JUDGMENT OF THE GENERAL COURT (Second Chamber)
15 July 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark bambinoLÜK — Earlier Community figurative mark BAMBINO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑333/13,
Westermann Lernspielverlag GmbH, established in Brunswick (Germany), represented by A. Nordemann and M. Maier, 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
Diset, SA, established in Barcelona (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 3 April 2013 (Case R 1323/2012-2) concerning opposition proceedings between Diset, SA and Westermann Lernspielverlag GmbH,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni and L. Madise (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 17 June 2013,
having regard to the response lodged at the Court Registry on 13 August 2013,
having regard to the decisions of 10 December 2014 and 3 March 2015 rejecting the applications for a stay of proceedings made by the applicant,
further to the hearing on 7 January 2015,
gives the following
Judgment
Background to the dispute
1 On 5 May 2010 the applicant, Westermann Lernspielverlag GmbH, 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought are in Classes 9, 16 and 28 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 9: ‘Image, sound, image and sound, and data carriers of all kinds (included in class 9), in particular video cassettes, recording discs, music cassettes, CDs, picture discs, DVDs, CD-ROMs, CDIs, floppy discs, in particular being electronic publishing products, and for instructional and teaching purposes, and apparatus for video and computer games adapted for use with television receivers, in particular for instructional and teaching purposes; software, in particular for instructional and teaching purposes; data processing equipment, computers and other computer hardware, and parts and accessories therefor (included in class 9), all goods other than in connection with motor vehicles or motor vehicle parts of all kinds’;
– Class 16: ‘Printed matter and published materials of all kinds (included in class 16), in particular books, exercise books, files, periodicals, newspapers, calendars, posters, sheets, transparencies, films, illustrated maps, index cards, geographical maps and wall charts, in particular for instructional and teaching purposes; instructional and teaching material (except apparatus), in particular in the form of printed matter, games, globes, wall boards and drawing implements for wall boards; photographs (prints and originals); posters; writing implements, in particular fountain pens, ball-point pens, coloured pencils and pencils; office requisites (except furniture), in particular stamps (seals), inking pads, inks, letter openers, paper knives, letter trays, document files, desk pads, punches, loose-leaf files, paper clips and staples; transfers (decalcomanias), rub-down transfers, paper and plastic stickers’;
– Class 28: ‘Games, in particular board games, dominoes, parlour games, card games, educational games and games of strategy, in traditional and in electronic form (except as apparatus adapted for use with television receivers); toys and playthings; electronic video and games, except as apparatus adapted for use with television receivers, in particular for instructional and teaching purposes’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 2010/122 of 6 July 2010.
5 On 14 September 2010, Diset, SA filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, against registration of the trade mark applied for, in respect of the goods referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the earlier Community figurative mark, registered on 6 July 2004 under No 3915121 in respect of goods and services in Classes 16, 28 and 41, represented below:
7 The goods and services covered by the earlier trade mark are in Classes 16, 28 and 41 and correspond, for each of those classes, to the following description:
– Class 16: ‘Publications, magazines, books and children’s stories’;
– Class 28: ‘Building blocks and games and educational playthings for early childhood, excluding dolls’;
– Class 41: ‘Educational services; providing of training; entertainment; sporting and cultural activities’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
9 On 25 May 2012, the Opposition Division upheld the opposition in part. It found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the signs at issue, save as regards the goods in Class 16, covered by the Community trade mark application, corresponding to the following description: ‘Writing implements, in particular fountain pens, ball-point pens, coloured pencils and pencils; office requisites (except furniture), in particular stamps (seals), inking pads, inks, letter openers, paper knives, letter trays, document files, desk pads, punches, loose-leaf files, paper clips and staples; transfers (decalcomanias), rub-down transfers, paper and plastic stickers’.
10 On 18 July 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11 By decision of 3 April 2013 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal in part, allowing the registration of the trade mark applied for in respect of ‘software, in particular for instructional and teaching purposes (all goods other than in connection with motor vehicles or motor vehicle parts of all kinds)’ and ‘data-processing equipment, computers and other computer hardware, and parts and accessories thereof (included in Class 9) (all goods other than in connection with motor vehicles or motor vehicle parts of all kinds)’, all in Class 9, and dismissed the appeal in respect of the remaining goods in Classes 9, 16 and 28. Having found that the consumers concerned included members of the general public of the European Union (paragraph 16 of the contested decision), and that the goods in respect of which registration was refused and those covered by the earlier trade mark were, in essence, identical or similar (paragraph 28 of the contested decision), the Board of Appeal found that the word element common to the signs at issue, ‘bambino’, could not be considered to have a non-distinctive character since, for a significant proportion of consumers in the United Kingdom and Ireland, amongst other Member States, the word carried no definite descriptive connotation (paragraph 31 of the contested decision). As regards the similarity of the signs, the Board of Appeal observed that, visually, the signs at issue coincided in the word element ‘bambino’ (paragraph 32 of the contested decision), and that they were also similar phonetically, the first three syllables of the trade mark applied for and the three syllables of the earlier trade mark being identical (paragraph 33 of the contested decision). Lastly, the Board of Appeal noted that, conceptually, for a significant part of the relevant non-Italian-speaking public, neither trade mark had any meaning (paragraph 34 of the contested decision). It therefore concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, thereby confirming the Opposition Division’s decision regarding the goods in Class 9, namely ‘Image, sound, image and sound, and data carriers of all kinds (included in class 9), in particular video cassettes, recording discs, music cassettes, CDs, picture discs, DVDs, CD-ROMs, CDIs, floppy discs, in particular being electronic publishing products; apparatus for video and computer games adapted for use with television receivers, in particular for instructional and teaching purposes, and parts and accessories thereof (included in class 9), all goods other than in connection with motor vehicles or motor vehicle parts of all kinds’; Class 16, namely ‘Printed matter and published materials of all kinds (included in class 16), in particular books, exercise books, files, periodicals, newspapers, calendars, posters, sheets, transparencies, films, illustrated maps, index cards, geographical maps and wall charts, in particular for instructional and teaching purposes; instructional and teaching material (except apparatus), in particular in the form of printed matter, games, globes, wall boards and drawing implements for wall boards; photographs (prints and originals); posters’; and Class 28, namely ‘Games, in particular board games, dominoes, parlour games, card games, educational games and games of strategy, in traditional and in electronic form (except as apparatus adapted for use with television receivers); toys and playthings; electronic video and games, except as apparatus adapted for use with television receivers, in particular for instructional and teaching purposes’.
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 raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In support of that plea in law, the applicant asserts, first, the lack of distinctive character of the word element ‘bambino’ of the earlier trade mark; next, the lack of similarity between the signs at issue; and, consequently, the lack of a likelihood of confusion between those signs.
15 Under Article 8(1)(b) of Regulation No 207/2009, 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. Moreover, under Article 8(2)(a)(i) of that regulation, ‘earlier trade marks’ means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
16 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 from economically-linked undertakings constitutes a likelihood of confusion. According to the 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 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 identified (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, 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 exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (see judgment of 20 January 2010 in Nokia v OHIM — Medion (LIFE BLOG), T‑460/07, ECR, EU:T:2010:18, paragraph 59 and the case-law cited). However, a low degree of similarity between those goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25).
18 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.
19 First of all, the Court must confirm the Board of Appeal’s findings that the goods covered by the signs at issue in respect of which registration was refused are identical or similar. Indeed, those findings are not disputed by the applicant.
Similarity of the signs
Visual similarity
20 The Board of Appeal observed, in paragraph 32 of the contested decision, that — visually — the signs at issue coincided in the word ‘bambino’, which was clearly the dominant and distinctive part of both signs. The Board of Appeal acknowledged that there were some differences between the signs at issue on account of their figurative and verbal elements, namely the figurative representation of a stylised child in the earlier trade mark and the verbal element ‘lük’ in the trade mark applied for. However, it held that those differences could not outweigh the similarity between the signs arising from their identical verbal element ‘bambino’.
21 The applicant disputes this analysis. It claims that consumers will pay more attention to the figurative element representing a stylised child in the earlier trade mark and to the element ‘lük’ of the trade mark applied for. It submits that those two elements have nothing in common, so that their differences outweigh the visual similarity of the signs at issue that arises from the common and descriptive element ‘bambino’.
22 However, it should be observed that, first, the word ‘bambino’, which constitutes the dominant element of the earlier trade mark, is present in the trade mark applied for, and that, secondly, seven of the 10 letters that form the trade mark applied for are also found in the earlier trade mark and the three syllables that make up the earlier trade mark are identical to three of the four syllables that make up the trade mark applied for, composing the term ‘bambino’.
23 It follows that there is necessarily a visual similarity between the marks at issue, since consumers cannot ignore that predominant element.
24 The signs at issue differ only in that the earlier trade mark has a figurative element in the form of a stylised child, whereas the trade mark applied for has an independent stylised word element, ‘lük’, placed after the term ‘bambino’.
25 However, first, as the Board of Appeal held, the presence of a distinct figurative element does not necessarily preclude there being a visual similarity between the signs at issue. The case-law has confirmed on several occasions that where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgments of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 54 and the case-law cited; 31 January 2012 in Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 38; and 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 35).
26 Secondly, the element ‘lük’ is at the end of the trade mark applied for. It is settled case-law that consumers generally take more note of the beginning of a mark than of its ending (judgments of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraphs 64 and 65, and 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 51).
27 Consequently, as the Board of Appeal observed in the contested decision, the abovementioned additional elements are not such as to outweigh the visual similarity between the marks arising from their common element ‘bambino’.
28 In the light of the foregoing, the Board of Appeal was fully entitled to find that there was a visual similarity between the signs at issue.
Phonetic similarity
29 The Board of Appeal found, in paragraph 33 of the contested decision, that the signs at issue coincided because the first three syllables of the trade mark applied for, which has four syllables, and the three syllables composing the earlier trade mark were identical, and that the signs differed only in that the element ‘lük’ was present in the trade mark applied for. The Board of Appeal observed, however, that consumers generally take more note of the beginning of a sign than of its ending and that it could not be ruled out that the element ‘lük’ might not actually be pronounced.
30 The applicant submits that there is no reason to assume that the dominant element, ‘lük’, of the trade mark applied for might not be pronounced. It submits that it is highly likely that the consumer will pronounce the term, as he would know the series of educational games marketed by the applicant under its core trade mark LÜK. In view of the descriptive character of the element ‘bambino’ and the fact that the consumer would clearly pronounce the element ‘lük’ of the trade mark applied for, the applicant claims that the signs at issue are also different phonetically.
31 However, as stated in paragraph 26 above, the consumer generally pays greater attention to the beginning of a sign than to the end (see, by analogy, judgments in FLEXI AIR, cited in paragraph 26 above, EU:T:2005:102, paragraphs 70 and 71, and PAM-PIM’S BABY-PROP, cited in paragraph 26 above, EU:T:2006:247, paragraphs 51 and 61). The element ‘bambino’ is placed at the beginning of the trade mark applied for and constitutes the only, and the dominant, word element of the earlier trade mark. The relevant public will therefore take greater note of that element than of the other elements of the signs at issue, particularly because it represents all the letters of the earlier trade mark and seven letters of the 10 of the trade mark applied for, which will be pronounced in the same order.
32 In the light of the foregoing, the Board of Appeal was fully entitled to find that there was a phonetic similarity between the signs at issue.
Conceptual similarity
33 The Board of Appeal observed, in paragraph 34 of the contested decision, that for a significant part of the relevant non-Italian-speaking public, neither mark had any meaning.
34 The applicant submits that since the term ‘bambino’ in both signs refers to babies or young children and the goods covered by the signs at issue are also aimed at babies or young children, the average consumer would take account of the other elements of the signs, namely the figurative element representing a stylised child in the earlier trade mark and the element ‘lük’ in the trade mark applied for. It submits that those two elements concern entirely different concepts. Therefore, those conceptual differences, added to the descriptiveness of the word ‘bambino’ in both signs, suffice to distinguish them.
35 It follows from the case-law that the global assessment of the likelihood of confusion means that conceptual differences between two signs may counteract the phonetic and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (judgments of 12 January 2006 in Ruiz-Picasso and Others v OHIM, C‑361/04 P, ECR, EU:C:2006:25, paragraph 20, and 23 March 2006 in Mülhens v OHIM, C‑206/04 P, ECR, EU:C:2006:194, paragraph 35).
36 In this case, first, the applicant has not set out in its application the concept that it claims is conveyed by the element ‘lük’ for the general public of the European Union, or in what way it is ‘totally different’ from that conveyed by the earlier trade mark.
37 Secondly, in any event, even if the term ‘bambino’ is descriptive throughout much of the relevant territory, as the applicant claims, the inference must be that the two signs at issue refer to an identical concept, namely childhood, which would increase, rather than decrease the likelihood of confusion.
38 All in all, OHIM was fully entitled to hold, in paragraph 35 of the contested decision, that the signs at issue were similar overall.
39 That conclusion cannot be called into question by the allegedly weak distinctive character of the element ‘bambino’ of the earlier trade mark.
40 Even if the term ‘bambino’ is of weak distinctive character, the weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (see judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 54 and the case-law cited). That is indeed the case in this instance, the element ‘bambino’ occupying a dominant position in both signs on account of its position and size.
Likelihood of confusion
41 The Board of Appeal found, in paragraph 37 of the contested decision, that the signs at issue were similar on account of the presence of the dominant element ‘bambino’ in each of the signs. The Board of Appeal concluded that a significant part of the relevant public, in seeing the trade mark applied for on identical or highly similar goods to those designated by the earlier trade mark, will believe that the goods have the same commercial origin, and inferred therefrom that there was a likelihood of confusion.
42 First, the applicant submits that the term ‘bambino’ in the earlier trade mark, which means ‘baby’ or ‘young child’, is descriptive in relation to the goods covered by the application for registration in so far as it is known to consumers in the United Kingdom and is widely used throughout the European Union in order to designate toys and other goods and services for babies and young children. Secondly, the applicant adds that the descriptive character of the element ‘bambino’ in the earlier trade mark is emphasised by the figurative element representing a stylised child that accompanies it. Thirdly, it states that the withdrawal by the opposing party, in 2004, of the Community trade mark application, registered under No 3913563, for the word ‘bambino’ shows OHIM’s reservations as to the inherent registrability of the trade mark because of its descriptive character. Fourthly, the applicant infers that, when comparing the overall impression given by the signs at issue, the average consumer will be able to distinguish clearly between those signs, even if they are used for identical or highly similar goods, because of the figurative element representing a stylised child in the earlier trade mark and the element ‘lük’ in the trade mark applied for.
43 As regards the likelihood of confusion, it should be recalled that for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgment in LIFE BLOG, cited in paragraph 17 above, EU:T:2010:18, paragraph 59).
44 Moreover, when, in opposition proceedings brought against the registration of a Community trade mark under Article 42 et seq. of Regulation No 207/2009, the earlier trade mark is a Community trade mark, the territory in which the earlier mark is protected is that of the European Union. However, it follows from the unitary character of the Community trade mark laid down in Article 1(2) of Regulation No 207/2009 that an earlier Community trade mark is protected in the same way in all Member States. Earlier Community trade marks may therefore be pleaded in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in relation to the perception of the consumers of part of the European Union. It follows that the principle laid down in Article 7(2) of Regulation No 207/2009, that it suffices, in order for a trade mark to be refused registration, that an absolute ground for refusal exists only in part of the European Union, also applies by analogy to a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 (judgments of 3 March 2004 in Mülhens v OHIM — Zirh International (ZIRH), T‑355/02, ECR, EU:T:2004:62, paragraphs 35 and 36, and 1 March 2005 in Fusco v OHIM — Fusco International (ENZO FUSCO), T‑185/03, ECR, EU:T:2005:73, paragraph 33).
45 In the present case, it is clear from the foregoing considerations that the signs at issue are similar overall (see paragraph 38 above) and that the goods covered by those signs are identical or similar (see paragraph 19 above).
46 It follows that, considered cumulatively, the degree of similarity between the signs at issue and the degree of similarity between the goods covered by those signs are sufficiently high to establish a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
47 Therefore, the Board of Appeal was fully entitled to find that there was a likelihood of confusion between the signs at issue.
48 That conclusion cannot be called into question by the applicant’s argument that the term ‘bambino’ is descriptive in the relevant territory in respect of the goods in question and, therefore, the stylised child reproduced in the earlier trade mark, on the one hand, and the word ‘lük’ in the trade mark applied for, on the other, serve to prevent any likelihood of confusion between the signs at issue.
49 First, in so far as the applicant claims that the descriptive character of the element ‘bambino’ in the earlier trade mark is emphasised by the figurative element representing a stylised child that accompanies it (see paragraph 42 above), the applicant calls into question, even if only indirectly, the distinctive character of the earlier trade mark.
50 The fact that a mark has been registered means that that mark has a minimum of inherent distinctiveness, since Article 7(1)(b) of Regulation No 207/2009 precludes registration of a mark which is devoid of distinctive character. A dispute as to the earlier mark’s minimum distinctive character cannot form the subject-matter of opposition proceedings under Article 8(1)(b) of Regulation No 207/2009. As is apparent from Articles 41 and 42 of Regulation No 207/2009, there is no need to examine the absolute grounds for refusal referred to in Article 7 of that regulation in the context of opposition proceedings (judgment of 16 January 2014 in Ferienhäuser zum See v OHIM — Sunparks Groep (Sun Park Holidays), T‑383/12, EU:T:2014:12, paragraph 47).
51 Also, even if the distinctive character of the earlier mark is weak, that does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 11 December 2014 in Formula One Licensing v OHIM — ESPN Sports Media (F1-LIVE), T‑10/09 RENV, ECR, EU:T:2014:1061, paragraph 49 and the case-law cited).
52 That is indeed the case in this instance (see paragraph 45 above).
53 In the light of the foregoing, the argument that the opposing party withdrew a trade mark application for the term ‘bambino’ in 2004 because of that term’s lack of distinctive character is irrelevant, particularly since, as OHIM observes, the Community trade mark application was withdrawn on the same day as it was filed, namely on 5 July 2004. OHIM could not therefore have adopted a position on the distinctive character of the word mark in question.
54 The applicant’s argument that the rejection of its action would lead to a monopolisation of the term ‘bambino’ for the goods in question, contrary to the objectives of Article 7(1)(c) of Regulation No 207/2009 must be regarded as irrelevant for the same reasons. A finding by the General Court that there is a likelihood of confusion leads solely to the protection of a certain combination of elements without, however, protecting as such, a descriptive element forming part of that combination (see order of 30 January 2014 in Industrias Alen v The Clorox Company, C‑422/12 P, ECR, EU:C:2014:57, paragraph 45 and the case-law cited).
55 Secondly, even if the allegedly descriptive nature of the term ‘bambino’ were such as to prevent the likelihood of confusion resulting from the similarity of the signs and goods concerned, a point which is not established, the fact remains that the applicant has not provided any evidence to show that the general public of the European Union, as a whole, perceives the term ‘bambino’ as descriptive, when it cannot be assumed that the general public of the European Union knows that term (see, by analogy, judgment of 24 May 2011 in Space Beach Club v OHIM — Flores Gómez (SpS space of sound), T‑144/10, EU:T:2011:243, paragraph 63 and the case-law cited).
56 As OHIM has stated, it is established that the term ‘bambino’ does not have any meaning for the general public in part of the European Union, namely, in particular, in the countries of central and eastern Europe, Scandinavia or even certain countries of southern Europe such as Greece.
57 Nor, contrary to what the applicant claims, can it be established that the term ‘bambino’ is known by the English-speaking public in general. First, for the most part, the examples of use of the word ‘bambino’ by the English-speaking public produced by the applicant in its application do not refer to the general public, but to a restricted public, in particular, international celebrities and expatriate communities; secondly, the applicant has not produced evidence to show that the ‘word frequency’ of the term ‘bambino’ is sufficiently high for that term to be regarded as descriptive by an English-speaking public. On the contrary, as OHIM states, the term ‘bambino’ has the lowest ‘word frequency’, namely one out of five, of the frequencies listed by the Collins dictionary. Indeed, it follows incidentally that, contrary to what the applicant claims, the descriptive character of the term ‘bambino’ will not be ‘emphasised’ by the stylised representation of a child in the earlier trade mark — at least not in the abovementioned territories — inasmuch as it is not established that that term will be understood.
58 Consequently, there is bound to be a part of the territory of the European Union in which the term ‘bambino’ has a distinctive character, for want of possessing any meaning for the relevant public. However, for a trade mark to be refused registration, it suffices that a relative ground for refusal exists only in a part of the European Union, given the unitary character of the Community trade mark (see paragraph 44 above).
59 In the light of all the foregoing, the applicant’s single plea in law must be rejected as unfounded and, therefore, the present action must be dismissed.
Costs
60 Under Article 87(2) 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. 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 (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Westermann Lernspielverlag GmbH to pay the costs.
Martins Ribeiro | Gervasoni | Madise |
Delivered in open court in Luxembourg on 15 July 2015.
[Signatures]