JUDGMENT OF THE COURT OF FIRST INSTANCE (Sixth Chamber)
8 July 2009 (*)
(Community trade mark – Opposition proceedings – Application for the figurative Community mark oli – Earlier Community word marks OLAY – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑240/08,
The Procter & Gamble Company, established in Cincinnati, Ohio (United States), represented by T. Scourfield and N. Beckett, Solicitors, and A. Speck, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard‑Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Laboratorios Alcala Farma, SL, established in Madrid (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 2 April 2008 (Case R 1481/2007-2), relating to opposition proceedings between The Procter & Gamble Company and Laboratorios Alcala Farma, SL,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Sixth Chamber),
composed of A.W.H. Meij, President, V. Vadapalas (Rapporteur) and L. Truchot, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 16 June 2008,
having regard to the response lodged at the Registry of the Court on 16 October 2008,
having regard to the designation of another judge to complete the Chamber as one of its Members was prevented from sitting,
having regard to the refusal of the application to lodge a reply, brought after the expiry of the time-limit laid down in Article 135(2) of the Rules of Procedure of the Court of First Instance,
further to the hearing on 29 April 2009,
gives the following
Judgment
Background to the dispute
1 On 4 October 2004, the Spanish company Laboratorios Alcala Farma filed an application for 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 Registration was sought for the figurative sign reproduced below:
3 The goods in respect of which registration was sought are in Classes 3 and 5 under the Nice Agreement concerning the International Classification of Goods and Services for the purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 3: ‘Perfumery and cosmetic products, cosmetic products which base is made of olive oil, toilet soaps, essential oils, hair restorers and dentifrice’;
– Class 5: ‘Pharmaceutical products, sanitary products for medical care, dietetic substances for medical use, baby food, materials for poultices, disinfectants’.
4 The trade mark application was published in the Community Trade Marks Bulletin No 20/2005 of 30 May 2005.
5 On 25 August 2005 the applicant, The Procter & Gamble Company, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of all of the goods covered.
6 In support of its opposition, the applicant relied on the two following earlier Community word marks:
– OLAY (No 273 375), registered in respect of the following goods in Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrice, preparations for cleaning, care and beautification of the skin, scalp and hair’;
– OLAY (No 3 053 832), registered in respect of the following goods in Class 5: ‘Pharmaceutical preparations for medical use; pharmaceutical preparations for the treatment of menopausal symptoms; dietetic substances for medical use, dietetic beverages adapted for medical use, medicated herbal-based beverages, medicated powder drinks for medicinal use; herbal preparations adapted for medical use, medicated skin care preparations, medicated essential oils; vitamins, minerals and nutritional supplements’.
7 By decision of 17 July 2007, the Opposition Division concluded that there was no likelihood of confusion and rejected the opposition.
8 On 17 September 2007, the applicant lodged an appeal with 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 Opposition Division.
9 By decision of 2 April 2008 (‘the contested decision’), the Second Board of Appeal dismissed the appeal. It decided, in essence, that although the signs at issue covered similar or identical goods, they were different from a visual and aural point of view, which meant that a likelihood of confusion could be ruled out.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– uphold the opposition against registration of the mark applied for;
– order OHIM to refuse registration of the mark applied for;
– order the other parties to the proceedings to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Arguments of the parties
12 The applicant bases its action on a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
13 It takes the view that the Board of Appeal failed to carry out an appropriate comparison of the signs at issue and, in particular, that it mixed up the factors relating to the visual and aural comparison.
14 Instead of assessing the signs at issue, the Board of Appeal relied on a general rule according to which a difference of only one letter suffices to distinguish short word signs, comprised of three or four letters. In addition, it decided, wrongly, that the applicant’s arguments regarding the similarity of the signs in question would lead to it being granted a monopoly with regard to the use of the prefix ‘ol’.
15 At a visual level, the Board of Appeal ought to have considered that the stylisation of the mark applied for was simple, and that it was a simple representation of the word ‘oli’ itself. Thus, the only visual difference between the two signs at issue arises from their different endings, namely ‘i’ and ‘ay’.
16 At an aural level, it omitted to take account of the fact that as the mark applied for represents an invented word, it can be pronounced in a number of ways, inter alia, in English ‘o-lee’ and ‘o‑lie’ and could be confused with the earlier marks, pronounced ‘o‑lay’. The stylisation of the mark applied for, and the number of letters which the marks at issue have, is, in that regard, irrelevant.
17 At the conceptual level, none of the marks at issue carry an established concept which might contribute to distinguishing between them.
18 In the light of those considerations, the Board of Appeal ought to have found that the signs at issue were similar and that the use of the mark applied for would create a likelihood of confusion with the earlier marks.
19 That conclusion is reinforced in the light of the reputation of the earlier marks. In that regard, the Board of Appeal was wrong not to examine the extent of the distinctive character of the earlier marks, arising from their reputation.
20 OHIM disputes the applicant’s arguments.
Findings of the Court
21 As a preliminary point, it should be noted that under its third head of claim the applicant requests the Court to order OHIM to refuse registration of the mark applied for.
22 Under Article 63(6) of Regulation No 40/94 (now Article 65(6) of Regulation No 207/2009), OHIM is required to take the measures necessary to comply with judgments of the Community Courts. Accordingly, it is not for the Court of First Instance to issue directions to OHIM. It is for the latter to draw the appropriate inferences from the operative part and grounds of the Courts’ judgments (see Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraph 24 and the case‑law cited).
23 It follows that the applicant’s third head of claim is inadmissible.
24 As regards the single plea raised by the applicant, it should be borne in mind that, under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
25 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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the public’s perception of the signs and goods at issue, taking into account all factors relevant to the circumstances of the case (Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 and 31; see, by analogy, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17).
26 In order to assess the degree of similarity between the marks concerned, the degree of visual, aural or conceptual similarity between them must be determined and, where appropriate, the importance to be attached to those different elements must be evaluated, taking into account the category of goods or services at issue and the circumstances in which they are marketed (see, to that effect, Lloyd Schuhfabrik Meyer, cited in paragraph 25 above, paragraph 27).
27 In the present case, as regards the relevant public, it must be held, as the Board of Appeal found without being challenged on the point by the applicant, that most of the goods in question are intended for the average consumer, except for products for medical use in Class 5, which target both the average consumer and health professionals, that is to say, doctors and pharmacists, whose level of attention is higher (paragraph 17 of the contested decision).
28 As the earlier marks are Community trade marks, the likelihood of confusion must be assessed in relation to the relevant public consisting of both health professionals and the general public in the European Union.
29 As regards the goods in question, their similarity or identity is not disputed by the parties.
30 Concerning the comparison of the signs in dispute, it must be examined whether the Board of Appeal, in accordance with the case‑law cited in paragraph 26 of this judgment, determined the degree of visual, aural and conceptual similarity, taking into account their distinctive and dominant components.
31 At a visual level, the Board of Appeal correctly found that the figurative mark applied for has a particularly characteristic graphical representation (paragraph 21 of the contested decision). Contrary to what the applicant claims, the stylised character of the mark applied for constitutes its distinctive component and cannot be considered to be a negligible aspect in the visual comparison of the signs in dispute.
32 In that regard, it should be observed that the mark applied for consists of a figurative sign comprising a word component ‘oli’ written in highly‑stylised lower-case lettering, of which the letter ‘o’ forms a massive circle in a light colour, surrounded by a dark line which is narrower at the top. The letters ‘l’ and ‘i’ – the latter having a light-coloured accent above it – are pointed in shape at their base, which gives the impression that they have been drawn with a paintbrush. The earlier marks, consisting of the word ‘olay’, are word marks.
33 Taking account of the original graphical representation which characterises the mark applied for, of the different length of the word components, and of the different visual impression created by the lettering ‘i’ and ‘ay’, the Board of Appeal was entitled to find that, taken as a whole, the signs at issue were visually different.
34 At an aural level, the Board of Appeal found that the earlier marks are pronounced ‘o‑léi’ or ‘o‑lái’, while the mark applied for is pronounced ‘olí’ with a tonic accent on the last syllable and, that as the signs at issue are short, the difference in relation to the second syllable, which carries the tonic accent, gives them a different aural impression (paragraphs 22 to 25 of the contested decision).
35 The applicant challenges that assessment on the ground – without explaining that ground more precisely – that the Board of Appeal mixed up visual and aural factors. In that regard, the applicant criticises the Board of Appeal, inter alia, for taking into account the accent drawn above the letter ‘i’ of the mark applied for.
36 It should be pointed out that, in the context of the aural comparison of the signs in question, the Board of Appeal found that the mark applied for is pronounced with the tonic accent on the letter ‘i’ (paragraph 22 of the contested decision), and that that tonic accent introduces a clear aural difference between the signs at issue, as pronounced, in particular, in English, in French, in Spanish and in Italian (paragraph 24 of the contested decision). Contrary to what the applicant claims, it is not apparent from those considerations that the Board of Appeal assessed the pronunciation of the mark applied for relying solely on the presence of an accent above the letter ‘i’ of that mark applied for. The applicant’s argument, alleging that the accent over the letter ‘i’ is not capable of affecting the aural comparison of the signs in question is, therefore, irrelevant.
37 The applicant also argues that the Board of Appeal ignored the fact that as the mark applied for, oli, is an invented word, it can be pronounced in a number of ways and that, in English, it could be pronounced ‘o-lie’.
38 The Court finds that the applicant’s argument, based on such a pronunciation of the mark applied for, is not capable of calling into question the Board of Appeal’s finding that the mark applied for would be spontaneously pronounced ‘oli’ by an English-speaker. That finding is, in addition, justified by the consideration, relied on by OHIM, that the word component of the mark applied for is identical to the first name ‘Oli’, and to the first two syllables of the English word ‘olive’, which are both pronounced ‘oli’.
39 In addition, even if a part of the English-speaking public were to pronounce the mark applied for as the applicant suggests, that would result only in a certain phonetic similarity which, in the present case, would be of little significance on account of the means of marketing the goods in question, which normally involves the relevant public, when purchasing, visually perceiving the mark designating those goods (see, to that effect, Case T‑355/02 Mühlens v OHIM – Zirh International (ZIRH) [2004] ECR II‑791, paragraphs 51 to 54, and Case T‑194/03 Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II‑445, paragraphs 116 and 117). As the Board of Appeal noted in paragraph 31 of the contested decision, which is moreover not disputed by the applicant, the goods in question are often displayed in such a way that consumers are able to examine them visually.
40 Therefore, the applicant’s argument, alleging an aural similarity between the signs at issue from the perspective of the English‑speaking public is unfounded and, in any event, is not capable of casting doubt on the Board of Appeal’s finding relating to the overall assessment of the likelihood of confusion.
41 At the conceptual level, the applicant does not challenge the Board of Appeal’s finding that the signs at issue have no meaning which is likely to lead to a conceptual similarity between them.
42 The applicant does, however, criticise the reasoning of the contested decision which, according to the reasoning in the decision, ‘would amount to granting [the applicant] a monopoly on the prefix “OL”’, currently used in a number of Community languages to refer to oil (paragraphs 27 and 36 of the contested decision).
43 It must be observed that that criticism is directed against the reasoning of the contested decision, by which the Board of Appeal countered the applicant’s argument that the first two letters which are common to the signs at issue would lead to a certain conceptual similarity between them, and to the existence of a likelihood of confusion.
44 Given that, before the Court, the applicant is not challenging the comparison carried out by the Board of Appeal in the contested decision, from which it inferred a lack of conceptual similarity, but takes the view, on the contrary, that none of the signs at issue express a specific concept, and that their conceptual comparison cannot therefore contribute, in the present case, to the assessment of the similarity of the signs at issue, its criticism has no effect on the lawfulness of the contested decision. In any event, it must be held that the Board of Appeal was right to find that the mere fact that the first two letters of signs at issue are the same does not suffice to create a conceptual link between them.
45 Moreover, since, at the end of the reasoning set out in paragraphs 21 to 26 of the contested decision, the Board of Appeal found, rightly, that the signs at issue were different at a visual and aural level and were not in any way conceptually similar, the reasoning criticised, appearing in paragraphs 27 and 36 of the contested decision, can only be regarded as a ground added merely for the sake of completeness. Its alleged lack of relevance cannot, in any event, lead to the annulment of the contested decision.
46 In addition, the applicant criticised the Board of Appeal’s finding that, as regards short signs, a difference of one letter can suffice to create a visual and aural difference (paragraphs 25 and 33 of the contested decision).
47 It should be noted that, by that finding, the Board of Appeal stated, without establishing a general rule in that regard, that a difference of one letter can prove significant when comparing short word signs. Contrary to what the applicant claims, that finding in no way gives the impression that the Board of Appeal dispensed with the need to ascertain, by an actual assessment, the degree of similarity between the signs at issue.
48 Taking account of the foregoing, it must be concluded that the applicant has not cast doubt on the Board of Appeal’s finding that the signs at issue have significant differences at a visual and aural level which override the similarities.
49 Therefore, as regards the overall assessment of the likelihood of confusion, the Board of Appeal was entitled to rely on those significant differences to rule out the possibility that the relevant public, comprising both health professionals and the general public, might believe that the goods in question, although they are in part similar, and in part identical, come from the same undertaking or, as the case may be, economically‑linked companies.
50 In addition, in relation to, inter alia, goods for medical use in Class 5, the Board of Appeal’s finding that there is no likelihood of confusion is justified also by the fact that the consumer displays a higher level of attention. First, medical professionals display a high degree of attention when prescribing medicinal products. Second, with regard to end-consumers, it can be assumed, where pharmaceutical products are sold without prescription, that the consumers interested in those products are reasonably well informed, observant and circumspect, since those products affect their state of health, and that they are less likely to confuse different versions of such products. Furthermore, even supposing a medical prescription to be mandatory, consumers are likely to display a high degree of attention when the products in question are prescribed, having regard to the fact that they are pharmaceutical products (see judgment of 21 October 2008 in Case T‑95/07 Aventis Pharma v OHIM – Nycomed (PRAZOL), not published in the ECR, paragraph 29 and the case‑law cited).
51 Lastly, inasmuch as the applicant criticises the Board of Appeal for not having examined the precise extent of the distinctive character of the earlier marks linked to their reputation, it must be recalled that the distinctive character of the earlier mark, and in particular its reputation, is one factor which must be taken into account in the context of the overall assessment of the likelihood of confusion, given that the protection from which a mark benefits must be even greater when the mark has highly distinctive character, either per se or because of the recognition it possesses on the market (Lloyd Schuhfabrik Meyer, paragraph 20).
52 Nevertheless, where the comparison of the marks at issue allows for a finding that they are different, it is not necessary to set out the degree of reputation of the earlier trade marks which is taken into account (see, to that effect, Case C‑106/03 Vedial v OHIM [2004] ECR I‑9573, paragraph 54, and judgment of 11 December 2008 in Case C‑57/08 P Gateway v OHIM, not published in the ECR, paragraph 56).
53 The high distinctive character of the earlier marks cannot, on its own, overturn the finding that there is no likelihood of confusion, particularly when the overall impression created by the mark applied for differs greatly from that produced by the earlier signs (see, to that effect, judgment of 18 December 2008 in Case T‑16/07 Torres v OHIM – Sociedad Cooperativa del Campo San Gínes (TORRE DE BENÍTEZ), not published in the ECR, paragraph 75).
54 In the present case, taking account of the fact that the overall impression created by the mark applied for differs greatly from that produced by the earlier marks, the Board of Appeal did not commit an error in ruling out a likelihood of confusion between the marks at issue, whatever the distinctive character of the earlier marks – arising from their recognition by the relevant public on the market – might be.
55 In the light of all of the foregoing, the single plea raised on by the applicant must be rejected as unfounded.
56 Consequently, the first two heads of claim seeking, respectively, the annulment and the alteration of the contested decision, must be rejected. Therefore, the present action must be dismissed.
Costs
57 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As 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 COURT OF FIRST INSTANCE (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders The Procter & Gamble Company to pay the costs.
Delivered in open court in Luxembourg on 8 July 2009.
[Signatures]