JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
5 May 2011 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark OLYMP – Earlier national figurative mark OLIMPO – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑204/09,
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 5 March 2009 (Case R 598/2008-2) relating to opposition 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 27 October 2005, 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) 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 Registration as a mark was sought for the following figurative sign:
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 the Community trademark was published in Community Trade Marks Bulletin No 18/2006 of 1 May 2006.
5 On 18 July 2006, Miguel Bellido SA filed at OHIM a notice of opposition to registration of the mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), in respect of the goods referred to in paragraph 3 above.
6 The opposition 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 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).
9 On 10 March 2008, the Opposition Division upheld the opposition 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 mark applied for and the earlier mark.
10 On 9 April 2008, the applicant filed an appeal with OHIM against the Opposition Division’s decision pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
11 By decision of 5 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 dominated 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 mark applied for and the earlier mark.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 The applicant relies on a single plea, alleging breach of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
15 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 that mark. The Board of Appeal consequently erred in finding that the word element of the earlier mark was its dominant element on the basis, first, that the figurative element of that earlier mark has no clear meaning and, second, that the word element of that mark is distinctive.
16 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.
17 Visually, the applicant submits that the mark applied for is figurative only because of its special font, which is not, however, in itself sufficiently stylised for that mark to be recognised by the relevant public, with the result that it will therefore be perceived in the same way as a word mark. In addition, the specific graphic design conferred on the mark applied for by its font constitutes a difference with regard to the word ‘olimpo’, which is represented in a standard font.
18 The applicant goes on to point out that the mark applied for 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 visually similar.
20 Phonetically, the applicant submits that the mark applied for 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 mark applied for and the word element of the earlier mark, a fact which gives rise to significant phonetic differences between those 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 can 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 word ‘olymp’ 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 As provided in Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, 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), ‘earlier trade marks’ means, in particular, Community trade marks and trade marks registered in a Member State where the date of application for their registration is earlier than the date of application for registration of the Community trade mark.
27 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 the case-law cited).
The relevant public and comparison of the goods
28 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 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).
29 Likewise, the identity of the goods covered by the marks at issue is not in dispute between the parties.
30 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
31 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).
32 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).
33 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).
34 At issue in the present case are the figurative mark OLYMP and the earlier mark OLIMPO, registered in Spain as a figurative mark. It must, however, be noted that the earlier mark and the mark applied for are both composite marks. The earlier mark is thus composed 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. For its part, the mark applied for consists of a verbal element, namely the word ‘olymp’, formed in an analogous way to that of the verbal element of the earlier mark, and a figurative element, namely the typescript in which that word is presented. Having regard to the fact that the stylisation of the script in which the word ‘olymp’ is presented is not very marked, the view is to be taken, following the example of the Board of Appeal at paragraph 30 of the contested decision, that the word ‘olymp’ dominates the overall impression made by the mark applied for and that the figurative element of that mark makes only a negligible contribution to that impression.
35 With regard to the earlier mark, the element which is positioned 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.
36 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 separated clearly from that element. Finally, as the only pronounceable element, it is preferable to the element above it for purposes of designating the earlier mark.
37 Consequently, the view is to be taken, following the example of the Board of Appeal at paragraph 33 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.
38 Visually, firstly, it must be pointed out that the mark applied for 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’. Moreover, despite the differences resulting from their typeface, the letters which comprise the signs at issue are in capital letters with ordinary and clear lettering. It follows that they are very similar in visual terms.
39 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 in relation to the mark applied for to offset the visual similarities made apparent at paragraph 38 above.
40 Thirdly and finally, as is apparent from paragraph 36 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.
41 It follows that the Board of Appeal was correct to find that the signs at issue were visually similar.
42 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 mark applied for 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’.
43 The applicant’s argument to the effect that a section of the relevant public might pronounce the mark applied for 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 (see 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 28 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.
44 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 penultimate syllable of that word.
45 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’.
46 Moreover, as the Board of Appeal found at paragraph 38 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.
47 It follows from the foregoing that the Board of Appeal was correct to hold that the signs at issue are phonetically similar.
48 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 would perceive the figurative element of the earlier mark as being very similar to a Calatrava cross or to an ornamental cross. In those circumstances, it must be stated, as the Board of Appeal held at paragraph 45 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 mark applied for with the verbal element of the earlier mark.
49 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.
50 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).
51 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.
52 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.
53 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 of the word ‘olimpo’, could, depending on the circumstances, be associated with the same idea as that evoked by the latter.
54 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.
55 It follows that the Board of Appeal was right, in finding at paragraph 44 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.
56 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
57 It follows from the assessment carried out above that the goods in question are identical and that the signs at issue display a high degree of similarity.
58 Furthermore, since the goods in question are everyday goods, the view must be taken that the relevant public will not display a high level of attention.
59 In those circumstances, 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.
60 Consequently, the single plea in law must be rejected and the action therefore dismissed in its entirety.
Costs
61 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]