2010 in Case T‑488/07 Cabel Hall Citrus v OHIM – Casur (EGLÉFRUIT), not published in the ECR, paragraph 24).
28 The relative ground for invalidity arising under Article 52(1)(a) of Regulation No 40/94, in conjunction with Article 8(1)(b) of that regulation, corresponds to the relative ground for refusal of registration laid down in the latter provision. Therefore, the case-law relating to the likelihood of confusion, within the meaning of Article 8(1)(b) of that regulation, is also relevant in the present context (see EGLÉFRUIT, paragraph 25 and the case-law cited).
29 According to settled case-law, the risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the products or services at issue, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or services identified (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33, and EGLÉFRUIT, paragraphs 26 and 27 and the case-law cited).
The relevant public and comparison of the goods
30 It follows from the contested decision, which is not in dispute on this point, that, since the earlier mark is a mark registered in Spain and since the goods covered by the marks at issue are everyday consumer goods, the relevant territory for the assessment of the likelihood of confusion is Spain and the relevant public consists of the general public, that is to say, average consumers who are normally well informed and reasonably observant and circumspect (see, to this effect, Joined Cases C‑473/01 P and C‑474/01 P Procter & Gamble v OHIM [2004] ECR I‑5173, paragraph 33, and Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 25).
31 Likewise, the identity of the goods covered by the marks at issue is not in dispute between the parties.
32 The only matter in dispute is the Board of Appeal’s assessment of the similarity of the marks at issue and its finding of a likelihood of confusion.
Comparison of the signs
33 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 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 that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
34 According to the case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 16 May 2007 in Case T‑491/04 Merant v OHIM – Focus Magazin Verlag (FOCUS), not published in the ECR, paragraph 45).
35 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (see OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, inter alia, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by it (Nestlé v OHIM, paragraph 43).
36 At issue in the present case are the verbal mark Olymp and the earlier mark OLIMPO, registered in Spain as a figurative mark. It must, however, be noted that the earlier mark is a composite mark consisting of a verbal element consisting of the letters ‘o’, ‘l’, ‘i’, ‘m’, ‘p’ and ‘o’, arranged in such a way as to form the word ‘olimpo’, and a figurative element composed of, first, typeface in which the word ‘olimpo’ is shown, and second, the element positioned above it, described by the applicant in the course of the written procedure as representing a sloped crux combined with four semicircles, and, at the hearing, as being very similar to a Calatrava cross.
37 In the earlier mark, the element which is above the word ‘olimpo’ is likely to be perceived by the relevant public in different ways, since, as OHIM points out, it could be covered by different descriptions such as, for example, a square, a cross, a stylised spider or the letter ‘o’ cut in four parts.
38 By contrast, the letters forming the word ‘olimpo’ are shown in an ordinary and clear typeface and are laid out in such a way that they are not likely to be perceived by the relevant public otherwise than as forming the word ‘olimpo’. Moreover, that word occupies more space than the element above it and is clearly separated from that element. Finally, as the only pronounceable element, it is preferable to the element above it for purposes of designating the earlier mark.
39 Consequently, the view is to be taken, following the example of the Board of Appeal at paragraph 30 of the contested decision, that the word ‘olimpo’, as shown in the form under which it was registered in Spain, dominates the overall impression which the relevant public retains of the earlier mark, without, however, the figurative element of that mark being negligible.
40 As regards the visual comparison, it must be borne in mind that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative or composite mark, since the two types of mark have a graphic form capable of creating a visual impression (see, to that effect, judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraph 34 and the case-law cited).
41 In the present case, firstly, it must be pointed out that the contested mark and the word ‘olimpo’ have five and six letters respectively, of which four are identical and in the same order, with the result that they are differentiated only by their third letter and by the additional letter ‘o’ at the end of the word ‘olimpo’. It follows that there are significant similarities at the visual level.
42 Secondly, it must be borne in mind that, according to settled case-law, as a general rule the public pays less attention to the endings of signs (see, to that effect, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81, and Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65). Therefore, the presence of the letter ‘o’ at the end of the word ‘olimpo’ does not create a sufficient difference with the contested mark to offset the visual similarities made apparent at paragraph 41 above.
43 Thirdly and finally, as is apparent from paragraph 38 above, the word ‘olimpo’ dominates the overall impression of the earlier mark, in such a way that, although the figurative element of that mark is not negligible in the overall impression which it creates, it is not sufficient to offset the visual similarities made apparent between the marks at issue.
44 It follows that the Board of Appeal was correct to find that the signs at issue were visually similar.
45 At the phonetic level, in the strict sense, the aural reproduction of a complex sign corresponds to that of all its verbal elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level (Case T‑352/02 Creative Technology v OHIM – Vila Ortiz (PC WORKS) [2005] ECR II‑1745, paragraph 42). Therefore, following the example of the Board of Appeal, it must be held that, firstly, in respect of the earlier mark, the figurative element positioned above the word ‘olimpo’ is not taken into account in comparing the signs at issue. Secondly, the contested mark is composed of two syllables, namely ‘o’ and ‘lymp’, and the word ‘olimpo’ consists of three, namely ‘o’, ‘lim’ and ‘po’. Thirdly, both start with the same syllable ‘o’.
46 The applicant’s argument to the effect that a section of the relevant public might pronounce the contested mark according to the rules of German pronunciation must be rejected. The assessment of the similarity between the signs in question must be made in relation to the perception of the relevant public (Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 53), that is to say, in the present case, the average Spanish consumers as indicated at paragraph 30 above. Consequently, since the applicant has adduced no evidence to show that the relevant public will pronounce the word ‘olymp’ according to the rules of German pronunciation, reference should be made only to the rules of Spanish pronunciation.
47 In particular, the rules of pronunciation set out in the dictionary of the Royal Spanish Academy (Real Academia Española), to which OHIM refers and which the applicant did not dispute in its reply, provide, first, that the letters ‘i’ and ‘y’ are pronounced identically, and, secondly, since there is no graphic accent on the last vowel of a word, that the tonic accent is placed on the second-last syllable of a word.
48 It follows that the only difference between the pronunciation of the words ‘olymp’ and ‘olimpo’ is the ‘o’ at the end of the word ‘olimpo’ and that, in that word, the tonic accent is placed on the syllable ‘lim’, which has the effect of reducing the difference caused by the sound of the final ‘o’.
49 Moreover, as the Board of Appeal found at paragraph 37 of the contested decision, the fact that the letter ‘p’ ends the word ‘olymp’ and comes at the beginning of the final syllable ‘po’ of the word ‘olimpo’ attenuates that difference even further.
50 It follows from the foregoing that the Board of Appeal was correct to hold that the signs at issue are phonetically similar.
51 Conceptually, it must be noted that, on the assumption that this claim, which was made for the first time during the hearing, is considered admissible, the applicant has not shown that the relevant public perceived the figurative element of the earlier mark as being very similar to a Calatrava cross or an ornamental cross. In those circumstances, it must be stated, as the Board of Appeal held at paragraph 44 of the contested decision, that the figurative element of the earlier mark which is positioned above the word ‘olimpo’ will not be perceived by the relevant public as having any specific meaning. Therefore, it is not capable of affecting the conceptual comparison of the contested mark with the verbal element of the earlier mark.
52 Furthermore, although the word ‘olymp’ does not exist in Spanish, it may be perceived as being derived from the word ‘olimpo’, with which it shares a common root. Indeed, as the applicant submits, the word ‘olimpo’ is a Spanish word that refers to Mount Olympus, the highest mountain in Greece, believed to be the dwelling place of the gods in Greek mythology. The applicant adds that ‘olimpo’ may also refer to the Olympic Games.
53 Admittedly, the fact that words have the same root does not necessarily mean that they are associated with the same idea. That is true, in particular, where, as in the present case, one of the words in question can, in some languages, have a clear conceptual meaning which the other does not have (judgment of 26 June 2008 in Case T‑79/07 SHS Polar Sistemas Informáticos v OHIM – Polaris Software Lab (POLARIS), not published in the ECR, paragraph 44).
54 In the present case, as the applicant correctly argues, the fact that the word ‘olymp’ is perceived as a derivative of the word ‘olimpo’ is not liable necessarily to mean that the relevant public will associate the word ‘olymp’ with the ideas which the word ‘olimpo’ might evoke.
55 The applicant, however, adduces no evidence to show that the possibility of such an association is excluded. On the contrary, in stating that ‘the … relevant public … will not necessarily associate [the word “olymp”] with … Mount Olympus’, the applicant recognises that the relevant public may make such an association, which would establish a conceptual similarity between the signs at issue.
56 It must also be added that the fact that the word ‘olimpo’ can be associated, in the mind of the relevant public, with several ideas, such as Mount Olympus or the Olympic Games, which derive their name from Mount Olympus, is not such as to create a conceptual difference between the signs at issue. Indeed, the word ‘olymp’, perceived as a derivative from the word ‘olimpo’, could, depending on the circumstances, be associated with the same idea as that evoked by the latter.
57 Accordingly, since the signs at issue may be associated with the same idea, whatever that may be, it must be held that they display conceptual similarities.
58 It follows that the Board of Appeal was right, in finding at paragraph 43 of the contested decision that the relevant public was likely to attribute the same meaning to the words ‘olymp’ and ‘olimpo’, to hold that the signs at issue were conceptually similar.
59 Consequently, the Board of Appeal did not err in finding that the signs at issue were visually, phonetically and conceptually similar.
Assessment of the likelihood of confusion
60 It follows from the assessment carried out above that the goods in question are identical and that the marks at issue display a high degree of similarity.
61 Furthermore, since the goods at issue are everyday goods, the view must be taken that the relevant public will not display a high level of attention.
62 Accordingly, it must be held that the Board of Appeal did not err in finding that there was a likelihood of confusion between the marks at issue.
63 Consequently, the single plea in law must be rejected and the action therefore dismissed in its entirety.
Costs
64 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party must be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Olymp Bezner GmbH & Co. KG to pay the costs.
Truchot | Martins Ribeiro | Kanninen |
Delivered in open court in Luxembourg on 5 May 2011.
[Signatures]