JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
9 July 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark NANU — Earlier Community word mark NAMMU — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑89/11,
Nanu-Nana Joachim Hoepp GmbH & Co. KG, established in Bremen (Germany), represented by A. Nordemann and T. Boddien, 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
Vincci Hoteles, SA, established in Alcobendas (Spain),
ACTION brought against the decision of the First Board of Appeal of OHIM of 25 November 2010 (Case R 641/2010‑1), relating to opposition proceedings between Vincci Hoteles SA and Nanu-Nana Joachim Hoepp GmbH & Co. KG,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias (Rapporteur), President, M. Kancheva and C. Wetter, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 16 February 2011,
having regard to the response lodged at the Court Registry on 20 May 2011,
having regard to the order of 14 July 2011 staying the proceedings,
having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Eighth Chamber,
having regard to the order of 20 November 2013 staying the proceedings,
further to the hearing on 26 March 2015,
gives the following
Judgment
Background to the dispute
1 On 22 August 2007, the applicant, Nanu-Nana Joachim Hoepp 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 word sign NANU.
3 The goods and services in respect of which registration was sought are in Classes 3, 4, 6, 9, 16, 18, 20, 21, 24, 26 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 3: ‘Cosmetics, scented oils and perfume oils, hair lotions; potpourris (fragrances)’;
– Class 4: ‘Candles’;
– Class 6: ‘Metal tins; money boxes of metal; decorative articles of metal’;
– Class 9: ‘Sunglasses; mobile phone holders being accessories for mobile telephones; decorative magnets and magnetic walls; batteries’;
– Class 16: ‘Paper and cardboard and goods made from those materials (included in Class 16), stationery, postcards, hinged cards, papier maché, posters, calendars, pamphlets, newspapers; periodicals; artists’ materials, in particular paint boxes, paintbrushes, crayons, pictures; decorative articles of paper and cardboard; toilet paper’;
– Class 18: ‘Leather and imitations of leather, and goods made of these materials (included in Class 18); bags of all kinds (included in Class 18); wallets, purses; cases of all kinds (included in Class 18); umbrellas, parasols and walking sticks; travel requisites and parts therefor (included in Class 18)’;
– Class 20: ‘Furniture, mirrors, picture frames; goods, included in Class 20, of cork, reed, cane, wicker, horn, bone, ivory, shell, amber, mother-of-pearl, meerschaum; in particular waste paper baskets, linen bins, bread baskets, animal transport baskets; dolls’ furniture; wooden flowers, wood boxes; household requisites, namely coatstands, newspaper display stands, curtain rods; cushions; scarecrows of straw; straw dolls; mannequins; hand mirrors (cosmetic mirrors, toilet mirrors); inflatable figurines; wind and bell chimes, being decorative articles; decorative articles of wood; cork and plant braiding; dressing tables’;
– Class 21: ‘Candlesticks, glassware, porcelain, earthenware (included in Class 21), household items, namely storage containers, stoves, butter dishes, salt and pepper mills, trays, dustbins; kitchen utensils, namely cooking spoons, storage baskets, kitchen scales, strainers, whisks, skimmers, fish slices, corkscrews, bottle openers; dishes; stands for bowls; garden vessels, flower pots, bins; money boxes of plastic; toilet cases, toilet utensils, non-electric appliances for removing make-up, hair brushes, nail brushes, perfume sprayers, powder cases (not of precious metal), shaving brushes and shaving brush stands, toilet paper holders, toothbrushes and dental floss; decorative articles of plastic, glass, porcelain, earthenware; non-metal piggy banks’;
– Class 24: ‘Bed and table covers; textile goods; cushion covers; bed pads; fitted toilet lid covers’;
– Class 26: ‘Artificial flowers’;
– Class 35: ‘Retail services, namely in the field of gift articles for household purposes and daily use, household articles, stationery, decorative articles, clothing, jewellery and costume jewellery, perfumery, bags, shoes, novelty articles, games and playthings, and in the field of arts and crafts, and tea; mail order services, namely in the field of gift articles for household purposes and daily use, household articles, stationery, decorative articles, clothing, jewellery and costume jewellery, perfumery, bags, shoes, novelty articles, games and playthings, and in the field of arts and crafts, and tea; services in connection with the import and export of goods; presentation of goods for advertising purposes.’
4 The Community trade mark application was published in Community Trade Marks Bulletin No 28/2008 of 14 July 2008.
5 On 17 September 2008, Vincci Hoteles, SA, filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark NAMMU, registered on 5 July 2007 under No 5238704 covering goods and services in Classes 3, 32 and 44 and corresponding, for each of those classes, to the following description:
– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
– Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;
– Class 44: ‘Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; beauty salons, physiotherapy, massage and manicure’.
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 25 February 2010, the Opposition Division upheld the opposition in respect of the following goods and services:
– Class 3: ‘Cosmetics, scented oils and perfume oils, hair lotions, potpourris (fragrances)’;
– Class 4: ‘Candles’;
– Class 16: ‘Goods made from these materials [paper and cardboard] (included in Class 16); toilet paper’;
– Class 21: ‘Toilet cases, toilet utensils, non-electric appliances for removing make-up, hair brushes, nail brushes, perfume sprayers, powder cases (not of precious metal), shaving brushes and shaving brush stands, soap boxes, soap holders, dishes for soaps and soap dispensers, toilet paper holders, toothbrushes and dental floss’;
– Class 35: ‘Retail services, namely in the field of perfumery; mail order services, namely in the field of perfumery’.
9 By contrast, the Opposition Division rejected the opposition as regards the other goods and services covered by the mark applied for, referred to in paragraph 3 above.
10 On 19 April 2010, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 By decision of 25 November 2010 (‘the contested decision’), the First Board of Appeal of OHIM annulled the decision of the Opposition Division and rejected the opposition in so far as the following goods were concerned:
– Class 4: ‘Candles’;
– Class 16: ‘Goods made from these materials [paper and cardboard] (included in Class 16); toilet paper’;
– Class 21: ‘Toilet cases, toilet utensils, non-electric appliances for removing make-up, hair brushes, nail brushes, perfume sprayers, powder cases (not of precious metal), shaving brushes and shaving brush stands, soap boxes, soap holders, dishes for soaps and soap dispensers, dental floss’.
12 Furthermore, the Board of Appeal dismissed the appeal as to the remainder and confirmed the rejection of the Community trade mark application for the following goods and services:
– Class 3: ‘Cosmetics, scented oils and perfume oils, hair lotions, potpourris (fragrances)’;
– Class 21: ‘Toothbrushes’;
– Class 35: ‘Retail services, namely in the field of perfumery; mail order services, namely in the field of perfumery’.
13 In respect of the goods referred to in paragraph 11 above, the Board of Appeal found that they differed from the goods covered by the earlier mark and that, consequently, one of the conditions laid down in Article 8(1)(b) of Regulation No 207/2009 was not satisfied. By contrast, in respect of the goods and services referred to in paragraph 12 above, the Board of Appeal found, in essence, that, given the high degree of visual and phonetic similarity between the signs at issue and the lack of clear meaning attributed to those signs, there was a likelihood of confusion between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) of that regulation, since those goods or services were identical or similar to certain goods and services covered by the earlier mark.
Procedure and forms of order sought
14 By letter of 21 June 2011, the applicant requested a stay in the proceedings pending the final ruling on its application for a declaration of invalidity of the Community word mark NAMMU, since the opposition proceedings which are the subject of the present case are based specifically on that mark.
15 By letter of 30 June 2011, OHIM indicated that it had no objection to that request for a stay of proceedings.
16 By order of the President of the Third Chamber of the General Court of 14 July 2011, the proceedings were stayed until a final decision had been taken on the application for a declaration of invalidity of the Community trade mark NAMMU, registered under No 5238704, of which the other party to the proceedings before the Board of Appeal is the proprietor.
17 Following the decision of the First Board of Appeal of 27 June 2013, in which it dismissed the applicant’s appeal against the decision of the Cancellation Division rejecting its request for a declaration of invalidity referred to in paragraph 16 above, the proceedings were resumed on 5 September 2013.
18 Following the lodging of an application by the applicant at the Court Registry on 16 September 2013 seeking annulment of the decision of the First Board of Appeal referred to in paragraph 17 above (Case T‑498/13, Nanu-Nana Joachim Hoepp v OHIM – Vincci Hoteles (NAMMU)), the Court, by letter of 28 October 2013, asked the parties to submit their observations on a possible stay of the proceedings until delivery of the judgment in that case. By letters of 31 October 2013 and 4 November 2013, OHIM and the applicant respectively agreed to the stay of those proceedings. By order of the President of the Eighth Chamber of 20 November 2013, the proceedings were stayed until the Court had given a final ruling in Case T‑498/13.
19 The proceedings were resumed on 11 December 2014, the day of delivery of the judgment in Nanu-Nana Joachim Hoepp v OHIM – Vincci Hoteles (NAMMU) (T‑498/13, EU:T:2014:1065) in the case referred to in paragraph 18 above.
20 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition;
– order OHIM to pay the costs.
21 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
22 As a preliminary point, it must be stated that the applicant’s first head of claim is set out in the first and last sections of the application as seeking the pure and simple annulment of the contested decision. However, the definition of the purpose of the action which the applicant gives in paragraph 12 of the application and the content of its argument demonstrate clearly its intention to seek annulment of that decision only to the extent to which it dismisses its appeal.
23 Furthermore, in reply to a question put by the Court at the hearing, the applicant confirmed that interpretation of its first head of claim by acknowledging that it was challenging the contested decision only in so far as it upheld the opposition.
24 In those circumstances, the applicant’s first head of claim must be interpreted as seeking, not annulment of the contested decision in its entirety, but annulment of that decision only to the extent to which it dismissed its appeal concerning the goods and services referred to in paragraph 12 above and confirmed the refusal of registration with regard to those goods and services.
25 In support of its action, the applicant raises a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it disputes the conclusion of the Board of Appeal that there is a likelihood of confusion between the mark applied for and the earlier mark on the grounds, first, that, contrary to the view taken by the Board of Appeal, toothbrushes in Class 21 and retail and mail order services on the market for perfumery in Class 35 differ from the goods in Class 3 covered by the earlier mark and, secondly, that the marks at issue display visual and conceptual differences which cancel out their low degree of phonetic similarity.
26 OHIM, for its part, disputes that argument.
27 Article 8(1)(b) of Regulation No 207/2009 provides that, 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.
28 According to settled 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 the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 24 June 2014 in Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, EU:T:2014:569, paragraph 16 and the case-law cited).
29 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 judgment in THE HUT, cited in paragraph 28 above, EU:T:2014:569, paragraph 17 and the case-law cited).
30 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services 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 judgment in THE HUT, cited in paragraph 28 above, EU:T:2014:569, paragraph 18 and the case-law cited).
31 It is in the light of those considerations that the applicant’s arguments put forward in support of its single plea in law must be examined.
32 As a preliminary point, it is necessary to uphold the findings of the Board of Appeal, which have not been disputed by the applicant, to the effect that, first, the relevant public consists of the general public in the Member States of the European Union and, secondly, that that public has a normal degree of attentiveness, at least with regard to the goods and services in question in the present proceedings.
The comparison of the goods and services
33 According to settled case-law, in assessing the similarity of goods or services, all the relevant factors relating to those goods or services 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 judgment of 13 February 2014 in Demon International v OHIM – Big Line (DEMON), T‑380/12, EU:T:2014:76, paragraph 36 and the case-law cited).
34 The complementary nature of goods relates to a close connection existing between the goods in question, in the sense that one of the goods is important or indispensable for the use of the other, in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking. This implies that complementary goods are likely to be used together, which presupposes that they are intended for the same public (see judgment in DEMON, cited in paragraph 33 above, EU:T:2014:76, paragraph 37 and the case-law cited).
35 The case-law specifies that the fact that consumers regard a product as a complement of or accessory to another is not sufficient for them to believe that those products have the same commercial origin. For that to be the case, consumers would also have to consider it usual for those products to be sold under the same trade mark (see judgment in DEMON, cited in paragraph 33 above, EU:T:2014:76, paragraph 37 and the case-law cited).
36 In the present case, it should be noted, as a preliminary point, that, in its application, the applicant expressly states that it does not dispute the fact that, as the Board of Appeal found, the goods in Class 3 covered by the mark applied for and the goods in Class 3 covered by the earlier mark are either identical or similar. Since the Board of Appeal, moreover, did not err in those assessments, they must be upheld.
37 By contrast, with regard, in the first place, to the toothbrushes covered by the mark applied for and the dentifrices covered by the earlier mark, the applicant, while agreeing with the Board of Appeal’s finding that those goods are used for the same purpose and are complementary, submits, however, that the average consumer, who is reasonably well informed and reasonably observant and circumspect, is aware that those goods are often sold under trade marks and names of a variety of manufacturers. Such a consumer is not therefore likely to assume that they are produced by the same undertaking. Since, in addition, the nature of those goods is different, there is a rather low degree of similarity between them.
38 In this respect, it should be noted, as OHIM has, that it is a well-known fact that toothbrushes and dentifrices may be produced by the same undertaking and sold under the same mark. Furthermore, it should be noted that those goods are sold via the same distribution channels, namely pharmacies and large retailers, and are made available to the consumer in the same shelf areas. In addition, it is not unusual for toothbrushes and dentifrices to be distributed jointly under the same trade mark. The Board of Appeal therefore acted correctly in concluding that consumers could expect those goods to be produced by the same undertakings.
39 In those circumstances, since, moreover, it is common ground that those goods are complementary, toothbrushes being essential for the use of toothpaste, and that they have the same purpose, namely dental health and hygiene, the fact that they differ in nature cannot suffice to establish that there is a low degree of similarity between them. On the contrary, in the light of all of the foregoing, it must be held that they display a high degree of similarity.
40 In the second place, the applicant states that retailers or mail order companies are usually, on the perfumery market, entities that are legally distinct from the manufacturers of the perfumery articles sold on that market. The applicant maintains that the average consumer, who is reasonably well informed and reasonably observant and circumspect, is aware of that fact, with the result that there is only a low degree of similarity between retail services and mail order services in the field of perfumery in Class 35 covered by the mark applied for and the perfumery goods in Class 3 covered by the earlier mark.
41 In this respect, as the Board of Appeal noted in the contested decision, the applicant, in accordance with paragraphs 49 and 50 of the judgment of 7 July 2005 in Praktiker Bau- und Heimwerkermärkte (C‑418/02, ECR, EU:C:2005:425), specified the goods or types of goods relating to retail and mail order services covered by its trade mark application, namely goods relating to the field of perfumery. Furthermore, it is common ground that those goods are identical to the perfumery goods in Class 3 covered by the earlier mark.
42 In those circumstances, the Board of Appeal did not err in taking the view, on the basis of the Court’s reasoning in paragraphs 42 to 62 of the judgment of 24 September 2008 in Oakley v OHIM — Venticinque (O STORE) (T‑116/06, ECR, EU:T:2008:399), that there was a similarity between retail and mail order services in the field of perfumery and the perfumery goods covered by the earlier mark.
43 In the judgment in O STORE, the Court took the view that, while clothing, headwear, footwear, athletic bags, backpacks, knapsacks and wallets differed in terms of their nature and intended purpose from retail services in respect of those goods, those goods and services were none the less indisputably similar since they share the same distribution channels and are complementary. In particular, with regard to the issue of complementarity, the Court found that those goods were indispensable to or, at the very least, important for the provision of those services, which are specifically provided when those goods are sold. Furthermore, the Court held that those services played, from the point of view of the relevant consumer, an important role when he comes to buy the goods offered for sale (judgment in O STORE, cited in paragraph 42 above, EU:T:2008:399, paragraphs 47 to 58).
44 In addition, the Court’s reasoning in O STORE, cited in paragraph 42 above (EU:T:2008:399), concerning the close connection between the goods in question and the retail services relating to those goods applies mutatis mutandis to the relationship between those same goods and the relevant mail order services (see, to that effect, judgment of 16 October 2013 in El Corte Inglés v OHIM – Sohawon (fRee YOUR STYLe.), T‑282/12, EU:T:2013:533, paragraph 37).
45 The Board of Appeal was therefore right to apply that reasoning in the present case. The methods of marketing the perfumery goods covered by the earlier mark do not differ fundamentally from those of the goods in question in O STORE, cited in paragraph 42 above (EU:T:2008:399). Consequently, it must be held that, first, those items share the same distribution channels with the retail and mail order services that relate to them and, secondly, those goods and services are complementary.
46 In particular, contrary to what the applicant claims, no generalisation can be made for the entire perfumery market with regard to the fact that, in certain cases, retail and mail order companies are entities that are legally distinct from the manufacturers of the goods marketed by those companies. Thus, it is a well-known fact that some manufacturers of perfumery articles have their own network of points of sale or their own remote sales sites on which they sell their products.
47 Moreover, when that is not the case, suppliers of retail or mail order services for perfumery goods are usually required to comply with requirements laid down by the manufacturer of the product in question, if necessary, in a selective distribution agreement, in particular with regard to those services which, as the Court noted, include, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction (judgment in Praktiker Bau- und Heimwerkermärkte, cited in paragraph 41 above, EU:C:2005:425, paragraph 34).
48 Accordingly, services offered to the consumer with a view to encouraging the purchase of a specific perfumery article are, in general, either provided directly by the manufacturer under the trade mark for the product in question or, at least, arranged or approved by that manufacturer.
49 Consequently, the fact that, in some cases, companies involved in the retail and mail order sale of perfumery goods are entities that are legally distinct from the manufacturers of those goods is not such as to have a significant effect on the relationship of similarity that the consumer will establish between those services and those goods, on the basis of the fact that their distribution channels are the same and of their complementarity. Accordingly, that relationship of similarity cannot, contrary to what the applicant claims, be regarded as weak (see, to that effect, judgment in THE HUT, cited in paragraph 28 above, EU:T:2014:569, paragraph 28 and the case-law cited).
Comparison of the signs
50 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of 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 judgment of 23 September 2014 in Nuna International v OHIM – Nanu-Nana Joachim Hoepp (nuna), T‑195/12, EU:T:2014:804, paragraph 73 and the case-law cited).
51 Furthermore account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has retained in his mind (see judgment in nuna, cited in paragraph 50 above, EU:T:2014:804, paragraph 74 and the case-law cited).
52 Finally, in general, two marks are similar where, from the point of view of the relevant public, they are at least partially identical or similar as regards one or more relevant aspects (see judgment in THE HUT, cited in paragraph 28 above, EU:T:2014:569, paragraph 31 and the case-law cited).
– Visual similarity
53 The applicant submits, in the first place, that, contrary to the Board of Appeal’s findings, the mark applied for, NANU, and the earlier mark, NAMMU, are visually dissimilar. In the applicant’s view, the differing number of letters – four in one case and five in the other – and the differences in the respective middle parts of the signs at issue, emphasised by the doubling of the letter M in one of the signs, contribute to that lack of visual similarity.
54 In this respect, it should be noted that, while the signs at issue are not visually identical, the identical elements that they include, as OHIM essentially states, clearly outweigh their differences.
55 As the Board of Appeal noted, the first two letters of the signs at issue, ‘n’ and ‘a’, and the last letter, ‘u’, are identical, with the result that only the middle element, which is, in one case, the letter ‘n’ and, in the other, the letter ‘m’, which appears twice, is different.
56 It is true that the signs at issue are short, with the result that the relevant public is likely to perceive the differences between them more clearly (see, to that effect, judgment of 3 December 2014 in Max Mara Fashion Group v OHIM – Mackays Stores (M & Co.), T‑272/13, EU:T:2014:1020, paragraph 47 and the case-law cited). However, it should be noted that, in the present case, the letters ‘n’ and ‘m’, as also noted by the Board of Appeal, display a high degree of visual similarity. The fact that the letter ‘m’ appears twice in the middle of the sign NAMMU, while the letter ‘n’ appears only once in the middle of the sign NANU, is not sufficient to cancel out that similarity (see, to that effect and by analogy, judgment of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 55).
57 Furthermore, while it is true that, in general, with regard to relatively short word signs, the central elements are as important as the elements at the beginning and end of the signs, slight differences in their middle sections, such as in the present case, will not attract the consumer’s attention any more than the parts at the beginning and end of the signs (see, to that effect, judgment of 28 November 2013 in Lorenz Shoe Group v OHIM – Fuzhou Fuan Leather Plastics Clothing Making (Ganeder), T‑374/09, EU:T:2013:616, paragraphs 40 and 41).
58 Nor can visual similarity between the two signs at issue be counteracted by the difference between them in the number of letters, that difference being in respect of one single letter (see, to that effect, judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, ECR, EU:T:2010:399, paragraph 81 and the case-law cited).
59 Moreover, what matters in the assessment of the visual similarity of two word marks is, rather than the number of letters in each, the presence, in each of them, of several letters in the same order (see, to that effect, judgment of 25 March 2009 in Kaul v OHIM – Bayer (ARCOL), T‑402/07, ECR, EU:T:2009:85, paragraph 83).
60 In those circumstances, the signs must be regarded as displaying a high degree of visual similarity.
– Phonetic similarity
61 The applicant claims, in essence, that the repetition of the initial consonant ‘n’ in the sign NANU serves to create, from the point of view of a viewer, a longer perception of the two syllables that make up that sign, whereas, by contrast, the consonant ‘m’, which makes up the central part of the sign NAMMU, is clearly separate from the initial consonant of that sign. In addition, it states that the doubling of that consonant ‘m’ leads to a ‘quicker’ pronunciation of that sign. Consequently, it submits, the degree of similarity is merely low, and not high, contrary to what the Board of Appeal found.
62 In this regard, it should be stressed, first, that the signs at issue have the same number of syllables. Secondly, the applicant does not dispute the fact that, as the Board of Appeal rightly noted, their initial syllables are the same and the final syllables both end with the vowel ‘u’.
63 Moreover, the consonant ‘n’ and the consonant ‘m’, which, as the Board of Appeal noted, are pronounced in a similar way in all the languages of the European Union, do not display sufficient differences to counteract the phonetic identity between the other parts of the signs at issue (see, to that effect, judgment of 8 February 2007 in Quelle v OHIM — Nars Cosmetics (NARS), T‑88/05, EU:T:2007:45, paragraph 63). Finally, it should be emphasised that, in most languages of the European Union, the double consonant ‘m’ is pronounced no differently to a single consonant. Furthermore, in languages in which that difference exists, it is not likely to reduce significantly the similarities in pronunciation between the consonants ‘m’ and ‘n’. Consequently, as OHIM essentially notes, even if they were established, the differences in pronunciation claimed by the applicant are not capable of calling into question the high degree of phonetic similarity between the two signs at issue.
– The conceptual comparison
64 The applicant indicates that it agrees with the finding of the Board of Appeal in paragraph 48 of the contested decision as to the lack of conceptual similarity of the marks at issue.
65 However, that is not the conclusion reached by the Board of Appeal on that point. It follows expressly from paragraphs 47 and 48 of the contested decision that the Board of Appeal held that, other than for a Maltese-speaking public, for which NANU means ‘dwarf’, the lack of meaning of the two signs in the other languages of the European Union prevents any conceptual comparison, given that it is highly unlikely that the relevant public would be in a position to associate the sign NAMMU with the Sumerian goddess of that name.
66 Those findings of the Board of Appeal, which, moreover, are not challenged, must be upheld. However, it has to be stated that the absence of conceptual content of the sign NAMMU for the relevant public, which absence is highly likely, as correctly stated by the Board of Appeal, is sufficient to preclude the possibility of any conceptual comparison, including for the Maltese-speaking section of the public which associates a meaning with the sign NANU (see, to that effect, judgment of 16 September 2013 in Gitana v OHIM — Teddy (GITANA), T‑569/11, EU:T:2013:462, paragraphs 65 to 67).
67 Finally, it should be noted that the applicant does not challenge the Board of Appeal’s finding that the earlier trade mark has a normal distinctive character. Since that finding is not flawed, it must be upheld.
The likelihood of confusion
68 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment in nuna, cited in paragraph 50 above, EU:T:2014:804, paragraph 98 and the case-law cited).
69 The applicant maintains that, even with regard to the goods in Class 3 covered by the contested mark which are identical or at least similar to the goods in Class 3 covered by the earlier mark, there is no likelihood of confusion in view of the visual and conceptual dissimilarities between the marks and the low degree of phonetic similarity. In addition, given the distribution channels for the Class 3 goods in question (sales in pharmacies or specialised shelf areas of department stores and online sales), the visual and conceptual aspects of the marks at issue take precedence over their phonetic aspect. That finding is a fortiori applicable to toothbrushes in Class 21 and the services in Class 35, which differ from the goods covered by the earlier mark.
70 However, in the first place, as the Court has held in paragraphs 39 and 49 above, the Board of Appeal did not err in finding that there was similarity, first, between toothbrushes and dentifrices and, secondly, between retail and mail order services in the field of perfumery and perfumery goods. In addition, as the applicant notes in the context of the global assessment of the likelihood of confusion, it does not dispute the assessment of the Board of Appeal concerning the character, as in part identical and in part highly similar, of the goods in Class 3 covered by the mark applied for and goods in the same class covered by the earlier mark.
71 In the second place, the Court has also held in paragraphs 60 and 66 above that the Board of Appeal was correct in its assessment of the high degree of visual similarity and the lack of any possible conceptual comparison between the marks at issue. Accordingly, contrary to what the applicant submits, the high degree of phonetic similarity existing between those two marks is not capable of being cancelled out by the alleged dominance of the visual and conceptual aspects of the signs at issue. Consequently, even if it were considered to be established, such dominance could not influence the relevant public’s perception of the similarities between the marks.
72 Moreover, while the fact that a product is marketed, for the most part, in specialised shelf areas of department stores or by mail order may confer greater importance on the visual aspect of the mark than on its phonetic aspect, it does not, however, follow that that phonetic aspect has no impact whatsoever on the consumer.
73 Consequently, the Board of Appeal did not err in finding that, regard being had to the ‘principle of imperfect recollection’ and the principle of interdependence of factors, the significant similarities between the marks at issue were such as to lead to a likelihood of confusion concerning goods and services such as those referred to in paragraph 12 above, which are partly identical and partly similar to the goods covered by the earlier mark.
74 It follows from all of the foregoing that the single plea in law must be rejected and, in consequence, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s second head of claim seeking rejection of the opposition, which is contested by OHIM.
Costs
75 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
76 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 Nanu-Nana Joachim Hoepp GmbH & Co. KG to pay the costs.
Delivered in open court in Luxembourg on 9 July 2015.
[Signatures]