JUDGMENT OF THE GENERAL COURT (Second Chamber)
18 October 2011 (*)
(Community trade mark – Opposition proceedings – Application for registration of the Community figurative mark caldea – Earlier international word mark BALEA – Relative ground for refusal – No likelihood of confusion – No similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T-304/10,
dm-drogerie markt GmbH & Co. KG, established in Karlsruhe (Germany), represented by O. Bludovsky and P. Hiller, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Semtee, established in Escaldes Engordany (Andorra), represented by É. Guissart, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 29 April 2010 (Case R 899/2009-1), relating to opposition proceedings between dm-drogerie markt GmbH & Co. KG and Semtee,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood (Rapporteur), President, J. Schwarcz and A. Popescu, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 14 July 2010,
having regard to the response of OHIM lodged at the Court Registry on 8 November 2010,
having regard to the withdrawal of the intervener received at the Court Registry on 1 October 2010,
having regard to the decision of 5 January 2011 refusing to authorise the lodging of a reply,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 15 February 2007, the intervener, Semtee, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 3, 35, 37, 42, 44 and 45 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, for each of those classes, to the following description:
– Class 3: ‘Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
– Class 35: ‘Consultancy relating to the business management of a recreational and non-medical water facility, in particular thermal waters, for the purposes of relaxation, leisure, physical fitness and exercise in the field of health’;
– Class 37: ‘Consultancy relating to construction works’;
– Class 42: ‘Consultancy, consultancy relating to the design of plans, construction drafting’;
– Class 44: ‘Personalised consultancy, advice and assistance relating to the operation of a recreational and non-medical centre relating to water, in particular thermal waters for the purposes of relaxation, leisure, physical fitness and exercise in the field of health’;
– Class 45: ‘Licensing of intellectual property’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 61/2007 of 5 November 2007.
5 On 31 January 2008, the applicant, dm-drogerie markt GmbH & Co. KG, filed a notice of opposition under 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 the goods in Class 3 and the services in Class 35 referred to in paragraph 3 above.
6 The opposition was based on the earlier international word mark BALEA, having effect within, inter alia, the European Union, registered on 3 February 2006 under number 0894004, designating goods in Classes 3, 5 and 8 and corresponding, for each of those classes, to the following description:
– Class 3: ‘Cleaning, polishing, degreasing and abrasive preparations; soaps, perfumeries, essential oils, massage oils for cosmetic use, preparations for hygienic and beauty use; washing and shower gels, creams, soaps and oils; skin care cosmetic preparations; face, skin and body cosmetic creams; cleansing preparations for hygienic and beauty care use; bath salts, not for medical use; deodorants for personal use (perfumeries), antiperspirants (toiletries); beauty masks, lip gloss; make-up; peelings; depilatory preparations; shampoos, hair care preparations, hair lotions, hair dying preparations, hair sprays, aftershaves, colognes, shaving preparations, preparatory shaving preparations, shaving soaps, aftershave lotions, shaving foams, shaving gels, shaving creams, shaving sticks; cleaning preparations for tooth care, mouth washes, not for medical use; cosmetic kits; eye brow cosmetics; cosmetic slimming preparations; artificial nails; nail varnish; nail care preparations; nail varnish remover; artificial eye lashes; tissues, impregnated with cosmetic lotions; cotton wool for cosmetic use, cotton sticks for cosmetic purposes’;
– Class 5: ‘Pharmaceutical and medical preparations and substances; sanitary products for medical use; disinfectants; disinfectants for medical use; mouth washes for medical use; bath preparations, medicated, and for therapeutic use; air freshening preparations; biological preparations for medical use; lozenges for medical use; deodorants for clothing and textiles; remedies for perspiration; dietary products for medical use, food for babies; dietary foods for health care on the basis of vitamins, minerals, amino acids, trace elements; enzyme preparations for medical use; preparations for health care; food supplements, not for medical use, on the basis of minerals, amino acids, trace elements, and plant fibres; slimming products for medical use, appetite suppressants for medical purposes; tonics for medical use; anti-allergic preparations; foot care preparations for medical use, preparations against calluses for medical use; pharmaceutical and medical preparations for athletes, such as salves, gels, sprays against pulled muscles or tendons and muscle strain; plasters, wound dressing material, medicine cases, portable, filled; sun protection preparations for pharmaceutical use; haemostatic pencils; bandages for dressings and bandages for medical purposes; women’s hygienic products, namely sanitary tissues, tampons and panty liners; eye bandages for medical use, eye pads for medical use; cotton wool for medical use; cleaning preparations and solutions for contact lenses’;
– Class 8: ‘Razors, electric and non-electric, razor blades, razors; shaving kits; razor cases; hair clippers and shearing apparatus (for personal use); nail clippers; nail nippers; nail files and fingernail polishers (electric and non-electric); electric manicure sets; pedicure sets; pincers; eyelash curlers; depilation appliances, electric and non-electric; hand implements for hair curling (non-electric)’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 By decision of 9 July 2009, the Opposition Division rejected the opposition.
9 On 4 August 2009, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 29 April 2010 (‘the contested decision’), the First Board of Appeal of OHIM dismissed that appeal. In essence, it based its decision on the following grounds:
– although the goods in Class 3 designated by the signs at issue were identical, by contrast, the services in Class 35 designated by the mark applied for were dissimilar to the goods in Classes 3, 5 and 8 designated by the earlier mark;
– since the signs at issue were not visually or conceptually similar and had merely a low aural similarity, they were different in overall terms;
– the differences existing between the signs at issue excluded all likelihood of confusion, and that conclusion could not be brought into question by the fact that the goods in question were partially identical or by the alleged reputation of the earlier mark.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision and, ‘by the way of correction’, annul the mark applied for;
– in the alternative, annul the contested decision and refer the case back to OHIM;
– in the further alternative, annul the contested decision.
12 OHIM contends that the Court should:
– dismiss the application;
– order the applicant to bear the costs.
Law
13 As a preliminary point, it must be noted that, although the applicant, in a letter lodged at the Court Registry on 27 January 2011, stated that it sought to submit oral arguments in German in the event of a hearing being held, that statement is not equivalent to a request for a hearing within the meaning of Article 135a of the Rules of Procedure of the General Court. In accordance with that provision, and in the absence of a request to that effect by the parties in question, the Court is therefore entitled to rule on the present case without a hearing (judgment of 3 December 2009 in Case T‑223/08 Iranian Tobacco v OHIM – AD Bulgartabac (Bahman), not published in the ECR, paragraph 11).
14 In support of its action, the applicant relies on a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.
15 Under that provision, 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, an 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.
16 According to established case-law, the risk that the public may 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 goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
17 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).
18 The single plea for annulment in the present case must be considered in the light of those principles.
The relevant public
19 In accordance with 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 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).
20 In the present case, the Board of Appeal found, at paragraph 18 of the contested decision, that the goods and services at issue were directed at the public at large (goods in Class 3) as well as at specialised consumers (services in Class 35). Since the earlier mark was an international registration designating the European Union, the Board of Appeal for that reason deemed it appropriate to consider the relevant public for the goods and services at issue to be average consumers in all European Union Member States, who were considered to be reasonably well informed and reasonably observant and circumspect.
21 Those considerations are not challenged in the present action.
The comparison of the goods and services at issue
22 According to settled case-law, in order to assess the similarity between the goods or services concerned, all the relevant factors of the relationship between them should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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 the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
23 In the present case, the Board of Appeal found, at paragraph 15 of the contested decision, that the goods in question in Class 3 were identical and, at paragraph 16 of the contested decision, that the services in Class 35 covered by the mark applied for were dissimilar to the goods in Class 3 covered by the earlier mark.
24 The applicant takes issue with that assessment. In its view, the services in Class 35 covered by the mark applied for are closely linked to the goods in Class 3 covered by the earlier mark, since they have ‘exactly the same functions’. Furthermore, the relevant public is not completely different since the companies, and especially their staff, that use those services in Class 35 are also consumers of the goods in Class 3. The applicant relies, by analogy, on two previous decisions of the Board of Appeal in support of its arguments.
25 Those criticisms must, however, be rejected as being entirely unfounded. As the Board of Appeal rightly found, at paragraph 16 of the contested decision, the consultancy services in question relate to the business management of a recreational and non-medical water facility. ‘Business management services’ are usually rendered by companies specialised in that specific field, whose main purpose is to gather information and to provide tools and expertise to enable their customers, who are themselves professionals, to perform their business or to provide businesses with the necessary support to develop and acquire greater market share, whereas beauty products are used for body care and enhancement of health and beauty. Thus, the nature, intended purpose and function of the goods and services in question are completely different. Moreover, there is nothing that enables those goods and services to be regarded as being in competition with each other or as being functionally complementary.
26 The applicant’s allegation relating to the public concerned by the goods and services at issue must be rejected as being wholly irrelevant at the stage of comparison of the goods and services. That is merely the consequence of the fact that the goods and services in question are directed at two distinct categories of consumers, namely the public at large and professional clients (see paragraph 20 above). As OHIM points out, the fact that the staff of the undertakings that are clients of the service providers in Class 35 are also potential consumers of the beauty products does not make those goods and services similar in the eyes of that public. If that were true, a large number of goods would have to be considered similar to those services simply by reason of the fact that the professionals who offer those services are the potential consumers of the goods in question.
27 With regard to the previous decisions of the Board of Appeal relied on by the applicant, it must be stated, as OHIM did, that these relate to different factual situations to that in the present case, with the result that the alleged analogy does not exist. In any event, according to settled case-law, the decisions which the Boards of Appeal of OHIM are called on to take under Regulation No 207/2009, concerning registration of a sign as a Community trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice of those boards (see Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraph 48 and the case-law cited).
28 Therefore, the Board of Appeal did not err in concluding that the services in Class 35 covered by the mark applied for and the goods in Class 3 covered by the earlier mark were not similar.
29 In accordance with the case-law cited at paragraph 17 above, all likelihood of confusion is therefore excluded with regard to those services.
The comparison of the signs at issue
30 As regards the comparison of the signs at issue, it is clear from the case-law that visual, phonetic and conceptual aspects are relevant. The global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression given by them, 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 overall assessment of that likelihood of confusion. In this respect, 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 Case C‑498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I‑7371, paragraph 60 and the case-law cited; GIORGIO BEVERLY HILLS, paragraph 39).
31 It is therefore appropriate to proceed to a comparison of the signs at issue in visual, phonetic and conceptual terms, before examining the overall impression that they produce.
The visual comparison
32 As regards the visual comparison, the Board of Appeal found, at paragraph 19 of the contested decision, that the earlier mark was a word mark composed of five letters, BALEA, whereas the mark applied for was a figurative mark composed of the six-letter word caldea, in orange lower-case letters in a standard typeface, followed by a blue circle, this figurative element being crossed by two horizontal wavy lines resembling water. The Board of Appeal also found that, even though the signs at issue had four letters in common, namely ‘a’, ‘l’, ‘e’ and ‘a’, they did not have the same number of letters and differed as to their first letter, which usually catches the consumer’s attention more, as well as to the additional letter ‘d’ in the middle of the mark applied for. It accordingly took the view that the signs at issue presented sufficient differences for them to be considered visually different in overall terms.
33 The applicant disputes that assessment, claiming, first, that the mark applied for is dominated by its word element written in big letters and not by its figurative element, which it considers to be minor and not very creative.
34 The applicant claims, next, relying on, by analogy, a previous decision of the Board of Appeal, that the signs at issue are visually similar by reason of the fact that they contain almost the same number of letters (five and six respectively), four of which are identical and in the same position (‘a-l-e-a’). The fact that the word element of the mark applied for is written in lower-case letters is, moreover, it argues, not relevant since the extent of the protection of the mark includes all possible spellings. Finally, the figurative element of the mark applied for does not amend that assessment.
35 In that respect, it must be noted that the mark applied for is a composite sign comprised of the work element ‘caldea’ and a figurative element, whereas the earlier mark consists only of the term ‘balea’. However, 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 a 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).
36 According to the case-law, where a sign consists of both figurative and word elements, it does not automatically follow that it is the word element which must always be considered to be dominant (Case T‑3/04 Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA) [2005] ECR II‑4837, paragraph 45).
37 A compound trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the compound mark, unless that component forms the dominant element within the overall impression created by the compound mark. Such is the case where that component is, by itself, likely to dominate the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 33, and KINJI by SPA, paragraph 46).
38 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components (MATRATZEN, paragraph 35).
39 Furthermore, according to well-established case-law relied on by OHIM, figurative or stylistic elements of a composite sign cannot summarily be dismissed as negligible for the purposes of the comparison of the signs to the extent to which they can add to the differentiation between them or even contribute to a different overall impression, and this regardless of whether the words to which that different stylisation is applied are identical in whole or in part (see, to that effect, KINJI by SPA, paragraphs 41 to 43, and judgment of 8 February 2007 in Case T‑88/05 Quelle v OHIM – Nars Cosmetics (NARS), not published in the ECR, paragraph 61).
40 In the present case, although the earlier mark is a word mark with no particular graphic or figurative features, the figurative elements of the mark applied for are in no way negligible. Besides the fact that the word ‘caldea’ is written in orange lower-case letters and that its particular written form constitutes, contrary to what the applicant asserts, an intangible element of the figurative mark applied for, the figurative element composed of a blue circle crossed by two horizontal wavy lines resembling water catches the consumer’s eye and adds a significant visual differentiation. The Court takes the view that that presentation has a certain distinctive character and that its figurative elements thus confer on the mark applied for a different overall impression to that conferred on the earlier mark.
41 The Board of Appeal’s finding that the signs at issue are visually different in overall terms must therefore be confirmed.
42 That assessment would not be affected, moreover, even if their word elements alone were taken into account, the Court approving, in that regard, the findings of the Board of Appeal referred to at paragraph 32 above. It must be added that, since those word elements consist of five and six letters respectively, the differences between them, duly noted by the Board of Appeal, will be more easily grasped by the average consumer. Thus, the Court has already held that, in the case of word signs which are relatively short, even a difference consisting of a single consonant will preclude a finding that there is a high degree of visual similarity between the two signs (see judgment of 16 January 2008 in Case T‑112/06 Inter-IKEA v OHIM – Waibel (idea), not published in the ECR, paragraph 54 and the case-law cited).
43 As regards the previous decision of the Board of Appeal relied on by the applicant, this is irrelevant, in fact and in law, for the same reasons as those outlined at paragraph 27 above.
44 The Board of Appeal did not therefore err in finding that there was no visual similarity between the signs at issue, considered in their entirety, and regardless of the greater or lesser dominance of the word element of the mark applied for.
The phonetic comparison
45 With regard to the phonetic comparison, the Board of Appeal found, at paragraph 20 of the contested decision, that, even though the signs at issue coincided in the sequence ‘a-l-e-a’, they differed by reason of the additional pronunciation of the letter ‘d’, included in the middle of the mark applied for, and by reason of their first letters (‘b’ and ‘c’ respectively), which had more impact. Those differences were, according to the Board of Appeal, noticeable in sound. It held, consequently, that the signs at issue had only a low degree of phonetic similarity.
46 The applicant disputes that assessment and claims, relying, by analogy, on previous decisions of the Board of Appeal, that the signs at issue have a high degree of phonetic similarity, since they produce the same general sound and have the same number of syllables. Their first letters, ‘b’ and ‘c’ respectively, although different, are similar given that the letter ‘c’ is pronounced like the letter ‘k’. Those two letters thus belong to the group of plosive consonants, which are produced by stopping the airflow in the vocal tract. Further, four letters (‘a’, ‘l’, ‘e’ and ‘a’) of the signs at issue are identical and are pronounced in the same way, with the same sequence of vowels (‘a-e-a’). As for the presence of the letter ‘d’ in the mark applied for, that is not noticeable since that letter is pronounced very softly and voiced.
47 In this regard, it should be noted at the outset, as OHIM did, that in certain non-Germanic languages, particularly the Baltic and Slavic languages, the letter ‘c’ is not pronounced like the letter ‘k’ but rather like the letter ‘s’ or like the sound ‘ts’ in English. The applicant’s argument that the letters ‘b’ and ‘k’ belong to the group of plosive consonants is therefore irrelevant for part of the public.
48 In any event, the fact that the letters in question belong to the group of plosive consonants does not make them phonetically similar. As OHIM argues, with reference to the International Phonetic Alphabet edited by the International Phonetic Association, the letter ‘b’ belongs to the voiced bilabial plosives sub-category of consonants and its pronunciation differs very distinctly from that of the letter ‘k’, which belongs to the voiceless velar plosive sub-category of consonants. In addition, both consonants are, in the present case, followed by the same vowel ‘a’, which allows them to be pronounced fully and strengthens the pronunciation of the beginning of the word. Furthermore, the difference in pronunciation introduced by the presence, in the middle of the word element of the mark applied for, of the letter ‘d’ is also strengthened by the vowel ‘a’ which follows it and renders it more noticeable.
49 The Court accordingly takes the view that the Board of Appeal did not err in finding that there was only a low degree of phonetic similarity between the signs at issue, and that the previous decisions of the Board of Appeal relied on by the applicant to the contrary were irrelevant, in fact and in law, for the same reasons as those outlined in paragraph 27 above.
The conceptual comparison
50 Concerning the conceptual comparison, the Board of Appeal found, at paragraph 21 of the contested decision, that the word ‘balea’ meant ‘whale’ in Galician and that it also referred to a lake in Romania, that those concepts were not easily understood in the whole European Union and that the word element ‘caldea’ of the mark applied for had no meaning. It was of the opinion, consequently, that the signs at issue were not conceptually similar.
51 While not challenging that assessment, the applicant submits that the conceptual comparison of the signs at issue is irrelevant in the present case, since the mark applied for has no meaning, while the earlier mark has a meaning only for a tiny part of the population of the European Union.
52 Even though the correct spelling of the name of the lake in Romania mentioned by the Board of Appeal is in fact ‘Bâlea’, the fact none the less remains that the Board of Appeal did not err in finding that there was no conceptual similarity between the signs at issue.
The overall impression
53 In the present case, on the basis of the overall impression produced by the signs at issue, the Board of Appeal found that the visual and conceptual differences which characterised them were sufficient to neutralise their low phonetic similarity, with the result that they had to be deemed to be different overall.
54 It is true, as the applicant submits, that it follows from the case-law that it is possible that mere phonetic similarity between marks may create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (see, by analogy, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 28).
55 However, the Court of Justice held in Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, at paragraphs 21 and 22, that one cannot deduce from paragraph 28 of the judgment in Lloyd Schuhfabrik Meyer that there is necessarily a likelihood of confusion each time that mere phonetic similarity between two signs is established. In addition, according to the judgment in Joined Cases T‑350/04 to T‑352/04 Bitburger Brauerei v OHIM – Anheuser Busch (BUD, American Bud and Anheuser Busch Bud) [2006] ECR II‑4255, paragraph 113, the solution envisaged by the Court of Justice at paragraph 28 of Lloyd Schuhfabrik Meyer is a mere possibility which must take account of the other relevant factors in the case in question.
56 In that respect, it should be noted that the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public normally also perceives visually the mark designating those goods (see idea, paragraph 78 and the case-law cited). Conversely, a low degree of phonetic similarity should not prevail, in the global comparison of the signs at issue, unless the contact between the goods concerned and the public is generally established by means of sound.
57 However, that is not the case here, contrary to the applicant’s assertion concerning the ostensible marketing of the goods in question in a drugstore. As OHIM correctly points out, since those goods are not pharmaceutical products but beauty care products, they are usually sold side-by-side in drugstores, supermarkets, department stores and retail outlets. Consequently, the applicant’s assertion that consumers do not have the possibility to see the signs side-by-side is factually inaccurate. That has the effect of limiting yet further the significance of the low phonetic similarity found between the signs at issue, as the public will perceive the mark above all in visual terms (Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 55).
58 In addition, it should be noted, in response to the applicant’s argument that the goods in question are not very expensive, that consumers tend, on the contrary, to be attentive in the acquisition of body care products, on grounds of aesthetic considerations or personal preferences, sensitivity, allergies, type of skin and hair and so forth, as well as the expected effect of the products. It is, therefore, unlikely that those consumers would leave purchase choice to the vagaries of an ‘imperfect recollection’. On the contrary, it is far more probable that considerable care will be taken in acquiring the goods in question.
59 Accordingly, in view of the fact, first, that the signs at issue are visually and conceptually different, second, that the significance of those differences is further increased by the dominance of the visual perception of the signs at issue by the average consumer, who tends to be attentive, and third, that there exists only a low degree of phonetic similarity, the Court finds that the Board of Appeal did not err in concluding, at paragraph 22 of the contested decision, that the signs at issue were globally dissimilar.
Global assessment of the likelihood of confusion
60 At paragraphs 25 to 27 of the contested decision, the Board of Appeal found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 in the mind of the relevant public, even for the identical goods at issue, on the ground that the signs at issue were globally dissimilar. It added that such a conclusion was not affected by the fact that the earlier mark enjoyed a reputation in Germany. It noted, in this respect, that a likelihood of confusion presupposed that the signs were identical or similar. Thus, according to the Board of Appeal, the fact that a mark was well known was one factor which, far from giving rise, in itself, to a likelihood of confusion, had to be taken into account for the purpose of determining whether the similarity between the signs or between the goods and services was sufficient to give rise to a likelihood of confusion.
61 According to the applicant, it follows from its arguments that the signs at issue are similar overall, while the goods and services concerned are identical or highly similar.
62 The overall likelihood of confusion would, moreover, be increased by the fact that the goods in question are not very expensive and are therefore most often bought quickly and without a great deal of attention.
63 Furthermore, it should be taken into account that, during the sale of those goods in a drugstore, consumers are not generally faced with the two marks one beside the other, but have only one of them in memory.
64 Finally, the applicant complains that the Board of Appeal did not take into account the highly distinctive character of the earlier mark. Since the applicant proved the reputation of that mark in Germany and in several other Member States, acquired by reason of its intensive and prolonged use, the Board of Appeal ought, according to the applicant, to have afforded the mark increased scope of protection and ought, therefore, to have concluded that there was a likelihood of confusion between the signs at issue. The applicant relies on, to that effect, a judgment of the Landgericht Mannheim (Mannheim Regional Court, Germany) which held that the signs Cadea and Balea were similar.
65 In this regard, it follows from the matters addressed in paragraphs 30 to 59 above that one of the conditions required by Article 8(1)(b) of Regulation No 207/2009 for the purposes of establishing a likelihood of confusion, namely identity or similarity between the marks at issue, is not met in the present case.
66 Consequently, it must be held that the Board of Appeal acted correctly in law in finding that there was no likelihood of confusion, in its global assessment thereof.
67 The applicant’s arguments based on the identity or similarity of the goods and services concerned and on the reputation of the earlier mark, particularly in Germany, cannot invalidate that finding.
68 First, it follows from well-established case-law that the absence of similarity of the signs at issue cannot, in the context of a global assessment of the likelihood of confusion, be offset by the fact that the goods or services designated are identical or similar, since the identity or similarity of the goods or services is not sufficient to support the finding that there is a likelihood of confusion (see, in addition to the case-law cited at paragraph 17 above, idea, paragraph 83 and the case-law cited).
69 Second, while it is established case-law that the more distinctive the earlier mark the greater the likelihood of confusion will be, it must be emphasised that a likelihood of confusion presupposes that the signs are identical or similar. Thus, while, for the purpose of assessing whether there is sufficient similarity between the signs or between the goods and services to give rise to a likelihood of confusion, account must be taken of the fact that a mark is well known or has a reputation, that fact has no bearing on the assessment of the likelihood of confusion in the case where the marks at issue are different overall (see idea, paragraph 84 and the case-law cited).
70 As for the applicant’s arguments alleging a so-called low degree of attention of the relevant public and based on the method of distribution of the goods at issue, these have already been rejected at paragraphs 57 and 58 above.
71 Lastly, so far as concerns the argument which the applicant derives from a judgment of the Landgericht Mannheim, it should be noted, first, that registrations already made in Member States are only factors which may merely be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark and, second, that there is no provision in Regulation No 207/2009 which requires OHIM or, on appeal, the General Court to come to the same conclusions as those arrived at by national administrative bodies or courts in similar circumstances (see, to that effect, Deutsche SiSi-Werke v OHIM, paragraph 49 and the case-law cited).
72 In view of all of the foregoing, it must be held that the Board of Appeal acted correctly in establishing that the signs at issue were different and that there was no likelihood of confusion between them.
73 Consequently, the applicant’s single plea in law must be rejected as unfounded and the action therefore dismissed in its entirety, without there being any need to rule on the admissibility, which has been disputed by OHIM, of the claim in the application for the annulment of the mark applied for and the referral of the case back to OHIM.
Costs
74 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
75 Under Article 87(5) of the Rules of Procedure, where one party withdraws from proceedings and costs are not applied for in the written pleadings, the parties are to bear their own costs.
76 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by OHIM, in addition to bearing its own costs. In default of other applications by the parties as to costs, each party shall bear its own costs relating to the intervention.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders dm-drogerie markt GmbH & Co. KG to pay the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), in addition to bearing its own costs;
3. Order each party to bear its own costs relating to the intervention of Semtee.
Delivered in open court in Luxembourg on 18 October 2011.
[Signatures]